Eli Lilly Canada Inc. v. Teva Canada Limited

Eli Lilly Canada Inc. v. Teva Canada Limited

The Prothonotary did not exceed jurisdiction in directing Teva to produce its own confidential materials by exercising the waiver available under confidentiality orders because Rules 151 and 152 permit confidential treatment but a party may waive its own confidentiality; procedural fairness and the open court principle support production of relevant factual material. However, the Prothonotary's order was overbroad in compelling production of irrelevant confidential material and must be limited so that only relevant portions are produced under protective terms agreed or settled before the Prothonotary, with disputes referred back to the Prothonotary.

Citation
2015 FC 801
Parties
Plaintiff (defendant by Counterclaim): Eli Lilly Canada Inc.; Plaintiff (defendant by Counterclaim): Eli Lilly and Company; Defendant (plaintiff by Counterclaim): Teva Canada Limited
Court
Federal Court
Jurisdiction
Canada
Judgment Date
26 June 2015
Procedural Posture
Appeal From Interlocutory Prothonotary Order in Patent/regulations Damages Litigation Under the Patented Medicines (notice of Compliance) Regulations / Interlocutory Appeal
Outcome
Appeal dismissed except that the Prothonotary's order is modified to require redaction of irrelevant confidential materials; parties to agree or settle procedure before the Prothonotary; no costs awarded
Legal Topics
Waiver of Confidentiality, Implied Undertaking, Relevance of Prior Trial Transcripts, Prothonotary Jurisdiction, Standard of Review
Source Language
English
Civil Procedure Discovery Confidentiality Orders Patent Litigation Regulatory Law (pm(noc) Regulations) Waiver of Confidentiality Implied Undertaking Relevance of Prior Trial Transcripts +2 more

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Parties

Eli Lilly Canada Inc.

Plaintiff (defendant by Counterclaim)

Eli Lilly and Company

Plaintiff (defendant by Counterclaim)

Teva Canada Limited

Defendant (plaintiff by Counterclaim)

Procedural Posture

Appeal From Interlocutory Prothonotary Order in Patent/regulations Damages Litigation Under the Patented Medicines (notice of Compliance) Regulations / Interlocutory Appeal

Legal Issues

  1. 1 Whether a Prothonotary may direct a party to exercise its waiver under a confidentiality order to produce its own confidential material
  2. 2 Whether production of confidential trial transcripts and confidential reasons from prior proceedings should be compelled
  3. 3 Whether the requested materials were relevant to Teva's section 8 damages claim relating to trade-spend

Ratio Decidendi

The Prothonotary did not exceed jurisdiction in directing Teva to produce its own confidential materials by exercising the waiver available under confidentiality orders because Rules 151 and 152 permit confidential treatment but a party may waive its own confidentiality; procedural fairness and the open court principle support production of relevant factual material. However, the Prothonotary's order was overbroad in compelling production of irrelevant confidential material and must be limited so that only relevant portions are produced under protective terms agreed or settled before the Prothonotary, with disputes referred back to the Prothonotary.

Court Disposition

Appeal dismissed except that the Prothonotary's order is modified to require redaction of irrelevant confidential materials; parties to agree or settle procedure before the Prothonotary; no costs awarded

Orders

  • Appeal dismissed except that irrelevant materials must be redacted from the Confidential Documents Teva is required to produce
  • Terms of the final order and procedure to determine irrelevant Confidential Documents to be agreed or settled before the Prothonotary