PRACTICE |
Mootness |
Bayer AG v. Apotex Inc.
A-546-03
2004 FCA 242, Rothstein J.A.
23/6/04
7 pp.
Motion to strike appeal by Apotex on ground of mootness--Federal Court issued order prohibiting Minister of Health from issuing Notice of Compliance (NOC) to Apotex in respect of certain formulations of ciprofloxacin until after expiry of Bayer's patent--Apotex appealed order in November 2003--Patent expired in February 2004 and Minister issued NOC--Prohibition proceedings moot when patent expires or NOC issued--Court may, however, exercise discretion to hear, decide moot appeals--Rationales for exercising discretion identified in Borowski v. Canada (Attorney General), [1989] 1 S.C.R. 342 applied and appropriate for Court to exercise discretion in this case--(1) Collateral consequences from outcome of appeal (Bayer may be liable to Apotex for loss suffered, if prohibition order reversed: Patented Medicines (Notice of Compliance) Regulations, s. 8(1)) provide necessary adversarial context--(2) Decision on appeal will have practical effect on rights of parties, i.e. preservation of access to s. 8 remedy--(3) Decision on appeal not intrusion into role of legislative branch of government--Obiter dicta in Pfizer Canada Inc. v. Apotex Inc. (2001), 11 C.P.R. (4th) 245 distinguished--Unlike patentee, generic manufacturer cannot commence action for infringement if denied remedy under s. 8--S. 8 at issue in Pfizer since replaced, now referring to reversal on appeal of prohibition order giving rise to liability by patentee to generic manufacturer--No indication reversal on appeal must occur prior to expiry of patent or issuance of NOC--Fact that appellant does not seek to expedite appeal does not amount to inordinate delay in absence of other circumstances--Motion dismissed--Patented Medicines (Notice of Compliance) Regulations, SOR/93-133, s. 8(1) (as am. by SOR/98-166, s. 8).