Biogen Canada Inc. v. Taro Pharmaceuticals Inc.

Parties

Procedural Posture

Patent Declaration of Infringement Under the Pm(noc) Regulations / Motion to Rule on Objections and to Compel Answers Following Follow Up Examinations for Discovery

Legal Issues

1. 1 Whether deposition transcripts from US proceedings are likely to contain evidence relevant to unadmitted facts in the Canadian actions
2. 2 Whether the questions asked constitute proper follow-up to initial examinations for discovery
3. 3 Whether production would breach protective orders or the implied undertaking rule such that disclosure should be refused

Ratio Decidendi

Court ordered plaintiffs to answer and produce relevant portions of the Goodman deposition transcripts as proper and proportionate follow-up because such transcripts are likely to contain testimony that could be used to refresh or impeach witness testimony at trial, subject to plaintiffs' ability to obtain relief from any conflicting US protective order or undertaking; court denied production of IPR deposition transcripts and Category 3 questions because defendants waived the right to raise protective-order applicability by not moving earlier, the requests were not proper follow-up, lacked evidentiary basis for relevance, and the IPR protective order did not permit waiver by the parties.

Court Disposition

Partial grant of defendants' motion to compel; plaintiffs ordered to provide answers and produce relevant portions of Dr. Goodman deposition transcripts subject to conditions; requests for IPR deposition transcripts and Category 3 questions denied; parties to submit draft endorsement; no costs ordered.

Orders

• Plaintiffs must provide answers to questions identified as Category 1A and produce relevant portions of the Goodman deposition transcripts subject to paragraph 27 conditions allowing relief if a US court declines to permit disclosure
• Plaintiffs are not required to answer the questions in Category 3 of the refusals chart