Federal Court, Federal Court of Appeal hear patented medicine cases

This week, the Federal Court and Federal Court of Appeal dealt with matters involving alleged infringement of copyrights and patented medicines and processes, supplies and services for vessels, and refugee claims under the Safe Third Country Agreement.

Federal Court of Appeal

On Wednesday, the court heard Boehringer Ingelheim (Canada) Ltd et al v. Sandoz Canada Inc et al, A-66-23. The appeal arose from two infringement actions filed by the appellants in connection with six patents.

The Federal Court ruled that the respondents could counterclaim by right against patent claims that the appellants did not assert in the proceedings brought under s. 6(1) of the Patented Medicines (Notice of Compliance) Regulations, SOR/93-133.

The appellants argued that s. 6(3)(a) of the regulations did not permit a counterclaim, as of right and without the court’s leave, for a declaration of non-infringement and/or invalidity with respect to patent claims beyond those asserted by them.

Federal Court

On Wednesday, the court heard the cases of Sealand Marine Electronics Sales & Services Ltd v The Ship M/V Inuksuk I et al, T-1836-17 and Sealand Marine Electronics Sales & Services Ltd v The Ship M/V Sivulliq et al, T-1837-17.

The Federal Court granted the respondent two actions against the appellants, the owners of the vessels sued, for the payment of goods and services provided to the vessels. The appellants challenged this decision.

In July 2023, in Inuksuk I (Ship) v. Sealand Marine Electronics Sales and Services Ltd, 2023 FCA 170, the Federal Court of Appeal dismissed their appeal. It held that the Federal Court wrongly concluded that it had jurisdiction to handle a set-off claim raised as a substantive equitable defence.

On Wednesday, the court heard GE Renewable Energy Canada Inc v. Canmec Industriel Inc, T-1471-21. The defendant brought a motion seeking to bifurcate the proceeding so that the issues about the existence and the infringement of the plaintiff’s copyright over technical drawings could proceed before the issues about the parties’ conduct, remedies, and the quantification of profits.

Last December, in GE Renewable Energy Canada Inc v. Canmec Industriel Inc, 2022 FC 1720, the Federal Court dismissed the motion. The drawings’ technical nature, the addition of various sources of licences or permissions, the claim that the alleged author infringed a copyright when producing the drawings, and the punitive damages claim did not make this an extraordinarily complex case, the court said.

The court found that identifying the drawings or the parts of them infringing copyright would not simplify the case and would not reduce the amount of evidence needed for other issues and that bifurcation would not lead to substantial savings of time or resources or to the prevention of confidential information disclosures.

On Thursday, the court will hear Toronto Regional Real Estate Board v. R E Stats Inc. operating as ReDatum et al, T-898-20. The plaintiff developed and operated the Toronto Regional Real Estate Board MLS® System, allegedly a copyrightable work.

The defendants wanted to set aside an order granting a motion for default judgment against them. In November 2021, in Toronto Regional Real Estate Board v. R E Stats Inc. (ReDatum), 2021 FC 1193, the Federal Court granted the motion to set aside the default judgment.

On Thursday, the court will hear McCain Foods Limited v. J.R. Simplot Company et al, T-1624-17. The plaintiff alleged that the defendant infringed a patent relating to a process for treating vegetables and/or fruit with a pulsed electrical field before cooking to reduce their resistance to cutting.

In August 2021, in McCain Foods Limited v. J.R. Simplot Company, 2021 FC 890, the Federal Court dismissed the plaintiff’s appeal from a prothonotary’s order. The court found that it could not order an examination under r. 237(3) of the Federal Courts Rules, SOR/98-106 of an employee of a subsidiary or another company who has not received authority to act on the company’s behalf and who was thus not the company’s representative under r. 237(1).

On Thursday, the court will hear Takeda Canada v. Apotex, Takeda Pharmaceutical Co & Takeda Pharma USA, T-151-22. The plaintiff wanted to consolidate two actions under s. 6 of the Patented Medicines (Notice of Compliance) Regulations. It commenced the first action, scheduled to go to trial this September, in February 2021 and brought the second action in October 2022.

In January, in Takeda Canada Inc. v. Apotex Inc., 2023 FC 63, the Federal Court dismissed the motion and made the following findings. First, the two actions involved clear and significant commonalities, including the same or similar facts, issues, parties, counsel, drug product, and abbreviated new drug submission.

Second, keeping the two actions separate would not prejudice the plaintiff and would not unduly strain its resources. Third, delaying the determination of the issues raised in the first action to a consolidated trial next March could potentially prejudice the defendant.

On Friday, the court will hear Canadian Council for Refugees et al v. Minister of Immigration, Refugees and Citizenship et al, IMM-2977-17. Consolidated judicial review applications challenged decisions finding the applicants – who were citizens of El Salvador, Ethiopia, and Syria who arrived at a Canada land port of entry from the U.S. – ineligible to make refugee claims in Canada by operation of the Safe Third Country Agreement.

In July 2020, in Canadian Council for Refugees v. Canada (Immigration, Refugees and Citizenship), 2020 FC 770, the Federal Court granted the applications. It made the following findings:

• The provisions enacting the agreement infringed s. 7 of the Canadian Charter of Rights and Freedoms
• The infringement was not justified under s. 1 of the Charter
• Paragraph 101(1)(e) of the Immigration and Refugee Protection Act, 2001 and s. 159.3 of the Immigration and Refugee Protection Regulations, SOR/2002-227 had no force or effect under s. 52 of the Constitution Act, 1982