Case information

Intellectual property – Patents – Medicines – Applicant’s patent found to be invalid for inutility prior to decision in AstraZeneca Canada Inc. v. Apotex Inc., 2017 SCC 36 – Whether change in law constitutes “special circumstance” that provides exception to application of issue estoppel? – What is proper test in deciding whether change of law is special circumstance warranting exception from application of issue estoppel? – What principles govern court’s exercise of discretion in application of issue estoppel following change in law? – Whether issue estoppel can have any application when law changes during an ongoing proceeding?

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(SEALING ORDER) (COURT FILE CONTAINS INFORMATION THAT IS NOT AVAILABLE FOR INSPECTION BY THE PUBLIC)

The respondent, Teva Canada Limited (“Teva”) claimed damages under s. 8 of the Patented Medicines (Notice of Compliance) Regulations, SOR/93-133, for losses suffered when it was kept out of the market for olanzapine by the applicant, Eli Lilly Canada Inc.’s unsuccessful prohibition application in June 2007. Teva then obtained its Notice of Compliance and entered the olanzapine market. Eli Lilly commenced an infringement action against Teva and Teva counterclaimed for a declaration of invalidity and damages. After two trials, appeals and leave applications to the Supreme Court of Canada, Eli Lilly’s ‘113 Patent for olanzapine was held to be invalid on the basis of inutility. The parties then moved on to the remedies phase of the trial, to determine the amount of s. 8 damages to which Teva might be entitled. The trial judge made a series of findings, as requested by the parties, to permit them to calculate the amount of those damages. Prior to the hearing of the appeal, however, AstraZeneca was released and it established that the promise doctrine regarding the utility of a patent was not good law in Canada. Eli Lilly sought to rely on that decision to support its position that the ‘113 Patent was therefore valid and that Teva would not be entitled to damages. The Federal Court of Appeal determined that issue estoppel applied to the prior validity determination, precluding Eli Lilly from using AstraZeneca as a defence to Teva’s claim for damages.