Novartis Pharmaceuticals Canada Inc. v. Cobalt Pharmaceuticals Company
The appeal was dismissed because the Federal Court correctly concluded the patent claims were, in substance, a method of medical treatment and therefore not patentable under Tennessee Eastman; there was no convincing misconstruction of the patent to justify overturning that conclusion.
Source-derived case information.
- Citation
- 2014 FCA 17
- Parties
- Appellant: Novartis Pharmaceuticals Canada Inc.; Respondent: Cobalt Pharmaceuticals Company; Respondent: The Minister of Health; Respondent/patentee: Novartis AG; Respondent/patentee: Roche Diagnostics GmbH
- Court
- Federal Court of Appeal
- Jurisdiction
- Canada
- Judgment Date
- 27 January 2014
- Procedural Posture
- Appeal Under the Patented Medicines (notice of Compliance) Regulations / Federal Court of Appeal Decision
- Outcome
- Appeal dismissed with costs.
- Legal Topics
- Patentable Subject Matter, Method of Medical Treatment, Notice of Compliance, Invalidity
- Source Language
- en
Source-derived case record
Summary, issues, holding and outcome
More case intelligence is available
Unlock the full research layer for this judgment.
Parties
Novartis Pharmaceuticals Canada Inc.
Appellant
Cobalt Pharmaceuticals Company
Respondent
The Minister of Health
Respondent
Novartis AG
Respondent/patentee
Roche Diagnostics GmbH
Respondent/patentee
Procedural Posture
Appeal Under the Patented Medicines (notice of Compliance) Regulations / Federal Court of Appeal Decision
Legal Issues
- 1 Whether the challenged claims constitute patentable subject matter
- 2 Whether the claims are effectively a method of medical treatment and therefore not patentable under Tennessee Eastman
- 3 Whether the trial judge misconstrued the patent claims
Ratio Decidendi
The appeal was dismissed because the Federal Court correctly concluded the patent claims were, in substance, a method of medical treatment and therefore not patentable under Tennessee Eastman; there was no convincing misconstruction of the patent to justify overturning that conclusion.
Court Disposition
Appeal dismissed with costs.
Orders
- Appeal dismissed with costs.
Full Case Text
Judgment text and source record
1 paragraphs
Novartis Pharmaceuticals Canada Inc. v. Cobalt Pharmaceuticals Company Court (s) Database Federal Court of Appeal Decisions Date 2014-01-27 Neutral citation 2014 FCA 17 File numbers A-318-13 Decision Content Date: 20140127 Docket: A-318-13 Citation: 2014 FCA 17 CORAM: SHARLOW J.A. WEBB J.A. NEAR J.A. BETWEEN: NOVARTIS PHARMACEUTICALS CANADA INC. Appellant and COBALT PHARMACEUTICALS COMPANY and THE MINISTER OF HEALTH Respondents and NOVARTIS AG and ROCHE DIAGNOSTICS GmbH Respondents/Patentees Heard at Toronto, Ontario, on January 23, 2014. Judgment delivered at Ottawa, Ontario, on January 27, 2014. REASONS FOR JUDGMENT BY: SHARLOW J.A. CONCURRED IN BY: WEBB J.A. NEAR J.A. Date: 20140127 Docket: A-318-13 Citation: 2014 FCA 17 CORAM: SHARLOW J.A. WEBB J.A. NEAR J.A. BETWEEN: NOVARTIS PHARMACEUTICALS CANADA INC. Appellant and COBALT PHARMACEUTICALS COMPANY AND THE MINISTER OF HEALTH Respondents and NOVARTIS AG AND ROCHE DIAGNOSTICS GMBH Respondents/Patentees REASONS FOR JUDGMENT SHARLOW J.A. [1] This is an appeal of the decision of Justice Hughes (2013 FC 985) dismissing the application of Novartis Pharmaceuticals Canada Inc. under the Patented Medicines (Notice of Compliance) Regulations (SOR/93-133) for an order prohibiting the Minister of Health from issuing a notice of compliance to Cobalt Pharmaceuticals Company for a generic version of a drug containing zoledronic acid to be administered in once-yearly doses for the treatment of osteoporosis, until after the expiry of Canadian Patent No. 2,410,201. [2] Cobalt alleged that the 201 patent is invalid for want of patentable subject matter. Justice Hughes found that allegation to be justified because the claims essentially are for a method of medical treatment as explained in Tennessee Eastman Co. v. Commissioner of Patents, [1974] SCR 111. Novartis argues that this conclusion is wrong in law. I do not agree. [3] To accept the argument of Novartis it would be necessary to conclude in the face of Tennessee Eastman that a method of medical treatment is patentable subject matter, or to conclude that Justice Hughes misconstrued the patent. Having carefully considered the argument of Novartis and the authorities to which the Court was referred, I am unable to reach either conclusion. [4] For that reason, I would dismiss the appeal with costs. “K. Sharlow” J.A. “I agree Wyman W. Webb J.A.” “I agree D. G. Near J.A.” FEDERAL COURT OF APPEAL NAMES OF COUNSEL AND SOLICITORS OF RECORD Docket: A-318-13 (APPEAL FROM A JUDGMENT OR ORDER OF THE HONOURABLE MR. JUSTICE HUGHES, DATED SEPTEMBER 25, 2013, DOCKET NO. T-724-12) STYLE OF CAUSE: NOVARTIS PHARMACEUTICALS CANADA INC. v. COBALT PHARMACEUTICALS COMPANY and THE MINISTER OF HEALTH and NOVARTIS AG and ROCHE DIAGNOSTICS GmbH PLACE OF HEARING: Toronto, Ontario DATE OF HEARING: January 23, 2014 REASONS FOR JUDGMENT BY: SHARLOW J.A. CONCURRED IN BY: WEBB, NEAR JJ.A. DATED: January 27, 2014 APPEARANCES: Anthony G. Creber Livia Aumand For The Appellant Douglas N. Deeth Kavita Ramamoorthy For The Respondents SOLICITORS OF RECORD: Gowling Lafleur Henderson LLP Ottawa, Ontario For The Appellant Deeth Williams Wall LLP Toronto, Ontario For The Respondents