Canada: Class Action Certification Against Pfizer For An Allegation Of Unlawful Abuse Of The Patent System Is Overturned (Intellectual Property Weekly Abstracts Bulletin — Week Of December 14)

Patent Decisions

Class action certification against Pfizer for an allegation of unlawful abuse of the patent system is overturned

Low v. Pfizer Canada Inc., 2015 BCCA 506

The British Columbia Court of Appeal has overturned the certification of a class action relating to the drug Viagra, dismissing the action.

The Supreme Court of Canada found Pfizer's patent for Viagra to be invalid in 2012. The plaintiff Low commenced the proceeding by claiming that Pfizer had unlawfully abused the patent system, and as a result of its unlawful conduct, Pfizer had overcharged the purchasers of Viagra. Low brought the proposed class action on behalf of British Columbia purchasers of Viagra who were allegedly overcharged during the period January 1, 2006 to November 30, 2012. The Court noted that the defined class period in this litigation appears to correspond roughly to the period during which Teva sought a notice of compliance for generic sildenafil, but was prevented from doing so by reason of the prohibition proceedings initiated by Pfizer.

The Chambers Judge had found that the application did disclose a valid cause of action in intentional interference with economic relations and unjust enrichment. The Chambers Judge further found that because the Patent Regulatory Regime is silent as to consumer rights and remedies for breach of the Patent Act, it cannot be a complete code.

The BC Court of Appeal held that the Patent Regulatory Regime does not confer a direct benefit or protection on a consumer, nor does the legislation confer an express right on a consumer. Therefore, one cannot apply the proposition that the absence of an enforcement mechanism in the legislation at issue may be taken as implying a common law private cause of action by a consumer.

The BC Court of Appeal further noted that there is no common law tort of breach of statute, and that such breaches should be generally subsumed in the law of negligence. Low's claim was characterized as fundamentally a claim for breach of statute which is said to arise out of "abuse of the Patent system."

Ultimately the BC Court of Appeal held that in circumstances such as these--where Parliament has comprehensively legislated a particular area of the law — the reasonable inference is that it did not intend to extend rights of recovery beyond those embodied in the regime.

In the alternative, the BC Court of Appeal held that the claim did not disclose a cause of action in unlawful interference with economic relations. This is because a breach of statute must be otherwise actionable and a generic has no actionable claim against a brand name manufacturer for unjust enrichment or disgorgement of profits, because the Patent Regulatory Regime is a complete code.

In the further alternative the BC Court of Appeal held that the claim did not disclose a cause of action in unjust enrichment, because a complete statutory code excludes equitable claims in unjust enrichment. Even if the BC Court of Appeal did not consider the Patent Regulatory Regime a complete code, the claim in unjust enrichment still would not be allowed to proceed because of the existence of a juristic reason. In short, the Court determined that the contracts between Pfizer and the purchasers provided a juristic reason and the plaintiff has pleaded no facts to suggest the price was the fundamental fact on which the contracts were based.

Decisions re motions to strike upheld: Agreement with ratiopharm does not preclude Teva Section 8 Claim

Pfizer Canada Inc. v. Teva Canada Limited, 2015 FCA 257
Drug: sildenafil

The Pfizer appellants (Pfizer) appealed the decision of the Court denying their motion for summary judgment in respect of the action by Teva Canada Limited (Teva) pursuant to section 8 of the Patented Medicines (Notice of Compliance) Regulations (Regulations). The issue in Pfizer's motion related to whether an Agreement between the parties prevented the action by Teva. The Court granted Teva's parallel motion for summary judgment, holding that Pfizer could not assert the Agreement in respect of Teva's claim.

Pfizer commenced an application pursuant to the Regulations against Novopharm. A later application against ratiopharm was settled by an Agreement. Novopharm subsequently changed its name to Teva, and amalgamated with ratiopharm and several other companies. The application against now Teva was dismissed by the Supreme Court of Canada. Pfizer consented to the issuance of a Notice of Compliance to ratiopharm in accordance with the Agreement. The ratiopharm product has subsequently been discontinued. Teva brought this action for lost sales of its sildenafil product. Pfizer argued that the Agreement prevented Teva from bringing the action.

The Court of Appeal agreed with the Court that the Agreement does not relate to a claim for damages in respect of the Teva sildenafil product. The Court of Appeal held that, even if the Agreement should not be construed to relate only to the specific Court file commenced against ratiopharm, it could only be understood to include litigation by ratiopharm or possibly ratiopharm's successors. The Court of Appeal discussed the effect of the amalgamation and held that, while Teva is bound by the Agreement, the Agreement could not be rewritten to apply to litigation that was excluded from the Agreement at the time of execution of the Agreement. The appeal was dismissed.

Decision to dismiss motion to strike portions of statement of defence and counterclaim upheld on appeal

Teva Canada Limited v. Pfizer Canada Inc., 2015 FCA 280

A Prothonotary dismissed a motion by Teva Canada Limited (Teva) to strike certain paragraphs in the statement of defence and counterclaim by the Pfizer appellants (Pfizer). The Court dismissed the appeal by Teva and Teva appealed to the Court of Appeal. The Court of Appeal held that there is uncertainty in the state of the law with respect to the interpretation of section 8 of the Patented Medicines (Notice of Compliance) Regulations, and as such, declined to interfere with the findings below that the issue was not plainly and obviously devoid of merit.

Appeal from motion to compel answers arising from discovery dismissed

Hospira Healthcare Corporation v. Kennedy Institute of Rheumatology, 2015 FC 1292

The appellants (Hospira) brought a motion to compel answers to 354 questions refused or taken under advisement at the discovery of the respondents (Kennedy) in a patent impeachment action. The Prothonotary who heard the motion ordered answers to 19 of the questions, and Hospira appealed in respect of 85 findings. The Court set out the standard of review and then refused to consider the motion on a de novo basis, finding that the decision as a whole is not clearly wrong. The Court then considered whether any of the findings by the Prothonotary were clearly wrong, and found that none were. The appeal was dismissed, with costs fixed at $6,500 to the respondents in any of the event of the cause.

Trademark Decisions

Infringement suit for SCOTT dismissed due to lack of evidence of confusion and no loss of goodwill

Scott Technologies Inc. v. 783825 Alberta Ltd., et al, 2015 FC 1336

The Federal Court has dismissed the Plaintiff's claims for infringement and passing off pursuant to sections 7(b), 7(c), 19, 20 and 22 of the Trademarks Act, for the word marks SCOTT and AIR-PAK, and a stylized SCOTT.

It was described that the Plaintiff Scott deals in self-contained breathing apparatus (SCBA) often sold to fire and security customers. There are three different levels of training available to maintain the SCBA.

The Defendants' business began as a business filling and repairing fire extinguishers. The business was originally named "Scott Safety Supply Services". The owner subsequently offered other services, including SCBA service and rentals, after taking field level maintenance training on the Plaintiff's device.

On June 16, 2000, Scott Safety Supply Services Ltd. entered into an "in-house repair center agreement" with Scott Technologies, giving it "the right to inspect, repair, and service" the Scott SCBA it owned.  That agreement continued until it was terminated by Scott Technologies effective December 31, 2003.

On September 30, 2011, the Plaintiff demanded that Scott Safety Supply Services Ltd. "discontinue all use of the trade-mark and tradename SCOTT alone, or as part of any trade-mark, trade name or any other commercial designations in association with your business."

On December 3, 2012, Scott Safety Supply Services Ltd. [Old Scott Safety] sold substantially all of its assets to Scott Safety Supply Services Inc. [New Scott Safety] for $24,850,000.  Thereafter, Scott Safety Supply Services Ltd. changed its name to 783825 Alberta Ltd.  A term of the sale agreement is that Old Scott Safety and Brent Stark indemnify New Scott Safety against all costs arising from this litigation.

The claims in passing off and infringement were dismissed due to a lack of evidence regarding confusion despite the fact that the defendants' business has operated in a market in which the Plaintiff has been doing business for more than 20 years.

The claim to depreciation of goodwill was equally dismissed because the Plaintiff offered no evidence that it has lost or had any sale impacted by the defendants' trade-mark.

The Court noted that had it found that the defendants had breached the Plaintiff's trademark SCOTT, the Court would not have awarded any damages in light of the admission that there have been none. The Court also would not have ordered injunctive relief because it is an equitable and discretionary remedy, and in the Court's view, the Plaintiff waited too long. The Court stated that, "[a] business cannot lie in the weeds, allowing another to carry on and invest in and grow its business, and then spring up and enlist the aid of the court when it suits its purposes, claiming it has been unfairly treated."

Decision to not register U-BOX WE-HAUL and U-BOX for being confusing with U BOX IT is upheld on appeal

U-haul International Inc. v. U Box It Inc., 2015 FC 1345

U-haul was unsuccessful in its appeal of a decision of the TMOB to refuse to register two applications for trademarks, namely U-BOX WE-HAUL and U-BOX, for use in association with "moving and storage services, namely, rental moving, storage, delivery and pick up of portable storage units."

The Board found that there was a reasonable likelihood of confusion between the Applicant's impugned trademarks and the U BOX IT trademark registered by the opponent, U Box It Inc. for use in association with "garbage removal and waste management services."

U-haul submitted new evidence on appeal in an attempt to show that no business advertises or provides both garbage removal/waste management services and moving/storage services. The new evidence consists of random samples from the Yellow Pages, sourced from a number of Canadian cities and regions, with dates ranging from 2008-2014. The samples are advertisements included in categories related to moving and storage, and garbage removal and waste management. The Court held that this new evidence does not affect the reasoning of the Board or the findings of fact therein, particularly given the Board's tacit recognition that the parties' channels of trade are basically distinct. Consequently, the new evidence had insufficient probative significance to justify a de novo review of the decisions.

On this basis, the Court found the decision to be reasonable, and upheld the decision refusing to register the applications.

About BLG

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 Mondaq.com.

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

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions