b)
Anthony
Creber and Jennifer Wilkie; and
c)
Les
Laboratoires Servier, ADIR, ORIL Industries, Servier Canada Inc., Servier
Laboratories (Australia) Pty. Ltd. and Servier
Laboratories Limited (collectively referred to as Servier).
[2]
The
moving parties seek
to quash seven subpoenas duces tecum issued at the request of Goodmans
LLP, on behalf of Apotex Inc. and Apotex Pharmachem Inc. (collectively Apotex),
requiring that five lawyers, one patent agent and one administrative assistant
(described below) attend to testify and to produce certain materials at the
trial of the action in Court File No. T‑1548‑06 (the Perindopril
Action). All of the subpoenaed persons, in and around 2000, represented clients
in matters that relate to issues raised in the Perindopril Action.
[3]
For
the reasons that follow, I am satisfied that all of the subpoenas but one
should be quashed and that the remaining subpoena should stand on a limited
basis.
II. Background
[4]
The
issues raised by these motions require an understanding of the background to
the Perindopril Action and related proceedings.
A. The
Conflict Proceedings leading to the 196 Patent and the 206 Patent
[5]
On
October 1, 1981, ADIR, one of the Plaintiffs in the Perindopril Action, filed
Canadian Application Number 387,093 (the 093 Application). Around the same
time, other claimants filed their own patent applications for the issuance of
patents covering overlapping compounds, including Schering Corporation
(Schering) in Canadian Application Number 388,336 (the 336 Application) and
Hoechst Aktiengesellchaft (Hoechst AG - the corporate predecessor to
Sanofi-Aventis Deutschland GmbH (Sanofi Germany)) with respect to Canadian
Application Nos. 384,787 (the 787 Application) and 418,453 (the 453 Application).
As provided for under the Patent Act, R.S.C. 1985, c. P-4, then
in force, the Commissioner of Patents (the Commissioner) placed the various
competing claims into conflict.
[6]
In
six decisions dated August 8, 1996, the Commissioner made determinations
related to inventorship of the claims in conflict and awarded some claims to
Schering, some to ADIR and some to Hoechst AG.
[7]
Six
proceedings were then commenced by way of actions in the Federal Court, in
which proceedings the affected parties (including ADIR) challenged the
determinations made by the Commissioner. All of the proceedings were
consolidated by the Order of Justice Joyal, dated May 27, 1997, into Court
File No. T-228-97.
[8]
Subsequent
to completion of discoveries in the consolidated actions, an Order on consent
was issued by Justice Nadon on December 12, 2000. That Order provided for an
allocation of the claims of the competing applications and attached Minutes of
Settlement specifying the claims to which the parties to the conflict were entitled.
Ultimately, the result of the Order for ADIR was the issuance of the Canadian
Patent No. 1,341,196 (the 196 Patent). The other results were the issuance of Canadian
Patent No. 1,341,206 (the 206 Patent) to Schering and the issuance of Canadian
Patent No. 1,341,296 (the 296 Patent) to Hoechst AG (Sanofi Germany).
[9]
On
each of April 3, 2001 and May 14, 2001, certificates of correction were issued
with respect to claim 5 of the 196 Patent.
B. T-1548-06:
the Perindopril Action
[10]
By
Statement of Claim dated August 25, 2006, Servier commenced the underlying action against
Apotex in Court File No. T-1548-06 claiming that Apotex had infringed certain
claims of the 196 Patent (the Perindopril Action). Apotex has defended the
claim by Statement of Defence and Counterclaim wherein it denies infringing the
196 Patent, and challenges the validity of the patent on various grounds
including: (i) the agreement which settled the conflict pleadings and resulted
in the 196 Patent was contrary to the Competition Act, R.S.C. 1985, c. C-34;
(ii) the certificates of correction issued in respect of the 196 Patent were
issued contrary to s. 8 of the Patent Act; and, (iii) Schering, not
Servier, was the first to invent the 196 Patent.
C. T-161-07:
the Ramipril Action
[11]
By
Statement of Claim dated January 26, 2007, Schering, Sanofi-Aventis Canada (Sanofi Canada) and
Sanofi Germany (collectively referred
to with Sanofi Canada as Sanofi) commenced an
action against Apotex Inc., alleging that Apotex Inc. infringed the 206 Patent
(the Ramipril Action). Apotex Inc. has defended the claim by Statement of
Defence and Counterclaim, in which it denies infringing the 206 Patent and
challenges the validity of the patent on various grounds, including an
allegation that the agreement which settled the conflict pleadings and resulted
in the 206 Patent was contrary to the Competition Act.
D. Procedural
History in the Perindopril Action
[12]
The
Perindopril Action continued through the summer of 2007. Affidavits of
documents were served and examinations for discovery of the parties’
representatives were conducted. During the examination of Servier’s
representatives, Apotex sought information and documents pertaining to the
prosecution of the 093 Application, the conflict proceedings before the Commissioner
and the Federal Court, and communications pertaining to the settlement of the
conflict proceedings. Servier objected to answer questions on these topics on
various grounds, including privilege and the existence of an implied
undertaking, either of which would protect the documents from disclosure.
Apotex moved to compel production of the information and documents. By Order of
Prothonotary Aronovitch dated July 17, 2007, Apotex’s motion was dismissed (the
July 17 Order) and subsequently affirmed on appeal by Order of this Court
dated September 11, 2007 (the September 11 Order).
[13]
Of
direct relevance to the subpoenas and the motions now before me, Prothonotary
Aronovitch, in the July 17 Order, while maintaining the privileged and
confidential nature of the sought-after information, required Servier to
produce logs listing Ogilvy Renault’s and Servier’s files relating to the 093
Application prosecution and settlement.
E. The
Joinder Motions of Sanofi Germany and Schering
[14]
By
Notice of Motion dated August 17, 2007, Sanofi Germany sought to be added as a Defendant by
Counterclaim to the Perindopril Action. Schering filed a similar Notice of
Motion on November 12, 2007. The motions were opposed by both Servier and
Apotex. This Court dismissed both motions on November 19, 2007 (Laboratoires
Servier v. Apotex Inc., 2007 FC 1210).
F. The Subpoenas
[15]
On
February 18, 2008, the subpoenas which are the subject of the motions before
this Court were issued, pursuant to r. 41(1) of the Federal Courts Rules,
S.O.R./98-106, to the following persons:
1.
The
Servier Witnesses, consisting of:
(a)
Mr.
J. Nelson Landry, who acted as legal advisor and as patent agent to ADIR in
respect of the prosecution of the 093 Application, the conflict proceedings,
the resulting settlement and issuance of the 196 Patent, and two certificates
of correction for claim 5 of the 196 Patent (Mr. Landry is now counsel with the
Ogilvy Renault law firm and, while not counsel of record in the Perindopril
Action, has participated in some legal matters related to this action);
(b)
Ms.
Liliane Benhamou, who was employed as Mr. Landry’s assistant during the
material times described above; and
(c)
Ms.
France Côté, who acted as a patent agent to Servier in respect of the 093
Application.
2.
The
Schering Witnesses, consisting of Mr. Anthony Creber and Ms. Jennifer Wilkie,
both of whom are counsel of record to Schering in the Ramipril Action and acted
as solicitors and patent agents for Schering in the conflict proceedings and
resulting settlement; and
3.
The
Sanofi Witnesses, consisting of Mr. H. Roger Hart and Mr. Andrew I. McIntosh,
who acted as solicitors and patent agents for the predecessors to Sanofi, the
third party involved in the conflict proceedings and resulting settlement.
[16]
In
each subpoena, the proposed witness is required to bring with him or her
documents that are described in very broad terms. Generally speaking, each of
the Schering Witnesses and the Sanofi Witnesses is required to bring “all
things normally understood to be documents” as may be relevant to the conflict
proceedings and the settlement.
[17]
Mr.
Landry’s subpoena contains, in addition to the same general description of
documents noted above, a requirement to bring two lists of documents set out in
Schedule A and B to the subpoena. Schedules A and B are the logs of privileged
documents provided by Servier to Apotex pursuant to the July 17 Order. Mr.
Landry is also required to bring documents related to the translation of the
claims of the 196 Patent and the corrections to claim 5 of the 196 Patent.
[18]
Each
of Ms. Benhamou and Ms. Côté are required to bring documents related to the
translation and correction of the 196 Patent.
III. Analysis
A. General Principles
[19]
The
parties are in agreement that the general test that applies when quashing a
subpoena was described by Justice Blais, in Zundel (Re), 2004 FC 798 at paras.
5-7:
The
case law on subpoenas shows that there are two main considerations which apply
to a motion to quash a subpoena: 1) Is there a privilege or other legal rule
which applies such that the witness should not be compelled to testify?; (e.g.
Samson Indian Nation and Band v. Canada (Minister of Indian Affairs and
Northern Development), [2003] F.C.J. No. 1238); 2) Is the evidence from the
witnesses subpoenaed relevant and significant in regard to the issues the Court
must decide? (e.g. Jaballah (Re), [2001] F.C.J. No. 1748; Merck & Co. v.
Apotex Inc., [1998] F.C.J. No. 294)
Privilege
will apply for example in the case of Parliamentary immunity while Parliament
is in session (Samson Indian Band, supra), or in the case of solicitor-client
privilege, although an attorney acting in a managerial capacity may well be
called upon to testify (Zarzour v. Canada, [2001] F.C.J. No. 123).
As
to determining whether the evidence to be presented will be useful to the trial
judge, courts will be reluctant to prevent parties from calling the evidence
the parties feel they need, but courts generally will not allow fishing
expeditions. Thus, if one party moves to quash the subpoena, it must show the
lack of relevance or significance of the evidence the party that has issued the
subpoena intends to produce. Obviously, the judge who decides whether or not to
quash the subpoena is not deciding on the weight to be given to such evidence,
which is to be determined by the trier of fact (Stevens v. Canada (Attorney General), [2004] F.C.J. No. 98).
[20]
Other
jurisprudence reinforces the notion that a subpoena must not be a fishing
expedition (see,
for example, Merck & Co. v. Apotex Inc., [1998] F.C.J. No. 294 at
paras. 12-13 (T.D.) (QL) [Merck]; Jaballah (Re), 2001 FCT 1287 at
para. 13).
[21]
A
subpoena may be quashed as being an abuse of process. I note Justice MacKay’s
holding in Merck, above at paras. 12-13, in this regard, wherein he
indicated that the Court may be willing to quash a subpoena when it
constitutes, or comes close to being, an abuse of process.
[22]
The
parties disagree on who bears the burden of proof on a motion to quash a
subpoena. On the basis of the words of Justice Blais in Zundel (Re),
above, Apotex asserts that the moving parties must satisfy the Court that the
sought-after information is not relevant or significant. The moving parties
assert that the burden is on Apotex to demonstrate the relevance and
significance of the sought-after testimony and documents. On the facts of this
case, where the subpoenas are being issued to lawyers and where the issue of
privilege is prominent, I prefer the views of the moving parties.
[23]
Particularly
helpful on this question of burden is the Ontario Court of Appeal decision in R.
v. Harris (1994), 93 C.C.C. (3d) 478 (Ont. C.A.). In that case, the accused sought to subpoena
Crown counsel. In overturning the motions court judge’s decision to permit the
subpoena to stand, the Court adopted the words of Justice Craig in R. v.
Stupp (1982), 70 C.C.C. (2d) 107 at 121 (H.C.J.), where he said:
In
my opinion, when a subpoena or the right to call a witness is challenged as
here, it is not sufficient for the party proposing to call the witness to
merely allege that the witness can give material evidence; but rather the onus
is on the accused in this case to establish that it is likely that Brian
Johnston can give material evidence. That is particularly applicable where, as
here, the accused takes the extraordinary step of seeking to call Crown counsel
as a witness.
.
. .
In
my opinion, an accused person should not be permitted to call Crown counsel to
conduct a fishing expedition or to examine in the hope that something might
turn up that would assist him on the issue; but rather counsel must satisfy the
judge that there is a real basis for believing that it is likely the witness
can give material evidence.
[24]
The
Ontario Court of Appeal concluded by stating:
In
our view it is not sufficient to sustain the subpoena that the witness "may
have" evidence material to the case. The burden was on the respondent to
establish that Murphy was likely, or to put it another way, would probably have
evidence material to the issues raised (Harris, above at para. 5).
[25]
Although
Harris and Stupp were decided in a criminal context, the test
established in those cases has been cited in the civil context (see Zundel (Re),
above) and, in particular, where lawyers were the subject of subpoenas (see Wexler
v. Bhullar, 2006 BCSC 1466, aff’d 2007 BCCA 273).
[26]
A
review of the jurisprudence provided by counsel for purposes of these motions
is instructive. In the five hefty volumes of authorities provided to the Court,
there were relatively few cases involving subpoenas to lawyers (Seagrove
Capital Corp. v. Leader Mining International Inc., [2000] S.J. No. 315
(Q.B.) (QL); Wexler, above, Williams v. Stephenson, [2005] B.C.J.
No. 665 (S.C.) (QL); Harris, above, Zarzour v. Canada, [2001]
F.C.J. No. 123 (T.D.) (QL); R.A.R.B. v. British Columbia [2001] B.C.J.
No. 908 (S.C.) (QL)). Apotex cited no jurisprudence where lawyers had been
successfully made the subject of subpoenas. With one exception (Zarzour,
discussed below), all of the subpoenas in those cases were quashed. This, of
course, does not mean that lawyers can never be required to testify in respect
of matters where they acted as legal advisors. However, in my view, it
highlights the care that should be taken by the Court before a subpoena is
issued that could profoundly affect the special relationship between a lawyer
and client. Only in the clearest of cases should subpoenas be permitted that
would require a lawyer to testify in respect of matters where he or she was
providing advice to a client.
[27]
What
might satisfy the Court that the issuance of a subpoena is warranted? One case
where the Court confirmed a subpoena was Zarzour, above. In that case,
one of three subpoenas was issued to a lawyer, Ms. Collin, who was in-house
counsel with Correction Service Canada. Justice Pelletier, in refusing to quash
the subpoena, noted that:
…when
legal counsel is involved in the management of an undertaking communication
between counsel and the managers are not necessarily protected by professional
secrecy. Such communications will not be privileged if counsel is consulted in
her capacity as a manager rather than in her professional capacity – R.
Campbell, [1999] 1 S.C.R., at para. 50:
.
. .
The
question of whether Ms. Collins was consulted in her capacity as a lawyer or as
a manager is one of fact which the judge hearing the case will have to decide (Zarzour,
above at paras. 8-9).
[28]
Thus,
if the party seeking the subpoena from a lawyer can provide some evidence that
the lawyer undertook responsibilities or provided advice (such as, for example,
as a patent agent) outside the solicitor-client relationship, the subpoena may
be warranted. In particular, the courts have held, depending on the facts
before them, that privilege might not arise where the lawyer who is also a
patent agent acted in his or her capacity as a patent agent. (Lumonics Research
Ltd. v. Gould (1983), 70 C.P.R. (2d) 11 at 15 (F.C.A.); Montreal Fast
Print (1975) Ltd. v. Polylok Corp. (1983), 74 C.P.R. (2d) 34 (F.C.T.D.); Whirlpool
Corp. v. Camco Inc. (1997), 72 C.P.R. (3d) 444 (F.C.T.D.)). In such
situations, the trial judge will be in the best position to decide whether the
lawyer was acting as a patent agent or as a solicitor.
[29]
A
further example where a subpoena may be warranted also relates to a situation
where the relationship between lawyer and client falls outside the protection
of solicitor-client privilege. Communications made to facilitate an offence are not covered
by solicitor-client privilege (Cadillac Fairview Corp. v. Canada (Commissioner of
Competition)
(2003), 29 C.P.R. (4th) 33 at paras. 7-8, 10 (Ont. S.C.J.); Dublin v.
Montessori Jewish Day School of Toronto, [2007] O.J. No. 1062 (S.C.J.)
(QL)). The
denial of privilege in such circumstances is based on the policy that the
benefits of maintaining the privilege are outweighed by the benefits to be
derived from full disclosure of all circumstances relevant to resolving that
issue, including those circumstances contained in documents which are usually
protected from disclosure by reason of the solicitor-client privilege (see Pax Management Ltd. v. Canadian
Imperial Bank of Commerce, [1987] 5 W.W.R. 252 at 261 (C.A.)).
B. Application of Principles to the
Motions before the Court
[30]
With
these principles in mind, I turn to the facts before this Court in these
motions.
(1) Is
the potential testimony relevant?
[31]
I
begin with the issue of relevance, a question that affects all of the
subpoenas. Based on my review of the jurisprudence, I am satisfied that
the threshold to show relevance is not high. However, a party must do more than
merely assert relevance (Harris, above at para. 4; Zundel (Re),
above, at para. 8).
[32]
Turning
now to the relevance of the subpoenaed witnesses before me, I find the moving
parties’ own affidavits confirm that most of the subpoenaed witnesses were
involved in the settlement of the conflict proceedings leading up to the 196
Patent and the issuance of the subsequent certificates of correction:
1.
Anthony
Creber: paragraph 4 of the affidavit of John Norman confirms that Mr. Creber
was counsel for Schering during the conflict proceedings.
2.
J.
Nelson Landry: paragraph 5 of the affidavit of Sylvie Jaguelin confirms that
Mr. Landry was the patent agent for ADIR and Servier during 093 Application.
3.
Liliane
Benhamou and France Côté: paragraph 6 of the affidavit of Sylvie Jaguelin
confirms Ms. Benhamou and Ms. Côté assisted Mr. Landry with the 093
Application.
4.
Andrew
I. McIntosh and H. Roger Hart: paragraph 9 of the written representations of
Mr. McIntosh and Mr. Hart, as well as paragraph 5 of the affidavit of Mr.
McIntosh, confirms these witnesses were counsel for Hoechst AG (later Sanofi Germany) during the conflict
proceedings.
[33]
Given
that the issue of the conflict proceedings and certificates of correction are
the subject of allegations in Apotex’s Counterclaim, I am satisfied that the
proposed witnesses might reasonably be supposed to have information which may
directly or indirectly enable Apotex to advance its case or damage the case of
Servier (Reading & Bates Construction Co. v. Baker Energy Resources Corp.,
[1988] F.C.J. No. 1025 (T.D.) (QL)).
[34]
However,
relevance is not the only factor to be taken into account.
(2) Is
Apotex conducting a fishing expedition?
[35]
As
discussed above, this Court has repeatedly held that it will not allow
subpoenas to be used as a fishing expedition (Zundel (Re), above at
para. 7; Merck
& Co. v. Apotex Inc., [1997] F.C.J. No. 1458 (T.D.) (QL); Merck, above at
paras. 12-13). Apotex has cast a very broad net with its subpoenas. This is
particularly so for the Sanofi Witnesses and the Schering Witnesses. For example,
Mr. Creber is asked to bring with him and produce the following:
all
things normally understood to be documents...as may be relevant to the
prosecution of [the 336 Application] on behalf of Schering Corporation, and the
settlement of certain conflict proceedings involving the [336 Application and
the 093 Application and the 453 Application] which took place before the
Commissioner of Patents (the “Commissioner”) and, subsequently, proceedings in
the Federal Court, being consolidate[e]d Court File No. T-228-97, between
Schering Corporation, Hoechst Aktiengellchaft, and the Plaintiff ADIR, each of
whom had filed patent applications with the Commissioner.
[36]
The
subpoena to Mr. Landry relates to three issues in the proceeding –
inventorship, the correction to claim 5 and the conspiracy allegations. With
respect to the inventorship and conspiracy claims, the subpoena to Mr. Landry
contains a list of documents but is, in effect, no less broad than the
subpoenas to the Schering or Sanofi Witnesses. The only reason that Apotex is
able to list the documents is because of the July 17 Order of Prothonotary
Aronovitch that required Servier to provide a list of privileged documents
related to the transactions. The existence of the logs in this case does not
make the subpoena any less of a fishing exercise.
[37]
I am
persuaded that the subpoenas to the Schering Witnesses and the Sanofi Witnesses
and to Mr. Landry, insofar as they purport to relate to the inventorship or
conspiracy allegations, could be struck solely on the ground that they are
overly broad and amount, in effect, to a fishing expedition.
[38]
The
situation with respect to the correction issue is different. Unlike the
inventorship or conspiracy allegations, the certificate of correction issue
relates to documents covering a limited number of discrete events (the
translation of the Patent, the certificate of correction dated April 3, 2001,
and the certificate of correction dated May 14, 2001) spanning a short and
defined period of time. Further, the requirements set out in the subpoenas to
Ms. Côté, Ms. Benhamou and Mr. Landry relating to these issues are clear and
relatively well-delineated. Accordingly, I do not find these subpoenas, as they
relate to the certificates of correction, to be overbroad.
(3) Is
the information sought inadmissible due to privilege?
[39]
The
moving parties assert that the information sought through the subpoenas is
subject to one or more of solicitor-client, litigation and settlement
privilege. Further, they allege that the question of privilege has already been
determined by the July 17 and September 11 Orders. In response, Apotex puts
forward a number of arguments, which I summarize as follows:
·
the
question of privilege should only be determined at trial, even where (as here)
a preliminary determination of admissibility has been made during the discovery
process (William Allan Real Estate Co. v. Robichaud, [1990] O.J. No. 41
(H.C.) (QL));
·
privilege
does not apply where the communications are made for the purpose of obtaining
legal advice to facilitate the commission of an offence under the Competition
Act; and
·
privilege
does not attach where the solicitor is acting in the capacity of patent agent.
[40]
I
agree with Apotex that the legal principle of res judicata, as set out
by the Supreme Court in Danyluk v. Ainsworth Technologies Inc., [2001] 2 S.C.R. 460 at
para. 25, may not be directly applicable. For example, none of the subpoenaed
witnesses were parties to any earlier proceeding in the Perindopril Action.
However, the findings of Prothonotary Aronovitch in the July 17 Order and the
subsequent actions of the parties are, in my view, relevant in determining
whether the subpoenas should be quashed.
[41]
In
finding that documents related to the earlier prosecution and settlement were
privileged, Prothonotary Aronovitch (and this Court in the subsequent appeal)
directed her mind to the same question of privilege that is before this Court
on these motions. It would be inconsistent for this Court to now hold that, as
a defined category, the documents in the possession of Servier are not
privileged.
[42]
More
importantly, nothing has changed since the July 17 Order, beyond the fact that
Servier has supplied detailed logs of the documents. The case of William
Allan Real Estate, above is distinguishable on this basis. In that case,
Justice Arbour, as she then was, found that a pre-trial ruling that a document
ought not to be disclosed during discovery, on the basis of privilege, did not
constitute a final decision on admissibility at trial. However, in William
Allan Real Estate, the Court was dealing with one document in respect of
which viva voce and more extensive evidence was presented at trial.
Here, I have nothing before me to indicate that the facts upon which
Prothonotary Aronovitch made her determination have changed. Privilege was
found to apply on July 17, 2007; nothing has been presented by Apotex to
persuade me that it might not apply now.
[43]
There
are three separate grounds of privilege that may be applicable to some or all
of the information being pursued by the subpoenas: solicitor-client privilege;
settlement privilege; and litigation privilege. At this point in time, based on
the evidence before me, I am of the view that it is likely that all of the
information sought (other than, possibly, some of the information related to
the corrections of the 196 Patent) is caught by one or more of the grounds for
asserting privilege and does not fall within any exception.
[44]
In
this action, Apotex is asserting that the parties entered into the settlement
for the purpose of eliminating competition in the market for ACE inhibitors,
contrary to the Competition Act. Thus, Apotex argues, the communications
with their lawyers cannot be protected as privileged. On the evidence before
me, I cannot reach that conclusion. While I would agree with Apotex that
privilege may be denied in situations where there is evidence of the commission
of an offence, in these motions, there is no evidence beyond the bald
assertions in Apotex’s pleadings that there has been an offence. More that such
assertions are required before privilege will be displaced. In this regard, I
refer to the British Columbia Court of Appeal decision in Pax, above,
where the Court adopted the test set out by Viscount Finlay in O'Rourke v. Darbishire
and Others
[1920], A.C. 581, at 604:
If the communications to the solicitor were for the purpose
of obtaining professional advice, there must be, in order to get rid of
privilege, not merely an allegation that they were made for the purpose of
getting advice for the commission of a fraud, but there must be something to
give colour to the charge. The statement must be made in clear and definite
terms, and there must further be some prima facie evidence that it has some
foundation in fact. It is with reference to cases of this kind that it can
be correctly said that the Court has a discretion as to ordering inspection of
documents. It is obvious that it would be absurd to say that the privilege
could be got rid of merely by making a charge of fraud. The Court will
exercise its discretion, not merely as to the terms in which the allegation is
made, but also as to the surrounding circumstances, for the purpose of seeing
whether the charge is made honestly and with sufficient probability of its
truth to make it right to disallow the privilege of professional
communications. [Emphasis added.]
[45]
On
the record before me, there is insufficient evidence to demonstrate that the
allegations of conspiracy are made honestly and with sufficient probability of
their truth to disallow the privilege.
[46]
For
these reasons, I will quash the subpoenas of the Schering Witnesses and the
Sanofi Witnesses in their entirety. I will also quash the subpoena of Mr.
Landry insofar as it relates to the prosecution of the 093 Application before
the Patent Office and the Commissioner, the conflict proceedings and the
settlement.
(4) Should the
subpoenas issued to the Servier Witnesses stand, in part?
[47]
The
issue of privilege with respect to the subpoenas of the Servier Witnesses is
not so clear.
[48]
First,
with respect to Mr. Landry, recent responses by Servier to questions raised in
discovery conducted January 22, 2008, state unequivocally that Mr. Landry
played some role in an alleged “clerical error” and in “handwriting” that
appears on a produced document. Thus, as in Zarzour, above, there is
evidence before me that suggests that Mr. Landry may have testimony and
documents that are not subject to privilege because they arise in the context
of his capacity as a patent agent. Accordingly, I am prepared to allow the
subpoena of Mr. Landry to stand to a limited extent.
[49]
I
note that at this stage, we simply do not know, with any certainty, what will
be asked of Mr. Landry concerning the corrections. I wish to be clear that my
conclusion on Mr. Landry’s subpoena does not, of course, remove the right of
Servier to object to the admissibility of certain evidence that may be provided
by Mr. Landry.
[50]
The
situation with respect to Ms. Benhamou and Ms. Côté is different. Apotex
provided me with no evidence of their individual roles in the translation and
correction beyond a general statement of their duties at the relevant time.
These subpoenas will be quashed.
IV. Conclusion
[51]
In
conclusion, the subpoenas of the Schering and Sanofi Witnesses will be quashed
with costs to the moving parties. Although the Schering Witnesses requested an
assessment of costs “at the highest scale”, I am not persuaded that higher
costs are warranted.
[52]
The
subpoenas of Ms. Benhamou and Ms. Côté will be quashed. The subpoena of Mr. Landry
will only be allowed insofar as it relates to the issues of the translation of
and corrections to the 196 Patent. As Servier has been substantially but not
entirely successful, costs will be awarded to Servier at 80% of the middle of
column III of Tariff B.
ORDER
THIS COURT
ORDERS that
1.
The
motions of: (a) Andrew I. McIntosh, H. Roger Hart, and Sanofi-Aventis
Deutschland GmbH; and (b) Anthony Creber and Jennifer Wilkie are granted with
costs and the motion of Servier is granted in part, with costs at 80% of the
middle of column III of Tariff B;
2.
The
subpoenas issued to Andrew I. McIntosh, H. Roger Hart, Anthony Creber and
Jennifer Wilkie are quashed without leave to amend;
3.
The
subpoenas of Liliane
Benhamou and France Côté are quashed without
leave to amend; and
4.
Requirements
1 (a) (i) and (v) and all of requirements 1(b) and (c) of the subpoena of J. Nelson
Landry are struck from the subpoena and the balance allowed to stand.
“Judith A. Snider”
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