Eli Lilly Canada Inc. v. Novopharm Limited

Eli Lilly Canada Inc. v. Novopharm Limited

The Court held that Novopharm had not established a right to wholesale disclosure or cross-examination on affidavits but had demonstrated that certain categories and specific documents likely relevant (notably post-2001 clinical trial data if it exists, certain product-liability documents dated prior to issuance identified as R–V, and certain prior art material relevant to the allegation that the promised advantages do not exist) were not disclosed and must be reviewed and produced. Lilly's general selection method from US production was not unreasonable but proved to have missed specific relevant documents; Lilly must re-review and serve revised affidavits within 30 days. Other relief...

Citation
2007 FC 1195
Parties
Plaintiff (defendant by Counterclaim): Eli Lilly Canada Inc.; Plaintiff (defendant by Counterclaim): Eli Lilly and Company; Plaintiff (defendant by Counterclaim): Eli Lilly Company Limited; Plaintiff (defendant by Counterclaim): Eli Lilly SA; Defendant (plaintiff by Counterclaim): Novopharm Limited
Court
Federal Court
Jurisdiction
Canada
Judgment Date
15 November 2007
Procedural Posture
Patent Infringement; Counterclaim for Invalidity and Damages Under the Patented Medicines (notice of Compliance) Regulations / Interlocutory Motion (rule 227) for Further and Better Affidavits of Documents and Cross Examination on Affidavits; Pre Examination for Discovery
Outcome
Motion granted in part and dismissed in part: Plaintiffs ordered to review and provide revised affidavits and produce specific categories of documents; broader disclosure and cross-examination requests denied; discovery schedule adjusted; costs awarded in the cause.
Legal Topics
Affidavit of Documents, Relevance and Disclosure (rule 222(2)), Cross Examination on Affidavit, Prior Art, Clinical Trial Data, Product Liability Materials, Examination for Discovery, Costs
Source Language
English
Patent Law Civil Procedure Discovery Regulatory Law Affidavit of Documents Relevance and Disclosure (rule 222(2)) Cross Examination on Affidavit Prior Art +4 more

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Parties

Eli Lilly Canada Inc.

Plaintiff (defendant by Counterclaim)

Eli Lilly and Company

Plaintiff (defendant by Counterclaim)

Eli Lilly Company Limited

Plaintiff (defendant by Counterclaim)

Eli Lilly SA

Plaintiff (defendant by Counterclaim)

Novopharm Limited

Defendant (plaintiff by Counterclaim)

Procedural Posture

Patent Infringement; Counterclaim for Invalidity and Damages Under the Patented Medicines (notice of Compliance) Regulations / Interlocutory Motion (rule 227) for Further and Better Affidavits of Documents and Cross Examination on Affidavits; Pre Examination for Discovery

Legal Issues

  1. 1 Whether Lilly's affidavits of documents omitted relevant documents
  2. 2 Scope of relevance under Rule 222(2) for affidavits of documents
  3. 3 Relevance of post-priority/ post-issuance clinical trial data and internal communications

Ratio Decidendi

The Court held that Novopharm had not established a right to wholesale disclosure or cross-examination on affidavits but had demonstrated that certain categories and specific documents likely relevant (notably post-2001 clinical trial data if it exists, certain product-liability documents dated prior to issuance identified as R–V, and certain prior art material relevant to the allegation that the promised advantages do not exist) were not disclosed and must be reviewed and produced. Lilly's general selection method from US production was not unreasonable but proved to have missed specific relevant documents; Lilly must re-review and serve revised affidavits within 30 days. Other relief...

Court Disposition

Motion granted in part and dismissed in part: Plaintiffs ordered to review and provide revised affidavits and produce specific categories of documents; broader disclosure and cross-examination requests denied; discovery schedule adjusted; costs awarded in the cause.

Orders

  • Plaintiffs shall review their documents and, no later than 30 days from this Order, serve on the Defendant revised affidavits of documents, and file proof of such service in Court
  • The time within which the Defendant is to proceed with the examinations on discovery of the Plaintiffs and of the inventors is extended to 45 days from service of the Plaintiffs' revised affidavits of documents, excluding December 22, 2007 to January 2, 2008