Apotex Inc. v Pfizer Ireland Pharmaceuticals et al., 2016 ONSC 4966

In the Ontario Court, Apotex claimed damages pursuant to, inter alia , section 8 of the NOC Regulations. Pfizer brought a motion to strike out parts of Apotex' statement of claim, except for its claim for treble damages under the Statutes of Monopolies. The motion was mainly dismissed.

In the underlying proceeding, Pfizer's application for prohibition of the 446 Patent was wholly successful. On appeal, the 446 Patent was subsequently declared invalid by the Supreme Court of Canada. I n its motion to strike, Pfizer argued that section 8 does not apply since the prohibition proceeding was not withdrawn, discontinued or dismissed, nor was it reversed on appeal. The Court agreed that the subsequent finding of invalidity does not give rise to a claim by Apotex under section 8 of the PMNOC Regulations. Thus, it struck this claim.

Pfizer also moved to strike Apotex's claim pursuant to the Trade-marks Act on the basis that it conflicts with the PMNOC Regulations. Pfizer argued that the Court should apply the principle of the presumption of coherence and, if need be, resolve the conflict by giving precedence to the PMNOC Regulations. The Court held that there was a live issue as to whether subordinate legislation such as the PMNOC Regulations could oust the statutory remedies in the Trade-marks Act merely because the PMNOC Regulations contain a limited remedy for damages suffered by a generic manufacturer as a result of the Prohibition Proceeding. Thus, Apotex's claim under Trade-marks Act was not struck.

Pfizer also tried to strike the pleadings regarding unjust enrichment. In a recent Court of Appeal case, Apotex's claims for unjust enrichment had been struck because the pleading failed to assert a proper deprivation. The Court found that Apotex's pleading in this case was significantly different in that it claimed only that portion of Pfizer's revenues that represent the revenues Apotex was deprived of because of the delay in obtaining its Notice of Compliance. As a result, the claim for unjust enrichment was not struck.

Pfizer also asserted that Apotex claims for nuisance must fail because Apotex failed to plead an element of private nuisance, namely that there be an interference with exclusive property rights, and failed to plead the requisite elements of public nuisance. The Court held that, while unusual, it could not be said at this stage that Apotex's claim for nuisance disclosed no reasonable cause of action. However, the Court did strike Apotex's claims based on Ashby v. White, to the extent that they asserted an independent cause of action.

Finally, the Court found that it was not plain and obvious that Apotex's claim for conspiracy was doomed to fail. Thus, the claim was not struck.