Abbvie Corporation v. Janssen Inc.

Abbvie Corporation v. Janssen Inc.
Court (s) Database
Federal Court Decisions
Date
2014-01-17
Neutral citation
2014 FC 55
File numbers
T-1310-09
Decision Content
Date: 20140117
Docket:
T-1310-09
Citation: 2014 FC 55
Toronto, Ontario, January 17, 2014
PRESENT: The Honourable Mr. Justice Hughes
BETWEEN:
ABBVIE CORPORATION, ABBVIE DEUTSCHLAND GMBH & CO. KG AND ABBVIE BIOTECHNOLOGY LTD.
Plaintiffs
(Defendants by Counterclaim)
and
JANSSEN INC.
Defendant
(Plaintiff by Counterclaim)
REASONS FOR JUDGMENT AND JUDGMENT
[1] This is an action respecting the infringement and validity of a patent directed to human antibodies that bind a human cytokine known as interleukin 12 or IL-12. This binding tends to neutralize some of the effects of IL-12 and, and thus is useful in the treatment of diseases; in particular, psoriasis. Two claims of the patent are at issue. A principal ground of contention is the scope of those claims which are directed to human antibodies with particular characteristics as to affinity and potency are too broadly drafted so as to cover more than was actually invented or could properly be claimed.
[2] For the reasons that follow, I find that the particular claims of the patent at issue are valid and infringed.
[3] As a convenience, the following index, by paragraph number, is provided:
THE PARTIES AND PRODUCT AT ISSUE
4 to 6
THE '281 PATENT IN GENERAL
7 to 10
BACKGROUND TECHNOLOGY
11 to 29
THE '281 PATENT IN DETAIL
30 to 43
THE CLAIMS AT ISSUE
44 to 47
THE EVIDENCE
48 to 55
COMMENTS AS TO THE EVIDENCE AND WITNESSES
56 to 85
a) Comments as to the Expert Witnesses
56 to 61
b) Testing the Janssen STELARA Product
62 to 70
c) Developments Leading to the '281 Patent
71 to 74
d) Developments Leading to the STELARA Product
75 to 78
e) A Comparative Timeline as to Events at AbbVie and Janssen
79 to 81
f) Comparison Between STELARA and J695
82 to 85
UNITED STATES DECISION
86 to 88
ISSUES
89 to 93
PERSON OF ORDINARY SKILL IN THE ART
94 and 95
CONSTRUCTION OF THE CLAIMS
96 to 101
INFRINGEMENT
102 to 107
VALIDITY
108 to 118
a) Burden
108 to 110
b) Obviousness
111 to 122
i) Identify the Notional Person Skilled in the Art
114
ii) State of the Art
115 to 122
iii) Identify or Construe the Inventive Concept of the Claims at Issue
123 to 131
iv) What, if any, are the Differences between the Prior Art and the Invention as Claimed?
132
v) Were the Differences More or Less Self-Evident?
133 to 140
BREADTH AND FORM OF CLAIMING
141 to 178
a) The Issues and Evidence
141 to 154
b) The Law
155 to 178
AMBIGUITY – “OR LESS”
179 to 182
CONCLUSION AND COSTS
183 TO 187
THE PARTIES AND PRODUCT AT ISSUE
[4] For the purposes of the present trial, the Plaintiffs assert and Janssen does not contest that the Plaintiffs are related corporate entities; that AbbVie Deutschland GmbH & Co. KG is a German entity, which owns the patent at issue; that it is the patentee; that AbbVie Biotechnology Ltd. is a Bermuda corporation and is the exclusive licensee of the patent at issue; and that AbbVie Corporation is a Canadian corporation and is a sister corporation of AbbVie Bermuda; both of whom are persons claiming under the patentee. I will refer to these entities collectively as AbbVie, or the Plaintiffs.
[5] The Defendant Janssen Inc. is a research-based pharmaceutical company located in Toronto, Ontario. It has secured from the Minister of Health a Notice of Compliance to sell in Canada, and sells in Canada sterile injectable products containing 45 mg/0.5 mL and 90 mg/mL of a substance it calls ustekinumab for the treatment of chronic, moderate to severe plaque psoriasis in adult human patients who are candidates for phototherapy or systemic therapy. This product is sold under the name STELARA.
[6] AbbVie does not market such a product in Canada, nor has it received a Notice of Compliance to do so.
THE '281 PATENT IN GENERAL
[7] The patent at issue is Canadian Letters Patent No. 2 365 281, entitled “Human Antibodies that Bind Human IL-12 and Methods for Producing” (the '281 patent).
[8] The application for the '281 patent was filed in the Canadian Patent Office on March 24, 2000; thus, the provisions of the Patent Act, RSC 1985, c. P-4, applicable to patents applied for after October 1, 1989 (the “new” Patent Act) apply to this patent. The term of the patent will expire twenty (20) years from this filing date; that is, on March 24, 2020; unless the patent is otherwise expunged following a judgment of this Court.
[9] The application for its '281 patent claimed priority from an application, No. 60/126,603 filed in the United States on March 25, 1999. The Canadian application was laid open for public inspection (publication date) on September 28, 2000.
[10] The '281 patent was issued and granted to Abbott GmbH & Co., KG on August 4, 2009. For the purposes of this trial it is not contested that that entity transferred its interest in the '281 patent and all of its interests, rights or benefits related to this litigation, to the Plaintiff AbbVie Deutschland GmbH & Co. KG.
BACKGROUND TECHNOLOGY
[11] The '281 patent is concerned with technology that only recently has come before this Court. It deals with human antibodies, immunology, the creation of specific antibodies, and the selection of target materials in the human body that may be neutralized in order to treat certain diseases.
[12] I have been greatly assisted in preparation for this trial by a lecture given by Professor Jack Gauldie, provided to me by the parties jointly in the form of an hour-long DVD and accompanying booklet of diagrams. While these materials do not form part of the evidence tendered at trial, I have marked them as Judge’s Exhibits A and B in the event that they may be useful to an appellate Court. This lecture was intended to provide me with background information and some of the vocabulary necessary in understanding the evidence given at trial.
[13] Many of the workings of the human immune system have been known for over a century; much is becoming known; and yet more is still unknown. For over a hundred years, it has been known that if a foreign substance such as protein found on a bacteria or virus (often referred to as an antigen) is introduced into the human body, the body will react by creating antibodies that will attach themselves to that antigen and neutralize it. It has also been known that a protein found in the system of another animal, such as a mouse, if introduced into the human system will be recognized as a foreign antigen and provoke an unwanted response by the human body.
[14] Antibodies, being part of the adaptive immune system, are highly regulated. Upon discovery of a foreign body (antigen), the immune system responds by producing a large number of antibodies directed at the identified antigen in an attempt to clear the body of the antigen. The regulation of antibody production and immune system response is controlled by signalling proteins called cytokines. Cytokines function is to mediate and regulate the immune reactions in the body. Among the various identified cytokines are a type called interleukins, of which there are many. As of March 1999, several interleukins had been identified, including Interleukin-12, usually referred to as IL-12. IL-12 was known to have some sort of role in dealing with immunity. In the context of the present case, IL-12 is targeted by antibodies constructed by the human body, and thus can be considered as an antigen; that is, something that may be bound by or neutralized by the antibody.
[15] Antibodies, in particular monoclonal antibodies, are often depicted in the form of a Y structure. They can be shown as:
[16] The central Y structure is called the heavy chain, and the structures on the sides of the upper branches of the Y are called light chains. At the tip of the upper branches of the heavy and light chains are sections that are called variable regions. These variable regions bind the antibody to the antigen at sites on the exterior surface of the antigen, which sites are called epitopes. There may be a number of such sites on the exterior of an antigen that provide suitable epitopes for binding. The binding serves as a signal for immune cells to destroy or neutralize the antigen. Binding is not permanent; an antibody may bind and release many times, depending on the affinity or, what I will call the stickiness of the antibody.
[17] While antibodies are naturally created in the human body, it has been desirable to create modified versions for study and ultimate therapeutic use in the human body. In about the middle of the last century, antibodies were developed using mice. These types of antibodies are referred to as murine antibodies. The human body recognized those antibodies as foreign proteins (non-human); and, therefore, usually rejects them. Genetic engineering ensued to make these antibodies less mouse-like and more human. These were called humanized antibodies. The human body, by and large, still recognizes humanized antibodies as foreign.
[18] The quest was on to create “fully human” antibodies. The result was the emergence of at least two techniques. One was phage display. A “library” of pieces of genetic material forming parts of the light and heavy chains of the antibody was created, and from these pieces scientists assembled a variety of antibodies made up of human parts only. The antibody “library” can be used to select a specific antibody which binds to an antigen in question. These antibodies, once constructed, could be readily multiplied.
[19] Another technique was to modify mice to express human antibodies. The technique uses a two-step process. Initially, the mouse immune system is destroyed so that the mice could no longer produce antibodies or an immune response. Such a mouse is sometimes called a knockout mouse or transgenic mouse. Subsequently, the immune-deficient mice are genetically modified and cloned to contain human antibody genes. The mice, when presented with an antigen, would produce human antibodies to that specific antigen. Those antibodies can be taken from the mouse and multiplied.
[20] Different antibodies can be created by either means; which would, selectively, attach themselves to certain areas, called epitopes, on the surface of certain antigens that are found in the human body.
[21] The degree of antibody-antigen attachment and release referred to as “on” and “off”, sometimes called affinity and I call stickiness, can be measured by passing a thin stream of the antibody over the antigen (or vice-versa) in the presence of refracted light. The refraction of the light is measured; which relates to the attachment/release of the antibody and antigen. This is a way of measuring and categorizing the particular antibody. The '281 patent refers to a particular device used for this purpose, called a BIAcore. The results are expressed in terms such as koff rate constant of 1 x 10-4 s-1 as found in the claims at issue.
[22] I reproduce a simplified diagram of the BIAcore technique:
[23] Typical of a graph as produced by the machine is as follows:
[24] Another measurement can be taken to analyze the ability of the antibody to inhibit the functional activity of the antigen; a property called potency. The functional inhibition of the antigen is measured through PHA Blast Proliferation assay (PHA assay). Human PHA Blast Proliferation Assay measures the antibodies ability to block antigen binding to its associated cell receptor, the binding which induces the proliferation of PHA stimulated human blast cells. In terms of the technology at issue, various dilutions of the antibody are washed over plates containing the IL-12 induced proliferating human blast cells. As proliferation is induced by the interaction of IL-12 and the blast cell receptor, any decrease in cell proliferation correlates to the ability of the antibody to inhibit the activity of IL-12. The results are measured in terms of the antibody concentration, the IC50, necessary to diminish the proliferation of the blast cells by 50%. PHA assay is analysed with results measured in terms of an IC50 such as 1 x 10-9M as claimed in the patent.
[25] With respect to the koff property, i.e. stickiness, the stickier the antibody to the antigen, the better. Stickiness is expressed in terms of 10-x where x is an exponential number expressing a descending degree of magnitude; the larger the x number is, the stickier the antibody. Thus, 10-4 is stickier than 10-2.
[26] Similarly, when referring to the PHA assay, which is a measure of the potency of the antibody, the property is again measured in descending degrees of magnitude, 10-x where x is a number. The less of a given quantity of antibody to inhibit an antigen, the better. A more potent antibody requires less of it to inhibit fifty percent (expressed as IC50) of an antigen. An antibody having an IC50 of 10-9 is more potent than one having an IC50 of 10-7.
[27] With respect to the claims at issue, the properties of the antibody are expressed in terms of stickiness and potency.
[28] Turning to a different aspect, life forms are comprised of building blocks known as amino acids, of which there are over twenty known acids. These acids are often referred to by a three-letter short form or a capital letter; thus, glycine is often written as gly or a letter G, and so forth for the other amino acids. These acids are strung together in different orders and lengths to form substances such as proteins and peptides (essentially short proteins). As these chains become longer and more complex, they fold, sometimes because of the individual amino acid interaction within the protein and specific hydrophobicity of each amino acid. The folding of the amino acid chains results in the formation of globular structures emerging as shapes such as the “Y” shape of the resultant antibodies at issue here.
[29] These Y-shaped antibodies are composed of amino acid chains, and those that are made by the phage display method have their amino acid structure referred to in detail in the ‘281 patent. The amino acid structure of the Y-shaped antibodies created by the phage display method differs from those created by the transgenic mouse method. Further, the attachment points or epitopes on the antigen to which the Y-shaped antibodies created by the phage display are attached differ from the epitopes on the antigen to which the Y-shaped antibodies created by the transgenic mouse method are attached.
THE '281 PATENT IN DETAIL
[30] The '281 patent is very large; it is called a “Jumbo Patent” by the Canadian Patent Office. It includes 169 pages of description, a vast number of pages of sequence listing, 223 claims and fourteen pages of tables and charts. At trial, I was provided with a useful table of contents, which reproduce here:
TABLE OF CONTENTS of ‘281 PATENT
Tab
Document
Page
1.
Background of Invention ................................................................................................
1
2.
Summary of Invention ....................................................................................................
3
(a)
Development of human antibodies
(b)
Therapeutic use of human antibodies
(c)
Embodiments of invention
3.
Making of high affinity antibodies .................................................................................
(a)
Patent describes making high affinity antibodies using a method known as phage display
16-17
4.
Detailed Description of the Invention
(a)
“Antibody”.............................................................................................................
35
(b)
“Human interleukin-12) .........................................................................................
37
(c)
“Recombinant human antibody” ...........................................................................
39
(d)
“Neutralizing antibody” .........................................................................................
40
(e)
“Surface plasmon resonance” ................................................................................
40
(f)
“Koff” .....................................................................................................................
40
(g)
“Selective mutagenesis approach”..........................................................................
43
(h)
Human Antibodies that Bind Human IL-12 ..........................................................
44
(i)
Modifications to Preferred Selective Mutagenesis Positions, Contact and/or Hypermutation Positions ........................................................................................
66
(i)
One method to general antibodies of the patent
(j)
Summary of Antibodies Generated (Appendix A: Table 2)...................................
124
(k)
Pharmaceutical Compositions and Pharmaceutical Administration ........................
105
(l)
Diseases associated with IL-12 ..............................................................................
108-109
(m)
Uses of the Antibodies of the Invention ...............................................................
115
(i)
Psoriasis ........................................................................................................
120
(n)
Examples
Example 1:
Isolation of Anti-IL-12 Antibodies ..............................................
135
Example 2:
Mutation of Y61 at Hypermutation and Contact Positions...........
141
Example 3:
Functional Activity of Anti-hIL-12 Antibodies ........................... .....................................................................................................
Preparation of Human PHA-activated lymphoblasts
Human PHA Blast Proliferation Assay
144
Example 4:
In vivo Activity of Anti-hIL-12 Antibodies..................................
152
Example 5:
Kinetic Analysis of Binding of Human Antibodies to Recombinant Human IL-12 (rhIL-12)..........................................
155
Example 9:
Clinical Pharmacology ..............................................................
Purpose: To determine safety and tolerability of IL-12 antibodies in humans
Remarkable and serendipitous discovery
Subject 62 treated with 5mg/kg
Subject 62 had psoriasis
Psoriasis fully treated
Psoriasis reappeared after antibody cleared from system
165
(o)
Claims....................................................................................................................
[31] At pages 1 through 3, the patent discusses the Background of the Invention. In particular, it discusses a genetic material found in humans, a cytokine, called interleukin 12, or IL-12. It comprises two subunits; a 35 kDa (kilodalton – a measure of weight) and a 40 kDa unit linked together by a disulphide bridge referred to as the p70 subunit. Functionally, IL-12 is said to play a central role in regulating the balance between certain T cells in the body. It is acknowledged that IL-12 appears to play a role in respect of a variety of human disorders; thus, strategies to inhibit or counteract IL-12 have been designed, beginning with antibodies derived from mice (murine). Those antibodies provoke an unwanted response (HAMA) in humans. The Background concludes at page 3:
[32] At page 3, over to page 34, there is provided a Summary of the Invention, which begins as follows:
[33] The patent proceeds from page 3 to discuss various aspects of the invention. At page 15, it discusses, as another aspect, a method of inhibiting IL-12 in persons suffering from certain disorders. Psoriasis is not mentioned:
[34] Commencing at page 35, the patent discusses a Detailed Description of the Invention. A number of terms are defined, including “antibody” (page 35) and “recombinant human antibody” (page 39):
. . .
. . .
[35] Commencing at page 44, the patent describes various aspects of the invention in further detail. Human Antibodies that Bind Human IL-12 are the first to be discussed:
. . .
(a detailed description of phage display follows).
[36] At page 47 and following, there is a discussion of the stickiness of the antigen and its determination by a PHA assay.
[37] A long discussion of mutagenesis follows.
[38] At pages 108 through 110, there is a shopping list of diseases in which IL-12 is said to play a critical role. It begins at page 108:
Interleukin 12 plays a critical role in the pathology associated with a variety of diseases involving immune and inflammatory elements. These diseases include, but are not limited to…
(page 110)
Preferably the antibodies of the invention or antigen-binding portion thereof, are used to treat rheumatoid arthritis, Crohn’s disease, multiple sclerosis, insulin dependent diabetes mellitus, and psoriasis, as described in more detail in section VII.
[39] Those particular disorders are discussed in detail commencing at page 118 of the patent. That discussion is preceded at pages 117 to 118 by the following:
[40] The discussion respecting psoriasis appears at page 120 of the patent:
[41] A number of specific Examples, ten in all, follow. The most important for this case is Example 9, which discusses a human subject who was subject to testing of the antibody J695 and, “by chance”, received that antibody, not a placebo. That person suffered from psoriasis, which was treated by the administration of J695. It must be noted that Example 9 DID NOT appear in the priority patent application. It only appeared in the PCT (effectively the Canadian) application as filed March 24, 2000. It says:
[42] After Example 10 at page 169 is a paragraph respecting equivalents:
[43] Many pages of “Sequence Listings”, directed to J695, follow; then the 223 claims and then fourteen tables and graphs.
THE CLAIMS AT ISSUE
[44] The '281 patent contains two hundred and twenty-three (223) claims. The Plaintiffs AbbVie have focused on two of those claims; claims 143 and 222. These two claims are written in dependent form so as to incorporate by reference earlier claims of the patent; thus, claim 143 incorporates by reference claim 138; and claim 138 incorporates by reference any one of claims 1 to 38, 49, 56 to 62, 65 to 117 or 119. Claim 222 incorporates by reference claim 217, and claim 217 incorporates by reference any one of claims 144 to 169. Of these many choices, AbbVie has chosen to assert claim 143 as read by incorporating claims 78, 80, 84 and 138; and claim 222 as read by incorporating claims 158, 165, 166 and 217.
[45] At trial Janssen’s Counsel agreed to restrict Janssen’s Counterclaim as to invalidity to these claims.
[46] With the selected incorporations, claim 143 reads as follows:
143. The use of a neutralizing isolated human antibody, or antigen-binding portion thereof, that binds to human IL-12 and dissociates from human IL-12 with a koff rate constant of 1 x 10-4 s-1 or less, as determined by surface plasmon resonance and which inhibits phytohemagglutin blast proliferation in an in vitro PHA assay with an IC50 of 1 x 10-9 M or less, to treat psoriasis.
[47] Claim 222 with the selected incorporations reads as follows:
222. The use of an isolated human antibody, or antigen-binding portion thereof, which binds to a human interleukin comprising a p40 subunit and dissociates from the human interleukin with a koff rate constant of 1 x 10-2 s-1 or less, as determined by surface plasmon resonance, and which inhibits phytohemagglutinin blast proliferation in an in vitro PHA assay with an IC50 of 1 x 10-9M or less, which neutralizes the activity of the interleukin, to treat psoriasis.
THE EVIDENCE
[48] The evidence consisted of witnesses appearing in person, reports or affidavits of witnesses who did not appear in person, agreed-upon documents entered as exhibits, other exhibits entered at trial, and portions of examination for discovery deemed to be read in. The evidence in chief of the expert witnesses was provided in the form of affidavits or statements which were deemed to be read into the record. The parties agreed that certain documents would be entered into the record without formal proof. These documents were given an exhibit number with the letter A as a prescript. These documents are to be considered as true copies of the originals, to be authored and where indicated, received, by the persons so noted at the date apparent from the document. Their relevance, if any, is for the Court to determine.
[49] AbbVie provided the evidence of four expert witnesses and three fact witnesses. No challenge was made by Janssen to the fact that the experts were called as such, although the nature and extent of their expertise was not conceded.
[50] AbbVie presented the evidence of the following witnesses as expert witnesses:
(a) Dr. Mark Shlomchik: Professor of Immunology, Pittsburgh, Pennsylvania. AbbVie proposed the following as a statement as to his expertise:
Dr. Mark Shlomchik is a clinical and research immunologist, as well as the Chairman of the Department of Immunology at the University of Pittsburgh. AbbVie proposes that Dr. Shlomchik be qualified as an expert immunologist, including the development and assessment of human antibodies using phage display and transgenic mice technology. AbbVie further proposes that Dr. Shlomchik be qualified as an expert in the use of antibodies to treat autoimmune and inflammatory diseases. Dr. Shlomchik will be qualified to provide opinions about the state of the art, other knowledge of the skilled person, the meaning of words in Canadian Patent No. 2,365,281 and to express opinions set out in his affidavits as of March 25, 1999, and today.
Dr. Shlomchik testified both as to infringement (Exhibit P-95) and validity (Exhibit P-96) of the '281 patent.
(b) Dr. Louis Weiner: Physician and Professor, Washington, District of Columbia. AbbVie proposed the following as a statement as to his expertise:
Dr. Louis Weiner is currently a clinical and research oncologist as well as a Professor of Oncology at Georgetown University in Washington. Dr. Weiner directs the Lombardi Comprehensive Cancer Center at Georgetown, which is one of only 41 US National Cancer Institute designated Comprehensive Cancer Centers. Dr. Weiner has expertise developing novel therapeutic antibodies. AbbVie proposes that Dr. Weiner be qualified as an expert in antibody engineering and the development of human antibodies including therapeutic monoclonal antibodies, phage display and transgenic mice. Dr. Weiner will be qualified to provide opinions about the state of the art, other knowledge of the skilled person, the meaning of words in Canadian Patent No. 2, 365,281 and to express opinions set out in his affidavit as of March 25, 1999 and today.
Dr. Weiner testified as to validity (Exhibit P-101) of the '281 patent.
(c) Dr. Richard Chizzonite: Consultant, Biotech/Pharma , South Kent, Connecticut. AbbVie proposed the following as a statement as to his expertise:
Dr. Richard Chizzonite was, in the 1990’s, part of a team who identified IL-12 and developed novel biologic assays (including PHA blast proliferation) for evaluating the biological characteristics of IL-12. Dr. Chizzonite was directly involved in the development of antibodies directed towards IL-12 to potentially treat diseases and was a leading author on the use of, and inhibition of, IL-12 to treat diseases. Dr. Chizzonite was also the author of the chapter dealing with PHA blast proliferation assays for IL-12 in Current Protocols in Immunology. AbbVie proposes that Dr. Chizzonite be qualified as an expert immunologist, including IL-12, and the biologic assays described in Canadian Patent No. 2,365,281. Dr. Chizzonite will be qualified to provide opinions about the state of the art, other knowledge of the skilled person, the meaning of words in Canadian Patent NO. 2,365,281 and to express the opinions set out in his affidavits as of March 25, 1999, and today.
Dr. Chizzonite testified both as to infringement (Exhibit P-106) and validity (Exhibit P-107) of the ‘281 patent.
(d) Dr. Gregory De Crescenzo: Full Professor, Montreal, Quebec. AbbVie proposed the following as a statement as to his expertise:
Dr. Gregory De Crescenzo is currently a Professor in the Department of Chemical Engineering at Ecole Polytechnique de Montreal. AbbVie proposes that Dr. De Crescenzo be qualified as an expert in surface Plasmon resonance technology, including the use of BIAcore machines to analyze the interactions between molecules (including the measurement of KD and koff for protein-protein interactions). Dr. De Crescenzo will be qualified about the meaning of the words in Canadian Patent No. 2,365,281 from the point of view of the skilled person and to express the opinion set out in his affidavits as of September, 2000 and today.
Dr. De Crescenzo testified as to infringement (Exhibit P-120) and validity (Exhibit P-121) of the '281 patent. Certain explanatory notes were entered into evidence by agreement between Counsel as Exhibit A-165.
[51] AbbVie called three witnesses as to factual matters:
(a) Dr. Stuart Friedrich: Scientist, Morpeth, Ontario. He is one of the named inventors in the '281 patent. He testified as to some of the development work to the patent. He appeared in person and was examined and cross-examined.
(b) Dr. Richard Hughes: Scientist Project Leader, Cambridge, United Kingdom. He conducted an experiment to determine the IC50 for STELARA as measured in an in vitro PHA blast proliferation assay.
He did not appear in person. His evidence was provided by way of an affidavit (Exhibit P-105). There was no cross-examination as Janssen declined to cross-examine him even though Letters Rogatory permitting cross-examination had been issued by me prior to trial.
(c) Suping Jin: Senior research Associate, San Antonio, Texas. She conducted an experiment to determine the koff rate for STELARA, dissociating from human IL-12 using a BIAcore machine.
Her evidence was contained in her report, which was an attachment to her affidavit (Exhibit P-122). She appeared in person and was examined and cross-examined.
[52] In addition, AbbVie tendered in evidence portions of the examination for discovery of Janssen (Exhibit P-163).
[53] Janssen provided the evidence of three expert witnesses and two fact witnesses. No challenge was raised by AbbVie as to the experts having been called as such, although the nature and extent of their expertise was not conceded.
(a) Dr. Michael Eck: Scientist/Professor, Brookline, Massachusetts. He gave evidence as to amino acid sequences and three-dimensional structures of two antibodies: STELARA and J695. His evidence was given by way of a Report in two volumes; Exhibit D-123, which was deemed to be read into evidence. He did not appear in person. There was no cross-examination.
(b) Dr. Marie (Marika) Sarfati: Scientist/Professor, Montreal, Quebec. Janssen prepared the following statement as to her expertise :
Marie Sarfati will be qualified to testify on immunology in humans with a focus on IL-12, including the regulation of the immune response, human antibodies, human interleukins, antibody affinity, antibody neutralization, and the use of fully human antibodies in the treatment of disease.
Dr. Sarfati appeared in person and testified as to validity (Exhibit D-152) and infringement (Exhibit D-153) of the '281 patent. She was cross-examined.
(c) Dr. Andrew J. J. George: Professor of Immunology, Richmond, United Kingdom. Janssen prepared the following statement as to his expertise:
Andrew J. T. George will be qualified to testify on basic immunology, antibodies and therapeutic antibodies, antibody engineering including the use of recombinant techniques to generate antibodies in phage display and transgenic mouse technology, the analysis, detection and measurement of immune cells and molecules, including the affinity and kinetics of antibody/antigen interactions.
Dr. George appeared in person and testified as to validity (Exhibit D-155 in four volumes) and infringement (Exhibit D-156) of the '281 patent. Some corrections were entered as Exhibit D-157. He was cross-examined.
[54] Janssen called two fact witnesses:
(a) Dr. John Ghrayeb: Retired Scientist, Downingtown, Pennsylvania. He was involved in the development of the drug known as STELARA and gave evidence as to that development. He appeared in person and was examined and cross-examined.
(b) George Treacy: Retired Toxicologist, Downingtown, Pennsylvania. He was involved in some of the development work in the early stages leading up to the drug now known as STELARA. He testified as to certain memoranda he prepared in 1999 (Exhibit 147) and was cross-examined.
[55] In addition, Janssen tendered in evidence portions of the examination for discovery of AbbVie (Ex D-162).
COMMENTS AS TO THE EVIDENCE AND WITNESSES
a) Comments as to the Expert Witnesses
[56] I am satisfied that each of the persons called by each of the parties as experts were qualified to give evidence as experts within their qualifications as put forward by Counsel as set out earlier in these Reasons. I am also satisfied that each of the experts for each of the parties has read and has endeavoured to adhere to the Code of Conduct for Expert Witnesses as provided for in Rule 52.1(1)(c) and the Schedule to Form 52.2.
[57] With respect to the experts put forward by AbbVie, I place the greatest reliance on the evidence of Dr. Weiner. He was a person working in the relevant area at the relevant time, and gave his answers with great candour. I was also impressed by Dr. Chizzonite, who also has substantial experience at the relevant time and has authored many scientific papers on relevant subject matter at the relevant time. I do not discount the evidence of Dr. Shlomchik, as he has impressive qualifications, but he did not play an important role in the field at the relevant time. His evidence appears to have been viewed more with hindsight. He appeared to be somewhat nervous in the witness box; a matter I ascribe to this probably being the first time that he has testified as an expert witness in open court. I have no hesitation in accepting Dr. De Crescenzo’s evidence; it was largely uncontested.
[58] With respect to Janssen’s expert witnesses, Dr. George was clearly a practiced and experienced witness, with impressive qualifications in the relevant field at the relevant time. He has obviously testified as an expert several times. I found him to be somewhat too practiced. In cross-examination, he was taken to portions of his written evidence in chief which, despite his statements in that evidence that certain matters could be found in supporting documents, they could not, in fact, find such support. This suggests that he was perhaps a little over confident in respect of some of his evidence and should have been more careful.
[59] Dr. Sarfati, Janssen’s other expert witness, appears to have been a minor player in the relevant area at the relevant time. She appeared to be somewhat confused and flustered at times during cross-examination. Her evidence is largely based on hindsight; I do not give her evidence as much weight as that of other experts.
[60] Dr. Eck, another expert put forward by Janssen, did not appear personally; his evidence is uncontested.
[61] In all, I was most impressed with Dr. Weiner and I will prefer his evidence unless I state otherwise.
b) Testing the Janssen STELARA Product
[62] Only AbbVie conducted tests on the Janssen STELARA product. Notwithstanding that STELARA is Janssen’s product, and that Janssen undoubtedly has the means to perform the necessary tests on its product, it did not provide in evidence the results of any such tests. Janssen chose only to offer criticisms of the tests performed at the request of AbbVie. Accordingly, I must weigh the AbbVie tests only against criticisms, and not against other tests. If Janssen clearly believed that its product did not fall within certain parameters, I would have expected it to provide evidence as to testing that demonstrated that fact.
[63] Janssen made a motion to be dealt with at trial to exclude the evidence as to this testing conducted by third parties at the request of AbbVie. In particular, Janssen moved to exclude the evidence of Ms. Jin and Dr. Hughes.
[64] Unlike the practice in the United Kingdom as described in the “White Book”, Civil Procedure, Volume 2, 2013, Sweet & Maxwell, London at page 730, there is, as of yet, no Federal Courts of Canada Rule specifically directed to testing conducted for the purposes of trial. In Omark Industries (1960) Ltd v Gouger Saw Chain Co, (1965) 1 Ex C R 457 at page 516, Justice Noel discussed a “salutary” rule to the effect that an opposite party should be given notice of and an opportunity to attend at such experiments. He did, however, also say that an ex parte test may be admissible, subject to weight, particularly where, in his case the opposite party could readily have conducted the same test. Most recently Justice O’Reilly of this Court in Apotex Inc. v. Pfizer Canada Inc., 2013 FC 493 at paragraph 40,held that where a party had ample notice as to the testing and ample knowledge as to what would be done, a party cannot be held to say that the testing results are inadmissible because the party did not attend.
[65] AbbVie provided evidence of testing conducted at two independent laboratories. One was conducted by Ms Suping Jin at the University of Texas Health Centre, where she measured the koff rate constant of STELARA dissociating from human IL-12 as 0.76 x 10-4 s-1. Her cross-examination satisfied me that she conducted the test properly and her result is reliable. Dr. De Crescenzo, an expert called by AbbVie, particularly at paragraphs 37 to 45 of Exhibit P -121, supports Ms. Jin’s conclusions. Dr. George, an expert called by Janssen in paragraph 8 of his second affidavit, Exhibit D-156, criticizes Ms. Jin’s analysis only in that it provides limited information (paragraph 8), but agrees that her experiments do accord with the protocol of Example 5 of the '281 patent (paragraph 13).
[66] It is to be noted that the original affidavits of De Crescenzo and George refer to the evidence of other persons – Dr. Vinitsky and Dr. Rich – neither of whom were called as witnesses by either party. These comments were redacted from the affidavit now appearing as Exhibit P-121.
[67] Another set of experiments was conducted at Quotient Bio Analytical Sciences in Cambridge, United Kingdom by Dr. Richard Hughes. AbbVie’s Counsel conceded that no prior notice of this testing was given to Janssen’s Counsel and, of course, Janssen did not attend.
[68] The evidence of this testing was provided by the filing of Dr Hughes’ affidavit (Exhibit P-105); he did not appear in person, and, though I issued Letters Rogatory to permit cross-examination, Janssen chose not to cross-examine. He conducted PHA assays of Janssen’s STELARA product and concluded that STELARA inhibits PHA blast proliferation in a PHA assay with an IC50 of less than 1 x 10-9. Dr. Chizzonite, an expert called by AbbVie, in his first affidavit (Exhibit P-106) at paragraphs 45 to 64, reviewed Dr. Hughes’ work and concurred with his conclusion.
[69] Dr. Sarfati, an expert called by Janssen, in her second statement (Exhibit D-153), criticized Dr. Hughes’ work largely because she would want further experiments conducted on further samples. At paragraph 16, she appears to agree that the tests that were performed were well performed, but should be treated only as preliminary.
[70] Given the evidence that I have, and having reviewed the criticisms made by Janssen and, given that Janssen did have a opportunity to cross-examine Dr Hughes, and that Janssen has provided no test results whatsoever, I conclude that the evidence of both tests is admissible and that the evidence shows that:
• STELARA exhibits a koff rate constant dissociating from human IL-12 as 0.76 x 10-4 s-1;
• STELARA inhibits PHA blast proliferation in a PHA assay with an IC50 of less than 1 x 10-9M.
c) Developments Leading to the '281 Patent
[71] AbbVie called only one of the persons named as an inventor in the