Two appeals were considered in this judgment. The
Motions Judge applied the equitable doctrine of election and
dismissed Teva's action for damages pursuant to section 8 of
the NOC Regulations.
Novopharm held a licence with respect to EFFEXOR from Wyeth.
Ratiopharm was successful in a NOC proceeding, and ultimately
commenced an action seeking damages pursuant to section 8 of the
NOC Regulations. Novopharm changed its name to Teva, and then
amalgamated with ratiopharm. The Motions Judge found that Teva
could not continue ratiopharm's section 8 claim after the
The Court of Appeal granted the two appeals. The Court of Appeal
held that the terms of the licence and actions taken pursuant to
the licence between Novopharm and Wyeth had no effect on the
potential future right of ratiopharm to claim damages pursuant to
section 8. Accordingly, the consultations could not impact the
ability for Teva, ratiopharm's successor, to continue the
action for section 8 damages.
The Motions Judge had not made a finding with respect to the
second motion as his finding in the first motion was determinative
of the second. The Court of Appeal found that the record was
adequate to make the determination.
The issue in the second motion was whether the claim for section
8 damages should be offset by the gains obtained by Novopharm under
the terms of the licence. The Court of Appeal held that the amount
should not be reduced. However, the Court found that additional
evidence may be allowed when the section 8 actions continue that
may impact the amounts awarded to Teva.
Relevant Period for Section 8 Damages Reduced because
Trial Judge found that the 1993 version of the NOC Regulations
Court of Appeal granted the appeal from this decision and found
that the 1998 version of the NOC Regulations applied and remitted
the matter to the Trial Judge to determine the issues on this
Trial Judge, in a separate action, found that the patent was
valid and that some of the lovastatin tablets sold by Apotex
infringed the patent, affirmed by the
Court of Appeal.
The Trial Judge found that the appropriate date, in the absence
of a certified date by the Minister of Health, was the date of the
letter from Health Canada indicating that Apotex' submission
was on patent hold. In light of the Trial Judge's finding that
there was infringement of the patent, the Trial Judge exercised her
discretion pursuant to section 8(5) of the NOC Regulations to find
that the Relevant Period should be reduced to the period beginning
when Apotex received approval to use its non-infringing
Documents Included in Joint Book for Trial should be Exhibits
The issue to be determined relates to the contents of the appeal
books. In particular, the Court of Appeal considered whether
documents contained in the joint book at trial but not marked as
exhibits should be included in the appeal books.
The Court of Appeal noted that the fact that a document is
included in a joint book of documents and that the authenticity and
truth of contents are admitted does not necessarily mean that the
document is evidence in the trial. In this case, the Trial Judge
ruled that documents whose authenticity was admitted and that both
parties agreed could be used as proof of their contents were to be
considered evidence. The Trial Judge also accepted additional
documents as evidence. These documents were to be included in the
appeal book. However, documents other than these two sets should
not be included in the appeal books. The Court of Appeal also
allowed the respondent to prepare a book containing documents that
were not marked as exhibits but to which the Trial Judge made
reference in his decision in order for the appeal panel to decide
how to deal with these documents.
Other Industry News
Health Canada issued a
Notice with respect to a meeting on June 26 of the newly formed
Health Products and Food Branch Scientific Advisory Committee on
Pharmaceutical Sciences and Clinical Pharmacology. The meeting is
seeking recommendations with respect to the assessment of
pharmaceutical equivalence for the purpose of determining whether
ingredients in different products are "identical medicinal
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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