Date: 20101210
Docket: A-387-10
Citation: 2010 FCA 338
Present: LAYDEN-STEVENSON
J.A.
BETWEEN:
ELI LILLY AND COMPANY
Appellant
and
TEVA CANADA LIMITED
(formerly known as NOVOPHARM LIMITED)
Respondent
REASONS FOR ORDER
LAYDEN-STEVENSON J.A.
[1]
The appellant and the respondent are in
substantial agreement as to the contents of the appeal book. They have been
unable to agree with respect to a few specific items. Hence, the motion before
me is for the purpose of resolving those areas upon which they do not agree.
[2]
The appeal arises out of an action where the
respondent sought to impeach Canadian Patent 2,209,735, owned by the appellant.
The trial judge found the patent invalid for want of utility.
[3]
The appellant submits that a number of documents
should be included in the appeal book as they are necessary and relevant to
issues on appeal. It proposes to include the disputed documents in a separate
volume of the appeal book, specifically in volume 16. I will address each of
the disputed items.
[4]
The appellant argues that the trial judge erred
in failing to limit Dr. Virani’s expertise and subsequent testimony. To this
end, it proposes to include exhibit P-C, which contains Dr.Virani’s proposed
expert qualifications. The respondent maintains that P-C constitutes a brief of
the proposed expert qualifications, objections and argument of counsel. It was
not offered as evidence at the trial. In my view, if there is to be argument on
appeal regarding the designation of expertise and its subsequent impact, it
would be helpful to the court to have the qualifications of the expert
available to it. Therefore, the proposed expert qualifications of Dr. Virani,
exclusive of any other material that may be contained in the brief, may be
included in the appeal book.
[5]
The next items relate to an alleged procedural
error on the part of the trial judge, that is, permitting the respondent to
enter the reply testimony of Dr. Virani during the respondent’s case-in-chief.
The appellant claims that the reply expert report of Dr. Virani dated April 30,
2010 is necessary to enable the court to understand the nature of the prejudice
arising from the trial judge’s error in procedure. The appellant urges error on
the side of caution in this respect. I do not believe the reply expert report
will be of assistance to the court. Dr. Virani’s reply report responded to the
appellant’s expert, Dr. Barkley, who was not called at trial. Consequently, the
Virani reply report was withdrawn and did not form part of the evidence. There
is no reference to it in the trial judge’s reasons and I see no need to include
it in the appeal book.
[6]
Document D-H is a letter to the court, written
by counsel for the respondent, explaining the outcome of an attempt to enforce
letters rogatory for MGH witnesses. The appellant sought to introduce the
letter as an exhibit. No ruling was ever made. On this basis, the appellant
claims that the letter should be in the appeal book because it was improperly
excluded at trial. This particular argument relates to the trial judge’s
comment that the appellant was not able “to secure the voluntary attendance of
any witness with direct knowledge of the Massachusetts
General Hospital clinical study (the MGH study) that constituted [the appellant’s]
evidence of utility.” That, however, was not the end of the matter. The trial
judge went on and explicitly stated that he drew no adverse inference in this
respect. Therefore, the letter would not be of assistance to the court.
[7]
The last items can be addressed together. They
are paragraph 64 and exhibits 2 and 15 from the expert report of Dr. James John
McGough dated April 21, 2009. They were ruled inadmissible by the trial judge
and were therefore not before him. The accepted rule is that the appeal book is
restricted to documents which were in evidence before the trial judge. Evidence
that was not before the trial judge may only be introduced in special
circumstances pursuant to an order under Rule 351 of the Federal Courts
Rules. I have not been persuaded that special circumstances exist here. The
appellant’s submission that the items are admissible as an exception to the
hearsay rule (failing to state the exception) is not persuasive. The appellant
can make its arguments on appeal without the inclusion of the document in the
appeal book.
[8]
There is also disagreement about the manner in
which the exhibits are to be described in the appeal book. The appellant has
listed the exhibits as they were listed at trial. The respondent suggests that
the descriptions are, in some cases, inadequate. They were sufficient at trial
because the trial judge was already familiar with the evidence. More complete
descriptions, according to the respondent, would be helpful for the appeal
court since it will be seeing the materials for the first time. I see no reason
to deviate from the descriptions used at trial and am confident that the panel
assigned to hear the case will be able to figure it out.
[9]
One final point, in the appellant’s proposed
volume 16, the last item listed is described as “Volume 5 Transcript, May 18,
2010, page 1074, line 19 to page 1106, line 3. I am unable to locate any
reference to this item in the submissions of either party. Since I have no idea
what it relates to, I can only assume that it is an item of contention because
it is listed in volume 16. Given that I have neither a request nor argument
from the appellant in this regard, absent agreement, it should not be included
in the appeal book.
[10]
In view of my conclusions, it will not be
necessary to have a separate volume solely to include the proposed expert
qualifications of Dr. Virani. One possibility is that it could be included as
item 20.E in volume 6.
“Carolyn
Layden-Stevenson”
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