Date: 19990922
Docket: A-419-98
CORAM: DÉCARY J.A.
MacKAY J.A.
McDONALD J.A.
BETWEEN:
PHARMACIA S.P.A.
Appellant
(Defendant)
- and-
FAULDING (CANADA) INC.
Respondent
(Plaintiff)
Heard at Toronto, Ontario, Wednesday, September 22, 1999
Judgment delivered orally from the Bench
at Toronto, Ontario on Wednesday, September 22, 1999
REASONS FOR JUDGMENT BY: McDONALD J.A.
Date: 19990922
Docket: A-419-98
CORAM: DÉCARY J.A.
MacKAY J.
McDONALD J.A.
BETWEEN:
PHARMACIA S.P.A.
Appellant
(Defendant)
- and-
FAULDING (CANADA) INC.
Respondent
(Plaintiff)
REASONS FOR JUDGMENT
(Delivered orally from the Bench at Toronto, Ontario on
Wednesday, September 22, 1999)
McDONALD J.A.:
[1] This is an appeal from a decision of Madame Justice McGillis which reversed a decision of Mr. Giles, Associate Senior Prothonotary, whereby she determined that the respondent was not required to answer certain questions that were asked on discovery, as they were irrelevant in the context of the patent impeachment action brought by the respondent. The Associate Senior Prothonotary did not give any reasons for his decision.
[2] Following the coming into force of the Patented Medicines (Notice of Compliance) Regulations, SOR/93-113, the respondent was required to take a position in relation to the appellant"s "037 patent before the Minister could issue a "Notice of Compliance" for the respondent"s solution product. Because of this statutory requirement, in 1997 the respondent commenced the present action seeking the impeachment of the appellant"s "037 patent on numerous grounds. The respondent"s motivation in bringing the impeachment action does not open the door to the discovery of the respondent"s confidential New Drug Submission information submitted to the Minister. The relevant issues in the pending action are restricted to the validity of the appellant"s "037 patent. A patent validity case must focus on the contents of the patent at issue and whether the patentee has complied with the necessary preconditions for a grant of patent monopoly. In this case we are in agreement with the trial Judge that the activities of the respondent are irrelevant to such an analysis.
[3] Confidential information submitted to the Minister should also be offered some measure of protection against improper attempts to gain access to it. Although there is a broad right of examination, this Court has previously held that there are limits on that right of discovery; the Court will not allow the discovery process to be used as a fishing expedition (Crestbrook Forest Industries Ltd. v. Canada (M.N.R.), [1993] 3 F.C. 251 at 265 (C.A.) As Walsh J. noted in Burnaby Machine & Mill Equipment v. Berglund Industrial Supply Co. (1984), 81 C.P.R. (2d) 251 at 254, "the general tendency of the courts to grant broad discovery must be balanced against the tendency, particularly in industrial property cases, of parties to attempt to engage in fishing expeditions which should not be encouraged".
[4] As a general rule an appellate court will not interfere with the exercise of discretion of a trial Judge unless that discretion was not exercised judicially, as he or she proceeded on some erroneous principle or misapprehension of the facts or where the order appealed from is not just and reasonable.
[5] On the facts in this case the appellant has failed to convince us that there is any reviewable error in the comprehensive and thorough reasons of the trial Judge.
[6] The appeal should be dismissed with costs to the respondent.
"F.J. McDonald"
J.A.
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
DOCKET: A-419-98
| STYLE OF CAUSE: PHARMACIA S.P.A. |
| Appellant |
(Defendant)
- and -
| FAULDING (CANADA) INC. |
| Respondent |
(Plaintiff)
DATE OF HEARING: WEDNESDAY, SEPTEMBER 22, 1999
PLACE OF HEARING: TORONTO, ONTARIO
| REASONS FOR JUDGMENT BY: McDONALD J.A. |
Delivered at Toronto, Ontario
on Wednesday, September 22, 1999
APPEARANCES: Mr. Gunars Gaikis
| For the Appellant |
Ms. Susan Beaubien
For the Respondent
| SOLICITORS OF RECORD: Smart & Biggar |
Barristers & Solicitors
438 University Avenue
Suite 1500, Box 111
Toronto, Ontario
M5G 2K8
| For the Appellant |
Shapiro Cohen
Barristers & Solicitors
112 Kent Street, Suite 2001
Ottawa, Ontario
K1P 6P2
For the Respondent
FEDERAL COURT OF APPEAL
Date: 19990922
Docket: A-419-98
BETWEEN:
| PHARMACIA S.P.A. |
Appellant
(Defendant)
- and -
FAULDING (CANADA) INC.
Respondent
(Plaintiff)
REASONS FOR JUDGMENT