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® (sildenafil) market.

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 public.

We 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 strategy.

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 Accordingly, Apotex could not meet the threshold requirement under s. 8 that the earlier proceeding was withdrawn, discontinued, dismissed or reversed on appeal.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. 7(d).

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.