Faulding Canada Inc. v. Pharmacia S.P.A., docket A-419-98

Date: 19990922

Docket: A-419-98

    

CORAM:      DÉCARY J.A.

         MacKAY J.A.

         McDONALD J.A.

BETWEEN:

     PHARMACIA S.P.A.

Appellant

(Defendant)

     - and-

FAULDING (CANADA) INC.

Respondent

(Plaintiff)

     Heard at Toronto, Ontario, Wednesday, September 22, 1999

     Judgment delivered orally from the Bench

     at Toronto, Ontario on Wednesday, September 22, 1999

REASONS FOR JUDGMENT BY:      McDONALD J.A.

Date: 19990922

Docket: A-419-98

CORAM:      DÉCARY J.A.

         MacKAY J.

         McDONALD J.A.

BETWEEN:

     PHARMACIA S.P.A.

Appellant

(Defendant)

     - and-

FAULDING (CANADA) INC.

Respondent

(Plaintiff)

     REASONS FOR JUDGMENT

     (Delivered orally from the Bench at Toronto, Ontario on

     Wednesday, September 22, 1999)

McDONALD J.A.:

[1]      This is an appeal from a decision of Madame Justice McGillis which reversed a decision of Mr. Giles, Associate Senior Prothonotary, whereby she determined that the respondent was not required to answer certain questions that were asked on discovery, as they were irrelevant in the context of the patent impeachment action brought by the respondent. The Associate Senior Prothonotary did not give any reasons for his decision.

[2]      Following the coming into force of the Patented Medicines (Notice of Compliance) Regulations, SOR/93-113, the respondent was required to take a position in relation to the appellant"s "037 patent before the Minister could issue a "Notice of Compliance" for the respondent"s solution product. Because of this statutory requirement, in 1997 the respondent commenced the present action seeking the impeachment of the appellant"s "037 patent on numerous grounds. The respondent"s motivation in bringing the impeachment action does not open the door to the discovery of the respondent"s confidential New Drug Submission information submitted to the Minister. The relevant issues in the pending action are restricted to the validity of the appellant"s "037 patent. A patent validity case must focus on the contents of the patent at issue and whether the patentee has complied with the necessary preconditions for a grant of patent monopoly. In this case we are in agreement with the trial Judge that the activities of the respondent are irrelevant to such an analysis.

[3]      Confidential information submitted to the Minister should also be offered some measure of protection against improper attempts to gain access to it. Although there is a broad right of examination, this Court has previously held that there are limits on that right of discovery; the Court will not allow the discovery process to be used as a fishing expedition (Crestbrook Forest Industries Ltd. v. Canada (M.N.R.), [1993] 3 F.C. 251 at 265 (C.A.) As Walsh J. noted in Burnaby Machine & Mill Equipment v. Berglund Industrial Supply Co. (1984), 81 C.P.R. (2d) 251 at 254, "the general tendency of the courts to grant broad discovery must be balanced against the tendency, particularly in industrial property cases, of parties to attempt to engage in fishing expeditions which should not be encouraged".

[4]      As a general rule an appellate court will not interfere with the exercise of discretion of a trial Judge unless that discretion was not exercised judicially, as he or she proceeded on some erroneous principle or misapprehension of the facts or where the order appealed from is not just and reasonable.

[5]      On the facts in this case the appellant has failed to convince us that there is any reviewable error in the comprehensive and thorough reasons of the trial Judge.

[6]      The appeal should be dismissed with costs to the respondent.

                                 "F.J. McDonald"

     J.A.

              FEDERAL COURT OF CANADA

     Names of Counsel and Solicitors of Record

DOCKET:                      A-419-98

STYLE OF CAUSE:                  PHARMACIA S.P.A.

Appellant

                                         (Defendant)

                         - and -

FAULDING (CANADA) INC.

Respondent

                                         (Plaintiff)

DATE OF HEARING:              WEDNESDAY, SEPTEMBER 22, 1999

PLACE OF HEARING:              TORONTO, ONTARIO

REASONS FOR JUDGMENT BY:          McDONALD J.A.

Delivered at Toronto, Ontario

on Wednesday, September 22, 1999

APPEARANCES:                  Mr. Gunars Gaikis

For the Appellant

                                    

                         Ms. Susan Beaubien

                                 For the Respondent

                            

SOLICITORS OF RECORD:          Smart & Biggar

                         Barristers & Solicitors

                         438 University Avenue

                         Suite 1500, Box 111

                         Toronto, Ontario

                         M5G 2K8

For the Appellant

                         Shapiro Cohen

                         Barristers & Solicitors

                         112 Kent Street, Suite 2001

                         Ottawa, Ontario

                         K1P 6P2

                                 For the Respondent

                         FEDERAL COURT OF APPEAL

Date: 19990922

Docket: A-419-98

                         BETWEEN:

PHARMACIA S.P.A.

     Appellant

     (Defendant)

                         - and -

                         FAULDING (CANADA) INC.

         Respondent

     (Plaintiff)

    

    

                        

                         REASONS FOR JUDGMENT