Alcon Canada Inc.v.Cobalt Pharmaceuticals Company, 2014 FC 149 
Drug: olopatadine

In a proceeding brought pursuant to the NOC Regulations, the Court made determinations with respect to obviousness, lack of utility and lack of sound prediction, and ambiguity and insufficiency.

The Court construed the claims in issue, and determined the inventive concept of the claims as well as the promise of the patent. The Court found that the allegation of obviousness was not justified. However, the experiments in the patent did not demonstrate the promised utility, nor was the utility soundly predicted. The Court considered the promise of each asserted claim in performing this analysis. After making these determinations, the Court made additional comments on the issue of utility. In particular, the Court noted  that the findings in this regard were limited to the allegations made by Cobalt in its Notice of Allegations, but there were other aspects of the promise that were not demonstrated or soundly predicated and that  could have been raised by Cobalt.

The Court found the allegation of overbreadth was justified, stating that “this allegation of overbreadth is simply another way of articulating the utility argument, but from the perspective of claims drafting rather than from the perspective of the demonstration or sound prediction of utility. As I have already found above that the 924 Patent fails to meet the promises advanced by the asserted claims, it follows that the claims  are drafted more broadly than is warranted; they contain promises that are broader than what can be demonstrated or soundly predicted to be useful by the disclosure in the patent.” Finally, the Court concluded that the allegation relating to ambiguity and insufficiency was not justified.