Canada: Permanent Injunction Granted Despite Patentee Not Having A Product That Practiced The Claims Of The Patent

On May 22, 2014, the Federal Court of Canada issued an injunction curtailing Janssen Inc.'s marketing of its drug ustekinumab (STELARA®) in ongoing patent litigation with AbbVie Corporation and related companies.1  The Court had previously found that certain claims of the patent in issue were both valid and infringed.2  This most recent decision addressed whether AbbVie was entitled to an injunction and, if so, under what terms and conditions, if any.  The remaining bifurcated issues as to damages or profits are scheduled to be heard in September 2015.

Background of the case

The Court at the outset distinguished this case from most other patent cases on the basis that, while AbbVie sells a product in Canada which competes with Janssen's STELARA product, AbbVie's product does not fall within the scope of the patent claims at issue. In fact, no one, other than Janssen, sells a product in Canada that comes within those claims.  The Court also acknowledged the apparent medical need for STELARA, as at least a portion of psoriasis sufferers in Canada require it for the effective treatment of their condition. 

In these unique circumstances, the Court felt compelled to balance AbbVie's rights to the exclusive use of its claimed invention with a medical need by some members of the Canadian public to have continued access to the infringing drug that Janssen was desirous of continuing to sell.

Permanent injunctions usually follow findings of infringement and validity in Canadian patent cases

Reciting well-established patent jurisprudence, the Court confirmed that a permanent injunction will normally follow once the Court has found that a patent is valid and has been infringed. An injunction will be refused "only in very rare circumstances".  The Court added that the three-part test for interlocutory injunctions does not apply for final or permanent injunctions.  Rather, to obtain a final or permanent injunction, a party need only establish its legal rights, and the Court need only assess the appropriateness of an injunction. Irreparable harm and balance of convenience, per se, are thus not relevant, though they may inform the determination as to the appropriateness of an injunction.

The Court did however note the rare situation of the Unilever case where a final injunction was not ordered due to a unique set of facts, including that: the patent had less than two years of life left; the patentee did not sell a product that came within the scope of the patent, although it sold a competitive product; and, the defendant's product was made by people with disabilities, who were otherwise unemployable (and particularly vulnerable given the economic recession at the time of the decision).3 

The unique injunction crafted by the Court

In determining the appropriateness of a permanent injunction, the Court considered the following: (a) what are the plaintiffs requesting? (b) what is the defendant proposing? (c) what interests are the plaintiffs seeking to protect? (d) what interests is the defendant seeking to protect? and (e) what interests does the public have?

The Court noted, among other things, that the injunction requested by the patentee, AbbVie, comprised certain significant exceptions, such as the continued use of STELARA by existing patients and the use by new patients in particular circumstances. The Court also highlighted its finding that, for some patients in Canada, there is no alternative to STELARA in the effective treatment of their psoriasis.  This case was therefore unlike numerous other patent actions where the subject matter of the patent is directed to something that is readily replaced by, or substituted with, another equivalent or otherwise suitable product. In such cases (e.g., a watch or bicycle), the public may lose its ability to acquire or use one such product, but it can readily access a reasonable alternative.  The Court therefore found it necessary to keep in mind the needs of the public at large. 

Ultimately, the Court granted an injunction, which it designed to curtail the marketing of STELARA while ensuring that medical information on the product continued to be available.  Unlike a traditional injunction, which would have more fully prevented Janssen from continuing to deal in STELARA, this injunction notably permits physicians to continue prescribing STELARA to patients already receiving that drug and to new patients, provided that their own physicians have determined that STELARA is necessary for treatment of their psoriasis.  In addition, Janssen will be required to pay a royalty to AbbVie for any continuing sales.

The Court rejected certain terms requested by AbbVie, namely, that:

  • physicians certify the need for STELARA. Such rigour is overly restrictive and too skeptical of the integrity of doctors. The Court did however enjoin Janssen from influencing doctors;
  • Janssen notify provincial drug formularies about the injunction and its terms, thus potentially impacting the provision of and funding for STELARA. Rather, the Court left Janssen to do so if required by law, and AbbVie to provide information as may be necessary;
  • Janssen be ordered to comply only with lawful requests from Health Canada.  The Court found that Health Canada would not knowingly make an unlawful or frivolous request; and
  • Janssen issue a letter to physicians advising of the patent at issue and the outcome of the proceeding. AbbVie could do so itself if it so desired.

The Court also prohibited Janssen from conducting phase IV trials, unless required by law to do so.  To do otherwise, the Court held, would undermine the terms of the injunction, as such trials would require Janssen to recruit new patients.

Finally, the Court declined to stay the injunction for a period of time.  The Court held that a party seeking a stay must provide some evidence as to hardship and found no such evidence on the record. To the contrary, the Court noted that Janssen became aware of the risk of an injunction shortly after launching its STELARA product and pursued that market despite the risk. Further, the terms of the injunction did not prevent Janssen from marketing STELARA altogether, but rather merely curtailed some of its activities.

Impact on future patent cases

This decision of the Federal Court of Canada illustrates the flexibility of the Court to tailor an equitable remedy, such as an injunction, to the particular facts of a case.  In addition, the decision demonstrates that the Court will uphold the long-standing and general practice to grant permanent injunctions in favour of a successful patentee unless there are exceptional circumstances, such as a particular public interest in the invention as was found in this case.  Where consumers or the public at large may replace or substitute an infringing product for a reasonable alternative product, the Court will be more inclined to grant a permanent injunction, particularly where, as in this case, the patentee has a competing product even if such product is outside the scope of the claims at issue.

It remains to be seen what particular impact this decision will have on other patent litigants in Canada who are seeking permanent injunctions in cases where there may be arguments against the granting of such injunctions.  For example, the Federal Court of Canada has yet to adjudicate any patent trials involving non-practicing entities (NPEs) or patent assertion entities as plaintiffs.  In the United States, since the U.S. Supreme Court's decision in eBay,4 NPEs are frequently denied permanent injunctions.  In eBay, the Supreme Court reasoned that where an NPE's threat of an injunction is employed simply for undue leverage in negotiations, legal damages may well be sufficient to compensate for the infringement and an injunction may not serve the public interest. 

Accordingly, it is anticipated that future decisions in Canada that consider the appropriateness of permanent injunctions will strive to strike a balance between the general practice of granting permanent injunctions in favour of a successful patentee with carefully considering whether there are any exceptional circumstances that run counter to the granting of a permanent injunction.  Important considerations for the Court may include whether the infringing product may be substituted with a reasonable alternative, and whether, based on the particular interests of the parties and the public at large, damages alone may be sufficient compensation.  For example, where an NPE uses the threat of an injunction for undue leverage, does not have a competing product or other particular interest in the market, is only interested in obtaining licensing revenues, and would enjoy a greater financial benefit with ongoing and/or future royalties, there may be an argument that damages alone are adequate; however, such an argument would need to be balanced against the general practice of granting permanent injunctions, particularly where an infringing product may be substituted with a reasonable alternative.


1 AbbVie Corporation et al v Janssen Inc, 2014 FC 489 (per Hughes J.).  A copy of the decision may be found here.

2 AbbVie Corporation et al v Janssen Inc, 2014 FC 55. A copy of the decision may be found here.  A summary of this decision may be found here.

3 Unilever PLC v. Procter & Gamble Inc. (1993), 47 CPR (3d) 479.

4 MercExchange LLC v eBay Inc, 547 US 388 (2006).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
8 Nov 2016, Seminar, Ottawa, Canada

The prospect of an internal investigation raises many thorny issues. This presentation will canvass some of the potential triggering events, and discuss how to structure an investigation, retain forensic assistance and manage the inevitable ethical issues that will arise.

22 Nov 2016, Seminar, Ottawa, Canada

From the boardroom to the shop floor, effective organizations recognize the value of having a diverse workplace. This presentation will explore effective strategies to promote diversity, defeat bias and encourage a broader community outlook.

7 Dec 2016, Seminar, Ottawa, Canada

Staying local but going global presents its challenges. Gowling WLG lawyers offer an international roundtable on doing business in the U.K., France, Germany, China and Russia. This three-hour session will videoconference in lawyers from around the world to discuss business and intellectual property hurdles.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.