Eli Lilly Canada Inc. et al. v. Novopharm Ltd., 2007 FC 1195

• Court: Federal Court (Canada)
• Case Date: October 16, 2007
• Jurisdiction: Canada (Federal)
• Citations: 2007 FC 1195;(2007), 319 F.T.R. 310 (FC)

Eli Lilly Can. Inc. v. Novopharm Ltd. (2007), 319 F.T.R. 310 (FC)

MLB headnote and full text

Temp. Cite: [2007] F.T.R. TBEd. DE.004

Eli Lilly Canada Inc., Eli Lilly and Company, Eli Lilly Company Limited and Eli Lilly SA (plaintiffs/defendants by counterclaim) v. Novopharm Limited (defendant/plaintiff by counterclaim)

(T-1048-07; 2007 FC 1195)

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

Federal Court

Tabib, Prothonotary

November 15, 2007.

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 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.

Patents of Invention - Topic 8115

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

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 of the Federal Court 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 - See paragraphs 8 to 26.

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 of the Federal Court 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 - See paragraph 28.

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, internal memos and documents relating to clinical trials were missing - The defendant submitted that these communications might contain statements damaging to the plaintiffs - A Prothonotary of the Federal Court ordered the plaintiffs to make reasonable inquiries or take reasonable steps to ensure that internal documents that might have contained damaging admissions were reviewed and disclosed if they existed - See paragraphs 29 to 32.

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 of the Federal Court 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 - See paragraphs 33 and 34.

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, documents from products liability litigation were missing - A Prothonotary of the Federal Court held that whether or not the plaintiffs had been sued for product liability in relation to olanzapine, and whether or not it had misled any person or body other than the Patent Examiner, could not possibly make the patent invalid - Accordingly, the documents were not relevant, and did not need to be disclosed - However, that was not to say that documents disclosed in product liability actions might not otherwise be relevant to the issues properly raised in the present action - Documents tending to establish that the plaintiffs intentionally misled the Patent Examiner or omitted to communicate relevant information of which it was aware were subject to disclosure - See paragraphs 35 to 46.

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, expert reports from other litigation were missing - A Prothonotary of the Federal Court held that experts' reports prepared for the purpose of other litigations were not relevant - However, to the extent information of another party than the plaintiffs protected by a confidentiality order was available to the plaintiffs and was relevant to this matter, it should have been disclosed in the plaintiffs' affidavit of documents but in a manner that would not breach the relevant confidentiality order - See paragraphs 47 to 50.

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, prior art produced in the US product liability action were missing - A Prothonotary of the Federal Court found that the plaintiffs automatically excluded from its disclosure all published documents not created by the plaintiffs and not specifically alleged by the defendant, on the basis that they were un-alleged, and therefore irrelevant prior art - The plaintiffs failed to consider whether those documents could be used to support the defendant's assertion that olanzapine did not in fact have the asserted advantages or effects - The court ordered the plaintiffs to conduct a review of these documents and disclose those that might tend to advance the defendant's case or hurt its own - See paragraphs 51 to 53.

Cases Noticed:

Cie Financière du Pacifique v. Peruvian Guano Co. (1882), 11 Q.B.D. 55 (C.A.), refd to. [para. 12].

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. 13].

Apotex Inc. v. Canada et al. (2005), 337 N.R. 225; 2005 FCA 217, refd to. [para. 14].

SmithKline Beecham Animal Health Inc. v. Minister of National Revenue (2002), 291 N.R. 113; 2002 FCA 229, refd to. [para. 14].

Galehead Inc. et al. v. Ship Trinity (1998), 160 F.T.R. 227 (T.D. Protho.), refd to. [para. 15].

Seaspan International Ltd. et al. v. Ship Ewa et al., [2004] F.T.R. Uned. 94; 2004 FC 124 (T.D. Protho.), refd to. [para. 16].

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. 38].

Statutes Noticed:

Federal Courts Rules, rule 222(2) [para. 10].

Counsel:

Anthony Creber, Cristin Wagner and John Norman, for the plaintiffs;

Jonathan Stainsby, Andrew Skodyn and Neil Fineberg, for the defendant.

Solicitors of Record:

Gowling Lafleur Henderson LLP, Ottawa, Ontario, for the plaintiffs;

Heenan Blaikie LLP, Toronto, Ontario, for the defendant.

This motion was heard on October 16, 2007, at Toronto, Ontario, by Tabib, Prothonotary, of the Federal Court, who delivered the following judgment at Ottawa, Ontario, on November 15, 2007.