Apotex Inc. v. Abbott Laboratories, Ltd., docket T-411-98

Date: 19981028

Docket: T-411-98

    

BETWEEN:

    

APOTEX INC.

     Plaintiff

     - and -

ABBOTT LABORATORIES, LIMITED and

ABBOTT LABORATORIES, INC.

Defendants

REASONS FOR ORDER

     ROTHSTEIN J.:

[1]      This is an appeal by the Plaintiff (Apotex) from a decision of the learned Associate Senior Prothonotary which dismissed Apotex' application to strike the defendants' (Abbott) counter-claim.

[2]      The action is one brought by Apotex for a declaration that the manufacture and sale of its Divalproex Sodium tablets does not infringe Abbott's patent No. 1136151 (the 151 patent). Abbott defends and counter-claims. The essential elements of the counter-claim are:

1 -      that Abbott seeks a declaration that Apotex' process and product infringe the 151 patent and an injunction prohibiting Apotex from infringing the 151 patent;

2-      that Abbott seeks a declaration that Bernard Sherman, chairman and Chief Executive Officer of Apotex and owner of patent No. 2172603 (the 603 patent) for a process for producing Divalproex Sodium contributorily infringes the 151 patent and for an injunction prohibiting Sherman from infringing the 151 patent;

3-      for a declaration that the 603 patent is null, void and of no effect.

[3]      The learned Associate Senior Prothonotary dismissed Apotex' motion to strike the counter-claim and permitted Abbott to maintain the counter-claim provided it was amended to allege inducement or personal responsibility by Dr. Sherman for the actions of Apotex. I have concluded that the learned Associate Senior Prothonotary's exercise of discretion was based upon a misapprehension of the facts, see Canada v. Aqua-Gem Investments Ltd. 1993 2 F.C. 425 (F.C.A.).

[4]      Abbott need not counter-claim for a declaration that Apotex' process and product infringe the 151 patent. That will be the effective result if Abbott is successful in defending Apotex' action. The counter-claim adds nothing.

[5]      Abbott argues that Apotex' statement of claim says that Apotex intends to market Divalproex Sodium and therefore an injunction is necessary. However, I infer from the fact that Apotex has brought an action for a declaration of non-infringement, that Apotex does not intend to market the product unless it receives a favourable decision in this action or in prohibition proceedings brought by Abbott against Apotex in respect of a notice of allegation issued by Apotex respecting Divalproex Sodium. In any event, it may not market the product unless and until it receives a notice of compliance from the Minister of Health. The notice of compliance will not issue until and unless Apotex is successful in Abbott's prohibition proceedings. If Apotex is unsuccessful in this action, and the 151 patent has not expired, and Abbott has evidence that Apotex is, or in the immediate future is going, to market Divalproex Sodium, that will be the time for Abbott to bring an action for infringement and seek an injunction. At this time such proceedings are premature. See Merck & Co. Inc. v. Apotex Inc. 1997, 72 CPR 3rd 515; Merck & Co. Inc. v. Apotex Inc. 1997, 74 CPR 3rd 202.

[6]      Because Abbott's counter-claim against Apotex is unnecessary and premature, it must also be unnecessary and premature against Sherman.

[7]      As to Abbott's allegations respecting the 603 patent, it has not been demonstrated how they are relevant. In its statement of claim, Apotex says that its process for producing Divalproex Sodium is described in the 603 patent. However, that reference does not make the validity of the 603 patent an issue in these proceedings. Either the marketing and sale of Divalproex Sodium by Apotex will or will not infringe the 151 patent. Counsel for Apotex has advised the Court that Apotex will not make any arguments in this action for a declaration of non-infringement based on the 603 patent. In particular Apotex will not argue that there is a presumption of non-infringement by its process and product by reason of issuance of the 603 patent. Therefore, that aspect of the counter-claim dealing with the validity of the 603 patent is irrelevant.

[8]      While mindful that a multiplicity of actions is undesirable, in my opinion the disadvantage of potential separate proceedings by Abbott is clearly outweighed by the desirability of eliminating irrelevant considerations in this proceeding. I have not been convinced that there is any prejudice to Abbott if its counter-claim is struck in its entirety.

[9]      I would allow the appeal and strike the counter-claim in its entirety subject to the following conditions:

1 -      that Abbott is not precluded from bringing a separate action against Apotex and/or Sherman and may apply to file and serve a new counter-claim including a claim for injunction should new circumstances warrant;

2 -      that Apotex will not rely in any way on the 603 patent in this action;

3 -      that Apotex undertakes not to market Divalproex Sodium unless and until it receives a notice of compliance therefore pursuant to being successful in Abbott's prohibition proceedings brought under the Patented Medicines (Notice of Compliance) Regulations.

[10]      Apotex shall have costs in the sum of $3,000.00 inclusive of disbursements for these proceedings and those before the learned Prothonotary, in any event of the cause.

"Marshall Rothstein"

Judge

TORONTO, ONTARIO

October 28, 1998

     FEDERAL COURT OF CANADA

     Names of Counsel and Solicitors of Record

COURT NO:                          T-411-98

STYLE OF CAUSE:                      APOTEX INC.

                             - and -

ABBOTT LABORATORIES, LIMITED and ABBOTT LABORATORIES, INC.

                            

DATE OF HEARING:                  MONDAY, OCTOBER 26, 1998

PLACE OF HEARING:                  TORONTO, ONTARIO

REASONS FOR ORDER BY:              ROTHSTEIN, J.

DATED:                          WEDNESDAY, OCTOBER 28, 1998

APPEARANCES:                      Mr. David Scrimger

                                 For the Plaintiff

                             Mr. Stéphane Létourneau

                            

                                 For the Defendants

SOLICITORS OF RECORD:              Goodman Phillips & Vineberg

                             Barristers & Solicitors

                             Box 24, 2400-250 Yonge St.,

                             Toronto, Ontario

                             M5B 2M6

                                 For the Plaintiff

                             Martineau Walker                                              Barristers & Solicitors                                          The Stock Exchange

                             Suite 3400, 800 Place Victoria                                      Montreal, Quebec

                             H4Z 1E9

                                 For the Defendants

                            

        

                    

                            

                             FEDERAL COURT OF CANADA

                                 Date: 19981028

                        

         Docket: T-411-98

                             Between:

APOTEX INC.

     Plaintiff

                             - and -

ABBOTT LABORATORIES, LIMITED and ABBOTT LABORATORIES, INC.

                        

     Defendants

                    

                            

            

                                                                                     REASONS FOR ORDER