After an unsuccessful NOC proceeding, Apotex started an
impeachment action, alleging that its Apo-quinapril product will
not infringe two patents and also seeking to invalidate the
patents. Upon expiry of one of the patents, Warner-Lambert brought
the within motion to dismiss that portion of the action for
The Court reviewed the relevant case law and granted the motion.
The Court concluded that as the patent has expired, the impeachment
action regarding that patent is moot. Furthermore, the Court held
that it would not exercise its discretion to hear the action, as
Apotex has not satisfied the Court that it will experience an
adverse effect on its rights if the action is struck insofar as the
expired patent. The Court held that the law is clear that there is
no ability to "reach-back" under s. 8 of the NOC
Regulations to claim damages.
OTHER CASES OF INTEREST
Pleading Amendments Not Allowed When Contrary to Statements at
The Plaintiffs sought to amend their pleadings and the
Plaintiffs opposed the proposed amendments on the basis that the
request contradicts representations made at a Pre-Trial Conference
and that the proposed amendments are barred by res judicata. The
Court denied the motion.
The Court reviewed the procedural history of the case from its
inception in 1999. The Court then held that the proposed pleading
amendments be denied as the Plaintiff had made an unambiguous
statement in both its Pre-Trial Memorandum and at the Pre-Trial
Conference that the issues raised in the proposed amendments would
be pursued in proceedings in Ontario Court and not in the within
proceeding. Furthermore, the Plaintiffs took the position that
discoveries were complete and that the matter was ready for
The Court held that this attempt to resile from its position
undermines the Pre-Trial Conference process and is a serious
prejudice to the Defendant. Furthermore, the Court held that the
proposed amendments would otherwise be barred on the grounds of res
judicata as the amendments sought were similar to those struck in
2006 and to those disallowed in 2007. Finally, the Court held that
pleading amendments would not be allowed at this late stage as it
would delay the disposition of the proceedings due to the fact that
discovery would have to reopened. Thus, the Court dismissed the
motion and costs were awarded on an elevated scale.
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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