The innovator brought a motion seeking a determination that the generic was precluded from making further allegations of invalidity by the doctrines of abuse of process, res judicata and/or issue estoppel, on the basis that the same generic company had made a previous allegation of invalidity that had been found to have no merit. The generic company brought a motion seeking to have the proceeding dismissed on the basis that its allegation was substantially similar to a previous generic allegation that had succeeded in obtaining a finding that the patent was invalid for the purposes of NOC litigation.
Each motion would render the other unnecessary. However, the Court found that given that the application for prohibition was triggered by the Notice of Allegation (NOA), the scope of the NOA must be determined first, as the need to assert the validity of the patent only arises if the generic company is in a position to raise the invalidity of the patent. Thus, the innovator's motion was heard first.
The Court found that the generic company tactically chose to move first and tactically chose to allege invalidity on only one ground in its first NOA, despite case law that indicated that it would be precluding from advancing other grounds of invalidity if it lost on this ground. Thus, it must live with the consequences of its tactical decision. Thus, it was precluded from alleging additional grounds of invalidity in a second NOA.
The full text of the decision can be found at: http://decisions.fct-cf.gc.ca/fr/2007/2007cf511/2007cf511.html