Date: 20040211
Citation: 2004 FC 220
Toronto, Ontario, February 11th, 2004
Present: Roger R. Lafrenière, Esquire
Prothonotary
BETWEEN:
Docket: T-3197-90
APOTEX INC. and NOVOPHARM LTD.
Plaintiffs
and
THE WELLCOME FOUNDATION LIMITED
Defendant
AND BETWEEN:
Docket: T-2624-91
THE WELLCOME FOUNDATION LIMITED
and GLAXO WELLCOME INC.
Plaintiffs
and
INTERPHARM INC., APOTEX INC.
and ALLEN BARRY SHECHTMAN
Defendants
AND BETWEEN:
Docket: T-2983-93
THE WELLCOME FOUNDATION LIMITED
and GLAXO WELLCOME INC.
Plaintiffs
and
NOVOPHARM LTD.
Defendant
REASONS FOR ORDER AND ORDER
[1] A case management conference was held with counsel for the parties on February 3, 2004 for the purpose of setting a schedule for the hearing of a damages reference in the proceedings and related relief. During the course of the conference, the parties agreed on a schedule for the delivery of the Statement of Issues of the Defendants, as well as a deadline for the exchange of their respective list of documents relevant to the issues on the reference. The parties disagreed, however, on whether the scheduling order should include express language requiring the Defendants to list and produce all documents in their possession or control regarding the acquisition, manufacture, use, sale or other disposal of product containing zidovudine from the date of first manufacture to present.
[2] The issue to be determined is whether it is appropriate, at this stage, to require the Defendants to list and produce the specific documents requested by the Plaintiffs.
Background
[3] In 1988, Wellcome Foundation, Ltd. and Glaxo Wellcome, Inc. (collectively "the Plaintiffs"), were awarded a Canadian patent for the use of AZT for the treatment and prophylaxis of Human Immunodeficiency Virus (HIV) infection. On December 5, 1990, Apotex Inc. and Novopharm Ltd. (collectively "the Defendants") instituted an action in Canada (T-3197-90) for a declaration that Glaxo's patent was invalid and that their proposed generic AZT products would not infringe the patent. On October 16, 1991, Glaxo commenced an action (T-2624-91) against Interpharm Inc., Apotex Inc. and Allen Barry Shechtman, alleging, inter alia, that their proposed products infringed various claims in Glaxo's patent. On December 20, 1993, Glaxo commenced a similar action for infringement against Novopharm (T-2983-93).
[4] On the consent of the parties, it was ordered that any issue of fact as to the quantum of damages flowing from, or the Defendants' profits arising from, any infringement of the Plaintiffs' right in the actions be the subject of a reference after trial under Rule 500 et seq. (now Rule 153 et seq.), if it then appeared that such issue is required to be decided. The three actions were consolidated and heard together.
[5] On March 25, 1998, Wetston J., found, after a trial, that many of the claims contained in the patent were valid. He concluded that the Defendants had infringed those claims and were entitled to damages. On October 26, 2000, the Federal Court of Appeal allowed an appeal with respect to claims not restricted to the use of AZT, but dismissed the appeals in all other respects. On December 5, 2002, the Supreme Court of Canada found the Plaintiffs' patent to be valid.
[6] On November 7, 2003, the Plaintiffs filed a requisition for a reference to quantify the damages that they have allegedly sustained as a result of the Defendants' infringement. They submitted at same time a Statement of Issues. By written Directions dated December 11, 2003, the Chief Justice directed that the reference be conducted as a specially managed proceeding. Mr. Justice Hugessen was designated as Case Management Judge, and I was assigned to assist in the management of this matter. The Chief Justice reserved to himself the right to designate, at a later time, the referee for the purpose of hearing the reference.
[7] After counsel for the parties were canvassed regarding dates of availability, a case management conference was scheduled to proceed on February 3, 2004. In advance of the meeting, counsel for the Plaintiffs submitted a proposed agenda, including a draft scheduling order leading up to the hearing of the Reference. The Defendants elected not to file any materials in response.
Analysis and conclusion
[8] The Defendants object to any terms being included in the scheduling order that would require them to produce specific documents. They submit that it is premature to determine the relevance of the documents requested by the Plaintiffs and urge the Court to defer the determination of the scope of production until after the lists of documents have been exchanged between the parties. The Defendants claim to have concerns that the production requirement is overly broad and covers irrelevant information.
[9] In my view, the Defendants have no basis for refusing to produce the requested documents. One must bear in mind that the Defendants have been found conclusively to have infringed the Plaintiffs patent. The only issue that remains to be determined on the reference is the quantum of damages suffered by the Plaintiffs during the infringing period. Damage assessments are not particularly complex, even when the amounts claimed are substantial.
[10] Dealing piece-meal with every procedural issue, and deferring rulings, is not conducive to proper case management. To proceed in such manner would be an abdication of my role as case manager, and would simply frustrate the orderly conduct and completion of the reference. More than 100 years ago, Lord Esher in Ungar v. Sugg, [1892] 9 R.P.C. 113 (CA) at 116-117 aptly observed that patent litigation often became overly complex and costly:
"It used to be said that there was something catching in a horse case: that it made the witnesses perjure themselves as a matter of course. It seems to me that there is something catching in a patent case, which is that it makes everybody argue, and ask questions to an interminable extent -a patent case with no more difficult question to try than any other case instead of lasting six hours is invariably made to last at least six days, if not twelve. I am sure there ought to be a remedy for it.
¼
Now, what is the result of all this? Why, that a man had better have his patent infringed, or have anything happen to him in this world, short of losing all his family by influenza, than have a dispute about a patent. His patent is swallowed up, and he is ruined. Whose fault is it? It is really not the fault of the law; it is the fault of the mode of conducting the law in a patent case. That is what causes all this mischief.
[11] Rule 156 of the Federal Court Rules, 1998 requires that a reference be conducted in the simplest, least expensive and most expeditious manner. In order to ensure that this objective is met, it is essential that a decision regarding the scope of production of documents be made as soon as practicable.
[12] Relevance is the primary consideration regarding production of documents. It must be considered from the perspective of the issues to be determined on the reference, and whether the requested information may assist in making or defending the case for damages. While I appreciate that the Defendants may be concerned about producing irrelevant documents, I cannot accept that the Plaintiffs should have to wait until a list of documents are served by the Defendants before they learn that relevant and important documents will not be produced.
[13] Pursuant to Rule 157, a referee may order the production of any document or other material relevant to a matter in issue. As case manager of the reference, I have the same authority. The parties agree that disclosure of documents is a matter of relevance, not discretion. Moreover, a litigant is obliged to list every relevant document in its possession, even those documents which do not have to be produced: Skoye v. Bailey et al. [1971] 1 W.W.R. 144 at 145 (Alta. C.A.); Re/Max Real Estate (Edmonton) Ltd. v. Border Credit Union Ltd. [1988] 6 W.W.R. 146. Based on a review of the pleadings, the judgments issued in these proceedings and the Statement of Issues filed, I conclude that the documents requested by the Plaintiffs are prima facie relevant to the issues on the reference and ought therefore be listed and produced.
THIS COURT ORDERS that
14. The Statement of Issues and Requisition of the Plaintiffs dated November 7, 2003 shall form part of the record in this proceeding.
15. The within Reference shall proceed according to the following schedule:
(a) Apotex Inc., Interpharm Inc., and Novopharm Ltd. (collectively, the "Defendants") shall deliver a Response to the Statement of Issues, if any, no later than Friday, March 5, 2004.
(b) The Plaintiffs shall deliver their Replies to the Defendants' Responses, if any, no later than Friday, March 19, 2004.
(c) The parties shall each deliver a list of relevant documents on or before Friday, June 4, 2004. Documents may be produced in electronic format.
(i) It is expressly ordered that the Defendants shall list and produce any and all documents that were prepared or maintained in the usual and ordinary course of business evidencing the acquisition, manufacture, use, sale, or other disposal of any product containing zidovudine, in Canada or elsewhere, between 1990 (or the date of first manufacture, if earlier) and the present.
(ii) Further, it is expressly ordered that Apotex Inc. shall produce any documents belonging to Interpharm Inc. evidencing the acquisition, manufacture, sale or other disposal of any product containing zidovudine, in Canada or elsewhere, between 1990 (or the date of first manufacture, if earlier) and the present.
16. This Order shall not preclude the Defendants from requesting, prior to June 4, 2004, an Order that the Plaintiffs produce particular documents or categories of documents.
17. A Case Management Conference shall be heard on Tuesday, April 6, 2004 at 11:00 a.m. to review the status of this matter with Prothonotary Lafrenière, unless the parties all agree that there are no issues to be dealt with at such a Case Management Conference, and the Court is advised accordingly.
18. The parties shall submit to the Court, no later than Wednesday, June 30, 2004, a draft Order setting out the schedule for examinations for discovery. In the event that the parties are unable to agree on a schedule, counsel for the Plaintiffs shall write to the Court to request a Case Conference prior to June 30, 2004.
"Roger R. Lafrenière"
Prothonotary
FEDERAL COURT
Names of Counsel and Solicitors of Record
DOCKET: T-3197-90
STYLE OF CAUSE: APOTEX INC. and NOVOPHARM LTD.
Plaintiffs
and
THE WELLCOME FOUNDATION LTD.
Defendants
DOCKET: T-2624-91
STYLE OF CAUSE: THE WELLCOME FOUNDATION LIMITED
and GLAXO WELLCOME INC.
Plaintiffs
and
INTERPHARM INC., APOTEX INC. and ALLEN
BARRY SHECHTMAN
Defendants
DOCKET: T-2983-93
STYLE OF CAUSE: THE WELLCOME FOUNDATION LIMITED
and GLAXO WELLCOME INC.
Plaintiffs
and
NOVOPHARM LTD.
Defendant
PLACE OF HEARING: TORONTO, ONTARIO
DATE OF HEARING: FEBRUARY 4, 2004
REASONS FOR ORDER
AND ORDER BY: LAFRENIÈRE P.
DATED: FEBRUARY 11, 2004
APPEARANCES BY:
Mr. Brian Morgan For the Plaintiff
Mr. Harry Radomski
Mr. Richard Naiberg For the Plaintiff
Mr. Patrick Kierans
Ms. Jane Caskey
Mr. Jason Markwell For the Defendant
SOLICITORS OF RECORD:
Brian Morgan
Osler, Hoskin & Harcourt LLP
Toronto, Ontario For the Plaintiff
Harry Radomski
Goodmans
Toronto, Ontario For the Plaintiff
Mr. Patrick Kierans
Ogilvy Renault
Toronto, Ontario For the Defendant
FEDERAL COURT
Date: 20040211
BETWEEN:
Docket: T-3197-90
APOTEX INC. and NOVOPHARM LTD.
Plaintiffs
and
THE WELLCOME FOUNDATION LTD.
Defendant
AND BETWEEN:
Docket: T-2624-91
THE WELLCOME FOUNDATION LIMITED
and GLAXO WELLCOME INC.
Plaintiffs
and
INTERPHARM INC., APOTEX INC. and
ALLEN BARRY SHECHTMAN
Defendants
AND BETWEEN:
Docket: T-3197-90
THE WELLCOME FOUNDATION LIMITED
and GLAXO WELLCOME INC.
Plaintiffs
and
NOVOPHARM LTD.
Defendant
________________________
REASONS FOR ORDER
AND ORDER
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