Abbott Laboratories, Limited v. Apotex Inc., docket T-2202-97

Date: 19971127

Docket: T-2202-97

IN THE MATTER of an Application for an order of Prohibition pursuant to s. 55.2(4) of the Patent Act and s. 6 of the Patented Medicines (Notice of Compliance) Regulations.

BETWEEN :

ABBOTT LABORATORIES, LIMITED

-and-

     ABBOTT LABORATORIES

     Applicants

     AND

     APOTEX INC.

     -and-

     THE MINISTER OF HEALTH CANADA

     Respondents

     REASONS FOR ORDER

ROULEAU J.

[1]      This motion came before me at Montreal on November 24, 1997. The applicants were seeking leave to file a reply affidavit in the proceeding: This was opposed by the Apotex Inc.

[2]      The respondent submits that in light of directions from the Federal Court of Appeal in many cases dealing with the Patented Medicines Regulations, the motions judge should be restrictive in the exercise of his discretion. It reminded the court that any undue delay is tantamount to extending an interlocutory injunction in favour of the applicant, who, by initiating the proceeding, has prohibited the Minister from issuing Notices of Compliance. The court was further instructed on the clear duty to deal with applications expeditiously; that the scheme of the Regulations confers on the patentee carriage of the proceeding and that dilatorious prosecution as well as departure from the schedule imposed ought not be routine; that the 30 months period was intended to exhort the parties to focus on the prosecution.

[3]      Counsel for the respondent further submits that in this particular proceeding the applicants had the duty, in providing the affidavit material in support of the Originating Notice of Motion, to anticipate the reply evidence that would be filed by the respondent; that having experts at their disposal they should have been in a position to meet their case without recourse to further and better affidavits in reply.

[4]      I have reviewed the affidavit of John F. Baur sworn October 8, 1997 filed by the applicants as well as the material filed by Apotex and I am satisfied to allow them the right to file a reply affidavit.

[5]      The notice of allegation dated August 25, 1997 contains but two lines with respect to patent 1136151 for constructing a non infringing tablet containing divalproex sodium:

"More particularly our tablets will contain as the medicine a mixture of:

i)      solid solution of sodium valproate in valproric acid and;

ii)      undissolved sodium valproate.

[6]      The affidavit filed by Apotex of Robert Allan McCelland sworn the 9^th day of November 1997, as submitted by the applicant, contains new allegations of fact not previously revealed and it is also the first evidence filed by the respondent.

[7]      I have carefully scrutinized both affidavits filed in support of the Originating Notice of Motion and the evidence filed by Apotex. I am satisfied that the applicants could not possibly anticipate the entire contents of the Dr. McCelland evidence given the brief statement filed in the Notice of allegation; I hereby allow the applicant to file a reply affidavit.

[8]      Though I am prepared to allow the motion I am not disposed to permit the applicant the time requested in their Notice of Motion to file and serve the reply evidence.

[9]      This matter commenced with the Originating Notice of Motion filed October 10, 1997; no schedule has yet been determined; no cross examinations have been initiated; we are still well within the 30 months deadline.

[10]      It is hereby ordered that the reply affidavit of the applicant shall be filed and served no later than December 19, 1997. In light of this order I shall allow the respondent Apotex to file further evidence by January 9, 1998, if required.

[11]      This court has the discretion to allow reply affidavits to be filed when it will not cause unreasonable delay, serve the interest of justice and assist the court in making a final determination. I am also persuaded that it would cause substantial prejudice to the applicant should I deny this motion.

[12]      These reasons were released in English, though argued in both official languages, because all pleadings are in the English language and time is of essence.

     Paul U.C. Rouleau

     Judge

Montreal, Quebec

November 27, 1997

[13]     

[14]     

[15]     

[16]     

[17]     

[18]     

[19]     

     FEDERAL COURT OF TRIAL

Date: 19971127

Docket: T-2202-97

BETWEEN:

     ABBOTT LABORATORIES, LIMITED

     -and-

     ABBOTT LABORATORIES

     Applicants

     AND

     APOTEX INC.

     -and-

     THE MINISTER OF HEALTH CANADA

     Respondents

    

     REASONS FOR ORDER

    

     FEDERAL COURT OF CANADA

     IMMIGRATION DIVISION

     NAMES OF COUNSEL AND SOLICITORS OF RECORD

COURT NUMBER:                  T-2202-97

BETWEEN:                      ABBOTT LABORATORIES, LIMITED

                         -and-

                         ABBOTT LABORATORIES

     Applicants

                         AND

                         APOTEX INC.

                         -and-

                         THE MINISTER OF HEALTH CANADA

     Respondents

PLACE OF HEARING:              Montreal (Quebec)

DATE OF HEARING:              November 24, 1997

REASONS FOR ORDER:              Honourable Mr. Justice Rouleau

DATED:                      November 27, 1997

APPEARANCES:                     

         Me Marie Lafleur          for the Applicant

         Mr. Andrew Brodkin

         Mrs Mya Rimon          for the Respondent Apotex Inc.

SOLICITORS OF RECORD:

         Martineau Walker

         Montreal (Quebec)          for the Applicant

         Goodman Phillips & Vineberg

         Toronto (Ontario)          for the Respondent Apotex Inc.[20]     

[21]