Schering-Plough Canada Inc. v. Pharmascience Inc.

Schering-Plough Canada Inc. v. Pharmascience Inc.

The Court dismissed Schering's application for prohibition. On a balance of probabilities the Court found Pharmascience's allegations of non-infringement and invalidity justified: (a) Pharmascience does not infringe Claims 1 and 38 of the '014 Patent because its formulation does not include a pharmaceutically acceptable basic salt as claimed; (b) with respect to the '136 Patent the Court found Claim 9 (capsules) anticipated by Aberg Example 8 and Claims 1,6,9,16/23 were obvious and Claim 16/23 (the functional 'anhydrous' claim) overbroad and therefore invalid; infringement of Claim 23 also not established. Accordingly prohibition was unjustified and the Minister is not restrained from...

Citation
2009 FC 1128
Parties
Applicant: Schering-Plough Canada Inc.; Applicant: Schering Corporation; Respondent: Pharmascience Inc.; Respondent: Sepracor Inc.; Respondent: The Minister of Health
Court
Federal Court
Jurisdiction
Canada
Judgment Date
22 December 2009
Procedural Posture
NOC Proceedings – Prohibition Application Under the Patented Medicines (notice of Compliance) Regulations and Related Patent Act Provisions / Application for Prohibition – Final Judgment of the Federal Court (decision)
Outcome
Application dismissed; prohibition denied; Schering and Sepracor failed to establish that Pharmascience would infringe or that the asserted claims withstand validity attacks.
Legal Topics
Claim Construction, Infringement, Validity, Anticipation, Obviousness, Overbreadth, Utility / Sound Prediction, Notice of Compliance Regulations
Source Language
English
Intellectual Property Patent Law Pharmaceutical Regulatory Law Administrative Law Claim Construction Infringement Validity Anticipation +4 more

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Parties

Schering-Plough Canada Inc.

Applicant

Schering Corporation

Applicant

Pharmascience Inc.

Respondent

Sepracor Inc.

Respondent

The Minister of Health

Respondent

Procedural Posture

NOC Proceedings – Prohibition Application Under the Patented Medicines (notice of Compliance) Regulations and Related Patent Act Provisions / Application for Prohibition – Final Judgment of the Federal Court (decision)

Legal Issues

  1. 1 Proper construction of Claims 1,6,9,16,23 of the '136 Patent and Claims 1 and 38 of the '014 Patent
  2. 2 Whether Pharmascience's product infringes the asserted claims
  3. 3 Whether the asserted claims are invalid for anticipation, obviousness, lack of utility/sound prediction, overbreadth or inoperable species

Ratio Decidendi

The Court dismissed Schering's application for prohibition. On a balance of probabilities the Court found Pharmascience's allegations of non-infringement and invalidity justified: (a) Pharmascience does not infringe Claims 1 and 38 of the '014 Patent because its formulation does not include a pharmaceutically acceptable basic salt as claimed; (b) with respect to the '136 Patent the Court found Claim 9 (capsules) anticipated by Aberg Example 8 and Claims 1,6,9,16/23 were obvious and Claim 16/23 (the functional 'anhydrous' claim) overbroad and therefore invalid; infringement of Claim 23 also not established. Accordingly prohibition was unjustified and the Minister is not restrained from...

Court Disposition

Application dismissed; prohibition denied; Schering and Sepracor failed to establish that Pharmascience would infringe or that the asserted claims withstand validity attacks.

Orders

  • Application dismissed
  • No award of costs (parties had an agreement)