PATENTS |
Practice |
Aventis Pharma Inc. v. Apotex Inc.
T-1742-03
2004 FC 570, Gauthier J.
15/4/04
8 pp.
Judicial review of Prothonotary's dismissal of respondent's motion to strike whole of evidence filed by Schering Corporation (Schering) on basis it constituted abuse of process because Schering, as patentee, had no right to file separate evidence to support Aventis Pharma Inc.'s (Aventis) application--Although not convinced issue before Prothonotary vital to final determination of case, Court decided to exercise discretion de novo--Aventis filed application to prevent issuance of Notice of Compliance to Apotex--Validity of Canadian patent No. 1341206 (206 patent) at issue--Aventis, licensee of 206 patent, required to make Schering, patentee, party to application--Schering's evidence deals mostly with soundness of predictability of patent claims 1, 2, 3 and 6 while Aventis' evidence only deals with soundness of predictability of claims 12 and 3--Apotex submits that allowing filing of Schering's evidence gives Aventis two distinct opportunities to file evidence and that Schering's filing of evidence "blindsided" Apotex with new evidence and arguments--Under Federal Court Rules, 1998, no provision permitting Court to limit rights of person who is proper and necessary party to proceeding--Parliament saw fit to require owner of patent in issue in proceedings instituted under Patented Medicines (Notice of Compliance) Regulations be made party to those proceedings--Reason for requirement to insure patentee will also be bound by outcome of prohibition proceedings--Patentee having right to representa-tion by counsel of its choice--On that basis, Schering's right to file evidence supporting its view 206 patent valid, confirmed--Schering did not duplicate evidence of Aventis-- Schering cannot be blamed or punished for having ensured it did not duplicate evidence of Aventis--Apotex says when it consented to order fixing schedule for order filing evidence, could not have anticipated Schering would file any substantive evidence--Apotex's failure to raise this matter when schedule fixed cause of problem--Insufficient evidence to conclude abuse of process by Schering--Motion dismissed--Federal Court Rules, 1998, SOR/98-106--Patented Medicines (Notice of Compliance) Regulations, SOR/93-133.