Pfizer Canada ULC v. Pharmascience Inc.
(Federal) (Civil) (By Leave)
Intellectual property - Patents, Medicines - Intellectual property — Patents — Medicines — Applicant raising ex turpi causa defence in respondent’s action for damages under section 8 of Patented Medicines (Notice of Compliance) Regulations, SOR/98 166 — Does the traditional ex turpi causa defence described in Hall v. Hebert,  2 S.C.R. 159, continue to exist in law, or should illegality be considered only as part of the plaintiff’s underlying cause of action? — Did this Court in Sanofi Aventis v. Apotex Inc., 2015 SCC 20, intend to alter the approach to illegality set out in Hall v. Hebert?.
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Since 2004, Pfizer Canada ULC has held a patent for pregabalin, sold under the brand name “Lyrica.” Pharmascience Inc. received a Notice of Compliance in 2013 allowing it to market a generic version of pregabalin. Pharmascience had originally attempted to enter the pregabalin market in 2011 but was prevented from doing so when Pfizer unsuccessfully sought an order under the Patented Medicines (Notice of Compliance) Regulations, SOR/98 166, prohibiting the Minister of Health from issuing a Notice of Compliance to Pharmascience. Pharmascience then commenced an action under s. 8 of the Regulations for damages against Pfizer for the sales it allegedly lost during the period of time when it was kept off the market. In response, Pfizer alleged that Pharmascience was disentitled to damages because the hypothetical sales of PMS pregabalin would have infringed Pfizer’s patent. Pfizer alleged that any damages Pharmascience incurred should therefore be reduced or eliminated under s. 8(5) of the Regulations.
Pharmascience brought a motion for a summary trial on the question of whether Pfizer’s defence of ex turpi causa by reason of infringement was relevant to the assessment of damages. The motion judge granted Pharmascience’s motion for a summary trial, holding that the ex turpi causa defence was not viable. This decision was upheld on appeal.
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