Apotex Inc v Pfizer Ireland Pharmaceuticals, 2016 ONSC 7193

In this Ontario Superior Court (“ONSC”) decision, Nordheimer J heard pleadings by Apotex Inc. (“Apotex”) and Pfizer Ireland Pharmaceuticals (“Pfizer”) concerning Pfizer’s, now invalid, patent for Viagra. [5] Apotex had previously been prevented from manufacturing its own generic because of the Viagra patent, and now claimed damages for the delay in being able to market its own variant. [5]

Pfizer moved to strike Apotex’s claim, which sought a common law remedy for the delay, by taking the position that the Patent Act provides a “complete code” of remedies for matters pertaining to patent law, and that therefore Apotex’s claim for a common law remedy must be struck out. [6] For the reasons below, and for the reason that “[i]t is certain[ly] not ‘plain and obvious’ that the claims cannot succeed,” [11] the appeal was dismissed and Apotex’s claim was allowed to proceed unstruck. [12-13]

Rules of Civil Procedure: Common law claims vs. the “complete code” argument allowed to proceed

For a moving party to obtain leave to appeal on a pleadings motion, one of two tests set out in Rule 62.02(4) must be satisfied. [7] The first of these tests is that there must be a conflicting decision from Ontario by another judge on the matter involved in the proposed appeal, and that it is the opinion of the current judge that leave to appeal be granted. [7] The second test is that there appears to the judge hearing the motion to be good reason to doubt the correctness of the order in question and the proposed appeal involves matter of such importance that leave to appeal should be granted. [7]

With regards to the first test, the judge did not feel there was a pertinent enough conflicting decision from Ontario available for application to the current facts. [9]

Under the second test, Nordheimer J indicated that there was confusion and uncertainty in Pfizer’s argument that the patent regime provides a “complete code” of remedies barring Apotex from common law remedies. [11]

In conclusion, however, as this was a pleadings motion, no final determination on the merits of whether the Patent Act provides a “complete code” of remedies could be made here. [12] Thus, Nordheimer J concluded that the time of the court and the time and money of the parties should not be spent on endless arguments over a party’s pleadings. [12]

The “complete code” argument, used to bar parties from bringing civil claims in patent cases, has recently seen more usage (For example: Low v Pfizer Canada Inc, 2015 BCCA 506). The decision at hand, although not fully articulated, dealt with the question of retroactivity. Also not discussed in this case is the parallel between a common law claim for damages, where a patent was retroactively invalidated, and a claim for Section 8 damages under the Patented Medicines (Notice of Compliance) Regulations (“PM(NOC)”), which provides a remedy for a generic pharmaceutical manufacturer in the case where its product was delayed entry into the market by operation of the PM(NOC) Rules. In line with Nordheimer J’s conclusion, the absence of this discussion is likely explained by the fact that this case is simply dismissing an appeal of a pleadings motions.