Date: 20071031
Docket: T-1048-07
Citation: 2007 FC 1126
Toronto, Ontario,
October 31, 2007
PRESENT: The Honourable Justice Johanne Gauthier
BETWEEN:
ELI LILLY CANADA INC., ELI
LILLY AND COMPANY,
ELI LILLY COMPANY LIMITED and ELI LILLY
SA
Plaintiffs
(Defendants by Counterclaim)
and
NOVOPHARM
LIMITED
Defendant
(Plaintiff by Counterclaim)
REASONS FOR ORDER AND ORDER
[1]
Novopharm
appeals the Order of Prothonotary Tabib dated September 25, 2007 granting the
plaintiffs’ motion for bifurcation of the issues of quantum from those of
validity and infringement of the patent in suit pursuant to Rule 107 of the Federal
Courts Rules, 1998, SOR/98-106. It is to be noted that Prothonotary Tabib
is the Case Manager in this matter.
[2]
All the
principles applicable to this appeal are well known. As the matter before
Prothonotary Tabib did not involve a question vital to the final issue of the
case, the Court should not intervene on appeal unless her decision was clearly
wrong, “in the sense that the exercise of discretion was based upon a wrong
principle or a misapprehension of the facts” (Z.I. Pompey Industrie v.
ECU-Line N.V. [2003],
1 S.C.R. 450 at para. 461), Merck and Co. v. Apotex Inc. [2003], 30 C.P.R (4th) 40
(FCA); [2003] F.C.J. No. 1925 at para. 19). The principles
or conditions for the making of an order pursuant to Rule 107 are also well
established (see for example Apotex Inc. v. Bristol-Myers Squibb Co.
2003 F.C.A. 263, (2003) 26 C.P.R. (4th) 129 at para. 7); Illva Saronno S.p.A. v. Privilegiata Fabbrica Maraschino
"Excelsior" (T.D.),
[1998]
F.C.J. No. 1500; Illva Saronno S.p.A. v. Privilegiata
Fabbrica Maraschino, [2000] F.C.J. No. 170 at
para 8; Merck & Co. et al. v. Brantford Chemicals Inc. [2004] F.C.J. No. 1704, 35 C.P.R. (4th)
4, aff’d [2005] F.C.J. No. 837, 39 C.P.R
(4th) 524 (F.C.A.); Apotex Inc. v. Merck & Co. [2004]
F.C.J. No. 1372 at para. 3). It is trite law that the applicant bears the
burden of convincing the Court on a balance of probabilities that in light of
the evidence and all of the circumstances of the case (including the nature of
the claims, the conduct of the litigation, the issues and remedies sought),
bifurcation or severance is more likely than not to result in the just,
expeditious and least expensive determination of the proceeding on its merits.
[3]
That being
said, having carefully considered all the arguments put forth by the parties on
this appeal, the Court is not persuaded that Prothonotary Tabib made any error
that warrants the Court’s intervention.
[4]
As
mentioned at the hearing, given that time is of the essence here, the Court
will not comment on each and every issue raised by Novopharm (such issues are
summarised at paragraph 2 of the written representations). However, considering
the importance given to the following issues at the hearing, it is worth noting
specifically that the Court cannot agree with Novopharm that Prothonotary Tabib
implicitly applied or assumed the existence of a presumption in favour of
bifurcation in patent infringement cases, which had the effect of actually reversing
the burden of proof so as to place it on the shoulders of Novopharm. There was
evidence before Prothonotary Tabib dealing with bifurcation of quantum issues
in cases involving patent infringement in the last fifteen years (such as the
affidavits of Nancy Gallinger and of Alisha Meredith). Prothonotary Tabib
expressly refers to Apotex Inc. v. Bristol-Myers Squibb Co. above;
in that case, the Federal Court of Appeal agreed that “when an experienced specialist
bar like the intellectual property bar commonly consents to the making of a
bifurcation order, it is open to a judge to infer that, in general, such an
order may well advance the just and expeditious resolution of claims”.
[5]
It is also
absolutely clear from the decision that this was only one of many factors
Prothonotary Tabib considered before making her order. Among many other
things, she was satisfied based on the evidence before her, the pleadings, her
knowledge of the history of the proceeding and the issues it involved, that not
only would bifurcation likely have the advantage of speeding up the
determination of the liability issues (which at this stage also involve novel
questions of law particularly in respect of the section 8 counterclaim), but
that bifurcation would also more likely than not avoid at least one side of the
quantification exercise whatever the result of the trial on liability issues.
(page 4 last sentence and page 6 and 7)
[6]
Evidently,
the Prothonotary was satisfied that she did not require more specific evidence
in respect of the number of days of discoveries or an exact quantification of
the time and expenses that would be saved in order to determine whether this
would necessarily result in a saving of time and money for the Court and the
parties.
[7]
Novopharm says
that this constitute an error of law as Prothonotary Tabib failed to heed the
evidentiary requirements set out by the Federal Court of Appeal in Realsearch
Inc. v. Valon Kone Brunette, 31 C.P.R. (4th) 101 (F.C.A.),
[2004] 2 F.C.R. 514.
[8]
Like
Prothonotary Tabib, the Court does not believe that Realsearch
establishes a new condition or standard for the making of an order under Rule
107. As any party who has a burden of proof to meet, the applicant seeking
such an order must provide sufficient evidence to enable the Court to come to a
conclusion on the matter before it. The fact that there was no evidence
dealing with the specific saving of time and money that would result from the
bifurcation in the case before the Court in Realsearch was worth noting and
was particularly significant because the bifurcation sought in that case was in
respect of a question of law (claims construction). Such request was an
unusual and a somewhat novel use of bifurcation pursuant to Rule 107. In such
a case, the Court could not rely on experience or on an inference based on a
consistent practice in respect of the bifurcation of quantum issues in similar
cases or on knowledge acquired while case managing the matter. The situation
is quite different here.
[9]
It is
clear from her order that Prothonotary Tabib knew perfectly well that the
applicant had to satisfy her on a balance of probabilities. She was fully
aware of all the arguments raised by Novopharm in respect of the quality (or
rather lack thereof) of the evidence before her. Still, she concluded on page
9 that on the whole, she was satisfied that she could reach a conclusion that
severance is more likely than not to result in the just, expeditious and least
expensive determination of the proceeding on its merits.
[10]
In fact, even if
Novopharm had convinced that the Court that it should exercise its discretion de
novo, the Court would ultimately have reached the same conclusion as
Prothonotary Tabib.
ORDER
THIS COURT ORDERS that:
The appeal is dismissed with
costs.
“Johanne Gauthier”
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