Canada: Settled Law That Claim For Losses Outside Liability Period In s. 8 Cannot Succeed (Intellectual Property Weekly Abstracts Bulletin - Week Of June 25, 2012)

Last Updated: July 3 2012
Article by Chantal Saunders and Beverley Moore

Most Read Contributor in Canada, September 2016


Settled Law that Claim for Losses Outside Liability Period in s. 8 cannot Succeed

Teva Canada Limited v. Nycomed Canada Inc.

A Prothonotary struck out portions of Teva's Statement of Claim that claimed losses, damages and harm incurred outside the liability period as set out in section 8(1) of the NOC Regulations. The Court dismissed Teva's appeal. The Court of Appeal also dismissed the appeal, finding that it was settled law that a claim for losses outside the statutory liability period could not succeed.

Appeal of Refusal to Add Parties at Remedy Stage Dismissed

Janssen Inc. v. Teva Canada Limited

The Court dismissed a motion for the joinder of parties at the remedy phase of an infringement action in which liability had been determined. The plaintiffs were seeking to add parties that were claiming damages through the patentee. A copy of the Court's decision can be found here. Our summary can be found here.

The Court of Appeal found no error in principle, and no misapprehension of the facts in the exercise of the Court's discretion to refuse the joinder, nor that an obvious injustice would result from the decision.

Finding of Non-Infringement by Variant Upheld on Appeal

Hollick Solar Systems Limited v. Matrix Energy Inc.

The Court held that Matrix did not infringe the claims of the patent in issue. A copy of the Court's decision can be found here. Our summary can be found here.

The Court of Appeal dismissed the appeal. The parties did not dispute that the impugned device had a variant of the claimed invention, and the issue to be determined on appeal related to whether this variant had a material effect upon the way the invention worked. The Court of Appeal found no error of law, or overriding and palpable errors on questions of fact or mixed law and fact on the record that would have a material impact on the decision.

Parties added to Infringement Counterclaim

Apotex v. Abbott

Drug: lansoprazole

Apotex is claiming damages pursuant to s.8 of the Notice of Compliance Regulations in Ontario Court, and Abbott and Takeda allege that Apotex infringes certain claims for of two patents. Takeda brought a motion to add further parties as Plaintiffs to the counterclaim; pleading that the proposed new Plaintiffs by Counterclaim are licensees under the patents in question.

The Court held that the parties sought to be added are members of a supply chain and accordingly, sales lost would affect those numbers in the supply chain. The Court also held the further particulars and other information requested by Apotex was not necessary in order for the pleading to stand. Thus, the motion was granted, with costs.

Other Cases of Interest

PMPRB Denies Reduction of Excessive Revenues by Sales Made with Lower Price

Drug: quadracel and pentacel

The Court reviewed a decision of a panel of the Patented Medicine Prices Review Board (the "Panel") addressing amounts to be paid by sanofi, and remitted the matter to the Panel for reconsideration. Our summary of the Court's decision is here.

The Panel considered the impact of the Court's decision and again considered sanofi's arguments that excessive revenues earned in respect of its products before 2007 should be reduced by sales of those medicines in and after 2007 that were below the maximum non-excessive price ("MNE price"). The Panel reasoned that, once it has quantified the excessive revenues, section 83(2) of the Patent Act only allows the Panel to choose amongst the methods of offsetting the revenues, and does not permit the Panel to make a remedial order or to adjust the dollar amount of the order.

In this case, the Panel found that the Government of Canada (the "Government") should have the benefit of the MNE price before 2007 and the benefit of the lower than MNE price that it negotiated for the period of 2007 and after 2007. Accepting sanofi's argument would reduce the benefit obtained by the Government.

Industry News

The Patented Medicine Prices Review Board issued its Annual Report for 2011.

Patented Medicine Prices Review Board Rules of Practice and Procedure were published in the Canada Gazette on June 16, 2012. Interested parties may make representations within 30 days of the date of publication.

Health Canada has finalized the Guidance Document: Preparation of Drug Regulatory Activities in the Common Technical Document (CTD) Format.

Health Canada has issued a Natural Health Product Raw Material Policy

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