Sanofi-Aventis Canada Inc. et al. v. Novopharm Ltd., (2011) 420 N.R. 115 (FCA)

• Judge: Noël, Sharlow and Dawson, JJ.A.
• Court: Federal Court of Appeal (Canada)
• Case Date: May 02, 2011
• Jurisdiction: Canada (Federal)
• Citations: (2011), 420 N.R. 115 (FCA);2011 FCA 149

Sanofi-Aventis Can. v. Novopharm (2011), 420 N.R. 115 (FCA)

MLB headnote and full text

Temp. Cite: [2011] N.R. TBEd. MY.014

Teva Canada Limited (appellant) v. Sanofi-Aventis Canada Inc., and Sanofi-Aventis Deutschland GmbH (respondents)

(A-473-10; 2011 FCA 149)

Indexed As: Sanofi-Aventis Canada Inc. et al. v. Novopharm Ltd.

Federal Court of Appeal

Noël, Sharlow and Dawson, JJ.A.

May 2, 2011.

Summary:

Sanofi-Aventis Canada Inc. (Sanofi Canada), Sanofi-Aventis Deutschland GmbH (Sanofi Germany) and Shering Corp. (collectively, the plaintiffs) commenced an action for patent infringement against Novopharm Ltd., in respect of Novopharm's alleged infringement of Canadian patent 1,341,206 (the '206 patent) and the sale of its Novo-ramipril product. The '206 patent, owned by Schering, claimed the compound ramipril. Novopharm counterclaimed for, inter alia, an order under s. 8 of the Patented Medicines (Notice of Compliance) Regulations requiring the plaintiffs to compensate Novopharm for losses suffered and/or an order for disgorgement of profits generated by the sale of ramipril during the period of time Novopharm was not in receipt of a Notice of Compliance due to prohibition proceedings that had been commenced under s. 6 of the Regulations. Sanofi Canada and Sanofi Germany moved for an order striking certain portions of the statement of defence and counterclaim, directing that Novopharm amend its pleadings to remove the claim related to the recovery of costs incurred during the proceedings under the Regulations and dismissing the action against Sanofi Germany. Schering moved for an order striking out certain portions of the statement of defence and counterclaim and dismissing the order against it.

A Prothonotary of the Federal Court, in a decision reported at 364 F.T.R. 122, ordered that the counterclaim against Schering be struck and dismissed. The Prothonotary struck certain portions of the statement of defence and counterclaim. The motion by Sanofi Canada and Sanofi Germany was otherwise dismissed. Novopharm Ltd. changed its name to Teva Canada Inc. Teva Canada appealed the Prothonotary's decision to strike the portions of its statement of defence and counterclaim (the Teva Counterclaim) which involved a claim for damages for permanent loss of market share. Sanofi Canada and Sanofi Germany appealed the Prothonotary's refusal to dismiss the Teva Counterclaim in its entirety as against Sanofi Germany.

The Federal Court, in a decision reported at 377 F.T.R. 293, dismissed Sanofi Canada and Sanofi Germany's appeal. Teva Canada's appeal was allowed in part. Certain portions of the statement of defence and counterclaim were reinstated to the extent that they referred to claims for damages incurred within the relevant period. The plaintiffs appealed.

The Federal Court of Appeal, Sharlow, J.A., dissenting, dismissed the appeal.

Food and Drug Control - Topic 1108.2

Drugs - New drugs - Notice of compliance - Prohibition order - Compensation by first person - Sanofi-Aventis Canada Inc. (Sanofi Canada), Sanofi-Aventis Deutschland GmbH (Sanofi Germany) and Shering Corp. (collectively, the plaintiffs) commenced an action for patent infringement against Novopharm Ltd. (now Teva Canada Ltd.) - The patent, owned by Schering, claimed the compound ramipril - Sanofi Canada sold a ramipril product in Canada, under licence - Teva Canada counterclaimed for, inter alia, an order under s. 8 of the Patented Medicines (Notice of Compliance) Regulations requiring the plaintiffs to compensate Teva Canada for losses suffered and/or an order for disgorgement of profits generated by the sale of ramipril during the period of time Teva Canada was not in receipt of a Notice of Compliance due to prohibition proceedings that had been commenced under s. 6 of the Regulations - The plaintiffs moved to strike certain portions of the statement of defence and counterclaim, including its claim to "a permanent loss of market share" in paragraphs 135, 136 and 143 - A Prothonotary struck the impugned portions - Teva Canada appealed - A Federal Court judge allowed Teva Canada's appeal in part - The portions of paragraphs 135, 136 and 143 of the statement of defence and counterclaim were reinstated to the extent that they referred to claims for damages incurred within the relevant period - A second person could claim damages resulting from a loss of market share, but only for losses actually incurred within the period - Section 8 did not provide any entitlement to damages in respect of losses incurred outside the period - The Federal Court of Appeal affirmed the decision.

Practice - Topic 2230

Pleadings - Striking out pleadings - Grounds - Failure to disclose a cause of action or defence - [See Food and Drug Control - Topic 1108.2 ].

Cases Noticed:

Apotex Inc. v. Merck & Co. et al., [2010] 2 F.C.R. 389; 391 N.R. 336; 2009 FCA 187, leave to appeal denied (2010), 404 N.R. 396 (S.C.C.), folld. [para. 2].

Merck Frosst Canada Ltd. v. Apotex Inc. - see Apotex Inc. v. Merck & Co. et al.

Miller v. Canada (Attorney General) (2002), 293 N.R. 391; 2002 FCA 370, refd to. [para. 5].

Eli Lilly & Co. v. Novopharm Ltd. (1996), 197 N.R. 291; 67 C.P.R. (3d) 377 (F.C.A.), refd to. [para. 5].

Glaxo Group Ltd. et al. v. Canada (Minister of National Health and Welfare) et al. (1995), 103 F.T.R. 1; 64 C.P.R.(3d) 65 (T.D.), refd to. [para. 5].

Janssen Pharmaceutica Inc. et al. v. Apotex Inc. et al. (1997), 208 N.R. 395 (F.C.A.), refd to. [para. 5].

Aventis Pharma Inc. v. Apotex Inc. et al. (2005), 278 F.T.R. 1; 2005 FC 1283, refd to. [para. 5].

Counsel:

Jonathan Stainsby and Mark Edward Davis, for the appellant;

J. Sheldon Hamilton and Andrew E. Mandlsohn, for the respondents.

Solicitors of Record:

Heenan Blaikie LLP, Toronto, Ontario, for the appellant;

Smart & Biggar, Toronto, Ontario, for the respondents.

This appeal was heard on May 2, 2011, at Ottawa, Ontario, by Noël, Sharlow and Dawson, JJ.A., of the Federal Court of Appeal. The decision of the Court of Appeal was delivered from the bench on May 2, 2011, and included the following opinions:

Dawson, J.A. (Noël, J.A., concurring) - see paragraphs 1 to 7;

Sharlow, J.A., dissenting - see paragraphs 8 to 16.