Eli Lilly and Co. v. Apotex Inc.
T-1100-97
Richard J.
20/2/98
12 pp.
Motion to strike paragraphs of statement of defence and counterclaim on ground disclosing no reasonable defence-Plaintiffs attacking portion of s. 10(a) alleging inventor not making or testing all compounds or could not make or test all compounds before Canadian patent filed-Monsanto Company v. Commissioner of Patents, [1979] 2 S.C.R. 1108 applied-If inventor claimed more than was invented, and included substances devoid of utility, claims open to attack, but in order to succeed, must be supported by evidence of lack of utility-Claim may also be declared invalid for reason not sound prediction-Defendant referring to Hoechst Pharmaceuticals of Canada Limited et al. v. Gilbert & Company et al., [1966] S.C.R. 189 wherein Court referring to counsel's characterization of patents as "unproved and untested hypothesis in uncharted field"-Allegation still open to defendant if plea of no testing struck since pleas of overclaiming, lack of utility will remain-Words in s. 10(a) "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" struck out-Plea in s. 10(l) alleging appellant withheld relevant information during prosecution of application-S. 11 dependent on s. 10(l)-Patent Act, s. 53(1) providing patent void if any material allegation in applicant's petition in respect of patent untrue, or if specification and drawings containing more or less than necessary for obtaining end for which purport to be made, and omission or addition wilfully made for purpose of misleading-Lovell Manufacturing Co. and Maxwell Ltd. v. Beatty Bros. Ltd. (1962), 41 C.P.R. 18 (Ex. Ct.) specifically dealing with matter-No provision in Act that untrue allegation, even amounting to misrepresentation, made in course of prosecution of application for patent having any effect on validity of patent-Once patent issued, s. 48 providing prima facie valid-Recital in patents that applicant complying with requirements of Act conclusive in absence of fraud-Ss. 10(l), 11 struck out-Patent Act, R.S.C., 1985, c. P-4, ss. 45 (as am. by R.S.C., 1985 (3rd Supp.), c. 33, s. 16; 1993, c. 15, s. 42), 53.