Pharmascience Inc. v. Sanofi-Aventis Canada Inc., 2006 FCA 210

Date: 20060607

Docket: A-155-05

Citation: 2006 FCA 210

Present:           SEXTON J.A.

                        SHARLOW J.A.

                        MALONE J.A.

BETWEEN:

PHARMASCIENCE INC.

Appellant

and

SANOFI-AVENTIS CANADA INC.

and SANOFI-AVENTIS DEUTSCHLAND GmbH

Respondents

and

THE MINISTER OF HEALTH

and SCHERING CORPORATION

Respondents

Heard at Montréal, Quebec, on June 7, 2006.

Order delivered from the Bench at Montréal, Quebec, on June 7, 2006.

REASONS FOR ORDER OF THE COURT BY:                                                        SHARLOW J.A.

Date: 20060607

Docket: A-155-05

Citation: 2006 FCA 210

BETWEEN:

PHARMASCIENCE INC.

Appellant

and

SANOFI-AVENTIS CANADA INC.

and SANOFI-AVENTIS DEUTSCHLAND GmbH

Respondents

and

THE MINISTER OF HEALTH

and SCHERING CORPORATION

Respondents

REASONS FOR ORDER OF THE COURT

(Delivered from the Bench at Montréal, Quebec, on June 7, 2006)

SHARLOW J.A.

[1]                On June 1, 2006, the appellant Pharmascience Inc. filed a notice of motion, which was heard at the commencement of the hearing of this appeal on June 7, 2006. Pharmascience seeks from this Court an order that Canadian Patent Number 1,341,206 (the 206 patent) is invalid and incapable of supporting an order under the Patented Medicines (Notice of Compliance) Regulations, SOR/93-133 (the NOC Regulations), prohibiting the Minister of Health from issuing a notice of compliance to Pharmascience for its ramipril product until the expiry of the 206 patent. In the alternative, Pharmascience seeks an order to the effect that it is an abuse of process for the respondents Sanofi-Aventis Canada Inc. and Sanofi-Aventis Deutschland GmbH (the Aventis respondents) to continue to argue in this appeal that the 206 patent is valid. The Aventis respondents and the respondent Schering Corporation filed motion records opposing the motion. However, it was not necessary to hear their oral submissions.

[2]                The Aventis respondents are the licensees of the 206 patent. Although the notice of motion does not mention Schering, it is the owner of the 206 patent and, as a party to this appeal, is also asserting the validity of the 206 patent.

[3]                The factual foundation for the motion is the decision of Justice Mactavish in Aventis Pharma Inc. v. Apotex Inc., 2005 FC 1283 (affirmed 2006 FCA 64), in another case involving proceedings under the NOC Regulations relating to the 206 patent. Pharmascience says that Justice Mactavish "found the 206 patent to be invalid".

[4]                In fact, Justice Mactavish did not find the 206 patent to be invalid. She dismissed the application of Aventis for an order prohibiting the Minister from issuing a notice of compliance to Apotex for its proposed product, because she found that Apotex was justified in asserting, in its notice of allegation, that the 206 patent is invalid for lack of sound prediction. That is not and cannot be a final determination as to the validity of the 206 patent. Richard C.J., following a long and consistent line of authority, said this in Aventis (2006 FCA 64 at paragraph 10):

... NOC proceedings are summary and do not determine the validity of a patent, but only whether the NOA is justified, and an order of prohibition should issue.

[5]                Therefore, the motion for an order in this appeal that the 206 patent is not valid cannot rest on the judgment of Justice Mactavish, or on this Court's confirmation of her judgment.

[6]                Pharmascience's alternative ground for the motion is that it is an abuse of process for the Aventis respondents to continue to assert the validity of the 206 patent in the face of the confirmed decision of Justice Mactavish. There is no merit to that argument. In this case, Pharmascience made an allegation of invalidity on the basis of double patenting, not on the basis of lack of sound prediction. The Aventis respondents cannot be faulted for failing to respond to an allegation of invalidity that Pharmascience did not make.

[7]                For these reasons, the motion of Pharmascience will be dismissed.

[8]                Costs of the motion will be fixed at $4,000 inclusive of disbursements, payable as to $2,000 to the Aventis respondents and $2,000 to the defendant Schering Corporation.

"K. Sharlow"

FEDERAL COURT OF APPEAL

NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                                                                               A-155-05

(INTERLOCUTORY MOTION ON BEHALF OF THE APPELLANT)

STYLE OF CAUSE:                                                             PHARMASCIENCE INC.

                                                                                                and

SANOFI-AVENTIS CANADA INC. ET AL.

PLACE OF HEARING:                                                         Montréal, Quebec

DATE OF HEARING:                                                           June 7, 2006

REASONS FOR ORDER OF THE COURT BY:                (SEXTON, SHARLOW, and MALONE JJ.A.)

DELIVERED FROM THE BENCH BY:                             SHARLOW J.A.

APPEARANCES:

SOLICITORS OF RECORD: