Canada: Case Review 2023: Patent Motions

In 2023, the Federal Court of Canada released more patent motion decisions than motion decisions in all other IP rights combined:

Within the patent proceedings, there was a split between decisions involving pharma and biologic patents (58%) and those involving other technologies (42%). This illustrates that patent litigation in Canada continues to be dominated by pharma/generic and biologic/biosimilar proceedings under the PMNOC Regulations:

Classification

We have attempted to classify the motion types into several broad categories that reflect the stages of litigation from commencement through to trial: (i) pleadings (for example, amendments to pleadings and striking out pleadings), document and oral discovery and expert evidence (for example, production motions, motions to compel, seeking leave for reply expert evidence, and striking expert reports), procedural (appeals of associate judge decisions, adjournments, deadlines, and security for costs), summary judgment and/or summary trial motions (typically substantive legal of factual issues), and others (such as costs assessments and section 8 damages cases).

Non-PMNOC proceedings

These patent proceedings involved diverse subject matter including devices for managing public utility usage; electronic management of health records; processes for treating vegetables and fruit before cooking; water slides; water-based drilling fluids; hopper bottoms for supporting cylindrical storage bins; and vehicle battery jump starters.

In terms of decision makers, judges of the Federal Court decided a majority of the motions: Grammond J (2), McHaffie J, Zinn J (2), and Palotta J. Two Associate Judges decided the remaining motions: Horne AJ (3) and Crinson AJ (2).

There were ten motions decided in 2023:

Starting with the pleadings motions, one resulted in a third party successfully adding itself to a proceeding and the other allowed a defendant to partially amend its defence and counterclaim. Next, the discovery and expert motions related to Norwich Orders being against third parties and a motion to get access to an expert's file. Both motions were dismissed.

The procedural motions related to an appeal of an Associate Judge's decision refusing to allow bifurcation (which was dismissed), security for costs (which was granted), and an attempt to strike an expert's report before trial (which was dismissed).

There were three summary judgment/summary trial motions. Two failed because the parties didn't meet their evidentiary or legal burdens. The third summary judgment motion successfully determined inventorship and ownership of a disputed patent in the oil and gas field. Costs were awarded to the successful applicant.

In regard to timing, one decision was dismissed from the bench on the day of the hearing. For the remainder, the average time between the hearing and release of the decision was 49 days. The quickest was within 2 days and the longest was 158 days.

In two of the motions, costs were ordered payable forthwith; which likely means the loser in both motions had brought or defended unmeritorious positions. In two decisions, costs were reserved with the parties being required to submit submissions later (which is fairly common for complicated motions). Other than that, the successful party was awarded costs in the range of $1,250 to $8,000.

PMNOC proceedings

These proceedings related to a broad range of drugs including tadalafil, empagliflozin, nintedanib, dexlansoprazole, macitentan, paliperidone palmitate, abiraterone, the HEMGENIX® gene therapy product, and tenofovir.

There were fourteen motions decided:

In the two pleadings motion, the defendants sought to amend their pleadings and in one motion it was on the eve of trial. Both were successful, either fully or in part, perhaps reflecting a desire by the Court to ensure defendants can raise all available defences at trial and/or avoid an appeal.

There were four discovery/expert motions. One granted extra time for the plaintiff to analyze infringing samples provided by the defendant. The second successfully sought leave to serve a reply expert report. In the third motion, the defendant sought an order the plaintiff serve fact evidence on its invention story before the deadline for the defendant's expert reports. It was dismissed. And, in the fourth motion, Janssen sought document production to defend itself in the section 8 damages claim brought against it by Apotex and Dr. Reddy's. The motion was granted in part; but denied against entities not a party to the proceeding.

There were five procedural motions. Two related to trial timing. In one, the defendant moved to adjourn the trial pending appeal of a production order. The adjournment was denied. The other timing motion sought a stay of an impeachment action while the impugned patent was re-examined at the Canadian Patent Office. It too was dismissed. The fourth procedural motion was a motion to compel refused answers and it was granted in part. The final procedural motion was for a "Solicitor's Eyes Only" provision in a protective order. It was dismissed because the Court was not convinced the plaintiff would suffer harm without such a provision.

There were two summary judgment motions. In the first, Boehringer Ingelheim asked the Court to dismiss Sandoz's invalidity claims against non-asserted claims. The motion was dismissed but the Court left the door open for Boehringer to bring a motion to strike the counterclaims against the non-asserted claims. In the second summary judgment, the plaintiff Janssen alleged that patent invalidity defences raised by Apotex were barred by res judicata and constituted abuse of process. The Court dismissed Janssen's summary judgment because it considered the impugned patent's validity was not decided in a prior action. However, later that year the Federal Court of Appeal allowed Janssen's appeal and held that "Apotex's defences...are an abuse of process."

Judges of the Federal Court decided the majority of the PMNOC motions: Furlanetto J (3), Southcott J (3), Fothergill J, Manson J, and St-Louis J. Four Associate Judges decided the remaining motions: Duchesne AJ (2), Horne AJ, Crinson AJ, and Cotter AJ.

Apart from one outlier, the average time to a decision was 29 days following the hearing. The quickest was within five days and seven were decided in less than 20 days. This is likely due to the tight timelines in PMNOC proceedings. In regard to costs, the successful party generally was awarded its costs in a range of between $3,000 to $7,500. Only one motion awarded costs payable forthwith.