Boehringer Ingelheim (Canada) Ltd. et al. v. Sandoz Canada Inc., 2023 FC 241 (Empagliflozin*)
Justice Fothergill - 2023-02-17
Read full decision. Summary prepared by Alan Macek:
In the present motion, Boehringer seeks summary judgment dismissing the Defendants’ counterclaims respecting any patent claim that is not asserted in the s 6(1) actions, and limiting the scope of the Defendants’ counterclaims to the asserted claims. Boehringer maintains that a defendant may counterclaim against a non-asserted claim in an action commenced pursuant to s 6(1) of the PM(NOC) Regulations only with leave of the Court (citing s 6(3)(a) of the PM(NOC) Regulations). For the reasons that follow, the question of law raised by the Plaintiffs is apt for determination on a motion for summary judgment pursuant to Rule 215(2)(b) of the Federal Courts Rules, SOR/98-106 [Rules]. The question must be decided in the Defendants’ favour. Sandoz and Sun may counterclaim as of right against the non-asserted patent claims in the actions commenced under s 6(1) of the PM(NOC) Regulations. However, this does not mean that the counterclaims in respect of the non-asserted claims will necessarily be permitted to proceed to trial. Boehringer remains at liberty to bring a motion pursuant to Rule 221(1) to strike the counterclaims against the non-asserted patent claims on any of the enumerated grounds, including that the counterclaims may prejudice or delay the fair trial of the action or are otherwise an abuse of process. (Thanks to Kavita Ramamoorthy for a copy of the decision)
Decision relates to:
- T-1831-22 - BOEHRINGER INGELHEIM (CANADA) LTD. et Al. v. SANDOZ CANADA INC.
- A-66-23 - which is an appeal from this decision
- T-1842-22 - BOEHRINGER INGELHEIM (CANADA) LTD. et Al. v. SUN PHARMA CANADA INC.