Eli Lilly & Co. et al. v. Novopharm Ltd. et al., (1994) 81 F.T.R. 313 (TD)

• Judge: Strayer, J.
• Court: Federal Court (Canada)
• Case Date: May 17, 1994
• Jurisdiction: Canada (Federal)
• Citations: (1994), 81 F.T.R. 313 (TD)

Eli Lilly & Co. v. Novopharm Ltd. (1994), 81 F.T.R. 313 (TD)

MLB headnote and full text

In the Matter of an application for an Order pursuant to subparagraph 55.2(4) of the Patent Act and section 6 of the Patented Medicines (Notice of Compliance) Regulations.

Eli Lilly and Company and Eli Lilly Canada Inc. (applicants) v. Novopharm Limited and The Minister of National Health and Welfare (respondents)

(T-1946-93)

Indexed As: Eli Lilly & Co. et al. v. Novopharm Ltd. et al.

Federal Court of Canada

Trial Division

Strayer, J.

May 24, 1994.

Summary:

Novopharm, the "second person" in a proceeding under the Patented Medicine (Notice of Compliance) Regulations, applied to strike out the originating notice of motion of the "first person". Alternatively, Novopharm asked for an order limiting the originating notice of motion.

The Federal Court of Canada, Trial Division, dismissed the application.

Food and Drug Control - Topic 1105

Drugs - New drugs - Notice of compliance - Intervention on application for - Novopharm's notice of allegations denied infringement of Eli Lilly's patents, claiming the processes were different - Eli Lilly issued an originating notice of motion under the Patented Medicines (Notice of Compliance) Regulations - Novopharm applied to strike out the originating notice of motion, claiming Eli Lilly's patents did not contain claims for the medicine itself nor for the use of the medicine - The Federal Court of Canada, Trial Division, stated that Novopharm had raised a significantly different issue on the motion to strike - In order to attack the originating notice of motion on new grounds, Novopharm should apply for leave to amend its notice of allegations - See paragraphs 4 to 5.

Food and Drug Control - Topic 1105

Drugs - New drugs - Notice of compliance - Intervention on application for - Eli Lilly filed an originating notice of motion for prohibition under the Patented Medicines (Notice of Compliance) Regulations - Novopharm applied to strike out the originating notice of motion alleging that it was prejudiced by the delay, where filing the originating notice of motion virtually gave Eli Lilly a 30 month injunction - The Federal Court of Canada, Trial Division, opined that the court might have to make special rulings as to costs when motions were made essentially for the purpose of delay - The court observed, however, that applicants could minimize delaying tactics by providing complete and detailed information at the outset - See paragraph 8.

Food and Drug Control - Topic 1105

Drugs - New drugs - Notice of compliance - Intervention on application for - [See Practice - Topic 2201 ].

Practice - Topic 14

General - Procedures not provided for in rules - Gap rule - [See Practice - Topic 2201 ].

Practice - Topic 2201

Pleadings - Striking out pleadings - Jurisdiction - Novopharm applied under Federal Court Rule 419 to strike out the originating notice of motion in a proceeding under the Patented Medicines (Notice of Compliance) Regulations - The Federal Court of Canada, Trial Division, declined to allow the application under rule 419, stating that rule 419 only applied to actions and to striking out pleadings in actions - The court declined to apply the gap rule (rule 5), where it could be deduced that the Rules intended to restrict motions to strike to actions - See paragraphs 1 to 3.

Practice - Topic 2494

Originating notices - Striking out - Novopharm applied to strike out an originating notice of motion under the Patented Medicines (Notice of Compliance) Regulations - Novopharm had also appealed an order ordering it to provide better particulars of its allegations of non-infringement - The Federal Court of Canada, Trial Division, declined to strike the originating notice pending resolution of the appeal, where at least some of the same issues would be addressed on the appeal - See paragraph 6.

Cases Noticed:

American Cyanamid Co. et al. v. Bio-Agri Mix Ltd et al. (1994), 81 F.T.R. 174 (T.D.), refd to. [para. 3].

Merck Frosst Canada Inc. et al. v. Apotex Inc. et al. (1994), 169 N.R. 342 (F.C.A.), refd to. [para. 3].

Bayer AG v. Canada (Minister of National Health and Welfare) (1993), 163 N.R. 183; 51 C.P.R.(3d) 329 (F.C.A.), refd to. [para. 3].

Statutes Noticed:

Federal Court Rules, Parts III, V.1 [para. 3]; rules 5 [para. 3]; 419 [para. 1].

Ontario Rules of Civil Procedure - see Rules of Civil Procedure (Ont.).

Patent Act Regulations (Can.), Patented Medicines (Notice of Compliance) Regulations, SOR/93-133, sect. 4(2)(a), sect. 5(1)(b)(iv) [para. 7].

Patented Medicines (Notice of Compliance) Regulations - see Patent Act Regulations (Can.)

Rules of Civil Procedure (Ont.), rule 14.09 [para. 3].

Counsel:

John Rudolph, for the applicant;

Timothy Gilbert and Brigitte Fouillade, for the respondent, Novopharm Ltd.

Solicitors of Record:

Gowling Strathy & Henderson, Ottawa, Ontario, for the applicant;

Lenczner Slaght Royce Smith Griffin, Toronto, Ontario, for the respondent Novopharm Ltd.;

Malcolm Johnson & Associates, Toronto, Ontario, for the respondent Novopharm Ltd.

This application was heard on May 17, 1994, at Ottawa, Ontario, before Strayer, J., of the Federal Court of Canada, Trial Division, who delivered the following judgment on May 24, 1994.