PATENTS |
Practice |
Eli Lilly and Co. v. Apotex Inc.
A-204-98
Létourneau J.A.
26/6/00
5 pp.
Appeal from Motions Judge's decision striking amended paragraphs of statement of defence, counterclaim--Richard J. struck subparagraphs 10(a), (l), paragraph 11 from statement of defence, counterclaim--Appellant appealed with respect to subparagraph 10(a), amended pleadings with respect to subparagraph 10(l), paragraph 11 by splitting 10(l) into two subparagraphs, rewording paragraph 11--Motions Judge granting motion to strike new subparagraphs, paragraph 11--Respondents arguing appellant's right to amend statement of defence, counterclaim to add amended pleadings expired when appellant filed notice of appeal in relation to Richard J.'s order--Relying on Operation Dismantle Inc. et al. v. The Queen et al., [1985] 1 S.C.R. 441--When decision rendered in Operation Dismantle, Federal Court Rules, R. 1104 governed amendments during pendency of appeal--R. 1104 replaced by Federal Court Rules, 1998, rr. 75, 76--Appellant not appealing against that part of Richard J.'s order striking subparagraph 10(l), paragraph 11 thus no appeal pending that part of order when amendments made--On authority of former R. 421, now r. 200, this course of action open to appellant--New subparagraphs 10(l), (m) raising defence in Patent Act, s. 53(1): patent void if any material allegation in petition untrue or if specification and drawings containing more or less than necessary, and omission or addition wilfully made--Clearly different from previous subparagraph 10(l)--Now alleging untrue statements, wilful omissions making patent void found respectively in petition and specification of application, in contrast with original subparagraph 10(l) which merely alleged misrepresentation in prosecution before Patent Office, giving rise to no recognized defence--Amended paragraphs containing factual allegations grounded in s. 53(1) and specific allegation of violation thereof--Not plain, obvious defence cannot possibly succeed given state of law--No basis to support Motions Judge's exercise of discretion--Appeal allowed--Patent Act, R.S.C., 1985, c. P-4, s. 53(1)--Federal Court Rules, C.R.C., c. 663, RR. 421, 1104 --Federal Court Rules, 1998, SOR/98-106, rr. 75, 76, 200.