Date:
20130219
Docket:
A-370-12
Citation:
2013 FCA 47
CORAM: BLAIS C.J.
GAUTHIER J.A.
TRUDEL J.A.
BETWEEN:
APOTEX INC. and
APOTEX
PHARMACHEM INC.
Appellants
and
ASTRAZENECA CANADA
INC.,
ASTRAZENECA AKTIEBOLAG
and ASTRAZENECA UK LIMITED
Respondents
Heard
at Montreal, Quebec, on February
19, 2013.
Judgment delivered from the Bench at Montreal, Quebec, on February
19, 2013.
REASONS FOR JUDGMENT BY: THE
COURT
Date:
20130219
Docket:
A-370-12
Citation:
2013 FCA 47
CORAM: BLAIS
C.J.
GAUTHIER
J.A.
TRUDEL
J.A.
BETWEEN:
APOTEX INC. and
APOTEX
PHARMACHEM INC.
Appellants
and
ASTRAZENECA CANADA INC.,
ASTRAZENECA AKTIEBOLAG
and ASTRAZENECA UK LIMITED
Respondents
REASONS FOR JUDGMENT
BY THE COURT
(Delivered
from the Bench at Montreal, Quebec, on February 19, 2013)
[1]
Apotex
Inc. and Apotex Pharmachem Inc. (collectively Apotex) are the defendants to an
infringement action brought by the AstraZeneca group of companies. In the
course of that proceeding, AstraZeneca, pursuant to Rule 249, has successfully
moved for the production of samples of Apotex esomeprazole magnesium bulk,
blends, tablet cores, finished tablets and other related materials for
destructive testing.
[2]
Apotex
appeals from the order made by Mosley J. of the Federal Court (2012 FC 991) who
upheld the previous order dated June 5, 2012 by Prothonotary Aronovitch
(T-1668-10) who found that “the proposed sampling is necessary and expedient in
order to allow AstraZeneca to adduce its own independent evidence to support
and make its case on infringement” (Prothonotary’s endorsement at page 2).
[3]
Apotex
argues that the Federal Court misconstrued, in several ways, the applicable
test for the production of samples under Rule 249 of the Federal Courts
Rules, SOR/98-106. It submits that the Federal Court read down the
statutory language of the Rule and failed to apply the single “necessary and
expedient” standard to all of its aspects.
[4]
Moreover,
Apotex also alleges that the Prothonotary committed errors by failing to
recognize AstraZeneca’s lack of evidence establishing that the samples would
likely assist the innovator in making its case, which is supported by a patent
construction “without any air of reality” especially considering that Dr.
Byrn’s affidavit was not filed as evidence in this case. As well, the
Prothonotary should have considered two additional factors: first that
AstraZeneca led no evidence that the order sought would not prejudice Apotex; and
second that AstraZeneca had another course of action available. It could have
emulated Apotex’s manufacturing process or accessed marketed tablets for
testing.
[5]
Finally,
Apotex also appeals the order as to costs. Costs were ordered to be paid
forthwith. At the hearing of this appeal, Apotex indicated that it no longer
wishes to pursue this issue.
[6]
For
reasons issued this day in appeal file A-337-12, we dismiss all of Apotex’s
arguments regarding the alleged errors of law committed by the Federal Court in
identifying the requirements of Rule 249. We are satisfied that the Federal
Court committed no error in applying Rule 249 to the facts of this case.
[7]
Having
carefully reviewed the order and endorsement of Prothonotary Aronovitch and the
extensive reasons of the Judge, we have not been persuaded that they committed
errors of principle or any other errors.
[8]
As
a result, this appeal will be dismissed with costs.
« Pierre
Blais »
« Johanne
Gauthier »
“Johanne Trudel”
FEDERAL COURT OF
APPEAL
NAMES OF COUNSEL AND
SOLICITORS OF RECORD
DOCKET: A-370-12
STYLE OF CAUSE: Apotex
Inc. et al v.
Astrazeneca Canada Inc. et al
PLACE OF HEARING: Montreal, Quebec
DATE OF HEARING: February 19, 2013
REASONS FOR JUDGMENT
OF THE COURT BY: THE COURT
DELIVERED FROM THE
BENCH BY: TRUDEL J.A.
APPEARANCES:
|
Mr. Andrew Brodkin
Mr.
Sandon Shogilev
|
FOR
THE APPELLANTS
|
|
Mr. Vik Tenekjian
Mr.
Gunars Gaikis
|
FOR
THE RESPONDENTS
|
SOLICITORS
OF RECORD:
|
GOODMANS LLP
Toronto, Ontario
|
FOR THE APPELLANTS
|
|
SMART AND BIGGAR
Ottawa, Ontario
|
FOR THE RESPONDENTS
|
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