Date: 20100422
Docket: A-510-09
Citation: 2010 FCA
112
CORAM: NOËL J.A.
PELLETIER J.A.
DAWSON J.A.
BETWEEN:
ASTRAZENECA CANADA INC.,
IPR PHARMACEUTICALS, INC.,
ASTRAZENECA UK LIMITED and
SHIONOGI SEIYAKU KABUSHIKI KAISHA
Appellants
and
NOVOPHARM
LIMITED
Respondent
Heard at Ottawa, Ontario, on April 20, 2010.
Judgment delivered at Ottawa,
Ontario, on April 22, 2010.
REASONS FOR JUDGMENT BY: NOËL
J.A.
CONCURRED
IN BY: PELLETIER
J.A.
DAWSON J.A.
Date: 20100422
Docket: A-510-09
Citation: 2010 FCA 112
CORAM: NOËL
J.A.
PELLETIER J.A.
DAWSON
J.A.
BETWEEN:
ASTRAZENECA CANADA INC.,
IPR PHARMACEUTICALS, INC.,
ASTRAZENECA UK LIMITED and
SHIONOGI SEIYAKU KABUSHIKI KAISHA
Appellants
and
NOVOPHARM LIMITED
Respondent
REASONS FOR JUDGMENT
NOËL J.A.
[1]
This is an appeal
from the order of Hughes J. (the Federal Court Judge) striking out the
Statement of Claim filed by AstraZeneca Canada Inc., IPR Pharmaceuticals Inc.,
AstraZeneca UK Limited and Shionogi Seiyaku Kabushiki Kaisha (the appellants).
The Statement of Claim alleged that Novopharm Ltd. (the respondent) was
currently infringing the appellants’ patent by making or having made for it commercial
quantities of the infringing product (current infringement), and will infringe
the appellant’s patent upon successfully resisting the appellants’ pending
prohibition application, and obtaining a Notice of Compliance for its
novo-rosuvastatin tablets (quia timet or future infringement).
[2]
The Federal Court
Judge found that the claim of current infringement was an abuse of process as
it was based on bald allegations made without any evidentiary foundation. With
respect to the future infringement, the Federal Court Judge found that the
allegations were speculative in nature and lacked the degree of certainty
required to support a quia timet action.
[3]
The appellants take
issue with both aspects of the Federal Court Judge’s decision. They maintain
that they pleaded sufficient material facts to support their claim of current
infringement and satisfied the requirements for a quia timet action. The
appellants add that beyond this, the Notice of Allegation (NOA) served by the
respondent constitutes, in and of itself, an act of infringement and that this
fact alone is sufficient to ground an action for infringement. As such, the
claim cannot be said to be bereft of any chance of success.
[4]
With respect to the alleged
current infringement, the Federal Court Judge noted that the appellants had
been asked to produce particulars about their claim and refused to do so. He
dealt with the argument of the appellants, now being repeated before us, as
follows (Reasons, paras. 15, 17 and 18):
[15] … [the appellants] say that any question as to what the [respondent]
has done or intends to do can be explored on discovery whereupon a satisfactory
case can thereafter be made out. …
…
[17] There are many decisions of this Court that state that an action
cannot be brought on speculation in the hope that sufficient facts may be
gleaned on discovery that will support the allegations made in the pleadings.
Often this is referred to as a fishing expedition. …
[18] The pleadings in the Statement of Claim in the present action that
the [respondent] has acquired the medicine “for commercial use” and intends to
sell it lacks any material facts to support the plea. Bald allegations such as
these must be supported by material facts. It is not an answer to say that,
given discovery, these facts can be ascertained. That is an abuse.
[5]
I agree with the
appellants that one must not confuse material facts, which must be pleaded and
which in this case were pleaded, and the evidence by which those facts may be
proven. However, it remains that an allegation made without any evidentiary
foundation is an abuse of process. In this respect, the finding that the
allegation of current infringement was an abuse of process was open to the
Federal Court Judge on the record before him. I refer in particular to the
appellant’s refusal to provide particulars and its position that its case would
be fleshed out after discovery.
[6]
With respect to future
infringement, the Federal Court Judge reviewed decisions of the Federal Court
where allegations of infringing actions which had yet to materialize were
struck on the basis that they were overly speculative (Connaught
Laboratories Ltd. v. SmithKline Beecham Pharma Inc., (1998) 86 C.P.R. (3d)
36; Pfizer Research and Development Co. N.V./S.A. v. Lilly Icos LLC,
(2003) 27 C.P.R. (4th) 86; GlaxoSmithKline Biologicals S.A. v. Novartis
Vaccines and Diagnostics, Inc., 2007 FC 833). Referring to those decisions,
he went on to hold (Reasons, para. 23):
There is no material difference between the pleadings in the three cases
referred to above and the pleadings in the present Statement of Claim. There
has been a bit of “wordsmithing” done to the present Statement of Claim,
however, put into a realistic perspective, all that is said is that if
Novopharm prevails in the NOC proceeding after trial or appeal it will most
probably get an NOC and then most likely commence to sell the patented drug in Canada.
This pleading is not materially different from those that were struck out
before by this Court.
[My emphasis]
[7]
This conclusion is
based on a fair reading of the appellants’ Statement of Claim and gives effect
to the established proposition that a quia timet action must be based on
more than mere possibilities.
[8]
The appellants’ final
contention – i.e., that the NOA is in itself an act of infringement and that as
this point has yet to be judicially considered, the claim cannot be said to be
bereft of any chance of success – is not addressed by the Federal Court Judge.
The respondent maintains that this is because the argument was not put to the
Federal Court Judge and urges us not to deal with this argument on that ground.
[9]
The fact that the
argument was not addressed by the Federal Court Judge does suggest that it was
not made or insisted upon by the appellants. In any event, what the appellants
seek to raise is a novel act of infringement which would have to be
specifically pleaded before it can be addressed. No such allegation is made in
the Statement of Claim.
[10]
I would dismiss the
appeal with costs.
“Marc
Noël”
“I
agree.
J.D. Denis Pelletier J.A.”
“I
agree.
Eleanor R. Dawson J.A.”
FEDERAL COURT OF APPEAL
NAMES OF COUNSEL AND
SOLICITORS OF RECORD
DOCKET: A-510-09
(APPEAL FROM AN ORDER OF THE HONOURABLE
Mr. JUSTICE HUGHES OF THE FEDERAL COURT DATED NOVEMER 24, 2009, NO. T-1563-09.)
STYLE OF CAUSE: AstraZeneca
Canada Inc., IPR Pharmaceuticals, Inc., AstraZeneca UK Limited and Shionogi
Seiyaku Kabushiki Kaisha - and - Novopharm Limited
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: April 20, 2010
REASONS FOR JUDGMENT BY: Noël J.A.
CONCURRED IN BY: Pelletier J.A.
Dawson J.A.
DATED: April 22, 2010
APPEARANCES:
|
Gunars A. Gaikis
|
FOR
THE APPELLANTS
|
|
Jonathan Stainsby
Andrew
McIntyre
|
FOR
THE RESPONDENT
|
SOLICITORS OF RECORD:
|
Smart & Biggar
Toronto,
Ontario
|
FOR
THE APPELLANTS
|
|
Heenan Blaikie LLP
Toronto, Ontario
|
FOR
THE RESPONDENT
|
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