Court Finds Allegations in NOA to be Unjustified, However
Dismisses Application for Prohibition on basis of Mootness
Eli Lilly v. Apotex Drug: atomoxetine
In this proceeding under the NOC Regulations,
the Court found all of Apotex' allegations to be unjustified.
However, the proceeding was dismissed for mootness, as the patent
at issue had been found invalid in rem, in an impeachment
The Court considered Apotex' allegations of obviousness and
anticipation and found that they were not justified.
The Court then considered the issue of utility. The Court found
that in its evidence, Apotex had focussed on the allegation of a
lack of sound prediction. However, the Court held that Lilly
asserted that the patent demonstrated utility. Lilly tendered as
evidence a report and the published version of a clinical trial
study as exhibits to an expert affidavit. Apotex sought to
challenge the admission of the study on the basis of hearsay;
however, Apotex did not seek to file reply evidence or
cross-examine Lilly's witnesses on a challenge to the
study's reliability or sufficiency. Apotex also argued that the
study and its data are not referenced in the patent.
The Court held that where a patentee maintains that it can
demonstrate the utility of its invention, its disclosure obligation
is limited to the provision of a full description of invention and
the means to work it. It is only when the patentee relies on sound
prediction that it is required to disclose in the patent the
factual data upon which the prediction is based and the sound line
of reasoning followed to support it. The Court agreed that because
Lilly was relying on an assertion of demonstrated utility, it had
no obligation to put the study in the patent. Furthermore,
Apotex' evidence pointing to the absence of the study in the
patent is not capable of rebutting the statutory presumption of
validity. Thus, the allegation of inutility fails because Apotex
elected not to meet Lilly's assertion of demonstrated utility
However, in an impeachment action involving
Novopharm, the patent at issue in this case was declared to be
(summarized here). The Court held that,
because of the intervening determination that the patent is
invalid, the application must be dismissed on the basis of
mootness. The Court held that Lilly could defend any s.8 claim
brought by Apotex on the basis of an argument that "dismissed
by the Court hearing the application" in s.8 of the NOC
Regulations means a dismissal on the merits of the application and
not simply for mootness.
Court Reformulates Test to be Applied in Motion for
Throttle Control Tech Inc. v. Precision Drilling
The defendant in a patent infringement action brought a
motion for an order requiring the plaintiff to serve a Statement of
Defence to Counterclaim and that the action continue as a specially
managed proceeding. The plaintiff brought a cross motion for an
order that the defendant be required to provide answers to a
further request for particulars. The plaintiff consented to the
matter continuing as a specially managed proceeding.
The Court refused to dismiss the motion for particulars on the
basis that no affidavit was provided indicating that particulars
were required for pleading. However, the Court redefined the test
to be applied in a motion for particulars. It held that the Court
must look at whether the particulars requested are material facts
or whether they are evidence. Only material facts may be ordered to
be provided. Then the Court should look at the particulars
requested and determine whether they are necessary for the purpose
of being able to respond to the pleading.
If so, then they should be ordered to be provided. The Court
also held that when determining whether a party is entitled to
particulars, one is very much guided by the nature of the
litigation and the facts of the particular case.
The Court then considered each of the individual requests for
particulars. Some were granted, others were denied. The Court also
set a schedule for the filing of particulars and of the Statement
of Defence to Counterclaim.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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