Apotex Inc. v. Warner-Lambert Company LLC

Apotex Inc. v. Warner-Lambert Company LLC

The court held the expiry of the '615 patent rendered the portion of Apotex's impeachment action concerning that patent moot and Apotex failed, on a balance of probabilities, to establish collateral consequences under section 8 of the NOC Regulations or a non-speculative remedy under the Ontario Monopolies Act; accordingly the court declined to exercise its discretion to decide the moot issue and granted the defendants' motion to dismiss that part of the action with costs.

Citation
2012 FC 202
Parties
Plaintiff: Apotex Inc.; Defendants: Warner-Lambert Company LLC and Parke, Davis & Company LLC
Court
Federal Court
Jurisdiction
Canada
Judgment Date
10 February 2012
Procedural Posture
Patent Impeachment Action Under the Patented Medicines (noc) Regulations and Patent Act / Motion to Dismiss for Mootness and Lack of Standing; Pre Trial (trial Scheduled)
Outcome
Defendants' motion granted; part of Apotex's impeachment action grounded on the expired '615 patent dismissed with costs to the defendants.
Legal Topics
Mootness, Standing, NOC Regulations S.8 (damages), Impeachment Action, Judicial Discretion, Rule 399 Federal Courts Rules, Ontario Monopolies Act
Source Language
English
Patent Law Administrative/regulatory Law Civil Procedure Mootness Standing NOC Regulations S.8 (damages) Impeachment Action Judicial Discretion +2 more

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Parties

Apotex Inc.

Plaintiff

Warner-Lambert Company LLC and Parke, Davis & Company LLC

Defendants

Procedural Posture

Patent Impeachment Action Under the Patented Medicines (noc) Regulations and Patent Act / Motion to Dismiss for Mootness and Lack of Standing; Pre Trial (trial Scheduled)

Legal Issues

  1. 1 Whether the part of Apotex's impeachment action concerning the expired '615 patent is moot
  2. 2 Whether Apotex will suffer collateral consequences that justify the Court hearing a moot claim (practical effect test)
  3. 3 Whether s.8 of the NOC Regulations permits 'reach-back' damages after patent expiry or issuance of an NOC

Ratio Decidendi

The court held the expiry of the '615 patent rendered the portion of Apotex's impeachment action concerning that patent moot and Apotex failed, on a balance of probabilities, to establish collateral consequences under section 8 of the NOC Regulations or a non-speculative remedy under the Ontario Monopolies Act; accordingly the court declined to exercise its discretion to decide the moot issue and granted the defendants' motion to dismiss that part of the action with costs.

Court Disposition

Defendants' motion granted; part of Apotex's impeachment action grounded on the expired '615 patent dismissed with costs to the defendants.

Orders

  • That part of Apotex's impeachment action grounded on the '615 patent is dismissed.
  • Defendants awarded costs.