AbbVie Corp. et al. v. Janssen Inc., (2014) 461 N.R. 253 (FCA)

• Judge: Stratas, J.A.
• Court: Federal Court of Appeal (Canada)
• Case Date: June 26, 2014
• Jurisdiction: Canada (Federal)
• Citations: (2014), 461 N.R. 253 (FCA);2014 FCA 176

AbbVie Corp. v. Janssen Inc. (2014), 461 N.R. 253 (FCA)

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[French language version follows English language version]

[La version française vient à la suite de la version anglaise]

Temp. Cite: [2014] N.R. TBEd. JL.011

Janssen Inc. (appellant) v. AbbVie Corporation, Abbvie Deutschland GmbH & Co. KG and AbbVie Biotechnology Ltd. (respondents)

(A-270-14; 2014 FCA 176; 2014 CAF 176)

Indexed As: AbbVie Corp. et al. v. Janssen Inc.

Federal Court of Appeal

Stratas, J.A.

June 30, 2014.

Summary:

Janssen Inc. moved for a stay of an injunction the Federal Court issued on May 22, 2014 (see (2014), 455 F.T.R. 282), until the Federal Court of Appeal determined three appeals. Janssen also moved for an order consolidating and expediting the appeals. The three appeals arose from AbbVie's action against Janssen. In the action, AbbVie claimed that Janssen's drug product, Stelara, infringed claims 143 and 222 of Canadian patent 2,365,281.

The Federal Court of Appeal, per Stratas, J.A., dismissed the stay motion. Janssen had failed to establish unavoidable irreparable harm. The appeals were to be heard together and were set down for hearing in October 2014.

Courts - Topic 2015

Jurisdiction - General principles - Controlling abuse of its process - [See first and second Injunctions - Topic 4545 ].

Courts - Topic 4080

Federal Court of Canada - Jurisdiction - Federal Court of Appeal - General - [See second Injunctions - Topic 4545 ].

Injunctions - Topic 4545

Operation of injunctions - Suspension - Stay pending appeal - When available - The appellant moved for a stay of an injunction the Federal Court issued until the Federal Court of Appeal determined three appeals - The Federal Court had found that the appellant would not suffer undue harm if the injunction took immediate effect - The respondent submitted that the stay motion was barred by the doctrine of abuse of process, the appellant having failed to appeal the denial of the "stay" - The Federal Court of Appeal, per Stratas, J.A., rejected that submission - Although the appellant had phrased its request to the Federal Court as a "stay," in reality it was just a request that the Federal Court delay when its own order should take effect - "There is a difference between that sort of request - one made to the court making its own order - and a request that a court stay the order of another body. The former attracts a broad 'interests of justice' test while the latter attracts the tougher RJR-MacDonald test ... In this case, the Federal Court decided that its own order should take effect immediately." - See paragraphs 14 to 18.

Injunctions - Topic 4545

Operation of injunctions - Suspension - Stay pending appeal - When available - The appellant moved for a stay of an injunction the Federal Court issued until the Federal Court of Appeal determined three appeals - The Federal Court had found that the appellant would not suffer undue harm if the injunction took immediate effect - The respondent submitted that the appellant's stay motion was barred by the doctrine of abuse of process - The Federal Court of Appeal, per Stratas, J.A., stated that "The stay motion presently before this Court is in no way an appeal from the Federal Court's decision concerning when its order should take effect. Rather, it seeks to invoke this Court's own jurisdiction to stay an order on appeal. That jurisdiction arises from this Court's power to make an order addressing its own inability to determine the appeal in time to prevent an appellant from suffering irreparable harm. It is just one example of this Court's broad original jurisdiction to make orders necessary for its own process ... . Section 50 of the Federal Courts Act ... and Rule 398(1)(b) of the Federal Courts Rules ... are further sources of this original jurisdiction. Orders made by the Federal Court in related matters cannot oust this Court's original jurisdiction to make orders necessary for its own process." - See paragraphs 19 to 21.

Injunctions - Topic 4545

Operation of injunctions - Suspension - Stay pending appeal - When available - In the context of an intellectual property dispute, the defendant pharmaceutical company moved for a stay of an injunction the Federal Court issued, until the Federal Court of Appeal determined its appeals - The defendant proffered evidence of irreparable harm in several categories, including legal and other expenses, and non-monetary burdens associated with complying with the injunction - The Federal Court of Appeal, per Stratas, J.A., held that the defendant had failed to establish unavoidable irreparable harm - "Janssen must show that this harm is likely to arise over the next few months until this Court determines its appeals. Legal and other expenses without 'abnormal, harsh consequences beyond the norm' do not qualify as irreparable harm, as these can be quantified in damages ... [T]he non-monetary burdens associated with complying with the injunction ... are the sorts of administrative inconvenience that, without more, cannot support suspending the injunction ... Further, although non-monetary on the surface, the burdens identified here may well be quantifiable in monetary terms. ... " - See paragraphs 23 to 25.

Injunctions - Topic 4545

Operation of injunctions - Suspension - Stay pending appeal - When available - The plaintiff claimed that the defendant's drug product, Stelara, infringed two claims of its Canadian patent - The Federal Court found infringement - The defendant moved for a stay of an injunction the Federal Court issued until the Federal Court of Appeal determined its appeals - The defendant proffered evidence of irreparable harm in several categories, including injury to its reputation - The Federal Court of Appeal, per Stratas, J.A., was not persuaded that physicians who prescribed Stelara would think less of the defendant or Stelara because of the intellectual property dispute - In accordance with the terms of the injunction, the defendant remained free to explain the dispute to physicians - As well, physicians understood the frequency of intellectual property litigation among pharmaceutical companies - If Stelara was helpful to their patients, the physicians would continue to prescribe Stelara - Accordingly, the defendant's long term reputation as a reliable supplier of good pharmaceutical products would not be hurt - See paragraph 26.

Injunctions - Topic 4545

Operation of injunctions - Suspension - Stay pending appeal - When available - The plaintiff claimed that the defendant's drug product, Stelara, infringed two claims of its Canadian patent - The Federal Court found infringement - The defendant moved for a stay of an injunction the Federal Court issued until the Federal Court of Appeal determined its appeals - The defendant proffered evidence of irreparable harm in several categories, including damage to its market share - The Federal Court of Appeal, per Stratas, J.A., held that the evidence was unpersuasive - On the record, it appeared that treating physicians in the area knew Stelara well and they would continue to prescribe it - The injunction allowed doctors to prescribe Stelara to new patients and allowed the defendant to supply it to them - Evidence showed that doctors learned about the usefulness of Stelara from many sources of readily available information and, thus, were poised to introduce Stelara to new patients - "Against this concrete backdrop, the evidence only shows general and speculative assertions about loss of market share, unsupported by particularity. Further, ... I suspect that, despite the obiter statement of the Supreme Court in RJR-MacDonald to the contrary, any such loss nevertheless might be quantifiable in monetary terms." - See paragraph 27.

Injunctions - Topic 4545

Operation of injunctions - Suspension - Stay pending appeal - When available - The plaintiff claimed that the defendant's drug product, Stelara, infringed two claims of its Canadian patent - The Federal Court found infringement - The defendant moved for a stay of an injunction the Federal Court issued until the Federal Court of Appeal determined its appeals - The defendant proffered evidence of irreparable harm in several categories, including damage arising from the ambiguity of the terms of the injunction - The Federal Court of Appeal, per Stratas, J.A., held that if ambiguities caused the defendant real harm, it could seek a variation of the terms of the injunction from the Federal Court, "an adequate, alternative forum for that relief and [the defendant] has not properly sought that relief to date." - A motion under Federal Courts Rule 399(2)(a) was open to the defendant to ask the Federal Court to set aside or vary the terms "by reason of a matter that arose ... subsequent to the making of the order" - Further, the defendant had not presented evidence of sufficient particularity concerning what actions, activities, plans or communications had been or would be affected by the injunction's ambiguity - General assertions could not establish irreparable harm - "A moving party seeking to suspend an injunction pending appeal must adduce evidence showing unusual or abnormal burdens, uncertainties and risks." - See paragraphs 28 to 55.

Injunctions - Topic 6312

Particular matters - Injury to trade - Patent infringement - [See fourth and fifth Injunctions - Topic 4545 ].

Patents of Invention - Topic 3103

Infringement of patent - Remedies - Injunctive relief (incl. stay of) - [See fourth and fifth Injunctions - Topic 4545 ].

Practice - Topic 9134

Appeals - Hearing of appeal - Expediting - [See Practice - Topic 9138 ].

Practice - Topic 9138

Appeals - Hearing of appeal - Consolidation of appeals for hearing or hearing of appeals together - The defendant in an intellectual property dispute moved for a stay of an injunction the Federal Court issued in May 2014 until the Court of Appeal determined three appeals - It also requested consolidation of the appeals and that the appeals be expedited - The Federal Court of Appeal, per Stratas, J.A., granted an order setting down the appeals to be heard together in October 2014 - "Consolidation achieves two purposes: reducing the amount of paper that needs to be filed and allowing all appeals to be heard together. The alternative remedy of hearing the appeals together achieves only the second purpose. Either remedy is appropriate where, as here, the appeals are factually and legally related. In these circumstances, where the appeals are related but most of the paper for the appeals has already been filed, the appropriate remedy is to order that the appeals be heard together." - The pleadings appeal and the liability appeal were ready for hearing - In the ordinary course, without an expedition order, the injunction appeal would be ready for hearing in October 2014 - See paragraphs 7 to 9.

Cases Noticed:

RJR-MacDonald Inc. et Imperial Tobacco Ltd. v. Canada (Procureur général), [1994] 1 S.C.R. 311; 164 N.R. 1, refd to. [para. 11].

AbbVie Corp. et al. v. Janssen Inc., [2014] N.R. Uned. 61; 2014 FCA 112, refd to. [para. 11].

AstraZeneca Canada Inc. et al. v. Mylan Pharmaceuticals ULC et al. (2011), 426 N.R. 167; 2011 FCA 312, refd to. [para. 18].

Epicept Corp. v. Canada (Minister of Health) (2011), 425 N.R. 353; 2011 FCA 209, refd to. [para. 18].

Korea Data Systems (USA) Inc. v. Aamazing Technologies Inc. et al., [2012] O.A.C. Uned. 618; 2012 ONCA 756, refd to. [para. 18].

Canadian Human Rights Commission v. Canadian Liberty Net et al., [1998] 1 S.C.R. 626; 224 N.R. 241, refd to. [para. 19].

Minister of National Revenue v. RBC Life Insurance Co. (2013), 443 N.R. 378; 2013 FCA 50, refd to. [para. 19].

Superintendent of Bankruptcy v. MacLeod et al. (2010), 402 N.R. 341; 2010 FCA 84, refd to. [para. 24].

Laperrière v. D & A MacLeod Co. - see Superintendent of Bankruptcy v. MacLeod et al.

Hoffmann-La Roche Ltd. et al. v. Canada (Minister of National Health and Welfare) et al. (1999), 168 F.T.R. 24 (T.D.), refd to. [para. 26].

Janssen-Ortho Inc. et al. v. Novopharm Ltd. (2006), 358 N.R. 155; 2006 FCA 406, refd to. [para. 26].

Apotex Inc. and Novopharm Ltd. v. Wellcome Foundation Ltd. (2000), 262 N.R. 137; 2000 CarswellNat 4299 (F.C.A.), refd to. [para. 27].

Ayangma v. Canada (2003), 313 N.R. 312; 2003 FCA 382, refd to. [para. 42].

Pfizer Canada Inc. et al. v. Canada (Minister of Health) et al. (2007), 371 N.R. 174; 2007 FCA 407, refd to. [para. 42].

Del Zotto v. Minister of National Revenue et al., [1996] 2 C.T.C. 22; 195 N.R. 74 (F.C.A.), refd to. [para. 42].

UHA Research Society et al. v. Canada (Attorney General) et al., [2014] N.R. Uned. 82; 2014 FCA 134, refd to. [para. 42].

Rock-St Laurent v. Canada (Minister of Citizenship and Immigration) (2012), 434 N.R. 144; 2012 FCA 192, refd to. [para. 42].

Shotclose et al. v. Stoney First Nation (2011), 422 N.R. 191; 2011 FCA 232, refd to. [para. 45].

Glooscap Heritage Society v. Minister of National Revenue (2012), 440 N.R. 232; 2012 FCA 255, refd to. [para. 45].

Garford Pty. Ltd. v. Dywidag Systems International Canada Ltd. et al. (2010), 406 N.R. 304; 2010 FCA 232, refd to. [para. 46].

Canada (Attorney General) et al. v. Information Commissioner (Can.) (2001), 268 N.R. 328; 2001 FCA 25, refd to. [para. 46].

Statutes Noticed:

Federal Courts Act, R.S.C. 1985, c. F-7, sect. 50 [para. 19].

Federal Courts Rules, SOR/98-106, rule 397 [para. 36]; rule 398(1)(b) [para. 19].

Counsel:

Marguerite F. Ethier and Melanie K. Baird, for the appellant;

Andrew J. Reddon and Atrisha Lewis, for the respondents.

Solicitors of Record:

Lenczner Slaght Royce Smith Griffin LLP, Toronto, Ontario, for the appellant;

McCarthy Tétrault LLP, Toronto, Ontario, for the respondents.

This stay motion was heard at Toronto, Ontario, on June 26, 2014, before Stratas, J.A., of the Federal Court of Appeal, who delivered the following order and reasons for judgment, at Ottawa, Ontario, on June 30, 2014.