Federal Court Prohibits Approval Of Generic ADHD Drug

In Janssen Inc. v. Actavis Pharma Company, 2016 FC 1361, Janssen sought an order prohibiting the Minister of Health from issuing a Notice of Compliance to Actavis for a generic version of the ADHD drug CONCERTA. Justice O'Reilly held that Actavis's allegations of invalidity and non-infringement of Canadian Patent No 2,264,852 were not justified.

The 852 Patent is generally directed to the use of methylphenidate (MP) using a novel dosage form and a novel method for administering it producing a therapeutic effect. The prior art taught that methylphenidate had issues in maintaining sufficient plasma concentrations. Dr. Saneel Gupta, a named inventor of the 852 Patent, discovered that the issue with prior art formulations of methylphenidate was acute tolerance (tolerance to a drug over a single dosing period), which lead to the invention described in the 852 Patent.

In construing the 852 Patent, the parties agreed with Justice Zinn's prior construction of the 852 Patent (2010 FC 42) that "sustained-ascending dose over time" means that methylphenidate is released from a tablet at an increasing rate, not that plasma concentrations in a patient increased at an ascending rate. Actavis submitted that the skilled person would interpret the words "over time" and "sustained" to mean an ascending dose over an entire dosing period. Justice O'Reilly disagreed based on the expert evidence. He found that for example, to be effective over an 8-hour-period, the sustained-ascending dosage form would have to rise over the course of the first 6 hours or so, not the entire dosing period.

Obviousness

Justice O'Reilly held that the inventive concept of the 852 Patent is the use of a formulation that delivers a sustained-ascending dose of active ingredient over time in order to address acute tolerance.

Actavis submitted that the only difference between the inventive step in the patent and the state of the art is that the inventors confirmed the postulation in the prior art that the problem was acute tolerance to methylphenidate. According to Actavis, the inventors merely conducted routine tests and applied a well-known solution to the problem of drug tolerance: increasing the dose. Justice O'Reilly rejected these arguments, holding:

[48] Actavis's experts have not persuaded me that the invention contained in the '852 patent was obvious. Dr Rue assumed that acute tolerance was a known problem and that an ascending release formulation was the solution. He opined that...