Beware Hubris – Janssen’s infringement of AbbVie’s patent gets enjoined by the Federal Court
Justice Roger T. Hughes of the Federal Court of Canada granted AbbVie the first-ever limited injunction against a branded pharmaceutical company infringing a branded competitor’s patent. The injunction followed Justice Hughes’ earlier finding that AbbVie’s patent was valid and infringed by Janssen through the promoting, offering for sale, and selling in Canada of Janssen’s biologic product, Stelara, for the treatment of psoriasis.
This injunction is important because it affirms that:
- A permanent injunction will normally follow a finding that a patent is valid and infringed.
- The three-part RJR Macdonald test for interlocutory injunctions does not apply in the case of a permanent injunction.
The injunction provides that:
(a) Janssen is enjoined from making, using, selling, offering for sale or promoting Stelara;
(b) Janssen is not prohibited from providing Stelara to a patient who has received at least one injection of Stelara and from providing Stelara to a patient whose physician has determined that such a treatment is necessary;
(c) Janssen is prohibited from communicating directly or indirectly with a physician for the purpose of influencing their prescribing decision;
(d) Janssen may not detail, advertise, promote or make any representation or claims in Canada about the use of Stelara for psoriasis;
(e) Janssen must terminate all advertising in all media published in Canada; and,
(f) Janssen may not commence any Phase IV trials except as required by law.
Justice Hughes rejected Janssen’s request to stay the injunction for a number of reasons. One being that Janssen had received advance warning about the injunction and was accordingly “ill-advised or afflicted with hubris” in continuing its infringing activities after being an adjudged infringer. On May 1, 2014, Justice Stratas dismissed Janssen’s motion seeking to prevent the hearing of the injunction trial pending appeal to the Court of Appeal. On June 30, 2014, Justice Stratas dismissed another Janssen motion for a stay (its third all told), seeking to stay operation of the Injunction after the trial.
Justice Hughes awarded the highest costs possible to AbbVie because Janssen did not co-operate in endeavouring to craft a suitable injunction and it did nothing to curtail its infringing activities in the time between the liability finding and the injunction trial.
Abbvie Federal Court of Canada Janssen