In a rare move, Pfizer has filed a motion seeking to amend the Supreme Court of Canada’s judgment on its VIAGRA patent, or alternatively for a re-hearing on the issue of remedy.  On November 8, 2012, in Teva Canada Ltd. v. Pfizer Canada Inc., 2012 SCC 60, reported here by Kitt Sinden of SIM. IP Practice, the Supreme Court of Canada (“SCC”) unanimously held Pfizer’s Canadian Patent No. 2,153,446 (the “`446 Patent”) on VIAGRA to be “invalid and void”.

In the Notice of Motion filed on November 9, 2012, Pfizer applied for:

  1. an amendment of the judgment by replacing the words “and Patent 2,153,446 is declared void” with the words “the application below is dismissed and the Order of the Federal Court dated June 18, 2009, prohibiting the Minister from issuing a notice of compliance to the appellant is hereby set aside” or
  2. in the alternative, an order directing a re-hearing on the issue of remedy; and
  3. if the Court grants the relief set out in a), an order amending paragraphs 83 and 87 of the Reasons for Judgment to clarify that the Court’s discussion of validity of the `446 Patent is in the context of the Patented Medicines (Notice of Compliance) Regulations, and in particular, in the context of Teva’s allegation of invalidity under those Regulations.

Given that the SCC’s judgment resulted from a proceeding that arose under the Patented Medicines (Notice of Compliance) Regulations, in which the only issue was whether Teva’s allegation of invalidity of the `446 Patent was justified, Pfizer argues that the SCC did not have jurisdiction to “invalidate” and “void” the `446 Patent.  Accordingly, Pfizer has filed its motion on the basis, inter alia, that:

This Court accidentally granted a remedy in this appeal that exceeds its jurisdiction. In holding that Pfizer’s 446 Patent was invalid and void, this Court overlooked the legislative context in which the proceeding was brought, and that this Court did not have jurisdiction to issue a judgment invalidating Pfizer’s 446 Patent or declaring it void. (para. 1 of the Notice of Motion)

The Rules of the SCC do provide for the possibility of amending a judgment (Rule 81) or a re-hearing (Rule 76).  According to Rule 81, motions to amend may be made if the judgment:

  1. contains an error arising from an accidental slip or omission;
  2. does not accord with the judgement as delivered by the Court in open court; or
  3. overlooked or accidentally omitted a matter that should have been dealt with.

The judge on the Rule 81 motion may dismiss it, amend the judgment or direct that a motion for a re-hearing be made to the Court in accordance with Rule 76.  In a Rule 76 motion for a re-hearing, the other party has the right of response, the Applicant has the right of reply, no oral argument shall be heard unless the Court otherwise orders, and if the Court orders a re-hearing, the Court may make any order as to the conduct of the hearing as it considers appropriate.