Eli Lilly Canada Inc. v. Novopharm Limited

Eli Lilly Canada Inc. v. Novopharm Limited

The '113 selection patent is invalid for lack of utility because, as of the 1991 filing date, Lilly had not demonstrated nor could soundly predict the patent's explicit promise of marked clinical superiority and a better side-effect profile for olanzapine over other antipsychotics; however, the specification met s 27(3) for sufficiency, so the patent fails on utility grounds and the infringement action is dismissed.

Citation
2011 FC 1288
Parties
Plaintiff (defendant by Counterclaim): Eli Lilly Canada Inc.; Plaintiff (defendant by Counterclaim): Eli Lilly and Company; Plaintiff (defendant by Counterclaim): Eli Lilly and Company Limited; Plaintiff (defendant by Counterclaim): Eli Lilly SA; Defendant (plaintiff by Counterclaim): Novopharm Limited
Court
Federal Court
Jurisdiction
Canada
Judgment Date
10 November 2011
Procedural Posture
Patent Infringement and Validity Challenge (selection Patent) / Trial Judgment on Remand (utility and Sufficiency) Following Federal Court of Appeal Decision
Outcome
The claims of the '113 patent in issue are invalid; Lilly's action for patent infringement is dismissed with costs.
Legal Topics
Selection Patent, Utility, Sound Prediction, Sufficiency of Disclosure (s 27(3)), Promise Doctrine
Source Language
English
Patent Law Pharmaceutical Regulation Intellectual Property Litigation Selection Patent Utility Sound Prediction Sufficiency of Disclosure (s 27(3)) Promise Doctrine

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Parties

Eli Lilly Canada Inc.

Plaintiff (defendant by Counterclaim)

Eli Lilly and Company

Plaintiff (defendant by Counterclaim)

Eli Lilly and Company Limited

Plaintiff (defendant by Counterclaim)

Eli Lilly SA

Plaintiff (defendant by Counterclaim)

Novopharm Limited

Defendant (plaintiff by Counterclaim)

Procedural Posture

Patent Infringement and Validity Challenge (selection Patent) / Trial Judgment on Remand (utility and Sufficiency) Following Federal Court of Appeal Decision

Legal Issues

  1. 1 Whether the '113 patent is invalid for lack of utility (failure to demonstrate or soundly predict the patent promise)
  2. 2 Whether the '113 patent is invalid for insufficiency of disclosure under s 27(3) of the Patent Act

Ratio Decidendi

The '113 selection patent is invalid for lack of utility because, as of the 1991 filing date, Lilly had not demonstrated nor could soundly predict the patent's explicit promise of marked clinical superiority and a better side-effect profile for olanzapine over other antipsychotics; however, the specification met s 27(3) for sufficiency, so the patent fails on utility grounds and the infringement action is dismissed.

Court Disposition

The claims of the '113 patent in issue are invalid; Lilly's action for patent infringement is dismissed with costs.

Orders

  • The claims of the '113 patent in issue are declared invalid
  • The action by Eli Lilly for patent infringement is dismissed with costs