Date: 20040816
Docket: T-294-96
Citation: 2004 FC 1131
OTTAWA, ONTARIO, THIS 16th DAY OF AUGUST 2004
Present: THE HONOURABLE MR. JUSTICE MARTINEAU
BETWEEN:
APOTEX INC.
Plaintiff
(Defendant by Counterclaim)
- and -
MERCK & CO. INC. and
MERCK FROSST CANADA INC.
Defendants
(Plaintiffs by Counterclaim)
REASONS FOR ORDER AND ORDER
[1] Pursuant to Rule 51 of the Federal Court Rules, 1998, S.O.R./98-106, Merck & Co. Inc. and Merck Frosst Canada & Co. (collectively Merck) are cross-appealing from the order of Prothonotary Tabib dated February 4, 2004, insofar as it is ordered that:
The Defendants shall, within such period of time as may be determined by the case management judge or prothonotary, serve a further and better affidavit of documents, to include all documents relevant to their loss of sales and profits attributable to the Plaintiff's activities found to be infringing.[1]
[2] The order made by the prothonotary is both interlocutory and discretionary. The standard of review of such order has been conclusively set out by MacGuigan J.A. in Canada v. Aqua-Gem Investments Ltd. (1993), 149 N.R. 273 (F.C.A.), [1993] 2 F.C. 425 at pp. 462-463 (F.C.A.) (see also Merck & Co. v. Apotex Inc. (2003), 315 N.R. 175 at paras. 17-19 (F.C.A.), [2003] F.C.J. No. 1925 (F.C.A.) (QL)). In Z.I. Pompey Industrie v. ECU-Line N.V., [2003] 1 S.C.R. 450 at para.18 (S.C.C.), (2003), 224 D.L.R. (4th) 577 (S.C.C.) Bastarache J. indicates as follows:
Discretionary orders of prothonotaries ought to be disturbed by a motions judge only where (a) they are clearly wrong, in the sense that the exercise of discretion was based upon a wrong principle or a misapprehension of the facts, or (b) in making them, the prothonotary improperly exercised his or her discretion on a question vital to the final issue of the case: Canada v. Aqua-Gem Investments Ltd., [1993] 2 F.C. 425 (C.A.), per MacGuigan J.A., at pp. 462-63.
[3] In light of the foregoing, unless it is shown that the order of the prothonotary is clearly wrong or that it was based upon a wrong principle or misapprehension of the facts, or that the prothonotary improperly exercised her discretion on a question vital to the final issue of the case, this Court will not intervene.
[4] The prothonotary justifies her order in the following manner at page 5:
Finally, I agree with Apotex that the schedule set out by Justice McKeown as to the order of discoveries on damages was set aside by the Court of Appeal, that the Court of Appeal's judgment does not provide for separate discovery phases for the issue of entitlement, election and damages, and that no bifurcation order currently exists. Accordingly, unless, by a bifurcation order or by a case management order, the Court orders that the trial of the issues of entitlement and damages be split or that discoveries should proceed in two distinct stages, the issue of damages is subject to the same discovery process and Merck must include in its affidavit of documents the document relevant to a claim for damages.
As mentioned at the hearing, Merck's motion to set a schedule for discoveries is referred to Prothonotary Lafrenière, as case management Prothonotary. The Plaintiff shall submit a letter providing the dates of availability of counsel for the hearing of the motion and the estimated duration, and advise whether the matter should be heard in person or by teleconference.
My conclusion that Merck's affidavit of documents should include documents relevant to Merck's damages should not be taken as a determination as to the propriety of a bifurcation order or a case management order splitting the discovery stage.
[5] It is the Merck's position that the Prothonotary erred by making an order which is inconsistent and varies the Judgement of the Court of Appeal in Apotex Inc. v. Merck & Co. (2003), 26 C.P.R. (4th) 278 (F.C.A.), [2003] F.C.J. No. 1034 (F.C.A.) (QL). I kindly disagree with Merck. The order made by the prothonotary is not, in any way, inconsistent with said judgment. The Federal Court of Appeal struck out inter alia paragraph 8 of McKeown J.'s order of May 31, 2002, which expressly provided certain "pre-hearing steps", and more particularly separate discovery phases for the issues of entitlement, election and damages, as well as a schedule in this regard. In the case at bar, I note that the prothonotary makes the cautionary remark that the "conclusion that Merck's affidavit of documents should include documents relevant to Merck's damages should not be taken as a determination as to the propriety of a bifurcation order or a case management order splitting the discovery stage". Indeed, Merck has recognized the accuracy of the prothonotary's observation that all issues presently remain open for discovery and has moved, by way of a separate motion, to bifurcate the issues of entitlement from those issues relating to damages and profits. Said motion to bifurcate (which is allowed concurrently with the dismissal of the present cross-appeal) is the object of a separate order and separate reasons for order, 2004 FC 1133. Accordingly, the present cross-appeal must fail.
ORDER
THIS COURT ORDERS that Merck's cross-motion appealing the order of Prothonotary Tabib dated February 4, 2004, be dismissed with costs in favour of Apotex.
"Luc Martineau"
Judge
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-294-96
STYLE OF CAUSE: APOTEX INC. v. MERCK & CO. INC. ET AL.
PLACE OF HEARING: OTTAWA, ONTARIO
DATE OF HEARING: AUGUST 3, 2004
REASONS FOR ORDER
AND ORDER: THE HONOURABLE MR. JUSTICE MARTINEAU
DATED: AUGUST 16, 2004
APPEARANCES:
Mr. G. Alexander Macklin FOR PLAINTIFF
Ms. Connie Too (Responding party to the motion)
Mr. Nando DeLuca FOR DEFENDANT
(Moving party in the motion)
SOLICITORS OF RECORD:
Gowling Lafleur Henderson LLP FOR PLAINTIFF
OTTAWA, ONTARIO (Responding party to the motion)
Goodmans LLP FOR DEFENDANT
TORONTO, ONTARIO (Moving party in the motion)
[1] However, the prothonotary discarded, as being entirely irrelevant, all documents in Merck's possession, custody or control regarding Merck's delay in prosecuting the '349 patent, the mislabeling by Merck of vasotec tablets as containing enalapril maleate, the "tenous nature" of the 349 patent and the market interference of Merck in respect of Apotex's attempts to sell its product, which Apotex also sought to be included in a further and better affidavit of documents. The appeal brought by Apotex with respect to the prothonotary's refusal to include said documents was dismissed with costs by this Court on July 27, 2004: Apotex Inc. v. Merck & Co. Inc., T-294-96, 2004 FC 1038. (Now under appeal, file A-411-04).