Docket: A-561-14
Citation: 2015 FCA 36
|
CORAM:
|
STRATAS J.A.
RYER J.A.
BOIVIN J.A.
|
|
BETWEEN:
|
|
JANSSEN INC. and MILLENNIUM PHARMACEUTICALS INC.
|
|
Appellants
|
|
and
|
|
TEVA CANADA LIMITED and MINISTER OF HEALTH
|
|
Respondents
|
REASONS
FOR ORDER
STRATAS J.A.
[1]
This appeal is from the judgment dated December
10, 2014 of the Federal Court (per Justice Barnes): 2015 FC 247.
[2]
The respondent, Teva Canada Limited, moves for
an order dismissing this appeal because it is moot. The appellants oppose the
motion. They also ask for an oral hearing on the motion.
[3]
In my view, there is no need for an oral
hearing. Typically motions such as this can be determined in writing and this
is no exception. The written representations are detailed and complete. I do
not need to ask the parties any questions. An oral hearing would serve no useful
purpose.
[4]
For the reasons that follow, I would grant the
motion and dismiss the appeal. The appeal is moot and I would not exercise my
discretion in favour of hearing it.
[5]
In the Federal Court, the appellants sought an
order under the Patented Medicines (Notice of Compliance) Regulations,
SOR/93-133 prohibiting the Minister of Health from issuing a notice of
compliance to the respondent, Teva Canada Limited, concerning a particular
compound. The proceeding arose as a result of Teva’s notice of allegation asserting
the invalidity of a patent on several grounds. The Federal Court declined to
grant prohibition.
[6]
Eight days after the Federal Court’s judgment,
on December 18, 2014, the Minister of Health issued Teva its notice of
compliance. Four days after that, on December 22, 2014, the appellants filed
their notice of appeal in this Court. They asked that the Federal Court’s
judgment be quashed and that the Minister be prohibited from issuing a notice
of compliance until patent expiry.
[7]
Asking a court to prohibit a notice of
compliance after it has issued is like asking someone to close the barn door
after the horses have escaped. A long and unquestioned line of authority from
this Court “establishes that an appeal from an order
dismissing an application for a prohibition order under the NOC Regulations
becomes moot when the notice of compliance is issued”: Biovail
Corporation v. Canada, 2006 FCA 92, 348 N.R. 117 at paragraph 5. This is
because “once the notice of compliance is issued…it is
no longer possible for the Court to prohibit the Minister from issuing the
notice of compliance”: Janssen Inc. v. Mylan Pharmaceuticals ULC,
2011 FCA 16, 88 C.P.R. (4th) 379 at paragraph 1.
[8]
Although this appeal is moot, the Court may
still exercise its discretion in favour of hearing it: Borowski v. Canada
(Attorney General), [1989] 1 S.C.R. 342 at pages 358-62, 57 D.L.R. (4th)
231; Abbott Laboratories v. Apotex, 2007 FCA 368, 371 N.R. 68 at
paragraph 3.
[9]
In almost all cases under the Patented
Medicines (Notice of Compliance) Regulations, the Court does not hear the
moot appeal. To hear it would not serve judicial economy:
A prohibition application, regardless of its
outcome, does not put an end to any substantive dispute between the parties as
to the validity or infringement of the patent or patents in issue. In practical
terms, the effect of a dismissal of a prohibition application is analogous to
the dismissal of an application for an interlocutory injunction, in the sense
that the applicant retains the right to pursue a claim for infringement.
(Abbott Laboratories, supra at
paragraph 4; see also Pfizer Canada Inc. v. Apotex Inc. (2001), 11 C.P.R. (4th) 245; 198 F.T.R. 71 at
paragraph 25 (C.A.).)
[10]
If this Court does not hear this moot appeal,
the appellants have a remedy. They may start an action for infringement: Pfizer
Canada, supra at paragraph 25. As this Court has said, “it makes little sense to hear moot appeals in [NOC]
proceedings,” especially when infringement proceedings are available: Eli
Lilly Canada v. Novopharm, 2007 FCA 359, [2008] 3 F.C.R. 449 at paragraph
35.
[11]
As best as I can see, this Court has heard a
moot appeal from the dismissal of an application for prohibition under the Regulations
only once, in an unusual situation: Abbott Laboratories v. Apotex, 2007
FCA 153, 59 C.P.R. (4th) 30. There, like here, the
notice of compliance had issued and so the request for prohibition was moot.
But in that case there was a question whether Hoffmann-La Roche & Co. Ltd. v. Commissioner of Patents, [1955] S.C.R. 414, 23 C.P.R. 1 remained good law, that question was present in
a number of cases pending in this Court and those cases were “striking” in their factual similarity to the moot appeal: Abbott,
supra at paragraph 4. In that unusual situation, this Court
exercised its discretion in favour of hearing the appeal. In the case before us, there is nothing unusual like
that.
[12]
The appellants submit that there is something
unusual. Article 9 bis of the Comprehensive Economic and Trade Agreement
between Canada and the European Union will operate to give it “equivalent and
effective rights of appeal.” It says this should prompt this Court to exercise
its discretion in favour of hearing the appeal.
[13]
I reject that submission. For one thing, it does
not answer the objection based on judicial economy, discussed above.
[14]
Further, the Comprehensive Economic and Trade
Agreement is not yet part of Canadian law because it has not been implemented
by statute: Francis v. The Queen, [1956]
S.C.R. 618 at page 621, 3 D.L.R. (2d) 641; Capital Cities Communications
Inc. v. Canadian Radio-Television Commission, [1978]
2 S.C.R. 141 at pages 172-73, 81 D.L.R. (3d) 609.
[15]
A decision-maker, such as this Court, cannot
exercise its discretion in accordance with a law that has not come into force.
This is the case even where Parliament has passed a law but it has not yet
received Royal Assent: Apotex Inc. v. Canada (Attorney General), [1994]
1 F.C. 742, 162 N.R. 177 (C.A.), aff’d [1994] 3
S.C.R. 1100.
[16]
Finally, the appellants point to the fact that
Teva has recently filed an abbreviated new drug submission concerning a new
route of administration of the same compound and has filed a corresponding
notice of allegation under the Regulations. The appellants suggest that this
creates an adversarial context that should prompt this Court to hear this moot
appeal.
[17]
I disagree. Teva’s notice of allegation is for a
different notice of compliance that would approve a new route of administration
for the compound. The appellants have not yet started a prohibition application
concerning the notice of compliance Teva seeks and so no adversarial context
has arisen there. If, however, the appellants do seek prohibition there, a new
adversarial context will arise, but it will be for that proceeding, not this
proceeding.
[18]
For the foregoing reasons, the appeal is moot
and I would not exercise my discretion in favour of hearing it. I would dismiss
the appeal with costs.
"David Stratas"
“I agree
C. Michael Ryer J.A.”
“I agree
Richard Boivin J.A.”
Email this Content