Wednesday, January 4, 2012

Joinder and Limitations

Janssen Inc v Teva Canada Ltd / levofloxacin 2011 FC 1480 Hughes J

In 2006 Daiichi Pharmaceutical Co, Ltd (the patentee) and Janssen-Ortho Inc (its licencee, now Janssen Inc) prevailed against Teva (then Novopharm) in an infringement action relating to levoflaxin: 2006 FC 1234 aff'd 2007 FCA 217. In this motion the plaintiffs sought to add three related companies, namely Janssen Inc’s parent company Johnson & Johnson, and two other companies owed by Johnson & Johnson, all of which were asserted to have been part of the levoflaxin production and distribution system, and to have suffered loss consequent on Teva’s infringement. Hughes J dismissed the motion. Without deciding whether those companies were entitled to damages as “person[s] claiming under the patentee” as required by s 55(1), Hughes J held that the determination of that issue was a question that might require “discovery, further evidence, expert evidence if needed, and full argument and submissions respecting the evidence and the jurisprudence” [22]. Consequently it was not appropriate to add the companies to this action, in which the determination that the two original plaintiffs were entitled to damages had already been made. Hughes J distinguished McIntosh v Society of Composers, Authors and Music Publishers of Canada, 2004FCA 57 as being a case in which “there had not yet been a trial and the proceedings were still in the early stages such that further discovery could comfortably be included” [27].

While it is open to the companies in question to bring an infringement action [23], this ruling did not have purely procedural consequences. The applicable limitations period is 6 years, and Hughes J held that this should be calculated from the date of the filing of the motion for joinder, namely 30 August 2011. Consequently, “the claim for damages would be limited to any claim arising after August 30, 2005" [34], while the period of infringement ran from November 2004 to November 2006 [31].

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