Date: 19980305
Docket: T-2784-97
BETWEEN:
KIRIN-AMGEN INC. and JANSSEN-ORTHO INC.
Plaintiffs
- and -
BOEHRINGER MANNHEIM CANADA LTD./LTÉE.
Defendant
REASONS FOR ORDER
MACKAY, J.:
[1] These are reasons for an order dismissing an application by the plaintiff for an order that save and except for activities exempted under s-s. 55.2(1) of the Patent Act, R.S.C. 1985, c. P-4, as amended (the "Act"), the defendant shall not sell commercially in Canada its RECORMON rhEPO product, nor induce others to use in Canada its RECORMON rhEPO product, without giving the solicitors for the plaintiff 60 days prior written notice.
[2] The application is somewhat unusual. It arises as an interlocutory matter in an action for patent infringement in which pleadings are closed and a tentative date for trial has been scheduled some nine months hence. Earlier the plaintiff filed a motion for an interlocutory injunction, which was adjourned sine die.
[3] The action is brought quia timet, for the defendant's RECORMON rhEPO product is not yet offered for sale in Canada. At this stage, defendants have applied for approval to market the product, a prescription drug, which approval is not anticipated for some months.
[4] When advised that the product would probably not be launched much before September 1, 1998, counsel for the plaintiff requested counsel for the defendant to file an undertaking in the Court that prior to September 1, 1998 the defendant would not offer, sell or distribute its RECORMON product in Canada, except for the current level under a special program, or increase its pre-marketing activities, and if it offers, sells or distributes the product after September 1, 1998 it will give the plaintiff 60 days prior written notice of such actions.
[5] Counsel for the defendant responded to the request, indicating that the defendant did not intend to put the product in question on commercial sale in Canada except for sampling for compassionate reasons, or activities under s.55 of the Act, until at least the first quarter of 1999. Moreover, if the defendant intends to sell the product in Canada before that time, counsel for the plaintiff would be provided with "reasonable notice thereof".
[6] The plaintiff urges that this undertaking of counsel for the defendant should now be made precise and be made enforceable by the Court spelling out in an order that the defendant not undertake to sell commercially, or induce others to use, in Canada its product in issue without giving 60 days prior written notice. Without notice of this sort, the plaintiff is concerned that its opportunity to bring on its application for an interlocutory injunction and have the matter heard before the defendant enters the market in Canada will be lost, with loss of such advantage as may be expected for a plaintiff seeking such relief quia timet, before the defendant is in the market.
[7] That concern of the plaintiff is highlighted by its perception that an undertaking merely between counsel may not be enforceable by the Court (see Canadian Kennel Club v. Continental Kennel Club, unreported, 9 December, 1997 (F.C.T.D.) per Rothstein, J., Court file T-1274-97. Moreover, an undertaking that lacks precision, as defendant's assurance of "reasonable notice" may do, is not likely to be enforceable (see R. v. Rowbotham (No. 2), (1977), 2 C.R. (3d) 222 at 233-234 (Ont. Co. Court).
[8] For the defendant it is urged that the plaintiff now seeks the equivalent of an injunction, an order enjoining the defendant from entering the market without first giving 60 days written notice, and that order would be without meeting the normal hearing requirements for injunctive relief. It is urged the Court has no jurisdiction to make such an order, but if it did have discretion to do so, any notice requirement should be limited to the ten days notice ordinarily applicable for seeking an interlocutory injunction pursuant to Rule 321.1 of the Court's Rules.
[9] I invited counsel to provide any further authority they had concerning the jurisdiction of the Court to order what the plaintiff characterized as, in effect, a variation of an undertaking by counsel for one party to his counterpart for the other party in pre-trial preparation. I acknowledge assistance from written comments of counsel for both parties.
[10] For the plaintiff it is urged that if an undertaking is to be enforceable, particularly by contempt proceedings, it must have precise terms, or the Court will be left, if an undertaking it is to be enforced as if it were a contract, with interpreting its terms in a common sense or reasonable way (see Coulter, [1993] O.J. No. 622 (Ontario Court - General Division)). In this Court, the plaintiff points to practice of assigning deadlines for compliance with undertakings given in discovery. That practice the defendant urges is merely in compliance with Rule 461, to compel answers to proper questions asked in discovery, and it is not based on independent authority to impose more precise terms by order of the Court in general undertakings of one counsel to another.
[11] In my opinion the Court has no authority to impose upon a party in litigation a bar to action that it is at liberty to undertake, for example, as in this case to enter the market with its product that may meet regulatory requirements, until the Court's process for determining rights of the parties, either as an interlocutory matter pending trial, or by a trial, has been completed. There can be no order in the nature of an injunction without assessing the interests of the parties in regular proceedings for such relief. In my view the effect of the order the plaintiff seeks is in the nature of an injunction, even though it be subject to conditions.
[12] Even if my perception is not shared and all that is at issue here is a variation of the terms of an undertaking, to add precision to an undertaking by one of counsel to his counterpart, it is my opinion the Court's discretion, if there be any, to intervene as requested would be exercised only in exceptional cases. I am not persuaded this is such a case.
[13] The application is dismissed. Costs, requested by the defendant, are ordered to be in the cause.
"W. Andrew MacKay"
Judge
Toronto, Ontario
March 5, 1998
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
COURT NO: T-2784-97
| STYLE OF CAUSE: KIRIN-AMGEN INC. and |
JANSSEN-ORTHO INC.
- and -
CANADA LTD./LTÉE
DATE OF HEARING: MARCH 2, 1998
PLACE OF HEARING: TORONTO, ONTARIO
REASONS FOR ORDER BY: MACKAY, J.
DATED: MARCH 5, 1998
APPEARANCES:
Mr. Donald M. Cameron
For the Plaintiffs
Mr. Stephen Lane
For the Defendant
SOLICITORS OF RECORD:
Smith Lyons
Suite 5800, Scotia Plaza
40 King Street West
Ottawa, Ontario
M5H 3Z7
For the Plaintiffs
Sim, Hughes, Ashton & McKay
6th Floor
330 University Avenue
Toronto, Ontario
M5G 1R7
For the Defendant
FEDERAL COURT OF CANADA
Date: 19980304
Docket: T-2784-97
Between:
JANSSEN-ORTHO INC.
Plaintiffs
- and -
CANADA LTD./LTÉE.
Defendant
REASONS FOR ORDER
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