Janssen Inc. v. Pharmascience Inc.
- Citation
- 2021 FC 5
- Status
- Judgment
- Jurisdiction
- Canada
- Court
- Federal Court
- Decision
- 6 January 2021
- Posture
- Patent Litigation / Final Judgment
- Language
- English
More details
- Court
- Federal Court
- Decision
- 6 January 2021
- Posture
- Patent Litigation / Final Judgment
- Language
- English
On this page
Professional case brief
Research organized from the available case record
01
Holding and result
The Court concluded the patent was invalid for obviousness/obvious to try and therefore void; accordingly the patent must be removed from the Patent Register. The Court also concluded that, but for the declaration of invalidity, Pharmascience's manufacture and sale of the specified abiraterone acetate tablets would have infringed the asserted claims.
Court disposition
Action dismissed; patent declared invalid and to be removed from the Patent Register; costs awarded to the Defendant with quantum to be determined.
Orders
- Declare Canadian Patent No. 2,661,422 invalid, void and of no effect and remove it from the Patent Register
- Except for the declaration of invalidity, find that making, constructing, using or selling PMS-ABIRATERONE 250 mg tablets by Pharmascience Inc would infringe the Asserted Claims
- Dismiss the action with costs to the Defendant; quantum of costs to be determined
02
Material facts
Parties
JANSSEN INC
PlaintiffJANSSEN ONCOLOGY, INC
PlaintiffBTG INTERNATIONAL LTD
PlaintiffPHARMASCIENCE INC
Defendant03
Procedural history
Posture
Patent Litigation / Final Judgment
04
Questions and positions
Legal issues
- 01
Whether Canadian Patent No. 2,661,422 is invalid for obviousness/obvious to try
- 02
Whether Pharmascience's manufacture/sale of PMS-ABIRATERONE 250 mg tablets would infringe the Asserted Claims
- 03
Relief and removal of the patent from the Patent Register
- 04
Entitlement and quantum of costs
Party arguments
- Applicant
- Plaintiffs argued the patent is valid and enforceable and asserted infringement against Pharmascience's proposed product.
- Respondent
- Defendant argued the patent is invalid for obviousness/obvious to try and sought a declaration that the patent is void; alternatively disputed the applicability of the claims to its product.
05
Court’s reasoning
Legal principles
- 01
Canadian patent law and jurisprudence
Obviousness and the 'obvious to try' inquiry
- 02
Federal Court jurisdiction over patent validity and relief
Invalid patents may be declared void and removed from the Patent Register
- 03
Patent claim construction principles in Canadian law
Infringement analysis requires comparison of the accused product to properly construed claims
06
Ratio, limits and disposition
Ratio decidendi
The Court concluded the patent was invalid for obviousness/obvious to try and therefore void; accordingly the patent must be removed from the Patent Register. The Court also concluded that, but for the declaration of invalidity, Pharmascience's manufacture and sale of the specified abiraterone acetate tablets would have infringed the asserted claims.
Obiter and limits
- Costs are to be paid to the Defendant and the quantum of costs will be the subject of a further determination
- The declaration of invalidity results in removal of the patent from the Register
Court disposition
Action dismissed; patent declared invalid and to be removed from the Patent Register; costs awarded to the Defendant with quantum to be determined.
- Declare Canadian Patent No. 2,661,422 invalid, void and of no effect and remove it from the Patent Register
- Except for the declaration of invalidity, find that making, constructing, using or selling PMS-ABIRATERONE 250 mg tablets by Pharmascience Inc would infringe the Asserted Claims
- Dismiss the action with costs to the Defendant; quantum of costs to be determined
Source and reliance status
Federal Court · 6 January 2021
This page organises the available record for research. Confirm quotations, current status, and subsequent treatment against the official source before relying on the case.
Judgment reading view
Judgment text
The complete available source text.
Federal Court
Judgment· 6 January 2021
Janssen Inc. v. Pharmascience Inc. Court (s) Database Federal Court Decisions Date 2021-01-06 Neutral citation 2021 FC 5 File numbers T-182-19 Decision Content Date: 20210106 Docket: T-182-19 Citation: 2021 FC 5 Ottawa, Ontario, January 6, 2021 PRESENT: The Honourable Mr. Justice Phelan BETWEEN: JANSSEN INC, JANSSEN ONCOLOGY, INC
AND BTG INTERNATIONAL LTD Plaintiffs and
PHARMASCIENCE INC Defendant
JUDGMENT THIS COURT ADJUDGES, ORDERS AND DECLARES that: Canadian Patent No. 2,661,422 is, and has always been, invalid, void and of no effect by reasons of obviousness/obvious to try as asserted by the Defendant and is to be removed from the Patent Register. Except for this declaration of invalidity, the making, constructing, using or selling of PMS-ABIRATERONE orally administered tablets containing 250 mg abiraterone acetate by Pharmascience Inc in accordance with its Abbreviated New Drug Submission No. 220472 would infringe the Asserted Claims. This action is dismissed with costs to the Defendant, the whole of which is to be the subject of a further determination by the Court. blank “Michael L. Phelan” blank Judge
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