Docket:
A-95-14
Citation: 2014 FCA 112
Present: STRATAS
J.A.
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BETWEEN:
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JANSSEN INC.
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Appellant
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and
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ABBVIE CORPORATION, ABBVIE DEUTSCHLAND GMBH & CO. KG AND
ABBVIE BIOTECHNOLOGY LTD.
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Respondents
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REASONS
FOR ORDER
STRATAS J.A.
[1]
Janssen Inc. moves for an order staying or
suspending the remedies phase of a trial in the Federal Court. For the
following reasons, I dismiss the motion with costs.
A. Introduction
[2]
Circumstances may prompt Janssen to move again
for a stay. Some or all of the evidence filed on this motion, and no doubt
more, may be filed in that future stay motion. Also certain matters remain to
be decided by the Federal Court.
[3]
Accordingly, these reasons shall be minimal in
nature, dealing with the evidence and the law only to the extent necessary to
determine this motion.
B. The
trial in the Federal Court
[4]
The respondents (collectively "AbbVie")
sued Janssen in the Federal Court for patent infringement.
[5]
On motion brought by Janssen, a Prothonotary of
the Federal Court ordered that the trial be bifurcated. First, the Federal
Court would try the liability issues. Later, if it found liability, it would
try the issues relating to remedy.
[6]
On January 17, 2014, following a trial on the liability
issues, the Federal Court (per Justice Hughes) held that claims 143 and
222 of AbbVie's Canadian Patent No. 2,365,281 were valid and were infringed:
2014 FC 55.
[7]
Janssen has appealed the Federal Court's
decision on the liability issues to this Court. It is probable that the appeal
will be ready for hearing within the month.
[8]
However, the Federal Court's work in this matter
is not done. The issues relating to remedy must be tried.
[9]
A wrinkle here is that a Prothonotary of the
Federal Court ordered that the remedy phase be further bifurcated:
● On May 12, 2014, the
Federal Court will begin a trial on the issue whether Janssen should be enjoined
from certain conduct, including the marketing and the selling of its
medication, Stelara.
● In September 2015, the
Federal Court will conduct a trial on the issue of damages arising from
Janssen's infringement.
[10]
Janssen appealed this further bifurcation to a
judge of the Federal Court under Rule 51. That judge (again Justice Hughes)
dismissed the appeal: 2014 FC 178. Janssen has appealed further to this Court.
The appeal is pending.
C. The
bottom line
[11]
Janssen finds itself with two pending appeals in
this Court and faces a trial on injunctive relief starting on May 12, 2014. If
successful in this Court, the bottom line is that the trial on injunctive
relief either should not happen, or should not have been separated from the
damages issues.
D. The
test for a stay
[12]
The parties agree that in deciding this motion,
the Court must consider three questions:
● Does Janssen have a
serious issue to be tried on appeal?
● Will Janssen suffer
some irreparable harm?
● Does the balance of
convenience lie in Janssen's favour?
(RJR-MacDonald v. Canada (Attorney General), [1994] 1 S.C.R. 311.)
[13]
Janssen submits that this Court can grant the
stay even if the answer to one of these questions is negative. It submits that
the overall test is whether a stay is in the “interests of justice.” So, for
example, if Janssen has not shown irreparable harm, it may still be possible
for the Court to grant the stay.
[14]
I disagree. All three questions must be answered
in the affirmative. Put another way, Janssen must establish all three
requirements. I offer three reasons for this conclusion.
– I –
[15]
Although in the leading case of RJR-MacDonald the Supreme Court is not
explicit on the issue, it seems to regard an affirmative answer to all three
questions to be essential for relief.
[16]
Certainly that is the position in this Court: Chinese
Business Chamber of Commerce v. Canada, 2006 FCA 178; Glooscap Heritage Society v. Minister of National
Revenue, 2012 FCA 255 at
paragraph 33.
[17]
This Court is bound by these earlier authorities
unless it is persuaded that they are “manifestly wrong”: Miller v. Canada (Attorney General), 2002 FCA 370. I have not been so
persuaded.
– II –
[18]
Janssen cites some authorities in support of its
submission: Domco Industries Ltd. v. Armstrong Cork Canada Ltd.) (1981),
56 C.P.R. (2d) 198 (Fed. T.D.); International Corona Resources Ltd. v. LAC
Minerals Ltd. (1986), 21 C.P.C. (2d) 252 (Ont. C.A.); Longley v. Canada (Attorney General), 2007 ONCA 149. All are distinguishable. Domco and International
Corona predate RJR-MacDonald. Longley concerns the specific
wording of an Ontario Rule different from any existing in the Federal Courts
Rules.
– III –
[19]
Each branch of the test adds something
important. For that reason, none of the branches can be seen as an optional extra.
If it were otherwise, the purpose underlying the test would be subverted.
[20]
The test is aimed at recognizing that the
suspension of a legally binding and effective matter – be it a court judgment, legislation,
or a subordinate body’s statutory right to exercise its jurisdiction – is a
most significant thing: Mylan Pharmaceuticals ULC v. AstraZeneca Inc.,
2011 FCA 312 at paragraph 5. The binding, mandatory nature of law – which I
shall call “legality” – matters. Indeed, it is an aspect of the rule of law, a
constitutional principle: British Columbia v. Imperial Tobacco Canada Ltd.,
2005 SCC 49, [2005] 2 S.C.R. 473 at paragraph 58.
[21]
Therefore, a suspension or stay should be
granted only after all three branches of the test, with their associated
policies, favour a temporary suspension of legality.
[22]
I shall illustrate this by examining the
policies under each branch. Usefully, this also summarizes the law I must apply
on this motion.
[23]
On the need for a serious question to be tried,
it is true that the threshold is “a low one” and “liberal”: RJR-MacDonald,
supra at page 337; 143471 Canada Inc. v. Quebec (Attorney General),
[1994] 2 S.C.R. 339 at page 358, per La Forest J. (dissenting, with
apparent concurrence on this point from the majority). There need only be a
showing that the matter is not destined to fail or that it is “neither
vexatious nor frivolous”: RJR-MacDonald, supra at page 337. But
this cannot be an optional extra. It would be strange, indeed, if legality
could be suspended, even temporarily, in the face of a laughably weak or
hopeless case.
[24]
On the irreparable harm branch of the test, the
moving party must demonstrate in a detailed and concrete way that it will
suffer real, definite, unavoidable harm – not hypothetical and speculative harm
– that cannot be repaired later: Stoney First Nation v. Shotclose, 2011 FCA 232 at paragraphs 47-49; Laperrière
v. D. & A. MacLeod Company Ltd., 2010 FCA 84 at
paragraphs 14-22; Gateway City Church v. Canada (National
Revenue), 2013 FCA 126 at paragraphs 14-16; Glooscap Heritage Society,
supra at paragraph 31; Canada (Attorney General) v. Canada (Information
Commissioner), 2001 FCA 25 at paragraph 12.
Here again, it would be strange if a litigant complaining of harm it caused
itself, harm it could have avoided or repaired, or harm it still can avoid or
repair could get such serious relief. Similarly, it would be strange if vague
assumptions and bald assertions, rather than detailed and specific evidence,
could support the granting of such serious relief.
[25]
Under the balance of convenience branch of the
test, the public interest in favour of legality falls to be considered. In some
cases, particularly those where a law affecting millions of people might be
suspended, the public interest served by legality deserves much weight: RJR-MacDonald, supra at pages 343-347. Where the public interest
associated with legality is greater than the harm (irreparable or otherwise) or
inconvenience to be suffered by the individual litigant, the individual
litigant cannot be allowed to override legality.
[26]
In the discussion above, I do not mean to imply
that suspensions or stays are extraordinarily tough to get. Not at all: when
each of the three branches of the test is met, relief is granted. But, indeed, each
branch of the RJR-MacDonald test must be met. Each adds something essential
to the analysis.
E. Applying
the test for a stay
[27]
Has Janssen met each branch of the test for a
stay? Should the Federal Court be stopped at this time from embarking upon the
remedial phase of the trial until this Court determines the appeals before it?
[28]
I answer these questions in the negative. It is
only necessary to examine the issue of irreparable harm.
F. Has
Janssen established the presence of irreparable harm?
[29]
Janssen brought the motion to bifurcate the
liability and remedies issues. It got the order it sought: Order of
Prothonotary Aalto dated September 26, 2011. In seeking the bifurcation order,
Janssen understood that one factor in favour of bifurcation was that the remedial
phase would happen quickly, with, at most, only a “modest delay”: see Order,
pages 5 and 8.
[30]
In short, Janssen got what it wanted and what it
could reasonably expect – the prompt beginning of a remedial phase that would
cause it to incur management time and legal and other costs. To the extent that
this is harm, it is harm it brought upon itself by asking for bifurcation in
these circumstances. It is avoidable harm.
[31]
Janssen must point out some irreparable harm
associated with bifurcation that is beyond the usual consequences of the
bifurcation it sought and received: Laperrière, supra at
paragraph 21. This it has not done.
[32]
True, the issue of an injunction has been separated out and it is
being dealt with more quickly than perhaps Janssen actually anticipated. But the action has been case-managed throughout. Janssen can
hardly be surprised that after the determination of the liability phase, the
case-management Prothonotary looked at the remedial phase and decided which
remedial issues should be heard first, and when. To reiterate, in terms of
bifurcation, Janssen got what it wanted and what it could reasonably expect.
[33]
In its submissions on irreparable harm, Janssen emphasized
the suffering of patients who will not be able to use its medication, Stelara.
But at present, patients can still use Stelara. That may change depending on
how the Federal Court determines the issue of injunction.
[34]
The Federal Court might grant an injunction on
terms that protect patients. It might grant an injunction on other terms that
reduce or eliminate the harm to patients or, for that matter, other harms that
Janssen could suffer. Or it might not grant the injunction at all. Right now,
any harm to patients, or for that matter to Janssen, is speculative and
hypothetical.
[35]
On the issue of harm to patients, AbbVie submits
that the only admissible irreparable harm is that suffered by the moving party:
see, e.g., Manitoba (Attorney General) v. Metropolitan Stores
(MTS) Ltd., [1987] 1 S.C.R. 110 at page 128. Janssen disagrees and submits that
such harm is admissible because the patients are dependent upon it, the moving
party: see, e.g., Holy Alpha and
Omega Church of Toronto v. Attorney General of Canada, 2009 FCA 265 at paragraph 17; Glooscap
Heritage Society, supra at paragraph 34. Given my comments, above, I
need not resolve this issue.
G. Disposition
[36]
Janssen’s motion
will be dismissed with costs.
"David Stratas"
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