Case: Alcon Canada Inc. v Actavis Pharma
Company, 2015 FC 1323
Drug: PATADAY® (olopatadine)
Nature of case: Appeal from decision to dismiss
motion to strike
Successful party: Actavis Pharma Company
Date of decision: November 27, 2015
The Federal Court upheld a Prothonotary's decision to
dismiss Alcon Canada Inc.'s (Alcon) motion to
strike portions of Actavis Pharma Company's
(Actavis) Statement of Defence and Counterclaim
alleging anti-competitive behaviour.
Following the dismissal of Alcon's Application for a
prohibition order under the PM(NOC) Regulations relating to
PATADAY®, a 0.2% olopatadine product (reported
here), Alcon brought an infringement action against Actavis.
Alcon alleged infringement of Canadian Patent No. 2,447,924
('924 Patent), which covers stable topically administrable
solutions containing approximately 0.17% to 0.62% (w/v)
In its Statement of Defense and Counterclaim, Actavis alleged
that Alcon engaged in anti-competitive behaviour, including conduct
contrary to the common law rules against restraint of trade and
various sections of the Competition Act, and that such
behaviour ought to reduce or eliminate infringement damages. The
basis of the anti-competitive behaviour is Alcon's alleged
transitioning of the market to PATADAY® after losing a
prohibition proceeding with respect to PATANOL®, a 0.1%
olopatadine product .
The Competition Bureau investigated Alcon's actions
here). After the Bureau's inquiry was started, Alcon
resumed supplying PATANOL® and generic versions of PATANOL®
entered the market. For these reasons, the Commissioner ended the
inquiry as "the competitive dynamic appears to have been
The motion to strike before the Prothonotary
Alcon brought a motion before Prothonotary Milczynski to strike
Actavis' allegations of anti-competitive behaviour, which it
argued do not relate to Alcon's rights in or Actavis'
infringement of the '924 Patent. Prothonotary Milczynski held
that Actavis may have a "steep hill to climb" but should
not be denied the opportunity to advance the defence and that such
a defence was not plainly and obviously doomed to fail.
Appeal to the Federal Court
Justice Locke upheld the decision of Prothonotary Milczynski. He
found that that her decision was not "vital to the final
issue" in the case, as removal of these paragraphs from the
pleading would not exclude an entire claim or cause of action.
Further, her decision was not clearly wrong, as she did not base
her decision upon a wrong principle or misunderstand the facts.
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