Teva Canada Limited v. Janssen Inc.

Teva Canada Limited v. Janssen Inc.

The motion to add the Second Person Allegation was dismissed because the proposed amendment lacked a reasonable prospect of success: defendants having invoked and benefited from the NOC Regulations are estopped from denying that Teva was treated as a "second person," and on the undisputed facts Teva fulfilled the procedural acts in the Regulations and therefore meets the statutory definition of "second person"; accordingly the contested amendments would fail and are not permitted.

Citation
2017 FC 434
Parties
Plaintiff; Defendant by Counterclaim: Teva Canada Limited; Defendant; Plaintiff by Counterclaim: Janssen Inc.; Defendant; Plaintiff by Counterclaim: Millennium Pharmaceuticals, Inc.; Plaintiff by Counterclaim: Cilag GmbH International; Plaintiff by Counterclaim: Cilag AG; Plaintiff by Counterclaim: Janssen Pharmaceutica NV; Patentee Added Pursuant to S.55(3) of the Patent Act: The United States of America represented by the Department of Health and Human Services
Court
Federal Court
Jurisdiction
Canada
Judgment Date
31 May 2017
Procedural Posture
Patent / NOC Regulations Section 8 Damages / Motion to Amend Statement of Defence and Counterclaim (leave to Amend)
Outcome
Disputed aspect of motion dismissed; other agreed amendments permitted; costs awarded to Teva
Legal Topics
Notice of Compliance Regulations, Section 8 Damages, Standing, Estoppel, Amendment of Pleadings, Apportionment of Damages
Source Language
English
Patent Law Regulatory Law Civil Procedure Intellectual Property Notice of Compliance Regulations Section 8 Damages Standing Estoppel +2 more

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Parties

Teva Canada Limited

Plaintiff; Defendant by Counterclaim

Janssen Inc.

Defendant; Plaintiff by Counterclaim

Millennium Pharmaceuticals, Inc.

Defendant; Plaintiff by Counterclaim

Cilag GmbH International

Plaintiff by Counterclaim

Cilag AG

Plaintiff by Counterclaim

Janssen Pharmaceutica NV

Plaintiff by Counterclaim

The United States of America represented by the Department of Health and Human Services

Patentee Added Pursuant to S.55(3) of the Patent Act

Procedural Posture

Patent / NOC Regulations Section 8 Damages / Motion to Amend Statement of Defence and Counterclaim (leave to Amend)

Legal Issues

  1. 1 Whether proposed Second Person Allegation has a reasonable prospect of success
  2. 2 Whether estoppel/election prevents defendants from denying second person status after invoking the Regulations
  3. 3 Whether Teva meets the definition of "second person" under the NOC Regulations

Ratio Decidendi

The motion to add the Second Person Allegation was dismissed because the proposed amendment lacked a reasonable prospect of success: defendants having invoked and benefited from the NOC Regulations are estopped from denying that Teva was treated as a "second person," and on the undisputed facts Teva fulfilled the procedural acts in the Regulations and therefore meets the statutory definition of "second person"; accordingly the contested amendments would fail and are not permitted.

Court Disposition

Disputed aspect of motion dismissed; other agreed amendments permitted; costs awarded to Teva

Orders

  • The disputed aspect of the motion by the plaintiffs by counterclaim to amend their Amended Statement of Defence and Counterclaim is dismissed.
  • The plaintiffs by counterclaim may serve and file, within three days following the date of this Order, a Second Amended Statement of Defence and Counterclaim including the other amendments agreed between the parties.