[2013] 1 F.C.R. D-12
Patents
Practice
Appeal from Federal Court decision (2012 FC 767) granting order sought by respondents prohibiting Minister of Health from issuing notice of compliance (NOC) to appellant (Apotex Inc.) pursuant to Patented Medicines (Notice of Compliance) Regulations, SOR/93-133, s. 6 with respect to respondents’ ophthalmic drug APO-BRIMONIDINE-TIMOP until expiry of Patent No. 2440764—Appeal arising in unusual manner since, while Federal Court holding that appellant’s allegation of invalidity on grounds of obviousness justified, that prerequisite for issuance of prohibition order sought not established, nevertheless issuing order—In so doing, Federal Court adhering to previous Federal Court judgment (Allergan Inc. v. Canada (Health), 2011 FC 1316) in another NOC proceeding involving same patent even though expressly disagreeing with reasons, conclusion reached therein—Decision resulting in two different constructions of same patent—Federal Court adopting unusual course to ensure concerns regarding application of doctrine of comity in NOC proceedings context could be addressed on appeal—Whether Federal Court could grant prohibition to further objective of clarifying case law—Not open to Federal Court to grant prohibition in circumstances specified herein—Federal Court lumping notions of comity, abuse of process in NOC proceedings together but not useful to attempt to resolve issues of comity by reference to different concept not at issue in present case—Contrary to Federal Court’s view, decisions of Federal Court of Appeal on abuse of process not inconsistent—Not open to Federal Court to issue prohibition order for purpose of having concerns about use of doctrine of comity, notion of abuse of process addressed by Court—Parties entitled to have dispute settled on merits—By issuing formal judgment contrary to conclusions reached on merits, Federal Court failing in its task—Doctrine of comity not applying to findings of fact—Finding that invention obvious because solution proposed plain to see constituting factual finding—Federal Court not identifying any error nor relying on distinct evidence to explain diverging view on construction of patent at issue—Simply choosing to construe patent differently—While Federal Court issuing prohibition order for wrong reason, order nevertheless properly issued—Appeal dismissed.
Allergan Inc. v. Canada (Health) (A-312-12, 2012 FCA 308, Noël J.A., judgment dated November 23, 2012, 33 pp.)