Court Grants Prohibition Order Despite Obviousness Finding; Cites Uncertainty In Comity Law As Basis

On June 18, 2012, the Federal Court of Canada issued a Judgment and Reasons for Judgment in a prohibition proceeding between Allergan and Apotex involving Allergan's brimonidine + timolol combination product (COMBIGAN) and Canadian Patent No. 2,440,764. This is not the first time the '764 patent has been involved in litigation under the Patented Medicines (Notice of Compliance) Regulations. In November 2011, Justice Crampton held that Sandoz's allegations in respect of the same '764 patent were not justified and granted a Prohibition Order preventing the Minister of Health from approving Sandoz's ANDS until the expiry of the '764 patent in 2023 (2012 FC 1316).

On the evidence before him in the Apotex matter, Justice Hughes concluded that Apotex's allegation of obviousness was justified but nevertheless granted a prohibition order against Apotex, stating as follows:

CONCLUSIONS AS TO OBVIOUSNESS

[189] As is apparent, I would find on the evidence before me that Apotex's allegations as to obviousness are justified. In this regard, my findings are in line with the decision of O'Reilly J of this Court in Merck & Co Inc v Canada (Minister of Health), 2010 FC 1042, where he held that a similar patent directed to the earlier combination product COSOPT was obvious, and with the decision of Justice Floyd of the High Court of Justice, Chancery Division, Patents Court of England and Wales in Teva UK Limited v Merck & Co Inc, supra, where he held the European COSOPT patent to be obvious.

[190] That is, however, not the end of the matter.

[191] I must consider the question of comity. Is the evidence and argument before me "different" from or "better" than the evidence and argument before Crampton J in Sandoz? There is no real way to measure "different" or "better". The evidence and argument is of the same kind. In some...