Counterclaim Against Non-Asserted Claims Available By Right in NOC Action

Boehringer Ingelheim (Canada) Ltd v Sandoz Canada Inc 2023 FC 241 Fothergill J

2,557,801 / 2,606,650 / 2,696,558 / 2,751,833 / 2,752,435 / 2,813,661 / empagliflozin / JARDIANCE / NOC

In Janssen v Apotex 2022 FCA 184 Locke JA held that the validity of non-asserted claims may be attacked in an action under the PM(NOC) Regs with the leave of the court, but he explicitly left open the question of whether a defendant may challenge non-asserted claims “by right”:” see here. That open question was raised in this case, in which Boehringer sought summary judgment on a question of law dismissing the Defendants’ counterclaims respecting any patent claim that was not asserted in the s 6(1) actions [3].

Fothergill J noted that while the question had been left open, Locke JA's decision in Janssen v Apotex provided considerable guidance [36]. Fothergill J noted that the arguments made by Boehringer in this case were very similar to those made in Janssen [36] and Boehringer did not establish any principled basis for distinguishing the two contexts [41], [43], [51].

Fothergill J therefore granted summary judgment in favour of Sandoz, holding that the defendants “may counterclaim by right against the Non-Asserted Claims in the actions commenced by Boehringer under s 6(1) of the PM(NOC) Regulations” [59]. However, he noted that “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” [5]; and similarly [58], [59]–[60].