Date: 20110214
Docket: A-258-10
Citation: 2011 FCA 57
CORAM: SEXTON
J.A.
LAYDEN-STEVENSON
J.A.
STRATAS
J.A.
BETWEEN:
APOTEX INC.
Appellant
and
THE MINISTER OF HEALTH
Respondent
and
JANSSEN-ORTHO INC. and
DAIICHI SANKYO COMPANY, LIMITED
Respondent
REASONS FOR JUDGMENT OF THE
COURT
(Delivered from the Bench at Toronto, Ontario on February 14, 2011)
STRATAS J.A.
[1]
This is an appeal and a cross-appeal from the order of Justice Hughes of
the Federal Court: 2010 FC 711.
[2]
Two matters were before the judge: a redetermination ordered by this
Court of an issue, and a motion for dismissal of the proceedings before the
Court on account of mootness. The judge found the proceedings to be moot and
exercised his discretion against allowing the proceedings to continue. However,
he ordered them to be “terminated” rather than dismissed. The significance of
this will shortly be seen.
[3]
In brief, the history of this complicated matter is as follows.
A. The Application
[4]
The respondents, Janssen-Ortho Inc. and Daiichi Sankyo Company, Limited
(the “respondents”) brought an application to the Federal Court (file
T-1508-05) under subsection 6(1) of the Patented Medicines (Notice of
Compliance Regulations, SOR/93-133, as amended. They sought an order
prohibiting the Minister from issuing a notice of compliance to Apotex for its
Apo-levofloxacin tablets until after the expiration of Patent No. 1,304,080.
B. The
events leading up to the redetermination
[5]
On June 17, 2008, Justice Shore granted the
prohibition order sought by the respondents. Apotex appealed that decision to
this Court. On June 22, 2009, this Court allowed the appeal and remitted the
prohibition application to the Federal Court for redetermination.
[6]
The redetermination ultimately came before Justice
Shore. He decided to recuse himself and the
redetermination was referred to Justice Hughes for decision.
[7]
In the meantime, the respondents appealed to this Court Justice Shore’s decision to recuse himself from the redetermination (file
A-240-10). Today this Court has dismissed that appeal.
[8]
Given our dismissal of the appeal in file A-240-10, the redetermination
was properly before Justice Hughes.
C. The
Respondents’ cross-appeal
[9]
The respondents’ cross-appeal concerns whether Justice Hughes should
have refrained from acting until this Court heard the appeal in file A-240-10.
As we have dismissed that appeal, there was no reason for Justice Hughes to
refrain from acting. Therefore, we dismiss the cross-appeal.
D. The
events leading up to the motion for
dismissal on account of mootness
[10]
One day after this Court ordered the matter to be redetermined (June 23,
2009) the ’080 Patent expired. On the following day (June 24, 2009), the
Minister granted Apotex its notice of compliance for its Apo-levofloxacin
tablets.
[11]
Apotex then brought a motion for dismissal of the respondents’ application
for prohibition. In its view, since the ’080 Patent had expired and since the
Minister had granted the notice of compliance, the application no longer served
any practical purpose. The motion for dismissal on account of mootness came on
for hearing before Justice Hughes.
E. The
dismissal on account of mootness
[12]
Justice Hughes held that the application for prohibition indeed was moot. He
exercised his discretion against hearing it. In this Court, no one challenges
these rulings.
[13]
However, in this Court, Apotex challenges the order he made. Rather than
dismissing the application, the order “terminates” the application.
[14]
It is evident that the order uses the word “terminates” in order to
prevent Apotex from bringing a later action under section 8 of the Regulation.
Section 8 of the Regulation allows an action to be brought where the
application for prohibition under subsection 6(1) is “dismissed by the court
hearing the application” (“est rejetée par le tribunal qui en est saisi”). By
“terminating” the proceeding rather than “dismissing” it, the judge seems to
have intended to prevent Apotex from later bringing a section 8 action.
[15]
In our view, this was an error. The motion to dismiss for mootness
raised only narrow issues. The parties filed memoranda of fact and law on that
basis. Also, as the court recognized, a section 8 action by Apotex was
“speculative” at the time the mootness motion was before the court. Despite
this, the court investigated during oral argument whether Apotex could later
bring a section 8 action after a decision that its prohibition application was
moot and should not be heard on its merits.
[16]
In our view, that investigation went beyond the limited scope of the
motion before the court. We also find that in these circumstances the court’s
investigation of the availability of a section 8 action was unfair to Apotex.
In our view, Apotex could not have reasonably expected that its narrow motion
for a dismissal of the prohibition application on account of mootness would
extend to the issue whether a later section 8 action was available.
[17]
The availability of a section 8 action in these circumstances should be
considered only if a section 8 action is brought. Only then, on full oral and
written argument made on a motion to dismiss or at trial, should these
arguments be entertained.
[18]
It follows, then, that the order disposing of
the motion for mootness should have dismissed the application rather than terminate
it. Dismissal is the usual disposition on a successful motion for mootness and
counsel provided no cases in which other dispositions, such as a “termination”
of the application, were made in circumstances such as these.
F. The
redetermination
[19]
Justice Hughes did not deal with the redetermination. In paragraph 38 of his
reasons for order, he held that in a redetermination ordered by this Court he
is “allowed to bring to bear all the normal considerations” in the
redetermination, including mootness. Since the matter was moot and since he
exercised his discretion against hearing the matter, he did not engage in that
redetermination.
[20]
In this Court, the respondents submitted that the matter should have
been redetermined, as ordered by this Court. We disagree. We agree with Justice
Hughes’ reasons on this point.
G. Disposition
[21]
Therefore, we would allow the appeal, dismiss the cross-appeal, set aside the
Federal Court’s order “terminating” the application in court file T-1508-05
and, instead, dismiss that application. The appellant shall have its costs both
here and below.
"David Stratas"
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