Valeant Canada LP/Valeant Canada S.E.C. v. Generic Partners Canada Inc.

Valeant Canada LP/Valeant Canada S.E.C. v. Generic Partners Canada Inc.

The 671 Patent is valid because the prior art and common general knowledge did not disclose or render obvious the specific Shape Element (planar oval or parallelogram) nor the claimed combination of Size, Time and Shape elements; accordingly Generic Partners failed to prove anticipation, obviousness, double-patenting or insufficiency and Valeant established that the NOA allegations were unjustified, entitling Valeant to an order prohibiting the Minister from issuing an NOC for the Generic Product.

Citation
2019 FC 253
Parties
Applicant: Valeant Canada LP/Valeant Canada S.E.C.; Respondent: Generic Partners Canada Inc.; Respondent: The Minister of Health; Respondent/patentee: Depomed, Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
1 March 2019
Procedural Posture
Prohibition Application Under the Patented Medicines (notice of Compliance) Regulations / Final Judgment (application for Order Prohibiting Issuance of Noc)
Outcome
Application granted; order prohibiting the Minister of Health from issuing a Notice of Compliance to Generic Partners for the 500 mg extended release metformin tablets (Generic Product).
Legal Topics
Claim Construction, Anticipation, Obviousness, Double Patenting, Insufficiency, Notice of Compliance (noc) Proceedings
Source Language
English
Patent Law Pharmaceutical Regulation Administrative Law Claim Construction Anticipation Obviousness Double Patenting Insufficiency +1 more

Case Brief

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Parties

Valeant Canada LP/Valeant Canada S.E.C.

Applicant

Generic Partners Canada Inc.

Respondent

The Minister of Health

Respondent

Depomed, Inc.

Respondent/patentee

Procedural Posture

Prohibition Application Under the Patented Medicines (notice of Compliance) Regulations / Final Judgment (application for Order Prohibiting Issuance of Noc)

Legal Issues

  1. 1 Whether Claim 1 of Canadian Patent No. 2,412,671 is invalid for anticipation
  2. 2 Whether Claim 1 is invalid for obviousness (including obvious-to-try analysis)
  3. 3 Whether the 671 Patent is invalid for double-patenting relative to the 624 Patent

Ratio Decidendi

The 671 Patent is valid because the prior art and common general knowledge did not disclose or render obvious the specific Shape Element (planar oval or parallelogram) nor the claimed combination of Size, Time and Shape elements; accordingly Generic Partners failed to prove anticipation, obviousness, double-patenting or insufficiency and Valeant established that the NOA allegations were unjustified, entitling Valeant to an order prohibiting the Minister from issuing an NOC for the Generic Product.

Court Disposition

Application granted; order prohibiting the Minister of Health from issuing a Notice of Compliance to Generic Partners for the 500 mg extended release metformin tablets (Generic Product).

Orders

  • Order prohibiting the Minister of Health from issuing a Notice of Compliance to Generic Partners Canada Inc for 500 mg extended release tablets of metformin hydrochloride for oral administration
  • If parties cannot agree on costs, written submissions limited to five pages for initial submissions within 14 days and three pages for responding submissions within seven days