Previously published in The Canadian Bar Association in July
Mark Biernacki and Urszula Wojtyra for the Plaintiffs,
Astrazeneca Canada and Aktiebolaget Hässle
Andrew Brodkin and Daniel Cappe for the Defendant, Apotex
This decision concerned proposed amendments to Apotex'
amended statement of defence and counterclaim following an Order
striking certain paragraphs with leave to amend.
The Court split the proposed paragraphs into four categories.
The first category of paragraphs recited that Apotex was aware of
litigation in certain foreign countries where the plaintiffs or
related parties were litigants and asserted certain patents for
omeprazole. Apotex asked that it be allowed to discover the
plaintiffs to find out more about this litigation. The Court did
not allow these paragraphs and characterized them as a classic
fishing expedition. The Court noted that discovery is not, in and
of itself, a separate right to which a party may be entitled; it is
part of a process initiated by proper pleading.
The second category of paragraphs related to US proceedings.
Apotex pleaded that since the plaintiffs in that litigation (which
are the same as the plaintiffs here) did not assert certain claims
of the US patent at issue, the plaintiffs cannot assert equivalent
claims in the Canadian litigation. The Court noted comments from
Justice Layden-Stevenson that admissions made in foreign litigation
expressly for the purpose of that litigation only cannot be relied
upon in litigation in Canada. The Court also noted her comments
that one cannot readily assume that a foreign patent
"corresponds" to a Canadian one and that the Court must
be mindful of the differences in claim construction, which is a
matter of law. The Court did not allow these paragraphs, noting
that the Court must be mindful that litigation is costly and that
unnecessary, irrelevant or distracting matters should not be put in
play simply because there is a possibility of relevance.
The third category of paragraphs related to certain US
proceedings and how they referenced proceedings in Korea and the
findings of the Korean Court. Justice Hughes did not allow these
paragraphs and remarked that Apotex was not a party to any of the
litigation referenced in those paragraphs.
The Court allowed the fourth category of paragraphs. These
paragraphs related to the Korean action, in which the Korean Court
found the product at issue did not infringe the Korean patent.
Although it was a different defendant, Apotex said that its product
is the same. The plaintiffs, on the other hand, assert that
Apotex' product is different. The Court found that this is a
matter of evidence to be proved at trial, with the assistance of
experts, if appropriate. He also remarked that at the pleading
stage, the Court must assume the truth of what is sought to be
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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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