Canada: Intellectual Property Weekly Abstracts Bulletin (Week Of March 21, 2011)

Last Updated: March 25 2011
Article by Chantal Saunders and Beverley Moore

Most Read Contributor in Canada, September 2016


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.

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