Apotex Inc. v. Canada et al., 2005 FCA 217

• Judge: Rothstein, Nadon and Sharlow, JJ.A.
• Court: Federal Court of Appeal (Canada)
• Case Date: June 09, 2005
• Jurisdiction: Canada (Federal)
• Citations: 2005 FCA 217;(2005), 337 N.R. 225 (FCA)

Apotex Inc. v. Can. (2005), 337 N.R. 225 (FCA)

MLB headnote and full text

Temp. Cite: [2005] N.R. TBEd. JN.054

Apotex Inc. (appellant) v. Her Majesty the Queen, Bristol-Myers Squibb Canada Inc. and Bristol-Myers Squibb Company (respondents)

(A-476-04; 2005 FCA 217)

Indexed As: Apotex Inc. v. Canada et al.

Federal Court of Appeal

Rothstein, Nadon and Sharlow, JJ.A.

June 9, 2005.

Summary:

Apotex filed a statement of claim in the Federal Court against BMS, claiming dam­ages or accounting of profits by reason of BMS' initiation, on November 18, 1999, of an application for prohibition against Apotex under the Patented Medicines (Notice of Com­pliance) Regulations (the "Regulations") and the subsequent failure of BMS to dis­continue, in a timely manner, its application. Apotex also claimed damages against Canada for refusal to diligently process its Abbrevi­ated New Drug Submission for its drug Apo-Pravastatin. On February 23, 2001, BMS dis­continued its prohibition proceedings. A dis­covery took place. Apotex refused to answer a number of questions posed by BMS on the grounds of relevance. BMS moved for an or­der to compel Apotex to answer those ques­tions.

A Prothonotary of the Federal Court allowed the motion. Apotex appealed.

The Federal Court, in a decision reported [2004] F.T.R. Uned. 668, dismissed the ap­peal. Apotex appealed.

The Federal Court of Appeal allowed the appeal in part.

Courts - Topic 2583

Registrars and prothonotaries - Appeals from - Scope of review - The Federal Court of Appeal discussed the standard of review, by a Federal Court judge, of a Prothonotary's decision - See paragraphs 11 to 14.

Practice - Topic 4252

Discovery - Examination - Range of - Ques­tions related to or relevant and ma­terial to issues between the parties - The Federal Court of Appeal discussed rel­e­vancy at the discovery stage - See para­graphs 15 to 17.

Practice - Topic 4252

Discovery - Examination - Range of - Ques­tions related to or relevant and material to issues between the parties - Apotex sued BMS and Canada - In the dis­covery, BMS asked questions about Apo­tex' applications for listing a certain drug on provincial and private formularies - Apotex gave an undertaking that it would produce its applications to the extent only that there was something relevant - A mo­tions judge ruled that Apotex conceded relevancy when it made the undertaking and affirmed a Prothonotary's order that it answer the questions - The Federal Court of Appeal held that the motions judge was clearly wrong on the concession issue - Al­so, the questions were not relevant where private formularies were not raised in the pleadings and where the issue between the parties concerned Apotex's Abbreviated New Drug Submission filed with the Min­ister - See paragraphs 18 to 26.

Practice - Topic 4252

Discovery - Examination - Range of - Questions related to or relevant and material to issues between the parties - Apotex sued BMS and Canada - Against BMS, Apotex claimed damages for having taken too long to discontinue a prohibition proceeding against Apotex under the Pat­ented Medicines (Notice of Compliance) Regulations - Against Canada, Apotex claimed damages for refusal to diligently process its Abbreviated New Drug Sub­mission (ANDS) for its drug Apo-Pravas­tatin - During the discovery a group of questions pertained to whether Apotex' Apo-Pravastatin was manufactured by a process which infringed BMS' patent - Another group of questions pertained to Apotex' refusal to produce its president's affidavit filed in a judicial review applica­tion against Canada for refusal to process its ANDS - The Federal Court of Appeal affirmed an order requiring Apotex to answer the questions as relevant - See paragraphs 27 to 41.

Cases Noticed:

Merck & Co. et al. v. Apotex Inc. (2003), 312 N.R. 273; 28 C.P.R.(4th) 491 (F.C.A.), consd. [para. 11].

Merck & Co. et al. v. Apotex Inc., [2004] 2 F.C.R. 459; 315 N.R. 175 (F.C.A.), consd. [para. 12].

Canada v. Aqua-Gem Investments Ltd., [1993] 2 F.C. 425; 149 N.R. 273 (F.C.A.), consd. [para. 12].

Invacare Corp. v. Everest & Jennings Canadian Ltd., [1984] 1 F.C. 856; 55 N.R. 73 (F.C.A.), consd. [para. 15].

SmithKline Beecham Animal Health Inc. v. Minister of National Revenue (2002), 291 N.R. 113; 2002 FCA 229, consd. [para. 16].

Statutes Noticed:

Federal Court Rules, 1998, rule 222(2) [para. 36].

Counsel:

Julie Rosenthal, for the appellant;

Patrick Smith and Marc Richard, for the respondent, Bristol-Myers Squibb.

Solicitors of Record:

Goodmans LLP, Toronto, Ontario, for the appellant;

Gowling Lafleur Henderson LLP, Ottawa, Ontario, for the respondent, Bristol-Myers Squibb;

John H. Sims, Q.C., Deputy Attorney General of Canada, Ottawa, Ontario, for the respondent, Her Majesty the Queen.

This appeal was heard at Toronto, Ontario, on April 28, 2005, by Rothstein, Nadon and Sharlow, JJ.A, of the Federal Court of Appeal.

The decision of the Court of Appeal was delivered at Ottawa, Ontario, on June 9, 2005, by Nadon, J.A.