As noted in the FCA’s decision, this is an unusual case in that although Justice Hughes “held that Apotex’s allegation of invalidity on grounds of obviousness was justified and that the prerequisite for the issuance of the prohibition order sought by Allergan had therefore not been established, he nevertheless issued it” in order to adhere to an earlier judgement by Justice Crampton “he expressly disagreed with” involving the same patent. His rationale for issuing the prohibition order is based on the doctrine of comity which “seeks to prevent the same legal issue from being decided differently by members of the same Court” and is explained in his reasons (paras. 191 to 194):
 I must consider the question of comity. Is the evidence and argument before me “different” from or “better” than the evidence and argument before Crampton J in Sandoz? There is no real way to measure “different” or “better”. The evidence and argument is of the same kind. In some cases Crampton J had unrebutted evidence whereas I have rebutted evidence. The difference in the evidence and argument is more one of quality to the best that can be discerned from the record that I have, and this Court not having the record as to what was before Crampton J.
 If I were to dismiss this application on the basis that Allergan did not discharge its burden of proving that Apotex’s allegations as to obviousness were not justified; then, within a matter of hours - if not days - the Minister would give Apotex a [NOC], and the issue as to whether the Court should grant a prohibition order would be moot. The Court of Appeal, in all likelihood, would not hear an appeal.
 I believe that there have been serious issues raised as to comity. The somewhat contradictory decisions of the Court of Appeal should be considered by that Court and clear instruction given as to how, in an NOC context, previous decisions of a Court on the same issues respecting the same patent, should be considered.
 The only practical way to get the matter before the Court of Appeal is for me to grant the Order for prohibition in the likely expectation that Apotex will appeal.
The FCA took exception to Justice Hughes granting the prohibition in order to “further his desire to clarify the jurisprudence”, stating at para. 49 of the FCA decision that:
 It is apparent from the foregoing that it was not open to the Federal Court judge to issue a prohibition order for the purpose of having his concerns about the use of the doctrine of comity and the notion of abuse of process addressed by this Court on appeal. As noted earlier, the parties were entitled to have their dispute settled on the merits and the Federal Court judge by issuing a formal judgment that was contrary to the conclusions that he reached on the merits, failed in his task.In the FCA’s decision the application of the doctrine of comity with respect to patent claim construction was reviewed, noting at para. 50 that:
the doctrine of comity has no application with respect to findings of fact. A finding that an invention is obvious because the solution proposed was plain to see is one of fact (671905 Alberta Inc. v. Q’max Solutions Inc., 2003 FCA 241, para. 48; Laboratoires Servier v. Apotex Inc., 2009 FCA 222, para. 67 (Servier); Apotex Inc. v. Wellcome Foundation Ltd.,  1 F.C. 495, para. 61 (C.A.), aff’d 2002 SCC 77,  4 S.C.R. 153). In contrast, construing a patent in order to identify the inventive concept when it is not readily discernable for the claim itself requires looking at the whole of the patent (Sanofi, para. 77) and gives rise to a question of law (Western Electric Co. v. Baldwin International Radio of Canada Ltd.,  S.C.R. 570, pp. 572-573 (S.C.C.); Weatherford Canada Ltd. v. Corlac Inc., 2011 FCA 228,  F.C.J. No. 1090, para. 24 – and the authorities referred to in these passages). It follows that unless the Federal Court judge could demonstrate that Crampton J.’s construction of the patent in order to determine the inventive concept was wrong or that distinct evidence adduced before him compelled him to reach a different conclusion, it would have been preferable for him to adhere to it.The FCA noted that Justice Hughes did not identify any error and simply chose to construe the patent differently then Justice Crampton.
In view of the divergent patent constructions of Justices Crampton and Hughes, it fell to the FCA to determine which of the two patent constructions was correct. Ultimately, the FCA disagreed with Justices Hughes’ construction of the patent, dismissed the appeal and confirmed that the prohibition order was properly issued.
By Claire Palmer