One More Time: No Reach-back under Section 8 of the NOC Regulations

Apotex Inc. v. Warner-Lambert Company LLC / quinapril 2012 FC 202 Lemieux J

The patentee was successful in NOC proceedings relating to two patents. Apotex then brought an impeachment action in respect of the same patents. One of the patents has now expired, and the patentee sought to have the action dismissed in respect of that patent on the ground of mootness. Apotex argued that the action was not moot, and even if it was, the court should exercise its discretion to hear the action because it would affect Apotex’s right to damages under s 8 of the NOC Regulations, and a possible future action under the Ontario Monopolies Act.

Applying very well established FCA jurisprudence, Lemieux J held that the action was moot, and the court should not exercise its discretion to hear it. Entitlement to s 8 damages requires success in the s 8 action itself. Success in a subsequent infringement or impeachment action is irrelevant: “The jurisprudence established by the FCA is clear that in the circumstances of this case there is no reach-back under section 8 of the NOC Regulations” [50].

Lemieux J’s analysis did not address the argument that the action should be heard because it would impact on a possible future action under the Ontario Monopolies Act. Presumably he accepted the patentee’s submission that this basis was too speculative to justify hearing an otherwise moot appeal, as there have been no reported cases under that Act [10].

Apotex also argued that the action should be heard in respect of the expired patent, as the action would proceed in respect of the related unexpired patent. Lemieux J pointed out that new evidence would have to be heard, as the invalidity of the expired patent had not been considered in the NOC proceedings (only non-infringement had been argued), and in any event there was no point to adding any complexity to the trial in respect of an issue which would have no practical effect on the parties rights [52].