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Federal Court of Appeal confirms sound prediction elements self-evident to skilled person need not be disclosed in patent

On June 3, 2015, the Federal Court of Appeal dismissed Apotex’s appeal from a prohibition Order relating to bimatoprost (Allergan’s LUMIGAN RC): Apotex Inc v Allergan Inc, 2015 FCA 137. As we previously reported, Justice O’Reilly held that Apotex’s allegations of invalidity on the bases of obviousness, lack of utility and anticipation were not justified: 2014 FC 567.

With respect to obviousness, Apotex, among other things, asserted that the lower Court erred by inferring the inventive concept from data found in the patent. The Court of Appeal, relying on the Supreme Court decision in Apotex Inc v Sanofi-Synthelabo Canada Inc, 2008 SCC 61, held that the applications Judge did not err in his construction of the inventive concept by resorting to the disclosure of the patent. It was acceptable for the lower Court to have done so as the applications Judge found that the inventive concept was not readily discernible from the claims themselves which referred only to a bare list of ingredients.

With respect to lack of utility, Apotex argued that the invention was not soundly predicted as the line of reasoning was not explicitly disclosed in the patent. In dismissing this ground of appeal, the Court of Appeal, relying on Bell Helicopter Textron Canada Limitée v Eurocopter, 2013 FCA 219, noted that “the factual basis, line of reasoning and level of disclosure required by the doctrine of sound prediction are to be assessed as a function of both the knowledge that the skilled person would have to base that prediction on and what the skilled person would understand as a logical line of reasoning leading to the utility of the invention. Those elements of the doctrine of sound prediction that would be self-evident to the skilled person need not be explicitly disclosed in the patent.”

With respect to anticipation, the Court of Appeal upheld the application Judge’s findings and noted that a selection patent is not anticipated by a genus patent that fails to describe the special advantages of the invention later claimed.

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