(Disponible uniquement en anglais)
Horne A.J.
Kavita Ramamoorthy, Judith Robinson, and Pankjuri Malik of Fineberg Ramamoorthy LLP for Samsung Bioepis Co., Ltd (Plaintiff)
Heather Lindsay, Marian Wolanski, Oleyna Strigul, and Rénee Taillieu of Belmore Neidrauer LLP for Janssen Biotech, Inc. (Defendant)
Samsung Bioepis Co., Ltd. v Janssen Biotech, Inc., 2024 FC 1715
October 29, 2024
The Defendant Janssen Biotech, Inc. brings a motion to add a counterclaim to an action for impeachment of Canadian patent 3,113,837 (the “Patent”). Claiming that it is an interested person since it filed a submission for a notice of compliance (“NOC”) in respect of a similar biosimilar product that compares to the Defendant’s product, Samsung brought an impeachment action.
Although Samsung was adamant that trial dates should be fixed immediately and as early as possible, Janssen conveyed its intention to bring a counterclaim for infringement for when Samsung receives an NOC. Pursuant to an Order issued on July 23, 2024, Horne A.J. “set aside” trial dates (as opposed to fixing them). On about August 7, 2024, Samsung received an NOC for its product. Following this, Janssen sent a draft defence and counterclaim and requested Samsung’s consent to its filing. When Samsung refused to consent, Janssen brought the motion.
After considering what the Court termed as Janssen’s Proposed Pleadings, the Court dismissed the Defendant’s motion because the counterclaim did not disclose a reasonable cause of action. In particular, the Court found that “Janssen presents interchangeable possibilities of infringement without material facts” and therefore the counterclaim is not particularized. The Court based its reasoning on the grounds that a claim that alleges infringement on the basis and publication of an NOC alone is insufficient to allow the claim to proceed.
Prepared by Sandi Gendi, Borden Ladner Gervais LLP