Teva Canada Ltd. v. Pfizer Canada Inc.

Teva Canada Ltd. v. Pfizer Canada Inc.

The patent was invalidated because the specification as a whole failed to correctly and fully disclose the invention under s.27(3): Pfizer withheld the identity of the only compound demonstrated to work (sildenafil) among cascading claims, so a skilled person reading only the specification could not make the same successful use without further testing; claims must be assessed in context of the entire specification and s.58 does not permit isolating Claim 7 from that assessment.

Citation
2012 SCC 60
Parties
Appellant: Teva Canada Limited; Respondent: Pfizer Canada Inc.; Pfizer Inc.; Pfizer Ireland Pharmaceuticals; Pfizer Research and Development Company N.V./S.A.; Respondent: Minister of Health; Intervener: Canadian Generic Pharmaceutical Association; Intervener: Canada’s Research-Based Pharmaceutical Companies
Court
Supreme Court of Canada
Jurisdiction
Canada
Judgment Date
8 November 2012
Procedural Posture
Appeal to the Supreme Court of Canada From Federal Court of Appeal (patent Validity / NOC Prohibition) / Judgment on Appeal (final Disposition)
Outcome
Appeal allowed; Patent No. 2,163,446 declared invalid for insufficient disclosure; prohibition application dismissed
Legal Topics
Disclosure Requirements, Utility, Sound Prediction, Claims Construction, Remedies for Insufficiency, Notice of Compliance (noc) Regulations
Source Language
English
Intellectual Property Patent Law Disclosure Requirements Utility Sound Prediction Claims Construction Remedies for Insufficiency Notice of Compliance (noc) Regulations

Case Brief

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Parties

Teva Canada Limited

Appellant

Pfizer Canada Inc.; Pfizer Inc.; Pfizer Ireland Pharmaceuticals; Pfizer Research and Development Company N.V./S.A.

Respondent

Minister of Health

Respondent

Canadian Generic Pharmaceutical Association

Intervener

Canada’s Research-Based Pharmaceutical Companies

Intervener

Procedural Posture

Appeal to the Supreme Court of Canada From Federal Court of Appeal (patent Validity / NOC Prohibition) / Judgment on Appeal (final Disposition)

Legal Issues

  1. 1 Whether Patent No. 2,163,446 met the disclosure requirements of s.27(3) of the Patent Act
  2. 2 Whether Claim 7 (sildenafil) could be considered a separate invention independent of the specification as a whole
  3. 3 Whether the case involved sound prediction or demonstrated utility

Ratio Decidendi

The patent was invalidated because the specification as a whole failed to correctly and fully disclose the invention under s.27(3): Pfizer withheld the identity of the only compound demonstrated to work (sildenafil) among cascading claims, so a skilled person reading only the specification could not make the same successful use without further testing; claims must be assessed in context of the entire specification and s.58 does not permit isolating Claim 7 from that assessment.

Court Disposition

Appeal allowed; Patent No. 2,163,446 declared invalid for insufficient disclosure; prohibition application dismissed

Orders

  • Appeal allowed with costs
  • Patent No. 2,163,446 declared not valid for failure to meet s.27(3) disclosure requirements of the Patent Act