Federal Court Upholds the Prothonotary Orders During Examinations of Discovery
Apotex Inc. v. H. Lundbeck A/S 2009 FC 419 (Beaudry, J.)

April 27, 2009

Sandon Shogilev for the Plaintiff, Apotex Inc. (“Apotex”)
Hilal El Ayoubi for the Defendant, Lundbeck A/S (“Lundbeck”)

During the second round of an examination for discovery in an action for infringement, Lundbeck did not want to answer questions asked by Apotex. They submitted that the Prothonotary erred in law and in fact when it was ordered that the Defendant answer three specific questions. Lundbeck objected and argued that answering the questions would breach privilege and the terms of a prior settlement agreement between the parties, and also form an opinion on the validity of a patent. The appeal was dismissed.

Following the general principles of the rules for practice and procedure during the discovery stage, orders by prothonotaries can be reviewed only when they raise questions vital to the final issue of the case, or when they are clearly wrong because they are based on a wrong principle or upon a misapprehension of facts. The Court held that the questions at issue were not vital to the final issue of the proceedings and that there were no reviewable errors in the order. The Plaintiff’s claim was not held to be punitive as the questions relate to the Defendant’s allegations. The Court held that the answers requested were not privileged as it disclosed factual information and not a conclusion or expert opinion.

By: Vivien Tzau and Catherine Newnham, Stikeman Elliott LLP