GILEAD SCIENCES, INC., GILEAD SCIENCES CANADA, INC. v. GILEAD PHARMASSET LLC, 2014 FCA 247

Date: 20141029 Docket: A-242-14 Citation: 2014 FCA 247 CORAM: TRUDEL J.A. WEBB J.A. NEAR J.A. BETWEEN:GILEAD SCIENCES, INC., GILEAD SCIENCES CANADA, INC. AND GILEAD PHARMASSET LLCAppellants andIDENIX PHARMACEUTICALS, INC.Respondent Heard at Toronto, Ontario, on October 29, 2014. Judgment delivered from the Bench at Toronto, Ontario, on October 29, 2014. REASONS FOR JUDGMENT OF THE COURT BY: WEBB J.A. Date: 20141029 Docket: A-242-14 Citation: 2014 FCA 247 CORAM: TRUDEL J.A. WEBB J.A. NEAR J.A. BETWEEN:GILEAD SCIENCES, INC., GILEAD SCIENCES CANADA, INC.

AND GILEAD PHARMASSET LLCAppellants andIDENIX PHARMACEUTICALS, INC.Respondent REASONS FOR JUDGMENT OF THE COURT (Delivered from the Bench at Toronto, Ontario, on October 29, 2014). WEBB J.A. [1] Gilead Sciences, Inc., Gilead Sciences Canada, Inc. and Gilead Pharmasset LLC (Gilead) have appealed the order andreasons of Mactavish J. (2014 FC 391) who allowed the appeal of Idenix Pharmaceuticals Inc. (Idenix) from the Order of ProthonotaryTabib (T-1156-12).

Idenix had brought a motion before the Prothonotary to amend its Amended Statement of Defence and Counterclaim.The Prothonotary granted leave for Idenix to make certain amendments to its pleadings but denied leave to amend its pleadings related tosection 53 of the Patent Act, R.S.C. 1985, c. P-4 and the identity of the inventors of the patent, as set out in paragraphs 58A to 58F of itsnotice of motion. On appeal, Mactavish J. granted Idenix leave to amend its Amended Statement of Defence and Counterclaim as set outin these paragraphs. [2] In Merck & Co. v.

Apotex Inc., [2003] FCA 488; 2003 FCA 488 , [2004] 2 F.C.R. 459, this Court noted that thestandard of review applicable when a Judge is considering an appeal of a discretionary order of a prothonotary, is that a judge should notinterfere with such order unless: (

a) the prothonotary has made an error in law, including the exercise of his or her discretion based upon a wrong principle or upon amisapprehension of the facts; or (

b) the order raises a question that is vital to the final issue of the case.

[3] In Merck v. Apotex ,this Court also noted that the Supreme Court of Canada in Z.I. Pompey Industrie v.

Ecu-Line N.V., (2003), 2003 SCC 27 , 224 D.L.R. (4th) 577 held that: the Federal Court of Appeal may only interfere with the decision of the applications judge where the judge "had no grounds to interferewith the prothonotary's decision or, in the event such grounds existed, if [the judge's] decision was arrived at on a wrong basis or wasplainly wrong" [4] In this case the Federal Court Judge noted that the parties had agreed that “whether Idenix’s proposed amendment to itspleading raises a reasonable cause of action is a question of law that is reviewable on the standard of correctness and maybe consideredon a de novo basis”.

Having considered this on a de novo basis, the Federal Court Judge concluded that the question of whether thedisclosure of the names of the inventors of the patent as made by Gilead in its petition in respect of the patent in issue, in this case, is amaterial allegation for the purposes of subsection 53(1) of the Patent Act is a matter that should be considered by the trial judge who willbe able to consider all of the facts that will be proven at the hearing. [5] We are not persuaded that the decision of the Federal Court Judge “was arrived at on a wrong basis or was plainly wrong”.As a result, the appeal will be dismissed with costs.

"Wyman W. Webb" J.A. FEDERAL COURT OF APPEAL NAMES OF COUNSEL AND SOLICITORS OF RECORD DOCKET: A-242-14 STYLE OF CAUSE: GILEAD SCIENCES, INC., GILEAD SCIENCESCANADA, INC. AND GILEAD PHARMASSETLLC v. IDENIX PHARMACEUTICALS, INC. PLACE OF HEARING: TORONTO, ONTARIO DATE OF HEARING: October 29, 2014 REASONS FOR JUDGMENT OF THE COURT BY: TRUDEL J.A. WEBB J.A. NEAR J.A. DELIVERED FROM THE BENCH BY: WEBB J.A.

APPEARANCES: Jason Markwell Adam Haller For The Appellants Patrick Smith William Boyer For The Respondent SOLICITORS OF RECORD: Norton Rose Fulbright Canada LLP Barristers and Solicitors Toronto, Ontario For The Appellants

Gowling Lafleur Henderson LLP Barristers and Solicitors Ottawa, Ontario For The Respondent