CA: jurisprudence récente: attention aux attaques sous Art. 53 de la Loi sur les brevets

Novo Nordisk Canada Inc. v. Cobalt Pharmaceuticals Inc., 2010 FC 746, (August 3, 2010)

 Allégation:

326]      Cobalt alleges that the inventors made material allegations about the utility of the patent which allegations were untrue.  Moreover, it says that the inventors had a large amount of information in their possession that they did not disclose to the public, which ought to have been disclosed. According to Cobalt, these errors and omissions were made willfully and for the purpose of misleading.

 Conséquence:

[373]      The question remains as to what, if any, reduction should be made to Cobalt’s costs award to take into account its unsuccessful allegations under section 53 of the Patent Act.

 [374]      As was noted earlier, allegations under section 53 of the Patent Act implicate the notion of fraud.  As such, they should not be advanced lightly, without a sufficient evidentiary foundation, in the hope that evidence may turn up along the way to support the allegations.

 [375]      As Justice Hughes observed in Apotex, above, “[t]o raise an issue of fraud or even a section 53 type of fraud and not follow through with the matter, or fail to prove it, will have serious consequences when it comes to the question of costs”: at para. 63.

 [376]      A review of the jurisprudence discloses that in some cases where allegations under section 53 are advanced in a Notice of Allegation or action, but are ultimately not pursued, the Court has reduced the fees and disbursements awarded to a successful generic by 25%: see Bristol-Myers Squibb, above, at para. 189; Shire Biochem Inc. v. Canada (Minister of Health), 2008 FC 538, 67 C.P.R. (4th) 94 at para. 110; Apotex, above, at para. 192.

 [377]      In another case, a successful innovator had its costs increased by 5% to take into account an abandoned allegation under section 53 of the Patent Act: see Janssen-Ortho Inc. v. Apotex Inc., 2008 FC 744, 332 F.T.R. 1  at para. 250, rev’d 2009 FCA 212, 75 C.P.R. (4th) 411.

 378]      Cobalt points out that in each of these cases, the section 53 allegation was abandoned prior to the hearing.  From this I understand Cobalt to be suggesting that the fact that it pursued the issue to the bitter end should somehow operate in its favour when it comes to the question of costs.  I do not agree.  In my view, Cobalt’s failure to cut its losses and abandon this issue earlier in the process is an aggravating rather than a mitigating factor – one which could have arguably favoured a greater cost penalty than that assessed in the cases cited above.

 [379]      That said, the applicants submit that a 25% reduction in Cobalt’s fees and disbursement would be appropriate in this case, and I so order.

 

 

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