AbbVie Biotechnology Ltd. v. Canada (Attorney General), 2014 FC 1251

• Judge: Kane, J.
• Court: Federal Court (Canada)
• Case Date: November 18, 2014
• Jurisdiction: Canada (Federal)
• Citations: 2014 FC 1251;(2014), 471 F.T.R. 164 (FC)

AbbVie Biotechnology v. Can. (A.G.) (2014), 471 F.T.R. 164 (FC)

MLB headnote and full text

Temp. Cite: [2015] F.T.R. TBEd. JA.028

AbbVie Biotechnology Ltd. (appellant) v. The Attorney General of Canada (respondent)

(T-1094-14; 2014 FC 1251)

Indexed As: AbbVie Biotechnology Ltd. v. Canada (Attorney General)

Federal Court

Kane, J.

December 22, 2014 and January 20, 2015.

Summary:

AbbVie owned a patent for anti-human TNF α Antibodies ("Humira") which was commonly used to treat autoimmune diseases such as rheumatoid arthritis and inflammatory bowel disease. AbbVie filed a patent application which claimed the use of Humira in the treatment of those diseases, using a fixed dosage amount (40 mg) by syringe on a fixed schedule (bi-weekly). The Commissioner of Patents found that the claims at issue were directed to methods of medical treatment and were not patentable. AbbVie appealed.

The Federal Court allowed the appeal and directed the Commissioner to allow the claims at issue.

Patents of Invention - Topic 702

Application for grant - Items patentable (incl. life forms) - AbbVie owned a patent for anti-human TNF α Antibodies ("Humira") which was commonly used to treat autoimmune diseases such as rheumatoid arthritis and inflammatory bowel disease - AbbVie filed a patent application which claimed the use of Humira in the treatment of those diseases, using a fixed dosage amount (40 mg) by syringe on a fixed schedule (bi-weekly) - The Commissioner of Patents found that the claims at issue were directed to methods of medical treatment and were not patentable - AbbVie appealed - The Federal Court allowed the appeal - The present claim was for a vendible product - It did not restrict the physician's choice or skill that would be relied on at the outset to determine whether that vendible product should or should not be prescribed - The claims did not violate the prohibition against methods of medical treatment, and applying the correct law, the claims in this case would be patentable - See paragraphs 83 to 127.

Patents of Invention - Topic 807

Application for grant - Bars - Method of medical treatment - [See Patents of Invention - Topic 702 ].

Patents of Invention - Topic 883

Application for grant - Appeals or judicial review - Scope of appeal or standard of review - The Commissioner of Patents refused to grant an applicant's patent application on the basis that the claims at issue were directed to methods of medical treatment and were not patentable - The applicant appealed - The Federal Court held that the issue here was the Commissioner's interpretation of patentable subject matter, and more specifically, the scope of the prohibition on methods of medical treatment - The appropriate standard of review was correctness - See paragraphs 25 to 49.

Cases Noticed:

Merck & Co. et al. v. Apotex Inc. et al. (2005), 274 F.T.R. 113; 2005 FC 755, refd to. [para. 17].

Merck & Co. et al. v. Pharmascience Inc. et al. (2010), 368 F.T.R. 1; 2010 FC 510, refd to. [para. 17].

Bayer Inc. et al. v. Cobalt Pharmaceuticals Co. et al. (2013), 441 F.T.R. 72; 121 C.P.R.(4th) 14; 2013 FC 1061, refd to. [para. 17].

Janssen Inc. et al. v. Mylan Pharmaceuticals ULC et al. (2010), 376 F.T.R. 311; 2010 FC 1123, refd to. [para. 18].

Novartis Pharmaceuticals Canada Inc. v. Cobalt Pharmaceuticals Co. et al. (2014), 459 N.R. 17; 2014 FCA 17, refd to. [para. 20].

New Brunswick (Board of Management) v. Dunsmuir, [2008] 1 S.C.R. 190; 372 N.R. 1; 329 N.B.R.(2d) 1; 844 A.P.R. 1; 2008 SCC 9, refd to. [para. 25].

Amazon.com Inc. v. Canada (Attorney General) (2011), 423 N.R. 337; 340 D.L.R.(4th) 577; 2011 FCA 328, refd to. [para. 27].

Harvard College v. Commissioner of Patents, [2002] 4 S.C.R. 45; 296 N.R. 1, 2002 SCC 76, refd to. [para. 28].

Newco Tank Corp. v. Canada (Attorney General) (2014), 451 F.T.R. 138; 118 C.P.R.(4th) 424; 2014 FC 287, refd to. [para. 35].

Apotex Inc. and Novopharm Ltd. v. Wellcome Foundation Ltd., [2002] 4 S.C.R. 153; 296 N.R. 130; 2002 SCC 77, refd to. [para. 36].

Tennessee Eastman Co. et al. v. Commissioner of Patents, [1974] S.C.R. 111; 33 D.L.R.(3d) 459, refd to. [para. 55].

Shell Oil Co. v. Commissioner of Patents, [1982] 2 S.C.R. 536; 44 N.R. 541, refd to. [para. 57].

Lawson v. Commissioner of Patents (1970), 62 C.P.R. 101 (Ex. Ct.), refd to. [para. 57].

Axcan Pharma Inc. v. Pharmascience Inc. et al. (2006), 291 F.T.R. 160; 2006 FC 527, refd to. [para. 57].

Allergan Inc., Re (2009), 79 C.P.R.(4th) 161 (Pat. App. Bd.), refd to. [para. 60].

Visx Inc. v. Nidek Co. et al. (1999), 181 F.T.R. 22; 3 C.P.R.(4th) 417 (T.D.), affd. (2001), 273 N.R. 268; 16 C.P.R.(4th) 251; 2001 FCA 215, refd to. [para. 95].

Counsel:

Andrew Reddon, Steve Mason and Steven Tanner, for the appellant;

Jacqueline Dais-Visca, for the respondent.

Solicitors of Record:

McCarthy Tétrault LLP, Toronto, Ontario, for the appellant;

William F. Pentney, Deputy Attorney General of Canada, Toronto, Ontario, for the respondent.

This appeal was heard on November 18, 2014 at Toronto, Ontario, before Kane, J., of the Federal Court, who delivered the following judgment and reasons on December 22, 2014, and amended on January 20, 2015.