On November 18, 2016, Justice Nordheimer of the Ontario Superior Court of Justice dismissed Pfizer's motion for leave to appeal a decision that dismissed, with two exceptions, Pfizer's motion to strike various remedial claims made by Apotex (see our prior blog post here).

Pfizer successfully asserted a patent covering sildenafil against Apotex under the PM(NOC) Regulations that prevented Apotex from marketing a generic version of Viagra. Pfizer's patent was subsequently held to be insufficient by the Supreme Court leading Apotex to commence this action for damages alleging it had been improperly kept off the market based on a patent that should never have been issued. In the underlying motion Pfizer was successful in having two of Apotex' claims struck, including its claim under the section 8 of the PM(NOC) Regulations. Pfizer was unsuccessful, however, in striking Apotex' remaining claims based on the Trade-marks Act, unjust enrichment, nuisance and conspiracy.

Justice Nordheimer summarized Pfizer's position as being that the Patent Act provides "a complete code" for any remedies arising from the PM(NOC) Regulations  and consequently claims outside the Patent Act cannot possibly succeed:

[6] ... Pfizer's position is, essentially, that the Patent Act provides "a complete code" for any remedies arising from a situation such as this one and, consequently, Apotex's attempt to advance common law claims outside the remedies provided by statute cannot possibly succeed and ought to be struck out.

Justice Nordheimer noted that in order to obtain leave to appeal Pfizer must satisfy one of the two tests set out in r. 62.02(4) of the Rules of Civil Procedure. This rule states that leave to appeal shall not be granted unless:

  • there is a conflicting decision by another judge or court in Ontario or elsewhere on the matter involved in the proposed appeal and it is, in the opinion of the judge hearing the motion, desirable that leave to appeal be granted; or
  • there appears to the judge hearing the motion good reason to doubt the correctness of the order in question and the proposed appeal involves matters of such importance that, in his or her opinion, leave to appeal should be granted.

Justice Nordheimer held that neither test had been met. With respect to the first test, Justice Nordheimer found that even if there were conflicting decisions, it is not desirable for leave to appeal to be granted because of the associated delay, increased costs and fact that the issue would not end the claim or defence:

[10] This is a pleadings motion. While parties argue over the state of the pleadings, the action itself does not proceed. Delay results and costs are increased. Those consequences directly conflict with the central goals of the Rules of Civil Procedure which is to ensure "the just, most expeditious and least expensive determination of every civil proceeding" (r. 1.04(1)). Accordingly, it should be the rare or unusual case where a pleadings issue ought to warrant the time and attention of a reviewing court by way of an appeal. That is especially so when the pleadings issue would not, in any event, be the end of the claim or the defence, even if resolved in the moving party's favour.

With respect to the second test, Justice Nordheimer held that the motion judge correctly stated and applied the test regarding motions to strike. Justice Nordheimer further noted that it is far from plain and obvious that Pfizer's "complete code" argument is sufficient to defeat Apotex' claim. Further, the Court's time should not be wasted on virtually endless arguments over the state of a party's pleadings.

A copy of Justice Nordheimer's Endorsement can be found here.

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.