Date: 20000626
Docket: A-124-98
CORAM: LÉTOURNEAU, J.A.
EVANS, J.A.
SHARLOW, J.A.
BETWEEN:
APOTEX INC.
Appellant
(Defendant)
- and -
ELI LILLY AND COMPANY and
ELI LILLY CANADA INC.
Respondents
(Plaintiffs)
Heard at Toronto, Ontario, on Monday, June 26, 2000
Judgment delivered from the Bench at Toronto, Ontario, on Monday, June 26, 2000
REASONS FOR JUDGMENT OF THE COURT: LÉTOURNEAU J.A.
Date: 20000626
Docket: A-124-98
CORAM: LÉTOURNEAU J.A.
EVANS J.A.
SHARLOW J.A.
BETWEEN:
APOTEX INC.
Appellant
(Defendant)
- and -
ELI LILLY AND COMPANY and
ELI LILLY CANADA INC.
Respondents
(Plaintiffs)
REASONS FOR JUDGMENT OF THE COURT
(Delivered from the Bench at Toronto, Ontario
on Monday, June 26, 2000)
LÉTOURNEAU J.A.
| _. We have not been convinced that The Motions Judge erred when he struck from subparagraph 10(a) of the appellant"s Statement of Defence and Counterclaim the appellant"s defence of invalidity based on "incomplete testing" which was contained in the following words: "and include compounds that the alleged inventor did not or could not make or test as H2 receptor antagonists before Canadian Application 387139 was filed". |
| _. The appellant now contends in its Memorandum of Facts and Law that the impugned words in subparagraph 10(a) were not inserted as a defence of invalidity or a basis for a defence of invalidity of the patent, but rather as a factual allegation in support of a plea of unsound prediction which is a recognized ground of patent invalidity: see Monsanto Co. v. Commissioner of Patents (1979), 42 C.P.R. (2d) 161 (S.C.C.) and paragraphs 22 to 24 of the appellant"s Memorandum of Facts and Law. |
| _. We note that subparagraph 10(b) of the appellant"s Statement of Defence and Counterclaim contains the defence of unsound prediction. We also note that part of the impugned words are found in subparagraph 10(c) as a basis for a plea of lack of utility. To the extent that incomplete testing may be relevant to the plea of unsound prediction, we do not read the order of the Motions Judge as preventing the appellant from introducing, at trial, evidence of incomplete testing provided such evidence is tendered as evidence of unsound prediction and not as its own independent basis of patent invalidity. The order of the Motions Judge was clearly limited to sufficiency of testing as an independent ground of invalidity of a patent. This appears clearly from the following excerpt found at paragraph 18 of his reasons: |
| It is not a ground of invalidity of a patent that the inventor has not tested and proved it in all its claimed applications. |
| _. At the hearing before us, counsel for the appellant submitted that the impugned words alleged a material fact which supports the other two grounds of invalidity found in subparagraph 10(a), namely that the patent is over-broad and that it claims more than it discloses. He also submitted that the impugned words are relevant to all the other alleged grounds of invalidity. He recognized that there was ambiguity both in the wording and the situs of these words and that the Motions Judge could have given to them the interpretation that he did. |
| _. The appeal will be dismissed with costs without prejudice to the appellant"s right to amend its pleadings to ensure that the impugned words say what the appellant contends they were intended to say but which, obviously and rightly so in our view, the Motions Judge did not understand them as saying. In other words, the dismissal is without prejudice to the appellant"s right to plead that the impugned words allege material facts in support of and relevant to the other grounds of invalidity contained in the Amended Statement of Defence and Counterclaim. |
"Gilles Létourneau"
J.A.
| _. FEDERAL COURT OF CANADA |
Names of Counsel and Solicitors of Record
| DOCKET: A-124-98 |
| STYLE OF CAUSE: APOTEX INC. |
Appellant
(Defendant)
| - and - |
| ELI LILLY AND COMPANY and |
| ELI LILLY CANADA INC. |
Respondents
(Plaintiffs)
DATE OF HEARING: MONDAY, JUNE 26, 2000
PLACE OF HEARING: TORONTO, ONTARIO
REASONS FOR JUDGMENT
| OF THE COURT BY: LÉTOURNEAU J.A. |
Delivered at Toronto, Ontario on Monday, June 26, 2000
APPEARANCES: Mr. David Scrimger
| For the Appellant (Defendant) |
Mr. James Mills
| For the Respondents (Plaintiffs) |
| SOLICITORS OF RECORD: Goodman Phillips & Vineberg |
Barristers & Solicitors
2400- 250 Yonge Street
Toronto, Ontario
M5B 2M6
| For the Appellant (Defendant) |
| Gowling, Strathy & Henderson |
| Barristers & Solicitors |
| 2600- 160 Elgin Street |
| P.O. Box 466, Station "D" |
| Ottawa, Ontario |
| K1P 1C3 |
| For the Respondents (Plaintiffs) |
FEDERAL COURT OF APPEAL
Date: 20000626
Docket: A-124-98
BETWEEN:
| APOTEX INC. |
Appellant
(Defendant)
| - and - |
| ELI LILLY AND COMPANY and |
| ELI LILLY CANADA INC. |
Respondents
(Plaintiffs)
| REASONS FOR JUDGMENT |
| OF THE COURT |