Drug: tenofovir disoproxil
Apotex has struck Gilead's Notice of Application as it relates to a patent that had previously been found to be invalid in an earlier NOC proceeding as an abuse of process (see 2013 FC 1272 ). In the earlier proceeding Teva had alleged claims 1-7 of the patent were invalid. Some claims were dropped and only claims 3 and 4 were ultimately argued at the hearing.
Gilead argued it was not an abuse of process to maintain the application against Apotex because striking a pleading is discretionary, Gilead would fill an evidentiary gap from the earlier proceeding and the validity issues are different between the proceedings because Gilead would assert other claims, not just claims 3 and 4.
The Court disagreed, finding it is an abuse of process because the context is not dependent on the evidence to be called but, rather, on the issues presented to the Court for determination. The Court also found that it is not open to a patentee to assert only some claims in the first proceeding, and then different claims in the later proceeding. The Court stated that the situation may be different if the initial generic challenger does not put the validity of some claims in issue, but that was not the case here.