Kyorin Pharmaceutical Co. v. Novopharm Ltd.
T-70-95
MacKay J.
2/6/97
18 pp.
Application for summary judgment compulsory licence No. 975 pertaining to medicine norfloxacin terminated by plaintiff's notice as result of breach by defendant, in accord with terms of licence-In November 1992, Novopharm entered into agreement with Apotex to enable each other to obtain supply of products for which other party held compulsory licence-In April 1993, Apotex first advised Merck Frosst Canada of intention to rely on agreement to obtain norfloxacin through Novopharm, then advised Novopharm of intention to purchase from it supply of norfloxacin-In February 1994, Kyorin notified Novopharm of Kyorin's intent to terminate compulsory licence, on basis agreement between Apotex and Novopharm constituted sub-licence, in breach of compulsory licence No. 975-Novopharm replied not in breach of compulsory licence and that compulsory licence remained in force pending adjudication of dispute-In three separate prohibition proceedings (Eli Lilly & Co. v. Apotex Inc. (1996), 195 N.R. 378 (F.C.A); Eli Lilly & Co. v. Novopharm Ltd. (1996), 197 N.R. 291 (F.C.A.); Merck Frosst Canada Inc. v. Canada (Minister of National Health and Welfare) (1996), 197 N.R. 295 (F.C.A.)), agreement determined by Federal Court of Appeal to be sublicence, in breach of term of compulsory licence, but leave to appeal all three decisions granted by Supreme Court of Canada-Furthermore, in similar case (Aktiebolaget Hassle v. Novopharm Ltd., [1997] F.C.J. No. 216 (T.D.), appeal pending before F.C.A., file No. A-138-97), while Court assumed agreement sublicence in breach of agreement, dismissed motion for summary judgment and reserved for trial determination of whether compulsory licence terminated by agreement and notice of termination-Motion dismissed-Purpose of R. 432.3(1) to enable Court to dispense summarily with cases which ought not to proceed to trial where no genuine issue to be tried-However, present case not one where no genuine issue to be tried-Insufficient facts necessary to resolve matter at issue by summary judgment, and in circumstances, would not be just to do so-F.C.A.'s finding in three cases referred to above agreement sublicence and that clause in compulsory licence prohibiting sublicence breached not synonymous with finding that, on particular facts herein, compulsory licence No. 975 terminated as result of breach of prohibition against sublicensing-Issue raised by plaintiff's action differing from question before F.C.A. in said cases-In spite of F.C.A.'s finding in Eli Lilly v. Novopharm agreement establishing agreement sublicence contrary to paragraph 12 of compulsory licence, agreement in and of itself not constituting sublicence under compulsory licence No. 975-Not stated expressly in agreement, neither referring to particular compulsory licence or any other licence held by Novopharm, nor referring in any way to drug norfloxacin-Question not clearly resolved by evidence and argument on motion for summary judgment-And other issues of fact can only be resolved by trial of action: significance of parol evidence; effective date of termination if compulsory licence found terminated; Federal Court jurisdiction herein-Federal Court Rules, C.R.C., c. 663, R. 432.3(1) (as enacted by SOR/94-41, s. 5).