Not defining skilled person in NOA insufficient to reverse order of evidence

On September 19, 2014, Prothonotary Milczynski dismissed Bristol-Myers Squibb’s motion for a partial reversal of the order of evidence in a prohibition application involving Canadian Patent Nos. 2,250, 840 and 2,317,736 and BMS’ atazanavir product REYATAZ.

In seeking a partial reversal of the order of the delivery of evidence, BMS complained, in part, that:

a)    Teva’s NOA provided no facts whatsoever as to the level of education, training and experience of the alleged skilled person in the art, whose key perspective frames the invalidity analyses and defines the relevant content of the common general knowledge;

b)   Teva’s  NOA did not detail the relevant common general knowledge;

c)    Teva’s NOA did not provide sufficient pinpoint cites to the prior art listed in the NOA; and

d)   Teva’s NOA provided an analysis of the inventive concept and differences from the state of the art for the 840 patent claims, however, the NOA was completely silent on these issues in relation to the 736 Patent.

In support of its motion, BMS filed the evidence of two experts stating that they were not able to understand or anticipate what Teva would deliver in its responding evidence or how Teva’s experts might rely on the prior art listed in the Teva’s NOA.  Specifically, the absence of any statement as to the characteristics and common general knowledge of the skilled person in Teva’s NOA was said to make it difficult to anticipate what Teva might advance to support its allegations of invalidity.

After setting out the legal test for the reversal of evidence, and noting that reversal should be ordered only in the clearest of cases, Prothonotary Milczynski held:

 With respect to the within motion, the issue is not whether BMS or Drs. Lautens and Byrn can anticipate what Teva and its experts will say.  BMS should focus on what the NOA already says, which on the motion material filed it appears they readily can.

Teva was represented by Aitken Klee LLP.

A copy of Prothonotary Milczynski’s Order may be found here.