Last Minute Discontinuance of Patent Case on “Promised Utility” in Supreme Court of Canada

In a very unusual development in a case that promised to be very interesting and important both domestically and internationally, Apotex has filed a notice of discontinuance literally on the day before and figuratively on the steps into the Court in its appeal against Sanofi in the Supreme Court of Canada that was to have been heard earlier today in Apotex et al v. Sanofi et al.  The notice states that “The Appellants wholly discontinues this Appeal on a without costs basis on consent.” This language suggests that some kind of settlement agreement – presumably very confidential – must have been concluded.

I can think of only one other similar situation in the IP and related galaxies at the Supreme Court of Canada level where an appellant discontinued a closely watched appeal at a late stage, and this was in  Vidéotron Ltée, et al. v. Her Majesty the Queen, et al., where the issue was whether certain broadcasting fees were a tax or a regulatory charge. That discontinuance was filed 12 days before the hearing that had been scheduled for October 19, 2009.

We recently saw an abrupt discontinuance of another notable appeal in the Federal Court of Appeal in the copyright litigation involving Richard Warman and Fournier v. National Post. This case was discontinued 5 days before the hearing for February 19, 2014.

Private parties, of course, have every right to settle their cases. However, when the Supreme Court of Court decides to hear cases that require leave to appeal, it is because “the Supreme Court is of the opinion that any question involved therein is, by reason of its public importance or the importance of any issue of law or any issue of mixed law and fact involved in that question, one that ought to be decided by the Supreme Court or is, for any other reason, of such a nature or significance as to warrant decision by it, and leave to appeal from that judgment is accordingly granted by the Supreme Court.”

So, it can be very frustrating to the public and particularly to interveners when a case is discontinued and certain questions that are obviously of “public importance” may be left in limbo, even though the decision below technically is left standing.

In today’s discontinued case, the “promise doctrine” and “utility” are also very much are the heart of the Eli Lilly NAFTA Chapter 11 investor/state challenge, although today’s case and the NAFTA case are not directly linked. However, whatever the Court might have ruled in today’s discontinued case might well have been of some considerable interest in the NAFTA case that we will hear much about in the future as it unfolds.

HPK