BETWEEN:
ELI LILLY AND COMPANY
and ELI LILLY CANADA INC.
Plaintiffs
(Defendants by Counterclaim)
-and-
APOTEX INC.
Defendant
(Plaintiff by Counterclaim)
AND BETWEEN:
APOTEX INC.
Defendant
(Plaintiff by Counterclaim)
-and-
ELI LILLY AND COMPANY
and ELI LILLY CANADA INC.
Plaintiffs
(Defendants by Counterclaim)
-and-
SHIONOGI & CO. LTD.
Defendant by Counterclaim
[1] This is a motion on behalf of the Defendant (Plaintiff by Counterclaim) Apotex Inc. (“Apotex”), for an Order setting aside the Order of Prothonotary Aronovitch (the “Case Management Prothonotary”), dated June 21, 2006, and dismissing the underlying motion by the third party, Shionogi & Co. Ltd. (“Shionogi”) in its entirety.
[2] The underlying patent infringement action in this proceeding was commenced in 1997, and had progressed for over five years before the defendant Apotex added Shionogi as a party to a Counterclaim seeking damages pursuant to sections 36 and 45 of the Competition Act in December of 2002. Shionogi has never been a party to the plaintiffs’ patent infringement action; nor has Shionogi ever been a party to Apotex’s claims for declaratory relief in respect of the validity of the patents in issue.
[3] On December 19, 2005, the Case Management Prothonotary, by consent, issued a Scheduling Order (the “Scheduling Order”), which included the following paragraph:
3. Apotex and the Defendant by Counterclaim Shionogi & Co. Ltd. (“Shionogi”) shall exchange affidavits of documents in respect of the Counterclaim (including the allegations in Shionogi’s Defence to Counterclaim, and Apotex Reply to Shionogi’s Defence to Counterclaim) by no later than January 31, 2006;
[emphasis added]
[4] Apotex served upon Shionogi an affidavit of documents which was simply a further amended version of the affidavit of documents it had previously served upon the Plaintiffs. As a result, it obviously included hundreds of documents concerning validity and infringement issues as between Apotex and the Plaintiffs but having no relevance to the Counterclaim against Shionogi which is limited to a claim for damages against the latter pursuant to sections 36 and 45 of the Competition Act.
[5] It is in this context that the Case Management Prothonotary ordered Apotex to “comply with the Court’s Order dated December 19, 2005 and serve a revised affidavit of documents or identify the documents relevant to the counterclaim, as defended and replied to”.
[6] In coming to her decision, the Case Management Prothonotary reviewed the pleadings and interpreted the meaning of “Counterclaim” as set out in the Scheduling Order consented to by Apotex:
The allegations of invalidity, indeed all of the allegations in relation to which Shionogi takes no position, are not at issue in the counterclaim – are not the “Counterclaim” for the purposes of the Order and the contents of the affidavit of documents. To the extent that those matters are covered in the affidavit of documents, the affidavit is not, as prescribed by the Order, made in respect of the “Counterclaim” as made, defended or replied to.
[7] The Case Management Prothonotary also confirmed that the outcome was appropriate having regard to the efficient management of the case:
From a case management perspective it is a just and fitting outcome, suited to the circumstances. This matter is almost ready to be pre-tried. Discovery as between Lilly and Apotex has proceeded notwithstanding Shionogi’s exclusion as a party without any suggestion that Shionogi was required for discovery on the issues of infringement and invalidity.
The claim against Shionogi is [discrete] and confined to [breaches] of the Competition Act. They are in substance the only allegations that are defended by Shionogi and therefore the subject matter that the parties agreed to address and confine themselves to in their affidavits of documents.
It is inefficient, time consuming and an impediment to the efficient management of the case to have Shionogi, at this stage, prepare for and proceed to discovery, snowed under by an affidavit of documents that contains irrelevant documents going to infringement and invalidity, issues that are joined exclusively as between Lilly and Apotex. It is also, in my view, contrary to the clear language of the Order to which Apotex consented and by which it is bound.
[8] In its written submissions filed in support of this appeal, Apotex does not argue that the questions raised on the motion are vital to the final issue of the case, which in fact they are not. Rather, Apotex submits that the Prothonotary fundamentally erred in law and in principle in ordering Apotex to provide a further and better affidavit of documents to Shionogi.
[9] In these circumstances, the Order appealed from must be treated with substantial deference and must not be disturbed absent the demonstration of a clear error (see Canada v. Aqua-Gem Investments Ltd., [1993] 2 F.C. 425 at 454 (C.A.); and Sawridge Band v. Canada, [2002] 2 F.C. 346 at 354 (C.A.)). Upon hearing counsel for the parties and upon reviewing the material filed, I consider that Apotex has failed to demonstrate that the Case Management Prothonotary was clearly wrong, that she misconstrued her own Scheduling Order, that in this context she misapplied Rule 227 or any other Rule of the Federal Courts Rules, SOR/98-106, and in particular, has failed to demonstrate that this Court ought to interfere with her efforts to manage this complex case. In my opinion, the Case Management Prothonotary properly ordered Apotex to comply with its obligations under the Scheduling Order which it agreed to, and to provide an affidavit of documents restricted to the Counterclaim brought by it against Shionogi, a result which the Case Management Prothonotary expressly found advanced case management objectives in this proceeding.
[10] Consequently, Apotex’s motion is dismissed with costs.
Ottawa, Ontario
September 1, 2006
FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-1321-97
STYLE OF CAUSE: ELI LILLY AND COMPANY and ELI LILLY CANADA INC. v. APOTEX INC. and SHIONOGI & CO. LTD.
PLACE OF HEARING: Ottawa (Ontario)
DATE OF HEARING: August 31, 2006
APPEARANCES:
|
Mr. David Lederman Mr. Sandon Shogilev
|
|
|
Mr. David Morrow Mr. Colin Ingram
|
SOLICITORS OF RECORD:
|
Goodmans LLP Toronto, Ontario
|
|
|
Smart & Biggar Ottawa, Ontario
|
Date: 20060901
Docket: T-1321-97
Ottawa, Ontario, September 1, 2006
PRESENT: The Honourable Mr. Justice Pinard
BETWEEN:
ELI LILLY AND COMPANY
and ELI LILLY CANADA INC.
(Defendants by Counterclaim)
-and-
Defendant
(Plaintiff by Counterclaim)
AND BETWEEN:
APOTEX INC.
Defendant
(Plaintiff by Counterclaim)
-and-
ELI LILLY AND COMPANY
and ELI LILLY CANADA INC.
Plaintiffs
(Defendants by Counterclaim)
-and-
SHIONOGI & CO. LTD.
Defendant by Counterclaim
UPON Notice of Motion on behalf of the Defendant (Plaintiff by Counterclaim) Apotex Inc. (“Apotex”) for:
1. An Order setting aside the Order of Prothonotary Aronovitch dated June 21, 2006, and dismissing the underlying motion by the third party, Shionogi & Co. Ltd. (“Shionogi”) in its entirety;
2. Costs of this appeal and the motions below; and
3. Such further and other relief as this Honourable Court may deem just.
ORDER
The motion is dismissed, with costs.
“Yvon Pinard”
Judge