Justice Hughes' List of Obviousness Factors Confirmed by the Federal Court Of Appeal

On June 7, 2007, the Federal Court of Appeal delivered its judgment in Novopharm Limited v Janssen-Ortho Inc 2007 FCA 217. Novopharm Limited (Novopharm) had appealed the Federal Court's decision that Canadian Patent No 1,204,080 (the '080 patent) was valid and had been infringed by Novopharm. Claim 4 of the "˜080 patent, which claimed S(-)ofloxacin or levofloxacin, was the only claim at issue in both the Federal Court and Federal Court of Appeal decisions. The Federal Court of Appeal upheld Justice Hughes' decision that the "˜080 patent was valid and had been infringed. It further held that Justice Hughes had not created a new test for obviousness and confirmed his list of obviousness factors by adopting an edited version of the list. (See the E-TIPS® article "Federal Court of Canada Re-examines Test of Obviousness in Patent Law", Vol 5, No 11, November 22, 2006). The Federal Court of Appeal also confirmed that the list is not exclusive. Rather, it is up to the trial judge to determine the weight that should be given to the listed factors and any additional factors that may be presented. For the full text of the Justice Hughes' Federal Court decision, see: http://decisions.fca-caf.gc.ca/en/2007/2007fca217/2007fca217.html For the full text of the Federal Court of Appeal's decision, refer to: http://decisions.fca-caf.gc.ca/en/2007/2007fca217/2007fca217.html Summary by: Katharine McGinnis