Date: 19980420
Docket: T-366-98
BETWEEN:
AB HASSLE, ASTRA AB and ASTRA PHARMA INC.
Applicants
- and -
THE MINISTER OF NATIONAL
HEALTH AND WELFARE, RHOXALPHARMA INC. and
TAKEDA CHEMICAL INDUSTRIES, LTD.
Respondents
REASONS FOR ORDER
TEITELBAUM J.:
[1] This is a motion on behalf of the respondent Rhoxalpharma Inc. (hereinafter referred to as Rhoxal) for a Protective Order protecting and maintaining the confidentiality of various documents, information and transcripts to be produced by the parties during the course of the proceedings and for an Order setting a schedule for the exchange of materials and which schedule would extend the delays beyond those stipulated in the rules.
[2] The grounds for the said motion are that the applicant filed an Originating Notice of Motion to prohibit the Minister of National Health and Welfare, who did not take part in these proceedings, from issuing a Notice of Compliance to Rhoxal. The Prohibition proceeding was filed in response to Rhoxal's Notice of Allegation wherein Rhoxal alleged that no claim for the medicine itself and no claim for the use of the medicine would be infringed by the making, constructing, using or selling of its omeprazole tablets. There are, I believe, nine patents concerned in these proceedings.
[3] Rhoxal states, on pages 4 and 5 of its Notice of Motion:
| 6. The particulars of this non-infringing process, or pharmaceutical composition and all of other relevant distinctions alleged in support of RhoxalPharma's Notice of Allegation for its omeprazole tablets, including the details of RhoxalPharma's supplier, constitute important trade secrets and valuable proprietary, commercial and scientific information to RhoxalPharma and its supplier. RhoxalPharma has always maintained such information strictly confidential. The public disclosure of this information will prejudice both RhoxalPharma and its supplier by allowing their competitors to make use of this information for their own commercial interests contrary to the interests of RhoxalPharma and its supplier. RhoxalPharma undertakes to its supplier to maintain confidentiality in respect of all confidential information it receives from them. Therefore, RhoxalPharma requires that a Confidentiality Order be issued by this Honourable Court before it can disclose the Confidential Information. |
| 7. RhoxalPharma has identified and contacted some of the experts from which it will obtain evidence to be filed in this proceeding. |
| 8. RhoxalPharma will be in a position to file this expert evidence by June 5th, 1998. |
[4] Together with its Notice of Motion, Rhoxal filed the affidavits of Marie Lafleur and Mark Lachovsky, both sworn to on March 25, 1998. At the hearing of the present motion, Rhoxal filed a second affidavit of Marie Lafleur sworn to on April 3, 1998.
[5] Both Marie Lafleur and Mark Lachovsky were cross-examined on their March 25, 1998 affidavits.
[6] With regard to the issue of the requested Protective Order and why it is necessary, one must look at paragraph 4 of Mark Lachovsky's affidavit where he states:
| 4. The particulars of this non-infringing process, or pharmaceutical composition and all of other relevant distinctions alleged in support of RhoxalPharma's Notice of Allegation for its omeprazole tablets, including the details of RhoxalPharma's supplier, constitute important trade secrets and valuable proprietary, commercial and scientific information to RhoxalPharma and its supplier. RhoxalPharma has always maintained such information strictly confidential. The public disclosure of this information will prejudice both RhoxalPharma and its supplier by allowing their competitors to make use of this information for their own commercial interests contrary to the interests of RhoxalPharma and its supplier. RhoxalPharma undertakes to its supplier to maintain confidentiality in respect of all confidential information it receives from them. Therefore, RhoxalPharma requires that a Confidentiality Order be issued by this Honourable Court before it can disclose the Confidential Information. |
[7] What I understand Mr. Lachovsky to be saying is that the particulars of "this" (not necessarily Rhoxal's process) non-infringing process "constitutes important trade secrets and valuable proprietary, commercial and scientific information" to Rhoxal and its supplier. Rhoxal also states the public disclosure would cause a prejudice to Rhoxal and its supplier "by allowing their competitors to make use of this information".
[8] The applicants AB Hassle et al. (hereinafter referred to as Hassle) state that they don't take issue that trade secrets may need a Protection Order but in order to obtain such a Court Order, the requesting party must demonstrate a need for same. In the present case, Hassle suggests that what is required to show a need for a Protective Order would be an affidavit of Rhoxal's supplier.
[9] This of course would defeat the need to protect the name of Rhoxal's supplier.
[10] I am prepared to allow the issuance of the Protective Order as requested by Rhoxal.
[11] I can do no better than to refer to the decision of Mr. Justice MacKay in the case of Apotex Inc. et al. v. Wellcome Foundation Ltd. 51 C.P.R. (3d) 305 at pages 309, 310, 311 and 312 as these statements by Mr. Justice MacKay are most applicable to the case before me.
| The general principle of the court and its process being open to public scrutiny, including access for the public to court documents, is fundamental to our system of justice. Striking a balance between that principle and the interests of justice between the parties, including the bona fide commercial and proprietary interests of parties to litigation has led to the practice in this and other courts of providing by protective or confidentiality orders that information obtained in preparation for trial may, in appropriate cases, be maintained in confidence, not accessible to the general public, in the court's processes. |
| In my view, it is sufficient demonstration of the need for a confidentiality order in relation to information to be produced, if the moving party believes that its proprietary, commercial and scientific interests would be seriously harmed by producing information upon which those interest are based. That is particularly so at the state of pre-trial preparations, in my view. Considerations relating to application of the principle of an open court may be weighed differently by the trial judge, if this matter proceeds to trial, for he or she will control the process at the trial including what documentary information adduced at trial should be treated in confidence. |
| Moreover, there are three considerations that favour the grant of the order basically in the terms specified. First, those terms reflect the terms of protective orders granted upon consent in parallel litigation in the United States in which the parties here are directly or indirectly involved. There is merit in a case where parallel litigation is underway in the United States to have reasonably comparable protective orders, provided the terms are not contrary to principle or practice in this court: see Foseco International Ltd. v. Bimac Canada (1980), 51 C.P.R. (2d) 51 (F.C.T.D.) at pp. 53-9, per Walsh J. and Procter & Gamble Co. v. Kimberly-Clark of Canada Ltd. (1987), 16 C.P.R. (3d) 114 at p. 119, 15 F.T.R. 46, 15 C.I.P.R. 16 (T.D.) per Muldoon J. |
| Second, while the terms of the order are broad in their application to information of all kinds, and in leaving the initiative to the producing party to designate what is confidential, by its terms the order also provides opportunity to a receiving party to object to the classification as confidential. If the objection is not resolved between the parties the court shall do so on application, and the court of its own motion may determine that information classed as confidential by a party shall not be so treated. Thus, the court ultimately may control the "declassification" of information originally classified as confidential by a producing party. |
| The third consideration favouring the order, in my view, is the practice of this court, as I understand it, in issuing protective orders in relation to information produced in discovery where a party believes in good faith that its commercial business or scientific interests associated with trade secrets may be seriously harmed by disclosure that is open to public assess: see Foseco and Procter & Gamble, supra; Deprenyl Research Ltd. v. Canguard Health Technologies Inc. (1992), 41 C.P.R. (3d) 228, 32 A.C.W.S. (3d) 128 (F.C.T.D.); and note also Molson Breweries v. Labatt Brewing Co., unreported, Court File No. A-550-92, June 3, 1992 (F.C.A.) [reported 43 C.P.R. (3d) 61, [1992] 3 F.C. 78, 144 N.R. 321]. The practice reflects a recognition that in a case such as this, at this state particularly, the preparation of the litigation belongs primarily to the litigants. |
| At the hearing, counsel for the plaintiffs suggested that the purpose of the order as sought was primarily to protect this action, not other interests of the parties, in view of other actions initiated by the defendant against the plaintiffs, also underway in this court. While the confidentiality order now issued would preclude use in any other action of confidential information received in this action, that aspect of the order, as all aspects, may in a proper case be varied by the court. |
[12] As I have stated, paragraph 4 of the Lachovsky affidavit states why Rhoxal requires the Protective Order as seen by Rhoxal. I understand from a reading of the examination of Lachovsky that he himself may not be personally familiar with the complete process but, nevertheless, I am satisfied he has sufficient knowledge to indicate, at the present stage of the proceedings, that a Protective Order is required.
[13] It is apparent that if it becomes necessary to review the issue of the Protective Order, either party may return to the Court for a variation.
[14] In conclusion, I am satisfied that following the principles given in the Apotex (supra) case, the Protective Order as requested should issue.
[15] With regard to the schedule prepared by counsel for Rhoxal as to how to proceed, I am satisfied it is in the interest of justice to grant an extra delay to permit Rhoxal to obtain all of the necessary affidavit evidence from its experts.
[16] The application for a Protective Order is allowed as is the schedule submitted by Rhoxal, costs in the cause.
[17] Counsel for Rhoxal shall prepare a Protective Order in accordance with these reasons and prepare an Order setting the schedule for the exchange of materials in this matter.
"Max M. Teitelbaum"
J.F.C.C.
OTTAWA, ONTARIO
April 20, 1998