Date: 20220706  
Docket: T-555-20  
Citation: 2022 FC 996  
Toronto, Ontario, July 6, 2022  
PRESENT: Madam Justice Pallotta  
BETWEEN:  
JANSSEN INC. AND  
ACTELION PHARMACEUTICALS LTD  
Plaintiffs  
and  
APOTEX INC.  
Defendant  
PUBLIC REASONS FOR JUDGMENT  
(Judgment issued May 20, 2022 2022 FC 995)  
(Confidential Judgment and Reasons issued May 20, 2022)  
Table of Contents  
I.  
Overview............................................................................................................................. 3  
Background......................................................................................................................... 5  
A. The Parties and the Nature of this Proceeding.................................................................... 5  
B. The 770 Patent .................................................................................................................... 7  
C. PAH and Diseases Involving Vasoconstriction .................................................................. 8  
II.  
Page: 2  
III.  
IV.  
Issues................................................................................................................................... 9  
Witnesses .......................................................................................................................... 12  
A. Dr. Mielniczuk (Plaintiffs’ Expert Witness)..................................................................... 13  
B. Dr. Kapasi (Plaintiffs’ Expert Witness)............................................................................ 14  
C. Dr. McIvor (Apotex’s Expert Witness) ............................................................................ 16  
D. Ms. Picard (Apotex’s Expert Witness) ............................................................................. 17  
The Skilled Person and Their Common General Knowledge........................................... 23  
V.  
VI.  
Claim Construction........................................................................................................... 28  
A. Legal Principles ................................................................................................................ 28  
B. The Asserted Claims......................................................................................................... 30  
C. Experts’ Opinions on Claim Construction........................................................................ 33  
D. Parties’ Positions on Claim Construction ......................................................................... 36  
E. Analysis on Claim Construction....................................................................................... 42  
(a) Claims 1-5............................................................................................................... 43  
(b) Claims 10-20........................................................................................................... 46  
(c) Claims 21-31........................................................................................................... 49  
VII. Infringement...................................................................................................................... 50  
A. Direct Infringement........................................................................................................... 51  
(1) Parties’ Submissions................................................................................................... 51  
(2) Analysis ...................................................................................................................... 52  
B. Inducing Infringement ...................................................................................................... 54  
(1) Parties’ Submissions................................................................................................... 55  
(2) Analysis ...................................................................................................................... 62  
(a) Corlac Test: Prong 1 ............................................................................................... 62  
(b) Corlac Test: Prong 2 ............................................................................................... 64  
(c) Corlac Test: Prong 3 ............................................................................................... 74  
VIII. Conclusion ........................................................................................................................ 75  
IX.  
Postscript........................................................................................................................... 76  
SCHEDULE A.............................................................................................................................. 79  
Page: 3  
I.  
Overview  
[1]  
The plaintiffs, Janssen Inc. (Janssen) and Actelion Pharmaceuticals Ltd (Actelion), bring  
this patent infringement action against Apotex Inc. (Apotex) pursuant to subsection 6(1) of the  
Patented Medicines (Notice of Compliance) Regulations, SOR/93-133 [PMNOC Regulations],  
made under the Patent Act, RSC 1985, c P-4 [Patent Act].  
[2]  
Janssen markets a prescription medication in Canada known as OPSUMIT®, a film-  
coated tablet containing 10mg of macitentan as the active ingredient, to treat patients afflicted  
with pulmonary arterial hypertension (PAH). PAH is a serious and incurable condition of high  
blood pressure in the blood vessels of the lungs, caused by changes to the arteries that transport  
deoxygenated blood from the heart to the lungs for reoxygenation. If left untreated, the high  
blood pressure strains the heart, leading to heart failure and death.  
[3]  
OPSUMIT belongs to a class of drugs known as endothelin receptor antagonists (ERAs).  
ERAs work by binding to endothelin receptors within the walls of blood vessels, preventing  
endothelin from binding to these receptors. Endothelin binding is one of the steps in the  
endothelin pathway, a biological pathway that causes smooth muscle cells in blood vessel walls  
to constrict and proliferate, forcing the heart to work harder to push blood through the narrowed  
and thickened arteries. By blocking the endothelin binding step, ERAs interfere with the  
vasoconstricting and proliferative effects of the endothelin pathway.  
[4]  
OPSUMIT can be prescribed alone or in combination with another class of drugs known  
as phosphodiesterase type-5 inhibitors (PDE5-Is). Like ERAs, PDE5-Is affect blood pressure,  
 
Page: 4  
but they do so by enhancing the vasorelaxation and anti-proliferative effects of the nitric oxide  
pathway. Sildenafil and tadalafil are two PDE5-Is prescribed for PAH.  
[5]  
Currently, Janssen is the only company authorized by Health Canada to sell macitentan as  
a prescription medication. Apotex seeks Health Canada’s approval to sell a generic prescription  
medication containing 10mg of macitentan as the active ingredient (APO-MACITENTAN).  
[6]  
The plaintiffs allege that if Apotex sells APO-MACITENTAN, it will infringe claims 1-  
5, 10-20, and 21-31 (Asserted Claims) of Actelion’s Canadian Patent No. 2,659,770 titled  
“Therapeutic Compositions Comprising a Specific Endothelin Receptor Antagonist and a PDE5  
Inhibitor” (770 Patent).  
[7]  
Claims 1, 10, and 21 are independent claims of the 770 Patent that relate to macitentan in  
combination with a PDE5-I to treat a disease wherein vasoconstriction is involved. The other  
Asserted Claims depend directly or indirectly on claims 1, 10, or 21, and they are narrower in  
scope. The dependent claims include limitations on the specific PDE5-I, the specific disease, or  
both.  
[8]  
According to the plaintiffs, Apotex will infringe certain Asserted Claims directly, or  
indirectly by making statements in the APO-MACITENTAN product monograph (PM) that will  
induce others to infringe, notably prescribing physicians. With respect to inducement, the  
plaintiffs allege that the APO-MACITENTAN PM communicates that APO-MACITENTAN  
should not be used any differently than OPSUMIT. They allege the APO-MACITENTAN PM  
Page: 5  
includes bioequivalence data and results from a multicentre, double blind, placebo-controlled  
Phase 3 clinical trial (SERAPHIN) involving 742 PAH patients that established the safety and  
efficacy of macitentan as a monotherapy and as combination therapy with a PDE5-I. As such,  
the APO-MACITENTAN PM will encourage physicians to use APO-MACITENTAN just as  
OPSUMIT is used, in combination with PDE5-Is.  
[9]  
For the purposes of this proceeding only, Apotex concedes that the Asserted Claims are  
valid. Apotex defends the plaintiffs’ allegations on the basis that it will not infringe any of the  
Asserted Claims. Apotex alleges that it will not infringe any Asserted Claims directly because it  
will not perform all of the essential elements of the claims, and it will not infringe any Asserted  
Claims indirectly because the Indications and Clinical Use” section of the APO-  
MACITENTAN PM states that  
and the PM does not  
suggest that physicians or patients should use APO-MACITENTAN in combination with a  
PDE5-I.  
[10] For the reasons below, the plaintiffs have not established that Apotex will directly  
infringe any of the Asserted Claims. The plaintiffs have established that Apotex will induce  
infringement of claims 1-5 and 21-31.  
II.  
A.  
Background  
The Parties and the Nature of this Proceeding  
[11] Janssen is a pharmaceutical company with a head office in Toronto, Ontario. Actelion is  
a pharmaceutical and biotechnology company with a head office in Allschwil, Switzerland.  
   
Page: 6  
Janssen is wholly owned by Johnson & Johnson, which acquired Actelion in 2017. Both Janssen  
and Actelion are members of the Johnson & Johnson group of companies. Janssen is a “first  
person” within the meaning of subsections 4(1) and 6(1) of the PMNOC Regulations. Actelion is  
the registered owner of the 770 Patent and is a necessary party to this action under subsection  
6(2) of the PMNOC Regulations.  
[12] Apotex is a pharmaceutical corporation with its head office in Toronto, Ontario. Apotex  
is a “second person” within the meaning of subsections 5(1) and 6(1) of the PMNOC  
Regulations.  
[13] Apotex filed an Abbreviated New Drug Submission (ANDS) with Health Canada,  
seeking authorization to market APO-MACITENTAN tablets based on their equivalent  
pharmaceutical and bioavailability characteristics, when compared to OPSUMIT.  
[14] The Minister of Health maintains a list of patents related to drugs that have been  
authorized for sale under a notice of compliance (NOC). As a condition of obtaining market  
authorization for its macitentan product, the PMNOC Regulations required Apotex to address the  
patent list for OPSUMIT. Apotex served a Notice of Allegation on April 6, 2020 and the  
plaintiffs commenced this action in response.  
[15] When this action was commenced, three patents were listed in relation to OPSUMIT:  
Canadian Patent No. 2,437,675, Canadian Patent No. 2,621,273, and the 770 Patent. Canadian  
Page: 7  
Patent No. 2,437,675 has expired, and Canadian Patent No. 2,621,273 is not at issue in this  
action. Only the 770 Patent is at issue.  
[16] By commencing this action, the plaintiffs triggered a stay that prevents the Minister of  
Health from issuing an NOC to Apotex for up to 24 months in order to allow time for the action  
to be heard and decided.  
B.  
The 770 Patent  
[17] The 770 Patent was issued on November 18, 2014. It relates to a specific compound,  
referred to throughout the patent as “formula (I)”, in combination with a PDE5-I to treat diseases  
wherein vasoconstriction is involved. Formula (I) is identified by the following diagram of its  
chemical structure:  
[18] There is no dispute that formula (I) is the compound now known as macitentan, the active  
ingredient in OPSUMIT, and that formula (I)/macitentan is an ERA.  
[19] The first paragraph of the 770 Patent specification describes the invention as relating to a  
product containing a compound of formula (I) in combination with at least one compound having  
 
Page: 8  
PDE5-inhibitory properties for therapeutic use in the treatment of a disease wherein  
vasoconstriction in involved. The specification states that “disease wherein vasoconstriction is  
involved” means in particular hypertension, pulmonary hypertension (including PAH), diabetic  
arteriopathy, heart failure, erectile dysfunction or angina pectoris. Some of the Asserted Claims  
do not include a limitation on the particular disease wherein vasoconstriction is involved, while  
others are limited to: the particular diseases of vasoconstriction listed above, hypertension and  
pulmonary hypertension, pulmonary hypertension (PH) specifically, or PAH specifically.  
[20] The patent specification defines “compound having PDE5-inhibitory properties” to be a  
compound that meets or exceeds a threshold measurement of its ability to inhibit PDE5  
according to an experimental test protocol described in the patent, and it provides four examples  
of PDE5-Is: sildenafil, vardenafil, tadalafil, and udenafil. Some of the Asserted Claims do not  
include a limitation on the PDE5-I, and others are limited to: the four example PDE5-Is,  
sildenafil or tadalafil, sildenafil specifically, or tadalafil specifically.  
C.  
PAH and Diseases Involving Vasoconstriction  
[21] Vasoconstriction is the constriction of the vasculature (arteries and veins) of the  
circulatory system. The vasculature can be divided into two systems that circulate blood  
between the body, heart, and lungs. The systemic circuit involves the left side of the heart,  
which pumps oxygenated blood from the heart to the rest of the body (except the lungs). The  
pulmonary circuit involves the right side of the heart, which pumps deoxygenated blood from the  
heart to the lungs for reoxygenation.  
 
Page: 9  
[22] Although some of the Asserted Claims cover other diseases of vasoconstriction and are  
not limited to PAH, PAH is the only disease that is relevant to the issues in this action because  
the allegations of direct and indirect infringement are restricted to PAH.  
[23] PAH is a subtype of PH, a general term that describes abnormally high blood pressure in  
the pulmonary circulatory system. As noted above, PAH is a progressive and incurable disease  
where the artery walls in the lungs constrict and thicken, increasing vascular resistance to blood  
flow and making the right side of the heart work harder to push blood through narrowed arteries.  
The extra stress causes the right ventricle of the heart to enlarge and dilate. Over time, the  
changes become unsustainable. The right ventricle weakens, its ability to push blood out of the  
heart to the lungs is compromised, and eventually, the heart fails.  
III.  
Issues  
[24] The issues in this action relate to claim construction and infringement of the Asserted  
Claims. As noted above, validity of the 770 Patent is not an issue that is before the Court.  
[25] The Asserted Claims of the 770 Patent must be construedthat is, interpretedbefore  
there is an assessment of whether they are infringed: Whirlpool Corp v Camco Inc, 2000 SCC 67  
at para 43 [Whirlpool]. Doing so requires that the claims be read in an informed and purposive  
way, from the perspective of a notional person of ordinary skill in the art or science to which the  
patent relates, and to whom the patent is addressed (skilled person): Free World Trust v Électro  
Santé Inc, 2000 SCC 66 at para 44 [Free World].  
 
Page: 10  
[26] While the parties in this case and their expert witnesses largely agree (with some  
variation) on the qualifications of the skilled person and the relevant experience and knowledge  
that person would bring to bear on the issues in the action, the first issue for the Court is to  
define the skilled person.  
[27] The parties filed a joint claim chart. Despite their identical proposed constructions of the  
essential elements of the Asserted Claims, the parties do not agree on what the claims mean.  
Two aspects of claim construction are in dispute: (i) whether claims 1, 10 and their dependent  
claims are, in substance, claims to the use of macitentan to treat a disease including PAH; and  
(ii) for all Asserted Claims, whether “combination” contemplates the use of macitentan and a  
PDE5-I as something that a physician intended at the outset of a patient’s treatment.  
[28] The Court’s claim construction analysis is not confined to the aspects of claim  
construction that are in dispute. The Court is not required to accept the parties’ or the experts’  
proposed claim construction. Claim construction is a matter of law for the Court to decide:  
Whirlpool at para 61; Zero Spill Systems (Int'l) Inc v Heide, 2015 FCA 115 at para 41 [Zero  
Spill]. The construction of the Asserted Claims is the second issue.  
[29] The application for the 770 Patent was published on March 6, 2008. This is the relevant  
date for construing the claims: Free World at paras 53-54. The skill and knowledge that the  
skilled person brings to bear when interpreting the claims is their skill and knowledge as of  
March 6, 2008. For simplicity, I will sometimes refer to the 770 Patent’s publication date as  
March 2008 or I will refer to the year only.  
Page: 11  
[30] The plaintiffs bear the burden of proving infringement on a balance of probabilities. The  
parties’ joint statement of issues frames the infringement issue as follows:  
The Court will be required to decide whether, if approved, the  
making, constructing, using, or selling of APO-MACITENTAN 10  
mg film-coated tablets, by Apotex Inc. in accordance with its  
Abbreviated New Drug Submission No. 2365227 constitutes  
infringement of any of the Asserted Claims of the 770 Patent,  
either directly or indirectly by inducing others to infringe.  
[31] As the third issue, the Court must decide whether the plaintiffs have established that  
Apotex would directly infringe claims 1-5 and 10-20, if it is authorized to market APO-  
MACITENTAN.  
[32] As the fourth issue, the Court must decide whether the plaintiffs have established that  
Apotex would indirectly infringe claims 1-5 and 21-31 by inducing others, notably prescribing  
physicians, to infringe. As noted above, the plaintiffs assert that statements made in the APO-  
MACITENTAN product monograph (PM) will induce prescribing physicians to infringe the  
Asserted Claims.  
[33] At the outset of trial, the plaintiffs stated that they were alleging Apotex would infringe  
claims 10-20 indirectly, however, their written closing argument did not address indirect  
infringement of claims 10-20. In view of my construction of claims 10-20, I would not have  
found indirect infringement for these claims.  
Page: 12  
IV.  
Witnesses  
[34] Each of the parties introduced expert evidence in support of their respective positions on  
claim construction and infringement. The plaintiffs relied on the expert opinion evidence of Dr.  
Mielniczuk and Dr. Kapasi. Apotex relied on the expert opinion evidence of Dr. McIvor and Ms.  
Picard.  
[35] The parties agree on a number of facts. As a result, neither party called fact witnesses.  
They provided a joint scientific primer and an agreed statement of facts.  
[36] That said, the plaintiffs submit that Apotex should have called a fact witness from the  
company. They argue an adverse inference should be drawn because the only evidence  
regarding Apotex’s actions and intentionswhich are centrally important to the issue of  
infringement—was Dr. McIvor’s and Ms. Picard’s speculation. The plaintiffs therefore argue  
that this Court should infer that Apotex did not call a company witness because their evidence  
would not have been helpful to Apotex’s position.  
[37] I decline to draw an adverse inference based on Apotex’s alleged failure to call a  
company witness. According to the joint statement of issues, the question on infringement is  
whether the making, constructing, using or selling of APO-MACITENTAN in accordance with  
Apotex’s ANDS would constitute direct or indirect infringement. In this regard, the plaintiffs  
asked Drs. Mielniczuk and Kapasi to review the proposed APO-MACITENTAN PM and  
product label that Apotex submitted as part of its ANDS, and opine on: (i) how APO-  
MACITENTAN will be used by physicians and patients if it is approved, sold, and used in  
 
Page: 13  
Canada; and (ii) what Apotex’s influence will be on the use of APO-MACITENTAN in Canada  
by physicians and patients. Both experts opined that Apotex would represent that APO-  
MACITENTAN can be used in place of OPSUMIT through the information within the proposed  
APO-MACITENTAN PM.  
[38] The following provides a brief description of each expert witness’ qualifications and  
testimony.  
A.  
Dr. Mielniczuk (Plaintiffs’ Expert Witness)  
[39] Dr. Mielniczuk is a Staff Cardiologist and Medical Director of the Pulmonary  
Hypertension Clinic at the University of Ottawa Heart Institute. She has been in this role since  
2007. Dr. Mielniczuk received her M.D. from McMaster University in 1998. She completed a  
residency in internal medicine at Queen’s University in 2001, and a fellowship in cardiology at  
the University of Ottawa Heart Institute in 2004. Dr. Mielniczuk also completed a fellowship in  
advanced heart failure and cardiac transplantation at the Brigham and Women’s Hospital in  
Boston, Massachusetts in 2006. She received a Master of Science degree in Clinical Science and  
Epidemiology from the Harvard School of Public Health in 2007.  
[40] Dr. Mielniczuk’s research activities focus on heart failure, clinical outcomes relating to  
heart failure associated with PH, and the evaluation of myocardial energetics in right heart  
failure.  
 
Page: 14  
[41] Apotex did not object to Dr. Mielniczuk’s proposed qualifications. I was satisfied Dr.  
Mielniczuk was qualified to provide expert evidence according to the proposed qualifications  
that were put forward by the plaintiffs:  
Dr. Mielniczuk is a medical doctor, researcher, and professor of  
cardiology with expertise in (i) pulmonary hypertension (“PH”)  
(including pulmonary arterial hypertension (“PAH”)); (ii) the  
development and science of treatment of PH (including PAH); and  
(iii) the treatment of PH (including PAH) in Canada, past and  
present.  
[42] Dr. Mielniczuk prepared an expert witness report dated July 15, 2021. The report sets out  
Dr. Mielniczuk’s opinions on mandates related to the qualifications and knowledge of the skilled  
person, construction of the Asserted Claims, how PAH is treated today, how APO-  
MACITENTAN will be used by physicians and patients in Canada, and what Apotex’s influence  
will be on the use of APO-MACITENTAN by physicians and patients. Dr. Mielniczuk’s report  
was taken as read.  
B.  
Dr. Kapasi (Plaintiffs’ Expert Witness)  
[43] Dr. Kapasi is an Associate Professor of Medicine at the University of British Columbia.  
Dr. Kapasi received his M.D. from the University of Alberta in 2003 and completed a residency  
in family medicine in 2004. He also completed a residency in internal medicine at the University  
of Manitoba in 2006, a respirology subspeciality training program in 2008, and a fellowship in  
lung and heart/lung transplantation in 2009. Dr. Kapasi received a Masters in Pulmonary  
Vascular Disease from the Università di Bologna in 2012.  
 
Page: 15  
[44] Since the beginning of his practice of medicine in 2009, Dr. Kapasi’s focus has been on  
treating cardiovascular diseases, with a particular interest in diseases affecting the pulmonary  
circulatory system.  
[45] The plaintiffs proposed that Dr. Kapasi be qualified to testify as an expert as follows:  
Dr. Kapasi is a medical doctor, researcher, and professor of  
pulmonary medicine with expertise in (i) pulmonary hypertension  
(“PH”) (including pulmonary arterial hypertension (“PAH”)); (ii)  
the development and science of treatment of PH (including PAH);  
and (iii) the treatment of PH (including PAH) in Canada, past and  
present.  
[46] Apotex did not object to the proposed qualifications, and I was satisfied that Dr. Kapasi  
was qualified to provide expert testimony in accordance with the proposed qualifications.  
[47] Dr. Kapasi prepared an expert witness report dated July 15, 2021. Dr. Kapasi’s report  
covered his opinions on the same mandates as Dr. Mielniczuk’s report. Dr. Kapasi’s report was  
taken as read.  
[48] Prior to Dr. Kapasi’s testimony at trial, Apotex registered an objection to Dr. Kapasi’s  
expert opinion evidence on the ground that his evidence is duplicative of Dr. Mielniczuk’s expert  
opinion evidence. Having noted the objection, Apotex stated that it would provide its  
submissions on the objection in the context of closing arguments.  
[49] Apotex did not provide submissions on the objection in its written or oral closing  
arguments. Following a question from the Court, asking whether the objection was withdrawn,  
Page: 16  
Apotex stated it was not objecting to the admissibility of Dr. Kapasi’s expert opinion evidence  
but it reserved the right to speak to the issue on costs. Apotex then added that the duplicative  
nature of the evidence should be a factor considered in assigning weight to Dr. Kapasi’s  
evidence, and the plaintiffs raised an objection. The plaintiffs’ position was that, having made  
no submissions in its closing arguments (and in fact, Apotex relied on both Dr. Kapasi’s and Dr.  
Mielniczuk’s evidence on various points), and having withdrawn the objection, it was not open  
to Apotex to argue that Dr. Kapasi’s opinion should be given less weight because it is  
duplicative. In any event, the plaintiffs submit Dr. Kapasi’s and Dr. Mielniczuk’s opinions are  
corroborative rather than duplicative.  
[50] Apotex argued that an opinion from a second, similarly-situated PAH expert does not  
assist the Court according to the framework set out in R v Mohan, [1994] 2 SCR 9. In my view,  
that is a question of admissibility, and Apotex stated it was not objecting to the admissibility of  
Dr. Kapasi’s evidence. Apotex also argued that the Court should not decide issues on the basis  
that two experts are better than one. In my view, that caution was unnecessary. I have not given  
“extra weight” to the opinions of either of the plaintiffsexperts simply because there were two  
of them.  
C.  
Dr. McIvor (Apotex’s Expert Witness)  
[51] Dr. McIvor is a respirologist (also referred to as a pulmonologist, especially in the United  
States) whose clinical practice and research focuses on a range of respiratory disorders. Dr.  
McIvor was trained in internal medicine in the United Kingdom from 1984 to 1989, and enrolled  
in the Respirology Training Program at the University of Toronto from 1990 to 1992. Dr.  
 
Page: 17  
McIvor received his M.D. from Queen’s University in Belfast, Northern Ireland in 1994 and a  
Master of Science degree in clinical epidemiology from McMaster University in 1995. Since  
2005, he has been a Staff Respirologist at the Firestone Institute for Respiratory Health (FIRH)  
of St. Joseph’s Healthcare Hamilton and a Professor of Medicine at McMaster University. FIRH  
is a referral centre for patients in the Hamilton Area with asthma and chronic respiratory disease,  
including patients with PAH.  
[52] Dr. McIvor was qualified to testify as an expert as follows:  
Dr. McIvor is a respirologist with expertise in the diagnosis,  
management and treatment of respiratory conditions including  
Pulmonary Arterial Hypertension.  
[53] Dr. McIvor prepared an expert witness report dated October 12, 2021. The report sets out  
Dr. McIvor’s opinions on mandates related to the qualifications and knowledge of the skilled  
person, construction of the Asserted Claims, how PAH is treated today, how a physician would  
understand the instructions from the APO-MACITENTAN PM, whether the PM would result in  
direct infringement or induce physicians to infringe the Asserted Claims, and responses to Dr.  
Mielniczuk and Dr. Kapasi’s reports. Dr. McIvor’s report was taken as read.  
D.  
Ms. Picard (Apotex’s Expert Witness)  
[54] Ms. Picard is a pharmacist and President of SPharm Inc., a regulatory consulting firm that  
provides strategies and consultancy to pharmaceutical companies. She has a Master’s degree in  
hospital pharmacy and 30 years of experience in regulatory affairs.  
 
Page: 18  
[55] Ms. Picard prepared an expert report dated October 12, 2021. Ms. Picard was asked to  
provide her opinion on whether Apotex would be permitted to market or promote that APO-  
MACITENTAN can be used as a combination therapy with PDE5-Is, based on the APO-  
MACITENTAN PM provided to her. She was also provided with copies of Dr. Kapasi’s and Dr.  
Mielniczuk’s reports and asked to comment on those portions of their expert reports relevant to  
her expertise, and advise whether she agreed or disagreed.  
[56] Apotex proposed the following qualifications for Ms. Picard:  
Susanne Picard is a licensed pharmacist and an expert in Canadian  
pharmaceutical regulatory affairs, including the preparation, filing  
and management of new and abbreviated new drug submissions.  
She has particular expertise in: (a) the preparation and filing and  
interpretation of brand and generic Product Monographs (“PMs”);  
(b) the relevant regulations and guidelines for preparing PMs; (c)  
Health Canada’s evaluation of PMs; and (d) the regulations  
applicable to the marketing of approved pharmaceuticals.  
[57] At trial, the plaintiffs objected to Ms. Picard’s proposed qualifications. After hearing the  
parties’ arguments, I revised the proposed qualifications offered by Apotex by deleting the word  
“particular” from the second sentence and adding a proviso. These changes were intended to  
make it more explicit that Ms. Picard’s opinions offer one perspective of PMs, the regulations  
and guidelines, and Health Canada’s evaluation of PMs, and her opinions do not go further than  
that perspective. The revised statement of qualifications is as follows:  
Susanne Picard is a licensed pharmacist and an expert in Canadian  
pharmaceutical regulatory affairs, including the preparation, filing  
and management of new and abbreviated new drug submissions.  
She has particular expertise in: (a) the preparation and filing and  
interpretation of brand and generic Product Monographs (“PMs”);  
(b) the relevant regulations and guidelines for preparing PMs; and  
(c) Health Canada’s evaluation of PMs; and (d) the regulations  
applicable to the marketing of approved pharmaceuticals, provided  
Page: 19  
that the expertise noted as (a), (b), (c), and (d) is within Ms.  
Picard’s expertise as a pharmacist or in Canadian pharmaceutical  
regulatory affairs.  
[58] The plaintiffs also argued that most parts of Ms. Picard’s expert report (paragraphs 23,  
24, 53, 55-60 and 62-80) are inadmissible. These are almost all of the paragraphs in Ms.  
Picard’s report that provide an opinion on the APO-MACITENTAN PM. The remaining  
paragraphs in the report provide information about Ms. Picard’s qualifications, or information  
about the regulations made under the Food and Drugs Act and other aspects of the regime that  
governs drug marketing in Canada.  
[59] The plaintiffs do not take issue with Ms. Picard’s qualifications as an expert in the area of  
regulatory affairs; however, they say her expertise in this regard is irrelevant to the issues in this  
case and does not support most of the opinions within her expert report. The plaintiffs object to  
the above-noted paragraphs principally on two bases: (i) Ms. Picard provides opinions that are  
outside her expertise; and (ii) Ms. Picard provides opinions on domestic law, which should be  
excluded for that reason and also for being unnecessary.  
[60] According to the plaintiffs, Ms. Picard is not a properly qualified expert whose opinion is  
relevant and necessary to assist the Court: White Burgess Langille Inman v Abbott and  
Haliburton Company Limited, 2015 SCC 23. All drafts of the PM that were submitted to Health  
Canada are already in evidence, Ms. Picard’s interpretation of them from the perspective of a  
regulatory affairs expert are not relevant to inducement, and she cannot provide the perspective  
of a PAH physician. Also, Ms. Picard is not a lawyer and the Court does not need her evidence  
to take judicial notice of the Food and Drugs Act or the regulations thereunder. The plaintiffs  
Page: 20  
further note that Ms. Picard’s opinions on what Apotex can and cannot do from a regulatory  
perspective are not grounded in fact evidence from Apotex, and she does not know its marketing  
plans.  
[61] The plaintiffs say the situation is analogous to Bell Helicopter Textron Canada Limitée v  
Eurocopter, 2013 FCA 219. In that case, the Court ruled that an expert’s opinion on the patent  
examination process before the Patent Office was irrelevant because the expert had no expertise  
on the technology in question, the patent examination history was already in evidence, a patent  
examiner’s perspective was irrelevant to the Court’s assessment of validity from a skilled  
person’s perspective, and expert opinion on domestic law was unnecessary.  
[62] Apotex’s responding position was that the Court should reserve on the question of  
admissibility, but if the Court were inclined to rule on admissibility during the trial, Ms. Picard’s  
evidence met the test for admissibility as expert opinion.  
[63] On the first point, Apotex argued that a determination of admissibility at trial would be  
premature. There was insufficient reason to rule that parts of Ms. Picard’s report should be  
excluded based on the threshold requirements of admissibility, and no reason to engage the  
Court’s discretionary gatekeeper role of balancing the potential risks and benefits of admitting  
her evidence. A central issue in this action relates to Apotex’s intentions as gleaned from an  
objective reading of the PM, and Ms. Picard’s experience allows her to opine on what can be  
inferred from the PM based on the purpose of a PM and the regulatory framework that applies to  
it. Apotex argued it would be efficient to allow Ms. Picard to testify under reserve of objection,  
Page: 21  
and doing so would also promote fairness because Apotex did not have advanced notice of the  
challenged paragraphs and the bases for objecting to them.  
[64] On the second point, Apotex argued that Ms. Picard’s evidence meets the threshold  
requirements for admissibility, and the plaintiffs’ objections should be considered as a matter of  
weight. The regulatory perspective of an expert who provides advice to pharmaceutical  
companies on PMs and the marketing of a drug product is helpful to assist the Court in  
understanding the PM. Although guided by legislation, Ms. Picard’s evidence is not a legal  
opinion and her evidence should not be excluded on this basis. Ms. Picard can assist the Court to  
navigate a complex regime that involves an interplay between legislation, standards, guidance  
documents, and other considerations.  
[65] I agreed with Apotex that it was premature to rule on admissibility at trial. It was not  
clear to me that all of the impugned paragraphs should be excluded as inadmissible on the basis  
of relevance or necessity, and I reserved my ruling on admissibility.  
[66] As noted above, as her first mandate Ms. Picard was asked to provide her opinion on  
whether Apotex would be permitted to market or promote that APO-MACITENTAN can be  
used as a combination therapy with PDE5-Is, based on the APO-MACITENTAN PM provided  
to her. As her second mandates she was provided with copies of Dr. Kapasi’s and Dr.  
Mielniczuk’s reports and asked to comment on those portions of their expert reports relevant to  
her expertise, and advise whether she agreed or disagreed.  
Page: 22  
[67] With respect to the second mandate, I find Ms. Picard’s expert report and testimony to be  
inadmissible because her opinions are outside of her expertise. For example, Ms. Picard offered  
opinions on whether or not the references to SERAPHIN found in the APO-MACITENTAN PM  
would support the use of macitentan as a monotherapy or as combination therapy. Ms. Picard is  
not qualified to do so as she is not a physician, she has no expertise regarding PAH, and she is  
not qualified to opine on whether the APO-MACITENTAN PM “omits any discussion of  
efficacy as it relates to the use of combination therapy”. Her opinion in this regard was based on  
a side-by-side comparison of words deleted from the APO-MACITENTAN PM. This is an  
exercise of form over substance that is potentially misleading from an expert witness with no  
PAH expertise.  
[68] With respect to the first mandate, and to the extent that Ms. Picard’s evidence fell within  
the scope of her expertise as a pharmaceutical regulatory expert, I find the opinions have  
marginal relevance to the issues that the Court must determine in this case. For example, Ms.  
Picard provided a generalized opinion that generic pharmaceutical companies are not free to omit  
clinical and pre-clinical studies that are included in a PM for the “reference product” (the brand  
company’s PM) because these studies are typically conducted to establish the safety and/or  
efficacy of the drug in question. However, Ms. Picard has no knowledge about what Apotex was  
or was not required to include from SERAPHIN in particular. As another example, Ms. Picard  
opined that Apotex would not be permitted to market or promote that APO-MACITENTAN can  
be used as a combination therapy with PDE5-Is, based on the APO-MACITENTAN PM  
provided to her. However, the issue in this case is whether the contents of the APO-  
Page: 23  
MACITENTAN PM itself would induce physicians to infringe. I accord these opinions little  
weight.  
V.  
The Skilled Person and Their Common General Knowledge  
[69] The notional person of skill in the art or “skilled person” is a legal construct embodying a  
number of concepts that inform a proper approach to resolving issues of claim construction,  
infringement, and validity in a patent action.  
[70] The skilled person possesses a level of skill and knowledge necessary to appreciate the  
nature and description of the invention at a technical level: Whirlpool at para 53. This is the  
ordinary level skill of and knowledge of the particular art or science to which the patent relates:  
Free World at para 44. The skilled person embodies the “common general knowledge” (CGK)  
that is generally known and accepted in the field, and they are reasonably diligent in keeping up  
with advances: Pfizer Canada Inc v Teva Canada Limited, 2017 FC 777 at para 185.  
[71] Where a patent relates to multiple scientific or technical fields, the skilled person can  
comprise a team of people: Amgen Inc v Pfizer Canada ULC, 2020 FC 522 at para 172.  
However, the skilled person is not defined on a claim-by-claim basis: Teva Canada Limited v  
Janssen Inc, 2018 FC 754 at para 236, affd 2019 FCA 273, leave to appeal to SCC refused,  
39007 (7 May 2020).  
[72] Expert witnesses assist the Court by opining on the qualifications, relevant experience  
and knowledge of the notional skilled person, and how to assess the issues in dispute from the  
 
Page: 24  
skilled person’s frame of reference in view of the relevant experience and knowledge they would  
bring to bear: Tetra Tech EBA Inc v Georgetown Rail Equipment Company, 2019 FCA 203 at  
para 88, citing Free World at para 51.  
[73] Drs. Mielniczuk and Kapasi opine that the 770 Patent focuses on the use of macitentan in  
combination with a PDE5-I to treat a disease where vasoconstriction is involved, particularly PH  
and PAH. Therefore, the skilled person would be a cardiologist, pulmonologist, or general  
internist who is capable of identifying and diagnosing PH and PAH, and is capable of either  
providing direct treatment or referring patients to the appropriate specialist. Dr. Kapasi adds that  
the skilled person may be part of a larger team that includes those with expertise in pre-clinical  
animal studies and pharmacology, and an interest in researching diseases related to the  
circulatory system.  
[74] Dr. McIvor opines that the skilled person is a physician with experience in treating  
patients in diseases wherein vasoconstriction is involved, including PAH. Since severe  
respiratory diseases, such as PAH, are treated by specialists, the skilled person would have  
specialized training. The skilled person would have several years of practical clinical  
experience, as well as experience with or knowledge of the design of clinical trials and the  
interpretation of their results.  
[75] While Dr. McIvor notes that parts of the 770 Patent are directed to those with experience  
in formulating pharmaceutical products and/or preclinical experiments, he adopted the  
perspective of the skilled person having the skill set of a physician.  
Page: 25  
[76] Ms. Picard did not provide an opinion on the skilled person. In these Reasons, references  
to “physician experts” mean Drs. Mielniczuk, Kapasi, and McIvor.  
[77] In this case, the parties and the physician experts have focused on the skilled person’s  
qualifications as a physician who would treat PH and PAH and in this regard, they do not  
materially disagree on the skilled person’s qualifications. While the 770 Patent is not limited to  
PH or PAH, based on statements in the specification that the disease intended to be treated is  
“more preferably” selected from hypertension and PH, “in particular” PH, and “notably” PAH, I  
accept that the 770 Patent is more focused on hypertension and PH. Furthermore, I accept that  
treatment decisions and the management of patients with PAH are made by specialists having an  
understanding of PH and PAH. In my view, the skilled addressee of the 770 Patent would have  
knowledge and skills related to the treatment of diseases of vasoconstriction generally, but the  
skilled person would also have the specialized knowledge about PH or PAH and its treatments.  
[78] Dr. Mielniczuk’s and Dr. Kapasi’s reports summarize the skilled person’s CGK as of  
2008 regarding PH and PAH, including diagnosing and treating PAH in view of the diagnostic  
methods and treatments that were available at the time. Their main points are:  
a) PAH is a subgroup of PH, characterized by elevated blood pressure in the  
pulmonary arteries due to a progressive remodeling and narrowing of the arterial  
walls;  
b) The severity of a patient’s symptoms were graded according to a functional  
classification scheme developed by the World Health Organization (WHO);  
functional classes I-IV described progressive levels of incapacity and served to  
monitor disease progression and to inform the therapeutic approach;  
Page: 26  
c) PAH was rarely diagnosed early: patients often delayed seeking treatment because  
symptoms progress gradually; the diagnosis was often delayed because PAH  
symptoms can be attributed to more common cardiorespiratory diseases, and co-  
morbidities (particularly in older patients) can mask the disease; as a result, PAH  
was often diagnosed after other possibilities had been ruled out, and it was  
typically diagnosed in younger patients, particularly otherwise healthy young  
women;  
d) By the time most patients began receiving treatment for PAH, their disease had  
progressed to WHO functional class III (fatigue, chest pain and other symptoms  
are experienced with less than ordinary activity) with a median survival of about  
five years;  
e) As of 2008, there remained significant gaps in knowledge about the root causes of  
PAH and the efficacy and safety of potential treatments;  
f) Due to the complexity of the disease, PAH patients were referred to specialized  
PAH clinics to initiate a therapeutic plan;  
g) The therapeutic plan could include supportive medications (e.g., anticoagulants or  
diuretics); a small percentage of patients were treated with high-dose calcium  
channel blockers (calcium channel blockers were not approved for PAH in  
Canada so this was an “off-label” use); the vast majority of patients were  
considered for treatment with medications developed specifically for PAH;  
h) As of 2008, there were three classes of PAH medications: prostacyclin analogues,  
ERAs, and PDE5-Is; the approved drugs in these classes were approved for late  
stage patients in WHO functional classes III or IV only, partly because clinical  
trials focused on patients in these classes and there was a lack of understanding of  
long-term prognosis;  
i) As of 2008, epoprostenol, a prostacyclin analogue, was considered the most  
effective treatment but it had to be continuously infused into the pulmonary  
arteries using a pump and an intravenous (IV) catheter; treprostinil was another  
approved prostacyclin analogue, administered by IV or subcutaneous injection;  
the inhaled prostacyclin analogue iloprost was approved in the U.S. and Europe  
but not in Canada;  
Page: 27  
j) The three known ERAs were: bosentan (approved in Canada in 2001), sitaxsentan  
(approved in Canada in 2007, subsequently withdrawn from the market in 2010  
due to concerns about liver toxicity), and ambrisentan (approved in the U.S.); all  
were orally administered drugs;  
k) In 2008 (and today), ERAs were only approved for PAH; their off-labeluse for  
other disease states was (and is) extremely limited;  
l) The PDE5-I sildenafil was approved to treat PAH in 2006; tadalafil had not yet  
been approved for PAH but was on the market as a treatment for erectile  
dysfunction; prior to their approval for PAH, both sildenafil and tadalafil were  
sometimes used off-labelto treat PAH; both were orally administered drugs;  
m) The 2008 treatment approach was to begin with monotherapy;  
n) WHO functional class III patients would typically be prescribed an ERA or  
PDE5-I; class IV patients would typically be prescribed epoprostenol;  
o) If the initial treatment failed, the patient would stop taking that intervention and  
progress to the next available treatment option; combination therapy was used in  
limited cases as a last resort, because there was no clinical trial evidence to  
support this approach and the drugs were costly and not covered by provincial  
programs or private drug plans.  
[79] Dr. McIvor’s report includes a background section that describes vasoconstriction, PH  
and PAH, available drug treatments, and treatment approaches (monotherapy versus combination  
therapy). Dr. McIvor acknowledges that he did not distinguish between what was known before  
and after March 2008, except in a general way. Dr. McIvor’s report states that the skilled person  
would have known the following as of 2008: information about vasoconstriction, PH and PAH,  
knowledge about different subtypes of PAH based on etiology, and knowledge of the WHO  
functional classes. As a general matter, the skilled person was aware of the categories of drugs  
that could be used to treat diseases of vasoconstriction and in particular, PH and PAH; however,  
with respect to available drug treatments and treatment approaches, the specific details about the  
Page: 28  
drugs, and strategies relating to their use, would have continued to evolve after March 6, 2008.  
In particular, Dr. McIvor notes that the SERAPHIN trial, a clinical trial designed to assess the  
effects of macitentan in patients with PAH, was completed well after March 6, 2008.  
[80] Dr. McIvor did not disagree with Dr. Mielniczuk’s or Dr. Kapasi’s description of the  
CGK as of 2008.  
[81] I accept that all the information described above (except the SERAPHIN trial, which was  
completed after 2008) was part of the skilled person’s CGK as of 2008.  
VI.  
A.  
Claim Construction  
Legal Principles  
[82] Claims are to be read in an informed and purposive way through the eyes of the skilled  
person: Free World at para 44. A purposive construction will determine whether claim elements  
are essential or non-essential: Free World at para 50; Tearlab Corporation v I-MED Pharma Inc,  
2019 FCA 179 at paras 30-34 [Tearlab]. If an essential element of a claim is different or  
omitted, there is no infringement: Free World at para 31.  
[83] Paragraphs 30-34 of Tearlab summarize key principles of claim construction:  
[30] The general principles of claim construction are now well  
established and were set out by the Supreme Court in three cases  
(Whirlpool at paras. 49-55; Free World Trust v. Électro Santé Inc.,  
2000 SCC 66, [2000] 2 S.C.R. 1024 at paras. 31-67 [Free World  
Trust]; Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd., 1981  
15 (SCC), [1981] 1 S.C.R. 504 at p. 520 [Consolboard]).  
These principles can be summarized as follows.  
   
Page: 29  
[31] The Patent Act promotes adherence to the language of the  
claims, which in turn promotes fairness and predictability (Free  
World Trust at paras. 31(a), (b) and 41). The words of the claims  
must, however, be read in an informed and purposive way (at para.  
31(c)), with a mind willing to understand (at para. 44). On a  
purposive construction, it will be apparent that some elements of  
the claimed invention are essential while others are non-essential  
(at para. 31(e)). The interpretative task of the court, in claim  
construction, is to separate and distinguish between the essential  
and the non-essential elements, and to give the legal protection to  
which the holder of a valid patent is entitled only to the essential  
elements (at para. 15).  
[32] To identify these elements, the claim language must be read  
through the eyes of a [skilled person], in light of the latter’s  
common general knowledge (Free World Trust at paras. 44-45; see  
also Frac Shack at para. 60; Whirlpool at para. 53). As noted in  
Free World Trust:  
[51] …The words chosen by the inventor will be  
read in the sense the inventor is presumed to have  
intended, and in a way that is sympathetic to  
accomplishment of the inventor’s purpose  
expressed or implicit in the text of the claims.  
However, if the inventor has misspoken or  
otherwise created an unnecessary or troublesome  
limitation in the claims, it is a self-inflicted wound.  
The public is entitled to rely on the words used  
provided the words used are interpreted fairly and  
knowledgeably. [Emphasis in the original.]  
[33] Claim construction requires that the disclosure and the claims  
be looked at as a whole “to ascertain the nature of the invention  
and methods of its performance, … being neither benevolent nor  
harsh, but rather seeking a construction which is reasonable and  
fair to both patentee and public” (Consolboard at p. 520; see also  
Teva Canada Ltd. v. Pfizer Canada Inc., 2012 SCC 60, [2012] 3  
S.C.R. 625 at para. 50). Consideration can thus be given to the  
patent specifications to understand what was meant by the words in  
the claims. One must be wary, however, not to use these so as “to  
enlarge or contract the scope of the claim as written and …  
understood” (Whirlpool at para. 52; see also Free World Trust at  
para. 32). The Supreme Court recently emphasized that the focus  
of the validity analysis will be on the claims; specifications will be  
relevant where there is ambiguity in the claims (AstraZeneca  
Canada Inc. v. Apotex Inc., 2017 SCC 36, [2017] 1 S.C.R. 943 at  
para. 31; see also Ciba at paras. 74-75).  
Page: 30  
[34] Finally, it is important to stress that claim construction must  
be the same for the purpose of validity and for the purpose of  
infringement (Whirlpool at para. 49(b)).  
[84] As noted above, the material date for construing the claims is March 6, 2008.  
[85] The parties introduced a joint claim chart outlining the plaintiffs’ and defendant’s  
proposed construction of the Asserted Claims, and it is attached as Schedule A to these Reasons.  
As noted above, claim construction is a question of law for the Court to decide: Whirlpool at para  
61; Zero Spill at para 41.  
B.  
The Asserted Claims  
[86] The Asserted Claims in the 770 Patent read as follows (independent claims are in bold  
text):  
1. A product containing the compound of formula (I) below  
or a pharmaceutically acceptable salt of this compound, in  
combination with at least one compound having PDE5-  
inhibitory properties, or a pharmaceutically acceptable salt  
thereof, for therapeutic use, simultaneously, separately or over  
a period of time, in the treatment of a disease wherein  
vasoconstriction is involved.  
 
Page: 31  
2. A product according to claim 1, wherein the compound having  
PDE5-inhibitory properties is sildenafil, vardenafil, tadalafil or  
udenafil.  
3. A product according to claim 2, wherein the compound having  
PDE5-inhibitory properties is tadalafil.  
4. A product according to claim 2, wherein the compound having  
PDE5-inhibitory properties is sildenafil.  
5. A product according to claim 2, wherein the disease wherein  
vasoconstriction is involved is hypertension, pulmonary  
hypertension, diabetic arteriopathy, heart failure, erectile  
dysfunction or angina pectoris.  
10. A use of the compound of formula (I) as defined in claim 1,  
or a pharmaceutically acceptable salt of said compound of  
formula (I), in combination with at least one compound having  
PDE5-inhibitory properties, or a pharmaceutically acceptable  
sale thereof, for the manufacture of a medicament intended to  
treat a disease wherein vasoconstriction is involved.  
11. The use according to claim 10, wherein the compound having  
PDE5-inhibitory properties is sildenafil, vardenafil, tadalafil or  
udenafil.  
12. The use according to claim 11, wherein the compound having  
PDE5-inhibitory properties is sildenafil or tadalafil.  
13. The use according to claim 12, wherein the compound having  
PDE5-inhibitory properties is sildenafil.  
14. The use according to claim 12, wherein the compound having  
PDE5-inhibitory properties is tadalafil.  
15. The use according to claim 10, wherein the disease intended to  
be treated is hypertension or pulmonary hypertension.  
16. The use according to claim 15, wherein the disease intended to  
be treated is pulmonary hypertension.  
17. The use according to claim 16, wherein the disease intended to  
be treated is pulmonary arterial hypertension.  
18. The use according to claim 17, wherein the compound having  
PDE5-inhibitory properties is sildenafil or tadalafil.  
Page: 32  
19. The use according to claim 17, wherein the compound having  
PDE5-inhibitory properties is sildenafil.  
20. The use according to claim 17, wherein the compound having  
PDE5-inhibitory properties is tadalafil.  
21. A use of the compound of formula (I) as defined in claim 1,  
or a pharmaceutically acceptable salt of said compound of  
formula (I), in combination with at least one compound having  
PDE5-inhibitory properties, or a pharmaceutically acceptable  
sale thereof, for treating a disease wherein vasoconstriction is  
involved.  
22. The use according to claim 21, wherein the compound having  
PDE5-inhibitory properties is sildenafil, vardenafil, tadalafil or  
udenafil.  
23. The use according to claim 22, wherein the compound having  
PDE5-inhibitory properties is sildenafil or tadalafil.  
24. The use according to claim 23, wherein the compound having  
PDE5-inhibitory properties is sildenafil.  
25. The use according to claim 23, wherein the compound having  
PDE5-inhibitory properties is tadalafil.  
26. The use according to claim 21, wherein the disease is selected  
from hypertension and pulmonary hypertension.  
27. The use according to claim 26, wherein the disease is  
pulmonary hypertension.  
28. The use according to claim 27, wherein the disease is  
pulmonary arterial hypertension.  
29. The use according to claim 28, wherein the compound having  
PDE5-inhibitory properties is sildenafil or tadalafil.  
30. The use according to claim 28, wherein the compound having  
PDE5-inhibitory properties is sildenafil.  
31. The use according to claim 28, wherein the compound having  
PDE5-inhibitory properties is tadalafil.  
Page: 33  
C.  
Experts’ Opinions on Claim Construction  
[87] The physician experts, Dr. Mielniczuk, Dr. Kapasi, and Dr. McIvor, provided opinions on  
claim construction. Ms. Picard did not opine on claim construction.  
[88] Dr. Mielniczuk opined that the skilled person would read claim 1 as having two main  
components: (i) a product containing macitentan in combination with at least one PDE5-I; (ii) for  
therapeutic use to treat a disease involving vasoconstriction. The skilled person would  
understand that the combination of macitentan and PDE5-I can be administered: (i) by the same  
route and at the same time; (ii) by different routes at the same time; (iii) sequentially through the  
same or different route of administration. Dr. Mielniczuk’s report includes an appendix that  
summarizes the essential elements of claims 1-5 and 10-31. According to her opinion, the  
essential elements of claim 1 are:  
a) a product containing macitentan (or its salt);  
b) administered in combination with at least one PDE-5 inhibitor  
(or its salt);  
c) where (i) the product containing macitentan, and (ii) the PDE-5  
inhibitor, are administered simultaneously, separately or  
sequentially; and  
d) for therapeutic use in the treatment of a disease involving  
vasoconstriction.  
[89] Dr. Kapasi’s opinion on claim 1 is similar. Dr. Kapasi’s report attached an appendix that  
summarized the essential elements of claims 1-5 and 10-31. According to his opinion, the  
essential elements of claim 1 are:  
a) a product containing macitentan (or its salt);  
b) in combination with at least one PDE-5 inhibitor (or its salt);  
 
Page: 34  
c) for therapeutic use in the treatment of a disease where  
vasoconstriction is involved; and  
d) administration of (i) the product containing macitentan and (ii)  
the PDE-5 inhibitor simultaneously, separately or over a period of  
time.  
[90] Dr. McIvor opined that claim 1 covers macitentan where it is to be used in combination  
with a PDE5-I to treat a disease associated with the narrowing of blood vessels. The product  
may include both macitentan and a PDE5-I in the same dosage form, or only macitentan,  
provided it is used in combination with a PDE5-I to treat a disease involving vasoconstriction.  
Dr. McIvor opined that the skilled person would understand the reference to using macitentan in  
combination with a PDE5-I for therapeutic use contemplates the two drugs being used together  
as part of the same treatment regime to treat the same disease, which differs from the mere  
concomitant use of two drugs without a recognition that they would be acting in concert to treat a  
disease. Dr. McIvor also opined that the skilled person would refer to the definitions of  
“simultaneously, separately and over a period of time” in the 770 Patent disclosure, and he  
disagrees with Drs. Mielniczuk and Kapasi that “over a period of time” is synonymous with “one  
after the other”. The skilled person would consider “over a period of time” to mean that the  
physician establishes an administration plan at the outset of treatment and this is distinguishable  
from the case where a second drug is started after first based on a physician’s evaluation of the  
patient’s condition, rather than a pre-defined treatment plan.  
[91] The physician experts agree that claims 2-4 limit the PDE5-I to specific compounds, and  
claim 5 limits the diseases to hypertension, PH, diabetic arteriopathy, heart failure, erectile  
dysfunction, or angina pectoris.  
Page: 35  
[92] Dr. Mielniczuk opined that independent claims 10 and 21 claim the use of macitentan in  
combination with a PDE5-I for a particular purpose. Claim 10 is for use to manufacture a  
medicament for treating vasoconstrictive diseases. Claim 21 is for use in treating a  
vasoconstrictive disease. The skilled person would understand that the macitentan and the  
PDE5-I would be in dosage form for administration to the patient. According to the table  
appended to Dr. Mielniczuk’s report, the essential elements of claim 10 are:  
a) use of macitentan (or its salt);  
b) for the manufacture of a medicament;  
c) in combination with at least one PDE5-I (or its salt); and  
d) where the medicament is intended to treat a disease involving  
vasoconstriction.  
[93] Dr. Kapasi provides a similar opinion, and echoes that there is no limitation within claim  
10 on how or when the combination is to be administered, but the 770 Patent as a whole is clear  
that various options are available. He summarizes the essential elements of claim 10 as follows:  
a) use of macitentan (or its salt) for the manufacture of a  
medicament;  
b) in combination with at least one PDE5-I (or its salt); and  
c) where the medicament is intended to treat a disease where  
vasoconstriction is involved.  
[94] Dr. McIvor opined that the subject matter of claim 10 is analogous to claim 1while  
claim 1 refers to a product, claim 10 refers to the preparation of a medication for the same  
purpose. Therefore, like claim 1, claim 10 covers the use of macitentan in combination with  
PDE5-Is to treat diseases involving vasoconstriction.  
Page: 36  
[95] The physician experts agree that claims 11-14 are dependent on claim 10 and limit the  
PDE5-I to specific compounds. Claims 15-20 are also dependent on claim 10 and specify the  
disease being treated and/or the PDE5-I.  
[96] Drs. Mielniczuk and Kapasi opine that claim 21 is for the use of macitentan in  
combination with a PDE5-I in treating a disease involving vasoconstriction. They state that the  
essential elements of claim 21 are:  
a) use of macitentan (or its salt);  
b) in combination with at least one PDE5-I (or its salt); and  
c) for treating a disease where vasoconstriction is involved.  
[97] Dr. McIvor provides the same opinion and notes that the skilled person would understand  
claim 21 (like claims 1 and 10) to cover the use of macitentan to treat a disease involving  
vasoconstriction when used in combination with a PDE5-I.  
[98] Similar to the structure of claims 11-20, dependent claims 22-31 narrow the specific  
diseases and/or PDE5-Is.  
D.  
Parties’ Positions on Claim Construction  
[99] According to the joint claim chart, the parties’ proposed constructions for Asserted  
Claims appear to comprise identical essential elements. Their proposed constructions for  
independent claims 1, 10, and 21 are set out below.  
Claim 1  
a) a product containing macitentan (or its pharmaceutically  
acceptable salt);  
 
Page: 37  
b) in combination with at least one PDE5-I (or its pharmaceutically  
acceptable salt);  
c) for therapeutic use in the treatment of a disease where  
vasoconstriction is involved; and  
d) administration of (a) the product containing macitentan and (b)  
the PDE5-I, simultaneously, separately or over a period of time.  
Claim 10  
a) use of macitentan (or its pharmaceutically acceptable salt) for  
the manufacture of a medicament;  
b) in combination with at least one PDE5-I (or its pharmaceutically  
acceptable salt);  
c) where the medicament is intended to treat a disease where  
vasoconstriction is involved.  
Claim 21  
a) use of macitentan (or its pharmaceutically acceptable salt);  
b) in combination with at least one PDE5-I (or its pharmaceutically  
acceptable salt);  
c) for treating a disease where vasoconstriction is involved.  
[100] Despite this apparent agreement, the parties disagree on the fundamental nature of the  
claims, and they disagree on the purposive construction of certain claim elements.  
[101] The first point of disagreement relates to the meaning of combination. Apotex asserts  
that combinationwould be understood to mean that macitentan and the PDE5-I are working in  
concert to treat the disease in question, and also, it would contemplate the use of macitentan and  
a PDE5-I where this is something a physician intended at the outset of treatment. Apotex states  
that simultaneously, separately, and over a period of time would receive the interpretation in the  
770 Patent disclosure (at page 2), namely:  
Page: 38  
“Simultaneously” or “simultaneous”, when referring to a  
therapeutic use, means in the present application that the  
therapeutic use concerned consists in the administration of two or  
more active ingredients by the same route and at the same time.  
“Separately” or “separate”, when referring to a therapeutic use,  
means in the present application that the therapeutic use concerned  
consists in the administration of two or more active ingredients at  
approximately the same time by at least two different routes.  
By therapeutic administration “over a period of time” is meant in  
the present application the administration of two or more  
ingredients at different times, and in particular an administration  
method according to which the entire administration of one of the  
active ingredients is completed before the administration of the  
other or others begins. In this way it is possible to administer one  
of the active ingredients for several months before administering  
the other active ingredient or ingredients. In this case, no  
simultaneous administration occurs.  
[102] Based on these definitions, Dr. McIvor opined that over a period of timemeans the  
physician establishes a combination administration plan for a patient at the outset of their  
treatment.  
[103] The plaintiffs do not dispute that combinationwould be understood to mean that  
macitentan and the PDE5-I are working in concert to treat the disease in question; however they  
disagree combinationis limited to a combination treatment plan that is contemplated at the  
outset of treatment. They argue that such limitation is inconsistent with the definition of over a  
period of time, which refers to two or more active ingredients administered at different times,  
including administration of the second ingredient several months after the first. The definition  
does not suggest that combination therapy is contemplated at the outset of treatment.  
Furthermore, limiting combinationas Apotex suggests is inconsistent with a purposive  
construction in view of the CGK. As of March 2008, monotherapy was the standard of care, and  
Page: 39  
a physician typically did not establish a combination administration plan at the outset of  
treatment. If the initial treatment failed, another PAH medication would be considered;  
combination therapy was used in limited cases as a last resort. The skilled person would not  
interpret combinationso as to exclude this primary method of administering two PAH  
therapies in 2008.  
[104] Furthermore, the parties disagree on the fundamental nature of the three claim sets. Their  
dispute on this point affects whether, for claims 1-5, the Court is required to engage in an  
analysis of direct infringement or only an analysis of indirect infringement by inducement.  
Apotex’s position is that the 770 Patent is a use patent and all of the Asserted Claims are  
effectively use claims, which means it would not infringe any of the Asserted Claims directly,  
since pharmaceutical manufacturers do not use medications. The plaintiffs state Apotex’s  
position ignores the product and medicament elements of claims 1-5 and 10-20. They say  
Apotex’s approach is similar to “spirit of the invention” approach that was rejected by the  
Supreme Court of Canada in Whirlpool and Free World. According to the plaintiffs, the  
Asserted Claims clearly fall into three, distinct claim sets: product claims (claims 1-5), Swiss-  
style use for the manufacture of a medicament claims (claims 10-20), and use claims (claims 21-  
31). Claims 21-31 have no product or medicament element, and they are the only claims to “just  
the use” of macitentan in combination with a PDE5-I to treat diseases involving vasoconstriction.  
While claims 1-5 and 10-20 have use elements, this does not “convert” them into use claims.  
With respect to claim 1, the plaintiffs state that the fourth element d) only requires that the  
product is for administration to a patient, and it does not require that administration to a patient  
take place. As a result, the plaintiffs assert that Apotex would infringe claims 1-5 directly, as  
Page: 40  
well as by inducing others to infringe. They allege that Apotex would also infringe claims 10-20  
directly, and infringe claims 21-31 indirectly, by inducing others to infringe.  
[105] The plaintiffs note that Apotex’s expert witness, Dr. McIvor, does not dispute the claim  
construction that was put forward by Drs. Mielniczuk and Kapasi. Dr. McIvor does not dispute  
claim 1 to be a product claim, and he describes claim 10 as being related to the use of macitentan  
not merely as a treatment, but rather, for the manufacture of a medicament.  
[106] Apotex states the experts recognized that the subject matter of claims 21-31 is largely  
indistinguishable from the subject matter of claims 1-5 and 10-20, and none of the experts  
suggest that the 770 Patent is focused on a new product, new medicament, or new formulation.  
Notwithstanding the reference to a “product” in claim 1 (and in dependent claims 2-5), the expert  
witnesses agreed that an essential element of these claims is the use of macitentan in  
combination with a PDE5-I and its administration to a patient (whether separately, sequentially,  
or over a period of time). Similarly, though claim 10 states “the manufacture of a medicament,  
claims 10-20 are fundamentally “use claims” directed at the use of macitentan in combination  
with a PDE5-I and how it is administered to patients.  
[107] Apotex submits the plaintiffs’ approach seeks to have the Court redraft the claims, and  
ignores that all of the Asserted Claims are fundamentally directed at the use of macitentan as a  
combination therapy. The plaintiffs’ approach is without foundation, as the law is clear that the  
claims of a patent are tethered to what has purportedly been invented: Patent Act, s 27(4). A  
claim is not an “added description of the invention, but a limitation of the description of the  
Page: 41  
invention contained in the body of the specification”: Merck & Co Inc v Pharmascience Inc,  
2010 FC 510 at para 44.  
[108] According to Apotex, a purposive claim construction orients the analysis at what has  
actually been invented. This logic was applied in Hoffman-La Roche Limited v Sandoz Canada  
Inc, 2021 FC 384 (at paragraphs 97-98) [Hoffman-La Roche] to reject the patentee’s attempt to  
enlarge the scope of “use” claims by recasting them as product claims. In Hoffman-La Roche,  
Justice Manson rejected an argument that the asserted claims could be categorized into three  
distinct claim forms (German-style claims, Swiss-style claims, and “product for use”-style  
claims) as being an argument of form over substance:  
[97] Roche’s approach seeks a finding of claim form over  
substance. In doing so, it obscures the proper approach to claims  
construction. As discussed above, the claims construction exercise  
emphasizes a purposive construction. In this case, the 654 and 997  
Asserted Claims have been properly construed as use claims, as  
provided above. […] The alleged invention in this case resides in  
the use of pirfenidone, whether in the context of the 654 or 997  
Patent, and not in the manufacture or composition of pirfenidone, a  
known compound.  
[Emphasis in original.]  
[109] According to Apotex, all of the physician experts opined that the use of macitentan to  
treat certain diseases is an essential element of the claims, and there is no reason for this Court—  
either as a matter of law or based on expert opinionto rewrite the claims of the 770 Patent and  
thereby engage in an analysis of direct infringement.  
Page: 42  
E.  
Analysis on Claim Construction  
[110] On the first point of the parties’ disagreement, I find that claim 1 is not limited to the use  
of macitentan with a PDE5-I that is contemplated by the physician at the outset of treatment.  
[111] The 770 Patent specification does not indicate that any of the alternatives for therapeutic  
administration are tied to the timing of a prescribing physician’s decision. The definitions of  
“simultaneously, separately or over a period of time” in the 770 Patent specification reflect a  
broad range of ways that the two or more active ingredients could be administered in  
combination. They are not limited to simultaneous administration, and could be administered at  
the same time via the same route, separately via different routes, or one after the other.  
[112] The skilled person would construe the claim in light of the CGK, including that: (i) ERAs  
were only approved for PAH; (ii) monotherapy was the standard of care for PAH in 2008; (iii)  
combination therapy was used in limited cases as a last resort, when treatment with a single  
medication failed. Dr. Mielniczuk opined that physicians took a deterioration approach to PAH,  
only escalating therapy once the patient’s condition had worsened. Dr. McIvor’s testimony in  
cross-examination was that monotherapy was the standard of care for PAH in 2008, and the most  
likely situation for combination treatment at that time would be an approach of giving a patient a  
drug, monitoring how they were doing, and if they did not improve, either move the patient to a  
different drug (sequential monotherapy) or add a second drug (combination therapy). He agreed  
that this would fall within the meaning of “combination” in the 770 Patent.  
 
Page: 43  
[113] For these reasons, I find that the skilled person would not read claim 1 so as to exclude  
what the skilled person would have considered to be a likely way that the claimed combination  
would be administered to PAH patients in 2008.  
[114] I will now turn to the parties’ dispute regarding the fundamental nature of the three claim  
sets of the Asserted Claims. For ease of reference, I have reproduced the language of each  
independent claim and the essential elements as proposed by the parties in the joint claim chart.  
(a)  
Claims 1-5  
Claim 1  
Parties’ proposed construction  
a) a product containing macitentan (or its  
pharmaceutically acceptable salt);  
1. A product containing the compound of  
formula (I) below or a pharmaceutically  
acceptable salt of this compound, in  
b) in combination with at least one PDE5-I  
(or its pharmaceutically acceptable salt);  
combination with at least one compound  
having PDE5-inhibitory properties, or a  
pharmaceutically acceptable salt thereof, for  
therapeutic use, simultaneously, separately or  
over a period of time, in the treatment of a  
disease wherein vasoconstriction is involved  
c) for therapeutic use in the treatment of a  
disease where vasoconstriction is involved;  
and  
d) administration of (a) the product containing  
macitentan and (b) the PDE5-I,  
simultaneously, separately or over a period of  
time.  
[115] With respect to claim element d), the plaintiffs state that the Court must determine  
whether the element requires that administration to a patient take place, or solely that the product  
be for that administration. According to the plaintiffs, if the Court determines that element d)  
requires only that the product be for that administration, Apotex would infringe claim 1 directly.  
 
Page: 44  
[116] It is apparent that the word administrationdoes not appear in claim 1, and the physician  
experts do not fully explain why they considered administration of the combination to be a  
separate, essential element. The 770 Patent specification defines simultaneously, separately or  
over a period of time as ways to administer the combination. However, a plain reading of claim  
1 ties “simultaneously, separately, or over a period of time” to “for therapeutic use”, while the  
parties’ proposed construction breaks that connection by identifying administration as a separate  
essential element.  
[117] The focus of purposive claim construction is on the language of the claims, which define  
the monopoly: Patent Act, s 27(4). The disclosure should not be used to enlarge or contract the  
scope of the claims as written and understood: Tearlab at para 33, citing Whirlpool at para 52  
and Free World at para 32. When the words of claim 1 are read in the order that they appear, the  
elements would be:  
a) a product containing macitentan (or its pharmaceutically  
acceptable salt);  
b) in combination with at least one PDE5-I (or its  
pharmaceutically acceptable salt);  
c) for therapeutic use, simultaneously, separately or over a period  
of time, in the treatment of a disease wherein vasoconstriction  
is involved.  
[118] A plain reading of claim 1 does not suggest that administration to a patient is an essential  
element. I find that the skilled person would not consider administration to a patient to be an  
essential element.  
Page: 45  
[119] I agree with the parties and their experts that “in combination” is an essential element. I  
also agree with the parties and their experts that the claim language does not tie the element of  
“in combination” to the product that contains macitentan (the first essential element). Dr.  
McIvor opined that claim 1 covers a product that includes both macitentan and a PDE5-I, or a  
product that includes only macitentan provided it is used in combination with a PDE5-I. It  
necessarily follows that, in his opinion, the product of claim 1 is not limited to a product that  
contains both macitentan and a PDE5-I. Although the plaintiffs’ experts did not expressly  
address whether claim 1 covers a product that contains macitentan and a PDE5-I, they opined  
that it covers a product that includes only macitentan provided it is used in combination with a  
PDE5-I. Therefore, like Dr. McIvor, they did not tie “in combination” to the product.  
[120] In my view, the skilled person would read claim 1 to cover an embodiment where two  
active ingredientsmacitentan and a PDE5-Iare combined either in the same dosage form or  
in a package that has two dosage forms, but would not read claim 1 to be limited to such  
embodiment. Claim 1 also covers a product that only contains macitentan, provided that the  
other claim elements are satisfied. Where a product does not contain macitentan in combination  
with a PDE5-I, there must be a combination of the product and a PDE5-I.  
[121] The plain reading is consistent with the disclosure. The first paragraph of the 770 Patent,  
describing what the invention relates to, is a verbatim recitation of claim 1. In my view, claim 1  
would therefore be a broad claim.  
Page: 46  
[122] I find the elements of claim 1 are:  
Claim 1  
a) a product containing macitentan (or its pharmaceutically  
acceptable salt);  
b) in combination with at least one PDE5-I (or its  
pharmaceutically acceptable salt);  
c) for therapeutic use, simultaneously, separately or over a period  
of time, in the treatment of a disease wherein vasoconstriction  
is involved.  
[123] Claim elements are presumed to be essential: Mediatube Corp v Bell Canada, 2017 FC 6  
at para 33. On a purposive construction, I find that they are all essential elements.  
[124] The limitations that are added by the dependent claims 2-4 are straightforward and non-  
controversial. On a purposive construction, claims 2-5 add the following limitations:  
Claim 2: the PDE5-I is sildenafil, vardenafil, tadalafil or udenafil.  
Claim 3: the PDE5-I is tadalafil.  
Claim 4: the PDE5-I is sildenafil.  
Claim 5: the disease wherein vasoconstriction is involved is  
hypertension, pulmonary hypertension, diabetic arteriopathy, heart  
failure, erectile dysfunction or angina pectoris.  
(b)  
Claims 10-20  
Claim 10  
Parties’ proposed construction  
a) use of macitentan (or its pharmaceutically  
acceptable salt) for the manufacture of a  
medicament;  
10. A use of the compound of formula (I) as  
defined in claim 1, or a pharmaceutically  
acceptable salt of said compound of formula  
(I), in combination with at least one  
b) in combination with at least one PDE5-I  
(or its pharmaceutically acceptable salt);  
compound having PDE5-inhibitory  
properties, or a pharmaceutically acceptable  
salt thereof, for the manufacture of a  
 
Page: 47  
medicament intended to treat a disease  
wherein vasoconstriction is involved.  
c) where the medicament is intended to treat a  
disease where vasoconstriction is involved.  
[125] As seen from the comparison, the parties’ proposed construction changes the order of the  
words in claim 10. Claim 10 reads (omitting the pharmaceutically acceptable salt for simplicity):  
a use of macitentan, in combination with at least one PDE5-I, for the manufacture of a  
medicament intended to treat a disease wherein vasoconstriction is involved. The proposed  
construction of claim 10 is: a use of macitentan, for the manufacture of a medicament intended to  
treat a disease wherein vasoconstriction is involved, in combination with at least one PDE5-I.  
[126] Claim 10 is what is known as a “Swiss-style” claim, a recognized claim structure. As  
Justice Manson noted in Hoffman-La Roche, Swiss-style claims are not invariably construed in  
the same way and they do not “automatically benefit from a literal construction”: Hoffman-La  
Roche at para 102. Recognizing the context-specific claims construction exercise, Justice  
Manson stated “Swiss-style claims may be construed as use claims where the circumstances  
warrant.” Justice Manson found that such a construction was warranted in that case. He held  
that the Swiss-style structure of the claims at issue in that case could not be used to “claim a  
novel product for use in a medicament when in fact that product used in a medicament is no  
longer novel”: Hoffman-La Roche at para 102.  
[127] The plaintiffs argue that a purposive claim construction recognizes that a Swiss-style  
claim is a type of product claim. According to the plaintiffs, claim 10 has both a product element  
(a medicament) and a use element in that the medicament is used for treatment in combination  
with a PDE5-I. Apotex argues that a purposive claim construction orients the analysis at what  
Page: 48  
was invented. Claims 10-20 are fundamentally oriented at the use of macitentan, and in  
particular, how it is administered to patients. Apotex states this logic was applied in Hoffman-La  
Roche to reject the patentee’s attempt to enlarge the scope of use claims by recasting them as  
product claims. The plaintiffs counter that Apotex’s construction ignores the medicament  
element of 10.  
[128] As noted above, a purposive construction focuses on the language of the claims. The  
words chosen by the patentee necessarily play a key role: ABB Technology AG v Hyundai Heavy  
Industries Co, Ltd, 2015 FCA 181 at paras 42-43. In my view, the parties’ proposed construction  
strains the language of claim 10, rearranging the words of the claim to enlarge its scope. On a  
plain reading, claim 10 relates to a use for the manufacture of a medicament, and claim 10 ties  
“in combination” to that use. In other words, claim 10 claims the use of the combination—  
macitentan and a PDE5-Ifor the manufacture of a medicament.  
[129] Apotex’s concern, that the Swiss-style structure of claims 10-20 should not be used to  
claim a novel product for use in a medicament when the product is not novel, does not apply.  
This case does not raise the same concern as in Hoffman-La Roche, because claim 10 includes  
the element “in combination”, and the 770 Patent relates to a novel combination involving  
macitentan and a PDE5-I.  
[130] I find the elements of claim 10, which are all essential elements, to be:  
Claim 10  
a) use of macitentan (or its pharmaceutically acceptable salt);  
Page: 49  
b) in combination with at least one PDE-5 inhibitor (or its  
pharmaceutically acceptable salt);  
c) for the manufacture of a medicament intended to treat a disease  
wherein vasoconstriction is involved.  
[131] The limitations that are added by dependent claims 11-20 are straightforward and not  
controversial. On a purposive construction, claims 11-20 add the following limitations:  
Claim 11: the PDE5-I is sildenafil, vardenafil, tadalafil or udenafil.  
Claim 12: the PDE5-I is sildenafil or tadalafil.  
Claim 13: the PDE5-I is sildenafil.  
Claim 14: the PDE5-I is tadalafil.  
Claim 15: the disease is hypertension or PH.  
Claim 16: the disease is PH.  
Claim 17: the disease is PAH.  
Claim 18: the disease is PAH and the PDE5-I is sildenafil or  
tadalafil.  
Claim 19: the disease is PAH and the PDE5-I is sildenafil.  
Claim 20: the disease is PAH and the PDE5-I is tadalafil.  
(c)  
Claims 21-31  
Claim 21  
Parties’ proposed construction  
a) use of macitentan (or its pharmaceutically  
acceptable salt);  
21. A use of the compound of formula (I) as  
defined in claim I, or a pharmaceutically  
acceptable salt of said compound of formula  
(I), in combination with at least one  
compound having PDE5-inhibitory  
b) in combination with at least one PDE5-I  
(or its pharmaceutically acceptable salt);  
properties, or a pharmaceutically acceptable  
salt thereof for treating a disease wherein  
vasoconstriction is involved.  
c) for treating a disease where  
vasoconstriction is involved.  
 
Page: 50  
[132] I agree with the parties and the physician experts that claim 21, purposively construed,  
has the following essential elements:  
Claim 21  
a) use of macitentan (or its pharmaceutically acceptable salt);  
b) in combination with at least one PDE-5 inhibitor (or its  
pharmaceutically acceptable salt);  
c) for treating a disease where vasoconstriction is involved.  
[133] On a purposive construction, claims 22-31 mirror the limitations of claims 11-20:  
Claim 22: the PDE5-I is sildenafil, vardenafil, tadalafil or udenafil.  
Claim 23: the PDE5-I is sildenafil or tadalafil.  
Claim 24: the PDE5-I is sildenafil.  
Claim 25: the PDE5-I is tadalafil.  
Claim 26: the disease is hypertension or PH.  
Claim 27: the disease is PH.  
Claim 28: the disease is PAH.  
Claim 29: the disease is PAH and the PDE5-I is sildenafil or  
tadalafil.  
Claim 30: the disease is PAH and the PDE5-I is sildenafil.  
Claim 31: the disease is PAH and the PDE5-I is tadalafil.  
VII. Infringement  
[134] The Patent Act grants to a patentee the exclusive right, privilege and liberty of making,  
constructing and using the invention and selling it to others to be used: Patent Act, s 42;  
Monsanto Canada Inc v Schmeiser, 2004 SCC 34 at para 25 [Monsanto]. Infringement is an act  
 
Page: 51  
that deprives the inventor in whole or in part, directly or indirectly, of full enjoyment of the  
monopoly conferred by law: Monsanto at para 35.  
[135] In proceedings under the PMNOC Regulations, infringement relates to the actions of the  
second person: Aventis Pharma Inc v Pharmascience Inc, 2006 FCA 229 at paras 55-59.  
[136] The plaintiffs bear the burden of proving infringement: Monsanto at para 29.  
A.  
Direct Infringement  
(1) Parties’ Submissions  
[137] The plaintiffs allege that Apotex will directly infringe claims 1-5 and 10-20 of the 770  
Patent. They allege Apotex is not seeking approval for a “non-patented” usemacitentan has  
one approved indication and one use in practice, which is to treat patients with PAH.  
Combination treatment is the standard of care for PAH patients in Canada, and most patients  
who are prescribed macitentan will also receive a PDE5-I.  
[138] The plaintiffs state that claims 1-5 of the 770 Patent are product claims, and a product  
claim can be infringed by a product that is adapted for a patented use: Janssen Inc v Teva  
Canada Limited, 2020 FC 593 at paras 35, 252-256 [Teva Paliperidone]; Hospira Healthcare  
Corporation v Kennedy Trust for Rheumatology Research, 2018 FC 259 at paras 298-300, 303,  
318, affd on this issue 2020 FCA 30 at para 41. They allege claims 1-5 of the 770 Patent would  
be infringed by a product that contains macitentan if the product is for use in combination with a  
   
Page: 52  
PDE5-I. Therefore, Apotex will directly infringe claims 1-5 by making and selling APO-  
MACITENTAN, for use in combination with a PDE5-I for the treatment of PAH.  
[139] Similarly, the plaintiffs state that Apotex will infringe claims 10-20 directly, because  
macitentan will be used in the manufacture of APO-MACITENTAN, and APO-MACITENTAN  
will be for use in combination with a PDE5-I to treat PAH.  
[140] Apotex alleges the plaintiffs’ approach ignores that claims 1-5 and 10-20 are directed at  
the use of macitentan in combination with PDE5-I to treat certain diseases. If use is an essential  
element of a claim, there can be no direct infringement where the alleged infringer does not use  
the drug for the claimed purpose: Hoffman-La Roche at para 109. Apotex states there is no basis  
to find that it will infringe any of the Asserted Claims directly, because it would not administer  
macitentan to patients.  
(2)  
Analysis  
[141] Drs. Mielniczuk and Kapasi compared the essential elements of the Asserted Claims to  
how APO-MACITENTAN will be used, if it is approved. For claim 1, they opined that the  
essential elements will be present as follows: a) APO-MACITENTAN will contain macitentan;  
b) it will be administered in combination with a PDE5-I (or its salt), particularly sildenafil citrate  
or tadalafil; c) it will be for therapeutic use in the treatment of a disease where vasoconstriction  
is involved, specifically PAH; and d) APO-MACITENTAN and the PDE5-I will be administered  
simultaneously, separately or over a period of time/sequentially. For claim 10, they opined that  
the essential elements will be present as follows: a) Apotex will use macitentan for the  
 
Page: 53  
manufacture of a medicament, namely APO-MACITENTAN; b) APO-MACITENTAN will be  
used in combination with a PDE5-I (or its salt), in particular sildenafil citrate or tadalafil; and c)  
APO-MACITENTAN will be intended to treat a disease where vasoconstriction is involved, in  
particular PAH.  
[142] Dr. Mielniczuk’s and Dr. Kapasi’s evidence was that claim 1 and claim 10 include an  
element of administration of a product containing macitentan and a PDE5-I to a patient. They  
acknowledged on cross-examination that a drug company does not administer drugs to patients,  
which is something that a physician or patient would do.  
[143] Dr. McIvor opined that there will be no direct infringement because, among other things,  
each of the Asserted Claims has a common underlying element of the use of macitentan in  
combination with a PDE5-I. Dr. McIvor opined that Apotex will not use APO-MACITENTAN  
in combination with a PDE5-I to treat a disease involving vasoconstriction, including PAH.  
[144] For the reasons set out in the claim construction section, I have found that claim sets 1-5  
and 10-20 do not include an essential element of administration to a patient. However, it is an  
essential element of these claims that macitentan be “in combination” with at least one PDE5-I,  
and not, as the plaintiffs assert, that the product containing macitentan (claims 1-5) or  
medicament containing macitentan (claims 10-20) simply be “for use in combination” with a  
PDE5-I. The evidence did not establish that Apotex will: (i) make, use or sell a product that  
contains macitentan in combination with a PDE5-I; (ii) combine a product that contains  
macitentan with a PDE5-I to treat PAH; or (iii) use macitentan in combination with a PDE5-I to  
Page: 54  
manufacture a medicament. Apotex will not infringe these claims directly as it does not perform  
the “in combination” element.  
[145] I would reach the same conclusion on direct infringement based on the proposed  
construction put forward by the parties. In addition to the combination element, their proposed  
construction includes an essential element of administration. All of the physician experts agreed  
that Apotex does not administer macitentan and PDE5-Is to patients.  
[146] In conclusion, Apotex will not infringe claims 1-5 and 10-20 directly.  
B.  
Inducing Infringement  
[147] A generic drug manufacturer may be implicated in the infringement by others if it  
induces that infringement. The three-prong test for inducing infringement is set out in Corlac  
Inc v Weatherford Canada Ltd, 2011 FCA 228 at paragraph 162 [Corlac], leave to appeal to  
SCC refused 34459 (29 March 2012):  
1. The acts of infringement must have been completed by the direct infringer;  
2. The completion of the acts of infringement must be influenced by the acts of the  
alleged inducer to the point that, without the influence, direct infringement would  
not take place; and  
3. The influence must be knowingly exercised by the inducer; in other words, the  
inducer knows that this influence will result in the completion of the acts of  
infringement.  
 
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(1)  
Parties’ Submissions  
[148] The plaintiffs submit the test for infringement is expansive, capturing any activity that  
deprives the patentee of their full use of the invention: Monsanto at paras 35-37. Inducement is a  
form of infringement.  
[149] The plaintiffs argue that infringement is a question of fact and the outcomes of various  
inducing infringement cases in the pharmaceutical context turn on the evidence. Generic  
manufacturers have been successful where the evidence showed that direct infringement under  
prong 1 of the test was unlikely or the generic PM did not refer to or suggest the infringing use  
under prong 2 (i.e. the generic PM was a “skinny label”). Patentees have been successful where  
the evidence showed direct infringement would happen and the generic manufacturer was  
implicated, often because, despite the generic manufacturer’s claims to the contrary, the PM was  
not “skinny”.  
[150] The plaintiffs argue that the first prong of the Corlac test is metthere will be direct  
infringement of claims 1-5 and 21-31 of the 770 Patent by physicians and patients. If approved,  
APO-MACITENTAN will be used for the treatment of PAH in combination with a PDE5-I,  
most commonly tadalafil.  
[151] The plaintiffs submit the crux of the dispute relates to the second prong. In this regard,  
the generic manufacturer’s PM plays a key role in determining inducement: AB Hassle v Canada  
(Minister of National Health and Welfare), 2002 FCA 421 at para 55 [AB Hassle]. The APO-  
 
Page: 56  
MACITENTAN PM will induce physicians to prescribe APO-MACITENTAN in combination  
with a PDE5-I to treat PAH.  
[152] The plaintiffs state this is not a “skinny label” case. Apotex seeks approval for a single  
indicated use, and it is the same use indicated for OPSUMIT: the treatment of WHO functional  
class II or III (intermediate risk) PAH patients. Macitentan is not approved for any other use,  
and nothing in the APO-MACITENTAN PM communicates to physicians that it should be used  
any differently than OPSUMIT.  
[153] The product monograph is to be considered as a whole: Janssen Inc v Apotex Inc, 2021  
FC 7 at para 242. The APO-MACITENTAN PM includes bioequivalence data and results from  
SERAPHIN, which is the trial that established macitentan is safe and effective as a monotherapy  
and in combination with a PDE5-I. At enrollment, 61% of the patients in SERAPHIN were  
receiving a PDE5-I. In addition, the drug interaction section of the APO-MACITENTAN PM  
states that  
. The inclusion of the  
SERAPHIN results along with the bioequivalence information will inform physicians that APO-  
MACITENTAN is safe and effective for use in combination with a PDE5-I, and encourage  
physicians to use APO-MACITENTAN just as OPSUMIT is usedin combination with PDE5-  
Is. Drs. Mielniczuk and Kapasi opined that physicians will review the information in the APO-  
MACITENTAN PM and rely on that information in the course of prescribing APO-  
MACITENTAN.  
Page: 57  
[154] The plaintiffs submit Dr. Mielniczuk’s and Dr. Kapasi’s evidence should be preferred  
over that of Apotex’s expert witnesses. Drs. Mielniczuk and Kapasi regularly prescribe PAH  
medications and recently participated in the creation of Canadian consensus guidelines, working  
with other PAH experts and gaining an understanding of their practices. Ms. Picard’s evidence  
should be given no weight because she cannot speak to the key issue of whether the PM would  
influence a prescribing physician. Although Dr. McIvor was qualified as a respirologist, he is  
not an expert in PAH and he does not regularly prescribe PAH medications. His first-hand  
experience with PAH comes from interactions with in-patients with undifferentiated diagnosis at  
the hospital. When these patients are diagnosed with PAH, they are referred to Dr. McIvor’s  
colleagues who actually specialize in the area. Dr. McIvor conceded that the process in his  
report of reviewing, as part of his mandate, blacklined PMs or side-by-side comparisons of the  
brand and generic PMs for macitentan were an artificial exercise. Furthermore, he holds a  
general view that PMs do not influence prescribers and his opinions would not change regardless  
of what the APO-MACITENTAN PM says. The plaintiffs argue that Dr. McIvor’s evidence  
about the contents of the APO-MACITENTAN PM is not of assistance to the Court due to both a  
lack of experience in PAH and a fundamental disregard for the documents he was opining on,  
and his opinion should be given no weight.  
[155] The plaintiffs submit this case is analogous to AB Hassle v Genpharm Inc, 2004 FCA 413  
[Genpharm] and Abbott Laboratories Limited v Canada (Minister of Health), 2006 FC 1411,  
aff’d 2007 FCA 251 [Novopharm]. In Genpharm, the Federal Court of Appeal affirmed the trial  
court’s finding of inducement, where the trial court held that the inclusion of studies referring to  
the patented use amounted to “blatant attempts” to leave the reader of the PM with the  
Page: 58  
impression that the generic product may be used for the patented use. In Novopharm, a similar  
ruling was upheld on a similar basis.  
[156] Accordingly, Apotex’s activities will be the “but-for” cause of infringement. This  
remains the case even if a physician applies their own skill and judgment to the decision to  
prescribe combination therapy. If it were otherwise, inducing infringement could never be found  
in the context of pharmaceutical patents: Janssen Inc v Pharmascience Inc, 2022 FC 62 at paras  
132-133, 137 [Pharmascience Paliperidone]; Janssen Inc v Apotex Inc, 2022 FC 107 at paras  
142-143, 148 [Apotex Paliperidone]. Furthermore, a “but for” test does not mean that Apotex’s  
activities must be the sole cause of the infringement: Athey v Leonati (1996), [1996] 3 SCR 458,  
140 DLR (4th) 235.  
[157] With respect to prong 3 of the Corlac test, the plaintiffs argue that this element is not  
difficult to meet. Knowledge can be inferred where the inducer created and distributed the  
source of the influence: Apotex Paliperidone at paras 149-150; Western Oilfield Equipment  
Rentals Ltd v M-I LLC, 2019 FC 1606 at para 133; Hospira Healthcare Corporation v Kennedy  
Trust for Rheumatology Research, 2020 FCA 30 at para 44 [Hospira FCA]. Apotex is in control  
of its APO-MACITENTAN product and the contents of its PM, which will be made available to  
physicians, and at least some physicians will be influenced to infringe. Apotex is or ought to be  
aware that it will exercise influence on how its product will be used.  
[158] Apotex states that the test for inducement is stringent, and a difficult test to meet. Apotex  
argues the plaintiffs are seeking to have this Court grant a de facto monopoly over the use of  
Page: 59  
macitentan as a monotherapy. This would result in a real injustice, as it would artificially extend  
the plaintiffs’ monopoly over macitentan: AB Hassle at para 57.  
[159] Apotex states the plaintiffs understate the law by arguing that each case turns on its  
evidencethe prior jurisprudence is instructive to inform the analysis.  
[160] With respect to the first element, while Apotex acknowledges the clear possibility of  
“off-labeluse of macitentan in combination with a PDE5-I, Apotex submits that the plaintiffs  
have failed to meet their burden. The evidence does not establish that a physician will write a  
prescription for APO-MACITENTAN in combination with a PDE5-I, or write a prescription for  
OPSUMIT or macitentan in combination with a PDE5-I, which will be filled with APO-  
MACITENTAN by the pharmacy.  
[161] Like the plaintiffs, Apotex argues that the core of this case comes down to influence.  
Apotex’s main arguments relate to the second prong of the Corlac test.  
[162] Apotex asserts that it is not seeking approval for the use enumerated in the Asserted  
Claims and the APO-MACITENTAN PM does not encourage physicians to prescribe APO-  
MACITENTAN for that use. Apotex notes that there remains a role for monotherapy in the  
treatment of PAH for a non-trivial number of patients, approximately 10-30% depending on  
which data set is considered.  
Page: 60  
[163] Apotex submits an inducement to infringe generally cannot be inferred from a mere  
reference to the claimed use in a PM, for example, in the course of explaining contraindications  
or drug interactions, or as part of a list of scientific references: Novopharm Limited v Sanofi-  
Aventis Canada Inc, 2007 FCA 167 at paras 10-11. Apotex emphasizes that the analysis should  
be focused on what the PM instructs, instead of how a product may ultimately be used by the  
physician: Bayer Inc v Pharmaceutical Partners of Canada Inc, 2015 FC 797 at paras 59-61, 64  
[Bayer], aff’d 2016 FCA 13.  
[164] Apotex argues the APO-MACITENTAN PM does not teach that APO-MACITENTAN  
can be used in combination with a PDE5-I. The Indications and Clinical Usesection does not  
suggest that APO-MACITENTAN can be used with a PDE5-I and any such use would be “off-  
label”. References to  
, and the mention of SERAPHIN, are precisely the type of stray and subtle references that  
the Courts have held not to give rise to inducement. The APO-MACITENTAN PM removed all  
mentions to the use of macitentan as a combination therapy that are present in the OPSUMIT  
PM, and only mentions SERAPHIN results that reported macitentan was useful as a  
monotherapy. The PM does not provide directions on how to administer APO-MACITENTAN  
in combination with a PDE5-I, including whether it should be administered simultaneously,  
separately, or over a period of time.  
[165] Apotex submits this case is indistinguishable from Lundbeck Canada Inc v Ratiopharm  
Inc, 2009 FC 1102 [Lundbeck], where the patent claimed the use of a drug as part of a  
combination but Ratiopharm’s PM only taught the use of the drug as a monotherapy. In  
Page: 61  
addition, Ratiopharm was not seeking approval for use of the drug in combination with any other  
drugs.  
[166] Apotex submits the notion of “but for” causation in the second prong of the test requires  
proof that the defendant’s wrongful conduct is the necessary cause of the direct infringement,  
and without the influence, the direct infringement would not have occurred: Ediger v Johnston,  
2013 SCC 18 at para 28. Apotex states it is insufficient to establish that a defendant is partially  
responsible for the infringement, and argues that Bayer Inc v Pharmaceutical Partners of  
Canada Inc, 2015 FC 388 at paragraph 26 (affd 2015 FC 797 and 2016 FCA 13) and Apotex Inc  
v Nycomed Canada Inc, 2011 FC 1441 at paragraphs 19-21, 27-28, support this proposition.  
Apotex submits that APO-MACITENTAN PM cannot be the “but forcause when PAH  
specialists base their prescribing decisions on clinical studies and their practice experience. In  
the field of PAH, the physicians know SERAPHIN very well and it does not matter what is  
contained in APO-MACITENTAN PM. Apotex argues that prescription decisions, including  
how and when to use macitentan as part of a combination treatment, would not be informed by  
what is set out in the APO-MACITENTAN PM in any material way.  
[167] With respect to the third prong of the Corlac test, Apotex notes that the knowledge at  
issue is the knowledge that influence is being exercised, and not knowledge that the resulting  
activity will infringe: Hospira FCA at para 45. Apotex submits there is no evidence to establish  
it has such knowledge. To the contrary, the evidence shows that Apotex has “scrubbed cleanits  
PM of any mention of combination use of macitentan with PDE5-I.  
Page: 62  
(2)  
Analysis  
(a) Corlac Test: Prong 1  
[168] The first prong of the Corlac test requires an act of infringement that must have been  
completed by the direct infringer: Corlac at para 162. There is no requirement for direct contact  
between the inducer and the direct infringer, and the alleged inducer need not supply all  
components or elements of the claimed invention: Apotex Paliperidone at para 1