In a recent
decision, the Federal Court dismissed a motion by Apotex
seeking particulars from (or to strike paragraphs from)
Allergan's pleading relating to the prior art, inventive
concept, promised utility and sound prediction of utility of the
patents at issue.
In this case, Allergan Inc. ("Allergan") brought an
infringement action against Apotex and AA Pharma in respect of two
patents relating to Allergan's drug ALPHAGAN P. Apotex filed a
statement of defence and counterclaim, seeking to impeach
Allergan's patents. In its defence to counterclaim, Allergan
denied Apotex's invalidity allegations.
Prothonotary Milczynski paraphrased Apotex's demands for
particulars in respect of Allergan's pleading as follows:
"why is every piece of prior
cited by Apotex impermissible";
"what is the promise and
inventive concept disclosed by the patent";
"what is the utility of the
inventive concept"; and
"how was that utility
Prothonotary Milczynski dismissed Apotex's motion in its
entirety. In so doing, Prothonotary Milczynski held that:
Apotex bears the
burden of proving invalidity of the patents at
The particular sought are not
material facts but would require Allergan to plead
evidence, expert opinion, legal conclusions and claim
Allergan's denials of
Apotex's allegations of invalidity, though stated in the
affirmative, are traverses.
Allergan's "wide and
undefined" pleadings are not in substance
"pregnant negatives" and do not require
Apotex filed no evidence to
establish that they need the requested particulars to
prepare its responding pleading.
Notably, Prothonotary Milczynski's order was in full
agreement with an earlier
decision of Prothonotary Aalto. The earlier decision also
involved Allergan and Apotex and arose in the context of a patent
impeachment action where Apotex was seeking essentially the same
particulars from Allergan.
These decisions of Prothonotary Milczynski and Prothonotary
Aalto are significant for innovative pharmaceutical companies, and
patentees in general, who have been asked to
"particularize" the inventive concept(s) or promise(s) of
utility (if any) at the pleadings stage. Such requests put the
cart before the horse by requiring that constructions be
pleaded even before experts are retained and consulted.
Furthermore, such requests ignore the fact that these demands are
not for material facts and that they effectively reverse the burden
which lies on challengers to impeach patents that are presumed to
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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