Date: 20100407
Docket: T-811-08
Citation: 2010 FC 368
Ottawa, Ontario, April 7, 2010
PRESENT: The Honourable Mr. Justice Barnes
BETWEEN:
NOVOPHARM
LIMITED
Plaintiff
and
ELI
LILLY AND COMPANY
Defendant
REASONS FOR ORDER AND ORDER
[1]
Eli
Lilly and Company (Eli Lilly) brings two appeals from interlocutory decisions
made by the Case Management Prothonotary, Kevin Aalto (Prothonotary). The
first appeal concerns a decision allowing Novopharm Limited (Novopharm) a late
amendment to its Statement of Claim. The second appeal concerns a decision
made without reasons refusing to order the production of a prior art search
conducted by one of Novopharm’s expert witnesses.
[2]
Whether
or not my authority is de novo, I can identify no error in the
Prothonotary’s approach to Novopharm’s motion to amend and, indeed, I would
endorse the reasons he gave in allowing the amendment to the Statement of
Claim.
[3]
I
do not agree with Eli Lilly’s submission that the amendment raises issues that
can be characterized as purely vague and speculative. As the Prothonotary
noted in his reasons, the Massachusetts General Hospital Pilot Study (Pilot
Study) that underpins Novopharm’s fresh allegation of anticipation has been
known to the parties for some time. Apparently that Pilot Study is the basis
of Eli Lilly’s assertion of utility.
[4]
As
a result of fairly recent document disclosure by the Massachusetts General
Hospital, Novopharm believes that it can establish anticipation on the strength
of disclosures made in connection with the Pilot Study that pre-date the
priority date of the '735 Patent. The Prothonotary noted the potential
significance of these new documents and he found that they were sufficient to
support the amendment. I agree with his assessment of that evidence.
[5]
Eli
Lilly also contends that this amendment puts it in a position of marked
disadvantage and will deprive it of a fair trial because it fails to contain
sufficient information to allow it to mount a defence. In particular, it says
that Novopharm should have pleaded the names of the Pilot Study patients (even
though that information is not known to either Eli Lilly or Novopharm) thereby
opening up the possibility for pre-trial interviews and the issuance of trial
subpoenas.
[6]
Here,
too, I agree with the Prothonotary when he characterized this argument as a
problem of proof for trial and not an impediment to a pleading amendment. The
difficulties noted by Eli Lilly would have existed regardless of when this
amendment was made and they are, at this stage, largely hypothetical. Indeed,
given the nature of Novopharm’s anticipation argument, it is difficult to see
how evidence from Pilot Study patients would be useful to Eli Lilly in its
defence to this allegation.
[7]
For
the reasons given by the Prothonotary and as expressed above, this appeal is
dismissed with costs payable by Eli Lilly.
[8]
With
respect to Eli Lilly’s second appeal, I am similarly not prepared to interfere
with the Prothonotary’s exercise of discretion. In my view what Eli Lilly is
attempting is a form of discovery of an expert which is not permitted under our
Rules: see Canadian Council of Professional Engineers et al. v. Memorial
University of Newfoundland (1999), 159 F.T.R. 55, 84 A.C.W.S. (3d) 653
(F.C.T.D.). A case for disclosure may be made at trial and some inconvenience
may be the result but that is not a sufficient basis for overturning a
case-management decision like this one. I would add that I subscribe to the
views expressed by Justice Roger Hughes in AstraZeneca Canada Inc. v. Apotex
Inc., 2008 FC 1301, [2009] 4 F.C.R. 243 where he discussed the problems of
unfettered discovery in this type of litigation and concluded as follows:
[19] Prothonotaries of this Court
are burdened, to a large extent, with motions seeking to compel answers to
questions put on discovery. Often hundreds of questions must be considered.
Hours and often days are spent on such motions. It appears that in many cases
the parties and counsel have lost sight of the real purpose of discovery, which
is directed to what a party truly requires for trial. They should not slip into
the "autopsy" form of discovery nor consider discovery to be an end
in itself.
[20] A determination made by a prothonotary
following this arduous process ought not to be disturbed unless a clear error
as to law or as to the facts has been made, or the matter is vital to an issue
for trial. Where there has been an exercise of discretion, such as weighing
relevance against onerousness, that discretion should not be disturbed. The
process is not endless. The parties should move expeditiously to trial.
[9]
In
the result, these appeals are dismissed with costs payable by Eli Lilly.
ORDER
THIS COURT ORDERS that Eli Lilly's appeals are dismissed with costs payable to Novopharm.
“ R. L. Barnes ”
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