Date: 20040831
Docket: T-1456-01
Citation: 2004 FC 1198
Toronto, Ontario, August 31st, 2004
Present: The Honourable Mr. Justice Blais
BETWEEN:
APOTEX INC. and
BERNARD CHARLES SHERMAN
Plaintiffs
(Defendants by Counterclaim)
and
PHARMASCIENCE INC.
Defendant
(Plaintiff by Counterclaim)
REASONS FOR ORDER AND ORDER
[1] Apotex Inc. and Bernard Charles Sherman (plaintiffs) have commenced an action against Pharmascience Inc. (defendant) for infringement of Canadian Patent No. 2,100,836 ('836 Patent). During the examination for discovery of the defendant's representative, Ms. Jeanette Echenberg, defendant's counsel objected to a great number of questions. The plaintiffs moved for an order to compel the defendant's witness to answer these questions. Prothonotary Aronovitch issued an order on May 3, 2004. She ordered the defendant to answer some of the questions for which an answer had been requested by the plaintiff, but otherwise denied the motion, such that a great number of questions were not ordered to be answered. The plaintiffs are now moving to have this Court set aside the Order of May 3, 2004 ruling on the March 22, 2004 motion of the plaintiffs.
FACTS
[2] The issue in the case before the Court is the extent of discovery in a patent case. We will only briefly summarize the main action, since its details are not relevant to the instant proceedings. However, context is necessary to understand the Prothonotary's decision.
[3] Patent '826 was first issued on February 3, 1998; it was re-issued, with additional claims, on March 13, 2001. The invention is entitled "Pharmaceutical composition" and the abstract reads as follows:
A pharmaceutical composition which comprises ticlopidine hydrochloride together with stearic acid and other suitable pharmaceutical excipients, and which does not contain any organic acid other than stearic acid.
[4] The plaintiffs claim that Patent '826 vests the plaintiffs with the exclusive right and privilege of making, using and selling ticlopidine hydrochloride compositions which contain stearic acid and are substantially free of an effective amount of another organic acid.
[5] The plaintiffs claim that the defendant has made or acquired, and has sold, pharmaceutical tablets containing ticlopidine hydrochloride, stearic acid, povidone, starch, magnesium stearate, microcrystalline cellulose, butylated hydroxyanisole and opadry, in other words, tablets which are a ticlopidine hydrochloride composition which contains stearic acid and are substantially free of an effective amount of another organic acid. For this reason, the defendant has infringed most of the claims of the '836 Patent.
[6] The defendant claims that Patent '836 is invalid, and further submits that the claims of the Patent do not cover all ticlopidine hydrochloride formulations containing stearic acid. The defendant thus disputes the plaintiffs' exclusive right to make or sell ticlopidine hydrochloride compositions which contain stearic acid and are substantially free of an effective amount of another organic acid.
[7] The defendant specifically denies infringement. If infringement of any claim is found, Patent '836, according to the defendant, covers old science and the claims are broader than the invention made or disclosed. Finally, the defendant argues that it purchased, constructed or acquired the invention covered by claims 7 to 27 (added in the reissuance of the Patent) before the reissuance occurred in 2001, and accordingly has the right to sell to others any composition covered by claims 7 to 27 without liability.
[8] In its counterclaim, the defendant submits that the '836 Patent and the claims under the Patent are and have always been invalid and void, for lack of novelty, obviousness, lack of utility and deficiency of specification. In addition, the defender argues that the claims are overbroad, in that they do not state explicitly what is new in the invention.
SUBMISSIONS OF THE PARTIES
Plaintiffs
[9] The questions that remain unanswered are designed to obtain information on how the defendant's product functions in a manner which does not infringe the claims of the '836 Patent. As well, the plaintiffs seek to understand the defendant's various pleas concerning the invalidity of the '836 Patent. The plaintiffs argue that the questions relate to the factual basis for the defendant's pleadings, and that the test of Rule 240 of the Federal Court Rules has been misapplied.
[10] The plaintiffs submit that at discovery, a party must answer any question that is relevant to any unadmitted allegation of fact, as per Rule 240. The standard of relevance to be applied is generous and flexible, according to the plaintiffs, who cite case law to this effect. The defendant should answer all questions related to its allegations of non-infringement and invalidity. These answers are clearly within the knowledge of the defendant, and the information sought is factual.
[11] While it would be inappropriate, based on the jurisprudence, to ask questions relating to a person's understanding or interpretation of a patent, questions relating to a party's product and its characteristics are relevant and appropriate.
[12] When the defendant pleads "common general knowledge" as the basis for its contention that the invention was obvious, it has the onus to provide facts to support that allegation. Thus, when the plaintiffs sought to get more information on what was meant by "common general knowledge" specifically in regard to the alleged infringement, it was not satisfactory to have the Prothonotory find that the questions need not be answered because pertaining to general knowledge.
[13] The burden is on the person who alleges obviousness to prove it. If some document or prior use forms are part of the common general knowledge, these should be specified. On the other allegations as well, the plaintiffs argue that there is a need to discover the evidence underlying the pleadings.
Defendant
[14] The defendant argues that the grounds for a declaration of invalidity relate to technical issues, properly the domain of expert witnesses, or to questions of law, properly the domain of the Court. The plaintiffs allege infringement, but based on the list of ingredients provided by Pharmascience. The plaintiffs allege they do not understand the pleadings of non-infringement and invalidity. The plaintiffs allege infringement based on the content of the tablets, not the way they function. Any question related to functionality is therefore not related to material facts in the pleadings, but rather to expert opinion. In regards to invalidity, the defendant claims that the plaintiffs fail to acknowledge that "common general knowledge" of a person skilled in the art is necessarily expert opinion and outside the scope of discovery.
[15] The defendant has already provided the plaintiffs with extensive factual information on the formulation and process to make the defendant's tablets and on the stability testing and preformulation work carried out by Teva, the manufacturer of the tablets sold by the defendant. In addition, the Prothonotary has already ordered further answers regarding material facts relating to the pleadings.
[16] The Order should stand, since the basis for refusing the plaintiffs' questions was sound. The questions at issue are either irrelevant to the facts pleaded, call for expert opinion (construction of patent or of prior art as opposed to allegation of fact) or seek unnecessary explanations where the pleadings are sufficiently detailed.
ANALYSIS
Standard of review
[17] The Federal Court Rules, 1998 provide the possibility of an appeal of a prothonotary's decision to a Federal Court judge, without prescribing what standard of review should apply. The authority of the prothonotary to order a party to answer questions on discovery is given by section 97, which states that where a person fails to answer a proper question, the Court may order that person to answer the question. The standard applicable to discretionary decisions of the prothonotary was established in Canada v. Aqua-Gem Investments Ltd., [1993] 2 F.C. 425 (C.A.), and restated with approval by the Supreme Court of Canada in Z.I. Pompey Industrie v. ECU-Line N.V., [2003] 1 S.C.R. 450 at paragraph 18:
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.
[18] In 1029894 Ontario Inc. v. Dolomite Svenska Aktiebolag, [1999] F.C.J. No. 1719, Justice Sharlow stated that an order granting or denying a demand for particulars was not a question vital to the final issue of the case. Thus, in the instant case, this Court will set aside the order of the Prothonotary only if it can be found that the order was clearly wrong, that is, based upon a wrong principle or a misapprehension of the facts.
Was the order clearly wrong?
[19] The relevant principles that apply in examinations for discovery can be summarized as follows:
1) Expert opinion is not a proper subject for discovery. (Canada v. Irish Shipping Ltd., [1976] 1 F.C. 418 (F.C.A.)). This principle is restated in many decisions of this Court, notably Foseco Trading A.G. v. Canadian Ferro Hot Metal Specialties, Ltd., [1991] F.C.J. No. 421 (F.C.T.D.); Risi Stone Ltd. v. Groupe Permacon Inc., [1994] F.C.J. No. 777 (F.C.T.D.); James River Corp. of Virginia v. Hallmark Cards, Inc., [1997] F.C.J. No. 152 (F.C.T.D.).
2) Witnesses are not to testify on questions of law. Asking a witness to provide facts in support of the pleadings of the party is not proper at discovery. In Can-Air Services Ltd. v. British Aviation Insurance Co., [1988] A.J. No. 1022 (Alta. C.A.), Justice Côté, writing for the Court of Appeal of Alberta, stated as follows:
Another fundamental rule is that an examination for discovery may seek only facts, not law: Turta v. C.P.R. (1951) 2 W.W.R. (ns) 628, 631-2 (Alta.); cf. Curlett v. Can. Fire Ins. Co. [1938] 3 W.W.R. 357 (Alta.). These questions try to evade that rule by forcing the witness to think of the law applicable or relied upon, then use it to perform some operation (selecting facts), and then announce the result. The result looks on the surface like a mere collection of facts, but it really is not: Seven Seas v. Kraemer (3 June) [1982] Alta. Unrep. Dec. 1831, at 1835 (M.). The witness cannot know what facts will help him in court until he knows the law. So what facts he relies on must be based upon his view of the law.
Therefore, an examination for discovery may seek facts only, not argument.
(...) In my view, the question "upon what facts do you rely for paragraph X of your pleading?" is always improper.
The idea is restated explicitly in Kun Shoulder Rest Inc. v. Joseph Kun Violin and Bow Maker Inc., [1997] F.C.J. No. 1386 (F.C.T.D.):
¶ 15 A number of the questions asked by counsel for the Plaintiff seek to have the discovery witness advise as to the facts relied upon in support of certain allegations in the pleadings.
¶ 16 It is proper to ask a discovery witness to speak of all the facts, surrounding a certain incident, of which the witness either knows or must properly inform himself or herself about. It is never permissible to ask a discovery witness as to the facts relied upon in support of a certain allegation, for this requires the witness to choose facts and disclose how his lawyer might prove a given allegation. While a witness may know the general approach that his or her lawyer intends to take, a witness cannot know what facts will assist until he or she knows the law. The particular facts that will be relied upon is based upon counsel's view of the law. An examination for discovery of a witness seeks to discover fact, not argument as to what is relevant in order to prove a given plea.
¶ 17 Beneath this concept of the proper way to explore for relevant facts is the fundamental rule that examination for discovery is as to facts, not as to law. To allow a question, requiring the witness to select facts upon which he or she relies in order to support a given allegation, is to try to evade this fundamental rule by requiring the witness to consider the applicable law, then use it to select facts and to announce a result.
3) It can sometimes be a little difficult to distinguish between fact and law. Since Rule 240 provides that factual questions must be answered, provided they are relevant, and since relevance is wider in discovery than at trial (McLeod Lake Indian Band v. Chingee, [1998] F.C.J. No. 683), Justice Reed in Foseco, supra, found that where the factual component was more important, the question had to be answered :
The Federal Court of Appeal has made it plain that when the evidence sought is the subject-matter of expert opinion, evidence to be disclosed pursuant to Rule 482, questions relating thereto are not required to be answered on discovery. It has also made it plain that where the question is one clearly on its face seeking an opinion from the witness, that the question is not required to be answered. I have not been able to find, however, an articulation of the appropriate principle, in a case such as the present, where the information sought is technical in nature (and for that reason might be addressed in an affidavit of an expert witness), but is within the common knowledge of the plaintiff and where the question is of a factual nature although it can arguably be said to require expression of opinion by the witness, in the sense that many assertions of "fact" require the expression of an "opinion". It is my conclusion that in such cases the principle to be applied is that the factual nature of the question takes precedence and the question should be answered.
4) Finally, the jurisprudence has stated that questions related to the interpretation of common general knowledge and the construction of patent or of prior art need not be answered in discovery, to the extent that these answers are based on the opinion of experts. From James River Corp. of Virginia v. Hallmark Cards, Inc., [1997] F.C.J. No. 152 (F.C.T.D.):
¶ 37 Counsel for the defendant indicates that when he responded to the plaintiff's demand for particulars, he tracked the wording of the patent so that the pleading basically says that whatever the patent means this was part of the prior art, a matter of common general knowledge. The defendant has given the plaintiff all the prior art documents of which it is aware and takes the position that further evidence respecting the state of the prior art or common general knowledge is a matter for expert opinion evidence at trial. The decisions in Jackmorr Manufacturing Ltd. v. Waterloo Metal Stampings Ltd. (1985), 8 C.P.R. (3d) 271 (F.C. A.S.P.) and Cabot Corporation v. 318602 Ontario Ltd. (1986), 12 C.P.R. (3d) 462 (F.C. A.S.P.) are cited. In these decisions it was held that insofar as answers to questions concerning common general knowledge are based on the opinion of experts, they did not have to be answered on discovery. Insofar as such was not so based, they were required to be answered. I cannot conclude that the Associate Senior Prothonotary's decision, declining to require that the questions be answered, was clearly wrong, as based on either a wrong principle of law or a misapprehension as to the facts.
[20] An examination of the jurisprudence shows that there are fine distinctions to be made between what will be considered an essentially technical question which must nevertheless be answered on discovery, and what is properly the domain of the expert and ultimately, the judge at trial.
[21] Considering the careful distinctions that have been drawn by the Prothonotary in her decision; considering that the defendant has been ordered to answer questions of a technical but predominantly factual nature; and considering that a review of the questions for which the Prothonotary did not compel an answer indicates that they are indeed matters of expert opinion, or common general knowledge, or questions of law, or are irrelevant, I cannot come to the conclusion that the Prothonotary in her decision has applied the wrong principle of law or misapprehended the facts. Therefore her decision should stand.
[22] For these reasons, the motion is dismissed.
ORDER
THIS COURT ORDERS that:
- The motion be dismissed;
- Costs to the defendant be established at $2,500.
"Pierre Blais"
J.F.C.
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-1456-01
STYLE OF CAUSE: APOTEX INC. and
BERNARD CHARLES SHERMAN
Plaintiffs
(Defendants by Counterclaim)
and
PHARMASCIENCE INC.
Defendant
(Plaintiff by Counterclaim)
PLACE OF HEARING: TORONTO, ONTARIO
DATE OF HEARING: JULY 26, 2004
REASONS FOR ORDER
AND ORDER BY: BLAIS J.
DATED: AUGUST 31, 2004
APPEARANCES BY :
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FOR THE PLAINTIFFS
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FOR THE DEFENDANT |
SOLICITORS OF RECORD:
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Barristers & Solicitors Toronto, Ontario |
FOR THE PLAINTIFFS |
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Barristers & Solicitors Toronto, Ontario |
FOR THE DEFENDANT |
FEDERAL COURT
Date: 20040831
Docket: T-1456-01
BETWEEN:
APOTEX INC. and
BERNARD CHARLES SHERMAN
Plaintiffs
(Defendants by Counterclaim)
and
PHARMASCIENCE INC.
Defendant
(Plaintiff by Counterclaim)
REASONS FOR ORDER AND ORDER