Putting Your (Other) Best Foot Forward: Party May Introduce New Evidence or Argument in Subsequent Infringement Action

On September 19, 2016, Prothonotary Tabib granted, in part, Apotex’ motion to amend its statement of defence and counterclaim in an infringement action concerning Apotex’ Apo-Travoprost Z product. Apotex moved to add an allegation of anticipation, a defence of ex turpi causa based on anti-competitive conduct and two defences based on issue estoppel, abuse of process and the doctrine of election arising from a prior PM(NOC) proceeding involving the same patent.

At the hearing of the motion, the parties agreed that the ex turpi causa defence related solely to a bifurcated issue and consented to an order dismissing Apotex’ motion in respect of that defence. Prothonotary Tabib allowed Apotex’ allegation of anticipation finding that the amendment was sufficiently particularized, had a reasonable prospect of success and that the delay in raising the allegation was not prejudicial and would not delay or disrupt the trial.


In considering Apotex’ proposed amendments based on issue estoppel, cause of action estoppel and abuse of process, Prothonotary Tabib relied on the Court of Appeal’s decision in Sildenafil 2011. Prothonotary Tabib reiterated that (1) cause of action estoppel does not apply between a PM(NOC) proceeding and a subsequent action; (2) defences of issue estoppel, abuse of process and others cannot apply with respect to the validity of a patent; and (3) while issue estoppel or abuse of process can apply to prevent re-litigation of certain legal and factual issues, it is only where the evidence and argument are the same:

[22] The Federal Court of Appeal, after conducting a thorough review of the jurisprudence, ruled in Apotex v Pfizer Ireland Pharmaceuticals, 2011 FCA 77 (Sildenafil 2011) that issue estoppel or abuse of process could apply to prevent a party from re-litigating or re-arguing, in an action, the conclusions of fact reached in a prior NOC proceedings “on the same evidence, with the same arguments” as were adduced in the prohibition proceedings. The Federal Court of Appeal, however, explicitly reaffirmed the existing and consistently upheld principles that res judicata, “in the sense of cause of action estoppel, the doctrine that a party cannot relitigate a cause of action that has already been dealt with”, does not apply between an NOC proceeding and a subsequent action (at paragraph 18), and that the defences of issue estoppel, abuse of process and others “cannot apply in respect of the question of a patent’s validity” (at paragraph 19). To the extent issue estoppel or abuse of process can apply, it is only in respect of certain factual and legal issues, and then only in the absence of a different evidentiary record or significant new argumentation.

[23] The reasoning of the Court of Appeal in Sildenafil 2011 expressly recognizes and affirms the ability of a party to introduce new evidence or to raise new argument in a subsequent action to argue for a different conclusion than was reached in the earlier NOC proceeding, and in fact mandates the trial judge in such circumstances to reconsider the issue in light of the full record before him or her (paragraph 25).

Based on the Court of Appeal’s jurisprudence, Prothonotary Tabib dismissed Apotex’ proposed defence based on cause of action estoppel. Prothonotary Tabib did, however, allow Apotex’ other estoppel based defences after striking wording from the plea that purported to preclude Alcon from leading evidence different from that led in the PM(NOC) proceeding. 


Apotex’ defence of election was based on Alcon’s choice to commence a PM(NOC) application and enjoy the benefits of a 24 month stay and a choice on the evidence it led in the PM(NOC) proceeding. Prothonotary Tabib noted that the defence was, in essence, an attempt to preclude Alcon from commencing an infringement action following a PM(NOC) proceeding and an attempt to preclude Alcon from leading different evidence in the infringement action.

In denying Apotex leave to include its defence of election Prothonotary Tabib held that the defence failed to disclose an arguable defence as it sought a result that is contrary to the specific and established law that a party can commence an infringement action following a PM(NOC) proceeding and that a party is not precluded from leading new evidence or making new arguments in a subsequent action.

A copy of Prothonotary Tabib’s Order and Reasons can be found here.