Boehringer Ingelheim (Canada) Ltd. v. Sandoz Canada Inc.

Boehringer Ingelheim (Canada) Ltd. v. Sandoz Canada Inc.

Interpreting the Rules contextually, a party’s solicitor of record may attend a non-party inventor’s Rule 237(4) examination and may make objections on the record; however the Court cannot compel the plaintiffs to provide answers on behalf of non-party inventors who were not personally served or who were not asked the question under oath. Accordingly the defendants’ motion to compel inventor answers is dismissed in part; certain questions the court deemed proper must be answered by the plaintiffs or pursued via reasonable efforts to have inventors answer, while numerous other questions were held improper and need not be answered.

Citation
2023 FC 1175
Parties
Plaintiff / Defendant by Counterclaim: Boehringer Ingelheim (Canada) Ltd.; Plaintiff / Defendant by Counterclaim: Boehringer Ingelheim International GmbH; Defendant / Plaintiff by Counterclaim: Sandoz Canada Inc.; Defendant / Plaintiff by Counterclaim: Sun Pharma Canada Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
30 August 2023
Procedural Posture
Patent Litigation — Discovery Motion (motion to Compel Answers Under Rules 97 and 237(4)) / Interlocutory — Motion to Compel / Examinations for Discovery
Outcome
Motion granted in part and dismissed in part.
Legal Topics
Examination for Discovery, Motions to Compel Discovery, Procedural Objections, Scope of Discovery, Third Party Witnesses
Source Language
English
Civil Procedure Intellectual Property Patent Law Evidence Examination for Discovery Motions to Compel Discovery Procedural Objections Scope of Discovery +1 more

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Parties

Boehringer Ingelheim (Canada) Ltd.

Plaintiff / Defendant by Counterclaim

Boehringer Ingelheim International GmbH

Plaintiff / Defendant by Counterclaim

Sandoz Canada Inc.

Defendant / Plaintiff by Counterclaim

Sun Pharma Canada Inc.

Defendant / Plaintiff by Counterclaim

Procedural Posture

Patent Litigation — Discovery Motion (motion to Compel Answers Under Rules 97 and 237(4)) / Interlocutory — Motion to Compel / Examinations for Discovery

Legal Issues

  1. 1 Whether a party’s solicitor of record may attend a non-party inventor’s Rule 237(4) examination for discovery and make objections on the record
  2. 2 Whether the court can compel a party to provide answers on behalf of a non-party inventor under Rule 97 or Rule 237(4)
  3. 3 Whether specific questions posed to inventors and the plaintiffs’ corporate representative were proper under Rules 240 and 242

Ratio Decidendi

Interpreting the Rules contextually, a party’s solicitor of record may attend a non-party inventor’s Rule 237(4) examination and may make objections on the record; however the Court cannot compel the plaintiffs to provide answers on behalf of non-party inventors who were not personally served or who were not asked the question under oath. Accordingly the defendants’ motion to compel inventor answers is dismissed in part; certain questions the court deemed proper must be answered by the plaintiffs or pursued via reasonable efforts to have inventors answer, while numerous other questions were held improper and need not be answered.

Court Disposition

Motion granted in part and dismissed in part.

Orders

  • For questions at item numbers 9, 10, 11, 125, 186, 192 of the defendants’ moving chart the questions are proper and are to be answered by the plaintiffs within 15 days of this Order or such extended time as agreed in writing
  • For questions at item numbers 289, 290, 291, 310, and 317 of the defendants’ moving chart the questions are proper and the plaintiffs are requested to use reasonable efforts to contact the inventors and prevail upon them to answer within 21 days of this Order or such extended time as agreed in writing