Date: 19980423
Docket: T-2870-96
BETWEEN:
APOTEX INC.
Plaintiff
and
SYNTEX PHARMACEUTICALS INTERNATIONAL LIMITED AND
HOFFMANN-LA ROCHE LIMITED
Defendants
REASONS FOR ORDER
NOËL J.:
[1] By way of motion for summary judgment, the plaintiff, Apotex, seeks a declaration of non-infringement pursuant to subsection 60(2) of the Patent Act . Specifically, Apotex seeks a declaration that the "manufacture" and "sale" of its formulation of controlled release naproxen tablets does not infringe the defendants" Patent No. 1,204,671.
[2] By their statement of defence, the defendants deny that Apotex is entitled to a declaration of non-infringement on the merits and take the position that Apotex does not have the standing to seek the declaration of non-infringement. They further state that the matter is res judicata and that the claim amounts to an abuse of process.
[3] When Rothstein J. proceeded to set down plaintiff"s motion for hearing, he observed, wisely in my respectful view, that his order was not to be construed as an indication that this matter was amenable to summary judgement. Before proceeding with the hearing of plaintiff"s motion on the merits, I requested that counsel address the issue as to whether this case ought to be disposed of by summary judgement. A lively debate of some seven hours followed on this question at the conclusion of which I indicated that I would deliver my decision the next day.
[4] Upon resumption, I indicated that the motion for summary judgement would be dismissed for the following reasons. First, the motion is deficient in that it fails to address the preliminary objection with respect to standing which the defendants have raised by their statement of defence.1 The judgement sought cannot be granted unless this preliminary objection is also dealt with in the context of a summary judgement and disposed of in favour of Apotex. It was therefore incumbent upon Apotex to bring this issue within the ambit of its motion for summary judgement and it has not done so.
[5] Counsel for Apotex took the position that this preliminary question is simple and straightforward and that it is clear that it ought to be decided in favour of his client. Hence, he says, this is not an obstacle to a summary judgement. He may ultimately prove to be right, but the Court was caught totally unprepared to deal with this issue and, as was made apparent by the questions raised, I am far from convinced that the issue is as simple and straightforward as counsel makes it out to be.2 The point is that it is up to the party seeking to avail itself of the summary judgement procedure to satisfy the Court that there is no genuine issue for trial, and Apotex by ignoring altogether what appears to me to be an important issue of jurisdiction which stands between it and the summary judgement which it is seeking has failed to inform the Court of the issues to be decided in the context of its motion.
[6] Second, while patent infringement issues are not by definition excluded from the ambit of summary judgements, they tend to raise complex issues of fact and law which are usually better left for trial. This case is no exception.
[7] The construction of a patent is ultimately a matter for the Court to decide. However, patents must be construed in the eyes of persons skilled in the art, and when dealing with patents relating to medicine, this usually compels the Court to place reliance on expert opinions. When this occurs, the credibility of the experts becomes relevant first in the sense that contradictory opinions on the same issue cannot all be right, and the Court must determine which are to be preferred, and second because, in some instances, the desire or capability of the experts to objectively inform the Court is put into question. Obviously, when issues of credibility arise, particularly issues of the second kind, it is difficult to conceive how the Court could render justice without the benefit of viva voce evidence.
[8] Here credibility issues of the second type abound with respect to each of the four experts which have been put forth by the parties to assist the Court. The plaintiff argues that Drs. Banker and Yum did not draft the affidavit which they signed and specifically attacks their credibility on this basis.3 Therein lies a suggestion that the experts in question lent their credibility to an opinion that was not their own. This allegation is followed by numerous others which suggests that these witnesses failed to inform themselves of facts essential to the issuance of the opinion which they gave.4
[9] The defendants on the other hand allege that the opinion expressed by Dr. Sherman is not credible because he does not possess the required objectivity. It is alleged that he has personally made a patent application related to the medicine in issue.5 Dr. Niebergall is said to be a "routine" witness who "has been involved in so many cases on behalf of Apotex that he could not specify the number",6 the suggestion being that he is an expert who tends to respond to his client"s needs.
[10] Keeping in mind the nature of these attacks, I do not believe that I have to refer to any of the extensive authorities quoted by counsel to support the conclusion that in this instance, it would be preferable for the Court to hear the witnesses themselves in the context of normal trial proceedings.
[11] The application is dismissed with costs against the plaintiff payable in any event of the cause.
Marc Noël
Judge
OTTAWA, ONTARIO
April 23, 1998
__________________
1 Apotex"s Memorandum of Argument is equally silent on this preliminary issue.
2 Specifically, I do not believe that the statement of Hugessen J.A. in Merk Frost Canada Inc. v. Canada (Minister of National Health and Welfare) 55 C.P.R. (3d) 302, at pages 319 and 320 is determinative of this issue. This statement is obiter and the Court did not have in mind the question raised in the present proceeding which turns on the effect of a prohibition order issued pursuant to s. 6(2) of the Patented Medicines (Notice of Compliance) Regulations in respect of a medicine on the standing of a second person to seek a declaration of non-infringement under s. 60(2) of the Patent Act in respect of the same medicine.
3 Paragraphs 42(a) and (b) of Apotex"s Memorandum.
4 Paragraphs 42(c) to (h) of Apotex"s Memorandum.
5 Paragraphs 88 to 94 of Defendants" Memorandum.
6 Paragraph 96 of the Defendants" Memorandum.
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