On January 11, 2019, in Apotex Inc. v Schering Corporation (2019 ONSC 299), Justice Dunphy of the Ontario Superior Court refused to schedule Schering and Sanofi-Aventis’ (collectively “Sanofi”) motion for summary judgment on the issue of Apotex’s claim for compensation under the Ontario Monopolies Act, U.K. Monopolies Act and Trade-marks Act (collectively “Monopolies Act”).
The litigation relates to the Canadian Patent No. 1,341,206 (the “206’ Patent”), held by Schering and licensed by Sanofi, that was found invalid based on a lack of utility under the now rejected promise doctrine. After obtaining $215 million in damages against Sanofi involving the Ramipril drug under the PM(NOC) Regulations, Apotex brought a novel claim for further compensation under the Monopolies Act.
In dismissing Sanofi’s motion request, Justice Dunphy took the view that permitting the case to proceed to a hearing would offer higher courts the opportunity to hear multiple cases, as other similar pending claims have been brought by Apotex. A substantial issue between the parties had recently been re-opened when the Ontario Court of Appeal ruled that Sanofi ought to be allowed to amend its pleadings to contest the invalidity of the 206’ Patent (previously reported in E-TIPS® here). Since then Apotex applied for leave to appeal that ruling to the Supreme Court of Canada. Justice Dunphy acknowledged the complexity of the litigation, stating that parties will “have to get out their shovels and start digging to get through the piles of work necessary to get this matter heard on the merits and on all issues in a single forum.”
Summary By: Anna Troshchynsky