By an Order dated June 15, 2017, the Federal Court (FC) dismissed Apotex’s motion seeking to strike a patent infringement action brought by Otsuka Canada Pharmaceutical, Otsuka Pharmaceutical and Bristol-Myers Squibb Canada (collectively, Otsuka) regarding several patents relating to aripiprazole (ABILIFYTM).

Apotex brought the motion arguing that Otsuka’s claim of infringement was quia timet and was not supported by any material facts. The FC dismissed Apotex’s motion. In particular, the FC noted that in order for Otsuka’s quia timet claim to survive, “there must be material facts relating to Apotex having a deliberate intention to engage in infringing activities, that the infringing activity must be imminent and not speculative, and that the damage suffered by Otsuka must be substantial if not irreparable”. In this regard, the FC was satisfied that the claim pleaded the necessary material facts, including: (a) Apotex’s service of a very lengthy notice of allegation and Otsuka’s commencement of a proceeding under the Patented Medicines (Notice of Compliance) Regulations in response; (b) future damages in excess of $50,000.00 claimed by Otsuka; and (c) Apotex’s on-going manufacture of its aripiprazole tablets, although these tablets were for use outside of Canada.

Summary By: Junyi Chen

E-TIPS® ISSUE

17 09 06