Pfizer Canada Inc. v. Apotex Inc., docket T-1714-95

     T-1714-95

BETWEEN:

     PFIZER CANADA INC. and

     PFIZER CORPORATION,

     Applicants,

     - and -

     APOTEX INC. and

     THE MINISTER OF NATIONAL HEALTH AND WELFARE,

     Respondents.

     REASONS FOR ORDER

REED J.

     (reasons for order given orally from the bench on October 27, 1997)

     The respondent brought a motion to have volume VII of the applicants' Application Record, together with the paragraphs of the applicants' Memorandum of Argument that relate thereto struck from the record. Both volume VII and the Memorandum of Argument were filed on September 30, 1997. Volume VII contains the file history of what is referred to as the 3032 Patent. It is evidence that was not in the record as of September 30, 1997.

     The Court ordered schedule for the pre-hearing conduct of this application provided that the applicants' reply evidence was to be filed by February 14, 1996. The applicants first learned that the respondent Apotex Inc. was relying on the 3032 Patent as part of its case in June of 1996, when Mr. Sherman and Dr. McClelland were being cross-examined on the affidavits they had filed in support of the respondent. The 3032 Patent was made part of the record at that time. No request was made to the Court, by the applicants, to file further evidence as part of their case.

     The appropriate procedure for an applicant who wishes to file additional evidence, as a result of material disclosed on cross-examination of the opposing party's affiants, is to bring a motion seeking the leave of the Court to do so. Such a motion gives the opposing party an opportunity to present arguments as to why the material should not be included in the record, but, more importantly, it also gives the opposing party an opportunity to seek leave of the Court, if leave is granted to add the new material, to adjust the schedule that has been set for pre-hearing proceedings to allow the party to file rebuttal evidence, if appropriate, and to test, before the hearing date, the new evidence that is being filed. The 1600 Rules contemplate that in proceedings governed by those rules: the parties will file their evidence; the tribunal record will be received; and, then, application records will be prepared on the basis of the material on the record. While Rule 1608 does not state what may be put in an applicant's Supplementary Application Record, to allow new evidence to be included therein by unilateral decision of the applicant does not accord with the procedure provided for in the 1600 Rules.

     Counsel for the applicants argues that a motion to file additional evidence was not made because he did not know what argument the respondent planned to make in relation to 3032 Patent until the respondent's Application Record was filed. I cannot conclude that the respondent's Memorandum of Argument, which was filed on September 2, 1997, contains arguments or positions relating to the 3032 Patent that would be a surprise to the applicants. Even if that were so, however, the correct procedure was still to apply to the Court for leave to file the additional evidence. If the material was allowed to become part of the record, in the manner that the applicants seek to have this occur, the respondent would suffer prejudice.

     Counsel for the applicants argued that the respondent's motion to remove Volume VII and the related parts of the applicants' Memorandum of Argument should not be heard because two clear days notice thereof had not been given. I granted leave to hear the motion on short notice because I am of the view that no real prejudice existed for the applicants (notice was given on Thursday, October 23, 1997) and because counsel for the respondent could have objected, in the course of the hearing on the merits, to any reliance being placed by the Court on the material that was improperly incorporated into the application record, without a formal motion for its removal having been made.

     For the reasons given the motion to strike the materials from the record was granted. Counsel for the applicants was given an opportunity to make a motion, at the hearing, seeking leave to add the new material. This, of course, would carry with it the possibility that if that motion were granted, the respondent might seek an adjournment of the hearing of the application on its merits to provide time for a considered analysis and response to the new evidence. Counsel for the applicants elected not to make such a motion.

     I note that no consideration has been given, for the purpose of these reasons, to whether the file record material is, in any event, relevant or admissible for the purposes of the within application.

     An order issued for the reasons given.

OTTAWA, Ontario.

October 29, 1997.

                             Judge