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Federal Court Offers Guidance On Best Practices in the Discovery Process of Intellectual Property Matters
Eli Lilly Canada Inc. v. Sandoz Canada Inc. 2009 FC 345 (Tabib, Prothonotary)
April 2, 2009
Patrick Smith and Beverley Moore for the Plaintiffs, Eli Lilly Canada Inc. and Eli Lilly and Company (“Eli Lilly”)
Donald H. MacOdrum and Rosamaria Longo for the Defendant, Sandoz Canada Incorporated (“Sandoz”)
Nathaniel Lipkus and Jocelyn Mackie for ScinoPharm Taiwan Ltd. (“ScinoPharm Taiwan”)
Eli Lilly owns two patents related to the preparation and production of gemcitabine, an anti-cancer drug. Sandoz imports the same drug from its supplier, ScinoPharm Taiwan, for sale in Canada. In a patent infringement action against Sandoz, Eli Lilly brought a motion requesting assistance from the Court regarding the production of documents for discovery. Eli Lilly wanted to compel Sandoz to produce complete copies of certain redacted documents and to provide a further and better affidavit of documents. Although it was unnecessary for the Court to formally determine the issues for this motion, reasons were provided in order to direct the profession toward best practices that would better manage the discovery process in intellectual property disputes.
The Court established a number of specific rules regarding redacted documents, entitlement to translations of relevant documents, and provision of documents not in a producing party’s possession. It found that there is no absolute entitlement to any of the above, but cautions producing parties against taking too narrow a view of relevance. The Court warned Sandoz that redacted portions of documents should be clearly irrelevant to any issue in dispute, such that those portions would not assist in properly understanding those parts of a document that are relevant. With respect to relevant documents in the possession of a third party, the Court held that the producing party is responsible for listing them in a schedule of its affidavit of documents, but should not attempt to decide which is the most useful to the other party or which documents should be disclosed and which can be discounted.
The Court took issue with the state of the parties’ pleadings, finding that Eli Lilly’s complete lack of detailed and direct allegations combined with Sandoz’s failure to provide any specifics in its defence, assumed and sanctioned discovery by way of a wide-ranging fishing expedition. The Court expressed that the parties ought to have moved for case management at an early date, as they failed to develop any informal process for the exchange of documents before bringing a formal motion. As both Sandoz and ScinoPharm voluntarily gave assurances that they would cooperate in the further provision of documents, the Court ordered only that the Defendant provide the Plaintiff with a revised affidavit of documents and that the parties provide the Court with a draft Order setting out a procedure and schedule detailing various aspects of the discovery process. Costs were awarded to Eli Lilly.
By: Vivien Tzau and Megan MacDonald, Stikeman Elliott LLP
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