Case:

Pharmascience Inc. v. Pfizer Canada Inc. et al (Federal Court of Appeal)

DRUG:

latanoprost (XALATAN®)  

Nature of Case:

PM(NOC) Regulations -section 6 - Appeal  

Successful Party:

Pfizer Canada Inc.. et al.

Date of Decision:

March 17, 2011  

Summary:

On March 17, 2011, the Federal Court of Appeal ("FCA") upheld the December 18, 2009 decision of Justice Heneghan which granted Pfizer's application for an order prohibiting the Minister of Health from issuing a Notice of Compliance to Pharmascience in respect of its generic version of latanoprost (XALATAN) until after the expiry of Canadian Patent No. 1,339,132 ("132 Patent").

Pharmascience pursued five allegations of error before the FCA, namely that the hearings judge:

  1. failed to construe a phrase found in claim 1;
  2. read in a use limitation into a compound claim for the purposes of assessing anticipation;
  3. erred in finding that the promised utility had been demonstrated as of the filing date;
  4. failed to correctly apply the test for sound prediction; and
  5. failed to find that the claims were broader than the invention made or disclosed.

The FCA rejected each of one of the alleged errors finding that Heneghan J had not committed any errors of law or reviewable errors of fact. The Court noted that there was evidence to support each of one of her impugned findings. Furthermore, in respect of the allegation of overbreadth, the FCA rejected the theory that a "claim must mirror the disclosure of the patent", finding that there was no authority cited for such a proposition.

Accordingly, the FCA dismissed Pharmascience's appeal.

LINK TO DECISION:

This decision has not yet been published. It will have the following neutral citation: 2011 FCA 102