Eli Lilly Canada Inc. v. Sandoz Canada Incorporated

Eli Lilly Canada Inc. v. Sandoz Canada Incorporated

The Court declined to order immediate unredaction or third-party/Minister production and instead required Sandoz to provide a revised affidavit of documents and to review unredacted materials and request further documents from ScinoPharm. The Court held that redactions may be permitted subject to narrow criteria, that foreign regulatory filings are potentially relevant but must be listed in Schedule IV if not in the party's control, and that inadequate pleadings undermine requests for third-party production. The appropriate remedy was structured cooperation and a procedural schedule rather than broad compulsory orders at this stage.

Citation
2009 FC 345
Parties
Plaintiff: Eli Lilly Canada Inc.; Plaintiff: Eli Lilly and Company; Defendant; Counterclaimant: Sandoz Canada Incorporated; Intervener / Third Party: ScinoPharm Taiwan Ltd.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
2 April 2009
Procedural Posture
Patent Infringement / Pre Trial Discovery Motion for Further and Better Affidavit of Documents and Production of Unredacted/third Party Documents
Outcome
Motion partly resolved by undertaking and court directions; revised affidavit and procedural schedule ordered; Minister not ordered to produce; costs awarded to plaintiffs
Legal Topics
Disclosure, Affidavit of Documents, Third Party Production, Redactions and Confidentiality, Protective Order, Regulatory Filings, Pleadings Particularity
Source Language
English
Intellectual Property Patent Law Civil Procedure Evidence Regulatory Law Disclosure Affidavit of Documents Third Party Production +4 more

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Legal principles 5 Authorities cited 2 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Parties

Eli Lilly Canada Inc.

Plaintiff

Eli Lilly and Company

Plaintiff

Sandoz Canada Incorporated

Defendant; Counterclaimant

ScinoPharm Taiwan Ltd.

Intervener / Third Party

Procedural Posture

Patent Infringement / Pre Trial Discovery Motion for Further and Better Affidavit of Documents and Production of Unredacted/third Party Documents

Legal Issues

  1. 1 Whether Defendant must provide a further and better affidavit of documents
  2. 2 Whether Defendant must produce unredacted and complete copies of redacted documents
  3. 3 Whether Defendant must request and obtain documents from its supplier ScinoPharm

Ratio Decidendi

The Court declined to order immediate unredaction or third-party/Minister production and instead required Sandoz to provide a revised affidavit of documents and to review unredacted materials and request further documents from ScinoPharm. The Court held that redactions may be permitted subject to narrow criteria, that foreign regulatory filings are potentially relevant but must be listed in Schedule IV if not in the party's control, and that inadequate pleadings undermine requests for third-party production. The appropriate remedy was structured cooperation and a procedural schedule rather than broad compulsory orders at this stage.

Court Disposition

Motion partly resolved by undertaking and court directions; revised affidavit and procedural schedule ordered; Minister not ordered to produce; costs awarded to plaintiffs

Orders

  • Defendant shall provide to the Plaintiff a revised affidavit of documents, in accordance with the schedule and procedure to be agreed to by the parties in light of these reasons.
  • Within ten days of this Order, the parties shall provide the Court with a draft Order setting out a procedure and schedule for the provision of further and better affidavits of documents by both parties, communication of documents, provisions of particulars, discoveries, and other steps to be taken in this action.