Apotex Inc. v. H. Lundbeck A/S

Apotex Inc. v. H. Lundbeck A/S

Where a defendant's counterclaim in the nature of a quia timet action mirrors and responds directly to a plaintiff's affirmative declaration of non-infringement regarding a specific product/process, and is not prosecutable independently, the counterclaim is not an abuse of process and should not be struck; however, particulars and claims unsupported by material facts should be struck or amended. Because Lundbeck's counterclaim is dependent on Apotex's action and the incremental cost to Apotex of defending it is minimal, Lundbeck is exempted from posting security for costs; specific unsupported allegations and damages claims were struck and the declaratory relief amended to refer to future...

Citation
2010 FC 807
Parties
Plaintiff / Defendant by Counterclaim: Apotex Inc.; Defendant / Plaintiff by Counterclaim: H. Lundbeck A/S
Court
Federal Court
Jurisdiction
Canada
Judgment Date
5 August 2010
Procedural Posture
Patent Action Declaration of Non Infringement and Counterclaim for Infringement / Interlocutory Motion: Motion to Strike Counterclaim and Motion for Security for Costs
Outcome
Apotex's motion to strike Lundbeck's counterclaim dismissed except as to specified paragraphs; specified allegations struck and declaratory wording amended; Apotex's motion for security for costs dismissed; costs awarded to Lundbeck in the fixed amount of $1,500.00.
Legal Topics
Quia Timet, Declaration of Non Infringement, Counterclaim, Security for Costs, Motion to Strike, Injunctions, Damages
Source Language
English
Patent Law Intellectual Property Civil Procedure Quia Timet Declaration of Non Infringement Counterclaim Security for Costs Motion to Strike +2 more

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Parties

Apotex Inc.

Plaintiff / Defendant by Counterclaim

H. Lundbeck A/S

Defendant / Plaintiff by Counterclaim

Procedural Posture

Patent Action Declaration of Non Infringement and Counterclaim for Infringement / Interlocutory Motion: Motion to Strike Counterclaim and Motion for Security for Costs

Legal Issues

  1. 1 Whether a quia timet counterclaim for infringement is permissible as a response to an action for a declaration of non-infringement
  2. 2 Whether parts of Lundbeck's counterclaim should be struck for lack of particulars or impropriety
  3. 3 Whether Lundbeck, a foreign plaintiff by counterclaim, must post security for costs and in what amount

Ratio Decidendi

Where a defendant's counterclaim in the nature of a quia timet action mirrors and responds directly to a plaintiff's affirmative declaration of non-infringement regarding a specific product/process, and is not prosecutable independently, the counterclaim is not an abuse of process and should not be struck; however, particulars and claims unsupported by material facts should be struck or amended. Because Lundbeck's counterclaim is dependent on Apotex's action and the incremental cost to Apotex of defending it is minimal, Lundbeck is exempted from posting security for costs; specific unsupported allegations and damages claims were struck and the declaratory relief amended to refer to future...

Court Disposition

Apotex's motion to strike Lundbeck's counterclaim dismissed except as to specified paragraphs; specified allegations struck and declaratory wording amended; Apotex's motion for security for costs dismissed; costs awarded to Lundbeck in the fixed amount of $1,500.00.

Orders

  • Paragraph 192 of Lundbeck's counterclaim struck.
  • Sub-paragraphs 186(c) and 186(d) of Lundbeck's counterclaim struck.