Eli Lilly Canada inc. v. Apotex Inc. (2010 FC 952)


Motion to set aside a prohibition Order in PMNOC proceedings, Olanzapine, September 24, 2010

Apotex brought a motion to set aside an Order from 2007 granting Eli Lilly’s applications for a prohibition Order in PMNOC proceedings. The Order was confirmed by the Federal Court of Appeal in 2008. Apotex brought the motion because it was seeking a dismissal of Eli Lilly’s applications in order permit it to claim damages pursuant to section 8 of the PMNOC Regulations. Section 8 requires an innovator’s application to be “withdrawn, discontinued or dismissed” before a generic can claim damages. Madame Justice Gauthier dismissed Apotex’s motion. Referring to case law she held that a prohibition order naturally expires at the same time that the patent expires. This includes when a patent is declared to be invalid in impeachment proceedings. Expiry does not trigger section 8 damages as the patent is not deemed to be withdrawn, discontinued or dismissed. So, if an innovator prevails in prohibition proceedings, section 8 does not provide redress to a generic even if the generic is later successful and impeaches the patent in litigation.