Date : 20031215
Docket : T-2288-01
Citation : 2003 FC 1471
OTTAWA, Ontario, this 15th day of December, 2003
PRESENT: The Honourable Mr. Justice Rouleau
BETWEEN :
APOTEX INC.
Applicant
AND :
THE MINISTER OF HEALTH and
GLAXOSMITHKLINE INC.
Respondents
[1] This matter came before me at Vancouver on October 8 and 9, 2003. At the closing of arguments, I advised counsel that I was reserving my decision.
[2] The applicant throughout has been seeking a Notice of Compliance for paroxetine hydrochloride, a product which may or may not have infringed patent or patents of the respondent Glaxosmithkline Inc.
[3] If my memory serves me well, in proceedings previously entertained by this Court involving paroxetine hydrochloride, the respondent Glaxosmithkline Inc. had sought a Prohibition Order following a Notice of Allegation submitted by the applicant which Notice of Allegation concerned three patents on the patent list involving paroxetine hydrochloride held by the respondent Glaxosmithkline Inc.
[4] During the course of the debate of the present application, it was submitted by counsel that in the proceedings seeking a Prohibition Order in relation to the three above mentioned patents, the applicant was successful; they further submitted that they then became entitled to a Notice of Compliance with respect to paroxetine hydrochloride tablets. Dispute then followed as to whether or not a Notice of Compliance should issue since three additional patents held by the respondent Glaxosmithkline Inc. had been added to the subject patent list and which had not been challenged in the original Notice of Allegation. As a result, the Minister of Health withheld issuing a Notice of Compliance to this applicant.
[5] This dispute was entertained to resolve two issues: whether or not the subject patents added to the patent list by Glaxosmithkline Inc. in relation to paroxetine hydrochloride should be maintained as a bar to this applicant being granted a Notice of Compliance in light of the success it had achieved in the previous litigation; they attacked the validity of the registration of the subsequent three patents added to the patent list. The Minister of Health was added as a party to these proceedings seeking Mandamus since he had failed to issue a Notice of Compliance after the applicant had successfully resisted the Prohibition Order which had been sought by the respondent Glaxosmithkline Inc.
[6] In Court File No. T-876-02 Glaxosmithkline Inc. and Smithkline Beecham P.L.C. had commenced an application against Apotex Inc. and the Minister of Health as respondents following a Notice of Allegation dated April 22, 2002 which addressed the three subsequent patents added to the patent list.
[7] By letter dated October 28, 2003 counsel for Apotex Inc. advised that Glaxosmithkline Inc. had discontinued the application in Court File No. T-876-02 and, as a result, they have now received Notice of Compliance for their paroxetine hydrochloride tablets. They further indicated that in light of these developments, this proceeding has now become moot since an Order requiring the issuance of the very Notice of Compliance has now been issued.
[8] By letter dated November 3, 2003, Glaxosmithkline Inc. indicated that they had not received material from Apotex Inc. appropriate to effect the termination of this proceeding, such as material seeking to have the proceeding dismissed on the basis of mootness or a Notice of Discontinuance.
[9] In light of this dispute, the Court held a meeting by teleconference involving all three parties. It was determined during the conference that counsel acting on behalf of the Minister of Health had no objection to discontinuance. Counsel for Glaxosmithkline Inc. indicated that he had not received instructions from his principals; he would require their direction; he also submitted that he had filed a Motion seeking to file new evidence in relation to this matter.
[10] A further letter on November 11, 2003 was brought to my attention. Counsel for Glaxosmithkline Inc. suggested that the application which I entertained was not moot and that his Motion seeking to file additional evidence related directly to the issue and insisted that his Motion proceed on a timely basis.
[11] In a letter dated November 11, 2003 counsel for Apotex Inc. pointed out that counsel for the Minister of Health agreed that the issue was now moot and that there was no purpose in proceeding with the pending Motion for fresh evidence filed by Glaxosmithkline Inc. He reiterated that the proceeding be discontinued with costs reserved to be addressed by the parties when appropriate.
[12] Further correspondence from counsel for Glaxosmithkline Inc. persisted that the Motion to file fresh evidence be entertained. Apotex Inc. responded that they do no object to the Motion but the matter should be dealt with following the determination by the Court as to whether or not the Court would entertain a dismissal of the proceeding.
[13] On November 20, 2003 I issued a Direction that the Court would entertain an application by Apotex Inc. to file a Notice of Discontinuance subject to any representations with respect to costs which would be entertained by Prothonotary Aronovitch, case manager. I further allowed Apotex Inc. 20 days to file Motion material in response to Glaxosmithkline Inc.'s application to file additional evidence. A Notice of Motion was filed with the Court on December 5, 2003 in which Apotex Inc. sought to wholly discontinue the within proceeding save and except the matter of costs.
[14] On December 8, 2003 correspondence from the Minister of Health indicated that the Minister consented to the granting of the Order requested and further indicated that the Minister takes no position with respect to the matter of costs.
[15] By letter dated December 9, 2003 counsel for Glaxosmithkline Inc. acknowledged receipt of the Motion for an Order allowing the discontinuance of the proceeding with costs to be determined at a later date. Counsel objected to the extension of the deadline granted to Apotex Inc. for filing material responding to the outstanding Motion seeking leave to file further evidence until the disposition of Apotex Inc.'s Motion for Discontinuance.
[16] I issued a further Direction that I was prepared to entertain a teleconference during the week of December 15, 2003 and further indicated in my Direction that Apotex Inc. be allowed 10 days following the issuance of the Notice of Discontinuance to file its material in response to the outstanding Motion submitted by Glaxosmithkline Inc. in which they sought to file further affidavit evidence.
[17] I have carefully reviewed the Motion material filed by Glaxosmithkline Inc. with respect to filing additional affidavit evidence and I am satisfied that it does not in any way impede the Court with adjudicating on the Notice of Motion filed December 5, 2003 by Apotex Inc. seeking the Notice of Discontinuance.
[18] Because of a personal tragedy within my family, I am unavailable to entertain the teleconference set for December 17, 2003.
[19] I am satisfied that the issues are moot.
ORDER
THIS COURT HEREBY ORDERS THAT
This application is wholly discontinued, save and except as to the matter of costs.
Any party seeking costs of the within proceeding shall by Motion, within 14 days after service of these Reasons for Order and Order, file such an application for costs to be determined.
Costs of this Motion to be determined by Prothonotary Aronovitch, case manager.
JUDGE
FEDERAL COURT OF CANADA
SOLICITORS OF RECORD
DOCKET : T-2288-01
STYLE OF CAUSE : APOTEX INC. V. GLAXOSMITHKLINE INC. and THE MINISTER OF HEALTH
PLACE OF HEARING: Vancouver, B. C.
DATE OF HEARING: October 8 and 9, 2003
REASONS : The Honourable Mr. Justice Rouleau
DATE OF REASONS: December 15, 2003
APPEARANCES:
Mr. H.B. Radomski FOR THE APPLICANT
Goodmans LLP
Mr. James E. Mills FOR THE RESPONDENT Glaxosmithkline Inc.
Gowlings
Mr. F.B. Woyiwada FOR THE RESPONDENT Minister of Health