Court Upholds Prothonotary’s Decision for Broad Disclosure in Affidavit of Documents
Eli Lilly Canada Inc. and Eli Lilly and Company v. Hospira Healthcare Corporation 2009 FC 1316 (Lemieux, J.)

December 31, 2009

Patrick Smith and John Norman for Eli Lilly Canada Inc. and Eli Lilly and Company (Eli Lilly)
Susan Beaubien and Adam Tracey for Hospira Healthcare Corporation (Hospira)

This was an appeal of an Order of Prothonotary Tabib wherein Hospira was ordered to serve upon Eli Lilly a further and better affidavit of documents.  The documents Hospira first listed in its initial affidavit of documents were heavily redacted excerpts of its ANDS, a confidential process description for the manufacture of the drug gemcitabine, and a batch report for the manufacture of the drug.  Hospira submitted that the Prothonotary erred in law and/or proceed on a wrong principle in making the order she did. It asserted Prothonotary Tabib’s Order enabled Eli Lilly to “embark on a fishing expedition by way of discovery, with respect to irrelevant documents falling outside the scope of the process patent at issue, premised only on Eli Lilly’s unpleaded speculation of regulatory fraud on Health Canada.”

The Court held that as Prothonotary Tabib’s order was not vital to the resolution of the action her decision was not to be reviewed de novo. Consequently, Hospira had the burden of demonstrating that in making the order Prothonotary Tabib made she was clearly wrong, in the sense that the exercise of her discretion to make such an order, was based upon a wrong principle or upon a misapprehension of the facts. 

Hospira submitted that the Prothonotary erred in: (1) ordering the disclosure of the entire seven steps to produce the API when the patent at issue only claimed a monopoly on the SN2 glycosylation stage; (2) finding that there was no presumption that what had been filed with the Minister was true; (3) finding an un-pleaded regulatory fraud; and, (4) misapprehending the facts by giving weight to an old business model of “commercial viability” proffered through the affidavit of Dr. Kjell, a current and long time employee of Lilly who was neither independent or objective.

In dismissing the appeal, Justice Lemieux held that whether the prothonotary had sufficient evidence or misconstrued the evidence is a finding of fact in respect of which the prothonotary is owed a large measure of deference. In coming to the conclusion she did that additional disclosure was warranted, the prothonotary carefully weighed the evidence submitted by both sides and the cross-examination on those affidavits.

By: Rosamaria Longo, Lang Michener LLP