Last November, the Supreme Court of Canada (SCC) declared Pfizer’s Canadian patent for the drug Viagra™ to be invalid for failing to provide full disclosure of the invention in the patent application. Since then, a Federal Court decision has followed the SCC’s lead, and Pfizer has been named in two class action lawsuits filed in British Columbia seeking redress for alleged overcharging for Viagra.

The successful challenge against the Viagra patent was brought by generic drug manufacturer Teva Canada.  Teva initiated its challenge back in 2006, when it first applied to Canadian regulatory authorities to manufacture its own generic version of Viagra.  Teva announced the launch of its generic drug on the date the SCC issued its decision.  This forced Pfizer to promptly lower the price of Viagra to remain competitive with generic versions including the one launched by Teva.  Unfortunately for Pfizer, its troubles did not end there.

Pfizer sought a motion to have the SCC amend its remedy, on the grounds that the SCC  inadvertently exceeded its jurisdiction by declaring the Viagra patent to be invalid.  Pfizer’s reasoning was that the proceeding before the SCC was not a formal invalidity proceeding but was merely an administrative proceeding where the validity of the Viagra patent was not directly at issue.  After hearing the motion, the SCC issued an order which varied its previous ruling by clarifying that Teva had established, for the purposes of the administrative notice of compliance proceedings, its allegation that the Viagra patent was invalid (but the SCC stopped short of declaring the patent to be invalid). However, the revision of the original SCC ruling may be moot since it came only after a decision had issued on a separate Federal Court impeachment proceeding (brought by Apotex, another generic drug manufacturer) in which the Viagra patent was declared invalid on the basis of the original SCC decision.  Pfizer has appealed the Federal Court impeachment decision to the Federal Court of Appeal.

Next, Pfizer has been named in two class action lawsuits filed in British Columbia seeking redress for alleged overcharging for Viagra.  The class action plaintiffs adopted language from the SCC decision, alleging that Pfizer “gamed” the patent system in order to obtain exclusive monopoly rights.  The class action plaintiffs allege that, as a result of its unlawfully obtained monopoly, Pfizer was able to overcharge them for Viagra as compared to the price Pfizer could have charged for Viagra in the presence of generic competition from 2006 (when Teva applied for approval of its generic version of Viagra) to 2012.  The specific causes of action pled in the class actions include claims of “unconscionable and deceptive acts” under British Columbia’s consumer protection legislation and “unlawful enrichment” and “unlawful interference with economic relations” under tort law.  Punitive damages against Pfizer are also being sought.  This is believed to be the first time that class action lawsuits of this nature have been attempted in Canada, and will likely be followed with interest by many.