Canada: Apotex Seeks Rehearing of NEXIUM Patent Validity Following Supreme Court's Decision

On August 29, 2017 Apotex filed a motion with the Supreme Court of Canada, requesting a rehearing of the appeal and an amendment of the corresponding judgment in which the Supreme Court held that the promise doctrine is not the appropriate standard for assessing utility and that AstraZeneca's 653 Patent is valid (2017 SCC 36; see our previous post here). In its motion Apotex requests, amongst other things, that the case be remanded to the Federal Court to determine whether the unfulfilled promises of the 653 Patent render the patent invalid on the basis of insufficient disclosure, overbreadth and misleading statements.

Apotex's motion was filed pursuant to rules 76 and 81 of the Rules of the Supreme Court of Canada. Rule 76 permits a party to make a motion to the Court for a re-hearing of an appeal. Rule 81 allows the Court to amend a judgment if the judgment (a) contains an error arising from an accidental slip or omission; (b) does not accord with the judgment as delivered by the Court in open court; or (c) overlooked or accidentally omitted a matter that should have been dealt with.

Apotex contends that in addition to holding that the promise doctrine is not good law the Supreme Court recognized that over-promises remain a mischief that should be addressed on the grounds of sufficiency of disclosure, overbreadth and misleading statements. Apotex argues that because the over-promises of the 653 Patent were not assessed within their proper legal framework the case should be remanded to the Federal Court for a determination of the issue in accordance with the Supreme Court's decision.

Apotex is also requesting that the case be remanded to the Federal Court of Appeal to determine the issues of anticipation and obviousness since the Court of Appeal had previously declined to decide these issues having found the patent invalid for lack of utility. Apotex asks that the remand to the Federal Court of Appeal be stayed pending determination of the remand to the Federal Court and any appeals therefrom.

Apotex's motion record is available from the Supreme Court of Canada upon request.

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