Apotex Inc. v. Pfizer Canada Inc.

Apotex Inc. v. Pfizer Canada Inc.

The motion to further amend was allowed in part: amendments asserting overbreadth based on an unsubstantiated claimed use were permitted (they disclose a reasonable defence), while the insufficiency plea that merely repackaged the Promise Doctrine lacked a reasonable prospect of success and was disallowed. The court refused to permit retroactive application of the now‑disavowed Promise Doctrine in the form of a hypothetical past invalidity (paragraph 10B was struck). Amendments were not found to cause uncompensable prejudice; costs of the motion to be borne as ordered and further costs determined after trial submissions.

Citation
2017 FC 951
Parties
Plaintiff: Apotex Inc.; Defendant / Plaintiff by Counterclaim: Pfizer Canada Inc.; Plaintiff by Counterclaim: Pharmacia Aktiebolag
Court
Federal Court
Jurisdiction
Canada
Judgment Date
25 October 2017
Procedural Posture
Patent Infringement / Patented Medicines (noc) Regulations Damages / Interlocutory Motion to Amend Pleadings (rule 75) Pre Trial
Outcome
Motion to further amend pleadings allowed in part and denied in part
Legal Topics
Utility, Promise Doctrine, Sufficiency of Disclosure (s.27(3)), Overbreadth of Claims, Amendment of Pleadings, But for Hypothetical Damages Analysis
Source Language
English
Patent Law Civil Procedure Regulatory Law Administrative Law Utility Promise Doctrine Sufficiency of Disclosure (s.27(3)) Overbreadth of Claims +2 more

Case Brief

Summary, issues, holding and outcome

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Parties

Apotex Inc.

Plaintiff

Pfizer Canada Inc.

Defendant / Plaintiff by Counterclaim

Pharmacia Aktiebolag

Plaintiff by Counterclaim

Procedural Posture

Patent Infringement / Patented Medicines (noc) Regulations Damages / Interlocutory Motion to Amend Pleadings (rule 75) Pre Trial

Legal Issues

  1. 1 Whether the proposed amendments disclose reasonable defences
  2. 2 Whether allowing the amendments would cause injustice not compensable by costs and whether the interests of justice favour allowing them
  3. 3 Whether Pfizer should recover costs arising from the amendments

Ratio Decidendi

The motion to further amend was allowed in part: amendments asserting overbreadth based on an unsubstantiated claimed use were permitted (they disclose a reasonable defence), while the insufficiency plea that merely repackaged the Promise Doctrine lacked a reasonable prospect of success and was disallowed. The court refused to permit retroactive application of the now‑disavowed Promise Doctrine in the form of a hypothetical past invalidity (paragraph 10B was struck). Amendments were not found to cause uncompensable prejudice; costs of the motion to be borne as ordered and further costs determined after trial submissions.

Court Disposition

Motion to further amend pleadings allowed in part and denied in part

Orders

  • Apotex's motion to further amend its Amended Reply and Defence to Counterclaim is allowed except that paragraph 10B is struck
  • Pfizer shall have 30 days from the date of this Order to serve and file a Further Amended Reply to Defence to Counterclaim