Case information
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40400
Pharmascience Inc. v. Bristol-Myers Squibb Canada Co, Bristol-Myers Squibb Holdings Ireland Unlimited Company and Pfizer Inc.
(Federal) (Civil) (By Leave)
Docket
Judgments on applications for leave to appeal are rendered by the Court, but are not necessarily unanimous.
| Date | Proceeding | Filed By (if applicable) |
|---|---|---|
| 2023-04-14 | Close file on Leave | |
| 2023-03-30 | Copy of formal judgment sent to Registrar of the Court of Appeal and all parties | |
| 2023-03-30 | Judgment on leave sent to the parties | |
| 2023-03-30 |
Judgment of the Court on the application for leave to appeal, The application for leave to appeal from the judgment of the Federal Court of Appeal, Numbers A-31-21 and A-32-21, 2022 FCA 142, dated August 4, 2022 is dismissed with costs. Dismissed, with costs |
|
| 2023-02-27 | All materials on application for leave submitted to the Judges, for consideration by the Court | |
| 2022-12-01 | Certificate (on limitations to public access), (Letter Form), 23B, (Printed version filed on 2022-12-02) | Pharmascience Inc. |
| 2022-12-01 | Applicant's reply to respondent's argument, (Book Form), Completed on: 2022-12-08, (Printed version filed on 2022-12-02) | Pharmascience Inc. |
| 2022-11-21 | Notice of name, (Letter Form), (Printed version due on 2022-11-28) | Bristol-Myers Squibb Canada Co, Bristol-Myers Squibb Holdings Ireland Unlimited Company and Pfizer Inc. |
| 2022-11-21 | Certificate (on limitations to public access), (Letter Form), 23A, (Printed version due on 2022-11-28) | Bristol-Myers Squibb Canada Co, Bristol-Myers Squibb Holdings Ireland Unlimited Company and Pfizer Inc. |
| 2022-11-21 | Respondent's response on the application for leave to appeal, (Book Form), Completed on: 2022-11-23, (Printed version filed on 2022-11-21) | Bristol-Myers Squibb Canada Co, Bristol-Myers Squibb Holdings Ireland Unlimited Company and Pfizer Inc. |
| 2022-10-21 | Letter acknowledging receipt of an incomplete application for leave to appeal, FILE OPENED 2022-10-21 | |
| 2022-10-03 | Supplemental document, (Letter Form), Canadian Patent, (Printed version due on 2022-10-11) | Pharmascience Inc. |
| 2022-10-03 | Notice of name, (Letter Form), (Printed version due on 2022-10-11) | Pharmascience Inc. |
| 2022-10-03 | Certificate (on limitations to public access), (Letter Form), 23B, (Printed version due on 2022-10-11) | Pharmascience Inc. |
| 2022-10-03 | Certificate (on limitations to public access), (Letter Form), 23A, (Printed version due on 2022-10-11) | Pharmascience Inc. |
| 2022-10-03 |
Application for leave to appeal, (Book Form), Required: Order of the Federal Court (Rec'd 2022-10-27), Completed on: 2022-12-05, (Printed version filed on 2022-10-04) |
Pharmascience Inc. |
Parties
Please note that in the case of closed files, the “Status” column reflects the status of the parties at the time of the proceedings. For more information about the proceedings and about the dates when the file was open, please consult the docket of the case in question.
Main parties
| Name | Role | Status |
|---|---|---|
| Pharmascience Inc. | Applicant | Active |
v.
| Name | Role | Status |
|---|---|---|
| Bristol-Myers Squibb Canada Co, Bristol-Myers Squibb Holdings Ireland Unlimited Company and Pfizer Inc. | Respondent | Active |
Counsel
Party: Pharmascience Inc.
Counsel
Scott Beeser
Devin Doyle
100 Murray Street
Suite 300
Ottawa, Ontario
K1N 0A1
Telephone: (613) 903-5100
FAX: (613) 695-5854
Email: mklee@aitkenklee.com
Party: Bristol-Myers Squibb Canada Co, Bristol-Myers Squibb Holdings Ireland Unlimited Company and Pfizer Inc.
Counsel
David Tait
Sanjaya Mendis
James Holtom
Laura MacDonald
66 Wellington Street West
Suite 5300, Toronto Dominion Bank Tower
Toronto, Ontario
M5K 1E6
Telephone: (416) 362-1812
FAX: (416) 868-0673
Email: smason@mccarthy.ca
Agent
160 Elgin Street, Suite 2600
Ottawa, Ontario
K1P 1C3
Telephone: (613) 786-0171
FAX: (613) 563-9869
Email: jeff.beedell@gowlingwlg.com
Summary
Keywords
Intellectual property — Patents — Medicines — Patented Medicines (Notice of Compliance) Regulations, SOR/93-133 — Applicant attacking validity of respondents’ 202 and 171 Patents for a drug used in the treatment of thrombosis — Whether a patent applicant who arbitrarily selects subject matter from a previously granted patent should be rewarded with a second patent monopoly and, where a selection patent is granted, what the disclosure requirements should be — Whether the use of “inventive concept” should be abandoned and, if not, how the inventive concept should be ascertained.
Summary
Case summaries are prepared by the Office of the Registrar of the Supreme Court of Canada (Law Branch). Please note that summaries are not provided to the Judges of the Court. They are placed on the Court file and website for information purposes only.
The respondents (collectively, “BMS”) commenced four actions under s. 6(1) of the Patented Medicines (Notice of Compliance) Regulations, SOR/93-133 to prohibit the applicant, Pharmascience (“PMS”), from obtaining a notice of compliance to market its generic form of BMS’s product, Eliquis, an anticoagulant useful in the treatment of thromboembolic disorders. Two patents related to Eliquis were in issue: the 202 Patent related to apixaban, the active pharmaceutical ingredient in Eliquis, and the 171 Patent pertaining to the formulation of the 2.5 and 5 mg apixaban tablets.
BMS also owned the previous 330 Patent, which claimed a vast array of compounds that could potentially be useful in treating thromboembolic disorders. In 2001, BMS discovered apixaban, a compound selected from the 330 Patent, that was useful to inhibit the enzyme FXa and in treating thromboembolic disorders.
PMS sought to market its generic form of apixaban and applied to the Minister of Health for a notice of appliance to do so. PMS claimed that the 202 and 171 Patents were invalid on the basis of insufficiency, double patenting, anticipation, obviousness, overbreadth, inutility, ambiguity, and insufficiency and inutility of a selection patent. BMS applied for a prohibition order. The application judge granted BMS the prohibition order to keep PMS off the market until after the expiry of the 202 and 171 Patents. This decision was upheld on appeal.
Lower court rulings
Federal Court
2021 FC 1, T-503-19, T-504-19, T-97-19, T-98-19
Respondents’ prohibition application to prevent applicant from obtaining notice of compliance to market its generic version of respondents’ drug granted
Federal Court of Appeal
2022 FCA 142, A-31-21, A-32-21
Applicant’s appeal dismissed
Memorandums of argument on application for leave to appeal
The memorandums of argument on an application for leave to appeal will be posted here 30 days after leave to appeal has been granted unless they contain personal information, information that is subject to a publication ban, or any other information that is not part of the public record. You may also obtain copies of the memorandum by filing out the Request for Court records form or by contacting the Court’s Records Centre either by email at records-dossiers@scc-csc.ca or by telephone at 613‑996‑7933 or at 1‑888‑551‑1185.
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Downloadable PDFs
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Related links
Factums on appeal
The factums of the appellant, the respondent and the intervener will be posted here at least 2 weeks before the hearing unless they contain personal information, information that is subject to a publication ban, or any other information that is not part of the public record. You may also obtain copies of factums by filling out the Request for Court records form or by contacting the Court’s Records Centre either by email at records-dossiers@scc-csc.ca or by telephone at 613‑996‑7933 or at 1‑888‑551‑1185.
If you have questions about a factum or want permission to use a factum, please contact the author of the factum directly. Their contact information appears on the first page of each factum.
Downloadable PDFs
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