Court Refuses to Stay Order Dismissing Prohibition Proceeding Pending Appeal
Janssen-Ortho Inc. v. Apotex Inc. et al, 2009 FCA 250 (Sharlow J.A.)

August 20, 2009

Jason Markwell and Kristin Wall for the Appellant, Janssen-Ortho Inc. (“Janssen”)
Andrew Brodkin and Sandon Shogilev for the Respondent, Apotex Inc. (“Apotex”)

Apotex sent a Notice of Allegation (“NOA”) in respect of TRAMACET alleging, among other things, claims broader than the invention made or disclosed. Jansseen filed a disclaimer of the claims of the patent in issue. Janssen then filed its Notice of Application, alleging only that Apotex’s NOA was invalid because Apotex did not address the claims of the patent as narrowed by the disclaimer; Janssen did not address the allegations made by Apotex of non-infringement and invalidity of the patent.

Prothonotary Aalto granted Apotex’s motion to dismiss the proceeding, pursuant to Section 6(5)(b) of the Patented Medicines (Notice of Compliance) Regulations (“Regulations”). Justice Hughes dismissed the appeal brought by Janssen. Janssen appealed the Order of Justice Hughes to the Court of Appeal, but the appeal would not be heard prior to the date the Minister of Health indicated the Notice of Compliance would be issued to Apotex. Thus, Janssen brought the within motion, seeking to stay the Order of Prothonotary Aalto dismissing the proceeding, pending appeal of Justice Hughes’ decision. The motion was dismissed.
The Court of Appeal held that the function of a stay is to stop a party from taking a step that an order requires to be taken. In this case, there was no step to be taken by any party, and thus a stay could not be granted. The Court of Appeal further held that the remedy sought by Janssen is not contemplated by the Regulations, and that in any event, Janssen did not meet the test for irreparable harm.

By:  Chantal Saunders, Gowling Lafleur Henderson LLP