Date: 20111007
Docket: T-1252-09
Citation: 2011 FC 1136
Ottawa, Ontario, this 7th day of
October 2011
Present: The Honourable Mr. Justice
Pinard
BETWEEN:
APOTEX INC.
Plaintiff
and
WARNER-LAMBERT COMPANY LLC
and PARKE, DAVIS & COMPANY LLC
Defendants
REASONS FOR ORDER
AND ORDER
[1]
This
is an appeal by the defendants from the discretionary Order made on
August 23, 2011 by Madam Milczynski, the Case Management Prothonotary
assigned to these proceedings, in respect of the plaintiff’s motion to compel
answers arising from examinations for discovery. Out of the 41 questions before
the Prothonotary, only one (numbered question 342) is the subject of this
appeal:
For each
patent filing by pharmaceutical companies from the early 1980s that included
claims encompassing ACE inhibitors with a THIQ headgroup that Warner-Lambert is
aware of, please identify when Warner-Lambert became aware of the patent filing
and produce any documents that indicate Warner-Lambert’s awareness.
[2]
The
plaintiff commenced this patent impeachment action by statement of claim dated
August 4, 2009 and later amended March 12, 2011. It seeks an order
declaring that Canadian Patent No. 1,331,615 (615 Patent) and Canadian Patent
No. 1,341,330 (330 Patent) and each of their claims are invalid, void and of no
force and effect. The plaintiff also seeks a declaration of non-infringement of
both the 330 and 615 Patents, which were filed in Canada on
September 30, 1981.
[3]
In
ordering the question answered, the Prothonotary exercised her discretion to
limit the question to 1984 and to the making of reasonable inquiries:
For each patent filing by pharmaceutical
companies from up to 1984 that included claims encompassing ACE inhibitors with
a THIQ headgroup that Warner-Lambert is aware of, please make reasonable
efforts to identify when Warner-Lambert became aware of the patent filing and
produce any documents that indicate Warner-Lambert’s awareness.
[4]
It
is well established that discretionary decisions of Prothonotaries ought not to
be disturbed on appeal unless they raise questions vital to the final issue of
the case or are clearly wrong, in the sense that the Prothonotary’s exercise of
discretion was based upon a wrong principle or upon a misapprehension of the
facts. Furthermore, it is settled that it is rare that the disposition of a
discovery motion will be vital to the final outcome (Apotex Inc. v.
Sanofi-Aventis, 2011 FC 52 at paras 13-14; Eli Lilly Canada Inc. v.
Novopharm Ltd., 2008 FC 281 at paras 50-57, aff’d, 2008 FCA 287).
[5]
Moreover,
where the interlocutory order is one of a Case Management Prothonotary, the
latter is entitled deference and the moving party will have a “heavy burden”
when seeking to overturn that order (see J2 Global Communications, Inc. v.
Protus IP Solutions Inc., 2008 FC 759 at para 14, aff’d, 2009
FCA 41).
[6]
In
the case at bar, the defendants argue that the Prothonotary’s decision is
“clearly wrong” because the question at issue is not relevant and is overbroad,
and, in any event, because the Prothonotary’s order fails to comply with the
principle of proportionality, as the question at issue imposes a significant
burden on the defendants.
[7]
For
its part, the plaintiff argues that the question at issue is relevant because,
as pleaded, one element of the obviousness of the patents in suit is the fact
that other scientists in the field came to the same invention in and around the
same time. The plaintiff further argues that the question is also relevant, to
the extent that it relates to the time period up to September 30, 1981, to
support its pleas as to the relevant state of the art. Finally, the plaintiff
submits that the defendants filed no evidence to support their position that
the question ordered answered is “very burdensome” or “onerous”, and that their
submissions in this regard fall squarely within the discretionary decision of
the Case Management Prothonotary.
[8]
I
agree with the plaintiff that none of the defendants’ submissions are
sustainable once the question at issue is properly understood. In so finding, I
adopt the reasoning contained in paragraphs 16 to 23 of the “Responding
Written Representations” filed. These specific submissions are appended as
“Appendix” to these Reasons.
[9]
I
therefore conclude that the defendants have manifestly failed to meet the heavy
burden of demonstrating that the Prothonotary’s interlocutory decision
represents the “clearest case of a misuse of judicial discretion” (see, for
example, Sawridge Band v. Canada, [2002] 2 F.C. 346 at 354 (C.A.); Montana
Band et al. v. Her Majesty the Queen in Right of Canada et al., 2002 FCA
331 at para 7; and Apotex Inc. v. Her Majesty the Queen in Right of Canada
et al., 2006 FC 850 at para 15).
[10]
Consequently,
the defendants’ appeal is dismissed, with costs.
ORDER
The defendants’ appeal from the
Order made by Madam Prothonotary Milczynski, on August 23, 2011, in
respect of the plaintiff’s motion to compel answers arising from examinations
for discovery, is dismissed, with costs.
“Yvon
Pinard”
APPENDIX
RESPONDING WRITTEN REPRESENTATIONS
(Defendants’ appeal of the Order of
Prothonotary Milczynski)
16. As noted
above, Apotex has pleaded that the asserted obviousness of the 615 and 330
patents is demonstrated by the fact that others came to the invention in and
around the same time. Warner-Lambert has denied this plea and asserted facts to
the contrary.
17. Apotex’s
assertion in this regard will be advanced if it can establish that
Warner-Lambert, a company working in the field at the time, was aware of patent
filings that included the pleaded essence of the Warner-Lambert scientists’
purported invention. This fact will make it very difficult for Warner-Lambert
do deny the fact that others came to patents for ACE inhibitors with a THIQ
head group in and around the same time as Warner-Lambert at trial. If
Warner-Lambert persists in its denial at trial, Apotex can use this fact to
undermine any assertions, factual or expert, that are contrary to these facts.
18. The
question is also relevant as supporting a second line of inquiry. The fact that
Warner-Lambert, a company working in the relevant field at the time, was aware
of relevant prior art would be supportive of Apotex’s plea that said art was
part of the knowledge of the skilled addressee at the relevant date. Thus,
insofar as the question relates to the time period up to September 1981, the
question has further relevance in this regard.
19. As noted
above, it is likely that the skilled addressee will be found to include
scientists working in industry at the time.2 As Warner-Lambert
employed a number of scientists within the relevant industry, the fact that
they had knowledge of relevant art is probative of whether a skilled address
would have knowledge of same.3
20. As a
result, it is reasonable to conclude that the answer to the question ordered
answered might lead to a train of inquiry that may either advance Apotex’s case
or harm the case of Warner-Lambert. The question meets the standard of
relevance on discovery.
Apotex Inc. v. Sanofi-Aventis, 2011 FC 52 at para. 18
21. The
Prothonotary accepted the relevance of this question. She was not clearly wrong
in so doing. As a result, her decision ought not to be disturbed on appeal.
22. Warner-Lambert’s
submissions of overbreadth of the Order are also answered by the nature of the
primary basis for relevance of Apotex’s inquiry. Given the delay between the
filing of a patent application and the disclosure to the public of said
application, it is logical to extend the time period for the question to a
number of years subsequent to the Canadian filing date of the patents in suit.4
Thus, the Prothonotary did not clearly err in ordering the question
answered with a date limit of 1984.
23. Warner-Lambert’s
submissions of burden and proportionality are likewise flawed. A party cannot
simply argue prejudice without appropriate supporting evidence. Nonetheless, on
the motion below, Prothonotary Milczynski exercised her discretion and limited
the question to the provision of making reasonable inquiries. Warner-Lambert
has failed to address the significant burden facing it when seeking to overturn
a discretionary decision of a Prothonotary, let alone a Case Management
Prothonotary. In any event, the lack of evidence of burden is fatal to
Warner-Lambert on any standard of review.
Wewayakum Indian Band v. Wewayakai Indian
Band (T.D.),
[1991] F.C.J. No. 213 at para. 47 (T.D.)
____________________
2 See e.g. Sanofi-Aventis
Canada Inc. v. Apotex Inc., 2009 FC 676 at para. 85 and Les Laboratories
Servier v. Apotex Inc., 2008 FC 825 at para. 103.
3 In this regard, Warner-Lambert’s
reliance upon earlier case law that did not compel the answer to questions that
sought the knowledge of the inventors is unhelpful. The question seeks
Warner-Lambert’s knowledge, not that of the inventors alone, for the very
reason that Warner-Lambert’s knowledge is more probative of the knowledge of
the skilled addressee. Also, to the extent that the inventors had cognizance of
the relevant art before the date of invention found by the Court at trial, said
knowledge is clearly relevant in light of the Supreme Court of Canada’s
decision in Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61 at
paras. 70 and 71.
4 Such an approach is not unlike
the Court’s recognition that the state of the art may be proven, where
appropriate, by post-art articles that provide evidence as to the prior art:
see Eli Lilly and Co. v. Apotex Inc., 2009 FC 991 at paras. 420-423.
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