Date: 20030513
Docket: T-2112-02
Citation: 2003 FCT 589
BETWEEN:
H. LUNDBECK A/S
and
LUNDBECK CANADA INC.
Plaintiffs
and
THE MINISTER OF HEALTH CANADA
and
PHARMASCIENCE INC.
Defendants
REASONS FOR ORDER
RICHARD MORNEAU, PROTHONOTARY
[1] The case at bar concerns a motion in the nature of a motion to strike made by the plaintiffs (hereinafter "Lundbeck"), asking the Court to strike out portions of Ms. Moriello's affidavit filed by the defendant Pharmascience Inc. in connection with the application for prohibition filed by Lundbeck following the notice of allegation submitted by Pharmascience on November 12, 2002 ("the notice of allegation").
[2] More specifically, this is how Lundbeck worded the substantive remedies it seeks:
1. An order prohibiting the respondent Pharmascience Inc. (Pharmascience) from relying on the items of prior art not listed in its notice of allegation dated November 12, 2002 (exhibits BM-2 and BM-5 to the Moriello affidavit);
2. An order prohibiting Pharmascience from relying on all Canadian and U.S. file wrappers, whether or not mentioned in its notice of allegation (exhibits BM-2, BM-4, BM-5 and BM-6 to the Moriello affidavit).
3. An order that exhibits BM-2, BM-4, BM-5 and BM-6 (or paragraphs 6, 8, 9 and 10) to the Moriello affidavit be struck . . .
[3] The notice of allegation reads in part as follows:
D) The use of citalopram hydrobromide as an antidepressant is a prior art use.
E) The disclosure of Canadian patent number 2049368 in fact acknowledges such use, as a prior art use (see attached copies of pages 1 and 2). The prior art includes the prior art as discussed during prosecution of the application for Canadian patent number 2049368, such as, in the response dated March 29, 2001 filed by the applicant (copy attached); as well as the prior art mentioned during the prosecution of the counterpart U.S. and European applications (i.e. U.S. patent number 5296507 and EP-474580).
F) For example, Canadian patent number 1094087 which issued January 20, 1981 (now expired), identifies citalopram hydrobromide as an antidepressant medicine; the corresponding U.S. patent number 4,136,193, which issued January 23, 1979, is acknowledged as prior art on page 1 of the disclosure of Canadian patent number 2049368.
[4] In its notice of the motion at bar Lundbeck set out the reasons in support of the remedies it is seeking as follows:
15. On March 11, 2002, Pharmascience filed its evidence on the merits consisting of the affidavits of Dr. Stephen J. Peroutka, of Dr. Yves Bacher and of Ms. Britta Moriello.
16. Ms. Moriello is a patent paralegal with the attorneys of Pharmascience. In her affidavit, she attempts to file as evidence:
16.1 the file relating to the examination of Canadian Patent No. 1,094,087 (exhibit BM-2 or paragraph 6);
16.2 the file relating to the examination of the '368 patent (exhibit BM-4 or paragraph 8);
16.3 the file relating to the examination of U.S. patent No. 4,136,193 (exhibit BM-5 or paragraph 9);
16.4 the file relating to the examination of U.S. patent No. 5,296,507 (exhibit BM-6 or paragraph 10).
17. The files relating to the examination (sic) Canadian patent 1,094,087 (exhibit BM-2) and of U.S. patent 4,136,193 (exhibit BM-5) were not mentioned in Pharmascience's notice of allegation. Pharmascience is thus seeking to expand the factual basis for its allegation, which is not allowed.
18. Moreover, all these prosecution files, whether Canadian or U.S., cannot be relied upon by Pharmascience in the interpretation of the '368 patent as they constitute extrinsic evidence.
19. Exhibits BM-2, BM-4, BM-5 and BM-6 (or paragraphs 6, 7, 9 and 10) to the Moriello affidavit should therefore be struck.
Analysis
[5] Everyone agrees that the motion at bar should be considered in accordance with this Court's inherent jurisdiction, as applied by Strayer J. in Bull (David) Laboratories (Canada) Inc. v. Pharmacia Inc. et al. (1994), 176 N.R. 48, at 54-5 ("Pharmacia"). I think the principles we get from that case apply to our analysis, although here Lundbeck is requesting only a partial striking of an affidavit, not that the principal application be struck in its entirety. I would even say that Pharmacia applies here especially, and so a fortiori, as the request is only to strike some passages.
[6] In Pharmacia, Strayer J. allowed a party to apply to strike in a judicial review situation in exceptional cases only. This is what the Court said at 54-5:
This is not to say that there is no jurisdiction in this court either inherent or through rule 5 by analogy to other rules, to dismiss in summary manner a notice of motion which is so clearly improper as to be bereft of any possibility of success. (See e.g. Cyanamid Agricultural de Puerto Rico Inc. v. Commissioner of Patents (1983), 74 C.P.R. (2d) 133 (F.C.T.D.); and the discussion in Vancouver Island Peace Society et al. v. Canada (Minister of National Defence) et al., [1994] 1 F.C. 102; 64 F.T.R. 127, at 120-121 F.C. (T.D.)). Such cases must be very exceptional and cannot include cases such as the present where there is simply a debatable issue as to the adequacy of the allegation in the notice of motion.
(My emphasis)
[7] Any application to strike in connection with an application for judicial review must be an exception in order to promote the primary purposes of the application, that is, to move the application forward to the merits as quickly as possible.
[8] As Strayer J. mentioned in Pharmacia:
... [T]he focus in judicial review is on moving the application along to the hearing stage as quickly as possible. This ensures that objections to the originating notice can be dealt with promptly in the context of consideration of the merits of the case.
(See also Merck Frosst Canada Inc. et al. v. Minister of National Health and Welfare et al. (1994), 58 C.P.R. (3d) 245, at 248, and Glaxo Wellcome Inc. et al. v. Minister of National Health and Welfare et al., an unreported judgment of this Court on September 6, 1996, case T-793-96.)
[9] Lundbeck's motion in the case at bar is based on the following reasons: (1) in defence to Lundbeck's application for prohibition, Pharmascience cannot rely on any of the file wrappers of the patents mentioned in the notice of allegation, because Pharmascience is seeking by this use to interpret the patent at issue '368, and (2) the file wrappers of patents '087 and '193 are not mentioned in the notice of allegation.
[10] On the first point, in my opinion it was not clearly established at this stage that this was what Pharmascience intended. I consider that we cannot simply reject Pharmascience's approach, namely that the reference to the file wrappers was made solely in order to show the invalidity of the patent at issue in light of prior art. In my view, it will be for the judge of the merits to determine whether that was the purpose sought by Pharmascience. Such a purpose corresponds to certain purposes for which the courts have allowed access to information falling within the background of a patent. In Heffco Inc. v. Dreco Energy Services Ltd. (1995), 62 C.P.R. (3d) 81, at 84, my brother Hargrave J. summed up his understanding of the state of the law as follows:
Traditionally, the courts have not allowed the file history of a patent to be used in order to interpret patents classifications. In contrast, the courts have considered file history in other contexts, for example to determine the prior art that was before the patent examiner (Samsonite Corp. v. Holiday Luggage Inc. (1988), 20 C.P.R. (3d) 291 at p. 314 et seq., 21 C.I.P.R. 286, 9 A.C.W.S. (3d) 440 (F.C.T.D.)), and also to determine whether inaccurate or misleading information was presented to the Patent Commissioner's office: Beloit Canada Ltd. v. Valmet Oy (1986), 8 C.P.R. (3d) 289 at p. 300 et seq., 7 C.I.P.R. 205, 64 N.R. 287 (C.A.).
[11] On the second point, namely that Ms. Moriello's affidavit refers to the file wrappers of patents '087 and '193, although these file wrappers were not alleged in the notice of allegation, I do not consider that this is an aspect which, in the event that Lundbeck is successful on the merits on this point, may be seen as so incorrect and improper as to require intervention in the process of an application for judicial review (see the comments of Strayer J. in Pharmacia, supra, at 54 and 55).
[12] The situation here must be distinguished from this Court's judgment in AB Hassle v. Canada (2000), 7 C.P.R. (4th) 272, where the defendant sought to introduce in evidence totally new references to prior art, namely patents which had simply not been mentioned in the notice of allegation. As these references were not alleged in the notice of allegation, the plaintiff was taken by surprise when the new references were made part of the record.
[13] In the case at bar it is plausible at this stage to agree entirely with Pharmascience that the file wrappers in question are closely related to the said patents, '087 and '193, and those patents are specifically alleged in the notice of allegation: patents moreover which Lundbeck is not seeking to have struck out.
[14] As regards Novartis AG v. Apotex Inc. (2001), 15 C.P.R. (4th) 417, the principles set out in paras. [70] to [73] of that judgment are not present here. In the case at bar there was no interlocutory motion to respond to the situation complained of by additional evidence.
[15] Further, as Pharmascience noted at paras. 34 and 35 of its written submissions:
[TRANSLATION]
34. . . . the rule for exclusion of "new evidence" is not as strict as the Applicants maintain. Recently, Muldoon J. of this Court acknowledged that a plaintiff in a proceeding like the one at bar should expect questions raised by a notice of allegation to go beyond its strict limits, especially when the question is closely related. He accepted that there is a degree of latitude allowed within which evidence submitted may relate to the allegations contained in a notice of allegation. We refer to the following passage:
In addition, because defining the word "gel' is a matter of patent construction and, as such, a necessary precursor to any discussion of non-infringement or validity, the applicants cannot now argue that they were unaware that it would rear its head. The rationale underlying the rule against additional allegations, therefore, can be considered satisfied in the circumstances.
As for whether Alcon may now allege that its xanthan gum gels due to proteins and not ions, the issue of what causes gelation was laid out, albeit barely, in the NOA and taken up by the applicants. The Court is not, however, unsympathetic to the applicants' concerns. Though respondents in section 5 proceedings may make further, detailed allegations in respect of the broad ones already in their NOAs which have come under attack, there is a point where the allegations will, like the branches of a sturdy baobab tree, take root and a separate life of their own. This is when the allegations must be cut. Counsel has not persuaded the Court, however, that the allegations have reached this stage.
[Our emphasis]
- Merck Frosst Canada Inc. v. Canada (2000), 8 C.P.R. (4th) 87, at paras. 11 and 12 (F.C.T.D., Muldoon J.)
35. On appeal, the Appeal Division of this Court approved and adopted this ratio. We refer in particular to the following passage:
In paragraph 12 of his reasons Muldoon J. intimated that a certain degree of latitude is permitted to supplement broad allegations with "further, detailed allegations", and found that those of Alcon had not exceeded this bound. If, as appears, Muldoon J. was here referring to some evidence adduced by Alcon to support the broad statement of fact contained in its Detailed Statement that its xanthan gum polysaccaride was not a polysaccaride of the type which undergoes a liquid to gel transition gelling in situ under the effect of an increase in the ionic strength, it is unexceptional. As mentioned already, the authorities in this Court are to the clear effect that a second person must not, in a section 6 proceeding, rely on facts that exceed those laid out in the detailed statement.
I can find no basis for interfering with Muldoon J.'s order as a whole.
[Our emphasis]
- Merck Frosst Canada Inc. v. Canada (2001), 12 C.P.R. (4th) 447, at 455 (unanimous F.C.A., per Stone J.A.)
[16] I therefore consider that it will be for the judge of the merits, in accordance with the procedure followed by Muldoon J. in Merck Frosst, supra, to decide whether the patent files discussed here arise independently of the notice of allegation.
[17] For these reasons, Lundbeck's motion will be dismissed. As to costs, it will suffice in the case at bar to indicate only that costs are awarded to Pharmascience.
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"Richard Morneau"
Prothonotary |
Montréal, Quebec
May 13, 2003
Certified true translation
Suzanne M. Gauthier, C. Tr., LL.L.
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FEDERAL COURT OF CANADA TRIAL DIVISION
Date: 20030513
Docket: T-2112-02
Between:
H. LUNDBECK A/S and LUNDBECK CANADA INC. Plaintiffs and THE MINISTER OF HEALTH CANADA and PHARMASCIENCE INC. Defendants
REASONS FOR ORDER
|
FEDERAL COURT OF CANADA
TRIAL DIVISION
SOLICITORS OF RECORD
FILE: T-2112-02
STYLE OF CAUSE: H. LUNDBECK A/S
and
LUNDBECK CANADA INC.
Plaintiffs
and
THE MINISTER OF HEALTH CANADA
and
PHARMASCIENCE INC.
Defendants
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: April 14, 2003
REASONS FOR ORDER BY: RICHARD MORNEAU, PROTHONOTARY
DATED: May 13, 2003
APPEARANCES:
Marie Lafleur for the plaintiffs
Bruno Barrette for the defendant Pharmascience Inc.
Pascal Lauzon
SOLICITORS OF RECORD:
Fasken, Martineau, DuMoulin for the plaintiffs
Montréal, Quebec
Brouillette, Charpentier, Fortin for the defendant Pharmascience Inc.
Montréal, Quebec