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Pfizer asks SCC to reconsider remedy in Viagra decision

Pharma giant also trying to use ruling for other ends in Federal Court case
|Written By Jennifer Brown

While pharmaceutical giant Pfizer is trying to get the Supreme Court of Canada to take a second look at its recent judgment voiding its patent on Viagra, it’s trying to use the same decision to quash a case in the Federal Court involving another generic drug maker.

Pfizer is taking the position that the SCC “accidentally granted a remedy in this appeal that exceeds its jurisdiction.” (Photo: Shutterstock)

Last week, Pfizer Canada Inc. asked the SCC to reconsider its decision in Teva Canada Ltd. v. Pfizer Canada Ltd., which invalidates the Canadian patent that provided Pfizer with a monopoly for its multi-million dollar erectile dysfunction drug, Viagra.

Pfizer is taking the position that the SCC “accidentally granted a remedy in this appeal that exceeds its jurisdiction.”

“Whether or not there is a formal declaration of invalidity there is no doubt this patent is utterly invalid,” says David Aitken, of Osler Hoskin & Harcourt LLP who acted for Teva Canada Ltd. “Pfizer would be ill advised if it were to attempt to assert this patent in other legal proceedings in the face of the Supreme Court’s judgment.”

Aitken says he is “also quite surprised” to learn that in a separate action currently on-going in the Federal Court with Apotex over the same patent, Pfizer has sought to dismiss that action on the basis that the patent has been declared void by the top court.

“I have a little difficulty in understanding how Pfizer can on the one hand rely on the declaration of invalidity in the Federal Court and on the other hand seek to have the declaration of invalidity set aside,” says Aitken.

In Teva, Pfizer is not asking for the entire decision to be reconsidered. It is a narrow motion to correct the relief granted by court. The SCC rules do provide a process for either correcting errors or re-hearing aspects of an argument.

In particular, Pfizer has applied for an order to amend the SCC’s judgment “by replacing the words ‘and Patent 2,153,446 is declared void’ with the words ‘the application below is dismissed and the Order of the Federal Court dated June 18, 2009, prohibiting the Minister from issuing notice of compliance to the appellant is hereby set aside’.”

In the alternative, Pfizer has applied for a re-hearing on the issue of remedy.

“There is not a chance the Supreme Court is going to reverse its finding that the Viagra patent is utterly invalid. The issue is merely whether a declaration declaring the patent to be void was the appropriate remedy,” says Aitken.

“The Supreme Court has jurisdiction to grant declaratory relief, and in this particular case the Supreme Court held the patent to be invalid. It seems clear the Supreme Court turned its mind to the appropriate relief to be granted. They held that where the finding was that Pfizer had ‘gamed the system,’ as Justice LeBel said, a declaration of invalidity was the appropriate remedy.”

While the Supreme Court can correct its judgment, Aitken says he sees no “basis to think they did not mean what they said.”

Teva’s instructions to Aitken are to oppose Pfizer’s motion to set aside that declaration of invalidity. Teva’s response is due Nov. 26.

Update 4:35 p.m.: In a ruling today, Federal Court Justice Russel Zinn held in Apotex Inc. v. Pfizer Ireland Pharmaceuticals that the Federal Court had jurisdiction to consider Apotex’s impeachment action and motion for summary judgment and declared Pfizer’s patent on Viagra, Canadian Patent No. 2,163,466 invalid.

With regards to Apotex’s motion, the court held that the Supreme Court made a binding legal determination dispositive of the impeachment action (para 30) as construction of a patent is a matter of law, according to Alan Macek's IPPractice.ca blog. Zinn granted Apotex its costs on the action and the motions.


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