In this decision (2016 ONSC 4966), the Ontario Court dismissed
Apotex's claim for damages under s. 8 of the NOC
Regulations in the face of a motion to strike. Apotex's
other relatively esoteric claims were, however, left for another
day. These claims include alleged false and misleading statements
under s. 7 of the Canadian Trade-Marks Act, unjust
enrichment, nuisance, and conspiracy. Pfizer failed to establish
that these claims were doomed to fail. The high standard applicable
on these motions was not met.
Apotex pursues Pfizer in the Ontario Court for alleged losses
relating to Apotex's delay in access to the generic VIAGRA®
In November 2012, the Supreme Court of Canada found certain
allegations of invalidity in respect of one of Pfizer's
sildenafil patents justified. The SCC used some troubling language
in its decision. It has been suggested that Pfizer gamed the patent
system by failing to properly disclose its invention to the
blogged about that decision previously. Since its release,
Apotex (and others) have been using the decision as a platform to
bring varied suits against Pfizer over this drug and its patent
In this case, Apotex is seeking various forms of relief for
being kept out of the generic Viagra® market by Pfizer's
sildenafil patent – the one that was at issue in the
SCC's earlier decision.
Pfizer brought a motion to strike Apotex's entire claim,
except for Apotex's claim for treble damages under the
Statutes of Monopolies.
The Court struck Apotex's claim for section 8 damages under
the NOC Regulations. This is because Pfizer's earlier
prohibition order against Apotex was not impacted by subsequent
judicial findings that the patent was invalid. Accordingly, Apotex
could not meet the threshold requirement under s. 8 that the
earlier proceeding was withdrawn, discontinued, dismissed or
reversed on appeal.
The Court allowed Apotex's claim under the Trade-Marks
Act to stand. Apotex alleges that by listing its sildenafil
patent on the Patent Register, Pfizer made representations that
were false (due to retroactive voiding of the patent) and
"likely to mislead the public" in contravention of s.
The Court held that Apotex's previous claims for unjust
enrichment failed because in each of those cases, the deprivation
alleged to have been suffered by Apotex was the innovator
companies' profits. In this case, however, Apotex adopted a
different approach by pleading that its deprivation is limited to
the portion of Pfizer's revenues that represent the revenues
Apotex was deprived of by reason of the delay it experienced in
obtaining its NOC. The Court found this difference in pleading
sufficiently distinguished this case from Apotex's previous
failed attempts at claiming unjust enrichment.
Although "unusual", the Court found that Apotex had
pled the requisite elements for the tort of private nuisance, which
requires an injury to land resulting from a substantial
interference with the use or enjoyment of land or an interest in
land. The Court found these elements present in Apotex's plea
that it had lost its ability to use its facilities for the
manufacture and sale of sildenafil. With respect to public
nuisance, the Court found Apotex had also pled the requisite
elements by alleging that Pfizer's sildenafil patent interfered
with its right to trade freely in the sildenafil market.
Finally, the Court found that Apotex had pled the essential
elements of the tort of conspiracy by alleging that Pfizer
committed an unlawful act, restraining trade through knowingly
procuring and enforcing an invalid patent. While Pfizer argued that
it had legitimately exercised its statutory rights, the Court found
that Apotex's conspiracy claim was not doomed to fail at the
preliminary pleadings stage.
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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