Date: 20080507
Docket: T-1697-01
Citation : 2008 FC 659
OTTAWA, Ontario
, this 7th day of May, 2008
PRESENT: THE HONOURABLE MADAM JUSTICE TREMBLAY-LAMER
BETWEEN:
ELI LILLY AND COMPANY and
ELI LILLY CANADA INC.
Plaintiff(s)
and
APOTEX INC. and
NOVOPHARM LIMITED
AND
BETWEEN:
APOTEX INC.
Plaintiff by Counterclaim
and
ELI LILLY AND COMPANY and
ELI LILLY COMPANY INC.
Defendants by Counterclaim
REASONS FOR ORDER AND ORDER
[1]
This is a motion by the plaintiffs (Lilly) for
an order setting aside the February 8, 2008 order of Madam Prothonotary
Aronovitch, wherein certain questions refused by the defendant (Novopharm) were
ordered not answered.
[2]
This motion arises from an action for
infringement in which the plaintiffs have sued Apotex and Novopharm for infringement
of two Canadian patents which claim processes for preparing the intermediates
of, inter alia, the medicine nizatidine. Apotex and Novopharm allege
non-infringement of both patents and further have counterclaimed alleging that
both are invalid. Apotex has also counterclaimed that Lilly and Novopharm have
conspired to deprive Apotex of a source of licensed nizatidine, in violation of
the Competition Act. Both Lilly and Novopharm deny these allegations.
[3]
The order pertains to a further discovery conducted
of Mr. Windross on behalf of Novopharm. Lilly brought a motion to compel
answers refused on that discovery. At that motion, a number of questions were
not ordered answered.
[4]
The plaintiffs submit that the Prothonotary
erred in law by refusing to order answers to questions which were relevant.
[5]
It is well established that discretionary
orders of prothonotaries should be left undisturbed unless the questions in the
motion are “vital to the final issue of the case” or the prothonotary’s order
is “clearly wrong” (Merck & Co. v. Apotex Inc., 2003 FCA 488, [2003]
F.C.J. No. 1925 (QL), at para. 19).
[6]
In the case of Reading & Bates
Construction Co. v. Baker Energy Resources Corp. (1988), 24 C.P.R. (3d) 66,
at pp. 70-72, [1988] F.C.J. No. 1025 (QL), the Court set down guiding
principles in determining relevancy, including the following:
o […] The principle for determining what document properly relates to
the matters in issue is that it must be one which might reasonably be supposed
to contain information which may directly or indirectly enable the party
requiring production to advance his own case or to damage the case of his
adversary, or which might fairly lead him to a train of inquiry that could have
either of these consequences […].
o On an examination for discovery prior to the commencement of a
reference that has been directed, the party being examined need only answer
questions directed to the actual issues raised by the reference. Conversely,
questions relating to information which has already been produced and questions
which are too general or ask for an opinion or are outside the scope of the
reference need not be answered by a witness […].
o The propriety of any question on discovery must be determined on the
basis of its relevance to the facts pleaded in the statement of claim as constituting
the cause of action rather than on its relevance to facts which the plaintiff
proposes to prove to establish the facts constituting the cause of action. […]
o The ambit of questions on discovery must be restricted to unadmitted
allegations of fact in the pleadings […].
[7]
However, even where a question is found to be
relevant, a prothonotary may still decline to order it answered if:
[…] it is not
at all likely to advance the questioner’s legal position, or if the answer to a
question would require much time and effort and expense to obtain and its value
would appear to be minimal, or where the question forms part of a “fishing
expedition” of vague and far-reaching scope. (Merck & Co. v. Apotex Inc.,
2003 FCA 438, [2003] F.C.J. No. 1725 (QL), at para. 10; see Reading &
Bates Construction Co., above, at pp. 70-72)
[8]
The plaintiff bears the burden of demonstrating
that the Prothonotary’s order is clearly wrong, in the sense that the exercise
of discretion by the Prothonotary was based upon a wrong principle or upon a
misapprehension of the facts (Apotex Inc. v. Merck & Co., 2007 FC
250, [2007] F.C.J. No. 322 (QL), at para. 16).
[9]
While relevance was not referred to in the
reasons provided in Schedule A for any of the questions in issue, it was noted
in response to item no. 3 for which the Prothonotary indicated “Question shall
be answered. It is relevant.” Thus, while the Prothonotary did not make an
explicit relevancy finding with respect to each issue, I am of the view that
she was cognizant of the principle. I do not believe that a specific finding of
relevance is required for each and every item.
[10]
In a similar vein, this Court has held that
there is no requirement for reasons in orders of this nature. As Justice François
Lemieux stated in Anchor Brewing Co. v. Sleeman Brewing & Malting Co., 2001
FCT 1066, [2001] F.C.J. No. 1475 (QL), at para. 31: “The case law review, which
I accept, shows a prothonotary’s order given without written reasons does not
automatically give rise to a hearing de novo on appeal before a judge of this
court.” He went on to emphasize, at para. 32 that:
De novo intervention is not justified when, examining all of the
circumstances, including the nature of the order made, the evidence before the
prothonotary, whether the exercise of discretion involves essentially a
consideration of legal principles, reasonably demonstrate the manner in which
the prothonotary exercised his/her discretion.
(see also Apotex
Inc. v. Merck & Co., 2007 FC 250, [2007] F.C.J. No. 322 (QL), at para.
13)
[11]
In my view, when determining whether an order is
clearly wrong, a holistic evaluation as opposed to a formalistic one is
preferable. That is to say, whether or not a relevancy determination was explicitly
set out is not determinative of the matter, but rather the analysis must
involve a full consideration of the circumstances in which the order was made.
[12]
With respect to the first group of items, Prothonotary
Aronovitch provided the following reasons for refusing to order them answered
in Schedule A:
Item 45: Question
shall not be answered. It is an improper question.
Item 48:
Question shall not be answered. It is an improper question.
Item 51:
Question shall not be answered. It is an improper question.
Given the nature
of these questions, which are not factual questions directed to whether
or not the current supplier’s process is the “Shasun Process”, but rather
whether or not errors were made in these documents obtained from Novopharm’s
current supplier, they would be more properly addressed by experts or persons
skilled in the art. Thus, I cannot conclude that the Prothonotary was clearly
wrong in refusing to order them answered.
[13]
Regarding the second group of items, they were
dealt with in the following manner in Schedule A:
Item 128: Question
need not be answered. This is going too far. It is one thing to say give me
your factual underpinnings, and Lilly has been given that. Lilly is not then
permitted to query those underpinnings.
Item 130: Question
need not be answered. This is not about how something will be proven. Lilly
cannot query the basis of an allegation.
As indicated in Reading
& Bates Construction Co., above, “[t]he propriety of any question on
discovery must be determined on the basis of its relevance to the facts pleaded
in the statement of claim as constituting the cause of action rather than on
its relevance to facts which the plaintiff proposes to prove to establish the
facts constituting the cause of action”. Prothonotary Aronovitch’s conclusions
appear to be consistent with this statement setting out the scope of relevancy,
as they are questions that are the subject matter of expert evidence and are
directed to how Novopharm intends to prove its case. Thus, the decision to not
order these questions answered was not clearly wrong.
[14]
Finally with respect to the third group, Prothonotary
Aronovitch indicated the following:
Item 126: There
was no undertaking to provide the identity of who the inventor is if it is not
Kenneth Moder. The question need not be answered.
While Lilly
contends that an undertaking existed to provide the identity of the inventor if
it is not Kenneth Moder, Novopharm has not alleged that someone else is the
inventor. Instructively, at item 132, the Prothonotary states:
[…] Furthermore,
i[f] Novopharm takes the position that someone else is the inventor, then they
are to provide the facts relating to that. Novopharm has not alleged that
someone else is the inventor.
Thus, I can find nothing
clearly wrong with the Prothonotary’s conclusions with respect to this item.
[15]
Based on the foregoing, I am of the view that Prothonotary
Aronovitch did not commit any reviewable error and thus the present motion
shall be dismissed.
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