Intellectual Property Weekly Abstracts Bulletin — Week Of November 28

Patent Decisions

Claims under the Statutes of Monopolies and the "basket clause" struck in section 8 proceeding Actavis Pharma Company v Alcon Canada Inc. et al., 2016 ONSC 7151

This was a motion to strike portions of the Plaintiff's statement of claim or, alternatively, for particulars in the Ontario Superior Court. In the underlying proceeding, the Plaintiff seeks relief pursuant to section 8 of the PMNOC Regulations for losses suffered due to the delay in taking its generic version of Patanol to market. The impugned claims in this motion to strike included, inter alia, claims under the Statutes of Monopolies and the "basket clause" claims. The Court agreed that these claims must be struck.

The Court pointed out that there has yet to be a determination on the merits of claims under the Statutes of Monopolies. Further, the Court noted that motions to strike these claims have been unsuccessful, with courts taking the view that the claims are novel ones and should be allowed to proceed to trial. The Court concluded, however, that this case was different because an essential element of the claim was not present, namely: an in rem declaration of invalidity of the Patent.

In this case, no in rem declaration of invalidity of the patent has been obtained, or even yet sought, by the Plaintiff in the Federal Court, which has exclusive jurisdiction to make such a declaration. While there was a risk that there could be two proceedings in the Ontario court dealing with the same factual matters (if the Statutes of Monopolies claims were brought again if a declaration of invalidity was granted by the Federal Court), the Court concluded that this was preferable to the risks of attempting to prosecute a novel action for damages when all the elements of the claim were not present.

In respect of the "basket clause" claims, the Plaintiff sought relief including "such further and other relief as this Honourable Court deems just" and "other losses, including those to which Actavis is entitled as a matter of equity, arising during the Relevant Period and which will be particularized as this matter proceeds to trial". In striking these claims, the Court noted that the Plaintiff's claim did not make out a claim for equitable relief and there were no facts that supported the claims as pleaded.

The Court also ordered particulars in respect of certain paragraphs. The Plaintiff had alleged that it suffered losses from lost sales of other products that would have been...