Janssen Inc. v. AbbVie Corporation, 2014 FCA 242

The Federal Court of Appeal has heard three related appeals from this proceeding in the Federal Court, and in the result, has sent the matter back down for re-hearing.

One appeal related to the finding that the patent was valid and infringed (2014 FC 55). A second appeal related to the Federal Court’s dismissal of Janssen’s pre-trial motion to amend Schedule A to its Defence and Counterclaim so as to remove and add other prior art references (2013 FC 1148). Janssen also appealed the Judge’s post-trial injunction order (2014 FC 489).

The Court of Appeal looked to the appeal refusing the amendment first, and found that Janssen’s amendment should have been allowed. The Court of Appeal noted that although the Judge was concerned with delay, both parties kept changing the case, and the landscape in which the PSA was operating was also changing. Both parties were still retaining experts to address, in part, the prior art.

The Court of Appeal focused on two independent criteria to allow an amendment: (a) any injustice to the other party is capable of being compensated by an award of costs, and (b) the interests of justice would be served. Janssen was found to meet both.

Obviousness was found to be one of the major invalidity issues and the prior art also impacted the issue of overbreadth. To that end, it was held that it would have served the interests of justice that all the relevant prior art be before the Judge to allow him to fully address the issue of obviousness.

In the end, Janssen is permitted to amend, the judgment that the patent was valid and infringed was set aside, and the matter was remitted back to the Federal Court for a new trial before another judge. The injunction that had been issued on May 22, 2014 was also set aside