Shire Canada Inc. v. Cobalt Pharmaceuticals Company, 2015 FC 458 (Locke, J.)
April 14, 2015
Jay Zakaïb and Adam Heckman for Shire Canada (Applicant
Kavita Ramamoorthy and Thomas Wong for Cobalt Pharmaceuticals Company (Respondent)
This was a motion by the Applicant to appeal an Order of the Prothonotary which dismissed a motion to strike certain affidavit evidence submitted by the Respondent. Specifically, the Prothonotary concluded that paragraphs in dispute from two Respondent expert affidavits (“the Respondent Affidavit Evidence”) could be considered responsive to evidence of the Applicant and did not otherwise raise new factual or legal arguments. In addition, the Prothonotary refused to allow filing by the Applicant of further proposed reply evidence, concluding that said proposed evidence concerned only an issue that was not in dispute – specifically, the issue of improper patent listing.
The Judge of the Federal Court held that the Prothonotary was not clearly wrong in deciding that the Respondent Affidavit Evidence could be responsive to the Applicant’s evidence. Among other things under dispute was whether current Canadian jurisprudence allows for reference to extrinsic evidence – more specifically, patent prosecution file history, which was referenced in the Respondent Affidavit Evidence. According to the Judge, regardless of the merits in the present case, the Respondent should at least be allowed to make its argument for inclusion of the reference to file histories. In addition, questions were raised relating to the scope of one of the experts’ expertise, vis-Ã -vis claim construction. The Judge decided that said questions go more to weight to be given to the testimony rather than its admissibility. The Applicant also pointed to portions of the Respondent Affidavit Evidence, which purportedly asserted that the Applicant’s patented product does not fall within a specified patent claim. The Applicant argued that, as this assertion was not previously made, it must go to a new argument – possibly but not necessarily an improper listing argument. According to the Judge, however, the portions of the affidavit in question do not assert that the product actually falls outside the scope of the claim; rather, they are part of the Respondent’s argument that claim construction in the Applicant’s affidavit should not be followed precisely because it leads to the conclusion that the product is outside the scope of the claim. The Judge also pointed to an explicit indication by the Respondent that improper listing was not in issue. For these reasons, it follows that the Prothonotary was also not clearly wrong in refusing to allow the Applicant’s proposed reply evidence relating to improper listing. The motion was therefore dismissed with costs.
By: Phil Goldbach, AbCelex Technologies Inc.