Date: 20001026
Docket: T-1747-00
BETWEEN:
AB HASSLE, ASTRAZENECA AB and
ASTRAZENECA CANADA INC.
Applicants
- and -
APOTEX INC. and THE MINISTER OF HEALTH
Respondents
REASONS FOR ORDER
NADON J.
[1] Before the Court is an application by the applicants under subsection 6(1) of the Patented Medicines (Notice of Compliance) Regulations (the "Regulations") for an order prohibiting the Minister from issuing a Notice of Compliance to the respondent Apotex Inc. ("Apotex") until after the expiration of patents in regard to which Apotex has served a Notice of Allegation pursuant to subparagraph 5(1)(b)(iv) of the Regulations.
[2] The applicants seek to set aside two orders made by Associate Senior Prothonotary Giles on October 16, 2000 in respect of motions brought by the applicants and Apotex. Firstly, the prothonotary adjourned sine die the applicants' motion for disclosure under subsection 6(7) of the Regulations, but to be spoken to on November 10, 2000. Secondly, the prothonotary adjourned to himself on November 10, 2000 the hearing of Apotex's motion for an order dismissing the applicants' application under subsection 6(1) of the Regulations. The learned prothonotary, in so adjourning Apotex's motion to himself, held that he had jurisdiction to hear and dispose of the said motion. In addition to adjourning the respondent's motion to November 10, 2000, the Prothonotary ordered the parties to comply with the schedule which appears in his order. Further, he allowed Apotex to file reply evidence and he fixed costs in the amount of $1,000.00 in favour of Apotex.
[3] The applicants, by their present motion, challenge both of the prothonotary's decisions. They challenge the orders on the following grounds:
| (a) As the prothonotary is without jurisdiction to hear the motions before him, he could not make the impugned orders. |
| (b) There was no proper basis for the schedule imposed by the prothonotary in the order which he made in respect of Apotex's motion. Hence, the schedule imposed by the prothonotary is procedurally unfair and prejudicial to the applicants. |
| (c) There was no proper basis for permitting Apotex to file reply evidence and for permitting Apotex to file a record subsequent to the filing of the applicants' record. |
| (d) There was no proper basis for fixing costs in the amount of $1,000.00, in any event of the cause, payable by the applicants in respect of the adjournment of Apotex's motion. |
[4] With respect to the jurisdiction issue, I am of the view that the prothonotary has jurisdiction to hear and dispose of the motions before him, and more particularly Apotex's motion for an order dismissing the applicants' application under subsection 6(1) of the Regulations on the ground that the application is redundant, scandalous, frivolous or vexatious or is otherwise an abuse of process. Rule 50(1)(a) and (c) of the Federal Court Rules, 1998 (the "Rules") provides as follows:
| 50. (1) A prothonotary may hear, and make any necessary orders relating to, any motion under these Rules other than a motion
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50. (1) Le protonotaire peut entendre toute requête présentée en vertu des présentes règles -- à l'exception des requêtes suivantes -- et rendre les ordonnances nécessaires s'y rapportant :
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| (a) in respect of which these Rules or an Act of Parliament has expressly conferred jurisdiction on a judge;
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a) une requête pour laquelle un juge a compétence expresse en vertu des présentes règles ou d'une loi fédérale;
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| (c) for summary judgment in a proceeding other than an action referred to in subsection (2);
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c) une requête pour obtenir un jugement sommaire dans une instance autre que celle visée au paragraphe (2);
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| [5] The applicants' submission is that the motions before the prothonotary, and more particularly Apotex's motion for dismissal, are not motions brought under the Rules, but motions brought pursuant to the Regulations. Paragraph 6(5)(b) of the Regulations reads as follows: |
| 6. (5) In a proceeding in respect of an application under subsection (1), the court may, on the motion of a second person, dismiss the application
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6. (5) Lors de l'instance relative à la demande visée au paragraphe (1), le tribunal peut, sur requête de la seconde personne, rejeter la demande si, selon le cas:
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| (b) on the ground that the application is redundant, scandalous, frivolous or vexatious or is otherwise an abuse of process.
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(b) il conclut qu'elle est inutile, scandaleuse, frivole ou vexatoire ou constitue autrement un abus de procédure.
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| [6] In my view, the position taken by the applicants cannot be correct. I agree entirely with the submission which Apotex makes at paragraph 27 of its written representations: |
| 27. Second, the Applicants' contention that Apotex' motion is not "a motion brought under the Federal Court Rules", as specified by Rule 50, is plainly incorrect. The motion was initiated by Notice of Motion, in accordance with Rule 359. In accordance with Rule 362, the Notice of Motion was served and filed at least two days before the date set out for the hearing of the motion. Similarly, Apotex filed evidence on the motion in accordance with Rule 363, and filed a Motion Record pursuant to Rule 364. It is accordingly clear that Apotex' motion is a motion under the Rules. |
| [7] In my view, it cannot be disputed that the motions before the prothonotary are motions brought under the Rules. I find support for that view in the decision of MacKay J. in Brain Tumor Foundation of Canada v. Starlight Foundation et al., [1999] 4 C.P.R. (4th) 192. The matter before Mr. Justice MacKay was an appeal from a judgment rendered by prothonotary Richard Morneau on September 1, 1999, whereby the learned prothonotary dismissed, inter alia, the appellant's appeal from a decision, dated March 3, 1999, of the Registrar of trademarks. One of the issues before Mr. Justice MacKay was the authority of the prothonotary to dismiss an appeal taken to this Court pursuant to section 56 of the Trade-marks Act. |
| [8] At pages 201 and 202 of his decision, MacKay J. dealt as follows with the issue of jurisdiction: |
| [23] On the second issue it is urged that since the Prothonotary is expressly prohibited from determining a motion for summary judgment (Federal Court Rules, 1998, Rule 50(1)(c)), the dismissal of the applicant's statutory appeal is not a matter within the prothonotary's jurisdiction. In a technical sense the motion before the Prothonotary was not one for summary judgment. Nevertheless, it is urged that the decision to strike is the equivalent of a summary dismissal of the appeal, despite the applicant's statutory right to proceed to question the Registrar's decision. |
| [24] In my opinion, the Prothonotary had authority under the Federal Court Act and the Court's Rules to decide on the respondent's motion to strike the appeal. That was not a motion in respect of which the Trade-marks Act expressly confers jurisdiction on a judge, nor was it a motion for summary judgment, matters excluded under paragraphs (a) and (c) of Rule 51(1) from the authority of a Prothonotary. Consistent with his general authority to deal with all motions except those expressly excluded by Rule 50(1), in my opinion, it was not beyond that authority for the Prothonotary to deal with the motion in this case. |
| [9] As is apparent from a reading of the Regulations, subsection 6(5) thereof confers jurisdiction on the Court. Therefore, the motions are not motions that a prothonotary is barred from hearing. Further, like MacKay J. in Brain Tumour Foundation of Canada, supra, I am of the view that Apotex's motion herein is not a motion for summary judgment. Thus, the applicants fail on ground one. |
| [10] I now turn to the other grounds raised by the applicants. These grounds concern the exercise of discretion by the prothonotary in regard to the matters before him. The test for reviewing discretionary decisions made by a prothonotary is not in dispute. In Canada v. Aqua-Gem Investments Ltd., [1993] 2 F.C. 425, Mr. Justice MacGuigan, for the Court of Appeal, explained the test, at pages 262-263, as follows: |
I also agree with the Chief Justice in part as to the standard of review to be applied by a motions judge to a discretionary decision of a prothonotary. Following in particular Lord Wright in Evans v. Bartlam, [1937] A.C. 473 (H.L.) at page 484, and Lacourcière J.A. in Soicevski v. Casement (1983), 43 O.R. (2d) 436 (Div. Ct.), discretionary orders of prothonotaries ought not to be disturbed on appeal to a judge unless:
| (a) they are clearly wrong, in the sense that the exercise of discretion bythe prothonotary was based upon a wrong principle or upon a misapprehension of the facts, or |
| (b) they raise questions vital to the final issue of the case. |
Where such discretionary orders are clearly wrong in that the prothonotary has fallen into error of law (a concept in which I include a discretion based upon a wrong principle or upon a misapprehension of the facts), or where they raise questions vital to the final issue of the case, a judge ought to exercise his own discretion de novo.
In Visx Inc. v. Nidek Co., [1996] 72 C.P.R. (3d) 19, the Federal Court of Appeal made it clear that discretionary orders in an interlocutory matter will only be reviewed if the discretion has not been exercised judicially. Isaac C.J. (as he then was), at page 22, explained the matter as follows:
In my respectful view, where, as here, an appeal is taken from a discretionary order of the Motions Judge in an interlocutory matter, a disposition most consistent with the optimum use of judicial resources and the optimum conservation of judicial time should focus not on the merits of the contentions before the Motions Judge, but rather on the question of whether or not the Motions Judge exercised his or her discretion judicially in the making of the order. In other words, on appeal, the merits of the contentions should only be dealt with by counsel to the extent required in order to demonstrate that the discretion of the Motions Judge was not exercised judicially. I have concluded that the appellants did not succeed in demonstrating that the Motions Judges in the three appeals before us failed to exercise their discretion judicially, and therefore it follows that all three appeals must be dismissed.
[11] The applicants have not succeeded in convincing me that the prothonotary failed to exercise his discretion judicially. Consequently, the applicants' motion for an order setting aside the orders made by the prothonotary on October 16, 2000 is dismissed. Apotex shall have its costs.
"Marc Nadon"
J.F.C.C.
Toronto, Ontario
October 26, 2000
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
| STYLE OF CAUSE: AB HASSLE, ASTRAZENECA AB and |
Applicants
| APOTEX INC. and THE MINISTER OF HEALTH |
Respondents
| DATE OF HEARING: MONDAY, OCTOBER 23, 2000 |
| PLACE OF HEARING: TORONTO, ONTARIO |
| REASONS FOR ORDER BY: NADON J. |
DATED: THURSDAY, OCTOBER 26, 2000
| APPEARANCES BY: Mr. Gunars A. Gaikis |
| Mr. Andrew R. Brodkin and Ms. Julie Perrin |
| For the Respondent Apotex Inc. |
| SOLICITORS OF RECORD: SMART & BIGGAR |
| 438 University Avenue, Suite 1500 |
| GOODMAN PHILLIPS & VINEBERG |
| 250 Yonge Street, Suite 2400 |
| For the Respondent Apotex Inc. |
| Deputy Attorney General of Canada |
| For the Respondent The Minister of National Health and Welfare |
FEDERAL COURT OF CANADA
Date: 20001026
Docket: T-1747-00
Between:
| AB HASSLE, ASTRAZENECA AB and |
Applicants
| APOTEX INC. and THE MINISTER OF HEALTH |
Respondents
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