On to the next round: Some of Apotex’s claims for being kept off the sildenafil market survive motion to strike

In Apotex Inc. v. Pfizer Ireland Pharmaceuticals et al., 2016 ONSC 4966, Pfizer was looking to strike out claims brought against it by Apotex under the PM(NOC) Regulations and the Trade-marks Act, as well as claims for unjust enrichment, nuisance, contrary to the principle in Ashby v. White (1703), 2 Raym. Ld. 938 and conspiracy.

In November 2012, the Supreme Court in Teva Canada Ltd. v. Pfizer Canada Inc.,determined that Pfizer’s Canadian Patent No. 2,163,446 was insufficient.  Apotex’s claims in this case were based on its submissions that 446 Patent should never have issued, such that Pfizer, improperly keep Apotex off the market.

Justice Lederman, followed the ruling of the Federal Court of Appeal in Eli Lilly Canada Inc. v. Apotex Inc.,  struck out Apotex’s claim under section 8 of the PM(NOC) Regulations as the prohibition application against Apotex had been successful, and therefore they had not met the statutory test under the Regulations.

The Court, following its previous decision in Apotex v. Schering allowed Apotex’s Trade-marks Act claim to continue as it was unclear whether the PMNOC Regulations contain only a limited remedy for damages done to a generic or a complete code.

For unjust enrichment, Justice Lederman distinguished the decision of the Ontario Court of Appeal in Apotex Inc. v. Eli Lilly holding that Apotex’s pleading, which was not seeking a disgorgement of Pfizer’s profits, was not doomed to fail:

[34] Although it may be said that Apotex does not plead the various required elements of its unjust enrichment claim with precision, it does plead that there has been an enrichment to the defendant, a corresponding deprivation suffered by the plaintiff and the absence of a juristic reason justifying the enrichment and deprivation.

[35] The Court of Appeal in Apotex Inc. v. Eli Lilly 2015 ONCA 305 struck the unjust enrichment claim there because the pleading failed to assert a proper deprivation. Here, 2016 ONSC 4966 (CanLII) however, Apotex’s pleading in this case is significantly different in that, rather than claiming disgorgement of Pfizer’s monopolistic profits, it claims only that portion of Pfizer’s revenues that represent the revenues Apotex was deprived of because of the delay in obtaining its Notice of Compliance. Given this difference in pleading, it cannot be said that Apotex’s unjust enrichment claim is doomed to fail.

Pfizer argued that Apotex had not plead the requisite elements of nuisance. The Court disagreed, following the Supreme Court of Canada in  in St. Pierre v. Ontario (Minister of Transport & Communications), which held that the plaintiff must establish two elements – special damages and unreasonable interference. Holding that Apotex had plead these requisite elements, Justice Lederman declined to  strike the claim.

As for the claim under Ashby v. White, the Court struck the claim as the “principle borrowed from that case – “no right without a remedy” – is simply a phrase, a principle or a maxim.  By itself, it does not disclose a cause of action and should be struck.”

Lastly, the Court held that the claim for conspiracy stands as Apotex pleaded the requisite elements including an unlawful act, in which Apotex claims Pfizer was restraining trade, monopolizing the sildenafil market, knowingly procuring an invalid patent, and enforcing an invalid patent.

A copy of the decision can be found here.