Apotex had previously sent a Notice of Allegation (NOA) to Lilly, however, the Court found the allegation not to be justified and granted a Prohibition Order to Lilly. This decision was upheld on appeal. Subsequently, the patent at issue in Apotex’ NOA became the subject of a patent infringement suit where the patent was declared invalid. Apotex brought a motion asking the Court to set aside its earlier order granting prohibition to Eli Lilly. The parties agreed to await the decision of the Court of Appeal before hearing Apotex’ motion. The Court of Appeal released its decision overturning the trial decision in part but sending it back on a number of other grounds for reconsideration.
In this case, the Court refused to grant Apotex’ motion, holding that the specific grounds advanced in Apotex’ NOA are still unjustified. Furthermore, there is no need to set aside a Prohibition Order when the patent expires through a declaration of invalidity. The Court analogized Section 8 damages with an undertaking in damages given when an injunction is granted. The Court held that it was not aware of any instance where such an undertaking was given as a guarantee against damages if the patent was later invalidated in the context of a proceeding between different parties. Finally, the Court noted that there is a public interest in the finality of litigation. Thus, Apotex’ motion was dismissed.