Apotex Inc. v. Sanofi-Aventis, (2011) 383 F.T.R. 37 (FC)

• Judge: de Montigny, J.
• Court: Federal Court (Canada)
• Case Date: November 22, 2010
• Jurisdiction: Canada (Federal)
• Citations: (2011), 383 F.T.R. 37 (FC);2011 FC 52

Apotex Inc. v. Sanofi-Aventis (2011), 383 F.T.R. 37 (FC)

MLB headnote and full text

Temp. Cite: [2011] F.T.R. TBEd. MR.007

Apotex Inc. (plaintiff) v. Sanofi-Aventis (defendant)

(T-644-09)

Sanofi-Aventis and Bristol-Myers Squibb Sanofi Pharmaceuticals Holding Partnership (plaintiffs) v. Apotex Inc. and Apotex Pharmachem Inc. and Signa Sa de CV (defendants)

(T-933-09; 2011 FC 52)

Indexed As: Apotex Inc. v. Sanofi-Aventis

Federal Court

de Montigny, J.

January 17, 2011.

Summary:

The parties were Apotex Inc. and Apotex Pharmachem Inc. (collectively, Apotex) and Sanofi-Aventis and Bristol-Myers Squibb Partnership (collectively, Sanofi). On Sanofi's motion, its patent infringement action and Apotex's impeachment action were consolidated. Discoveries commenced. In light of the refusals and questions taken under advisement at the examinations for discovery, Apotex moved to compel Sanofi to provide answers to nearly 300 questions.

A Prothonotary of the Federal Court allowed the motion in part. A number of questions were properly refused as they were either not relevant, improper, overbroad, lacked proportionality, or sought opinion. Apotex appealed, on the ground that the Prothonotary erred in law in declining to order certain questions answered.

The Federal Court dismissed the motion. Apotex had failed to demonstrate that the Prothonotary's rulings were clearly wrong, or that she misapprehended the applicable legal principles or the facts.

Courts - Topic 2583

Registrars and prothonotaries - Appeals from - Scope of review - This was a motion for an order setting aside portions of an order by a Prothonotary not requiring a party to answer certain questions at the examinations for discovery - The Federal Court stated that "[d]iscretionary orders of Prothonotaries ought not to be disturbed on appeal to a judge unless they raise questions vital to the final issue of the case, or they are clearly wrong in the sense that the exercise of discretion by the Prothonoary was based upon a wrong principle or upon a misapprehension of the facts ... It will be a rare case when it can be shown that the denial of further discovery or further documents will be vital to the final outcome" - See paragraphs 13 and 14.

Courts - Topic 2583

Registrars and prothonotaries - Appeals from - Scope of review - A case management Prothonotary found that a number of questions were properly refused at the examinations for discovery - On appeal, the Federal Court stated that "[w]hile a case manager's expertise does not insulate him or her from review where an error of principle has been made, it has been recognized that there is a heavy burden upon litigants seeking to overturn an interlocutory order by a case manager. Interference with interlocutory orders adds to the delay and expense of the proceeding. Further, it is recognized that a case manager is intimately familiar with the history and details of complex matter" - See paragraph 15.

Patents of Invention - Topic 8106

Practice - Discovery - Examination - Questions which must be answered - [See Practice - Topic 4252 ].

Patents of Invention - Topic 8107

Practice - Discovery - Examination - Questions which need not be answered - [See Practice - Topic 4252 and Practice - Topic 4254 ].

Patents of Invention - Topic 8115

Practice - Discovery - Documents - General - [See Practice - Topic 4252] .

Practice - Topic 4252

Discovery - Examination - Range of - Questions related to or relevant and material to issues between the parties - A Prothonotary declined to compel the owner of the subject patent to answer certain questions on discovery - The Federal Court stated that it would apply a generous and flexible standard of relevance in determining whether a question should be answered - "A fair amount of latitude will be allowed on discovery provided that a question is relevant to issues raised by the pleadings. The standard of relevance on discovery is lower than at trial and doubt as to the propriety of the question will be resolved in favour of disclosure ... That being said, the Court retains a residual discretion to decide not to compel the production of technically relevant documents where such production would have no benefit or could not be used to advance a party's case. Although there is a broad right of examination, there are limits on that right of discovery and the Court will not permit the discovery process to be used as a fishing expedition ... Moreover, the simple fact that a question can be considered 'relevant' does not mean that it must inevitably be answered" - See paragraphs 16 to 21.

Practice - Topic 4254

Discovery - Examination - Range of - Expert opinion - A category of questions taken under advisement by the owner of the subject patent, and which a Prothonotary refused to order answered, related to trial testimony from experts who testified in the U.S. - The Federal Court held that the Prothonotary did not err - The expert opinion as well as the deposition and trial testimony of an individual given in another jurisdiction was not relevant or admissible at trial in respect of the issues - Such trial testimony and deposition could only be used to impeach a witness at trial, and as such, need not be produced on discovery - Further, the expert opinion and testimony would have been created after the filing of the subject patent, and would not be relevant to the issues - Finally, the testimony could be obtained if the information was publicly available - If it was not, then it would still be subject to confidentiality and its production would be restricted - See paragraphs 63 to 66.

Practice - Topic 4263

Discovery - Examination - Range of - Discovery or production of documents on examination - [See Practice - Topic 4252 ].

Practice - Topic 4264

Discovery - Examination - Range of - Fishing expeditions - [See Practice - Topic 4252 ].

Practice - Topic 4268

Discovery - Examination - Range of - Testimony in prior trials - [See Practice - Topic 4254 ].

Practice - Topic 4269.1

Discovery - Examination - Range of - Depositions in other proceedings - [See Practice - Topic 4254 ].

Practice - Topic 5782

Judgments and orders - Interlocutory or interim orders or judgments - Appeals - [See second Courts - Topic 2583 ].

Cases Noticed:

Merck & Co. et al. v. Apotex Inc., [2004] 2 F.C.R. 459; 315 N.R. 175; 2003 FCA 488, refd to. [para. 13].

Eli Lilly Canada Inc. et al. v. Novopharm Ltd. (2008), 381 N.R. 93; 2008 FCA 287, refd to. [para. 13].

Galerie au chocolat Inc. v. Orient Overseas Container Line Ltd., [2010] F.T.R. Uned. 208; 2010 FC 327, refd to. [para. 14].

Ruman v. Canada, [2005] F.T.R. Uned. 322; 2005 FC 474, refd to. [para. 14].

Montana Indian Band v. Canada et al., [2002] N.R. Uned. 185; 2002 FCA 331, refd to. [para. 15].

Apotex Inc. v. Bristol-Myers Squibb Co. et al., [2007] N.R. Uned. 171; 2007 FCA 379, refd to. [para. 18].

Monit International Inc. v. Canada (1999), 175 F.T.R. 258 (T.D.), refd to. [para. 19].

Glaxo Group Ltd. et al. v. Novopharm Ltd., [1998] F.C.J. No. 1808 (F.C.A.), refd to. [para. 19].

Apotex Inc. v. Merck & Co. et al., [2004] F.T.R. Uned. B11; 2004 FC 1038, refd to. [para. 20].

Eli Lilly Canada Inc. et al. v. Novopharm Ltd. (2008), 319 F.T.R. 310; 2007 FC 1195, affd. (2008), 327 F.T.R. 266; 2008 FC 281, affd. (2008), 381 N.R. 93; 2008 FCA 287, refd to. [para. 20].

Faulding Canada Inc. v. Pharmacia S.p.A. (1999), 249 N.R. 13; 3 C.P.R.(4th) 126 (F.C.A.), refd to. [para. 20].

GSC Technologies Corp. v. Pelican International Inc., [2009] F.T.R. Uned. 120; 2009 FC 223, refd to. [para. 21].

AstraZeneca Canada Inc. et al. v. Apotex Inc. (2008), 337 F.T.R. 107; 2008 FC 1301, refd to. [para. 21].

Sanofi-Synthelabo Canada Inc. et al. v. Apotex Inc. et al., [2008] 3 S.C.R. 265; 381 N.R. 125; 2008 SCC 61, refd to. [para. 26].

Eli Lilly Canada Inc. et al. v. Novopharm Ltd. (2010), 405 N.R. 1; 2010 FCA 197, refd to. [para. 26].

Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd., [1981] 1 S.C.R. 504; 35 N.R. 390; 122 D.L.R.(3d) 203; 56 C.P.R.(2d) 145, refd to. [para. 27].

Apotex Inc. and Novopharm Ltd. v. Wellcome Foundation Ltd., [2002] 4 S.C.R. 153; 296 N.R. 130; 2002 SCC 77, refd to. [para. 28].

Aventis Pharma Inc. v. Apotex Inc. et al. (2005), 278 F.T.R. 1; 43 C.P.R.(4th) 161; 2005 FC 1283, affd. (2006), 349 N.R. 183; 46 C.P.R.(4th) 401; 2006 FCA 64, refd to. [para. 29].

Visx Inc. v. Nidek Co. et al. (1995), 68 C.P.R.(3d) 272 (F.C.T.D.), affd. (1996), 209 N.R. 342; 72 C.P.R.(3d) 19 (F.C.A.), refd to. [para. 30].

Faulding Canada Inc. v. Pharmacia S.p.A. (1998), 154 F.T.R. 218; 82 C.P.R.(3d) 208 (F.C.), refd to. [para. 30].

Pfizer Canada Inc. et al. v. Novopharm Ltd. et al. (2010), 408 N.R. 166; 2010 FCA 242, refd to. [para. 31].

Pozzoli SPA v. BDMO SA, [2007] F.S.R. 37; [2007] EWCA Civ. 588, refd to. [para. 34].

Sanofi-Sunthelabo et al. v. Apotex Inc. et al., 492 F. Supp.(2d) 353, affd. 2008 U.S. App. LEXIS 24991, refd to. [para. 63].

Apotex Inc. v. Sanofi-Aventis (2010), 362 F.T.R. 242; 2010 FC 77, refd to. [para. 66].

Statutes Noticed:

Federal Courts Rules, rule 240 [para. 16]; rule 242(1) [para. 17].

Counsel:

Ben Hackett, for the plaintiff, Apotex Inc.;

Marc Richard, for the defendants.

Solicitors of Record:

Goodmans, LLP, Toronto, Ontario, for the plaintiff, Apotex Inc.;

Gowling Lafleur Henderson, LLP, Ottawa, Ontario, for the defendants.

This motion was heard at Ottawa, Ontario, on November 22, 2010, by de Montigny, J., of the Federal Court, who delivered the following order and reasons for order, dated January 17, 2011.