The Federal Court dismissed the application for prohibition on the basis that the patent is invalid on the grounds of anticipation and obviousness. The Court also found that the claims relied upon do not contain any therapeutic aspects and are ineligible for inclusion on the Patent Register.
The generic company, in earlier proceedings, alleged non-infringement of the patents at issue. It did not challenge validity, and succeeded on narrow points of non-infringement. Then, the generic company sent the within NOA, alleging new grounds of non-infringement and invalidity. The Court held that despite the incremental challenges of the generic company, the innovator cannot use its own unmeritorious challenge as the foundation for an abuse of process argument alleging juridical inefficiency. As the generic company was not attempting to split its case, or avoid an earlier unfavourable disposition, subsequent litigation could be permitted.
The full text of the decision can be found at: