Date:
20121205
Docket:
A-81-12
Citation:
2012 FCA 323
CORAM: NADON
J.A.
SHARLOW
J.A.
DAWSON J.A.
BETWEEN:
APOTEX
INC.
Appellant
and
WARNER-LAMBERT COMPANY LLC
AND PARKE, DAVIS & COMPANY
LLC
Respondents
REASONS FOR JUDGMENT
OF THE COURT
(Delivered
from the Bench at Toronto, Ontario, on December 5, 2012)
NADON J.A.
[1]
We
are all agreed that the application judge erred in allowing the respondents’
motion to dismiss part of an impeachment action commenced by the appellant on
August 4, 2009, in which the appellant seeks, inter alia, a declaration
that patents 1,341,330 (“the 330 patent”) and 1,331,615 (“the 615 patent”) are
invalid. In concluding as he did, the judge ordered that the appellant’s action
be dismissed to the extent that it was based on the 615 patent.
[2]
Because
the 615 patent expired in August 2011, the parties agreed, and the judge so
held, that to the extent that the appellant’s action is grounded thereon, it is
moot. However, the appellant asserts that its action should be allowed to
continue in regard to both patents since an adversarial context mains between
the parties. More particularly, the appellant says that a dismissal of its
action will affect the rights which it intends to assert in an action to be commenced
pursuant to An Act Concerning Monopolies and Dispensation with Penal Laws,
etc., RSO 1897, c. 323 (the “Statute of Monopolies”), and in
proceedings for damages under section 8 of the Patented Medicines (Notice of
Compliance) Regulations, SOR/93-133 (“the PMNOC Regulations”).
[3]
In
other words, the appellant argues that a declaration of invalidity of the 615
patent is a necessary condition to the success of the proceedings which it
intends to commence. Consequently, the appellant says that its action ought to
be allowed to go to trial and judgment on the merits.
[4]
In
our view, the judge erred in failing to state a conclusion with regard to the
effect of the dismissal of the appellant’s action on its rights under the Statute
of Monopolies.
[5]
In
Gilbert Surgical Supply Co. Ltd. and Gilbert v. Frank W. Horner Ltd.
(1960), 34 C.P.R. 17 (“Gilbert”), where the invalidity of a patent was
the basis upon which an action had been commenced under the Statute of
Monopolies, the Ontario Court of Appeal concluded that although the action
was a novel one, it could not be said that it was bereft of any possibility of
success. We see no basis to take a position which differs from the view taken
by the Ontario Court of Appeal in Gilbert.
[6]
Counsel
for the respondents brought to our attention the decision of Peck v. Hindes
(1898), 15 R.P.C. 113 (“Peck”), a decision of the Queen’s Bench division
of the English High Court of Justice. Counsel for the respondents says that
that decision, rendered on January 15, 1898, stands for the proposition that an
action of the type which the appellant seeks to commence under the Statute
of Monopolies, (which statute, according to the Ontario Court of Appeal, “reproduces
in somewhat altered form, the original Statute of Monopolies enacted in
1624, 21 Jac. I, c. 3, which appeared as c. 1 of the Statutes of Upper Canada,
1792” (Gilbert, page 20)), is bound to fail.
[7]
Be
that as it may, that decision does not change our view that we see no basis to
take a position contrary to that taken by the Ontario Court of Appeal in Gilbert
and, hence, that the appellant’s action is not one that cannot possibly
succeed.
[8]
Had
the judge considered the effect on the appellant’s rights, in the light of the Statute
of Monopolies and the decision of the Ontario Court of Appeal in Gilbert,
he would, in our respectful opinion, have had to conclude that the appellant’s
rights would be affected by a dismissal of its action and that it was
appropriate, in the circumstances, to allow it to continue with the impeachment
action of both the 330 and the 615 patents.
[9]
We
are satisfied that the use of scarce judicial resources does not outweigh the
effect of the dismissal of the applicant’s action on its rights arising under
the Statute of Monopolies.
[10]
As
a result, we need not address any of the issues argued with respect to the interpretation
of section 8 of the PMNOC Regulations.
[11]
We
will therefore allow the appeal, set aside the judgment of the Federal Court,
and rendering the judgment which ought to have been rendered, we will dismiss
the respondents’ motion for the dismissal of the appellant’s action. The
appellant shall have its costs throughout.
“M. Nadon”
FEDERAL COURT OF
APPEAL
NAMES OF COUNSEL AND
SOLICITORS OF RECORD
DOCKET: A-81-12
(APPEAL
FROM A JUDGMENT OF THE HONOURABLE MR. JUSTICE LEMIEUX OF THE FEDERAL COURT,
DATED FEBRUARY 10, 2012, IN DOCKET NO. T-1252-09)
STYLE OF CAUSE: APOTEX INC. v.
WARNER-LAMBERT COMPANY LLC AND PARKE, DAVIS & COMPANY LLC
PLACE OF HEARING: Toronto, Ontario
DATE OF HEARING: December
5, 2012
REASONS FOR JUDGMENT
OF THE COURT BY: (NADON,
SHARLOW & DAWSON JJ.A.)
DELIVERED FROM THE
BENCH BY: NADON
J.A.
APPEARANCES:
|
Andrew
Brodkin
Michel
Anderson
|
FOR
THE APPELLANT
|
|
Andrew
Brenstein
Alexandra
Peterson
|
FOR
THE RESPONDENTS
|
SOLICITORS
OF RECORD:
|
Goodmans
LLP
Toronto, Ontario
|
FOR THE APPELLANT
|
|
Torys
LLP
Toronto, Ontario
|
FOR THE RESPONDENTS
|
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