Date: 20100521
Docket: A-454-09
Citation: 2010 FCA 130
Present: SHARLOW
J.A.
BETWEEN:
ELI LILLY CANADA INC.,
ELI LILLY AND COMPANY,
ELI LILLY AND COMPANY LIMITED and
ELI LILLY SA
Appellants
and
NOVOPHARM
LIMITED
Respondent
REASONS FOR ORDER
SHARLOW J.A.
[1]
This
appeal is scheduled for hearing on June 21, 2010. The appellants (collectively
“Lilly”) are seeking to reverse a judgment of the Federal Court (2009 FC 1018)
which, among other things, declared Canadian Patent No. 2,041,113 invalid and
dismissed Lilly’s claim against the respondent (“Novopharm”) for damages and
other relief for infringement of the patent.
[2]
Before
me is a request by Novopharm to order the return of certain material filed by
Lilly on May 12, 2010, namely 13 volumes of material containing excerpts from
the appeal book and one volume (“Volume 5”) of authorities. Novopharm argues
that this material is improperly filed.
[3]
I
note at the outset that Novopharm’s request has not been properly made. It was
made by letter. It should have been made by means of a notice of motion, served
and filed in a motion record and supported by a properly sworn affidavit.
However, as time is short, and as Lilly did not object to the form of the
request but courteously acceded to my request to make a speedy response by
letter, I have disregarded the irregularity.
[4]
This
matter arises from an order dated January 8, 2010 in which Justice Sexton
granted Lilly leave to file the volumes of the appeal book containing the trial
exhibits and trial transcripts electronically in PDF format only, and required each
party to serve and file, by a specified deadline, a compendium containing the
material to which the party intended to refer in argument. This order was
sought as a means of managing a voluminous trial record, estimated at the time
to consist of 10 boxes of documents (double sided).
[5]
A
compendium normally is understood to be a relatively small document (usually a
single volume) containing only documents or portions of documents from the
appeal book that a party anticipates will be referred to in oral argument.
Alternatively, a compendium may consist of one or more volumes of material containing
all or nearly all of the documents referred to in a party’s memorandum of fact
and law, often with tabs corresponding to the paragraphs in the memorandum. In
this case Lilly has filed 4 volumes comprising a compendium of the latter kind.
Novopharm has no objection to the form or content of those four volumes.
[6]
However,
Lilly has also filed 13 additional volumes containing documents from the appeal
book that are now in the Court file in electronic form (PDF) only, as well as
an additional volume of authorities (Volume 5).
[7]
Novopharm
has objected to the filing of the 13 volumes of documents because they are not
a compendium, in that they do not track the paragraphs in Lilly’s memorandum of
fact and law, they run for thousands of pages, and they contain only sporadic
side-barring. Lilly has explained that of the 13 volumes in issue, some contain
evidence relating to the work done to justify the grant of the patent in issue
(reflecting a dispute on a key point raised in the appeal). The remaining
volumes contain documents from the appeal book that Lilly anticipates may be
referred to in argument to address a number of factual points raised in
Novopharm’s memorandum of fact and law.
[8]
Lilly
points out, correctly, that the filing of a compendium cannot deprive a
litigant of the right to refer at the hearing to any document in the appeal
book. I note also that the courtroom in which this matter is to be heard is not
at present equipped with the means for reading documents in electronic form,
which could present a practical difficulty to counsel who may wish, properly,
to refer to a document in the appeal book that is not available in hard copy. I
have not been made aware of any special arrangements that might have been made
to deal with this technological deficit in the courtroom. In these
circumstances, I will not accede to Novopharm’s request to require the 13
volumes of documents to be returned to Lilly.
[9]
Novopharm
objects to the filing of Volume 5 because it contains cases, many of which are
not highlighted or sidebarred, that are not part of the joint book of
authorities to which the parties had previously agreed, and because it includes
two patents that are not part of the record on appeal. Lilly says that the
majority of the cases are sidelined, and that a patent is an “enactment” as
defined in the Interpretation Act and may properly be included in a book
of authorities.
[10]
Normally,
the Court will not accede to an objection that restricts the right of litigants
to bring to the Court’s attention any relevant jurisprudence, even if it is
presented for the first time at the hearing itself (although where such a late
submission occurs the Court normally will permit any party taken by surprise to
make supplementary submissions). While it would have been preferable if Lilly
had identified the Volume 5 cases when consideration was being given to the
preparation of the joint book of authorities, I am unable to see how Novopharm
could possibly be prejudiced by the filing of Volume 5 at this time. The
question of whether or not a patent is properly included in a book of
authorities is a point that may be raised in argument at the hearing, if
anything turns on it.
[11]
For
these reasons, Novopharm’s request to return to Lilly the 13 volumes of
documents and Volume 5 of the authorities will be denied. Costs of this motion
are costs in the cause.
“K.
Sharlow”
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