Docket: T-396-13
Citation:
2015 FC 1292
Ottawa, Ontario, November 18, 2015
PRESENT: The Honourable Madam Justice Kane
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BETWEEN:
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HOSPIRA
HEALTHCARE CORPORATION
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Plaintiff/Moving Party
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and
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THE KENNEDY
INSTITUTE OF RHEUMATOLOGY
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Defendant/Responding Party
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AND
BETWEEN:
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THE
KENNEDY TRUST FOR RHEUMATOLOGY RESEARCH,
JANSSEN
BIOTECH, INC., JANSSEN INC. AND
CILAG
GMBH INTERNATIONAL
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Plaintiffs by
Counterclaim/Responding Parties
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and
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HOSPIRA
HEALTHCARE CORPORATION,
CELLTRION
HEALTHCARE CO. LTD. AND CELLTRION INC.
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Defendants by Counterclaim/Moving
Parties
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PUBLIC ORDER AND REASONS
I.
Overview
[1]
This is an appeal from the Order of Prothonotary
Martha Milczynski, made on January 15, 2015, arising from the motion by Hospira
Healthcare Corporation [Hospira] and Celltrion Healthcare Co. Ltd. and
Celltrion Inc. [collectively, the appellants] to compel the respondents, the
Kennedy Institute of Rheumatology and the Kennedy Trust for Rheumatology
Research [Kennedy], to answer questions refused at the examination for discovery
of Kennedy’s representative.
[2]
The underlying dispute is a patent impeachment
action. The appellants, the plaintiffs in the underlying action, seek a
declaration that claims 1-42 of Canadian Patent No 2,261,630 are invalid and
that the appellants’ proposed product will not infringe these claims. The
respondents, the defendants in the underlying action, counterclaim and seek a
declaration that the claims of the patent are valid and that the appellants
have or will infringe the patent. Janssen Biotech Inc, Janssen Inc and CILAG
GmbH International, who are licensees, distributors of the licensees and
manufacturers of the licensees [Janssen], are plaintiffs by counterclaim.
Celltrion Healthcare Co Ltd and Celltrion Inc are defendants to the counterclaim.
The pleadings were closed on January 28, 2014.
[3]
On February 24, 2014, the Court issued a
bifurcation order; the liability issues will proceed before the quantification
of damages issues. The order provides that the liability phase would include
the respondents’ entitlement to damages, that during the liability phase there
shall be no documentary or other discovery on matters solely relating to the
quantification issues, and that the quantum of damages would be decided during
the quantification phase.
[4]
The examination for discovery of Mr Espinasse,
the representative for Kennedy, took place in May 2014. After two full days and
before discovery was complete, the respondents refused the re-attendance of Mr
Espinasse. The respondents were subsequently ordered to produce Mr Espinasse
for two additional days.
[5]
The appellants brought a motion to compel the
respondents to answer 354 questions that were taken under advisement or refused
at the examination for discovery of Mr Espinasse,
[6]
Prothonotary Milczynski heard the motion on
September 10-11 and October 1-2, 2014 and ordered that the respondents answer
nineteen of the 354 questions which were either refused or taken under
advisement at the examination for discovery.
[7]
The appellants now appeal 85 rulings in the order.
[8]
The Court notes that the examination for
discovery which gave rise to the refusals and the subsequent motion lasted two
days (with two additional days subsequently ordered). The hearing of the motion
by the prothonotary was also four days. The hearing of this appeal was one day.
The Court’s review of the record, including the pleadings, the examination for
discovery and the transcript of the motion hearing, has required many
additional days. Despite the Court’s comprehensive review of the record, the Court
does not have the same grasp of all the issues at stake, the history of the
proceedings and the context which the prothonotary has acquired over the two
years she has case managed this litigation. However, the Court has a
sufficient grasp of the issues on this appeal to reach a determination. Even if
a de novo review were warranted, which it is not, it would require a
great deal more time than a one day hearing and the additional days of review
to do so. These observations highlight the importance of proportionality as a
consideration in the management of complex litigation.
[9]
The motion hearing before the prothonotary
provided ample opportunity for the appellants to make submissions on the
relevance of the questions they sought to have answered. The decision of the
prothonotary reveals that careful consideration was given to the appellants’
arguments. Several of the prothonotary’s rulings were based on balancing the
degree of relevance of the question or request and the onerousness of requiring
the respondents to answer or provide documents, often in circumstances where
the respondents had already indicated that they had provided what they
possessed, the information had been provided by others, or the appellants could
not elaborate on why the information was relevant. There are several instances
where the prothonotary encouraged the appellants to provide an explanation or
elaborate on why a question was relevant, but rather than do so, the appellants
preferred to regard the question as dismissed.
[10]
It would be impractical to pen a decision of
hundreds of pages to address each question refused and each argument the
appellants raised on appeal with respect to each of those questions. The
Court’s Order, as long as it is, cannot address every argument raised by the
appellants on the questions they submit should have been ordered to be
answered.
[11]
For the reasons that follow the appeal is
dismissed.
II.
The Prothonotary’s Order
[12]
By order dated January 15, 2015, Prothonotary
Milczynski ordered that 19 of the questions be answered, at least in part, and
dismissed the balance of the motion. (There are some minor discrepancies
regarding the number of questions posed and refused because several were
multi-part questions.)
[13]
The prothonotary noted that the purpose of
examinations for discovery is to advance the case; discoveries ought to be
conducted to obtain omissions from the opposing party, narrow the issues for
trial, and, through gathering the facts, “shape the
case that must be met at trial without risk of ambush or surprise”.
[14]
The prothonotary then noted the principles
governing the scope of examinations, including: that questions must be
relevant, in that they advance a party’s case or damage the opposing party’s
case; questions that call for privileged information to be disclosed, for
speculation, or for expert or legal opinion do not need to be answered; and,
that vague or overbroad questions are improper. The prothonotary added that
while questions that could lead to a “train of inquiry”
may be relevant, they must not go off track or show little prospect of reaching
their destination. Finally, the prothonotary explained that the principle of
proportionality must be applied: questions that require onerous or costly
efforts will not be compelled when the information is of limited usefulness and
not likely to advance a party’s legal position.
[15]
The prothonotary found that, for the oral
reasons she provided at the hearing of the motion, many of the questions did
not need to be answered. She also found that many questions had been resolved
by the respondents providing or agreeing to provide answers.
III.
The Issues
[16]
The issues raised in the appeal are:
1.
What is the applicable standard of review?
2.
Should the decision as a whole be reviewed on a de
novo basis?
3.
Should specific rulings be reviewed on a de
novo basis?
IV.
The Standard of Review
[17]
The parties agree that the current standard of
review of a prothonotary’s discretionary decision is that established in Canada
v Aqua-Gem Investments Ltd, [1993] 2 FC 425, 149 NR 273 (FCA) [Aqua-Gem].
[18]
In Merck & Co, Inc v Apotex Inc, 2003
FCA 488 at para 19, [2004] 2 FCR 459, leave to appeal to SCC refused, [2004]
SCCA No 80 [Merck], the standard of review previously established in Aqua-Gem
was restated as follows: “Discretionary orders of
prothonotaries ought not to be disturbed on appeal to a judge unless: (a) the
questions in the motion are vital to the final issue of the case, or (b) the
orders are clearly wrong, in the sense that the exercise of discretion by the
prothonotary was based upon a wrong principle or upon a misapprehension of
facts.”
[19]
Prothonotaries are given wide discretion by
virtue of their case management role; see e.g., j2 Global Communications,
Inc v Protus IP Solutions Inc, 2009 FCA 41 at para 16, 387 NR 135 [j2
Global]:
[16] It has often been said in this
Court that, because of their intimate knowledge of the litigation and its
dynamics, prothonotaries and trial judges are to be afforded ample scope in the
exercise of their discretion when managing cases: see also Federal Courts
Rules, rules 75 and 385. Since this Court is far removed from the fray, it
should only intervene in order to prevent undoubted injustices and to correct
clear material errors. None have been demonstrated here. […]
[20]
The Court should only intervene in a
prothonotary’s decision “in the clearest case[s] of a
misuse of judicial discretion” (Sawbridge Band v Canada, 2001 FCA
338 at para 11, [2002] 2 FCR 346 [Sawbridge Band]). The Federal Court of
Appeal clarified in Apotex Inc v Merck & Co, 2003 FCA 438 at para
13, 28 CPR (4th) 491 [Apotex] that this principle does not permit the
prothonotary to deny a party the legal right to have questions answered on
examination for discovery that are relevant to the issues in the pleadings. The
prothonotary must direct their mind to several considerations in discovery,
including relevance (at para 15). Other considerations were noted at para 10:
[…] It is clear that the primary
consideration is relevance. If a prothonotary or a judge does, however, find a
question to be relevant he or she may still decline to order the question to be
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.
[21]
In Soderstrom v Canada (Attorney General),
2011 FC 575, 2011 DTC 5092 [Soderstrom], Justice Paul Crampton
considered both the Aqua-Gem test and the principle that deference is
owed to prothonotaries, at para 10, noting that the principle in j2 Global
does not appear to apply when the question is vital to the final issue in the
case:
[10] More recently, the Federal Court
of Appeal has stated that discretionary decisions of prothonotaries should
stand unless intervention is warranted “to prevent undoubted injustices and to correct clear material
errors” (j2 Global Communications, Inc v.
Protus IP Solutions Inc, 2009 FCA 41, at para 16). However, the latter
statement appears to have been made solely with respect to the second prong of
the test set forth above, as the Court in that case agreed with the motions
judge that the issue that had been raised was not vital to the final issue of
the case (j2 Global Communications, above, at para 15). Based on a more
recent decision of the Federal Court of Appeal, it is clear that this Court is
still obliged to conduct a de novo review of a prothonotary’s decision
in respect of a question that is vital to the final issue in the case (Apotex
Inc v. Bristol-Myers Squibb Company, 2011 FCA 34, at paras 6 and 9).
[22]
The respondents submit that the test in Aqua-Gem
has been the subject of commentary in the Federal Court of Appeal and that
there is some support for moving toward deference to the prothonotory’s
decision even on issues that are vital to the final outcome of the case (Bristol-Myers
Squibb v Apotex Inc, 2011 FCA 34 at paras 6-9, 91 CPR (4th) 307 [Bristol-Myers
Squibb]) and toward following the normal appellate standard of review articulated
in Housen v Nikolaison, 2002 SCC 33, [2002] 2 S.C.R. 235 [Housen]
of “palpable and overriding error”.
[23]
In Fraser v Janes Family Foods Ltd, 2011
FC 569 at paras 11-12, 390 FTR 82, Justice Donald Rennie referred to Bristol-Myers
Squibb, noting that it articulated “sound policy
reasons” for the application of the Housen standard, but found
that the comments were obiter and applied the Aqua-Gem standard.
[24]
In Soderstrom at para 12, Justice
Crampton also cited Bristol-Myers Squibb and found that, because the
prothonotary’s decision was vital to the final issue in the proceeding, he was
obliged to perform a de novo review of the decision. However, he noted
that he was “attracted to the view that deference
should be given to determinations made by a prothonotary, even where they raise
a question vital to the final issue of the case.”
[25]
In the present case, the parties agree that the
current or prevailing standard of review is that set out in Aqua-Gem.
While the respondents have raised good arguments for breaking new ground
regarding the standard of review, I do not find that this case is the case to
do so. Moreover, the result would be the same whether the Aqua-Gem test
is applied or whether the palpable and overriding error standard is applied.
V.
Is the decision as a whole clearly wrong and
should a de novo review be conducted?
The Appellants’ Position
[26]
The appellants argue that the prothonotary’s
decision fails both parts of the Aqua-Gem test.
[27]
The prothonotary’s decision discloses a lack of
appreciation of relevant evidence, a misapprehension of the facts, and her
exercise of discretion was based upon a wrong principle of law.
[28]
Alternatively, or in addition, the appellants
submit that the prothonotary improperly exercised her discretion on matters
that relate to an issue vital to the final outcome of the case.
[29]
The appellants claim that the order does not
address why the questions, either individually or categorically, were
dismissed. While the order refers to oral reasons, many of the oral reasons
were “inaudible” on the transcript. It is
unclear whether the questions were dismissed because they lacked relevance or
because, while relevant, they were unduly onerous or otherwise improper.
[30]
The appellants argue that the respondents
provided no evidence that the questions were unduly onerous or would require an
inordinate amount of time, effort or cost that would be disproportionate to the
results. There were only submissions by counsel on this issue, rather than an
affidavit attesting to how or why this would be onerous.
[31]
The appellants submit that the litigation is
complicated, the litigants are sophisticated and the stakes are high, as these
proceedings relate to the highest selling drug in Canada. Although this should
not impact the scope of discovery, the respondents cannot complain about the
extra time needed to look for the answers or the documents because they have
the resources to do so.
[32]
The appellants point to the Federal Court’s
Practice Direction dated June 24, 2015, “Case
Management: Increased Proportionality in Complex Litigation Before the Federal
Court,” which provides that “[q]uestions should
be answered unless clearly improper or prejudicial, or would require the
disclosure of a privileged communication.”
[33]
The appellants submit that the prothonotary made
a broad ruling based on Rule 3 of the Federal Courts Rules, SOR/98-106 [Rules]
to provide an expeditious determination without regard to other principles,
including that answers cannot be refused on issues relevant to an issue in the
pleadings and justice cannot be subordinated to expediency.
[34]
The appellants allege several errors of law and
fact by the prothonotary.
[35]
The appellants allege that the prothonotary
applied the wrong test of relevance by asking whether a document was “relevant enough” rather than “relevant”.
She further erred by requesting privileged information, trial strategy and how
documents would be used at trial as a measure of relevance.
[36]
The appellants note that the test for relevance
is whether something will lead to information or a train of inquiry which may
directly or indirectly allow a party to advance its own case or damage the case
of its adversary (Bristol-Myers Squibb Co v Apotex Inc, 2007 FCA 379 at
para 30, 162 ACWS (3d) 911). The purpose of discovery is to inform the adverse
party of the case it has to meet. There should be flexibility in examinations
and the production of documents. Relevant questions should only be disallowed
when they are abusive. The appellants argue that the prothonotary did not apply
the train of inquiry approach, but rather took a narrow approach and improperly
put a higher onus on the appellants by asking them to provide the theory of
their case.
[37]
The appellants argue that the prothonotary erred
in accepting the oral argument of Kennedy’s counsel as evidence of onerousness
and undue effort, rather than an affidavit attesting to how or why a question
would be onerous.
[38]
The appellants also allege that the prothonotary
erred by not requiring Kennedy to answer a question based on the fact that
Janssen had already provided an answer to that question and by not requiring
Kennedy to assist Hospira’s counsel by directing them to an answer previously
given by Kennedy or Janssen. The appellants submit that a party cannot refuse
to answer a question or produce a document on the basis that a co-defendant has
already answered the question or produced the document (Havana House Cigar
& Tobacco Merchants Ltd v Naeini (1998), 147 FTR 189 at para 22, 80 CPR
(3d) 132 (Proth) [Havana House]).
[39]
The appellants also argue that Kennedy’s witness,
Mr Espinasse, was uninformed and unprepared, which resulted in many refusals
and undertakings. The appellants acknowledge that they will have an opportunity
to examine Dr Maini, who they initially requested as the witness, and that they
have examined Dr Baker, a representative of Janssen.
[40]
The appellants contend that Kennedy delivered an
unsworn affidavit of documents that lacked detail regarding dates, authors,
titles or descriptions for the majority of the 770 documents listed. Even if an
affidavit with an index was provided afterward, expecting the appellants to
sort it out is not reasonable.
[41]
The appellants dispute the respondents’
contention that they simply asked the questions and failed to read the
documents provided. The appellants submit that they still needed to ask questions
to determine relevance.
The
Respondents’ Position
[42]
The respondents submit that the context is an
important consideration in the appeal. The prothonotary has case-managed this
protracted litigation with a view to moving it forward for over two years.
There have been several discovery motions and many interlocutory decisions,
several have been or are being appealed. The respondents suggest that the
appellants have not heeded the Court’s guidance and their actions are abusive
and wasteful.
[43]
The respondents submit that the 85 questions
under appeal out of over 500 cannot be argued to be vital to the final outcome.
Additional days of discovery are scheduled, or have already taken place, and if
the questions were vital, there will be another opportunity to ask them.
Moreover, the disposition of a discovery motion will rarely be vital to the
final outcome of the case (Apotex v Warner-Lambert Co LLC, 2011 FC 1136
at para 4, [2011] FCJ No 1402 (QL) [Warner-Lambert]).
[44]
The respondents submit that the absence of
written reasons for each ruling is not grounds for a de novo hearing.
Although the transcript includes some parts that are inaudible or unclear, the
oral reasons and written order as a whole clearly convey that the prothonotary
applied the legal principles of discovery and refusals motions to her
understanding of the case.
[45]
The respondents add that even when a question is
relevant, the Court has a discretion to disallow it, for example where it would
be onerous or cause hardship, where other means exist to address it, or where
it is vague or a fishing expedition (Canada v Lehigh Cement Limited,
2011 FCA 120 at para 35, [2011] FCJ No 515 (QL) [Lehigh Cement]).
[46]
The appellants were aware that Mr Espinasse
would be the respondents’ representative. The appellants’ motion to have an
inventor appear as the witness was dismissed. However, the inventors have been
subsequently discovered.
[47]
The respondents dispute that Mr Espinasse was
unprepared. No one could have been able to answer the inappropriate questions
posed by the appellants, some of which raised ancient events beyond his
knowledge.
[48]
The respondents also note several exchanges
between the appellants and the prothonotary where the appellants failed to make
submissions on how the documents requested were relevant and simply took the
prothonotary’s inquiry as a dismissal of the question. The respondents also
submit that the appellants preferred to ask questions rather than review the
documents that would have provided the answers to the questions asked.
The decision as a whole is not
clearly wrong; the prothonotary did not exercise her discretion based upon a
wrong principle or upon a misapprehension of facts
[49]
None of the questions on the discovery motion
will likely be vital to the final outcome of the case (Warner-Lambert at
para 4). As a result, the applicable standard is whether the prothonotary’s
order was clearly wrong, in that the exercise of her discretion was based on a
wrong principle or a misapprehension of the facts (Aqua-Gem at 462-463).
[50]
The appellants bear the burden of establishing
that the prothonotary was clearly wrong and that the Court should intervene.
They have not met this burden.
[51]
With respect to the appellants’ submissions that
the prothonotary applied the wrong test for relevance, failed to appreciate
relevant evidence, misapprehended the facts and did not make clear findings,
the appellants make only broad references to the oral reasons.
[52]
The prothonotary’s findings are clear and the
decision refers to the appropriate considerations and principles in the
jurisprudence. The appellants have not established that the prothonotary’s
order was based on a wrong principle or a misapprehension of the facts.
[53]
As noted above regarding the standard of review,
the prothonotary must consider relevance, but even if a question is relevant,
it may be refused if, for example, it is not at all likely to advance the
questioner’s legal position, the answer to a question would require significant
time, effort and expense to obtain and its value would be minimal, or the
question forms part of a “fishing expedition” of
vague and far-reaching scope (Apotex at paras 10, 13).
[54]
The prothonotary did not ask or consider whether
the questions or issues were “relevant enough”. However, if she had, this would
not necessarily be an error. The degree of relevance of a question is an
appropriate consideration (Apotex Inc v Sanofi-Aventis, 2011 FC 52 at
para 21, 383 FTR 37 [Apotex II]). Even the train of inquiry approach
does not provide a vehicle to permit remotely potentially relevant questions to
ride along. As the prothonotary noted, not every question deserves an answer.
[55]
The appellants’ submission that the prothonotary
erred by requesting privileged information, trial strategy and how documents
would be used at trial as a measure of relevance are also addressed below as
they arise in the question-by-question submissions.
[56]
The prothonotary did not err in asking the
appellants to better explain why particular questions or documents were
relevant. The onus was on the appellants to provide more than an assertion and,
for many requests, they failed to do so.
[57]
The prothonotary’s order reflects that she
applied the principles summarised by Justice Yves de Montigny in Apotex II
at paras 16-21:
[16] Pursuant to Rule 240, a person
being examined for discovery is required to answer any questions relevant to
any unadmitted allegation of fact disclosed in the pleadings as well as any
question concerning the identity of any person, other than an expert witness,
who may reasonably be expected to have knowledge of matters in issue.
[17] Rule 242(1) establishes, however,
permissible objections during an examination for discovery, if, for example,
the question is not relevant, is unreasonable, is unnecessary or would be
unduly onerous. Relevance is a matter of law, not discretion. The question of
whether a document “relates” to an issue in the case depends upon a reasonable interpretation of
the pleadings. The party demanding a document must demonstrate that the
information in the document may, either directly or indirectly, advance its own
case or damage the case of an opponent.
[18] More recently, the Federal Court
of Appeal has adopted the “train
of inquiry test” with respect to which documents
may be deemed to advance a party’s case. In other words, the Court must
determine whether it is reasonable to conclude that the answer to a particular
question might lead the questioning party to a train of enquiry that may either
advance its case or damage the case of its opponent: see Apotex inc. v
Brystol-Myers Squibb Company, 2007 FCA 379 at para 30.
[19] It is fair to say, therefore, that
the Court will apply a generous and flexible standard of relevance in
determining whether a question should be answered. A fair amount of latitude
will be allowed on discovery provided that a question is relevant to issues
raised by the pleadings. The standard of relevance on discovery is lower than
at trial and doubt as to the propriety of the question will be resolved in
favour of disclosure: see Monit International Inc. v Canada (1999), 175
FTR 258; Glaxo Group Ltd. v Novopharm Ltd., [1998] FCJ No 1808, at para
4 (FCA).
[20] That being said, the Court retains
a residual discretion to decide not to compel the production of technically
relevant documents where such production would have no benefit or could not be
used to advance a party’s case. Although there is a broad right of
examination, there are limits on that right of discovery and the Court will not
permit the discovery process to be used as a fishing expedition: see Apotex
Inc. v Merck & Co. Inc., 2004 FC 1038, at para 16; Eli Lilly Canada
Inc. v Novopharm Limited, 2007 FC 1195, at para 19, aff’d 2008 FC 281;
aff’d 2008 FCA 287, at paras 69-70; Pharmacia S.p.A. v. Faulding (Canada)
Inc. (1999) 3 CPR(4th) 126, at paras 2-3 (F.C.A.).
[21] Moreover, the simple fact that a
question can be considered “relevant” does not mean that it must inevitably be answered. Relevance must
be weighed against matters such as the degree of relevance, how onerous it is
to provide an answer, whether the answer requires fact or opinion of law, and
so forth: GSC Technologies Corp. v Pelican International, 2009 FC 223,
at para 11; AstraZeneca Canada Inc. v Apotex Inc., 2008 FC 1301.
[58]
The Federal Court of Appeal in Lehigh Cement
at para 35 also clearly stated that relevance is not the only consideration and
that questions can be disallowed following a balancing of other factors:
[35] Where relevance is established the
Court retains discretion to disallow a question. The exercise of this
discretion requires a weighing of the potential value of the answer against the
risk that a party is abusing the discovery process. See Bristol-Myers Squibb
Co. v. Apotex Inc. at paragraph 34. The Court might disallow a relevant
question where responding to it would place undue hardship on the answering
party, where there are other means of obtaining the information sought, or
where “the question forms part
of a ‘fishing expedition’ of vague and far-reaching scope”: Merck & Co. v. Apotex Inc., 2003 FCA 438, 312 N.R. 273
at paragraph 10; Apotex Inc. v. Wellcome Foundation Ltd., 2008 FCA 131,
166 A.C.W.S. (3d) 850 at paragraph 3.
[59]
The appellants argue that the stakes are very
high in this litigation and that the determination of the issues in the appeal
should be assessed in this context and, therefore, relevance should be more
broadly interpreted. While I agree that context is important, high stakes are
not the only contextual consideration and cannot trump other well-established
principles.
[60]
Moreover, the corollary cannot be supported,
i.e., that where the stakes are not as high, the determinations of relevance
would be less important or the scope of relevance would be narrower.
[61]
It is apparent that while the prothonotary may
have found some of the questions and requests to have some relevance, she also
went on to consider the other factors, and in many instances properly concluded
that the value of requiring an answer was disproportionate for varying reasons,
including onerousness, vagueness or that the information had already been
provided by others.
[62]
With respect to the appellants’ submission that
the prothonotary erred in accepting the oral submissions of Kennedy’s counsel
as evidence of onerousness and undue effort, rather than requiring an affidavit,
the appellants have not cited any authority to support that this is an error.
It was open to the prothonotary to accept the explanations offered by the
respondents regarding the onerous impact of producing particular documents in
the context of her awareness of the case, given her experience case managing
the litigation. Similarly, the appellants do not point to a legal principle
that requires the prothonotary to order the respondents to assist the
appellants by directing them to an answer previously given. The prothonotary
pointed out that many documents appeared not to have been read by the
appellants and, rather than read them, the appellants simply asked the
respondents to pinpoint particular information.
[63]
With respect to the appellants’ argument that
the prothonotary erred by dismissing questions based on the fact that Janssen
had already provided answers to the questions, Havana House, relied on
by the appellants, does not, in my view, support the broad proposition advanced
by the appellants. Havana House dealt with gaps in the production of
documents and referred to circumstances where the documents had been provided
by another source, i.e., a third party. In the present case, the questions have
been answered by a party to the proceedings, i.e., Janssen. Kennedy had clearly
stated that it provided all it had in its possession. Moreover, even if Kennedy
had the documents, it would be a waste of resources to require them to provide
answers or documents already known to the appellants. Even if the respondents
have adequate resources, there is no reason to exploit them.
[64]
With respect to the appellants’ submission that
there were no reasons provided for some of the prothonotary’s determinations
due to inaudible portions of the transcript, I do not agree that the inaudible
portions make it impossible for the Court to consider the issues raised on this
appeal. The motion occurred over four days, the record is voluminous and the
majority of the transcript is audible. Moreover, the appellants were present
and heard the prothonotary’s rulings as the motion proceeded. If there were
examples of the oral reasons that are not transcribed that the appellants take
issue with, the appellants should have been able to provide some of the
specific examples.
[65]
The Saskatchewan Court of Queen’s Bench
addressed a similar issue in Fehr v Robinson Diesel Injection Ltd,
[1986] SJ No 179 (QL), 47 Sask R 12:
When I read the impugned portion of the
transcript by itself I am able to ascertain the basic content and effect of the
evidence. This portion of the transcript relates only to the rebuttal evidence
of Robinson and when I read it in conjunction with the preceding portion of the
transcript I am confident that I have a proper understanding and appreciation
of the deficient portion of the transcript. More importantly, I am satisfied
from a perusal of the portions of the transcript surrounding the inaudible
portions that whatever has not been transcribed would not have brought about a
different decision. In short, I am not persuaded that the interests of justice
require a trial de novo. Accordingly, the application for such a trial
is dismissed.
[66]
Although the absence of parts of a transcript or
record may, in some cases, affect a party’s right to know the reasons for a
decision and the Court’s ability to determine if the decision is clearly wrong,
this is not such a case. The inaudible parts of the transcript were heard by
the appellants in person, they have not provided specific examples of the
errors alleged and the inaudible portions would not likely have brought about a
different decision.
[67]
With respect to the appellants’ suggestion that
the prothonotary misapplied the June 24, 2015 Practice Direction and focussed
only on expediency, I note that the appellants have selectively extracted one
part of that Practice Direction (which was not in effect at the time of the
motion or the prothonotary’s order) without reference to its overall purpose
and the related principles. The Practice Direction is intended to bring about
increased proportionality in proceedings before this Court. Amoung other
recommendations, it proposes limits on documentary and oral discovery and
limits on refusals motions “to ensure the proportionate
use of the Court’s scarce resources by parties.”
[68]
The appellants referred only to the proposal
that questions should be answered unless they are clearly improper or
prejudicial, or would require disclosure of privileged information. Equally
applicable are the following proposals:
- No refusals
motions will be permitted until discoveries are complete.
- Such motions
will be limited to one hour per day of discovery of each party’s
representative.
- Potentially
significant cost sanctions may be imposed against
unsuccessful/unreasonable parties.
- No questions
will be taken under advisement.
- Answers provided
under objection will be considered by the trial judge, if the objection is
not sustained.
[69]
The prothonotary did not place expediency ahead
of the need to assess the relevance of the questions and the other
considerations. Moreover, had the June 24, 2015 Practice Direction been in
effect at the time of the motion, the appellants would have been far more
limited in their approach to discovery.
VI.
Are any of the prothonotary’s specific
rulings clearly wrong?
[70]
As noted above, the appellants appealed 85 of
the prothonotary’s rulings on the refusals motion and have raised some similar
and some specific arguments regarding the rulings on this appeal, several of
which are addressed below.
[71]
The applicable test for each ruling remains
whether the prothonotary was clearly wrong: did the prothonotary exercise her
discretion based upon a wrong principle or upon a misapprehension of facts?
Category 1: Standing and
entitlement of the relief sought
Motion items 29, 30, 38, 40, and 41
The Appellants’ Submissions
[72]
The appellants submit that the standing of
Janssen and its entitlement to relief goes to the final outcome of the case. It
is unclear what type of license was granted to any Janssen entity, who plead
they are licensees of the patent and are claiming under the patentee. The
appellants dispute the standing of the parties and the existence of the license
and submit that the type of license is essential, particularly to the issue of
accounting for profits. There was no clear finding on the relevance of these questions
by the prothonotary.
[73]
The prothonotary dismissed question 38, which
asked Kennedy to provide the nature of the damage that it refers to as “significant damage” that will be caused as a result
of the acts of alleged infringement, on the basis that it was not relevant at
this stage of the proceedings and would be relevant only to the quantification
stage. The appellants argue that the prothonotary based her decision on the
wrong principle because the question is directed to the nature of the harm, including
causation and proximity, not simply the quantum of liability. The appellants
should not be surprised at trial when the nature of the “significant damage” and its relationship to the
appellants’ actions is disclosed.
[74]
The appellants make a similar argument regarding
questions 40 and 41, which asked Kennedy to provide its knowledge, information
and belief regarding how the respondents would suffer “irrevocable
damage” if the case succeeds.
The Respondents’ Submissions
[75]
The respondents submit that the threshold for
standing is very low and the appellants’ own evidence shows that Kennedy and
Janssen have repeatedly confirmed their relationship as one of patentee and
licensee. The transcript and order reveal that these questions were dismissed
because the respondents’ interpretation of their agreement is not relevant to
any issue in the proceedings.
[76]
The damages information that is relevant to the
first phase of the trial has already been produced (data on sales in Canada).
Causation and proximity are established by the appellants’ pleadings that their
products are a biosimilar version of the respondents’ products. The appellants
did not provide any evidence about the relevance of the additional information
requested and did not point to any deficiencies in the information that has
been produced.
The prothonotary did not err
[77]
Although the prothonotary’s reasons on the issue
of the nature of the license are inaudible, the respondents are correct: the
threshold to establish standing is low and Kennedy and Janssen have repeatedly
described their relationship.
[78]
The prothonotary did not misapprehend the facts
or base her discretion on a wrong principle in finding that the nature of the
damages is not relevant at the first stage of the proceeding, given the
bifurcation order.
Category 2:
Deposition Transcripts from Foreign Proceedings
Motion items 45 and 53
The Appellants’ Submissions
[79]
The questions at issue request that Kennedy
produce the deposition transcripts from proceedings in the US and UK that Mr
Espinasse reviewed in preparation for his examination for discovery. The
deposition transcripts were from the inventors, Drs Maini and Feldmann, and Mr
Espinasse in those US and UK proceedings.
[80]
The appellants argue that because Mr Espinasse
prepared for discovery using evidence from a previous action, these transcripts
are clearly relevant to the present proceedings. Transcripts from other
proceedings should be produced where they may provide useful information to
assist the Court in determining the true facts (Ed Miller Sales &
Rentals Ltd v Caterpiller Tractor Co, 1988 ABCA 282 at para 34, 22 CPR (3d)
290 [Ed Miller]).
[81]
The appellants also argue that the Canadian
position regarding production from one jurisdiction to another was summarized
by Prothonotary Kevin Aalto in Gap Inc v GAP Adventures Inc, [2011] FCJ
No 1582 (QL), 95 CPR (4th) 377 [Gap], where he found that production
should be guided by the principles that: (a) where prejudice to the examinee is
virtually non-existent, and the material is regarding the same or similar
issues and the same or similar parties, leave will generally be granted; (b)
the order should be almost automatic, provided there is sufficient connection
between the two actions, the parties, their interests, and the issues between
them; and, (c) the overall question is whether the evidence given by the
witness at discovery in the earlier action may have some bearing or relevance,
directly or indirectly, on the evidence he or she may give in the second
action.
[82]
The transcripts are not expert evidence and,
despite their obvious relevance, the prothonotary dismissed the requests “with the proviso that it is open … at the appropriate time
to seek the transcripts … for the purposes of impeaching a witness.” The
appellants submit that the prothonotary ignored the law.
The Respondents’ Submissions
[83]
The respondents submit that the prothonotary did
not err in refusing the requests for transcripts from foreign proceedings. The
Court has held that foreign depositions and trial testimony are not relevant or
admissible at trial in Canada and admissions from those proceedings cannot be
relied upon in Canada (AstraZeneca Canada Inc v Apotex Inc, 2011 FC 862
at para 6, [2011] FCJ No 1071 (QL) [AstraZeneca]; Apotex II at
para 66).
[84]
The respondents add that the transcripts would
also include expert opinion which is not admissible in the Canadian proceedings
(Apotex II at para 66). The testimony in the other proceedings can only
be used for the purposes of impeachment, if it is inconsistent, as found by the
prothonotary.
[85]
The respondents also submit that the appellants’
reliance on Gap is misplaced. In Gap Prothonotary Aalto held that
a Canadian discovery transcript could be used in US proceedings, but “solely for the purposes of impeachment, if necessary,”
noting that the circumstances were exceptional. In Gap, there were
parallel proceedings in the US and Canada involving the same parties and the
trial was imminent. In this case, the parties in the proceedings in the US and
Canada are not the same, the US law on discovery differs from the law in
Canada, and the trial is not imminent.
[86]
The respondents note that the US depositions
included two types of questions and answers: questions that would also be
answerable in Canada, noting that both Drs Feldman and Maini will be examined (or
have been examined) and these questions can be put to them directly during
their examinations; and, questions that would not be proper in Canada, for
example expert or opinion evidence, which may have been allowed in the US where
the rules differ.
[87]
There is an implied undertaking to not use the
discovery in another proceeding and the circumstances of this case do not
justify an exception to this principle.
[88]
The respondents also submit that the appellants
did not identify any particular area where the transcripts would be relevant.
The prothonotary stated that the transcript may become relevant for the
purposes of impeaching a witness and a new request could be made at that time.
The prothonotary did not err in so finding.
The
prothonotary did not err
[89]
In Ed Miller, relied on by the
appellants, the Alberta Court of Appeal found that transcripts from foreign
proceedings can be ordered to be produced. The Court found that “discoveries are confidential in the sense that they may not
be used for an improper purpose. That caveat on their use, however, does not
mean that the transcripts are privileged” (at para 35). At paras 34 and
39, the Court of Appeal affirmed the Court of Queen’s Bench, which found:
I find the case of Abernethy v. Ross
(1985) 1985 CanLII 550 (BC CA), 65 B.C.L.R. 142 (B.C.C.A.) applicable in these
circumstances. The Court ordered the Defendants to produce transcripts of
discoveries of those defendants from another action. The Court recognized that
discoveries from previous actions could not be used for improper purposes but
this did not make them privileged. They refused to adopt a rule that would
prevent the court from learning what a party had said under oath in the past.
I see no reason why the same principles
should not be applied in the present circumstances. The depositions in the U.S.
action may provide useful information to assist this court in determining the
true facts in the present case. In my view, this would not be using the
documents for an improper purpose. As far as these documents are possibly
relevant to the present case, and may be of assistance in ascertaining the
truth, they should be produced by the Defendant.
[90]
However, Ed Miller does not support the
view that transcripts of discoveries must be produced; it simply provides that,
if they are relevant and may be of assistance in ascertaining the truth, they
should be produced.
[91]
Gap, also relied
on by the appellants, can be distinguished from the present case in several
ways. As noted by the respondents, it was about the production of Canadian
discovery transcripts in US proceedings. The transcripts were admitted shortly
before the trial in the US for the purpose of impeaching witness testimony, not
for discovery purposes. The circumstances which permitted an exception to the
implied undertaking to not use discovery evidence in other proceedings do not
exist in the present case.
[92]
Moreover, the jurisprudence of this Court
supports the ruling made by the prothonotary that the transcripts in the
foreign proceedings were not relevant and need not be produced.
[93]
In AstraZeneca, at para 6, Justice Roger Hughes
noted:
[6] […]
5. Justice Layden-Stevenson [in Johnson
& Johnson Inc v Boston Scientific Ltd, 2008 FC 552, 327 FTR 49],
properly pointed out that admissions made in foreign litigation expressly for
the purpose of that litigation only cannot be relied upon in litigation in
Canada. She also correctly pointed out that one cannot readily assume that a
foreign patent “corresponds” to a Canadian one and that the Court must be
mindful of the differences in claim construction, which is a matter of law.
[…]
[94]
In Apotex II at para 66, Justice de
Montigny also noted the applicable principles:
[66] These arguments are not
persuasive. First of all, the expert opinion of an individual given in another
jurisdiction is not relevant or admissible at trial in respect of the issues
before the Court in this proceeding. Apotex has already sought, by way of
motion, extensive production from litigation in other jurisdictions and this
Court has deemed such production unnecessary: Apotex Inc. v Sanofi-Aventis,
2010 FC 77, at paras 61-62. Second, deposition and trial testimony of an
individual given in another jurisdiction is not relevant or admissible at trial
in respect of the issues before the Court in this proceeding: Novopharm
Limited v Eli Lilly Canada, 2007 FC 1195, at paras 47-50; aff’d 2008 FC
281; aff’d 2008 FCA 287. Such trial testimony and deposition could only be
used to impeach a witness at trial, and as such, this information need not be
produced on discovery. Third, the expert opinion and testimony would have
been created after the filing of the ‘777 Patent and this would not be relevant
to the issues of obviousness and sound prediction. Finally, Apotex can obtain
the testimony if the information is publicly available; if it is not, then it
would still be subject to confidentiality and its production would be
restricted. For all of these reasons, I believe the prothonotary did not err
in exercising her discretion to refuse this request.
[Emphasis added.]
[95]
The prothonotary’s decision was based in the
jurisprudence of the Federal Court and not based on any wrong principle or a
misapprehension of the facts.
Category 3: Validity
The Appellants’ Submissions
Category 3B - Anticipation: Motion item 72
[96]
The appellants allege that the patent was
anticipated and in order to prepare for trial, they require a factual basis for
Kennedy’s assertion that the prior art is not properly citeable. The question
asked Kennedy to provide its knowledge, information and belief regarding its
allegation that particular documents are not properly citeable prior art.
Category 3F -
Obviousness: Motion items 100, 111-112, 115-119, 126-127, 140-142, 145, 167
[97]
The appellants submit that the actual course of
conduct of the inventors which culminated in an invention is a relevant
consideration to the obviousness analysis (Apotex Inc v Sanofi-Synthelabo
Canada Inc, 2008 SCC 61 at para 70, [2008] 3 S.C.R. 265). Therefore, the
documents relating to the development of the invention, research plans, advisory
board reports, other reports, awards and correspondence are all relevant.
[98]
With respect to motion item 100, the
prothonotary refused production of Appendix A of the Agreement between Kennedy
and Centocor, including the research plan and the budget for the research, not
because it was not relevant, but because it would require time, effort and
resources to obtain. There is no evidence to suggest production would be unduly
onerous.
[99]
With respect to motion items 111-112, the
prothonotary dismissed the request for production of the Arthritis Research
Council [ARC] Annual Reports as a “make work project.”
The relevance of the reports is clear because the respondents produced other
versions of the reports. The prothonotary failed to apply the test of whether the
reports would “lead to a train of inquiry” that
would advance the appellants’ case.
[100] With respect to motion items 115-118 and 126, regarding production
of the Kennedy Institute Advisory Board reports (motion item 115), Centocor
Reports (motion items 116-118) and the Kennedy Annual Reports (motion item
126), the appellants submit that the prothonotary’s reasons for dismissing
their request are not clear. Kennedy has produced Annual Reports for 1993, 1994
and 1997, but not for 1995 and 1996. These reports are relevant to how the
inventors conceived of and characterized their alleged invention and whether
they encountered any difficulty in arriving at the invention. There is no
evidence that this will be onerous to produce.
[101] With respect to motion item 127 about the conception of the
invention, the appellants seek documents on the clinical trials to substantiate
the answer given by Kennedy about the administration of the drug. The
prothonotary did not consider the relevance of the questions to the issue of whether
the claimed invention was obvious and provided no reasons for dismissing the
question.
[102] With respect to motion items 140-141 relating to questions about the
design, results, conclusions, correspondence and documentation on the T09
Monotherapy Study, the appellants submit that this information is also relevant
to obviousness and to Kennedy’s assertion that the alleged invention was not
arrived at directly or with difficulty.
[103] With respect to motion item 142 regarding the Phase II study, the
appellants refer to a letter from an inventor dated in 1992 that suggests that
the study was being contemplated. The appellants argue that whether this study
was discussed, designed, conducted or implemented is relevant to the
obviousness analysis. The prothonotary’s reasons are recorded as inaudible.
[104] Motion item 145 relates to a draft manuscript of the T14 study which
was referred to as “enclosed” in a letter that
was disclosed. While the letter was produced, the enclosure was not.
[105] With respect to motion item 167, regarding questions about how the
prior art relates to the pleadings, the appellants note that the respondents’
Amended Statement of Defence states that “[t]he art and
prevailing views taught away from the invention of [the patent].” The
prothonotary dismissed the request for particulars about what is meant by “the art” on the basis that it was seeking expert
evidence. The appellants note that there are 101 scientific articles cited and
they should know which ones taught away. The particulars of “the art” are required for the appellants to know the
case to meet and are relevant to obviousness.
Category 3G - Commercial success of the alleged invention:
Motion items 175-179
[106] With respect to motion items 175, 176 and 177, the appellants note
that the product monograph for Janssen’s product (Remicade/infliximab) lists
nine different indications, only one of which relates to a use that Kennedy and
Janssen allege is not obvious (infliximab as an adjunctive therapy with
methotrexate for the treatment of rheumatoid arthritis). The appellants allege
that the respondents’ reliance on the total sales of Remicade as an indicator
of commercial success is misplaced, because eight out of nine indications do
not relate to methotrexate or rheumatoid arthritis.
[107] The appellants submit that Kennedy has put the issue of commercial
success into play and should be compelled to produce these documents. The
payment of royalties is also relevant to the issue of commercial success, which
is relevant to the issue of obviousness. The prothonotary erred by finding that
this information does not need to be produced because it had already been
produced by Janssen.
[108] With respect to motion item 178 and 179, the appellants submit that
the prothonotary erred by refusing to require the respondents to identify the
awards that were received by the inventors. The appellants argue that they need
to know what the awards were specifically for, including whether the awards
relate to this invention or other work, hence their request for photos of the
awards. The appellants refer to the related US invalidity action, which found
that the inscription on the award for discovery of anti-TNF therapy as an
effective treatment for rheumatoid arthritis and other autoimmune diseases does
not mention the adjunctive use of methotrexate.
[109] They are not prepared to take Kennedy’s word that the awards were
for this invention.
Category 3H - Broad claims: Motion items 193, 194, 198-201
[110] The appellants plead, among other allegations, that the patent is
invalid for overbreadth. The appellants asked for the correspondence between
the patent agent, Kennedy and the inventors regarding what the inventors made,
which is a question of fact, the communications of the inventors regarding
their invention, and whether the inventors conceived independently of the
examples of the patent.
[111] The appellants submit that correspondence and documents exchanged by
inventors relating to the development of an invention should be produced and
that questions relating to the substance of discussions involving an inventor
and the prosecution of a patent are compellable on discovery (Foseco Trading
AG v Canadian Ferro Hot Metal Specialties, Ltd (1991), 46 FTR 81, 36 CPR
(3d) 35), cited approvingly in Free World Trust v Électro Santé Inc,
2000 SCC 66 at para 67, [2000] 2 S.C.R. 1024 [Free World]).
“Resolved” questions within Category 3
[112] Motion items 90-94, 153, 189, 191-192 and 202 were dismissed as “resolved” because Janssen had answered or will answer
them. The appellants argue that because the prothonotary declined to order that
Kennedy adopt Janssen’s answers and that Kennedy identify the documents, it was
improper to find that these issues were resolved. One of the purposes of
discovery is to obtain admissions from the party being examined, i.e., Kennedy,
and this is not possible if the answers from Janssen must be relied on. The
prothonotary erred in treating these questions as resolved.
The Respondents’ Submissions
[113] The respondents submit that the prothonotary considered the
relevance of each of the questions regarding validity and properly dismissed
them. The questions were either irrelevant, resolved at the motion or otherwise
improper because: (a) they were overly broad or onerous to answer; (b) they
were duplicative; (c) there were other means of obtaining the information; or
(d) they sought legal or expert opinion.
[114] The respondents note that in many instances, counsel for the
appellants did not respond to the prothonotary’s request to make submissions on
why the question was relevant and counsel simply indicated he would “take it as dismissed.”
[115] The respondents point to items 72, 100, 126-127, 140-142, 145, 153,
175 and 177 as examples of questions that were overly broad and onerous to answer.
[116] The respondents submit that questions seeking information that has
already been provided do not need to be answered (Merck & Co v Apotex
Inc, 2005 FC 582 at para 27.2, 273 FTR 160). The respondents point to items
127, 140, 190 and 192 as examples of duplicative questions. The same reasoning
applies to the resolved items.
[117] Many of the questions requested that Kennedy provide information
that Janssen had already produced or is in a better position to provide. For
example, Janssen already produced the information requested in items 90-94.
Even if the appellants would like this information to come from Kennedy, the
respondents have already advised that they had produced all relevant
information in their possession, power and control.
[118] The respondents acknowledge that it is not appropriate to refuse to
answer a question because a co-defendant has already answered; however, the
Court must consider who the appropriate custodian is and the most proportionate
means of getting relevant information. They simply cannot produce what they do
not have.
[119] The appellants’ request regarding commercial success around the
world was dealt with in a previous order which narrowed this to production of
the documents related to commercial success in Canada. Information has been
provided by Janssen regarding commercial success in Canada. Kennedy has
provided information regarding awards and honours the inventors have received for
their work on the invention.
[120] The respondents submit that some questions, including those alleged
to be related to anticipation and obviousness, sought expert or legal opinion
and were properly refused. Items 72 and 167 asked Mr Espinasse to provide what “the art” was that taught away from the patent. The
respondents note that Sanofi-Aventis Canada Inc v Apotex Inc (3 July
2008), T-161-07, relied on by the appellants, was a speaking order of Justice Judith
Snider that does not have precedential value. The respondents point out,
however, that Justice Snider noted the fine distinction between proper
questions asking for particulars and improper questions asking a party for the
facts supporting its pleadings. The appellants’ request is for the facts
supporting its pleadings and is an improper question. The respondents add that
it is improper to ask a question where the answer would depend on or be expert
evidence.
[121] The respondents add that these rulings are fair, because the
prothonotary made similar rulings on the respondents’ refusals motions.
[122] The respondents further submit that the prothonotary did not err by
refusing the appellants’ request for internal correspondence between Kennedy or
the inventors and Kennedy’s patent agent regarding the drafting and prosecution
of the patent. Patent prosecution history is not relevant to patent
construction, construing a claim or varying the scope of a claim. The cases
relied upon by the appellants to support the claim that the substance of
discussions between Kennedy or the inventors and the patent agent are
compellable on discovery relate to public interactions with the Patent Office
(i.e., the “file wrapper”) rather than internal
files with the patent agent.
[123] With respect to motion items 111-112, the respondents note that ARC
is an arm’s length charity that provided some funds to Kennedy Trust for
research. The annual reports of ARC were public at the relevant times, but may
not have been retained in the archives of Kennedy, and there was no obligation
for them to do so. Kennedy Trust is not ARC. The prothonotary noted that there
was no need to repeatedly go back to look for documents that Kennedy did not
have. The respondents submit that the prothonotary properly asked why the other
parts were needed by the appellants, but the appellants simply took the request
as dismissed.
[124] With respect to questions about the Kennedy Research Advisory Board,
the respondents note that the same questions were asked the previous day by
co-counsel.
[125] With respect to item 126 regarding the Kennedy Annual Reports, the
respondents note that they provided the reports for 1993, 1994, and 1997 and
advised they were making inquiries for the other years requested. Since that
time, the 1995 report has been provided and only the 1996 report remains
outstanding, which Kennedy continues to look for.
[126] The respondents argue that it is improper for the appellants to
include this in this appeal. The Court cannot order what is impossible to
produce, nor should it order what Kennedy has agreed to produce.
The
prothonotary did not err
Category 3B: Motion item 72
[127] The appellants challenge the prothonotary’s dismissal of questions
related to why the respondents stated that documents listed in the Second Amended
Statement of Claim were not properly citable prior art (motion item 72).
[128] The appellants relied on Hayden Manufacturing Co v Canplas
Industries Ltd, [1998] FCJ No 1234 (QL) at para 16, 173 FTR 229, a decision
of Prothonotary Hargrave:
[16] Turning to prior art, an invention
must not have been anticipated by some other patent or publication for in such
an instance it would lack the novelty required to be patentable. When a
litigant attacks novelty or refers to prior art, the opposing party is entitled
to know which parts of prior patents or publications are relied upon and this
information must be specific: see for example Dek-Block Ontario Ltd. v.
Béton Bolduc (1982) Inc, [1998] F.C.J. No. 680, a 20 May 1998 decision of
Mr. Justice Richard (as he then was), in Action T-1334-97, at pages 4 and 5.
Mr. Justice Richard then went on to point out that questions of this nature do
not require interpretation of a patent and are thus proper on discovery. I have
looked at the questions in this category from the point of view of the
definition of obviousness, keeping in mind the entitlement of the Plaintiff
under the Dek-Block case and have also considered whether they are truly
follow-up questions.
[129] In the present case, the prothonotary did not misapprehend the facts
or base her ruling on a wrong principle. The prothonotary assessed the
questions as seeking the respondents’ legal arguments about why some of the
prior art is not citable and the facts supporting the respondents’ pleadings.
The prothonotary is best placed to characterize the questions and did not err
in doing so.
Category 3F - Motion item 167
[130] They appellants also questioned what “prior
art” the respondents assert taught away from the invention in its
Amended Statement of Defence (motion item 167), which is relevant to
obviousness.
[131] As the respondents note, the appellants’ submissions to the
prothonotary on this issue were brief and the prothonotary reasonably assessed
the question as seeking expert evidence based on those brief submissions.
Deference is owed to her characterisation of the question.
Category 3G - Commercial
success submissions
[132] Équipements d'Érablière CDL Inc v Ératube Inc, [2001] FCJ No 265 (QL) at para 11, 107 ACWS (3d) 752 provides:
[11] Both questions involve
consideration of the principle of commercial success. On this point, academic
commentary and case law have clearly established that commercial success is
only relevant in certain marginal cases and cannot be used as a pretext for “fishing
expeditions” (see Fox, Canadian Patent Law and Practice, 4th ed.,
Toronto, The Carswell Company Limited, at pp. 76 and 78, CAE Machinery Ltd.
v. Fuji Kogyo Kabushiki Kaisha (January 21, 2000), T-730-97 (F.C.T.D.), Canadian
Buttons Limited v. Patrician Plastic Co., 35 F.P.C. 87 and Edison and
Swan Electric Light Co. v. Holland (1889), 6 R.P.C. 243, at 277).
[Emphasis added.]
[133] The prothonotary did not base her ruling on any wrong principle; she
understood that the obviousness analysis includes many aspects and factors and
will require expert evidence. She characterized the broad request as not
relevant or so minimally relevant to the issue of obviousness that the
proportionality analysis did not support the request.
[134] As noted above, the appellants’ questions about commercial success
around the world had been narrowed by a previous order to focus on Canada and
that information had already been provided.
[135] In my view, the appellants’ unwillingness to take Kennedy’s word
that the awards had been for this invention is no basis for arguing that the
prothonotary erred; rather, it buttresses the need to consider proportionality.
Category 3H - Broad claims
submissions
[136] In Free World the Supreme Court of Canada noted that the use
of file wrapper estoppel in Canada was rejected in Lovell Manufacturing Co v
Beatty Bros Ltd (1962), 23 Fox Pat C 112 (Ex Ct) and that this Court (the
Federal Court) has confirmed the exclusion of file wrapper materials tendered
for claims construction (at para 64).
[137] At para 66, the Court acknowledged the commentaries that support the
admissibility of prosecution history in some circumstances to obtain consistent
claims interpretation, but took a narrower approach:
[66] In my view, those references to
the inventor's intention refer to an objective manifestation of that intent in
the patent claims, as interpreted by the person skilled in the art, and do not
contemplate extrinsic evidence such as statements or admissions made in the
course of patent prosecution. To allow such extrinsic evidence for the
purpose of defining the monopoly would undermine the public notice function of
the claims, and increase uncertainty as well as fuelling the already overheated
engines of patent litigation. The current emphasis on purposive
construction, which keeps the focus on the language of the claims, seems also
to be inconsistent with opening the pandora’s box of file wrapper estoppel. If
significant representations are made to the Patent Office touching the scope of
the claims, the Patent Office should insist where necessary on an amendment to
the claims to reflect the representation.
[67] This is not to suggest that
prosecution history can never be relevant for a purpose other than defining the
scope of the grant of the monopoly: Foseco Trading A.G. v. Canadian
Ferro Hot Metal Specialties, Ltd. (1991), 36 C.P.R. (3d) 35 (F.C.T.D.), at
p. 47. That point does not arise in this case for decision and lies outside the
scope of these reasons.
[Emphasis added.]
[138] The prothonotary did not err in refusing to order production of the
correspondence between Kennedy, the inventor and the Patent Office. She applied
the principles of the jurisprudence.
Category 3G - “Resolved” questions
[139] The prothonotary did not misapprehend the facts or base her ruling
on a wrong principle of law in finding that several questions had been
resolved, previously answered or answered by Janssen, the co-respondent. The
prothonotary understood the context of the litigation, the previous discoveries
and the planned discoveries, and Kennedy’s role as a charity, which differs
from Janssen’s role as licensees, distributors and manufacturers. It would be a
waste of time, effort and money to require Kennedy to provide the same
information that was already provided or that would be provided by another
party. If the appellants dispute the questions found to be resolved, they may
have (and may have already had) other opportunities to revisit the questions.
[140] More generally, in addressing the appellants’ submissions on the
questions refused or taken under advisement by Kennedy at the examination for
discovery, the prothonotary engaged in the discretionary proportionality
analysis. She did not base her decision on a wrong principle or any
misunderstanding of the facts. The transcript of the motion reveals the
prothonotary’s effort to provide an opportunity for the appellants to advise
her how or why the question was relevant to advance its case. Many of the
instances where the appellants submit that the prothonotary did not give clear
reasons dealt with inaudible parts of the transcript, for which the appellants
did not provide their recollection of why the reasons were deficient. The
appellants also “took” the items as dismissed without providing or elaborating
on the relevance of the question as invited by the prothonotary, negating the
need for reasons. In other instances, the prothonotary accepted the
respondents’ explanation that a document could not be located and, therefore,
did not put them to a futile search. For example, the Kennedy Annual Reports
had been provided with the exception of one year, which Kennedy undertook to
continue to search for. I agree it is futile to demand that the respondents
continue to look for what they have already made unsuccessful efforts to
locate. It is also futile to appeal the ruling with respect to reports already
received.
Category 4 - Particularizing
Kennedy’s Pleadings: Motion items 217, 221-223, 225
The Appellants’ Submissions
[141] The appellants submit that the prothonotary erred by dismissing
their request that the respondents indicate where in the Inflectra product
monograph adjunctive therapy with methotrexate for the treatment of rheumatoid
arthritis is mentioned (motion item 222).
[142] The appellants argue that the prothonotary dismissed the question
because the representative had to read and interpret the document and not
because it was not relevant. The appellants submit that this is inconsistent
with the prothonotary’s order for the respondents to answer where it is
mentioned in the Remicade product monograph that Remicade had been approved for
adjunctive therapy with methotrexate for the treatment of rheumatoid arthritis.
[143] The appellants argue that paragraphs in the Amended Statement of
Defence are open-ended pleadings and improper. The appellants requested
particulars, including what “in general” means
within the pleadings. The prothonotary refused the request finding that it
required expert evidence.
[144] The appellants submit that the Court has previously held that
open-ended pleadings are improper and that the examining party is entitled to
know the case to meet. The Court has held that pleadings that use the term “including” must detail what it is that “including” means (Doris Hosiery Mills Ltd v
Victoria’s Secret Stores, Inc (1994), 84 FTR 222 at paras 19-22, 58 CPR
(3d) 62 (FCTD); Johnney Enterprises Co v Rui Royal International Corp
(1998), 144 FTR 265 at paras 26-31, 79 CPR (3d) 20 (Proth)).
[145] Regarding motion items 221, 223 and 225, the prothonotary did not
provide reasons; the statement “the Court doesn’t see
anything necessary to order” does not address relevance.
The Respondents’ Submissions
[146] The respondents submit that the request regarding the Inflectra
product monograph is an abuse of the discovery process because the requested
information is within the appellants’ knowledge. It is not inconsistent with
the prothonotary’s order for the respondents to point to information in the
Remicade product monograph, because that order required the respondents to
indicate information about their own activities. This request regarding
Inflectra would require the respondents to indicate information about the
appellants’ activities.
[147] The respondents further submit that the questions require expert
evidence and ask for the facts the respondents rely on in support of particular
pleadings.
[148] With respect to open-ended pleadings, the respondents submit that
there is no sweeping principle that such pleadings are improper. The cases
referred to by the appellants where the pleadings were found to be improper
related to the activities of third parties and found that it would be unfair if
a defendant could come up with new examples of third parties’ activities at
trial. Here, the open-ended pleadings relate to the appellants’ behaviour which
will be explored through the discovery process. The respondents also submit
that because this information is about the appellants’ own activities, it will
not narrow the proceedings or allow the appellants to know the case to meet.
[149] The prothonotary did not err in her application of the
proportionality principle to these items.
The prothonotary did not err
[150] The appellants have not established how the prothonotary based her
ruling on a wrong principle of law or on a misapprehension of the facts. The
appellants appear to acknowledge that expert evidence would be required to
interpret the product monograph. Moreover, Inflectra is the appellants’ product
and they must be taken to already know what is in the product monograph.
Category 5
- Minimum Required Basic Information for Documents: Motion items 239, 242,
253, 265-267, 269-270, 298, 300-302, 309, 319-323, 325, 330, 340-351
The Appellants’ Submissions
[151] The appellants raised questions about authorship, the recipient of
documents, dates of documents, and whether the documents were published and
when. The questions were refused for lack of relevance, because the information
was clear from the document or because Kennedy stated that it was unable to
locate the document.
[152] The appellants submit that the affidavit of documents provided by
the respondents was grossly deficient in providing basic information. The
unsworn affidavit was a “mish-mash” listing 770
documents, 576 of which had no title, description or date. Without this
information, the appellants argue that they cannot discern the materiality,
degree of relevance and usefulness of the relevant documents. The Rules require
the respondents to provide this information. The prothonotary erred by
dismissing these questions.
[153] The appellants submit that if a party lists a document, then that
document is relevant and should be produced in its entirety. Similarly,
duplicate documents are a burden to the appellants and should have been
identified. There were many drafts of the same documents which should have been
clearly dated or marked. The appellants should not be required to demonstrate
why they needed dates and other details.
[154] The appellants argue that they should not have to go through all the
documents to get the fundamental information. Even if the dates of the
documents could be inferred, the dates should have been provided. If the
information requested is clear on the face of the document, as asserted by the
respondents, the respondents should not refuse to provide that information.
The Respondents’ Submissions
[155] The respondents agree that an affidavit should list all relevant
documents (Havana House at para 22), but with respect to the dates of
the documents and the studies referred to in the patent, events have overtaken
the request. The appellants’ submissions ignore that the respondents served an
affidavit of documents, with an index indicating the title, date and document
type, by the time of the motion. The respondents’ indexed affidavit indicated
the dates of the documents, where those dates were known. It is clearly onerous
to require the respondents to track down the authors of documents, some of
which were twenty years old, to ascertain dates, particularly given that the
appellants could not indicate how this would be relevant.
[156] The respondents add that the details requested by the appellants are
irrelevant and the request for information is abusive.
[157] The respondents note that Kennedy produced all the documents in its
possession. Janssen completed the studies for submission to the US Federal Drug
Administration and produced those documents. There is no reason for Kennedy to
even have this information since it did not conduct the three studies at issue.
[158] Kennedy explained at the motion that the appellants had been
provided with the data in the most useful manner. The prothonotary directed the
appellants to look at what had been produced first and then ask questions, if
relevant, at the next discovery. The prothonotary correctly noted that there
was no value in asking Kennedy to search for documents that had already been provided.
[159] The respondents submit that the onerousness of the request was
apparent. There would be no point in providing an affidavit to identify the
details of how onerous it would be, the time involved or how they would have to
conduct the search. This is common sense.
[160] The prothonotary did not err in finding that asking the respondents
to review and confirm information that is apparent in the document is unnecessary
and contrary to Rule 242(c).
[161] In addition, the prothonotary did not err in applying the proportionality
principle.
The prothonotary did not err
[162] Although the affidavit of documents in its unsworn and unindexed
state lacked complete information, the respondents ultimately provided an
indexed affidavit with the details possible to provide.
[163] The prothonotary did not err in refusing to order the respondents to
search for more or seek out details, such as dates, publication sources that
would have been obviously very onerous to track down. Similarly, the appellants
should not expect answers to questions they can readily glean by reviewing the
information and documents produced.
[164] As noted by the prothonotary, once the appellants have reviewed the
information, they will have a further opportunity to ask more questions at the
next discovery.
[165] The prothonotary noted that many of the questions were irrelevant
and many of the answers to the appellants’ questions were self-evident from the
documents. In other cases, the appellants could not or would not indicate how
the information would advance their case or respond to the prothonotary’s request
that they explain further.
VII.
Conclusion
[166] The appellants have not established that the prothonotary was
clearly wrong in that the decision was based on a wrong principle of law or on
a misapprehension of the facts as a whole or with respect to specific
questions. The prothonotary’s decision refers to and applies the appropriate
considerations and principles in the jurisprudence.
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