Apotex Inc. v. Novartis AG, A-98-13 The appeals of the decisions by Justice Snider of the Federal
Court relating to the drug GLEEVEC® (cited as 2013 FC 141), were heard in February of this
year. Following the hearing of the appeals one of the members of
the panel has died. Since the Court of Appeal had not completed its
deliberations at the time of his death, the Court of Appeal has
ordered that the appeals be re-argued. NOV Downhole Eurasia Limited v. TLL Oil Field
Consulting, 2014 FC 889 This was a motion appealing the order of a prothonotary in the
context of a patent infringement case. In the order appealed from,
the Prothonotary granted the Plaintiffs' motion and struck a
number of paragraphs (and portions thereof) from the
Defendants' Amended Statement of Defence and Counterclaim (the
"Defence"), without leave to amend. In the pleadings at
issue, the Defendants had alleged that wilfully misleading
statements made to the Patent Office either void the Patent (per s.
53 of the Patent Act) or disentitle the Plaintiffs from
equitable remedies. The Prothonotary found that the allegations of
misrepresentation related to a non-party to the action, and there
were no material facts connecting that party to the Plaintiffs at
the time of the filing. Further, the Prothonotary found that the
impugned pleading relied upon the prosecution history to ask the
court to draw certain inferences in construing the scope of the
claims, which was held to be improper. The Court disagreed with the Prothonotary's approach in
striking portions of the Defence, and held that in considering a
motion under Rule 221(1)(a) of the Federal Court Rules,
the reviewing court is limited to the language of the pleadings.
The Court held that the reviewing court cannot consider any
evidence in support of the motion, and thus, the Prothonotary was
bound to take the Plaintiffs' pleadings as she found them. The
Court held that the Prothonotary "erroneously relied upon
affidavit evidence to the effect that [the "non-party"]
and the Plaintiffs were not related at the time of the filing of
the patent application." With respect to Defendants' reliance on the Patent's
prosecution history, the Court held that "it remains a live
issue whether section 53 of the Patent Act may void an
entire patent due to steps taken in the application process."
The Court therefore found that the Prothonotary erred in finding
that it was plain and obvious that the Defence had no chance of
success. The Court granted the appeal and overturned the order of the
Prothonotary striking certain paragraphs (and portions thereof). As
the Court concluded that the questions before it were vital to the
final issues of the case and that the Prothonotary had erred, it
exercised its discretion de novo and upheld the proposed
amendments to the Defence. CIPO has published proposed amendments to the
Trade-marks Regulations that follow
the recent amendments to the Trademarks Act. CIPO has
also announced that a public Consultation period will be open from
October 1, 2014 to November 30, 2014. CIPO has also announced that the 2015 Patent
Agent Examination will be held on April 28, 29, 30 and May 1, 2015.
The deadline to apply is December 2, 2014. The BLG Life Sciences Group has published LIFESIGNS: Life Sciences Legal Trends in
Canada, a Report on Intellectual Property, Litigation,
Corporate Commercial legal trends and industry developments in
Canada. The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
PATENT CASES
Court of Appeal Orders that Appeals be Re-Argued Following
Death of Judge
Federal Court Overturns Prothonotary's Order Striking
Paragraphs from Defence
Industry News
ARTICLE
9 October 2014
Court of Appeal Orders That Appeals Be Re-Argued Following Death Of Judge (Intellectual Property Weekly Abstracts Bulletin - Week Of October 6th, 2014)
The appeals of the decisions by Justice Snider of the Federal Court relating to the drug GLEEVEC® (cited as 2013 FC 141), were heard in February of this year.