Ontario Court Struck Apotex’s Section 8 Claim While Maintaining Other Claims

On August 8, 2016, in Apotex Inc v Pfizer Ireland Pharmaceuticals, 2016 ONSC 4966, the Ontario Superior Court of Justice (ONSC) struck Apotex’s Section 8 claim while dismissing Pfizer’s motion to strike Apotex’s other damages claims.

In this action, Apotex sought damages for being kept out of the market by reason of Pfizer’s VIAGRA® patent which later was found to be invalid.  Apotex had asserted statutory claims under (a) section 8 of the Regulations; (b) the Statutes of Monopolies; and (c) section 7 the Trade-marks Act, and common law claims for: (a) unjust enrichment; (b) nuisance; (c) under the principle in Ashby v. White; and (d) conspiracy.  Pfizer sought to strike all of Apotex’s claims except for the Statutes of Monopolies claim presumably in light of the recent ONSC jurisprudence holding such claims to be viable (Apotex Inc v Eli Lilly, 2015 ONSC 5396, previously reported in E-TIPS Newsletter); Apotex Inc v Schering Corporation, 2016 ONSC 3407).

The ONSC struck Apotex’s Section 8 claim, following Eli Lilly Canada Inc v Apotex Inc, 2013 FCA 282 holding that a subsequent invalidity finding does not retroactively give rise to a Section 8 claim. The ONSC also held that Apotex’s claim under the old English authority of Ashby v White must fail as the maxim “no right without remedy” would not provide an independent cause of action.

The ONSC found that it was not “plain and obvious” that the remainder of Apotex’s damages claims were doomed to fail.

Summary By: Meenakshi Lakhanpal