Teva Canada Ltd. v. Wyeth LLC et al., (2012) 431 N.R. 342 (FCA)

• Judge: Sharlow, Dawson and Stratas, JJ.A.
• Court: Federal Court of Appeal (Canada)
• Case Date: March 21, 2012
• Jurisdiction: Canada (Federal)
• Citations: (2012), 431 N.R. 342 (FCA);2012 FCA 141

Teva Can. v. Wyeth LLC (2012), 431 N.R. 342 (FCA)

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Temp. Cite: [2012] N.R. TBEd. JN.009

Teva Canada Limited (appellant) v. Wyeth LLC and Pfizer Canada Inc. (respondents)

(A-417-11; A-486-11; 2012 FCA 141; 2012 CAF 141)

Indexed As: Teva Canada Ltd. v. Wyeth LLC et al.

Federal Court of Appeal

Sharlow, Dawson and Stratas, JJ.A.

May 8, 2012.

Summary:

Teva Canada Limited (Teva) appealed two judgments of the Federal Court. In the first judgment (2011 FC 1169), Hughes, J., applied the equitable doctrine of election to bar Teva from continuing its action against the respondents for damages under s. 8 of the Patented Medicines (Notice of Compliance) Regulations, SOR/93-133. In the second judgment ([2011] F.T.R. Uned. 879), Hughes, J., dismissed the action for damages. The appeals were consolidated.

The Federal Court of Appeal allowed both appeals, set aside the decisions below and declared that Teva was entitled to continue the claim for damages.

Equity - Topic 4630

Election - When applicable - Selection of one of two inconsistent courses of action - This dispute concerned the drug Effexor XR whose patent was owned by Wyeth - ratiopharm inc. (Ratiopharm) and Novopharm Limited (Novopharm) each sold its own competing generic version of the drug - Novopharm had a license agreement with Wyeth to sell its generic drug - It advised Wyeth that it expected that Wyeth would commence proceedings to stop Ratiopharm's infringement of the Wyeth patent in keeping with Wyeth's obligations under the licensing agreement - Wyeth sought a prohibition order against Ratiopharm - Ratiopharm later sued Wyeth for damages under s. 8 of the Patented Medicines (Notice of Compliance) Regulations, SOR/93-133 for sales lost during the period when its generic drug would have been on the market but for an application for a prohibition order by Wyeth that was dismissed - Meanwhile, Novopharm purchased Ratiopharm and then amalgamated pursuant to s. 186 of the Canada Business Act under the name Teva Canada Limited (Teva) - Ratiopharm's claim against Wyeth survived the amalgamation (s. 186(d)) - A motions judge held that the the equitable doctrine of election barred Teva from continuing Ratiopharm's claim - Teva's predecessor Ratiopharm alleged that the patent was invalid - Novopharm essentially asserted the validity of the patent by attempting to compel or encourage Wyeth to apply for a prohibition order - Upon amalgamation, Teva effectively found itself on both sides of the debate as to the validity of the patent - The Federal Court of Appeal allowed Teva's appeal - The most that Novopharm could do in defence of the validity of the patent was consult Wyeth - The consultations did not affect and could not possibly affect the potential future right of Teva, as Ratiopharm's successor by amalgamation, to continue Ratiopharm's damages claim - The equitable doctrine of election did not apply to bar Teva from continuing Ratiopharm's claim - See paragraphs 28 to 37.

Counsel:

David W. Aitken, Marcus Klee and Bryan Norrie, for the appellant;

Brian Daley and George Locke, for the respondents.

Solicitors of Record:

Osler, Hoskin & Harcourt LLP, Ottawa, Ontario, for the appellant;

Norton Rose Canada LLP, Montreal, Quebec, for the respondents.

These appeals were heard at Ottawa, Ontario, on March 21, 2012, before Sharlow, Dawson and Stratas, JJ.A., of the Federal Court of Appeal. Sharlow, J.A., delivered the following reasons for judgment for the court on May 8, 2012.