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AstraZeneca’s Attempt to Vary Judgment Based on Subsequent Finding of Infringment Rejected

In 2012, Justice Hughes held that Apotex was entitled to section 8 damages by reason of AstraZeneca’s unsuccessful prohibition application in respect of Apo-omeprazole and AstraZeneca’s 762 Patent and referred the quantum of Apotex’ damages to a reference. In his reasons accompanying the 2012 Judgment, Justice Hughes held that Apotex’ possible infringement of a different AstraZeneca Patent, the 693 Patent, was not relevant as a defence to Apotex’ section 8 claim. Justice Hughes’ 2012 Judgment provided, in relevant part:

  1. Apotex is entitled to be compensated for loss suffered by it by reason of the proceedings taken by AstraZeneca in T-2311-01 for the period from January 3, 2002 until December 30, 2003 under the provisions of subsection 8(1) of the NOC Regulations;
  2. There is no basis for an exercise of judicial discretion under subsection 8(5) of the NOC Regulations to reduce or refuse an award of such compensation;

An appeal of Justice Hughes’ 2012 Judgment was dismissed by the Court of Appeal.

Subsequently, Justice Barnes found that Apotex did infringe the 693 Patent (2015 FC 322 and amended reasons 2015 FC 671 (see our previous post here)). AstraZeneca then brought a motion seeking to vary points 1 and 2 of Justice Hughes’ 2012 Judgment as follows:

  1. Apotex is entitled to be compensated for loss suffered by it by reason of the proceedings taken by AstraZeneca in T-2311-01 for the period from January 3, 2002 until December 30, 2003 under the provisions of subsection 8(1) of the NOC Regulations, and in determining said loss, the reference Judge may have regard to the Judgement of Justice Barnes dated March 16, 2015 in Court Files T-1409-04 and T-1890-11;
  2. The reference Judge may have regard to the Judgment of Justice Barnes dated March 16, 2015 in Court Files T-1409-04 and T-1890-11 in exercising discretion There is no basis for an exercise of judicial discretion under subsection 8(5) of the NOC Regulations to reduce or refuse an award of such compensation;

In June 2016, Justice Hughes dismissed AstraZeneca’s motion to vary the 2012 Judgment on several bases, including that AstraZeneca’s motion was premature, it was for the Court of Appeal (and not the Federal Court) to deal with any amendment, and the fact that the “might happen” scenario considered in his 2012 Judgment did happen, was not a reason to amend his judgment under Rule 399(2)(a).

AstraZeneca again appealed. On appeal, Justice Dawson agreed that no matter had arisen after the 2012 Judgment requiring a varying of the original Order:

13  Justice Hughes’ principal reason for dismissing the motion was that in his original decision he had expressly considered the scenario where Apotex might later be found to have infringed another patent. Further, this Court had agreed with his conclusion that it would be for the Judge in the infringement action to ensure a party is neither over nor under compensated for its loss. Thus, Justice Hughes wrote the “only thing that has now happened is that the ‘might happen’ scenario considered by me and the Court of Appeal has become a reality. That makes no difference. The ‘reality’ has already been considered and a determination made. Nothing changes.”

Justice Dawson, however, disagreed on the issue that the original motion to vary should have been brought before the FCA. Since the appeal of the 2012 Judgment was dismissed (as opposed to set aside), the “person best placed to decide whether the newly discovered matters would have affected the original judgment is the original decision-maker.”

A copy of the Federal Court of Appeal’s decision dismissing AstraZeneca’s appeal may be found here.

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