Four's A Crowd: Federal Court Of Appeal Overturns Order To Trial Of Common Issues

• Published date: 04 June 2020
• Author: Mr Andrew Shaughnessy, Yael Bienenstock and Leora Jackson
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Food, Drugs, Healthcare, Life Sciences, Patent, Trials & Appeals & Compensation, Food and Drugs Law
• Law Firm: Torys LLP

Co-Author by Mavra Choudhry

In a recent decision, the Federal Court of Appeal overturned the Federal Court's order that the trial of common issues in separate actions under the Patented Medicine (Notice of Compliance) Regulations involving the same patent should be heard together¹. In doing so, the Court elaborated on section 6.02 of the PM(NOC) Regulations, which prohibits joinder of actions, and on the nature of the 24-month stay.

What you need to know

• Prohibition on joining actions. In this decision, the Federal Court of Appeal suggested that case management judges should not order that PM(NOC) actions brought by the same plaintiff against multiple defendants should progress and be tried together. This is a novel ruling, given that cases involving multiple parties have gone and will (presumably) go to trial.
• The 24-month stay period. The Court stated that the purpose of section 6.02 of the PM(NOC) Regulations, which prohibits the joining of other actions within the 24-month stay period (subject to limited exceptions), is to promote the expediency of a single subsection 6(1) action
  • The Court also remarked in obiter that the PM(NOC) Regulations do not expressly require the Federal Court to determine PM(NOC) actions within a 24-month timeframe While the 24-month timeline is a goal, it is not a requirement of the Court.

Background: Apotex, Teva and first-mover advantage

In August 2019, the Federal Court ordered that a trial of common issues be heard jointly in four separate actions involving Teva Canada Limited, Apotex Inc., Sandoz Canada Inc., and Taro Pharmaceuticals against Bayer Inc. All four actions stemmed from the service, on Bayer, of Notices of Allegation (NOA) in respect of the same patents under the PM(NOC) Regulations. The Prothonotary case managing the actions had previously ordered the common invalidity issues for the Teva and Apotex actions to be heard together. When "late-comers" Sandoz and Taro commenced their actions, the Federal Court ordered, in the context of a Case Management Conference, the common trial of common issues in all four matters.

Teva and Apotex appealed that order, arguing that a common issues trial with all four defendants would be prejudicial to them because they were the first to serve their NOAs while Sandoz and Taro had delayed. The PM(NOC) Regulations' imposition of a 24-month stay beginning at the initiation of an action gave them a head-start that the Court had unfairly removed. They argued that the joining...