In 2007, the respondent, Eli Lilly
Canada Inc. (Lilly), obtained an order prohibiting the Minister of
Health from issuing a Notice of Compliance (NOC) to Apotex with
respect to its olanzaprine products until the expiry of Lilly's
'113 patent. Shortly after, a generic manufacturer successfully
invalidated the '113 patent on the basis that the promised
utility was not soundly predicted (the decision was upheld on
appeal and the Supreme Court refused to hear the appeal). In
October 2009, Apotex received its NOC and then filed a motion to
set aside the order of prohibition of 2007 pursuant to Rule 399 of
the Federal Court Rules. On September 24, 2010, the
Federal Court (FC) dismissed Apotex's motion, the FCA upheld
the FC's decision on December 4, 2013 and on February 3, 2014
Apotex filed an application for leave to appeal before the Supreme
The question at issue before the FCA
was whether the invalidation of a patent enables the Court to
change its earlier order and dismiss an application for prohibition
under subsection 6(1) of the Patented Medicines (NOC) Regulations.
The FCA referred to two decisions,
Ratiopharm2, and held that a declaration of
invalidation of a patent does not enable the Court to retroactively
dismiss an application for an order of prohibition granted
If such application is withdrawn,
discontinued, dismissed, or reversed on appeal, it may permit
Apotex to claim damages for loss of profits during the time that
the prohibition order kept its products off the market, pursuant to
section 8 of the PMNOC Regulations. However, a subsequent
declaration of patent invalidation is not an option that can give
rise to a claim for damages under section 8.
Apotex further argued that in
Syntex and Ratiopharm, the FCA relied on an
English Court of Appeal decision, Unilin3,
which was overruled in 2013 by the U.K. Supreme Court4.
Holding that the cited cases and the case in the present appeal are
not based on Unilin to such an extent that they should be
reconsidered, the FCA dismissed the appellant's argument on the
basis that "[s]ubsequent decisions of foreign courts that may
be somewhat analogous do not normally demonstrate that a contrary
decision by a Canadian Court was "manifestly
1. Apotex Inc. v. Syntex Pharmaceuticals International
Inc., 2010 FCA 155
2. Pfizer Canada Inc. v. Ratiopharm, 2011 FCA 215
3. Unilin Beheer BV v. Berry Floor N V  EWCA Civ.
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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