Justice Noël writing for the Court of Appeal disagreed with Apotex’s appeal of Justice Hughes’ decision to grant an order of prohibition with respect of the NOC for Apo-brimonidine-timop until expiry of the relevant patent. Consequently, the appeal was dismissed.

Interestingly, the result of Justice Hughes’ decision was upheld on appeal even though the Court of Appeal found that the order of prohibition was issued for the wrong reason.

Justice Hughes had found that Apotex’s allegation of invalidity on grounds of obviousness was justified. However, Justice Hughes issued the order of prohibition because, in a separate NOC proceeding involving the same patent (2011 FC 1316), the Court had come to the opposite conclusion and, as such, the issue of comity in the context of NOC proceedings was more properly left for the Court of Appeal to decide.

Justice Noël concluded that “it was not open to the Federal Court judge to grant the prohibition in order to further his desire to clarify the jurisprudence”, instead “it is up to the judges of the Federal Court to determine how [the doctrine of comity] is to be applied to their decisions”. Moreover, Justice Noël noted that the general view appears to be that the conclusions of law of a Federal Court judge will not be departed from by another judge unless he or she is convinced that the departure is necessary and can articulate cogent reasons for doing so and that on this test, “departures should be rare”.

In addition and in any event, Justice Noël concluded that when the inventive concept is properly construed, the allegation of obviousness is not justified. In this regard, Justice Noël found that the appropriate construction of the inventive concept should take the patent as a whole (as opposed to only the claims) into consideration.

Ironically, while criticizing the approach of the Court below, the Court of Appeal found the allegation of invalidity with respect to obviousness not justified, contrary to Justice Hughes. Had Justice Hughes not proceeded as he did, the Court of Appeal would not have had the opportunity to ensure the proper disposition of the proceeding.

The decision may be found at: http://decisions.fca-caf.gc.ca/en/2012/2012fca308/2012fca308.html