Temporary Stay in Ontario “s 8" Disgorgement Action

Apotex Inc v Schering Corporation / ramipril, 2013 ONSC 1411 Stinson J

Dissatisfied with the ruling that disgorgement of the patentee’s profits is not available as a remedy in a claim under s 8 of the NOC Regulations (2011 FCA 358 blogged here), Apotex has turned to the Ontario courts to seek a disgorgement for the same wrong, that is being kept out of the market as a result of the statutory stay under the NOC Regulations, under a variety of legal theories. In this motion, Stinson J has ordered a temporary stay of Apotex’s action in respect of ramipril pending the outcome of the appeal taken by the defendants to the FCA Snider J's decision in Apotex v Sanofi / ramipril (s 8) 2012 FC 553 (an overview is given here). Stinson J held that while the causes of action were different, and the remedies would not necessarily be the same (certainly not according to Apotex’s submission), there was nonetheless a substantial overlap of the issues so that wasteful duplication of judicial resources was likely if the parallel proceedings were maintained [17]. Moreover, even though the causes of action are different, any amount awarded to Apotex in the s 8 proceeding would likely be relevant to the quantum in the Ontario proceeding, in order to avoid giving Apotex double recovery [14]. On the other hand, the only downside to ordering a stay is a delay in Apotex’s recovery of any damages which it might be awarded in the Ontario action [20]; in particular, the availability of generic ramipril would not be affected. Note that Sanofi is now focusing on having Apotex’s claim struck entirely [1] in light of Quigley J’s recent decision in Apotex v Abbott / lansoprazole 2013 ONSC 356 (blogged here).