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Court of Appeal Strikes Paragraphs Relating to Issue Estoppel and Abuse of Process from Statement of Defence
Apotex v. Pfizer Ireland
Drug: sildenafil
The Court of Appeal heard an appeal from the Motions Judge where
the majority of impugned paragraphs in the Statement of Defence
were allowed to stand. The decision of the Motions Judge is summarized here.
In the underlying action, Apotex has started a proceeding to
impeach the validity of Pfizer's patent. Apotex brought the
within motion to strike part of Pfizer's pleadings relating to
issue estoppel, collateral estoppel, comity and abuse of process.
Pfizer's pleadings in these areas assert that Apotex is
precluded from re-litigating issues relating to the validity of the
patent because of these principles.
The Court of Appeal summarized the history of law relating to the
re-litigation of issues decided in NOC proceedings in subsequent
actions. The Court of Appeal held that res judicata does not apply
to the determination of validity and infringement in an action
following a NOC proceeding. If a party introduces new evidence or
new argument in a subsequent action, the trial judge should
reconsider the issue in light of the full record before him or her.
However, if a witness gives exactly the same evidence in both
proceedings and the judge found the witness not to be credible in
the NOC proceeding it may be open to the judge to bar re-litigation
of the witness' credibility through issue estoppel or abuse of
process.
The Court of Appeal held that it is plain and obvious that
Pfizer's defence of issue estoppel, collateral estoppel, comity
and abuse of process cannot apply to bar litigation of the validity
issue. Thus, those paragraphs were struck from the Statement of
Defence. However, statements relating to other subsidiary findings
of the applications judge were allowed to stand so that the trial
judge has the discretion to evaluate whether these findings may be
relitigated in light of evidence and arguments at trial.
Court of Appeal Dismisses Appeal and Cross-Appeal from Findings of Partial Infringement, Inducement and Validity
Easton Sports Canada Inc. v. Bauer Hockey
Corp.
After a trial on the merits, the trial judge held that Easton was
liable for infringement with respect to some of the products at
issue and that Easton induced a third party to infringe.
Furthermore, the trial judge found the patent to be valid. The full
decision is found here. Easton appealed the findings of validity
and inducement and Bauer cross-appealed the findings of
non-infringement with respect to the other products. The Court of
Appeal dismissed both the appeal and the cross-appeal.
The Court of Appeal considered the construction of the patent as
discussed by the trial judge and found that it was fair and
purposive. As a result, the cross-appeal as to infringement of
other models of skates was dismissed.
Counsel for Easton raised a new argument regarding a piece of
prior art. The Court allowed the new argument as well as
Bauer's new evidence to refute this new argument. However, the
new argument was held not to be sufficient to render the patent
obvious. The Court also dismissed Easton's arguments as to
anticipation.
In considering the appeal relating to inducement, the Court held
that it did not have to consider this issue as the trial judge had
also found Easton was a direct participant in the manufacture of
infringing skates and as such, this is dispositive of the issue of
infringement.
Other Cases of Interest
Court of Appeal Dismisses Appeal of Judicial Review of the Minister's Decision Refusing to Issue Notice of Compliance
Apotex v. Canada (Minister of
Health)
Drug: Apo-ASA
Apotex filed an ANDS seeking a Notice of Compliance (NOC) for its
Apo-ASA product. Health Canada considered it necessary for Apotex
to establish bioavailability with the referenced product. Apotex
did not challenge that decision but rather submitted that its ANDS
does include such evidence. The Minister disagreed, finding the
results of one of the included studies do not meet the necessary
standards in its guidelines.
The Trial Division dismissed Apotex'
application for judicial review, finding that the question as to
whether bioequivalence has been proven is a question of fact to be
determined by the Minister reviewable on the standard of
reasonableness. The Court held that the Minister's decision not
to accept Apotex' demand for a NOC on the basis of
non-compliant data was not unreasonable. The Court of Appeal found
that this decision was reasonable and dismissed the appeal.
Other Industry News of Note
Coming into force of the Rules Governing the Expedited Examination of Patent Applications Related to Green Technology
Notice is given that the Governor in Council has approved the Proposed Amendments to the Patent Rules – Expedited Examination of Patent Applications Related to Green Technology. The Rules Amending the Patent Rules came into force on March 3, 2011. http://www.gazette.gc.ca/rp-pr/p2/2011/2011-03-16/pdf/g2-14506.pdf
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