Alcon Canada Inc. v. Apotex Inc.

Alcon Canada Inc. v. Apotex Inc.

The claims were construed purposively but the Court refused to import the alleged mast cell stabilizer/dual‑action limitation from the specification because the claim language did not distinctly and explicitly include that limitation; therefore the claims were read to cover the known therapeutic use of olopatadine for allergic eye diseases and, given the prior art and common general knowledge that olopatadine was an antihistamine used in ocular allergy, the claimed monopoly was obvious and the 094 Patent is invalid.

Citation
2012 FC 410
Parties
Applicant: Alcon Canada Inc.; Applicant: Alcon Research, Ltd.; Applicant: Kyowa Hakko Kirin Co., Ltd.; Respondent: Apotex Inc.; Respondent: The Minister of Health
Court
Federal Court
Jurisdiction
Canada
Judgment Date
11 April 2012
Procedural Posture
Patented Medicines (notice of Compliance) Regulations Patent Linkage/noc Proceeding / Application for Order Prohibiting Minister From Issuing Noc; Judicial Determination on Claim Construction and Patent Validity (final Judgment)
Outcome
Application dismissed; 094 Patent invalid for obviousness; no order prohibiting issuance of NOC to Apotex; costs awarded to Apotex
Legal Topics
Claim Construction, Utility, Obviousness, Patent Validity, Notice of Compliance (noc) Proceedings
Source Language
English
Patent Law Pharmaceutical Regulatory Law Intellectual Property Litigation Claim Construction Utility Obviousness Patent Validity Notice of Compliance (noc) Proceedings

Case Brief

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Parties

Alcon Canada Inc.

Applicant

Alcon Research, Ltd.

Applicant

Kyowa Hakko Kirin Co., Ltd.

Applicant

Apotex Inc.

Respondent

The Minister of Health

Respondent

Procedural Posture

Patented Medicines (notice of Compliance) Regulations Patent Linkage/noc Proceeding / Application for Order Prohibiting Minister From Issuing Noc; Judicial Determination on Claim Construction and Patent Validity (final Judgment)

Legal Issues

  1. 1 Proper purposive construction of claims term "treating" and phrase "allergic eye diseases"
  2. 2 Whether the 094 Patent claims a new therapeutic use (mast cell stabilization) of olopatadine or merely the known antihistaminic use
  3. 3 Whether limitations from the specification can be imported into the claims

Ratio Decidendi

The claims were construed purposively but the Court refused to import the alleged mast cell stabilizer/dual‑action limitation from the specification because the claim language did not distinctly and explicitly include that limitation; therefore the claims were read to cover the known therapeutic use of olopatadine for allergic eye diseases and, given the prior art and common general knowledge that olopatadine was an antihistamine used in ocular allergy, the claimed monopoly was obvious and the 094 Patent is invalid.

Court Disposition

Application dismissed; 094 Patent invalid for obviousness; no order prohibiting issuance of NOC to Apotex; costs awarded to Apotex

Orders

  • Application dismissed with costs payable to Apotex Inc.
  • If parties cannot agree on costs parties shall file further written submissions not to exceed seven pages