Digests

Eli Lilly and Co. v. Apotex Inc.

T-1100-97

2004 FC 206, Aronovitch P.

11/2/04

13 pp.

Meaning of "grave consequences" in context of patent infringement action--Lilly moving to amend statement of claim seeking various relief on account of "grave consequences", on basis Court indicated on numerous occasions that there would be such consequences to generic drug manufacturer who sends misleading notice of allegation (NOA) to innovator in order to obtain approval to market generic drug--Lilly alleging Apotex's two NOAs inaccurate, misleading--Apotex instituted ongoing action, pursuant to Patented Medicines (Notice of Compliance) Regulations (Regulations), s. 8, in Court File T-320-01, claiming damages arising as result of losses suffered during period it was left off market due to Lilly's prohibition application under Regulations, s. 6(1)--On basis of allegations NOAs inaccurate and misleading, Lilly claims additional relief in respect of "grave consequences" i.e. stay of Apotex's s. 8 action, and such other unspecified relief as Court may grant for "grave consequences" and patent infringement--Nothing in case law suggesting warning of "grave consequences" to generic manufacturer anything other than foreboding of potential liability for additional or aggravated penalties known at law, and presently available on account of patent infringement-- "Grave consequences" not independent cause of action-- Concept of "cause of action" stated by Lord Justice Diplock in Letang v. Cooper, [1965] 1 Q.B. 232 (C.A.) as: "factual situation which entitles one person to obtain from the Court a remedy against another person"--Also legal component--As matter of law allegations of misleading or inaccurate NOA, of themselves not facts justifying or giving rise to defined remedy in action that can be prosecuted in respect of that cause of action alone--"Grave consequences" cannot be grafted onto patent infringement as incidental to it for same reason--No indication in case law grave consequences may amount to separate, new or unspecified forms of relief--No suggestion in Court's premonition of grave consequences that plaintiff's claims for misleading NOA cannot be adequately addressed by existing forms of relief available in patent infringement action--Allegations attracting "grave consequences" will not found novel or even any cause of action at law, and "grave consequences" no more than forms of relief currently available for patent infringement--As to s. 8 action, Apotex most strenuously opposing addition to relief sought of declaration Apotex precluded from seeking relief for any delay in issuance of notice of compliance, in s. 8 action or, permanently staying any such proceedings--Plaintiffs arguing Federal Court has jurisdiction to formulate remedies as appropriate at law and equity, where it has jurisdiction over subject-matter before it, such as patent infringement and matters ancillary to patent infringement--Extraordinary power to stay proceeding in another Court requires express language to that effect--Absent such express authority, stay of proceedings clearly order by which Court stays or suspends own proceeding not that of another Court--Superior courts do not order each other about or make orders interfering with each others' process--Federal Courts Act, s. 50 providing explicit jurisdiction to stay proceedings--Not statutory basis for Federal Court sitting in patent infringement case to order stay of separate s. 8 action, potentially at trial stage, as presided over by another judge of Federal Court, even though such proceeding involving same parties, similar evidence-- No case law where stay of Federal Court action brought or granted in this Court in proceeding other than one sought to be stayed--Relief sought by plaintiffs not available--Patented Medicines (Notice of Compliance) Regulations, SOR/93-133, ss. 6(1) (as am. by SOR/98-166, s. 5), 8 (as am. idem, s. 8)-- Federal Courts Act, R.S.C., 1985, c. F-7, ss. 1 (as am. by S.C. 2002, c. 8, s. 14), 50 (as am. idem, s. 46).