[1] This is an appeal on behalf of the Plaintiff/Appellant ("Appellant") from the Order of Prothonotary Lafrenière dated March 16, 2001 so as to allow this appeal and dismiss the Defendant's motion to strike the Plaintiff's claim or portions thereof. The appellant also asks for an Order for particulars to require the Defendant to file its defence, if any, within 15 days; and for costs and such other relief as is just and proper.

[2] Since the prothonotary's Order was a final decision, I must look at the matter anew. However, I am satisfied that he properly struck the action as an attempt to re-litigate the question of whether or not the Appellant's product RECORMON infringes the Respondent's patent.

[3] The Appellant has already been enjoined from offering its RECORMON rePHO product for sale in Canada in a prior action by judgment of the Federal Court Trial Division. The Trial Division judgment was upheld by the Federal Court of Appeal (the prior action).

[4] I adopt the reasons of Prothonotary Lafrenière. He applied the correct legal analysis on the test to strike and on the issue of res judicata or issue estoppel. It is only in a case that goes to trial that res judicata must be pleaded in order to be argued at trial, but there is no such requirement on a motion to strike.

[5] The facts in [1976] 2 S.C.R. 621">Grandview (Town) v. Doering, [1976] 2 S.C.R. 621 are similar to those before me, and the reasoning of Ritchie J. applies.

[6] The Appellant chose not to submit as evidence in the prior action any other batch of its RECORMON OR NEORECORMON product which it considered to be non-infringing, other than the samples which were provided for trial experimental testing. It is an abuse of process to permit the Appellant to do so now. Furthermore, this is not a case involving any special circumstances, as described in Minott v. O'Shanter Development Co. (1999),42 O.R. (3d) 321, which would dictate against the application of a doctrine of res judicata.

[7] The prior action left open the right of the Appellant to seek a declaration of non-infringement concerning a different product for distribution in Canada, that is a product other than the RECORMON product at issue in the prior action. As the Appellant does not seek any declaration with respect to a different product, just a different batch of the same product that was at issue in the prior action, Prothonotary Lafrenière properly struck this action.

[8] I am not satisfied that anything said by either Reed J. or the Court of Appeal left it open to the Appellant to bring evidence of other batches of the same product.

ORDER

[9] For these reasons, the motion is dismissed with costs.

"W. P. McKeown"

J.F.C.C.

Toronto, Ontario

April 10, 2001

FEDERAL COURT OF CANADA

Names of Counsel and Solicitors of Record

COURT NO: T-66-01

STYLE OF CAUSE: HOFFMAN-LA ROCHE LIMITED/

HOFFMAN-LA ROCHE LIMITÉE

Plaintiff

(Appellant)

- and -

KIRIN-AMGEN INC.

Defendant

(Respondent)

DATE OF HEARING: MONDAY, APRIL 9, 2001

PLACE OF HEARING: TORONTO, ONTARIO

REASONS FOR ORDER

AND ORDER BY: McKEOWN J.

DATED: TUESDAY, APRIL 10, 2001

APPEARANCES BY: Mr. Roger T. Hughes, Q.C.

For the Plaintiff (Appellant)

Mr. Donald M. Cameron and

Ms. Allyson J. Whyte

For the Defendant (Respondent)

SOLICITORS OF RECORD: SIM, HUGHES, ASHTON & McKAY

Barristers & Solicitors

330 University Avenue, 6^th Floor

Toronto, Ontario

M5G 1R7

For the Plaintiff (Appellant)

AIRD & BERLIS

Barristers & Solicitors

BCE Place

181 Bay Street, Suite 1800

Box 754

Toronto, Ontario

M5J 2T9

For the Defendant (Respondent)

FEDERAL COURT OF CANADA

Date: 20010410

Docket: T-66-01

BETWEEN:

HOFFMAN-LA ROCHE LIMITED/

HOFFMAN-LA ROCHE LIMITÉE

Plaintiff

(Appellant)

- and -

KIRIN-AMGEN INC.

Defendant

(Respondent)

REASONS FOR ORDER

AND ORDER

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Hoffman la Roche Ltd. v. Kirin Amgen Inc., 2001 FCT 314

Citations2001 FCT 314

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2001 FCT 314