Date: 20091218
Docket: T-2221-07
Citation: 2009 FC 1294
Vancouver, British Columbia, December 18,
2009
PRESENT: The Honourable Madam Justice Heneghan
BETWEEN:
PFIZER CANADA INC. and
PHARMACIA ATKIEBOLAG
Applicants
and
THE MINISTER OF HEALTH and
PHARMASCIENCE INC.
Respondents
REASONS FOR JUDGMENT AND
JUDGMENT
I. Introduction
[1]
Pfizer
Canada Inc. and Pharmacia Atkiebolag (the “Applicants”) apply pursuant to the Patented
Medicines (Notice of Compliance) Regulations, SOR/93-133 (the “NOC
Regulations”)
for an order prohibiting the Minister of
Health from issuing a Notice of Compliance (“NOC”) to Pharmascience Inc. (“PMS”,
“Pharmascience” or the “Respondent”), pursuant to section C.08.004 of the Food
and Drug Regulations, C.R.C., c. 870, until the expiry of Canadian letters
patent 1,339,132 (the “ ‘132 Patent”). The ‘132 Patent is entitled
“Prostaglandin Derivatives for the treatment of glaucoma or Ocular
Hypertension”. A patent list pertaining to 50 microgram/ml ophthalmic solution
of Latanoprost and referencing the ‘132 Patent was submitted to the Minister of
Health (the “Minister”). The Minister issued Notices of Compliance to Pfizer
for the 50 microgram/ml ophthalmic solution of Latanoprost on various dates,
including October 6, 2003. The 50 microgram/ml ophthalmic solution of
Latanoprost is marketed in Canada under the registered trade-mark Xalatan®.
[2]
This
application was commenced following service of a Notice of Allegation (the
“NOA”) dated November 2, 2007 upon the Applicants on that day. In its NOA, the
Respondent alleged that the ‘132 Patent is invalid on several grounds including
anticipation, obviousness, lack of utility, lack of sound prediction, overbreadth
and lack of sufficiency. The Respondent also alleged that it would not infringe
the ‘132 Patent by producing its version of Latanoprost ophthalmic solution, 50
microgram/ml, hereinafter referred to as “PMS-latanoprost”.
A. The Patent
[3]
The
‘132 Patent application was filed on September 12, 1989. It issued on July 29,
1997. The Patent addresses the use of certain prostaglandin derivatives in the
treatment of glaucoma or ocular hypertension.
[4]
Prostaglandins
are naturally occurring substances found in human and animal tissues that
contain 20 carbon atoms and have a molecular structure called “prostanoic
acid”. The PGF2α is a naturally occurring compound that can be
esterified into PGF2α isopropyl ester, also referred to as PGF2α
–IE. The chemical composition of PGF2α is as follows:
[5]
The
Latanoprost compound is a prostaglandin derivative that has the chemical
formulation of 13,14-dihydro-17-phenyl-18,19,20-trinor PGF2α
isopropyl ester or 13,14-dihydro-17-phenyl-18,19,20-trinor PGF2α
-IE. Its chemical structure is as follows:
[6]
Latanoprost
is made by modifying PGF2α as follows:
i.
removing
the last 3 carbons of the omega chain (“18,19,20-trinor”);
ii.
attaching
a phenyl ring to carbon 17 (“17-phenyl”);
iii.
changing
the double bond to a single bond between carbon 13 and carbon 14
(“13,14-dihydro”); and
iv.
esterifying
the carboxylic acid to an isopropyl ester.
[7]
The
‘132 Patent contains 38 claims; however, only Claims 12, 19, 31, 37 and 38 are
at issue in this proceeding. Broadly speaking, Claim 19 is a compound per se
claim that is dependent on Claim 18. Claims 31, 37 and 38 are use claims. Claim
12 is a narrower use claim and is dependent on Claim 1. The relevant claims
read as follows:
i.
A
therapeutic composition for topical treatment of glaucoma or ocular
hypertension, containing a prostaglandin PGA, PGB, PGD, PGE or PGF in an amount
sufficient to reduce intraocular pressure without causing substantial ocular
irritation and an ophthalmologically compatible vehicle, which the omega chain
of the prostaglandin has the formula:
(13)
(14) (15-24)
C - B
- C - D - R2
wherein
C
is a carbon atom (the number is indicated within parenthesis);
B is a
single bond, a double bond or a triple bond;
D is a chain
with 1-10 carbon atoms, optionally interrupted by hetero atoms O, S, or N, the
substituents on each carbon atom being H, alkyl groups, lower alkyl groups with
1 – 5 carbon atoms, an oxo functionality or a hydroxyl group;
R2
is a ring structure selected from the group consisting of phenyl and phenyl
having at least one substituent, said substituent being selected from C1-C5
alkyl groups, C1-C4 alkoxy groups, trifluoromethyl
groups, C1-C3 aliphatic acylamino groups, nitro groups,
halogen atoms, and phenyl group; or an aromatic heterocyclic group having 5-6
ring atoms, selected from the group consisting of thiazol, imidazole,
pyrrolidine, thiopene and oxazole; or a cycloalkane or a cycloalkene with 3-7
carbon atoms in the ring, optionally substituted with lower alkyl groups with
1-5 carbon atoms.
12. An
ophthalmological composition according to claim 1, wherein the prostaglandin
derivative is 13,14-dihydro-17-phenyl-18,19,20-trinor-PGF2α -isopropylester.
18. 13,14-dihydro-17-phenyl-18,19,20-trinor-PGF2α
-alkyl-ester, in which the alkyl group has 1-10 carbon atoms.
19. Compound
of claim 18, wherein the alkyl group is isopropyl.
31. The
use of 13,14-dihydro-17-phenyl-18, 19,20-trinor-PGF2α -isopropylester
in the treatment of glaucoma or ocular hypertension.
37. The
use of 13,14-dihydro-17-phenyl-18,19,20-trinor- PGF2α -alkyl-ester,
in which the alkyl group has 1-10 carbon atoms for the treatment of glaucoma or
ocular hypertension.
38. The
use of 13,14-dihydro-17-phenyl-18,19,20-trinor- PGF2α -isopropyl-ester
in the treatment of glaucoma or ocular hypertension.
B. The Evidence
[8]
Each
party submitted affidavit evidence from several witnesses; some of whom
provided factual evidence and others who addressed matters of opinion.
i) Applicants’
Witnesses
[9]
Dr.
Yvonne M. Buys is an ophthalmologist practising in Toronto, Ontario. She is
engaged both in clinical practice and as an Associate Professor in the
Department of Ophthalmology at the University of Toronto. Dr. Buys
was asked to provide a brief background on glaucoma and ocular hypertension and
the treatment of these diseases prior to the introduction of Latanoprost, as
well as to discuss the clinical use and advantages of this drug, including its mechanism
of action.
[10]
Further,
Dr. Buys was asked to describe the qualifications of the person of ordinary
skill in the art (“POSITA”) to whom the ‘132 Patent is addressed, to give her
understanding of the patent with particular reference to Claims 12, 19, 31, 37
and 38 as of July 29, 1997, and to give an opinion whether Latanoprost has the
utility promised in the ‘132 Patent.
[11]
Dr.
Robert D. Fechtner is a clinical ophthalmologist practising in New Jersey. He is also
a professor in the Department of Ophthalmology and Visual Science, New Jersey Medical School, University of Medicine
and Dentistry of New Jersey. He has held this position since 2002. He was asked
to provide a basic tutorial on the eye and intraocular pressure (“IOP”),
glaucoma, ocular hypertension and the treatment of those conditions and to
describe the common general knowledge relative to the treatment of ocular
hypertension, glaucoma and prostaglandins as of September 12, 1989.
[12]
Dr.
Fechtner was also asked to describe the qualifications of the POSITA to whom
the ‘132 Patent is addressed and to state his understanding of the ‘132 Patent,
with reference to Claims 12, 19, 31, 37 and 38 as of July 29, 1997. He was also
asked to describe the utility taught by the ‘132 Patent and whether Latanoprost
has utility. He was asked to describe the utility of the ‘132 Patent and
whether Latanoprost exhibits that utility. As well, he was asked to consider
whether the specification of the ‘132 Patent, including Claims 12, 19, 31, 37
and 38 correctly and fully describe, as of July 29, 1997, to the POSITA, the
subject matter of the invention and its operation or use as contemplated by the
inventor. In addition to reviewing relevant documents, including the ‘132
Patent, Dr. Fechtner was asked to review certain affidavits filed by the
Respondent.
[13]
Dr.
Johan W. Stjernschantz of Uppsala, Sweden is one of
the inventors of the ‘132 Patent. He addressed the factual background to the
discovery of Latanoprost, including the history of other efforts that were made
by competitors, seeking the discovery of a drug that would treat glaucoma and
ocular hypertension.
[14]
As
well, Dr. Stjernschantz tendered opinion evidence as to the POSITA as of
September 12, 1989, the concept of obviousness of the invention claimed in the
‘132 Patent having regard to the prior art, the sufficiency of the ‘132 Patent
having regard to the test data in the Patent and the evidence tendered by the
Respondent, and the utility of the ‘132 Patent.
[15]
I
note that Dr. Stjernschantz, as one of the inventors of the ‘132 Patent, is in
a unique position to give evidence about the invention. However, in my opinion,
his evidence is to be approached with caution in respect of issues of claim
construction and validity since it is almost impossible for a person with an “interest”,
even an intellectual one, to be wholly objective about his own work. In this
regard, I refer to the decision in Emmanuel Simard & Fils (1983) Inc.
v. Raydan Manufacturing Ltd. (2005), 41 C.P.R. (4th) 385
(F.C.).
[16]
Dr.
Kirk M. Maxey is a medicinal chemist with expertise in the area of
prostaglandins with almost thirty years experience in the study and synthesis
of prostaglandins. Although he holds a medical degree, he has never practiced
as a medical doctor. He is the founder and Chairman of the Board of the Cayman Biomedical
Research Institute, a non-profit institute that conducts research in the areas
of rare diseases and genetic defects.
[17]
Dr.
Maxey was asked to give a brief tutorial on prostaglandins. He was also asked
to describe the qualifications of the POSITA and to give his understanding of
the ‘132 Patent, particularly with regard to Claims 12, 19, 31, 37 and 38 as of
July 29, 1997.
[18]
Dr.
Maxey was also asked to consider whether Latanoprost had been disclosed in the
prior art, whether the POSITA would have been led to Latanoprost having regard
to the state of the art as of September 12, 1989 and July 29, 1997 and whether
the claims in issue are broader than the invention made or disclosed in the
‘132 Patent.
[19]
Dr.
Arthur H. Neufeld is a Professor of Ophthalmology and the Head of Laboratory
for the Investigation of the Aging Retina at the Northwestern University School
of Medicine. He submitted two affidavits on behalf of the Applicants, the first
sworn on April 25, 2008 and the second sworn on August 27, 2008.
[20]
In
his first affidavit, Dr. Neufeld addressed the mandate that he had received to
give his interpretation on the ‘132 Patent and whether the Respondent’s product
PMS-latanoprost, infringes Claims 12, 19, 31, 37 and 38 of the ‘132 Patent. In
his opinion, the Respondent’s product does infringe the specified claims of the
‘132 Patent.
[21]
In
his second affidavit, Dr. Neufeld said that he had been asked to explain
glaucoma and ocular hypertension and to describe the common general knowledge,
as of September 12, 1989, based on his expertise relative to prostaglandins. He
was also asked to give his “interpretation” of the ‘132 Patent as of July 29,
1997 and to describe the qualifications of the POSITA.
[22]
The
Applicants filed one affidavit of fact, that is the affidavit of Ms. Arshia
Ghani, Regulatory Affairs Associate of Pfizer Canada. She deposed
to the ownership of the ‘132 Patent and the issuance of NOCs over a number of
years, beginning in 1997.
ii) Respondent’s Witnesses
[23]
The
Respondent filed the affidavits of Dr. Ashim Mitra, Dr. Steven Podos, Dr. Glenn
Prestwich, Dr. George Spaeth and Mariane Simonian.
[24]
Dr.
Ashim Mitra is a pharmaceutical chemist and a Missouri Curator’s Professor of
Pharmacy. He is the Chairman of the Division of Pharmaceutical Sciences at the University of Missouri.
Among other things, he is engaged in research focused on synthesizing chemical
compounds, in particular ophthalmic drugs. He has been recognized for his work,
including receipt of an award in 2007 from the Association of Research in
Vision and Ophthalmology (“ARVO”).
[25]
Dr.
Mitra was asked to describe the qualification of a POSITA as of September 12,
1989, the Canadian filing date of the ‘132 Patent. He was asked to give an
opinion on the sufficiency of the specifications in the ‘132 Patent as of July
1997, the publication date. He was also asked to give an opinion on whether the
‘132 Patent was anticipated, whether it was obvious, whether the claims are
overbroad and whether the claimed invention lacks utility.
[26]
Dr.
Steven Podos is a Professor and Chair Emeritus of the Department of
Ophthalmology at Mount Sinai School of Medicine in New York City. He was
asked to give an opinion as to whether the ‘132 Patent is obvious to a POSITA
as of September 12, 1989, in view of the prior art and the common general
knowledge. He was also asked to give an opinion as to whether the data
disclosed in the ‘132 Patent is sufficient to disclose the invention, that is
its advantages over other prostaglandins.
[27]
Dr.
Glenn Prestwich is a medicinal chemist and Presidential Professor of Medicinal
Chemistry at the University of Utah in Salt Lake City. He is
engaged in research, including synthesis of inhibitors of epoxide hydro-laser.
[28]
Dr.
Prestwich was asked to give an opinion upon the issues identified in the NOA,
specifically with respect to the validity of the ‘132 Patent and the
qualifications of the POSITA as of July 29, 1997.
[29]
Dr.
Prestwich filed a second affidavit in which he addressed the issue of
infringement.
[30]
Finally,
the Respondent filed the affidavit of Ms. Mariane Simonian, a law clerk with
Hitchman and Sprigings, solicitors for the Respondent. Attached as exhibits to
her affidavit are copies of the articles referred to in Schedule A of the NOA
as the prior art cited by the Respondent.
C. The Eye, Glaucoma
and Ocular Hypertension
[31]
The
‘132 Patent deals with an ophthalmic solution for treatment of glaucoma and
ocular hypertension. The eye is a closed sphere that produces a clear fluid
called aqueous humor. Aqueous humor is essential to the functioning of
the eye. It conveys nutrients to the eye and removes waste products and
contaminants from the eye. Drainage of aqueous humor assists in avoiding an
increase in intraocular pressure. Elevated IOP is one of the strongest risk
factors for disorders of the eye, including glaucoma and ocular
hypertension.
[32]
Ocular
hypertension means elevated intraocular hypertension in the absence of damage
to the optic nerve, according to Dr. Fechtner. Glaucoma, according to Dr.
Fechtner, describes a group of disorders that are characterized by damage to
the optic nerve that results in loss of vision if the condition is left
untreated. Elevated intraocular pressure is one of the strongest risk factors
for the development and progression of glaucoma.
[33]
There
is no cure for glaucoma but both this disease and ocular hypertension can be
managed by the reduction of intraocular pressure. According to Dr. Fechtner,
this is the only risk factor of these disorders that can be modified by
treatment.
[34]
Two
possible ways of reducing intraocular pressure by the use of drugs are the
reduction in the production of aqueous humor and second, an increase in
the outflow of aqueous humor.
[35]
Successful
treatment of glaucoma by the use of drugs requires a high level of patient compliance.
Therapies with less frequent dosages are preferred by patients and contribute
to patient compliance.
[36]
Tolerance
of the drug regime is another factor that affects patient compliance.
Tolerability of drugs refers to the existence of side effects. Side effects may
be systemic, that is occurring throughout the body or local, that is adverse
effects occurring in and around the eye. Systemic effects of drugs used to
treat glaucoma include worsening of asthma or emphysema. Local side effects
include ocular inflammation, that is within the eye, and irritation, that is
side effects occurring outside the wall of the eye.
[37]
Conjunctival
hyperemia, that is redness of the eye, may also be a local side effect.
Conjunctival hyperemia can be experienced with or without irritation.
[38]
Prior
to the advent of Latanoprost, other drugs were on the market for the treatment
of glaucoma and ocular hypertension. According to the evidence of Dr. Buys and
Dr. Fechtner, these drugs included timolol maleate, epinephrine and acetazolamide
which caused side effects, including burning, hyperemia, tingling, and
stomach upset. Further, more serious systemic effects of these drugs were
blood disorders, cardiac arrhythmia, asthma, emphysema and death.
II. Issues
[39]
The
following issues arise from this application:
i.
How
should the claims in issue be construed?
ii.
Will
the Respondent’s drug infringe the ‘132 Patent?
iii.
Are
any of the Respondent’s allegations of invalidity justified, as follows:
(a) anticipation;
(b) obviousness;
(c) insufficiency
of the specification;
(d) lack of
utility;
(e) lack of sound
prediction;
(f) overbreadth.
III. Discussion and Disposition
[40]
The
parties filed a considerable amount of evidence in relation to this
proceeding. I will not refer to all of the evidence contained within the
record but instead will base my conclusions upon that evidence which I found to
be most relevant, credible and reliable. I have not ignored evidence to which
I do not explicitly refer.
A. Nature of This Proceeding
[41]
This
application seeks to prohibit the issuance of a NOC to the Respondent for its
product which contains Latanoprost. The Applicants challenge the Respondent’s
NOA on the grounds that the allegations of invalidity of the ‘132 Patent are
not justified.
[42]
A NOC
grants marketing approval for drugs in Canada. It is issued by the Federal Government,
indicating that all requirements have been met pursuant to the Food and Drug
Regulations for the protection of public health and safety. The NOC Regulations
authorize owners of existing patents for pharmaceutical products to file a
“patent list” relative to those products for which they hold a NOC. The NOC
Regulations refer to the person filing such a list as the “first person”. In
this case, the Applicants are the “first person”.
[43]
The
framework of the NOC Regulations allows generic drug manufacturers to rely on
prior approval of related pharmaceutical products in applying for marketing
approval of their generic form of the products. Manufacturers who produce the
same drug may file an application for a NOC that refers to and relies on the
fact that prior approval has been granted for the brand-name version of the
drug. Such a manufacturer is known as the “second person” and that is the
Respondent’s status.
[44]
The NOC
Regulations prohibit the Minister of Health from issuing a NOC until all
relevant product and use patents in the earlier approved medicine, as described
in the patent list, have expired. Consequently, a second person must either
wait until patent expiry before receiving a NOC or it may submit a NOA to the Minister
with its new drug submission.
[45]
The NOC
Regulations require service of the NOA upon the first person. Section 5 sets
out the grounds upon which a NOA is to be based. Briefly, the NOA must assert
either that the first person is not the patentee, that the patent is expired or
invalid, or that it would not be infringed if a NOC were issued.
[46]
Following
service of the NOA, the Minister may issue a NOC to the second person, unless
the first person avails of its right, pursuant to section 6(1) of the NOC Regulations,
to seek an order from the Federal Court prohibiting the Minister from issuing
the NOC. Any such step must be taken by the first person within 45 days after
receipt of the NOA and once such a proceeding is commenced, the issuance of a
NOC to the second person is stayed for a maximum period of twenty-four months.
B. Burden of Proof
[47]
Before
addressing the specific aspects of this case, I will briefly address the
jurisprudence applicable to the burden of proof and the question that must be
answered in a NOC proceeding. It is well-established that the burden of proving
that the second person’s, that is, Pharmascience’s, allegations are not
justified is on the person seeking the Prohibition Order, Pfizer. Pfizer must
establish, on a balance of probabilities, that Pharmascience’s allegations are
not justified. Pharmascience must put its allegations “in play” through its
NOA. However, once that has been done, Pfizer bears the burden of proving that
such allegations are not justified, on a balance of probabilities: see Eli
Lilly and Co. v. Nu-Pharm Inc. (1996), 69 C.P.R. (3d) 1 (F.C.A.), Merck
Frosst Canada Inc. v. Canada (Minister of National Health and Welfare)
(1994), 55 C.P.R. (3d) 302 (F.C.A.) and SmithKline Beecham Pharma Inc. v.
Apotex Inc., [2001] 4 F.C. 518 (T.D.), aff’d (2002), 291 N.R. 168 (F.C.A.).
[48]
Second,
the Court must determine whether Pharmascience’s allegations of invalidity are
justified or not. In Pharmacia Inc. v. Canada (Minister of National Health and
Welfare)
(1994), 58 C.P.R. (3d) 209 (F.C.A.) (“Pharmacia”) the Federal Court of
Appeal commented upon the standard to be applied to this type of proceeding, at
page 216:
...these proceedings are not actions for
determining validity or infringement: rather they are proceedings to determine whether
the Minister may issue a notice of compliance. That decision must turn on
whether there are allegations by the generic company sufficiently substantiated
to support a conclusion for administrative purposes (the issue of a notice of
compliance) that the applicant’s patent would not be infringed if the generic’s
product is put on the market…
[49]
In SmithKline,
Justice Gibson considered the evidentiary burden in proceedings under the NOC
Regulations where invalidity of a patent is alleged. At paras. 14 to15 he wrote
the following:
Against the foregoing, I conclude that
while an “evidential burden” lies on Apotex to put each of the issues raised in
its notice of allegation “in play”, if it is successful in doing so, the “persuasive
burden” or “legal burden” then lies with SmithKline. Assuming Apotex to be
successful in putting the issue of validity of the ‘637 patent “in play”,
SmithKline is entitled to rely on the presumption of validity of the patent
created by subsection 43(2) of the Act.
The “persuasive burden” or “legal burden”
that lies with SmithKline in the circumstances described in the preceding
paragraph is, however, impacted by the nature of the proceeding here before the
Court. In Merck Frosst Canada Inc. v. Canada (Minister of National Health and
Welfare),
[(1994), 55 C.P.R. (3d) 302 (F.C.A.)] Mr. Justice Hugessen, for the Court,
wrote at pages 319-20:
As I understand the scheme of the
regulations, it is the party moving under s. 6, in this case Merck, which, as
the initiator of the proceedings, has the carriage of the litigation and bears
the initial burden of proof. That burden, as it seems to me, is a difficult one
since it must be to disprove some or all of the allegations in the notice of
allegation which, if left unchallenged, would allow the Minister to issue a
notice of compliance…
…
In this connection, it may be noted
that, while s. 7(2)(b) [of the Regulations] seems to envisage the court making
a declaration of invalidity or non-infringement, it is clear to me that such
declaration could not be given in the course of the s. 6 proceedings
themselves. Those proceedings, after all, are instituted by the patentee and
seek a prohibition against the Minister; since they take the form of a summary
application for judicial review, it is impossible to conceive of them giving
rise to a counterclaim by the respondent seeking such a declaration. Patent
invalidity, like patent infringement, cannot be litigated in this kind of
proceeding.
Thus, the burden on SmithKline is only to
disprove the allegations in the notice of allegation, not to justify
declarations of validity and infringement or conversely to negative claims for
declarations of invalidity and non-infringement.
[50]
The burden
lies on Pfizer, as the Applicants, to refute the allegations set forth by Pharmascience
in its NOA dated November 2, 2007. Therefore, like any plaintiff or applicant, Pfizer
has the overall legal burden of proof. Pharmascience, as the Respondent, has an
obligation to put the allegations set out in its NOA in play.
[51]
The
present proceeding is a summary proceeding pursuant to the NOC Regulations and
the Federal Court Rules, SOR/98-106 (the “Rules”) governing applications
for judicial review. A finding of invalidity or infringement in the context of
this type of proceeding is not determinative of that issue in any subsequent
action: Pharmacia at page 216.
Issue 1: Construction of
the ‘132 Patent
[52]
According
to the direction given by the Supreme Court of Canada in its decisions in Whirlpool
Corp. v. Camco Inc. (2000), 9 C.P.R. (4th) 129 (S.C.C.) and Free
World Trust v. Électro Santé Inc. (2000), 9 C.P.R. (4th) 168
(S.C.C.), before addressing the issues of infringement and invalidity, the
Court must first construe the patent.
[53]
Claims
construction must be approached in an informed and purposive manner, with close
regard to the purpose and intent of the authors. Information is to be gained
from the patent as a whole in order to determine the context in which the
claims are to be considered. The role of experts is to provide assistance, if
necessary, relative to the technical meaning of the words and concepts used in
the claims; see Whirlpool at paras. 51 and 52. In construing the claim,
the Court should be neither harsh nor benevolent but approach the claim with a
mind willing to understand.
[54]
The
‘132 Patent specification gives an overview of disorders of the eye
derived from elevated intraocular pressure (IOP), discloses the results if the
eye disorder is left untreated, and defines the formulae to determine IOP
levels. The specification goes on to discuss the current state of the art
available at the time the patent application was filed as well as the available
research activity undertaken in the use of prostaglandins. Finally, the
specification discloses the solution that the invention solves as well as some
of the preferred derivatives and preferred methods of preparing, testing, using
and applying the invention.
[55]
The
‘132 patent is governed by the provisions of the Patent Act, R.S.C.
1985, c. P-4, (the “Act”). The provisions of the Act that pertain to patents
applied for prior to October 1, 1989, are called “Old Act Patent”). The claims
are to be construed from the date of issue, that is July 29, 1997.
[56]
The
Applicants made submissions on the issue of claims construction. They argued
that claims construction should follow the steps outlined in the recent
decision of the Supreme Court of Canada in Sanofi-Synthelabo Canada Inc. v. Apotex
Inc. (2008), 298 D.L.R (4th) 385 (S.C.C.) at paras. 76.
[57]
As
noted earlier, Claims 12, 19, 31, 37 and 38 are in issue in this proceeding.
Broadly speaking, Claim 19 is a compound per se claim. Claims 12, 31, 37
and 38 are use claims, with Claim 12 limited by reference to Claim 1. I propose
to deal with construction of the claims, beginning with Claim 19.
[58]
Claim
19 reads as follow:
19. Compound
of claim 18, wherein the alkyl group is isopropyl.
[59]
This
claim is for the chemical compound described in Claim 18. Claim 18 reads as
follows:
18.
13,14-dihydro-17-phenyl-18,19,20-trinor-PGF2α
-alkyl-ester, in which the alkyl group has 1-10 carbon atoms.
[60]
I
construe Claim 19, having regard to Claim 18 as being a chemical compound with
isopropyl as the alkyl group. The isopropyl used as the alkyl group has three
carbon atoms.
[61]
Claims
12, 31, 37 and 38 are use claims and I construe them as such. Claim 12 refers
to Claim 1 and accordingly, can be read as follows:
i.
A
therapeutic composition for topical treatment of glaucoma or ocular
hypertension, containing a prostaglandin PGA, PGB, PGD, PGE or PGF in an amount
sufficient to reduce intraocular pressure without causing substantial ocular
irritation and an ophthalmologically compatible vehicle, which the omega chain
of the prostaglandin has the formula:
(13)
(14) (15-24)
C - B
- C - D - R2
wherein
C
is a carbon atom (the number is indicated within parenthesis);
B is a
single bond, a double bond or a triple bond;
D is a chain
with 1-10 carbon atoms, optionally interrupted by hetero atoms O, S, or N, the
substituents on each carbon atom being H, alkyl groups, lower alkyl groups with
1 – 5 carbon atoms, an oxo functionality or a hydroxyl group;
R2
is a ring structure selected from the group consisting of phenyl and phenyl
having at least one substituent, said substituent being selected from C1-C5
alkyl groups, C1-C4 alkoxy groups, trifluoromethyl
groups, C1-C3 aliphatic acylamino groups, nitro groups,
halogen atoms, and phenyl group; or an aromatic heterocyclic group having 5-6
ring atoms, selected from the group consisting of thiazol, imidazole,
pyrrolidine, thiopene and oxazole; or a cycloalkane or a cycloalkene with 3-7
carbon atoms in the ring, optionally substituted with lower alkyl groups with
1-5 carbon atoms.
12. An
ophthalmological composition according to claim 1, wherein the prostaglandin
derivative is 13,14-dihydro-17-phenyl-18,19,20-trinor-PGF2α
-isopropylester.
[62]
The
claim for use in Claim 12 is limited by the reference in Claim 1 to the
reduction of intraocular pressure “without causing substantial ocular
irritation”.
[63]
Claim
31 provides as follows:
31. The
use of 13,14-dihydro-17-phenyl-18, 19,20-trinor-PGF2α
-isopropylester in the treatment of glaucoma or ocular hypertension.
[64]
I
construe this to be a claim for the use of the compound in Claim 19 in the
treatment of glaucoma or ocular hypertension. Glaucoma and ocular hypertension
are disorders of the eye, according to the evidence of the expert witnesses.
[65]
Claim
37 provides as follows:
37. The
use of 13,14-dihydro-17-phenyl-18,19,20-trinor- PGF2α
-alkyl-ester, in which the alkyl group has 1-10 carbon atoms for the treatment
of glaucoma or ocular hypertension.
[66]
I
construe this to be a claim for the use of the compound claimed in Claim 19 for
the treatment of glaucoma or ocular hypertension.
[67]
Claim
38 provides as follows:
38. The
use of 13,14-dihydro-17-phenyl-18,19,20-trinor- PGF2α
-isopropyl-ester in the treatment of glaucoma or ocular hypertension.
[68]
I
construe this to be another claim for the use of the compound claimed in Claim
19 in the treatment of glaucoma or ocular hypertension. It is identical to
Claim 37 with a difference in the spelling of “isopropylester”, a hyphen is
included in Claim 38.
[69]
Since
this is an Old Act Patent, the operative date for claims construction is the
date of issuance of the ‘132 Patent, that is July 29, 1997. In this regard, I
refer to the decision in Janssen-Ortho Inc. v. Novopharm Ltd. (2006),
57 C.P.R. (4th) 6 (F.C.), aff’d (2007), 59 C.P.R. (4th) 116 (F.C.A.), leave
to appeal to S.C.C. refused, [2007] 3 S.C.R. xii.
Issue 2: Infringement
[70]
The
Respondent alleges that its product will not infringe the ‘132 Patent because
the ‘132 Patent claims an old use for an old compound. This kind of allegation
is known as the “Gillette Defence” on the basis of the decision in Gillette
Safety Razor Co. v. Anglo-American Trading Co. Ltd. (1913), 30 R.P.C. 465
(H.L.) at 480 to 481 where the House of Lords said the following:
The defence that “the alleged
infringement was not novel at the date of the plaintiff’s Letters Patent” is a
good defence in law, and it would sometimes obviate the great length and
expense of Patent cases if the defendant could and would put forth his case in
this form, and thus spare himself the trouble of demonstrating on which horn of
the well-known dilemma the plaintiff had impaled himself, invalidity or
non-infringement.
[71]
The
Gillette Defence has been raised in many cases in Canada but has
rarely been successful. One exception to that trend is the decision in Eli
Lilly Canada Inc. v. Apotex Inc., 75 C.P.R. (4th) 165 (F.C.) at
paras. 60 to 64 where the Court, per Justice Hughes, found that the product to be
produced by the respondent would not be different from that produced by the
process of a prior art patent and in theory, the respondent would
infringe the patent in issue in the proceedings before him. However, he found
that the product of that earlier patent anticipates the product of the patent
in issue and consequently, the claims in issue were invalid.
[72]
In
my opinion, the availability of the “Gillette Defence” depends upon the
determination of the many allegations of invalidity raised by the Respondent. This
means that if the allegations of anticipation and obviousness fail, this
Gillette Defence must also fail.
[73]
Dr.
Neufeld addressed the issues of infringement on behalf of the Applicants. He
referred to the description of the Respondent’s product as set out in the NOA
as follows:
PMS has sought approval to sell
latanoprost ophthalmic solution, 50 microgram/ml (“pms-latanoprost”).
pms-Latanoprost is indicated for the
following:
“pms-Latanoprost (latanoprost) is
indicated for the reduction of intraocular pressure in patients with open-angle
glaucoma or ocular hypertension. pms-Latanoprost may be used for the reduction
of intraocular pressure in patients with chronic angle-closure glaucoma who
underwent peripheral iridotomy or laser iridoplasty.”
[74]
He
further stated, in his affidavit, that the active pharmacological ingredient in
PMS-Latanoprost is 13, 14-dihydro-17-phenyl-18,19,20-trinor-PGF2α-isopropyl
ester which is Latanoprost as set out in Claim 19 of the ‘132 Patent.
[75]
Dr.
Neufeld reviewed the five claims of the ‘132 Patent that are in issue and
tendered the opinion that the Respondent’s product will infringe each claim. Claim
12 of the ‘132 Patent claims an ophthalmological composition containing
Latanoprost as described in Claim 19. He also reviewed the use claim in Claims
31, 37 and 38, in comparison with PMS-Latanoprost, and concluded that the use
claim will be infringed by the Respondent’s product.
[76]
Dr.
Prestwich responded to Dr. Neufeld’s evidence, on behalf of the Respondent. He
proffered the opinion that if Dr. Neufeld were correct in his interpretation of
the claims in issue, then:
… it is clear that the ‘132 patent covers
an old compound (latanoprost) for an old use (reducing IOP) as was disclosed in
the prior art (as I discussed in my First Affidavit). Similarly, claims 19, 31,
37 and 38 which contain no reference to ocular irritation, cover an old
compound for an old use.
[77]
In
short, then, Dr. Prestwich rests his opinions on non-infringement upon his
interpretation of the prior art that Claim 12 of the ‘132 Patent claims an old
compound, that is Latanoprost, for an old use, that is the reduction of IOP.
Likewise, he offers the opinion that Claims 19, 31, 37 and 38, which are silent
on the matter of ocular irritation, claim an old compound for an old use.
[78]
The
determination of the allegation of non-infringement by the Respondent, then,
depends upon the assessment of the allegations of invalidity that the
Respondent advances.
Issue 3: Invalidity
[79]
The
Respondent advances several grounds of invalidity against the ‘132 Patent, as
follows: anticipation, obviousness, lack of utility, lack of sound prediction,
overbreadth and lack of sufficiency.
i) Anticipation
[80]
Two
distinct requirements must be met in order to prove anticipation, that is disclosure
and enablement. The Supreme Court of Canada addressed these requirements in its
decision in Sanofi. Adopting the approach taken by Lord Hoffmann in the
decision of the House of Lords in Synthon B.V. v. SmithKline Beecham plc,
[2006] 1 All E.R. 685 (H.L.), Mr. Justice Rothstein said the following at para.
25 of Sanofi:
He explains that the requirement of prior
disclosure means that the prior patent must disclose subject matter which, if
performed, would necessarily result in infringement of that patent, and states,
at para. 22:
If I may summarise the effect of these
two well-known statements [from General Tire and Hills v. Evans],
the matter relied upon as prior art must disclose subject matter which, if
performed, would necessarily result in an infringement of the patent. . . It
follows that, whether or not it would be apparent to anyone at the time,
whenever subject matter described in the prior disclosure is capable of being
performed and is such that, if performed, it must result in the patent being
infringed, the disclosure condition is satisfied.
When considering the role of the person
skilled in the art in respect of disclosure, the skilled person is “taken to be
trying to understand what the author of the description [in the prior patent]
meant” (para. 32). At this stage, there is no room for trial and error or
experimentation by the skilled person. He is simply reading the prior patent
for the purposes of understanding it.
[81]
Once
the element of disclosure has been addressed, the Supreme Court in Sanofi
instructed that the second step, that is enablement, is to be considered only
if the prior element of disclosure is satisfied. In this regard, I refer to
para. 26 of the Sanofi decision where the Supreme Court said the
following:
If the disclosure requirement is
satisfied, the second requirement to prove anticipation is “enablement” which
means that the person skilled in the art would have been able to perform the
invention (para. 26). Lord Hoffmann held that the test for enablement for
purposes of anticipation was the same as the test for sufficiency under the
relevant United Kingdom legislation. (Enablement for the
purposes of sufficiency of the patent specification under the Canadian Patent
Act, s. 34(1)(b) of the pre-October 1, 1989 Act, now s. 27(3)(b), is not an
issue to be decided in this case and my analysis of enablement is solely
related to the test for anticipation. The question of whether enablement for
purposes of sufficiency is identical in Canada is better left to another day.)
[82]
In
short, the disclosure requirement is met when a single document discloses
subject matter that, if performed, would necessarily result in infringement. If
there is more than one possible result, there is no disclosure. Further, the
requirement of disclosure is not met when the prior art teaches a broad class
and the invention is for a specific member of that class; see Sanofi, Synthon
and Pfizer Canada Inc. v. Canada (Minister of
Health)
(2008), 67 C.P.R. (4th) 23 (F.C.A.) at para. 83 (“Pfizer 2008”).
[83]
Any
patent application filed and any patent issuing from it must comply with subsection
27(1) of the Act which outlines the relevant date to assess the state of the
art. In this proceeding, it is two years before the Canadian filing date of
the application. The filing date for the ‘132 Patent is September 12, 1989
under the Act and therefore anticipation is based on a date on or before
September 12, 1987. Subsection 27(1) of the Act provides:
27. (1)
Subject to this section, any inventor or legal representative of an inventor
of an invention that was
(a)
not known or used by any other person before he invented it,
(b)
not described in any patent or in any publication printed in Canada or in any other country more than two years before
presentation of the
petition
hereunder mentioned, and
(c)
not in public use or on sale in Canada for more than two years prior to his
application in Canada, may, on presentation to the Commissioner of a petition
setting out the facts, in this Act termed the filing in the application, and
on compliance with all other requirements of this Act, obtain a patent
granting to him an exclusive property in the invention.
|
27.
(1) Sous réserve des autres dispositions du présent article, l’auteur de
toute invention ou le représentant légal de l’auteur d’une invention peut,
sur présentation au commissaire d’une pétition exposant les faits, appelée
dans la présente loi le « dépôt de la demande », et en se conformant à toutes
les autres prescriptions de la présente loi, obtenir un brevet qui lui
accorde l’exclusive propriété d’une invention qui n’était pas :
a) connue ou utilisée par une autre
personne avant que lui‑même l’ait faite;
b) décrite dans un brevet ou dans une
publication imprimée au Canada ou dans tout autre pays plus de deux ans avant
la présentation de la pétition ci‑après mentionnée;
c) en usage public ou en vente au
Canada plus de deux ans avant le dépôt de sa demande au Canada.
|
[84]
The
Respondent cited many articles of prior art. All documents with a date on or
before September 12, 1989, the filing date, have been reviewed. No document
listed in the prior art disclosed the chemical composition of Latanoprost as
defined in the ‘132 Patent for the treatment of glaucoma or ocular hypertension
as further discussed below.
[85]
In
oral argument, the Respondent focused on two pieces of prior art, that is NOA
Document No. 20, an article by E. Granstrom (the “Granstrom article”)
and NOA Document No. 25, Canadian Patent No. 986,926 (the “ ‘926 Patent”).
[86]
The
Granstrom article is entitled “Metabolism of 17-phenyl-18,19,20-trinor PGF2α
in the Cynomolgus Monkey and the Human Female”. It was accepted on
December 16, 1974 and published in January 1975.
[87]
The
same arguments were advanced with respect to the ‘926 Patent.
[88]
Dr.
Mitra opined that both the Granstrom article and the ‘926 Patent anticipate
Latanoprost. He said that the Granstrom article, which was published in 1975,
describes Latanoprost in the acid form and as a methyl ester. The acid form
works in the body and according to Dr. Mitra, this means that Latanoprost is
disclosed in the article.
[89]
Dr.
Mitra took a similar stance with respect to the ‘926 Patent, saying that this
patent disclosed Latanoprost as an acid and an alkyl ester.
[90]
Dr.
Prestwich also addressed these two pieces of prior art, as well as NOA Document
No. 13, British Patent Application No. 1,324,737 (the “‘737 application”). He
offered the opinion that according to the Granstrom article, NOA Document No.
20, a POSITA would know that a prostaglandin analog containing a phenyl
ring and an ester was known. He expressed the opinion that this application
disclosed “all the structural elements of the latanoprost molecule”.
[91]
Dr.
Prestwich said that the Granstrom article, NOA Document No. 20, disclosed the
acid form of Latanoprost as a metabolite of 17-phenyl-18,19,20-trinor-PGF2α
.
[92]
As
for the ‘926 Patent, NOA Document No. 25, Dr. Prestwich said that this patent
also discloses the chemical structure of the acid form of Latanoprost and
further, that this patent discloses the method for making Latanoprost in the
acid form and that the acid form can be esterified.
[93]
Dr.
Maxey and Dr. Neufeld, expert witnesses on behalf of the Applicants, disagree
with the opinions expressed by the Respondent’s expert witness. Dr. Maxey
considered the opinions regarding the anticipatory effect of GB ’737, NOA
Document No. 13, the Granstrom article, NOA Document No. 20 and the ‘926 Patent,
NOA Document No. 25. He said the opinions of both Dr. Mitra and Dr. Prestwich
with respect to the GB ‘737 demonstrate a hindsight approach and
further, that this patent application has nothing to do with the eye. He said
that the Granstrom article does not disclose the isopropyl compound which is
required by the ‘132 Patent in Claim 19.
[94]
Likewise,
Dr. Maxey said that the ‘926 Patent, NOA Document No. 25 does not disclose
Latanoprost.
[95]
Having
regard to the conflicting evidence given by the expert witnesses for the
Applicants and the Respondent, and having reviewed the documents in question, I
am satisfied that none of the documents relied upon by the Respondent disclose
the chemical composition of Latanoprost as defined in the ‘132 Patent for the
treatment of glaucoma or ocular hypertension. There is not a single prior
publication that discloses all the information that is necessary, for practical
purposes, to perform the claimed invention without the exercise of any
inventive skill.
[96]
The
legal test to establish anticipation requires the second person to show both
disclosure and enablement in an anticipatory publication. The Court needs to
consider the question of enablement if the prior publication meets the
requirements of disclosure. That threshold has not been met in this case.
[97]
The
Respondent has not shown that any prior art anticipates the compound claimed in
Claim 19. It is not necessary for me to discuss the matter of enablement.
ii) Obviousness
[98]
In
Sanofi, the Supreme Court of Canada set out the prevailing test for
obviousness in Canada. This requires the Court to look at the
following elements:
(a) identify
the skilled person to whom the patent is addressed and the state of the art
known to that person;
(b) identify
the inventive concept in the claims, having regard to the disclosure if the
claims do not expand on that concept;
(c) determine
the differences between what was previously known and the inventive concept in
the claims; and
(d) determine
if those differences would be obvious without the benefit of hindsight.
[99]
If
the “obvious to try” test is appropriate, Justice Rothstein in Sanofi
identified four additional but non-exhaustive factors to consider under the
fourth step:
(a) Is
it more or less self-evident that what is being tried ought to work? Are there
an infinite number of identified predictable solutions known to persons skilled
in the art?
(b) What
is the extent, nature and amount of effort required to achieve the invention?
Are routine trials carried out or is the experimentation prolonged and arduous,
such that the trials would not be considered routine?
(c) Is
there a motive provided in the prior art to find the solution the patent
addresses?
(d) What
is the course of conduct followed in arriving at the invention?
(1)
The Person of Ordinary Skill in the Art and the Common General Knowledge
[100] There is
really no dispute between the parties that the POSITA could be a medicinal or
organic chemist or a pharmacologist, holding at least a Bachelor’s degree, with
some familiarity with prostaglandins and the ophthalmological field, as well as
a medical doctor specializing in ophthalmology. The qualifications of the POSITA
were addressed by Dr. Mitra, Dr. Podos, Dr. Prestwich and Dr. Neufeld.
[101] The relevant
common general knowledge of the POSITA would include all of the prior art that
was submitted by the Respondent. The experts for both parties agreed that
prostaglandins have the potential to reduce IOP and that reduction of IOP was disclosed
in the prior art, but that prostaglandins caused side effects such as hyperemia and
irritation in the eye. These points were addressed by Dr. Fechtner, Dr. Mitra,
Dr. Podos, Dr. Neufeld and Dr. Stjernschantz. The relevant common general
knowledge would include awareness of the types of drugs on the market at the
filing date of the ‘132 Patent, that is September 12, 1989.
[102] The
Applicants greatly focused on the fact that Dr. Stjernschantz, as one of the
inventors, was awarded the Proctor Medal at the ARVO Conference in 2000. Their
emphasis upon the bestowal of this award for Dr. Stjernschantz’ work with
prostaglandins, including the invention of Latanoprost, undoubtedly illustrates
achievement and professional respect from peers and others working in the field
of ophthalmology.
[103] However,
receipt of this award per se is not dispositive of the legal issues of
obviousness and utility. These issues are subject to distinct legal tests in Canada. While the
evidence about the Proctor Medal is interesting and forms part of the
background, it is not a determinative answer to the allegations of invalidity
that are in play here.
[104] With respect
to the issue of the relevant common general knowledge of the POSITA, the
Applicants’ experts generally concurred that as of September 12, 1989 for Old
Act Patent that the POSITA would know that there was not an available
medication that contained a prostaglandin for the treatment of glaucoma or
ocular hypertension. At that time, that is as of September 12, 1989, the state
of the art was a drug called timolol that had to be administered to each eye
between two and four times per day for the rest of a patient’s life since
glaucoma is a chronic condition – that requires continuing treatment. Both Dr.
Neufeld and Dr. Fechtner addressed that point in their affidavits. As well,
timolol causes systemic side effects such as cardio arrhythmia, asthma
and emphysema. There were other drugs on the market, such as acetazolamide, that
were effective in treating glaucoma or ocular hypertension with similar side
effects to timolol, but none contained prostaglandins.
(2)
The Inventive Concept
[105] The
Applicants claim that the inventive concept of the claims in issue is the use
of Latanoprost to reduce IOP in the treatment of glaucoma or ocular
hypertension without causing substantial ocular irritation.
[106] The
Respondent asserts that there is no “inventive concept”, that the patent simply
reveals an old use of an old compound.
[107] I am
persuaded by the evidence of the Applicants, that is the evidence of Dr.
Neufeld who said the following at paras. 46 and 70 of his affidavit:
46. Dr. Johan W. Stjernschantz and Dr. Bahram
Resul, who were working for Pharmacia, invented a new compound, latanoprost
(13,14-dihydro-17-phenyl-18,19,20 trinor- PGF2α-IE),
a compound useful for the treatment of patients with glaucoma or ocular
hypertension. This compound had a better side effect profile than PGF2α-IE,
i.e. a compound that had been previously tested in humans (see Document No.
127). Latanoprost was shown to cause less ocular irritation and hyperemia.
70.
The inventors conducted tests on latanoprost to determine the degree of ocular
irritation in cats (see Table III of the ‘132 Patent), the degree of
conjunctival hyperemia in rabbits (see Table IV of the ‘132 Patent), the IOP
reducing effects in monkeys (see Table V of the ‘132 Patent) and in human
volunteers (see Table VI of the ‘132 Patent). Based on the results of these
tests, which I have explained above, the ‘132 Patent correctly and fully
describes to the person of ordinary skill in the art, as of July 29, 1997 the use
of latanoprost in the treatment of ocular hypertension or glaucoma without
causing substantial ocular irritation.
[108] Prostaglandins,
according to both Dr. Maxey and Dr. Prestwich, are naturally occurring
molecules and are found in infinite combinations naturally. Synthetic types can
be made with an infinite number of molecular attachments.
[109] It is either
inconclusive or not clearly shown that prostaglandins, other than Latanoprost
at that time, did not cause substantial ocular irritation to the extent that
another type of prostaglandin was a viable option, except the fact that no other
drug was on the market at that time. None of the affidavits filed on
behalf of both the Applicants and the Respondent conclusively show that there
was another prostaglandin compound ready to be used as a drug on the market
with good patient compliance since the side effects were so high as documented
in the prior art. Pfizer and Pharmascience agreed that prostaglandins were a
promising area to explore due to the reduction in IOP. However, as of the
filing date, the IOP promise could not be separated from the side effects.
More exploration was needed to conquer side effects and irritation.
[110] As of
September 12, 1989, the general consensus was that prostaglandins were a
promising area to explore in terms of IOP reduction but more work was required
as the possibility of patient non-compliance was high, due to the side effects
of hyperemia, irritation, burning and other intolerable reactions. The body of
conflicting evidence, for example, NOA Doc. 64 Bito Patent EP 0,093,380 and NOA
Doc. 25 Canadian Patent 986,926 does not show that the problem of side
effects had been solved.
(3) Differences
Between the “State of the Art” and the Inventive Concept of the Claim.
[111] As of
September 12, 1989, the state of the art would have been the other medicines on
the market that were used to treat glaucoma or ocular hypertension. Those
medicines are timolol, epinephrine, acetazolamide and pilocarpine.
[112] Latanoprost,
being a synthetic prostaglandin that was used to treat IOP without substantial
ocular irritation, would be different from the state of the art since it is the
first marketable prostaglandin drug. The side effects of Latanoprost, in
comparison with those of timolol, are limited to just ocular irritation. In
this regard, I refer to the evidence of Dr. Buys who said that in her practice,
Latanoprost is better tolerated than other prostaglandin analogues like bimatoprost
and travoprost.
(4) Are
these steps obvious to the skilled person or do they require a degree of
invention?
(A)
Is it self-evident that what is being tried ought to work?
[113] The evidence
submitted by the witnesses for both parties shows that as of September 12,
1989, those working in the ocular field wanted to find any type of
prostaglandin that would work well enough to be a marketable drug in any area
of medicine. Many people were publishing articles describing experimental and
theoretical data, thereby creating a vast bibliography, numbering in the
thousands of documents about prostaglandins. According to Dr. Maxey, Dr.
Stjernschantz, Dr. Mitra, Dr. Podos and Dr. Neufeld, it was easy to find a
document pointing in one direction and several others that gave different conclusions.
[114] Finally, it
is noteworthy that an almost infinite number of changes can be made to the
natural prostaglandin, in this case the naturally occurring PGF2α . Furthermore,
a POSITA making molecular changes to PGF2α-IE could not
predict the result, since subtle changes in the addition or removal of
molecules from its structure can result in major changes of biological
activity.
[115] On these
grounds, it would not have been obvious that what is being attempted, that is
the chemical structure of Latanoprost, would work.
(B) What is
the extent, nature and amount of effort required to achieve the invention? Are
routine trials conducted or is the experimentation long and arduous, such that
the trial would not be considered routine?
[116] The parties
tendered conflicting evidence on this point. Dr. Stjernschantz, on behalf of
the Applicants, deposed that the synthesis of prostaglandin analogs was
difficult and time-consuming. Experimentation was conducted to find the
modification for PGF2α that would yield the desired
pharmacological benefits. Of course, Dr. Stjernschantz was more experienced than
the POSITA and he had the advantage of having worked with Dr. Bito who was very
prolific and one of the most knowledgeable researchers in this field.
[117] Dr. Podos,
Dr. Prestwich and Dr. Mitra, witnesses on behalf of the Respondent, concluded
that Latanoprost was obvious, in light of the prior art. They said that the
testing that was performed was routine and inadequate and they question
the reliability of the data recorded in the ‘132 Patent relative to that
testing.
[118] Testing
results shown on pages
22d and 25-29, that is Tables III to VI of the ‘132 Patent discloses test
results on animals and healthy humans where Latanoprost demonstrates how it
works in that it lowers IOP while having minimal irritative effects. The ‘132
Patent discusses why certain animals were used as well as the grading used to
compare compounds. The test results disclose dosage levels and the grading
scale.
[119] Tables III to VI show comparative
tests on Latanoprost and other compounds to determine the required outcomes. More
specifically, the results on page 22d are from a test of Latanoprost in two healthy
human volunteers and show a reduction in IOP over time wherein there is no
reported occurrence of side effects such as hyperemia or ocular irritation. Table III is
a compound comparative test to show the degree of ocular irritation in cats.
[120] Table IV
compares the degree of conjunctival hyperemia for different compounds in
rabbits, Table V compares the IOP reducing effects of different compounds in
monkeys and cats. Table VI uses healthy humans to show IOP reducing effects
for various compounds. The tests were criticized as failing to provide enough
“experimental protocols” for the POSITA to reproduce the experiments.
[121] In spite of
the conflicting opinions from the experiments for the Applicants and the
Respondent, I find the evidence adduced by the Applicants to be more
persuasive. I am satisfied from the evidence of Dr. Stjernschantz, in particular
as set out in paras. 40 to 44 of his affidavit, that the POSITA following a
similar course of conduct that may encompass routine experimentation, using the
common general knowledge and prior art, and acting in a manner similar to that
followed by Dr. Stjernschantz, would not obtain the same results. Indeed, a
competitor looking at data he performed from comparable types of
experimentation that had been performed by Dr. Stjernschantz recorded a
different conclusion about the viability of using synthetic PGF2α compounds.
In this regard, I refer to the paper written by D. F. Woodward et al entitled
“Prostaglandin F2α Effects on Intraocular Pressure
Negatively Correlate with FP-Receptor Stimulation, published August 1989, NOA
document 107.
(C) Is there
a motive in the prior art to find the solution that the patent addresses?
[122] As stated
above, many people wanted to find a marketable drug using prostaglandins for
the treatment of glaucoma and ocular hypertension. Prostaglandins had been
identified by prior art as having great efficiency in the reduction of IOP.
However, prior to the discovery of Latanoprost, the general consensus was that
the irritative effects of prostaglandins could not be adequately removed in
order to provide for a useable product.
(D) What is
the course of conduct that was followed in arriving at the invention?
[123] The mixing
and reacting of chemicals was used, along with experimentation on animals and
humans, in order to obtain data for analysis. The results of the testing are
set out in Tables III, IV, V and VI. The tables address testing in cats,
rabbits, monkeys or cats and humans, respectively.
[124] The difference
here, between the Applicants and its competitors is in the consolidation of the
data, the analysis of the data obtained and the conclusions drawn from the
experimentation which was done.
(5) Conclusion
on Obviousness
[125] I find that Latanoprost
would not have been obvious to the ordinary skilled person. I
conclude that the allegation of obviousness is not justified.
iii) Insufficiency
of the Specification
[126] The concept of utility was discussed by
the Supreme Court of Canada in its decision in Consolboard Inc. v. MacMillan
Bloedel (Saskatchewan) Ltd., [1981] 1 S.C.R. 504 at 521-527. At p. 525, the
Supreme Court succinctly explained the concept of utility as follows:
There is a helpful discussion
in Halsbury’s Laws of England, (3rd ed.), vol. 29, at p. 59,
on the meaning of “not useful” in patent law. It means “that the invention will
not work, either in the sense that it will not operate at all or, more broadly,
that it will not do what the specification promises that it will do”. There is
no suggestion here that the invention will not give the result promised. The
discussion in Halsbury’s Laws of England, ibid., continues:
... the practical
usefulness of the invention does not matter, nor does its commercial utility,
unless the specification promises commercial utility, nor does it matter
whether the invention is of any real benefit to the public, or particularly
suitable for the purposes suggested...
and concludes:
... it is
sufficient utility to support a patent that the invention gives either a new
article, or a better article, or a cheaper article, or affords the public a
useful choice. [Footnotes omitted by S.C.C.]
[127] Recently, in Pfizer
2008 at para. 62, the Federal Court of Appeal interpreted subsection
27(3) of the Act as it now stands as meaning that “[T]here is no
requirement that a patentee explain in the disclosure why and how his invention
is useful.”
[128] Pharmacience
alleges that the ‘132 patent is invalid because it does not provide sufficient
information about the invention as required under subsection 34(1) of the Old
Act Patent, which is now found under subsection 27(3) of the Act. This position
was taken by Dr. Mitra and Dr. Podos, on behalf of the Respondent. The
Respondent’s witnesses claim that the POSITA would not be able to draw any
valid scientific conclusions from the ‘132 Patent regarding the efficacy of
Latanoprost as compared to the other compounds listed in the tables disclosed
because basic scientific practices were not followed, for example no long term
studies were recorded, the choice of animal and human models was inadequate, and
the ‘132 Patent does not adequately disclose the definition of irritation and
background data to support the claim that the Latanoprost is inventive.
[129] The relevant
parts of subsection 34(1) of the Old Act Patent require that the specification
of an invention must:
1. fully
describe the invention, its operation and use;
2. set out
clearly the various steps in the process or method of construction of the
invention to enable any person skilled in the science to which it pertains to
make the invention and use it.
[130] Subsection
27(3) of the Act states:
(3):
The specification of an invention must
(a) correctly and fully describe the
invention and its operation or use as contemplated by the inventor;
(b) set out clearly the various steps
in a process, or the method of constructing, making, compounding or using a
machine, manufacture or composition of matter, in such full, clear, concise
and exact terms as to enable any person skilled in the art or science to
which it pertains, or with which it is most closely connected, to make,
construct, compound or use it;
(c) in the case of a machine, explain
the principle of the machine and the best mode in which the inventor has
contemplated the application of that principle; and
(d)
in the case of a process, explain the necessary sequence, if any, of the
various steps, so as to distinguish the invention from other inventions.
|
(3)
Le mémoire descriptif doit:
a) décrire d'une façon exacte et
complète l'invention et son application ou exploitation, telles que les a
conçues son inventeur;
b) exposer clairement les diverses
phases d'un procédé, ou le mode de construction, de confection, de
composition ou d'utilisation d'une machine, d'un objet manufacturé ou d'un
composé de matières, dans des termes complets, clairs, concis et exacts qui
permettent à toute personne versée dans l'art ou la science dont relève
l'invention, ou dans l'art ou la science qui s'en rapproche le plus, de
confectionner, construire, composer ou utiliser l'invention;
c) s'il s'agit d'une machine, en
expliquer clairement le principe et la meilleure manière dont son inventeur
en a conçu l'application;
d)
s'il s'agit d'un procédé, expliquer la suite nécessaire, le cas échéant, des
diverses phases du procédé, de façon à distinguer l'invention en cause
d'autres inventions.
|
[131] The Federal
Court of Appeal in Pfizer 2008 reviewed the "sufficiency"
requirement under subsection 27(3) of the Act and held that the patent must
answer only two questions to meet the sufficiency requirement for the purpose
of subsection 27(3):
1.
What is the invention? and
2.
How does it work?
[132] The Court, at
para. 36, refers to Hughes and Woodley on Patents, 2nd ed., Volume 1, at
333 where the authors state:
Insufficiency is directed to
whether the specification is sufficient to enable a person skilled in the art
to understand how the subject mater of the patent is to be made [...] An
allegation of insufficiency is a technical attack that should not operate to
defeat a patent for a meritorious invention; such attack will succeed where
a person skilled in the art could not put the invention into practice. [Emphasis
in original]
[133] The relevant
date for construing the '132 Patent with respect to the sufficiency of the
disclosure and the POSITA is the date that the patent was placed open for
public inspection which is July 29, 1997 under the Act.
[134] The
Applicants’ witnesses agree that the POSITA as of July 29, 1997 would know from
the ‘132 Patent the subject matter of the invention, its operation and use as
contemplated by the inventors and that the patent fully describes Latanoprost
for the use in treating ocular hypertension or glaucoma without causing
substantial ocular irritation. The ‘132 Patent explains why each animal model
was used, how each test was graded for comparison, IOP effects and irritation
effects. The patent shows how to make the invention and also discloses what the
invention is.
[135] Finally, one
witness testifies that Dr. Mitra is wrong in that it is not relevant to
disclose the biological mechanism of action to demonstrate how the invention
works since, frequently, clinical drugs sold on the market are used for years
before it is conclusively found the biological mechanism of action. The ‘132
Patent shows that Latanoprost reduces IOP without substantial ocular irritation
and that is enough.
[136] In Pfizer
Canada Inc. et al. v. Canada (Minister of Health) et
al. (2008),
326 F.T.R. 88 (F.C.), Justice Hughes reviewed the Canadian
law as to utility at paras. 93 – 94 as follows:
93 The Patent
Act, supra, in defining an "invention" in section 2
requires that the invention be "new and useful". There
has not been a great deal of discussion by the higher Courts in Canada as to the concept of "utility".
That concept at times seems to be conflated with that of "sufficiency",
that is, does the patent provide sufficient description such that a person
skilled in the art can make something that is workable. Utility also seems at
times to be conflated with the concept of "claims broader than the
invention", that is, while the patent describes something that is
useful, it has claimed something more than that and the something more is not
useful.
94 A good summary of the Canadian
law as to utility, which is representative as to the law even today, was given
by Strayer, J., in his Reasons in Corning Glass Works v. Canada Wire
& Cable Ltd. (1984), 81 C.P.R. (2d) 39
(F.C.T.D.) at page 71:
“The legal position asserted by the
defendant is perhaps best represented by a passage which counsel cited from Minerals
Separation North American Corp. v. Noranda Mines Ltd. (1950), 12 C.P.R. 99
at p. 111-2 [1947] Ex. C.R. 306
at p. 317, 6 Fox Pat. C. 130, where, in speaking of the description of the
invention which must be set out in the disclosures, Thorson P. said:
‘The description must also give all
information that is necessary for successful operation or use of the invention,
without leaving such result to the chance of successful experiment, and if
warnings are required in order to avert failure such warnings must be given.
Moreover, the inventor must act uberrima fide and give all information known to
him that will enable the invention to be carried out to its best effect as
contemplated by him.’
To the same effect see also Hatmaker
v. Joseph Nathan & Co. Ltd. (1919), 36 R.P.C. 231 at 237 (H.L.).
Counsel also cited Hoechst Pharmaceuticals of Canada Ltd. et al. v.
Gilbert & Co. et al. (1965), 50 C.P.R. 26
at p. 58 [1966] S.C.R. 189,
at p. 194, 32 Fox Pat. C. 56. In that case Hall J. for the court invalidated
certain claims because they covered every possible member of a class of
compounds whether any given member could conceivably be made or not. The
patentee was held to have overclaimed in this respect.”
[137] The foregoing
review of the law means that a patentee must only answer what the invention
is and how it works, not how well it works.
[138] In the ‘132
Patent, I believe the Applicant has sufficiently disclosed the invention by
having the methods to make Latanoprost as found in the specification, the
specification disclosing and the testing results showing how Latanoprost works
and at the very least claim 19 for Latanoprost which is a compound per se claim
and finally claims 31, 37 and 38 are to the use of Latanoprost.
iv) Lack
of Utility
[139] The date for
determining utility for an Old Act Patent is the filing date, that is September
12, 1989.
[140] The
Applicants rely on the evidence of Dr. Neufeld and of Dr. Stjernschantz to
support the claim that the patent has utility. The Respondent relies on the
evidence of Dr. Mitra to say that it does not have utility. The key issue of
Dr. Mitra’s criticisms is that the patent promises an absence of adverse
side effects and that it does demonstrate utility.
[141] The
Applicants refer to the evidence of Dr. Neufeld, Dr. Stjernschantz, Dr.
Fechtner and Dr. Maxey to show that the ‘132 Patent has utility. The Applicants
submit that the evidence of the Respondent that is the affidavit of Dr. Mitra,
is unreliable because Dr. Mitra based his opinion of a lack of utility upon an
erroneous construction of the patent. According to Dr. Mitra, the Patent
promises an “absence of adverse effects” and it does not meet that promise.
[142] The
Applicants’ witnesses, that is Dr. Neufeld and Dr. Stjernschantz, say that
Latanoprost shows a reduction in ocular irritation. As the witnesses assert,
Claim 12 only refers to a reduction of IOP without substantial ocular
irritation. That does not refer to the elimination of all side effects.
[143] Further, the
patent itself shows utility. I refer to pages 7 and 8 where the patent
demonstrates what the invention is by stating the use for the treatment of
glaucoma or ocular hypertension where the irritating effects are reduced and
treatment is given with 1 or 2 drops per eye.
[144] Example 9 on
page 16 of the ‘132 Patent shows how to prepare Latanoprost. Page 22 of
the patent demonstrates what the invention is by stating that IOP is lowered
with minimal side effects. Page 23 shows the chemical structure of Latanoprost,
again what the invention is.
[145] Page 22d and
pages 25 to 29 disclose test results on animals and healthy humans where
Latanoprost demonstrates how Latanoprost how it works in that it
reduces IOP with minimal irritative side effects. Finally, the claims in issue
disclose Latanoprost.
[146] The ‘132
Patent demonstrates utility, discloses what the invention is and how it works,
as claimed. Furthermore, the disclosure requirements are met as of the issue
date. Disclosure can be assessed against documents published between September
12, 1989 and July 29, 1997. Dr. Fechtner referred to studies that were done
comparing Latanoprost to timolol and discussing the effectiveness of
Latanoprost. These articles were attached as exhibits to his affidavit.
[147] Dr. Neufeld
also discussed that he disagrees with both Dr. Podos and Dr. Mitra in that he
believes the data provided in the ‘132 Patent is enough to conclude that
Latanoprost will be useful in the treatment of ocular hypertension or glaucoma.
[148] In the
result, I am satisfied that the ’132 Patent offers the public a useful choice
from what was offered as the state of the art at the time of filing the patent
application and considering the prior art that was available to the POSITA.
v) Lack
of Sound Prediction
[149] The doctrine of
sound prediction was reviewed by the Supreme Court of Canada in Apotex Inc.
v. Wellcome Foundation Ltd., [2002] 4 S.C.R. 153. At para. 46, Justice
Binnie said that where the invention is for a new use for an old product, the
utility that is required for patentability must either be demonstrated or a
sound prediction based on the information and expertise then available.
[150] The doctrine
of sound prediction has three elements:
i.
there
must be a factual basis for the prediction;
ii.
the
inventor must have as the date of the patent application a “sound” line of
reasoning from which the desired result can be inferred from the factual basis;
iii.
there
must be proper disclosure.
[151] The date from
which sound prediction is to be considered is the filing date of the patent
application, that is September 12, 1989. In this regard, see Aventis Pharma
Inc. v. Apotex Inc. (2005), 43 C.P.R. (4th) 161 (F.C.), aff’d
(2006), 46 C.P.R. (4th) 401 (F.C.A.).
[152] While I have
found that the ‘132 Patent has utility, I will briefly address the issue of
sound prediction utility.
[153] The date and
the example of the ‘132 Patent provides a sound line of reasoning and
disclosure. Page 16 of the patent discloses how to make Latanoprost. Page 23
shows a diagram of the Latanoprost molecule. Pages 22d and 29 disclose test
results in healthy humans. Pages 25 to 29 disclose test results where
Latanoprost was tested on animals.
[154] As well, Dr.
Mitra Dr. Podos, Dr. Stjernschantz and Dr. Neufeld addressed these tests. While
Dr. Mitra and Dr. Podos criticize the test data, I am satisfied that the
evidence tendered by Dr. Neufeld supports the claim for sound prediction
utility.
vi) Overbreadth
[155] The
Respondent argues that the ‘132 Patent is invalid because the claims in issue
are broader than the invention claimed.
[156] The test for
overbreadth is set out in Lowell Manufacturing Co. and Maxwell Ltd. v.
Beatty Bros. Ltd. (1962), 41 C.P.R. 18 (Ex. Ct.) at p. 66 where the Court
said that “[i]f the claims read fairly on what has been disclosed and
illustrated in the specification and drawing, as they do, they are not wider
than the invention…”.
[157] Relying on
the evidence of Dr. Maxey and Dr. Neufeld, the Applicants submit that the
claims in issue are not broader than the invention disclosed. The Respondent,
relying on the evidence of Dr. Mitra, takes the contrary view.
[158] Dr. Mitra
says that Claim 12 is limited to compounds that do not cause ocular irritation,
even though these compounds may well cause hyperemia. He says Claim 19 is overbroad
because there is no use of the compound for “other disease states”, as well as
no disclosure dealing with the prevalence of irritation or hyperemia.
[159] However, I
prefer the evidence of the Applicants. The Respondent’s arguments are based
upon the fact that hyperemia was not included in the claims. It was within the
discretion of the inventors of the ‘132 Patent to forego making a claim in
relation to hyperemia. The claims in issue are not overbroad because the
inventors decided not to claim a particular benefit.
IV. Conclusion
[160] In
conclusion, I am satisfied that the Applicants have demonstrated on a balance
of probabilities that the allegations of invalidity set out by the Respondent
in its NOA dated November 2, 2007 respecting the ‘132 Patent are not justified.
It follows that the Gillette Defence is not available to the Respondent.
[161] Accordingly,
the Applicants are entitled to an Order of Prohibition relative to the ‘132
Patent and an Order will issue in that regard, with costs to the Applicants.
JUDGMENT
THIS COURT
ORDERS AND ADJUDGES that the application for an Order of Prohibition in
respect of the 1,339,132 Patent is granted with costs to the Applicants.
“E. Heneghan”