Update: The Supreme Court has denied the leave applications.

On Thursday, the Supreme Court of Canada denied leave will be announcing whether it will grant leave in three related proceedings primarily relating to the validity of a selection patent. Apotex (SCC #34067), Genpharm (#34068) and Cobalt (#34066) are seeking leave to appeal the decision of the Federal Court of Appeal in 2010 FCA 320. That decision held that Lundbeck’s patent CA1,339,452 was a valid patent for the purposes of a PM(NOC) prohibition order.

The patent at issue related to enantiomers of Citalopram but an expired patent covered Citalopram. The FCA upheld the application Judge’s finding that the patent at issue was not a selection patent relying heavily on the Supreme Court’s 2008 decision in Sanofi – the enantiomers were not described in general terms and claims in the previous patent:

[65] In so holding, the Applications Judge acknowledged that citalopram’s chemical structure – and the chemical formula reflecting it – reveals the existence of the enantiomers. However, he rejected the argument that this in itself was sufficient to read U.S. patent ‘193 as claiming the enantiomers. In particular, he rejected the submission that Sanofi is authority for the proposition that a claim for a racemate is ipso facto a claim for its two enantiomers (Reasons, para. 47).

[66] I can detect no error in this regard. Contrary to what is asserted, the Supreme Court in Sanofi did not hold that a claim for a racemate automatically includes a claim for its enantiomers. The conclusion in Sanofi that the genus patent also claimed the enantiomers is based on claims 1 and 14 thereof which specifically claimed the racemate and the two enantiomers (Sanofi, paras. 101 and 103).
…
[72] … A claim should not be construed with an eye to issues of validity or infringement. However, if one moves away from the perspective of the draftsperson concerned with issues of validity, it remains that the person skilled in the art would not read the claim as extending to compounds which were not known to have the promised utility. The Applications Judge having found as a fact that it was impossible to know at the claim date which, if either, of the two enantiomers of the racemate would be useful in treating depression, read the claim as not extending beyond the compound which was known to achieve the promised result and which was specifically claimed for that purpose, i.e. the racemate. Although the appellants take issue with the finding which underlies this conclusion, it was open to the Applications Judge on the record before him…

The FCA also considered a number of other attacks on the validity of the ‘452 patent in its decision.

More information about these and other intellectual property proceedings at the Supreme Court are available on the Supreme Court litigation page.

[Update: The title of this post has been updated to reflect the SCC’s announcement.]