Justice Roger T. Hughes of the Federal Court of Canada granted
AbbVie the first-ever limited injunction against a branded
pharmaceutical company infringing a branded competitor's
patent. The injunction followed Justice Hughes' earlier
finding that AbbVie's patent was valid and infringed by Janssen
through the promoting, offering for sale, and selling in Canada of
Janssen's biologic product, Stelara, for the treatment of
This injunction is important because it affirms that:
A permanent injunction will normally follow a finding
that a patent is valid and infringed.
The three-part RJR Macdonald test for
interlocutory injunctions does not apply in the case of a permanent
The injunction provides that:
(a) Janssen is enjoined from making, using, selling,
offering for sale or promoting Stelara;
(b) Janssen is not prohibited from providing Stelara to a
patient who has received at least one injection of Stelara and from
providing Stelara to a patient whose physician has determined that
such a treatment is necessary;
(c) Janssen is prohibited from communicating directly or
indirectly with a physician for the purpose of influencing their
(d) Janssen may not detail, advertise, promote or make any
representation or claims in Canada about the use of Stelara for
(e) Janssen must terminate all advertising in all media
published in Canada; and,
(f) Janssen may not commence any Phase IV trials
except as required by law.
Justice Hughes rejected Janssen's request to stay the
injunction for a number of reasons. One being that Janssen had
received advance warning about the injunction and was accordingly
"ill-advised or afflicted with hubris" in continuing its
infringing activities after being an adjudged infringer. On
May 1, 2014, Justice Stratas dismissed Janssen's motion seeking
to prevent the hearing of the injunction trial pending appeal to
the Court of Appeal. On June 30, 2014, Justice Stratas
dismissed another Janssen motion for a stay (its third all told),
seeking to stay operation of the Injunction after the trial.
Justice Hughes awarded the highest costs possible to AbbVie
because Janssen did not co-operate in endeavouring to craft a
suitable injunction and it did nothing to curtail its infringing
activities in the time between the liability finding and the
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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