Alcon Canada Inc. v. Cobalt Pharmaceuticals Company, 2014 FC 462

Drug: moxifloxacin

This NOC proceeding deals with challenges to three patents, a compound patent, a use patent and a polymorph patent.

The main allegations of invalidity with respect to the compound patent were that it lacked utility, lacked a sound prediction of utility and was obvious. The utility discussions turned on the promise of the patent, which the Court held to be new quinolone compounds with a potent antibacterial activity in vitro against a broad spectrum of bacterial organisms, in particular gram-positive bacteria. Against this promise, the utility was held to be soundly predicted. The patent was held to not be obvious, and a prohibition order was granted.

The use patent was challenged on the basis of obviousness and anticipation. The Court held that on the basis of ciprofloxacin, the allegations as to obviousness were justified. The Court only considered the allegation of non-infringement against the polymorph patent. As the final product is a solution, it does not contain crystals. However, Alcon argued the patent was infringed by the Cobalt process. The Court held that Alcon had only shown a “possibility” of infringement, and thus, it had not met its burden.