Digests

Decision Information

Decision Content

PATENTS

Infringement

AB Hassle v. Rhoxalpharma Inc.

T-1447-00

2002 FCT 780, Gibson J.

12/7/02

26 pp.

Applicants seeking to prohibit Minister from issuing Notice of Compliance (NOC) to respondents for drug omeprazole-- Respondents manufacturing generic version of drug, claiming to not infringe patent--Patented use of drug for treatment of Campylobacter bacterial infections, also known as H. pylori infections--Respondent not seeking market approval for use of drug in treatment of Campylobacter infections; listing other indications in notice of allegation (NOA)--Evidence showing doctors and pharmacists prescribe drug for condition whether or not listed as indication--Two sequential NOAs before Court identical, except second omitting Campylobacter infections as indication--Applications separate, distinct, not abuse of process--Not required for NOA and New Drug Submission (NDS) submitted to Minister to be in strict concordance--Respondent intended to modify NDS and in fact did so--Respondent not directly infringing patent--Intent of manufacturer determinative: AB Hassle v. Canada (Minister of National Health and Welfare), [2002] 3 F.C. 221 (T.D.)--Intent irrelevant re indirect infringement-- Infringement can occur indirectly through inducement and procurement--Must be connection between second person and infringement--Appellant arguing new "connection test" formulated in AB Hassle for determination of infringement by inducement or procurement--Reference to "infringement either directly or indirectly" derived from passage in Zeneca Pharma Inc. v. Canada (Minister of National Health and Welfare) (1995), 61 C.P.R. (3d) 190 (F.C.T.D.)--Connection has been made out in this case--Actions of respondent combined with knowledge of practice of physicians, pharmacists, patients sufficient to constitute inducement or procurement of infringement--Any action leading another person to infringe constituting inducement or procurement of infringement: Valmet Oy v. Beloit Canada Ltd. (1988), 20 C.P.R. (3d) 1 (F.C.A.)--Respondent seeking permission to manufacture and sell drug--Evidence showing physicians and pharmacists will prescribe drug for Campylobacter infections whether or not product monograph lists such as indication-- Irrelevant that respondent's monograph does not list as indication, respondent has knowledge of probable, if not inevitable, infringement--If NOC issued respondent will do something it knows, regardless of intent, will infringe patent --Postscript case entered by appellant indicating "use [of drug] contemplated includes use by patient": Proctor & Gamble Pharmaceuticals Canada, Inc. v. Canada (Minister of Health), [2003] 1 F.C. 402 (C.A.)--Not necessary for patentee to demonstrate generic producer's actions will induce or procure patent infringement by patients or others; if generic producer cannot establish that no claims for use of medicine would be infringed by patients or others, justification test not satisfied and prohibition order must be made--Order issued prohibiting Minister of Health from issuing NOC until expiration of patent.

 You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.