Follow-up on Viagra Patent Declared Void by the Supreme Court of Canada

In a previous issue of E-TIPS®, we summarized the Supreme Court of Canada’s decision to declare Pfizer Canada Inc.’s Canadian Patent No. 2,163,446 (the ‘446 patent) for sildenafil (the active ingredient in VIAGRA) void because the ‘446 patent failed to satisfy the disclosure requirements of the Patent Act. (see E-TIPS® Supreme Court of Canada Voids Viagra Patent November 14, 2012, Vol 11, No 10). In that article, we indicated that a declaration that the disputed patent is void is not typically available as a remedy in proceedings under the Patented Medicines (Notice of Compliance) Regulations (PM(NOC) Regulations), as the issue in PM(NOC) Regulations proceedings is whether the generic’s allegation of invalidity is justified. We indicated that the declaration that the ‘446 Patent was void may have been an oversight by the SCC since the SCC reasons for judgment did not address whether it could make such a declaration in the context of proceedings under the PM(NOC) Regulations. Pfizer has filed submissions for its motion to reconsider. Those submissions indicate that the SCC “accidently and inadvertently granted the remedy in this appeal that exceeds its jurisdiction” and requests that the SCC amend its Judgment to find the allegation of invalidity justified rather than the ‘446 Patent void. Teva Canada Limited (Teva) has opposed that motion. In its submissions, it argues that the Judgment should not be amended for a number of reasons, including that the SCC has jurisdiction to declare the ‘446 Patent void, Pfizer’s motion is moot because the Federal Court of Canada (Federal Court) has declared the ‘446 Patent void; and Pfizer has admitted in the Federal Court that the ‘446 Patent is void. Teva’s references to the Federal Court are references to an impeachment action, brought by Apotex against Pfizer to declare the ‘446 Patent invalid (Apotex Action). The Apotex Action had been scheduled to go to trial on November 26, 2012. Both Apotex and Pfizer brought motions for summary judgment in view of the SCC’s decision to void the ‘446 Patent. Apotex sought a declaration from the Federal Court that the ‘446 Patent is invalid. Pfizer sought to dismiss the action for lack of jurisdiction, or in the alternative, for mootness, relying on the SCC’s declaration that the ‘446 Patent is void. The Federal Court granted Apotex’s motion for summary judgment. It concluded that whether or not Pfizer was successful in its motion to the SCC, there was no genuine issue for trial as the only determination that the Federal Court could make is that the ‘446 Patent is invalid since the SCC found that the ‘446 Patent fails to meet the requirement of sufficient disclosure. The Federal Court dismissed Pfizer’s motion for summary judgment, concluding that the Apotex Action was not moot since it was not plain and obvious that the SCC’s declaration of invalidity would be maintained in light of Pfizer’s motion to the SCC. The Federal Court also found that it retained jurisdiction until a certificate of judgment is filed in the Patent Office, which Pfizer would be unlikely to do, until after its motion to the SCC is resolved. Summary by: Adam Lis