Federal Court of Appeal Considers Promise of Utility in AstraZeneca v Apotex (Esomeprazole – NEXIUM®)

In its July 6, 2015 brief decision in AstraZeneca Canada Inc v Apotex Inc, 2015 FCA 158, the Federal Court of Appeal (FCA) considered important issues relating to the construction of the promised utility of patent claims.

The FCA affirmed the Federal Court’s decision finding that AstraZeneca’s esomeprazole patent was invalid for failing to meet the promised utility (2014 FC 638, previously reported in the E-TIPS® Newsletter).

The FCA confirmed that different claims may have different promises based on a proper construction of the claims.  The FCA also rejected AstraZeneca’s argument that there must be a unitary, harmonious understanding of the essential elements of the claim, inventive concept and utility as being unsupported by any jurisprudence.

Also of note, in the recent Novartis Pharmaceuticals Canada Inc v Teva Canada Ltd, 2015 FC 770 decision (deferasirox – EXJADE®), O’Reilly J of the Federal Court reached the same conclusion as the FCA regarding the promised utility.  He stated that it may be appropriate to distinguish the promise of the compound claims and that of the use claims.

Additional commentary on the FCA decision is available here.