Purdue Pharma v. Pharmascience Inc.

Purdue Pharma v. Pharmascience Inc.

Claims 5 and 11 of patent 2,098,738 are valid: the 12‑hour controlled‑release oxycodone formulation with the claimed in vitro and in vivo profiles constituted a new, useful and non‑obvious improvement; the disclosure and sound prediction were sufficient and the claims were not impermissibly overbroad, therefore the Minister is prohibited from issuing a Notice of Compliance to Pharmascience until the patent expires.

Citation
2009 FC 726
Parties
Applicant: Purdue Pharma; Respondent: Pharmascience Inc.; Respondent: The Minister of Health
Court
Federal Court
Jurisdiction
Canada
Judgment Date
16 July 2009
Procedural Posture
Application Under the Patented Medicines (notice of Compliance) Regulations / Application for Prohibition Order (pre Notice of Compliance)
Outcome
Application granted; prohibition ordered preventing issuance of Notice of Compliance to Pharmascience until expiry of Canadian Patent No. 2,098,738
Legal Topics
Obviousness, Anticipation, Sound Prediction of Utility, Overbreadth, Insufficiency, Claim Construction, Patented Medicines (notice of Compliance) Regulations, Prohibition Order/notice of Compliance
Source Language
English
Patent Law Pharmaceutical Regulation Administrative Law Obviousness Anticipation Sound Prediction of Utility Overbreadth Insufficiency +3 more

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Parties

Purdue Pharma

Applicant

Pharmascience Inc.

Respondent

The Minister of Health

Respondent

Procedural Posture

Application Under the Patented Medicines (notice of Compliance) Regulations / Application for Prohibition Order (pre Notice of Compliance)

Legal Issues

  1. 1 Validity of Canadian Patent No. 2,098,738 (claims 5 and 11)
  2. 2 Whether claims are anticipated
  3. 3 Whether claims are obvious or 'obvious to try'

Ratio Decidendi

Claims 5 and 11 of patent 2,098,738 are valid: the 12‑hour controlled‑release oxycodone formulation with the claimed in vitro and in vivo profiles constituted a new, useful and non‑obvious improvement; the disclosure and sound prediction were sufficient and the claims were not impermissibly overbroad, therefore the Minister is prohibited from issuing a Notice of Compliance to Pharmascience until the patent expires.

Court Disposition

Application granted; prohibition ordered preventing issuance of Notice of Compliance to Pharmascience until expiry of Canadian Patent No. 2,098,738

Orders

  • Minister prohibited from issuing a Notice of Compliance to Pharmascience Inc. until expiry of patent 2,098,738
  • Purdue Pharma awarded its costs