Apotex
Inc. v. Schering Corporation, 2013
ONSC 1411

Sanofi
brought a motion for an order striking Apotex’s statement of claim, or in the
alternative, a stay of the proceeding pending the outcome of the appeal taken
by Sanofi’s appeal from the decision of Snider J. of the Federal Court (2012 FC
553). On the day of the hearing, counsel for Sanofi stated that while Sanofi
would not oppose a stay, it would no longer actively pursue this or any other
alternative relief, focusing instead on its request for an order striking the
statement of claim.

In the
Federal Court, Snider J. awarded damages to Apotex pursuant to s. 8 of the PM(NOC)
Regulations in the context of the hypertension drug ramipril; however, she
left it to the parties to determine the amount of s. 8 damages Sanofi was to
pay. Sanofi has appealed her decision.

In the
present action, Apotex has advanced additional damage claims including treble
damages pursuant to s. 4 of the Ontario Statute of Monopolies; damages
or an accounting of Sanofi’s profits, pursuant to s. 53.2 of the Trade-marks
Act; and disgorgement of Sanofi’s profits generated from the sale of
Rampiril as a consequence of the improper issuance of a patent and/or the delay
in Apotex being permitted to sell Apo-Ramipiril due to Sanofi’s invocation of
the Regulations.

The Court
ordered a temporary stay pending the outcome of the appeal of Snider J.’s
decision.

The Court
relied on the following four factors in deciding to grant of a temporary stay:

First,
there is a substantial overlap between many of the issues in the present
proceeding and those before Snider J. in the Federal Court.

Second, the
factual foundation of the damage claims in the present action overlaps
significantly with that of the Federal Court action: both are concerned with
the impact of Sanofi’s conduct in trying to exclude Apo-Rampiril from the
market.

Third,
issuing a temporary stay may prevent unnecessary and costly duplication of
judicial and legal resources. The outcome of the Federal Court action is likely
to resolve at least some of the issues raised in the current action.

Fourth, the
temporary stay is unlikely to cause significant injustice to Apotex. Apart from
timing, there has been no suggestion that Apotex will otherwise suffer an
injustice or be denied access to the court. The nature of its claim and the
fact it is already engaged in litigation in the Federal Court, which must be
finally resolved before the present case can be decided, dictate that the
present case be put on hold temporarily.

Moreover,
the present case involves a commercial dispute and a monetary claim between two
substantial corporate parties. The issues regarding the ability of Apotex to
market Apo-Rampiril have long since been resolved. Thus this case no longer
involves a potential public interest in the availability of the generic drug.