Discretionary Orders of Prothonotaries
Apotex Inc. v. GlaxoSmithKline Inc., GlaxoSmithKline PLC, SmithKline Beecham Corporation, Doe Co. and all other entities unknown to the Plaintiff which are part of the GlaxoSmithKline group of companies 2009 FC 378 (Hughes, J.)

April 15, 2009

Jerry Topolski and Sandon Shogilev for the Plaintiff, Apotex Inc. (“Apotex”)
James E. Mills and Beverley Moore for the Defendants, GlaxoSmithKline Inc., et al. (“GSK”)

The Plaintiff, Apotex, and Defendants, GSK, each brought a motion by way of an appeal from an Order of Prothonotary Lafrenière. The Order required that certain questions put forward GSK on discovery be answered and that certain questions put to Apotex need not be answered. The motions were made in the context of an action brought by Apotex seeking relief under Section 8 of the PM(NOC) Regulations.

The subject of Apotex’s motion was Prothonotary Lafrenière’s order that Apotex answer questions as to whether the Apotex product is or becomes a hemihydrate, questions that would be relevant in considering whether that product infringes Canadian Patent No. 1,287,060.

GSK’s motion dealt with two groups of questions dealing with aspects of alleged delaying tactics by Apotex. The first group dealt with delays alleged in respect of disposition of numerous NOC proceedings. The second group related to the addition by GSK of a further patent to the Patent Register during the proceedings.

After reviewing the questions, the Court agreed with the Prothonotary’s disposition of the matters and found that he had not misapprehended the law or overlooked any material fact. The Court acknowledged that the general principles respecting motions of this kind are well known and reiterated the Federal Court of Appeal’s proposition in Merck & Co. v. Apotex Inc., [2004] F.C. 459, that “[d]iscretionary orders of prothonotaries ought not be disturbed on appeal to a judge unless: (a) the questions raised in the motion are vital to the final issue of the case, or (b) the orders are clearly wrong in the sense that the exercise of discretion by the prothonotary was based upon a wrong principle or upon a misapprehension of the facts” (at paragraph 19).

Both motions were dismissed without costs.

By: Clare McCurley, Deeth Williams Wall LLP