PATENTS |
Practice |
Mayne Pharma (Canada) Inc. v. Aventis Pharma Inc.
A-372-04
2005 FCA 50, Nadon J.A.
4/2/05
17 pp.
Appeal from Federal Court decision ([2004] F.C.J. No. 2193 (QL)) allowing respondent's motion to strike portions of appellant's affidavit evidence in context of Patented Medicines (Notice of Compliance) Regulations, s. 6 prohibition application--Prohibition application alleging appellant's process for preparing cefotaxime sodium infringing respondent's 1319682 patent (682 patent)-- Impugned paragraphs struck on basis not directed to factual issues divulged in appellant's detailed statement accompanying notice of allegation (NOA) alleging non- infringement--Review of case law on procedure for reviewing discretionary decisions--Although preferable to defer motions to strike affidavits or portions thereof to hearings judge, not mandatory as matter of principle, that such motions be deferred--Motions Judge not erring in refusing to defer motion--As to whether motions Judge misapprehended evidence in concluding paragraphs 71-75 of affidavit constituting new facts, judge not erring in concluding U.S. patent 5567813 (813 patent) should have been disclosed in NOA if it was to be relied upon to argue non-infringement --Reliance on 813 patent attempt to provide additional basis for non-infringement, constituting kind of affidavit evidence to be struck pursuant to AB Hassle v. Canada (Minister of National Health and Welfare) (2000), 7 C.P.R. (4th) 272 (F.C.A.)--However motions Judge did misapprehend evidence when concluded appellant could not rely on paragraphs 22-25 of affidavit because its detailed statement did not divulge that cefotaxime sodium disclosed in prior art (i.e. 1216284, or 284 patent)--Issue of 284 patent arising out of appellant's alternative pleas in relation to number of claims of 682 patent and is found in detailed statement--For appellant's argument to have any force, must be proof cefotaxime sodium produced by process described in 284 patent--Respondent cannot be surprised if such proof found in affidavit--Affidavit laying foundation for allegation in detailed statement, paragraphs 22-25 not involving recourse to new facts--Appellant's detailed statement sufficiently complete to allow respondent to respond fully to allegations of invalidity re: 682 patent--Appeal allowed in part-- Patented Medicines (Notice of Compliance) Regulations, SOR/93-133, s. 6 (as am. by SOR/98-166, ss. 5, 9; 99-379, s. 3).