Date: 19980403
Docket: T-3197-90
BETWEEN:
APOTEX INC.
- and -
NOVOPHARM LTD.
| Plaintiffs, |
AND
THE WELLCOME FOUNDATION LIMITED
Defendant.
Docket: T-2983-93
BETWEEN:
THE WELLCOME FOUNDATION LIMITED
- and -
GLAXO WELLCOME INC.
Plaintiffs,
AND
NOVOPHARM LTD.
Defendant.
Docket: T-2624-91
BETWEEN:
THE WELLCOME FOUNDATION LIMITED
- and -
GLAXO WELLCOME INC.
Plaintiffs,
AND
INTERPHARM INC.
- and -
APOTEX INC.
- and -
ALLEN BARRY SHECHTMAN
Defendants.
REASONS FOR ORDER AND ORDER
WETSTON, J.:
[1] This is a motion for an interim stay of the judgment issued on March 25, 1998 pending an application for a stay of this judgment pending appeal.
[2] The stay of the judgment pending appeal shall be heard in Toronto, Ontario on April 20, 1998.
[3] On March 27, 1998 after a lengthy teleconference between the parties, the Court issued an order so that the parties could, in an orderly manner, prepare for an interim stay application to be heard in Toronto, Ontario on Thursday April 2, 1998.
[4] On April 1, 1998 the Court held a lengthy conference with the parties in chambers in an effort, among other things, to assist the parties in the scheduling of the interim stay application for April 2, 1998.
[5] On April 2, 1998 the Court held a nine-hour hearing into the merits of the interim stay application of the judgment.
[6] The judgment held that certain claims of the Canadian Patent Number 1,238,277 are valid and infringed by Apotex and Novopharm. The judgment further enjoins Apotex and Novopharm from importing, manufacturing, using, advertising, promoting, offering for sale and selling the medicine Zidovudine pharmaceutical dosage form. Apotex and Novopharm are also ordered to deliver up for destruction all of the medicine Zidovudine in pharmaceutical dosage form in their possession, custody and control.
[7] On March 27, 1998 Glaxo Wellcome obtained writs of delivery of the medicine from Apotex and Novopharm and executed this part of the judgment on that date. The seizure of the medicine which took place at Apotex and Novopharm occurred shortly before and during the time at which a telephone conference was scheduled to be heard by the Federal Court of Canada in Ottawa. It is clear from the evidence before me that counsel for Glaxo Wellcome was aware of the fact that a conference call had been set up with the Court and was unavailable for that call. It is also clear that counsel became available shortly after the seizures of the medicine had taken place.
[8] In considering whether or not an interim stay should be granted, I am guided by the principles as enunciated in the decisions of American Cyanamid Company v.Ethicon Limited, [1975] 1 All.E.R. 504 (H.L.) and RJR-MacDonald Inc. v. Canada (Attorney General), [1994] 1 S.C.R. 311. I have also considered the other authorities referred to the Court by the parties with respect to the granting of a stay in various circumstances including an interlocutory injunction, a judgment pending appeal as well decisions of tribunals pending judicial review or appeal.
[9] In essence I have considered the tri-partite test of serious issue, irreparable harm and balance of convenience with respect to whether or not an interim stay should be granted at this time. Moreover, it would appear from the authorities that staying a judgment of the Court after a full trial on the merits is exceptional. In Procter and Gamble Co. v. Bristol-Myers Canada Ltd., [1979] 39 C.P.R. (2d) 171, the Federal Court of Appeal noted at page 176 that the proper test to stay a permanent injunction is that the applicant must meet the "heavy onus of showing a great preponderance of serious and irreparable loss".
[10] There are clearly serious issues to be heard in the stay application pending appeal. However my review of the evidence does not lead me to conclude that there would be serious and irreparable loss to Apotex and Novopharm in the next three week period pending the application for a stay of the judgment. With respect to the irreparable harm, I have considered the arguments regarding the fact that Glaxo has not provided any undertaking regarding damages in the event that Apotex and Novopharm are successful on the stay application, that is, that the losses are unrecoverable and therefore the harm is irreparable. Moreover, I have considered whether or not the unquantifiable losses of domestic and export sales amount to irreparable harm and the possibility of not being listed on the Ontario Formulary as well as the alleged misrepresentation of the judgment by Glaxo Wellcome. In essence the irreparable harm, in my opinion, is speculative in the context of an interim stay of a judgment after a full trial where the rights of the parties have been determined.
[11] It is also clear to the Court that the parties had to prepare their materials in a very short time frame given the hasty conduct of Glaxo Wellcome and it is likely that further evidence will be adduced. By way of example, there was considerable discussion during the hearing as to whether or not the drug might become stale-dated. That is not an issue for the Court on the interim stay application because it was conceded by counsel that it would not become stale over the next three weeks. However, this may very well be an issue that may be considered under irreparable harm by the Court in considering the stay pending appeal.
[12] Apotex and Novopharm brought to my attention at 4:00 p.m. on Friday, April 3rd, the day after the hearing, a decision of McKinlay, J.A. of the Ontario Court of Appeal; Allen and Hanbury's Limited v. Torpharm Inc. and Brantford Chemicals Inc., unreported (April 1, 1998). Submissions were received from the parties well into the evening of April 3, 1998. It is clear that in that decision a significant issue before Justice McKinlay was the stale-dating of the tablets. However, I am unable to determine from the brief reasons of the Ontario Court of Appeal as well as the terse submissions of the parties the applicability of this decision to the facts of this case. I am confident it will be argued comprehensively on April 20, 1998.
[13] The Court has spent approximately 16 hours with the parties in either telephone conference, chambers or in hearing since last Friday. While an interim stay application may have been avoidable, it was not avoidable in this case given the obvious lack of cooperation and conciliation between the parties. It is always difficult in a case such as this to attribute blameworthiness where the litigation is so fiercely contested as between the parties. I am certain, however, that much of the Court's time since last Friday was as a result of the precipitous actions on the part of Glaxo Wellcome to enforce its judgment despite efforts by Novopharm and Apotex to secure Glaxo Wellcome's cooperation in having the stay heard prior to the seizure. In this regard, there was no evidence of a lack of cooperation on the part of the applicants. While I do not view that the interests of justice are such that this would allow the Court to impose an interim stay of the judgment, I am of the opinion that no costs should be awarded to Glaxo Wellcome despite being successful on this motion.
[14] Glaxo Wellcome has undertaken to maintain safe custody of the medicine and not take any steps to destroy the medicine pending the application for a stay on April 20, 1998.
ORDER
IT IS HEREBY ORDERED THAT:
| (a) the application for the interim stay pending the application for a stay pending appeal is dismissed; |
| (b) the application for a stay pending appeal is to be heard in Toronto, Ontario on April 20, 1998 at 10:00 a.m.; |
| (c) the parties shall fully cooperate in the expedition of Apotex and Novopharm's appeal of the judgment to the earliest date available to the Federal Court of Appeal; |
| (d) Apotex and Novopharm shall file affidavit evidence on or before the 9th of April, 1998; |
| (e) Glaxo Wellcome shall file its reply evidence on or before April 14, 1998; |
| (f) cross-examinations on the affidavits shall be completed by the parties no later than April 17, 1998; |
| (g) no costs. |
"H. I. Wetston"
Judge
Toronto, Ontario
April 3, 1998
FEDERAL COURT OF CANADA
Date: 19980403
Docket: T-3197-90
BETWEEN:
APOTEX INC.
-and-
NOVOPHARM LTD.
| Plaintiffs, |
AND
THE WELLCOME FOUNDATION LIMITED
Defendant.
Docket: T-2983-93
BETWEEN:
THE WELLCOME FOUNDATION LIMITED
-and-
GLAXO WELLCOME INC.
Plaintiffs,
AND
NOVOPHARM LTD.
Defendant.
Docket: T-2624-91
BETWEEN:
THE WELLCOME FOUNDATION LIMITED
- and -
GLAXO WELLCOME INC.
Plaintiffs,
AND
INTERPHARM INC.
- and -
APOTEX INC.
- and -
ALLEN BARRY SHECHTMAN
Defendants.
REASONS FOR ORDER AND ORDER
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
COURT FILE NO.: T-3197-90
STYLE OF CAUSE: APOTEX INC., et al.
v. THE WELLCOME FOUNDATION LTD.
COURT FILE NO.: T-2983-93
STYLE OF CAUSE: THE WELLCOME FOUNDATION LTD., et al.
v. NOVOPHARM LTD.
COURT FILE NO.: T-2624-91
STYLE OF CAUSE: THE WELLCOME FOUNDATION LTD., et al. v. INTERPHARM INC., et al.
PLACE OF HEARING: TORONTO, ONTARIO
DATE OF HEARING: APRIL 2 , 1998
REASONS FOR ORDER
AND ORDER BY: WETSTON, J.
DATED: APRIL 3, 1998
APPEARANCES:
| PATRICK KIERANS, REPRESENTING THE WELLCOME |
BRIAN DALEY, FOUNDATION and GLAXO WELLCOME INC.
ANDREW SHAUGHNESSY
CAROL HITCHMAN REPRESENTING NOVOPHARM LTD.
and
STEPHANIE VACCARI
RICHARD NAIBERG REPRESENTING APOTEX INC.,
and INTERPHARM INC.
DAVID SCRIMGER and ALLEN BARRY SHECHTMAN
Page 2
SOLICITORS OF RECORD:
OGILVY RENAULT FOR THE WELLCOME FOUNDATION
TORONTO, ONTARIO and GLAXO WELLCOME INC.
HITCHMAN & SPRIGINGS FOR NOVOPHARM LTD.
TORONTO, ONTARIO
GOODMAN PHILLIPS FOR APOTEX INC., INTERPHARM INC.,
& VINEBERG and ALLEN BARRY SHECHTMAN
TORONTO, ONTARIO