Date: 19990323 Docket: T-421-97
BETWEEN:
FAULDING (CANADA) INC.
Plaintiff
- and -
PHARMACIA S.p.A.
Defendant
REASONS FOR ORDER AND ORDER
GILES, A.S.P.
[1] The motion before me sought, in summary, a re-attendance but by a different person to answer questions refused on discovery.
[2] The first category of questions consisted of questions asked with respect to alleged prior art revealed in the documents of the defendant. Questions 372-373 and 386 ask what an article reports upon. The question is resisted on the ground that the answer requires interpretation of the document. It is my view that any requirement to read and make a statement as to the content from an interpretation of the scientific content of such reading could not be required, but to identify a document as a report because of some code identifying its nature could properly be required.
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[3] Looking at question 409 I conclude that the examining counsel is fully aware of the identity of the document and is merely seeking an admission to save proving a known fact trial.
[4] Questions 372, 373, and 376 should be answered.
[5] Questions 409 and 448-450 deal with the background lab books behind exhibit 20-1. These materials can not be prior art because they are not published. They may, however, be useful to the expert who has to interpret the document and so should be produced.
[6] Question 460 strictly requires interpretation of the document and does not have to be answered.
[7] Question 496 seeks an admission as to identity and a statement of fact as to the
possible use by the party. It is not relevant to the determination of prior art, and so the answer would be irrelevant. The use, if any, to be made does not have to be revealed at this time. Question 496 does not have to be answered.
[8] The headings "KNOWN STABILITY OF DOXORUBICIN SOLUTIONS" (except for questions 513 to 516), "pH OF DOXORUBICIN SOLUTIONS" and "COMPARATIVE STABILITY OF RECONSTITUTED VERSUS NON-RECONSTITUTED SOLUTIONS OF
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ANTHRACYCLINE GLYCOSIDES" seek the unpublished background documents of apparently published prior art and are therefore irrelevant and do not have to be answered.
[9] In summary , questions 412, 462-463, 502-508, 451-458, 642, 776, 643, 644, 651, 660, 1306, 1308, 402, 2407, 388-390, do not have to be answered.
[10] In my view the answers to question 513 to 516 might indicate a publication of the background materials to published prior art. 513 to 516 should, therefore, be answered.
[11] The fact that I have not ordered the rest of these questions answered will not preclude them from being asked as follow-up questions if relevant.
[12] Under the heading "DISCOVERY OF RUBIDOMYCIN/DAUNOMY (DAUNORUBICIN)" I question the relevance of a question relating to the background of discovery and would not order questions 268, 269 and 278-280.
[13] The heading "PRIOR THIRD PARTY PHARMACEUTICAL PREPARATIONS CONTAINING ANTHRACYCLINE GLYCOSIDES" contains a two-part question. The first part seeks an admission, to answer which the document would have to be interpreted, I will not require the party to do that. The second part asks for facts with respect to the making of the stuff mentioned in the document. It does not ask for an interpretation of the document
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but asks merely for the fact which could be relevant. The defendant should answer whether or not it has any facts or documents that show that preparations had not or could not be made.
[14] Under the heading "PRIOR SOLUTIONS OF DAUNOMYCIN (DAUNORUBICIN)" questions 319-323 deal with dosage. Dosage it not at issue, the question is irrelevant and does not have to be answered.
[15] Question 295-298 requires the evidence of an expert and does not have to be answered.
[16] Questions 311-312 involve the date of first acqeous solution. What is at issue is stable solutions. The answer to this question appears to be irrelevant and it does not have to be answered.
[17] Under the heading "STABILITY OF PRIOR ART SOLUTIONS OF DAUNORUBICIN" question 339 seeks an admission as the truth of a statement in a published paper of a third party. In practice, an answer to the question might reduce the amount of evidence needed at trial. So I do not object to the question being asked. It does, however, require expert evidence to answer it and I will not order it answered.
[18] Question 340 asks if the defendant or its predecessor collaborated in the published articles. I see no relevance to the possible answer and will not order an answer.
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[19] Under the heading "FIRST USE AND SALE OF ÀNTHRACYCLINE GLYCOSIDES" these questions are not limited to Canada and the U.S., as in the pleadings, and are therefore too broad. They also could be too difficult to answer at this date. They are not ordered.
[20] The next heading deals with the "DEVELOPMENT OF THE INVENTION". Any relationship between the possible answers and prior art or date of invention are too remote to have relevance. None of the questions under this heading have to be answered.
[21] Date of invention not being longer an issue, the questions under the heading "DATE OF INVENTION" do not have to be answered. If I am wrong in my understanding, questions 871-872 and 560, 564 would be relevant and should be answered.
[22] With regard to the heading "COMMERCIAL SUCCESS", questions 1049 and 1231 ask for the defendant's position at trial which does not have to revealed at this time.
[23] The answer to questions 1047-1048 appear relevant. The questions should be answered.
[24] Under the heading "PROCESS CONDITIONS WITH RESPECT TO INVENTION/PATENTED PRODUCT", questions 953, 955, 958 are for expert opinion and do not have to be answered at this stage.
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[25] Questions under the heading "COMPOSITION OF THE CLASS "ANTHRACYCLINE GLYCOSIDE" & CHARACTERISTICS", questions 212, 214, 705, 706, 709, 710, 713, and 714 are factual, possibly relevant, and should be answered.
[26] Question 804 as asked is of dubious relevance and does not have to be answered.
[27] The remainder of the questions under the heading are in whole or in part questions to be answered by experts and will not be ordered. I may say it is possible that the voluntary provision of answers to these questions may save time of the Court and expense.
[28] Under the heading "MEMBERS OF THE CLASS ANTHRACYCLINE GLYCOSIDES & THEIR PROPERTIES" the defendant has agreed to answer 1(a). In my view parts (b) and (c) could provide useful answers and should be answered.
[29] Questions 779, 728, 1082, 1090 should be answered.
[30] Questions 1092, 1096, 1298, 1299 involve interpretation and do not have to be answered.
[31] Questions 1097, 1098, 1195, 1196 should be answered.
[32] Question 1298 requires expert opinion and does not have to be answered.
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[33] Questions 584, 589-591 are too broad and do not have to be answered.
[34] Under the heading "IDENTIFICATION OF DOCUMENTS PRODUCED BY THE DEFENDANT", questions 933 and 935 should be answered if he can tell by inspection of the document.
[35] Question 1143-1156 seeks to the defendant's position and does not have to be answered.
[36] Questions 1158, 1159 would be irrelevant, and will not be ordered.
[37] Questions 1165, 1166, 1170, 1177 are relevant and should be answered.
[38] Question 1253 is irrelevant and will not be ordered.
[39] Questions 1154, 1156, 1276, 1279, 1265, 1267, 1272, 1274 are relevant and should be answered.
[40] Question 1279-1281 requires interpretation of the patent and does not have to be answered.
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[41] Under the heading "EXAMPLES IN THE PATENT - EXPERIMENTAL DATA", the answers to questions 567, 568-570 deal with matters behind the patent and are therefore irrelevant. The questions do not have to be answered.
[42] Under the heading "UTILITY - STORAGE CONDITIONS". It was alleged that shelflife was not promised by the patent and thus contended that shelf-life questions are irrelevant. I note that claims 60, 69, 78, 88, and 98 specifically refer to "storage stable" chemicals and that examples indicate different percentages of reductions in concentration over various time periods at different temperatures and under different strengths of light. I note that the temperature and light are also raised in the statement of claim.
[43] While shelf-life may not equate precisely with stability, it is a quality of a somewhat similar nature. The shelf-life questions cannot therefore be rejected as a class.
[44] Questions 663, 752, 753, 827, 828 seek expert opinions and do not have to be answered.
[45] Questions 681, 683, 1283, 754-757, 821-824 are ordered answered because I understand regulatory authorities to be those affecting Canada.
[46] Question 120-121 looks for documents submitted to any regular authority. This is too broad and does not have to be answered.
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[47] Under the heading "FILING OF SUPPLEMENTARY DISCLOSURE", the questions are seeking to associate foreign filings and the reasons therefor with the Canadian patent. They are, in my view, irrelevant and do not have to be answered.
[48] Under the heading "PRIOR ART DISCLOSED BY THE CANADIAN DEFENDANT TO THE CANADIAN PATENT OFFICE AS REQUIRED UNDER RULE 40", the answer to question 990 might be useful. The question should be answered.
[49] To obtain an answer to question 991 the plaintiff as easily to the defendant can compare the two documents so I will not order it answered. I note, however, that an answer would have saved time of the Court if the matter has to be proved.
[50] With regard to questions 1005, 1006 I agree with the defendant that if they did it, it will be obvious from the documents and that why they did it will be irrelevant, so no answer will be ordered.
[51] Questions 1301 to 1304 fall under the heading "MEANS OF pH ADJUSTMENT". At the risk of raising every beginning high school chemistry student to the rank of an expert, I
am ruling that the answer to such a question should be required of an expert. It will not be ordered.
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[52] Under the heading "STANDING", the reason a company was made a party in another proceeding is irrelevant. Question 1111 does not have to be answered.
[53] "CHAIN OF TITLE". I gather the chain of title documents are no longer sought. Question 54-58 is not ordered.
[54] Under the heading "INVENTION", I was informed the defendant had advised that the inventors were still employed. Their capacties are not relevant. No order will be made.
ORDER
The questions that it is indicated should be answered in the foregoing reasons are hereby ordered answered. It is further ordered that a representative of the defendant re-attend to answer all questions ordered to be answered and all logical follow-up questions flowing therefrom. Re-attendance shall be at the defendant's expense.
"Peter A.K. Giles"
A.S.P.
TORONTO, ONTARIO March 23, 1999
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
COURT NO: STYLE OF CAUSE:
T-421-97
FAULDING (CANADA) INC.
- and -
PHARMACIA S.p.A.
DATE OF HEARING: PLACE OF HEARING: REASONS FOR ORDER BY: DATED:
APPEARANCES:
WEDNESDAY, MAY 27, 1998
TORONTO, ONTARIO
GILES, A.S.P.
TUESDAY, MARCH 23, 1999
Ms. Susan D. Beaubien
For the Plaintiff
Mr. Gunars A. Gaikis Ms. Shonagh L. McVean
For the Defendant
SOLICITORS OF RECORD:
Shapiro Cohen Barristers & Solicitors 2001-112 Kent St., PO Box 3340, Stn. D. Ottawa, Ontario
KIP 6P1
For the Plaintiff
Smart & Biggar Barristers & Solicitors Box 111
1500-438 University Ave., Toronto, Ontario
M5 G 2R8
For the Defendant