Justice Macdonald dismissed a motion to strike the Statement of Claim in Apotex Inc. v. Eli Lilly and Company, 2012 ONSC 3808 (atomoxetine) permitting claims under Section 8 of the PM(NOC) Regulations, unjust enrichment, profits and Section 7(a) of the Trade-marks Act.

In the course of an earlier PM(NOC) prohibition proceeding between the parties and during the statutory stay period, another generic was successful invalidating the patent at issue. The prohibition proceeding was therefore “dismissed”.

The court found that the dismissal was enough to support an arguable case for compensation for the period Apotex was off the market under Section 8 of the PM(NOC) Regulations [para 24].

The allegations of unjust enrichment and a disgorgement of profits was allow to proceed:

[36] Consequently, there is room for an accounting of profits and an order for disgorgement thereof to develop further as a remedy for unjust enrichment, depending on the facts of the case.  In this case, which does not turn on economic activities undertaken together, it now may well be unduly rigid to state that if the Respondent can prove an unjust enrichment, it is not entitled to an accounting of the Applicant’s profits and to disgorgement thereof unless it can prove that it contributed to generating those profits.  The Respondent’s claim appears to have a reasonable prospect of success and from a r. 21 perspective, I conclude that it is not plain and obvious that it must fail.  From a r. 25 perspective, the Applicant has failed to establish that the relevant parts of the Statement of Claim are scandalous, frivolous or vexatious, or an abuse of the process of the court.

The court considered whether the allegations that the generic had made false and misleading statements under Section 7(a) of the Trade-marks Act could possibly succeed and considered the application of absolute privilege for statements made in litigation:

[50] I conclude that the question of whether the commencement of the prohibition proceeding, viewed as false or misleading statements or representations, is subject to absolute privilege or is subject to one of the principled exceptions to that privilege is an unsettled legal question which should not be resolved by means of this motion, at this early stage of the litigation, when many of the relevant facts are not before the court.

Justice Macdonald did dismiss a catch-all claim for remedies “otherwise available at law”.