Federal Court schedules summary trial in the patent infringement case against Sandoz Canada

Sandoz's macitentan tablets would allegedly infringe the '770 Patent'

Federal Court schedules summary trial in the patent infringement case against Sandoz Canada

The Federal Court has ruled in favour of scheduling a summary trial in the patent infringement case under the Patented Medicines (Notice of Compliance) Regulations commenced by Janssen Inc. and Actelion Pharmaceuticals Ltd. against Sandoz Canada Inc.

The plaintiffs, Janssen and Actelion, claimed that Canadian patent 2,659,770, known as the "770 Patent," would be infringed by the manufacture, use, and sale of Sandoz's 10mg macitentan tablets. Sandoz denied infringement and advised the plaintiffs that it would bring a motion for summary trial.

In Janssen Inc. v. Sandoz Canada Inc., 2023 FC 1231, the core issue before the federal court was whether it should schedule a motion for summary trial as part of the litigation timetable. Sandoz argued that the court should schedule a motion for summary trial because it has the "unfettered right to bring such a motion."

On the other hand, the plaintiffs argued that a summary trial would effectively expedite the hearing date, compressing the pre-hearing steps to about a year. The plaintiffs did not assert that Sandoz would inevitably lose any motion for summary trial. Instead, they argued that the motion should not be scheduled because to do so would be inconsistent with the guiding principles of Rule 3 of the Federal Court Rules, which encourages interpretations that prevent, eliminate, or minimize delays and costs.

The court acknowledged Sandoz's right to move for a summary trial. However, the court explained that the right or ability of a party to bring a motion is not absolute. The court can control its process and is not powerless to intervene and refuse to entertain a particular request. The court can regulate certain proceedings before it and address actual or potential abuses of its process using broad plenary powers.

The court noted from case law that motions may be set aside on a preliminary basis as having little merit and harmful in terms of time and expense, presenting a risk of squandering the parties' resources. The court can stop a motion, or other step in its tracks before or after the motion or other proceeding is filed.

The court also said that case management judges can refuse to schedule motions for summary trial, but this discretion should be exercised rarely and only in rare circumstances.

The court explained that the practical consequence of scheduling a motion for summary trial would be to compress the schedule, placing at least the infringement issues before the court months before the usual scheduled trial date. Still, the court ruled in favour of scheduling the summary trial, acknowledging that Sandoz has the right to move for a summary trial and will bear the burden of persuading the court that the infringement issues can be adjudicated in this manner.

The ruling only determines whether a motion for summary trial will be scheduled. It does not preclude the plaintiffs from asserting that a motion to quash or adjourn should be brought in one of those rare circumstances. The outcome of this motion does not determine any claim or defence that the parties may raise on the summary trial motion or at any trial.

Furthermore, the plaintiffs failed to persuade the court that scheduling a summary trial motion would prejudice them in a manner that cannot be compensated in costs. The court emphasized that the outcome of the motion only resolved whether a motion for summary trial would be scheduled. It did not preclude the plaintiffs from asserting that a motion to quash or adjourn should be brought in one of those rare circumstances.

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