Prothonotary dismisses Motion to Strike Res Judicita Pleadings from Statement of Defence in Impeachment Action

July 6, 2010

Apotex Inc. v. Pfizer Ireland Pharmaceuticals, 2010 FC 633

In an action commenced by Apotex to impeach Pfizer’s ‘446 patent relating to the drug Viagra (medicinal ingredient sildenafil citrate), Apotex brought a motion seeking to strike those portions of Pfizer’s statement of defence pleading res judicata and abuse of process.  The motion was surprisingly dismissed by the court.


Apotex had previously sought to invalidate Pfizer’s ‘446 patent in proceedings commenced by Pfizer under the Patented Medicines (Notice of Compliance) Regulations (“Regulations”).  On September 27, 2007, however, Mr. Justice Mosley upheld the ‘446 patent, and granted an order prohibiting the Minister of Health from issuing a notice of compliance to Apotex.  This decision was upheld by the Federal Court of Appeal on January 16, 2009, and leave to appeal to the Supreme Court of Canada was not sought.

The within action was commenced in May 2009.  Apotex raised all of the allegations of invalidity (adding one additional argument) that were found to be unsuccessful during the proceedings under the Regulations.  The jurisprudence is replete, however, with statements by the court that proceedings under the Regulations are summary in nature and have no precedential effect on subsequent actions.  Nonetheless, Pfizer pleaded that “[b]y reason of res judicata, issue estoppel, collateral estoppel, comity and abuse of process Apotex should be precluded from contesting the validity of the ‘446 Patent in the present proceeding”.

The Court’s Decision on the motion

The approach of the court is well known on motions to strike:

  • No evidence is considered on a motion to strike;
  • The pleading must be considered true and provable in evidence;
  • It must be “plain and obvious” that the allegations ought to be struck as bereft of any chance of success”; and
  • If there is any doubt as to the propriety of a pleading, it should be left to the trial judge to make a determination based on the evidence.

The prothonotary found that Pfizer was not pleading res judicata to have the matter determined on that basis per se, but rather that the pleading was directed toward evidence and witnesses who make the same statements in this proceeding and to that extent it should be open to the trial judge to determine if res judicata principles can be applied to that evidence.  As a result, he found that it could not be said that the pleading was bereft of any chance of success.  Moreover, according to the prothonotary, while the Regulations are designed to be a summary process,  “parties ought not to be able to have endless ‘kicks at the can’ and use up more and more judicial resources because they do not like the prior result and are sufficiently well-heeled to pursue more and more litigation.”  At a minimum, the prothonotary found that the res judicata argument may affect the disposition of costs.

Although discretionary orders of prothonotaries are not disturbed on appeal to a judge unless: (a) the questions raised in the motion are vital to the final issue of the case, or (b) the orders are clearly wrong, in the sense that the exercise of discretion by the prothonotary was based upon a wrong principle or upon a misapprehension of the facts, a judge will likely take a hard look at this decision should Apotex decide to appeal.

DISCLAIMER: This publication is intended to convey general information about legal issues and developments as of the indicated date. It does not constitute legal advice and must not be treated or relied on as such. Please read our full disclaimer at