Eli Lilly Canada Inc. et al. v. Novopharm Ltd., (2008) 381 N.R. 93 (FCA)

• Judge: Nadon, Pelletier and Ryer, JJ.A.
• Court: Federal Court of Appeal (Canada)
• Case Date: June 18, 2008
• Jurisdiction: Canada (Federal)
• Citations: (2008), 381 N.R. 93 (FCA);2008 FCA 287

Eli Lilly Can. Inc. v. Novopharm (2008), 381 N.R. 93 (FCA)

MLB headnote and full text

Temp. Cite: [2008] N.R. TBEd. OC.058

Novopharm Limited (appellant) v. Eli Lilly Canada Inc., Eli Lilly and Company, Eli Lilly and Company Limited and Eli Lilly SA (respondents)

(A-114-08; 2008 FCA 287)

Indexed As: Eli Lilly Canada Inc. et al. v. Novopharm Ltd.

Federal Court of Appeal

Nadon, Pelletier and Ryer, JJ.A.

September 29, 2008.

Summary:

The plaintiffs brought an action claiming infringement of its patent relating to olanzapine. By counterclaim, the defendant alleged that the patent was invalid and sought damages under s. 8 of the Patented Medicines (Notice of Compliance) Regulations. The defendant moved for an order requiring the deponents of the affidavits of documents of each of the plaintiffs to submit to cross-examination on their respective affidavits of documents and to serve a further and better affidavit of documents.

A Prothonotary of the Federal Court, in a decision reported at 319 F.T.R. 310, ordered the plaintiff to review their documents in light of these reasons and serve revised affidavits of documents. The court extended the time within which the defendant had to proceed with the Examinations for Discovery to 45 days from the service of the plaintiffs' revised affidavits of documents. The motion was otherwise dismissed. The defendant appealed.

The Federal Court, in a decision reported at 327 F.T.R. 266, dismissed the appeal. The defendant appealed.

The Federal Court of Appeal dismissed the appeal.

Courts - Topic 2583

Registrars and prothonotaries - Appeal from - Scope of review (incl. standard of review) - A defendant in a patent action moved for an order requiring the plaintiffs to serve a further and better affidavit of documents - The case management Prothonotary ordered the plaintiff to review their documents and serve revised affidavits of documents - The defendant appealed - The Federal Court of Appeal agreed that the Prothonotary's order was not an order vital to the final resolution of the action - Accordingly, the Federal Court judge could not revise the Prothonotary's order de novo - The defendant had to show that the Prothonotary's order was clearly wrong, i.e., her discretion was based upon a wrong principles or upon a misapprehension of the facts - Additionally, as a case manager, the Prothonotary was entitled to an additional level of deference - On this appeal, it was clear that the court could only interfere with the Federal Court judge's decision if he either had no grounds to interfere with the Prothonotary's decision, or, where such grounds existed, that decision was arrived at on a wrong basis or was plainly wrong - See paragraphs 50 to 57.

Patents of Invention - Topic 8115

Practice - Discovery - Documents - General - [See all Practice - Topic 4632 ].

Practice - Topic 4550

Discovery - Production and inspection of documents - General -  A defendant in a patent action moved for an order requiring the plaintiffs to serve a further and better affidavit of documents - The case management Prothonotary ordered the plaintiff to review their documents and serve revised affidavits of documents - The defendant appealed, asserting that the Prothonotary erred by accepting that partial documentary disclosure prior to the commencement of oral examinations for discovery was an acceptable practice - The Federal Court judge dismissed the appeal - The Federal Court of Appeal dismissed a further appeal - It was well established that the production of documents, before examination for discovery and trial was one of the most important procedures and that fairness dictated that each side should have full documentary discovery as well as proper preparation time before examination - The defendant's argument was without basis because the Prothonotary expected the documentary production she ordered to be produced well before the start of discoveries and her reasons did not endorse the concept of partial documentary discovery before oral discovery or the resolution of informal requests on oral discovery - See paragraphs 58 and 59.

Practice - Topic 4550

Discovery - Production and inspection of documents - General -  A defendant in a patent action moved for an order requiring the plaintiffs to serve a further and better affidavit of documents - The case management Prothonotary ordered the plaintiff to review their documents and serve revised affidavits of documents - The defendant appealed, asserting that the effect of the Prothonotary's decision was to strike the defendant's pleadings with respect to the plaintiffs' state of knowledge regarding olanzapine's side effects - The defendant also argued that the Prothonotary had no discretion to relieve the plaintiffs from the disclosure of internal memoranda that could technically be considered relevant - The Federal Court of Appeal affirmed the dismissal of the appeal - The Prothonotary had discretion to refuse to order the plaintiffs to disclose relevant documents - Although the Federal Court judge did not appear to have reached any particular conclusion regarding the Prothonotary's determination that the plaintiffs' approach with respect to the disclosure of documents in their affidavits of documents was not unreasonable, after careful consideration of the Prothonotary's reasons, the court could not detect any error of principle in her reasoning or any error in her appreciation of the facts relevant to her determination - It was clear that the Prothonotary properly understood the defendant's argument and that she carefully considered the evidence before her prior to making her determination - The Prothonotary did not strike the defendant's pleadings - See paragraphs 66 to 79.

Practice - Topic 4632

Discovery - Affidavit or list of documents - What documents must be listed - A defendant in a patent action moved for an order requiring the plaintiffs to serve a further and better affidavit of documents - A Prothonotary discussed what documents had to be listed - Unless the party producing the affidavit intended to rely on a document at trial, it was not obliged to disclose it unless "it is reasonable to suppose" that the document would undermine its own case, advance its opponent's, or would "fairly lead him to a train of inquiry, which may have either of these two consequences" - It was not sufficient for a document to merely relate to the facts at issue - A document which was neutral and could only reasonably be supposed to lead to other similarly neutral documents was not relevant - On a motion for a further and better affidavit of documents, the reasonable possibility that a document led to one of the desired effects had to be established by the moving party - To say that a document might conceivably lead to other documents, which, although not in themselves relevant, might then conceivably lead to useable information, was not enough - Whether on the wide "train of inquiry" test, or a narrower reading of Federal Courts Rule 222(2), the defendant was not entitled to disclosure of every document in the plaintiffs' possession, power or control that related to the facts pleaded, whether or not they could directly or indirectly assist its case - The defendant was not entitled to disclosure of every document in the plaintiffs' possession so that it might itself consider whether they might be useful - Unless it could establish that the plaintiffs' vetting process was inadequate, the defendant had to be satisfied by the sworn statements appearing in the plaintiffs' affidavits of documents, to the effect that the affiant had diligently caused the records to be searched and had made appropriate inquiries and disclosed, to the full extent of his or her knowledge, information and belief, the documents that would tend to adversely affect the plaintiffs' case or advance the defendant's - The Federal Court of Appeal agreed - Further, the Prothonotary did not err in the application of the test - See paragraphs 60 to 65.

Practice - Topic 4632

Discovery - Affidavit or list of documents - What documents must be listed - The plaintiffs brought an action claiming infringement of its patent relating to olanzapine - By counterclaim, the defendant alleged that the patent was invalid and sought damages - The defendant moved for an order requiring the plaintiffs to serve a further and better affidavit of documents - All of the documents the defendant alleged existed and had not been produced ultimately related to the issue of the side effects profile of olanzapine - The defendant alleged that, inter alia, clinical trial documents were missing - A Prothonotary ordered the plaintiffs to review its records to determine whether clinical trial documents created after 2001 existed and have not been disclosed, and if so, to include them in a further and better affidavit of documents - There was evidence establishing that clinical trials were conducted in the period after 2001, that this data likely related to side effects profiles, and that it might therefore tend to advance the defendant's position - The Federal Court of Appeal affirmed the decision - The Prothonotary clearly understood the defendant's submission and dealt with it in the light of the evidence and the applicable Rules - She ultimately exercised her discretion not to order the disclosure of documents which might be relevant but, in her view, would likely be of little value to the defendant - Notwithstanding this conclusion, she nonetheless ordered the respondents to disclose internal documents that might contain statements "damaging to [the plaintiffs]" - The Prothonotary did not exercise her discretion based upon a wrong principle or upon a misapprehension of the facts - See paragraphs 80 to 84.

Practice - Topic 4632

Discovery - Affidavit or list of documents - What documents must be listed - The plaintiffs brought an action claiming infringement of its patent relating to olanzapine - By counterclaim, the defendant alleged that the patent was invalid and sought damages - The defendant moved for an order requiring the plaintiffs to serve a further and better affidavit of documents - All of the documents the defendant alleged existed and had not been produced ultimately related to the issue of the side effects profile of olanzapine - The defendant alleged that, inter alia, correspondence between the plaintiffs and health regulators were missing - A Prothonotary held that this class of documents would not advance the defendant's case, undermine the plaintiffs' or be susceptible of leading to any train of inquiry having either result - It could not reasonably be supposed that the plaintiffs had, in this correspondence, admitted to any other negative side effects than those against which publicly available labels and product monograph warned - Again, the only information to which this correspondence might be supposed to lead is the same clinical data and reports which had or would be produced - The Federal Court of Appeal affirmed the decision - There was no error on the part of the Prothonotary - She considered the nature of the documents and their potential relevance and concluded that they would not further advance the defendant's case, hinder the plaintiffs' case or lead to a train of enquiry which might yield either result - See paragraphs 85 and 86.

Cases Noticed:

Eli Lilly Canada Inc. v. Apotex Inc. et al. (2007), 311 F.T.R. 21; 2007 FC 455, refd to. [para. 4].

Eli Lilly Canada Inc. v. Novopharm Ltd. et al., [2007] F.T.R. Uned. 828; 2007 FC 596, refd to. [para. 5].

Apotex Inc. v. Merck & Co. et al. (2004), 259 F.T.R. 238; 33 C.P.R.(4th) 387 (F.C.), affd. (2005), 331 N.R. 144; 38 C.P.R.(4th) 289 (F.C.A.), refd to. [para. 23].

SmithKline Beecham Animal Health Inc. v. Minister of National Revenue, [2002] 4 C.T.C. 493; 291 N.R. 113 (F.C.A.), refd to. [para. 39].

Apotex Inc. v. Canada et al. (2005), 337 N.R. 225; 41 C.P.R.(4th) 97 (F.C.A.), refd to. [para. 39].

Merck & Co. et al. v. Apotex Inc. (2003), 315 N.R. 175; 2003 FCA 488, refd to. [para. 52].

Canada v. Aqua-Gem Investments Ltd., [1993] 2 F.C. 425; 149 N.R. 273 (F.C.A.), refd to. [para. 52].

Sawridge Indian Band et al. v. Canada, [2002] 2 F.C. 346; 283 N.R. 107 (F.C.A.), refd to. [para. 54].

Merck & Co. et al. v. Apotex Inc. (2003), 312 N.R. 273; 28 C.P.R.(4th) 491 (F.C.A.), refd to. [para. 55].

Reading & Bates Construction Co. v. Baker Energy Resources Co., Baker Marine Co. and Gaz Inter-Cité Quebec Inc. (1988), 25 F.T.R. 226; 24 C.P.R.(3d) 66 (T.D.), refd to. [para. 56].

Pompey (Z.I.) Industrie et al. v. Ecu-Line N.V. et al., [2003] 1 S.C.R. 450; 303 N.R. 201; 224 D.L.R.(4th) 577; 2003 SCC 27, refd to. [para. 57].

Counsel:

Jonathan Stainsby, for the appellant;

Anthony G. Creber, for the respondents.

Solicitors of Record:

Heenan Blaikie LLP, Toronto, Ontario, for the appellant;

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

This appeal was heard on June 18, 2008, at Toronto, Ontario, by Nadon, Pelletier and Ryer, JJ.A., of the Federal Court of Appeal. The following judgment of the Court of Appeal was delivered at Ottawa, Ontario, by Nadon, J.A., on September 29, 2008.