Date: 20040721
Docket: T-1697-01
Citation: 2004 FC 1015
BETWEEN:
ELI LILLY AND COMPANY and
ELI LILLY CANADA INC.
Plaintiffs
- and -
APOTEX INC. and
NOVOPHARM LIMITED
Defendants
REASONS FOR ORDER AND ORDER
(Delivered from the bench in Ottawa, Ontario,
on Wednesday, July 21, 2004)
HUGESSEN J.
[1] I am going to dismiss this motion for summary judgment brought by the plaintiffs primarily on procedural grounds.
[2] The first of those grounds is that in its notice of motion plaintiffs quite clearly specified two grounds on which it was seeking summary judgment and I set out here the actual text of the relevant paragraphs of the notice of motion:
THE GROUNDS FOR THIS MOTION ARE:
The Compulsory License is Not a Defence
1. In this proceeding, both Apotex and Novopharm are alleged to have infringed Canadian Letters Patent 1,217,486 (the '486 Patent) and 2,069,055 (the '055 Patent). Amongst other things, Lilly alleges that Novopharm is importing bulk nizatidine into Canada and selling it to Apotex. This nizatidine is alleged to have been made according to the processes of the '486 and '055 Patents. Amongst other things, Apotex is alleged to be formulating, manufacturing, offering for sale and selling products made from the bulk nizatidine purchased from Novopharm.
2. As part of their defence, Apotex and Novopharm both plead that Novopharm's Compulsory Licence J2324-39(4)-977 (the Compulsory Licence) provides them with a licensing defence to infringement. Moreover, Apotex'counterclaim is premised on the fact that the Compulsory Licence extends to the '486 and '055 Patents. Apotex and Novopharm have entered into a Supply Agreement regarding the "sharing" of their compulsory licences.
3. The Compulsory Licence does not extend to the '486 and '055 Patents. Novopharm applied for and was granted the Compulsory Licence in respect of Canadian Letters Patent 1,166,248 and 1,221,369 (collectively "the Licensed Patents"). In this proceeding, Lilly is not suing on any Licensed Patents. Accordingly, these defences and counterclaim do not raise any genuine issue that needs to be resolved at trial.
4. Specifically, paragraphs 12, 44-50 and 51(c) of Apotex'Statement of Defence, Third Party Claim and Counterclaim and paragraphs 11-16 in Novopharm's Statement of Defence raise no genuine issue for trial and accordingly summary judgment should be granted in respect of these paragraphs.
This Proceeding is Not an Abuse of Process
5. Lilly is also seeking summary judgment in repect of paragraphs 7-9 of Apotex' Statement of Defence. In these paragraphs, Apotex alleges that this proceeding is an abuse of the Court's process because Eli Lilly, Apotex and Novopharm are involved in another infringement proceeding that also involves nizatidine. Apotex brought a motion to join the two proceeding and argued that having two separate proceedings constituted an abuse of process.
6. Case Management Prothonotary Aronovitch refused to join the two proceedings, finding that different patents are involved in each proceeding and there are different issues relating to infringement in each proceeding, it would not be prudent to join the two proceedings. Apotex did not appeal. As such, Apotex' claims of abuse in paragraphs 7-9, are frivolous vexatious, and subject to the doctrine of res judicata.
7. Rules 213, 216, 217 and 218 of the Federal Court Rules, 1998.
[3] In its written memorandum and in its attempt to plead the matter orally today, plaintiffs sought to enlarge on those grounds and to plead matters of which there was no suggestion whatever in the written notice of motion. In my view, that is unfair and unjust, and indeed, in this particular case that, unfairness and unjustice was demonstrated by the fact that at least one of the respondents did not think it necessary to file evidence in response to grounds of which it did not have notice and very clearly would have wanted to file evidence if it had had such notice.
[4] The second procedural basis upon which I dismiss this motion is that, in my view, it is misconceived as a motion for summary judgment, save in respect of one minor aspect to which I shall advert in a moment. The motion does not seek as Rule 213 requires a judgment upon the whole or a part of the claim set out in the statement of claim. At best, the motion seeks to have me strike out certain paragraphs of the statement of defence which would nonetheless leave a defence in place, for both defendants, and could not result in a judgment today in favour of plaintiffs, on the merits, of any part of the claim.
[5] I have given some consideration as to whether I should treat the motion as being a motion to strike pursuant to Rule 221 but, in my view, it could not possibly survive the threshold test for that sort of motion. However one may view the impugned allegations of the two statements of defence. They are clearly not so devoid of hope as to be unfounded beyond all possibility of success, so if I were to treat the motion as being a simple motion to strike, I would still have to dismiss it.
[6] I come now to the final point which I mentioned a moment ago, namely that there is a part of the motion for summary judgment which relates to a specific allegation in the counterclaim of one defendant (adopted and incorporated from its statement of defence) in which it is alleged that the plaintiffs' action is an abuse of process. That ground which I have reproduced above indicates a very specific basis for that contention, namely that there isres judicata on the question of abuse of process in the earlier decision of Prothonotary Aronovitch in which she refused to consolidate this action with another one. In my view, there is not res judicata. Prothonotary Aronovitch's decision was an exercise of discretion by her, in the management of the case, she made no pronouncement whatever on the issue of abuse of process and her judgment cannot be invoked as a final judgment dismissing on its merits the defendants' contention in this regard.
[7] That disposes of the motion which will be dismissed.
[8] After hearing counsel on costs, I have decided that the motion should not have been brought and should attract a high award of costs to be paid forthwith.
ORDER
The plaintiffs' motion for summary judgment is dismissed with costs in the amount of $10,000 each payable to defendants Apotex and Novopharm forthwith and in any event of the cause.
"James K. Hugessen"
Judge
Ottawa, Ontario
July 21, 2004
FEDERAL COURT
NAMES OF SOLICITORS AND SOLICITORS ON THE RECORD
COURT FILE NO.: T-1697-01
STYLE OF CAUSE: Eli Lilly and Company et al v.
Apotex Inc. and Novopharm Limited
DATE OF HEARING: July 21, 2004
PLACE OF HEARING: Ottawa, Ontario
REASONS FOR ORDER AND ORDER OF THE HONOURABLE MR. JUSTICE HUGESSEN
DATED: July 21, 2004
APPEARANCES:
Patrick Smith and
Beverley Moore FOR PLAINTIFFS
Nando DeLuca and
Jason Wadden FOR DEFENDANT APOTEX
Alan Aucoin and
Antonio Turco FOR DEFENDANT NOVOPHARM
SOLICITORS ON THE RECORD:
Gowlings Lafleur Henderson LLP
Ottawa, Ontario FOR PLAINTIFFS
Goodmans LLP
Toronto, Ontario FOR DEFENDANT APOTEX
Blake, Cassels & Graydon LLP
Toronto, Ontario FOR DEFENDANT NOVOPHARM