Date: 20060901
Docket: T-1321-97
Citation: 2006 FC 1050
BETWEEN:
ELI LILLY AND COMPANY
and ELI LILLY CANADA INC.
Plaintiffs
(Defendants by Counterclaim)
-and-
APOTEX INC.
Defendant
(Plaintiff by Counterclaim)
AND
BETWEEN:
APOTEX INC.
Defendant
(Plaintiff by Counterclaim)
-and-
ELI LILLY AND COMPANY
and ELI LILLY CANADA INC.
Plaintiffs
(Defendants by Counterclaim)
-and-
SHIONOGI & CO. LTD.
Defendant by Counterclaim
REASONS FOR ORDER
PINARD J.
[1]
This
is a motion on behalf of the Defendant (Plaintiff by Counterclaim) Apotex Inc.
(“Apotex”), for an Order setting aside the Order of Prothonotary Aronovitch
(the “Case Management Prothonotary”), dated June 21, 2006, and dismissing the
underlying motion by the third party, Shionogi & Co. Ltd. (“Shionogi”) in
its entirety.
[2]
The
underlying patent infringement action in this proceeding was commenced in 1997,
and had progressed for over five years before the defendant Apotex added
Shionogi as a party to a Counterclaim seeking damages pursuant to sections 36 and
45 of the Competition Act in December of 2002. Shionogi has never been a
party to the plaintiffs’ patent infringement action; nor has Shionogi ever been
a party to Apotex’s claims for declaratory relief in respect of the validity of
the patents in issue.
[3]
On
December 19, 2005, the Case Management Prothonotary, by consent, issued a
Scheduling Order (the “Scheduling Order”), which included the following
paragraph:
3. Apotex
and the Defendant by Counterclaim Shionogi & Co. Ltd. (“Shionogi”) shall
exchange affidavits of documents in respect of the Counterclaim (including
the allegations in Shionogi’s Defence to Counterclaim, and Apotex Reply to
Shionogi’s Defence to Counterclaim) by no later than January 31, 2006;
[emphasis
added]
[4]
Apotex
served upon Shionogi an affidavit of documents which was simply a further
amended version of the affidavit of documents it had previously served upon the
Plaintiffs. As a result, it obviously included hundreds of documents concerning
validity and infringement issues as between Apotex and the Plaintiffs but
having no relevance to the Counterclaim against Shionogi which is limited to a
claim for damages against the latter pursuant to sections 36 and 45 of the Competition
Act.
[5]
It
is in this context that the Case Management Prothonotary ordered Apotex to
“comply with the Court’s Order dated December 19, 2005 and serve a revised
affidavit of documents or identify the documents relevant to the counterclaim,
as defended and replied to”.
[6]
In
coming to her decision, the Case Management Prothonotary reviewed the pleadings
and interpreted the meaning of “Counterclaim” as set out in the Scheduling
Order consented to by Apotex:
The allegations of invalidity, indeed all
of the allegations in relation to which Shionogi takes no position, are not at
issue in the counterclaim – are not the “Counterclaim” for the purposes of the
Order and the contents of the affidavit of documents. To the extent that those
matters are covered in the affidavit of documents, the affidavit is not, as prescribed
by the Order, made in respect of the “Counterclaim” as made, defended or
replied to.
[7]
The
Case Management Prothonotary also confirmed that the outcome was appropriate
having regard to the efficient management of the case:
From a case management perspective it is
a just and fitting outcome, suited to the circumstances. This matter is almost
ready to be pre-tried. Discovery as between Lilly and Apotex has proceeded
notwithstanding Shionogi’s exclusion as a party without any suggestion that
Shionogi was required for discovery on the issues of infringement and
invalidity.
The claim against Shionogi is [discrete]
and confined to [breaches] of the Competition Act. They are in substance
the only allegations that are defended by Shionogi and therefore the subject
matter that the parties agreed to address and confine themselves to in their
affidavits of documents.
It is inefficient, time consuming and an
impediment to the efficient management of the case to have Shionogi, at this
stage, prepare for and proceed to discovery, snowed under by an affidavit of
documents that contains irrelevant documents going to infringement and
invalidity, issues that are joined exclusively as between Lilly and Apotex. It
is also, in my view, contrary to the clear language of the Order to which
Apotex consented and by which it is bound.
[8]
In
its written submissions filed in support of this appeal, Apotex does not argue
that the questions raised on the motion are vital to the final issue of the
case, which in fact they are not. Rather, Apotex submits that the Prothonotary
fundamentally erred in law and in principle in ordering Apotex to provide a
further and better affidavit of documents to Shionogi.
[9]
In
these circumstances, the Order appealed from must be treated with substantial
deference and must not be disturbed absent the demonstration of a clear error
(see Canada v. Aqua-Gem Investments Ltd., [1993] 2 F.C. 425 at 454
(C.A.); and Sawridge Band v. Canada, [2002] 2 F.C. 346 at 354 (C.A.)).
Upon hearing counsel for the parties and upon reviewing the material filed, I
consider that Apotex has failed to demonstrate that the Case Management Prothonotary
was clearly wrong, that she misconstrued her own Scheduling Order, that in this
context she misapplied Rule 227 or any other Rule of the Federal Courts
Rules, SOR/98-106, and in particular, has failed to demonstrate that this
Court ought to interfere with her efforts to manage this complex case. In my
opinion, the Case Management Prothonotary properly ordered Apotex to comply
with its obligations under the Scheduling Order which it agreed to, and to
provide an affidavit of documents restricted to the Counterclaim brought by it
against Shionogi, a result which the Case Management Prothonotary expressly
found advanced case management objectives in this proceeding.
[10]
Consequently,
Apotex’s motion is dismissed with costs.
“Yvon
Pinard”
Ottawa,
Ontario
September
1, 2006
Date: 20060901
Docket: T-1321-97
Ottawa, Ontario, September
1, 2006
PRESENT: The Honourable Mr. Justice Pinard
BETWEEN:
ELI LILLY AND COMPANY
and ELI LILLY CANADA INC.
Plaintiffs
(Defendants by Counterclaim)
-and-
APOTEX INC.
Defendant
(Plaintiff by Counterclaim)
AND
BETWEEN:
APOTEX INC.
Defendant
(Plaintiff by Counterclaim)
-and-
ELI LILLY AND COMPANY
and ELI LILLY CANADA INC.
Plaintiffs
(Defendants by Counterclaim)
-and-
SHIONOGI & CO. LTD.
Defendant by Counterclaim
UPON Notice of Motion on
behalf of the Defendant (Plaintiff by Counterclaim) Apotex Inc. (“Apotex”) for:
1.
An Order
setting aside the Order of Prothonotary Aronovitch dated June 21, 2006, and
dismissing the underlying motion by the third party, Shionogi & Co. Ltd.
(“Shionogi”) in its entirety;
2.
Costs of
this appeal and the motions below; and
3.
Such
further and other relief as this Honourable Court may deem just.
ORDER
The motion is dismissed, with costs.
“Yvon Pinard”
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