| Citation: |
ApoTEX Inc. v. H. Lundbeck A/S, 2010 FC 807, [2010] 4 F.C.R. D-2 |
T-1407-09 |
Patents
Practice
Motion by Apotex to strike counterclaim by H. Lundbeck A/S (Lundbeck) in nature of quia timet action on infringement—Lundbeck arguing counterclaim should be allowed to proceed because it is brought in response to an action seeking a declaration of non-infringement—Apotex seeking not only declaration of invalidity against Lundbeck’s Canadian patent No. 1339452 ('452 patent), but also declaration that making, selling drug at issue will not infringe '452 patent—Lundbeck’s counterclaim in nature of quia timet seeking declaration that '452 patent will be infringed—Court’s previous authorities consistently holding that actions by second person pursuing mechanism in Patented Medicines (Notice of Compliance) Regulations, SOR/93-133 do not, by themselves, justify quia timet proceeding by patent owner—However, present circumstances materially different from previous cases in that Apotex’ action specifically seeking declaration that proposed drug will not infringe '452 patent—These circumstances not within Court’s contemplation when criteria enunciated in Connaught Laboratories Ltd. v. Smithkline Beecham Pharma Inc. (1998), 86 C.P.R. (3d) 36, since pleading at issue therein was principal action—Review of authorities indicating that fundamental concern in regulating use of quia timet proceedings is preventing abuses of process, ensuring judicial resources not wasted—No suggestion of abuse of process in present case—Criteria set out in Connaught Laboratories should be applied with more flexibility where quia timet proceeding brought in response to action seeking declaration of non-infringement—Motion dismissed.
Apotex Inc. v. H. Lundbeck A/S (T-1407-09, 2010 FC 807, Tabib P., order dated August 5, 2010, 12 pp.)