Following an infringement trial, where the patent was found to be invalid, Novopharm’s counterclaim under s 8 of the Patented Medicines (Notice of Compliance) Regulations is going forward. Sanofi and Schering brought motions to strike portions of Novopharm’s pleadings.
Before the motion, Novopharm discontinued claims for, inter alia, disgorgement of profits. However, Novopharm maintained its claims for damages against Sanofi Canada, Sanofi Germany and Schering, and paragraphs relating to permanent loss of market share.
The Court held that whether a “first person” may include persons other than the person who filed the NDS and patent list has yet to be fully canvassed at trial, and has not been finally determined. Novopharm pleaded that Sanofi Germany exercises complete control over Sanofi Canada, and pleaded sufficient facts to support this claim. Thus, the Court held that it would be improper to decide this issue on a Motion to Strike.
However, as the Court found that similar pleadings were not made in respect of Schering, the claim against Schering was dismissed.
Regarding the paragraphs on loss of market share, Novopharm conceded that these paragraphs may not directly give rise to an award of damages. However, Novopharm argued that these paragraphs demonstrate the extent of harm caused to it. The Court found that the issue had been conclusively determined by the Court of Appeal in Apotex v. Merck (2009) 76 C.P.R. (4th) 1 (FCA), and struck the paragraphs as disclosing no reasonable cause of action.