Motion for Reconsideration of a Final Judgment; 55.2 Proceeding; February 13, 2008; omeprazole

The generic company brought a motion asking the Court to reconsider its decision in two proceedings where prohibition was granted and affirmed by the Federal Court of Appeal. The basis for the motion was a decision in a subsequent proceeding, which was also affirmed on appeal. The Court denied the motion.

Apotex argued that the Court's analysis of its product in the second proceeding was a substantive finding that Apotex' omeprazole tablets do not contain a sub-coat. Thus that finding should be applied to the sub-coat patents that were the subject of the earlier proceedings. As a result, Apotex argued that the Court should overturn the prohibition orders in the earlier proceedings.

The Court held that there is no precedent to re-open a prohibition order because evidence adjudicated in another case relating to another patent appears to be more favourable than the evidence that was or could have been adduced by that party in the earlier case or could have been considered if the party had framed its notice of allegation properly.

The Court also found that subsequent judgment in another proceeding is rarely a circumstance that would permit the re-opening of a judgment in an earlier proceeding. If the subsequent judgment results in a change in law, the Court will not re-open an earlier judgment. When the subsequent event is a change in circumstances, the Court is reluctant to speculate as to what may have happened in the earlier event. Finally, the comments of the Court with regard to the content of Apotex' product were obiter to the principal finding.

The Court found that in the first of the earlier proceedings, Apotex did not put together a sufficient allegation to put the question of non-infringement into play. In the second proceeding, Apotex failed to persuade the Court that its conduct in the first proceeding did not preclude it from making such allegations. Thus, Apotex is now trying to do what it did not do in the first proceeding and could not do in the second. Thus, the determinations of the Court in the third proceeding do not constitute new matter.

The full text of the decision can be found at:  http://decisions.fct-cf.gc.ca/en/2008/2008fc13/2008fc13.html