Bayer AG v. Apotex Inc.

, 1998 CarswellNat 2733

1998 CarswellNat 2733, [1998] F.C.J. No. 1946, 32 C.P.C. (4th) 1

1998 CarswellNat 2733

Federal Court of Canada — Trial Division

Bayer AG v. Apotex Inc.

1998 CarswellNat 2733, [1998] F.C.J. No. 1946, 32 C.P.C. (4th) 1

Bayer AG and Bayer Inc., Applicants and Apotex Inc., and

The Minister of National Health and Welfare, Respondents
Rothstein J.

Oral reasons: September 1, 1998

Docket: T-35-96

Counsel: Mr. Neil Belmore, for the Applicants.

Mr. Andrew Brodkin and Mr. Peter W. Choe, for the Respondent - Apotex Inc.

Subject: Property; Civil Practice and Procedure

Table of Authorities
Cases considered by Rothstein J.:
Merck Frosst Canada Inc. v. Canada (Minister of National Health & Welfare) (1994), 58 C.P.R. (3d) 245, 88 F.T.R. 31
(Fed. T.D.) — applied
Rules considered:
Federal Court Rules, C.R.C. 1978, c. 663
R. 401(2) — referred to
Regulations considered:
Patent Act, R.S.C. 1985, c. P-4
Patented Medicines (Notice of Compliance) Regulations, SOR/93-133

Generally

MOTION by B Inc. for order striking portions of A Inc.'s memorandum of fact and law.

Rothstein J.:

1 This is a motion by Bayer to strike certain portions of the Apotex memorandum of fact and law in this court file.
Apotex's Notice of Allegation that gave rise to this prohibition application under the Patented Medicines (Notice of Compliance)
Regulations, SOR/93-133, included the allegation that as a result of a previous patent proceeding in Chili, Bayer's Canadian
cyprofloxacin patent was barred. In a subsequent Notice of Allegation that gave rise to the prohibition application in court file
T-591-96, Apotex alleged a foreign patent bar as a result of patents issued in Germany and Spain respecting cyprofloxacin.

2 In its memorandum of fact and law in this court file, Apotex makes reference to German and Spanish patents. Bayer
says they are irrelevant to this application and seeks to strike such references. It is significant that Bayer, although initially
intending to do so, did not move to strike the affidavit evidence of Apotex in this court file making reference to the German
and Spanish patents.

3 The issue is whether certain portions of Apotex's memorandum of fact and law that Bayer says are irrelevant should
be struck. Initially, I think there is something incongruous about Bayer not seeking to strike affidavits that contain the same
allegedly irrelevant information that it seeks to strike in the Apotex memorandum. More importantly, however, parties generally
should be discouraged from bringing interlocutory motions to strike portions of memorandums of fact and law on the basis

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Bayer AG v. Apotex Inc., 1998 CarswellNat 2733
1998 CarswellNat 2733, [1998] F.C.J. No. 1946, 32 C.P.C. (4th) 1

that they are irrelevant. See Merck Frosst Canada Inc. v. Canada (Minister of National Health & Welfare) (1994), 88 F.T.R.
31 (Fed. T.D.) at 35 per Richard J., as he then was.

4 While there is obviously merit to the objective of having a clear and relevant memorandum, this is the responsibility of
counsel preparing the memorandum. To the extent a memorandum is ambiguous or contains irrelevant material, counsel runs
the risk of confusing the issues and their arguments, as well as frustrating the hearing judge who must sort out the relevant
from the irrelevant and clarify counsel's arguments. Nonetheless, costly and time consuming interlocutory motions are to be
discouraged. It is the hearing judge who should deal with the arguments as presented. Should a party inappropriately include
irrelevant information in a memorandum, the hearing judge may penalize such conduct in the award of cost.

5 Bayer's motion is dismissed. Pursuant to Rule 401(2), costs are awarded to Apotex in the sum of $1,200 inclusive of
disbursement to be paid forthwith.
Motion dismissed.

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