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Date: 20060315

Docket: T-1847-03

Citation: 2006 FC 340

Ottawa, Ontario, March 15, 2006

PRESENT:      The Honourable Mr. Justice O'Keefe

BETWEEN:

ABBOTT LABORATORIES and

ABBOTT LABORATORIES, LIMITED

Applicants

- and -

THE MINISTER OF HEALTH and

APOTEX INC.

Respondents

PUBLIC VERSION OF

REASONS FOR ORDER AND ORDER

O'KEEFE J.

[1]                This is a motion by Abbott Laboratories and Abbott Laboratories, Limited (Abbott) for an order:

            1.          Disqualifying Jack Dunitz from appearing as a witness for Apotex Inc. (Apotex) in this proceeding and to strike out his evidence from the record; and

            2.          Allowing Abbott costs of this motion.

[2]                By a letter dated May 31, 2002, Apotex served upon Abbott its first Notice of Allegation (NOA#1) in respect of clarithromycin. The only allegation made in the NOA is that Abbott's patent no. 2,261,732 (the '732 patent) is invalid.

[3]                As a result of being served with NOA#1, Abbott identified Jack David Dunitz as a potential expert witness.

[4]                On July 2, 2002, Marcus Klee of McCarthy Tetrault LLP (counsel for Abbott) sent an e-mail to Dr. Dunitz and had a conversation with him. Mr. Klee also sent some background documents including the '732 patent to Dr. Dunitz.

[5]                On July 17, 2002, Dr. Dunitz and the senior members of Abbott's Canadian litigation team held a teleconference call. Present at that meeting were Andrew Reddon, Steven Mason, Marcus Klee, Steve Crowley, the senior manager of patent administration at Abbott U.S. and Greg Donner, senior patent agent at Abbott U.S.

[6]                At the commencement of this meeting, it was made clear to Dr. Dunitz that the communications during the conference call were to be kept in the strictest confidence. Dr. Dunitz was also informed that he would have to sign a consultancy agreement, which he did sign. This agreement required Dr. Dunitz to keep the matters discussed confidential.

[7]                Paragraphs 11 to 15 of Andrew J. Reddon's affidavit are as follows:

11.        At the outset of the conversation, I told Dr. Dunitz in the most clear and certain of terms that the communications during the conference call were to be kept in the strictest confidence. I also told Dr. Dunitz that he would be receiving a consultancy agreement to formalize the terms of his engagement, including compensation and his agreement to keep the matters discussed (including that which was discussed in this initial conference call) confidential. Dr. Dunitz had no problem whatsoever with this and agreed entirely. Had Dr. Dunitz not agreed, we would not have continued with the call and would not have disclosed any confidential information.

12.        I led the discussion with Dr. Dunitz during the conference call. I discussed the legal strategy with which Abbot planned to defend the validity of the '732 Patent and the legal strategy that Abbott would be employing to deal with potential infringement issues.

13.        In particular, part of this discussion involved conveying to Dr. Dunitz important parts of Abbott's legal strategy concerning the construction of the '732 patent, as well as a discussion about the legal strategy which would be used to defend the invalidity allegations made by Apotex. Dr. Dunitz commented on the legal strategy during the telephone conference. There was also a discussion, generally, of the legal strategy involving Form II clarithromycin, which is also the subject-matter of the '606 Patent which claims Form II clarithromycin, per se.

14.        Based on the conversation, Dr. Dunitz expressed conclusions and judgments about the '732 patent, its construction and its validity and about Abbott's case generally.

15.        After the conference call and, as agreed prior to the discussions in that call, McCarthy's and Dr. Dunitz entered into a formal Consultancy Agreement which deals with the terms of his engagement, including compensation and confidentiality. The Consultancy Agreement was terminated in February, 2004. Despite this, Dr. Dunitz still remains bound by the terms of the Consultancy Agreement for the work that he did for Abbott and in respect of the discussions he had with Abbott and its counsel on July 17, 2002. Attached hereto and marked as Exhibit "B" is a copy of the signed Consultancy Agreement.

[8]                Apotex served Abbott with a second notice of allegation (NOA #2) on August 25, 2003. NOA #2 alleges non-infringement and invalidity of additional patents listed by Abbott after the service of NOA #1. NOA #2 also alleges non-infringement and invalidity of the '732 patent. This present proceeding to disqualify Dr. Dunitz as a witness for Apotex, was commenced in response to NOA #2.

[9]                When Apotex filed its expert affidavits in support of its allegations in NOA #2 concerning the '732 patent, one of the affidavits was the affidavit of Dr. Jack Dunitz. The written assessments on behalf of Apotex, prepared by Dr. Dunitz, contained an opinion on the validity of the '732 patent.

[10]            Mr. Reddon stated in paragraphs 21 to 24 of his affidavit:

21         Some of the opinions expressed by Dr. Dunitz in his affidavit are conclusions that he reached and expressed, and matters that were discussed in the conference call and which he agreed to maintain as confidential. It is impossible for Dr. Dunitz to have drafted his affidavit without extensive discussions and consultation with counsel for Apotex.

22.        After receiving Dr. Dunitz's affidavit, Abbott advised Apotex of its objection concerning Dr. Dunitz acting as an expert witness in this proceeding and the reasons therefore. Despite Abbott's objection, Apotex continues to rely on Dr. Dunitz's affidavit. Attached hereto and marked as Exhibit "G" is a copy of the objections made by my partner, Mr. Mason, and the response received from Mr. Brodkin of Goodmans.

23.        If Dr. Dunitz is allowed to remain as a witness in this case, the prejudice to Abbott is manifest. Neither I, nor anyone at McCarthy's or Abbott, would have disclosed any confidential information to Dr. Dunitz had I known that he would attempt to use that information against Abbott, or even if there was a risk - as there clearly is in this case - that such information would or could be disclosed. Nor would we have even consulted Dr. Dunitz if we thought - even for a second - that he might breach his obligations of confidentiality.

24.        There are literally hundreds if not thousands of witnesses who possess qualifications at least as relevant and substantial as Apotex's experts. Even in this case, Apotex has other experts who address the same issues addressed by Dr. Dunitz. Apotex will suffer no prejudice if Dr. Dunitz is disqualified and his affidavit struck.

[11]            Issues

            1.          Should Abbott's motion be dismissed because of delay?

            2.          Should Abbott's motion be dismissed because Abbott took a "fresh step" in the litigation which now prevents it from objecting to Dr. Dunitz's affidavit?

            3.          Should Abbott's motion be dismissed because Abbott brought the motion for tactical or strategic purposes?

            4.          Should Dr. Dunitz be disqualified from appearing as a witness for Apotex and should his evidence be struck from the record?


Analysis and Decision

[12]            Issue 1

            Should Abbott's motion be dismissed because of delay?

            Apotex stated that the motion should be dismissed because of the delay between when the issue of disqualification was first raised and when the motion was brought. I have looked at the file and I note that the issue of disqualification was first raised in April 2005 after the filing of the Dunitz affidavit. In June, July and August, the parties were negotiating on the issue to avoid bringing a motion but no resolution was reached. The applicants tried to have the motion argued on August 22, 2005, but Apotex's counsel was not available. The matter was subsequently set down for September 12, 2005, but was actually heard on October 24, 2005. The 24 month period for the issuance of prohibition has also been extended. Based on this factual background, I am not prepared to dismiss the motion because of delay.

[13]            Issue 2

            Should Abbott's motion be dismissed because Abbott took a "fresh step" in the litigation which now prevents it from objecting to Dr. Dunitz's affidavit?

            Apotex submitted that by requesting and obtaining an amendment to the scheduling order, Abbott took a fresh step in the proceeding and is now precluded from making a motion to have Dr. Dunitz disqualified. I can see no evidence in the record that indicates that Abbott abandoned its intention to attempt to have Dr. Dunitz disqualified. I agree with Abbott that any change to the schedule would also allow time for the cross-examination of Dr. Dunitz because Abbott would not know at this time whether its motion would be successful. I will not dismiss Abbott's motion because of the fresh step that was taken.

[14]            Issue 3

            Should Abbott's motion be dismissed because Abbott brought the motion for tactical or strategic purposes?

            Apotex suggested that Abbott consulted Dr. Dunitz and conveyed confidential information to him solely for the purpose of preventing him from being an adverse witness against Abbott if he was to be retained by someone such as Abbott. I cannot find any evidence to support this contention or any evidence on which to make such an inference. The motion will not be dismissed for this reason.

[15]            Issue 4

            Should Dr. Dunitz be disqualified from appearing as a witness for Apotex and should his evidence be struck from the record?

            Abbott's motion called for disqualification of Dr. Dunitz and for his evidence to be struck from the record. Madam Prothonotary Milczynski stated the following in the recent decision, Abbott Laboratories v. Canada(The Minister of Health), 2006 FC 76 at paragraphs 19 to 21:

[19]       The proper approach to determine whether or not an expert should be disqualified must consider the facts and surrounding circumstances of each case and:

·         whether the expert knew he or she was receiving confidential information, with the expectation that the information would be maintained in confidence;

·         the nature of the confidential information;

·         the risk of the confidential information being disclosed;

·         the risk of prejudice arising to either the party challenging the expert or to the party seeking to retain the challenged expert; and

·         the interests of justice and public confidence in the judicial process.

[20]       Accordingly, the principles require that the Court balance the interests of the party seeking to retain an expert witness and the party seeking to protect its confidential information. In that regard, counsel for Pharmascience raises the danger of expert witnesses being contacted simply to deprive an opposing party of their expertise. This danger was eloquently described by Lord Denning in Harmony Shipping Co SA v. Davis et al, [1979] 3 All ER 177 (C.A.):

If an expert could have his hands tied by being instructed by one side, it would be very easy for a rich client to consult each of the acknowledged experts in the field. Each expert might give an opinion adverse to the rich man, yet the rich man could say to each, "Your mouth is closed and you cannot give evidence in court against me" ..... Does that mean that the other side is debarred from getting the help of any expert evidence because all the experts have been taken up by the other side? The answer is clearly No .... There is no property in an expert witness as to the fact he has observed and his own independent opinion of them. There being no such property in a witness, it is the duty of a witness to come to court and give his evidence in so far as he is directed by the judge to do so.

[21]       In Labee v. Peters, [1996] A.J. No. 809 (Alta Q.B.), after reviewing a number of authorities, the Court set out the principles:

1.          There is no property in a witness.

2.          Even though a party has retained an expert and communicated privileged information to the expert, the expert may still be asked for an opinion by an opposing party and may call that expert at trial.

3.          The expert may not, however, be questioned concerning any privileged material he received from the opposing solicitor nor shall he disclose any opinion he has given to the opposing counsel.

[16]            The evidence in that case was to the effect that the expert received confidential Abbott information relating to Abbott's defence strategy and was involved in confidential discussions regarding these strategies with Abbott's counsel.

[17]            In MacDonald Estate v. Martin, [1990] 3 S.C.R. 1235, Mr. Justice Sopinka stated at page 1260:

Typically, these cases require two questions to be answered: (1) Did the lawyer receive confidential information attributable to a solicitor and client relationship relevant to the matter at hand? (2) Is there a risk that it will be used to the prejudice of the client?

This case dealt with the use of confidential information by solicitors.

[18]            In the present case, Dr. Dunitz was first retained by Abbott and had a teleconference with Abbott's counsel and company officials. Dr. Dunitz also signed a consultancy agreement which required him to keep confidential the matters discussed which included the matters discussed in the teleconference. According to the evidence of Andrew J. Reddon, the discussion included conveying to Dr. Dunitz the legal strategy concerning the '732 patent as well as the legal strategy which would be used to defend the invalidity allegations made by Apotex. There was also a discussion of the legal strategy involving Form II clarithromycin which was the subject matter of the '606 patent. Dr. Dunitz was required to keep the matters confidential after the termination of the consultancy agreement.

[19]            Dr. Dunitz was concerned about the confidentiality issue when first approached by Apotex. He stated the following in an e-mail to Ivor Hughes, a counsel for Apotex:

From: J. D. Dunitz [dunitz@org.chem.ethz.ch]    

Sent: Friday, February, 25, 2005 3:51 PM

To: ivor@ivormhughes.com

Subject: clarithromycin

Dear Ivor,

During your call earlier this evening, the name clarithromycin rang a bell. I checked my papers and saw that in July 2002 I had several telephone calls with the staff of McCarthy Tétrault LLP, Toronto, about the '732 patent by Abbott, a copy of which was sent to me then together with copies of NOAs by Genpherm [sic], Pharmascience, Apotex and Novopharm. [deleted for confidential reasons]. In October 2002 I agreed to act as a consultant for Canadian litigation involving the '732 patent but did not hear anything more about the matter. In January 2004 I wrote that, as I did not want to be held on an indefinite string, I wished to terminate the consultancy agreement, and in reply I was informed that as the "case had taken a number of unexpected turns ...we do not anticipate requiring further assistance from you". On July 19, 2004, that would have been a few weeks after our initial contact, I wrote to formally terminate the agreement with McCarthy Tétrault concerning the '732 patent.

As far as I can judge, I was given no confidential information during this contact, merely copies of the patent and the NOAs, but possibly some of what I was told during the telephone conversations could be regarded as confidential. I have only very brief notes of these conversations.

In any case, I thought I had better mention these matters because it seems to me highly likely that the litigation in which you want me to be involved on your side is the continuation of what I was asked about in 2002, although from the opposite side.

Please let me know your opinion about this, in particular, whether you think this previous consultancy agreement prevents me from taking up the case from the opposite side.

I needed some time to check my notes and get the facts and the times right.

All best wishes,

Jack

[20]            Mr. Hughes' reply was:

February 28, 2005

Dear Jack:

If you were given no confidential information and only the patents (public) and NOA's (public), then there is no problem. It sounds to me like they contacted you to try and remove you from the "expert pool" we can approach to assist.

Remember, whether we or Abbott approach you, your prime purpose for giving a report is to assist the Court. You are to be always unbiased.

We will be sending you our material. We have had problems like this before in other cases and things have been worked out find [sic]. (The expert on the other case consults with us now. The Court determined that there was no problem.)

Best regards,

Ivor

[21]            Dr. Dunitz stated paragraphs 19 and 20 of his affidavit:

19.        To the best of my recollection, more than three years after the fact, I spent most of the conference call of July 17 repeating and elaborating [deleted for confidential reasons] of the '732 Patent for the benefit of Mr. Reddon and the other participants on the call. I have no record or recollection of any specific mention of Apotex or Apotex's NOA during the call.

20.        I also have no record or specific memory of any discussion by Mr. Reddon or anyone else on the call of the legal strategy that Abbott would be employing, either generally or specifically with respect to potential non-infringement issues, the construction of the '732 Patent, Form II clarithromycin or, as I have already stated, the invalidity allegations made by Apotex in its NOA. Further, even assuming that Abbott's legal strategy was discussed, it would have been a waste of time as far as I am concerned. I would not have had any interest in the topic, and now, after more than three years, I have absolutely no recollection or memory of what might have been said by Mr. Reddon or anyone else on the call in this regard. Contrary to Mr. Reddon's assertion at paragraph 13 of his Affidavit, I would not have understood, much less commented on, Abbott's legal strategy, nor would I have felt comfortable or qualified to make any such comments.

[22]            I prefer the evidence of Mr. Reddon as it is definitive about the discussion concerning legal strategy for defending the allegations against the '732 patent and the legal strategy involving from II clarithromycin per se. Mr. Reddon made notes of the meeting. On the other hand, Dr. Dunitz stated he had no record or recollection more than three years after the fact of any mention of the Apotex NOA during the teleconference. He also stated he had no recollection or record of any discussion about Abbott's legal strategy concerning the non-infringement issue, the construction of the '732 patent or Form II clarithromycin. As noted earlier, Dr. Dunitz's e-mail to Mr. Hughes stated that possibly some of what he was told during the teleconference could be regarded as confidential.

[23]            For the above reasons, I am satisfied that Dr. Dunitz knowingly received confidential information with the expectation that it would be maintained in confidence.

[24]            The confidential information according to Mr. Reddon relates to the '732 patent construction, legal strategy to defend the allegations against the '732 patent and legal strategy involving Form II clarithromycin per se. I am satisfied that some of the issues in dispute in NOA #1 are also raised in NOA #2. There is a relationship between Abbott's retaining of Dr. Dunitz and issues in dispute in NOA #2. By way of example, as stated in paragraph 42 of the supplementary motion record of the applicants:

(a)         Both NOA #1 and NOA #2 make invalidity allegations in respect of Form II. Form II is a particular crystal form of clarithromycin and is the form found in the BIAXIN tablet. Form II is claimed both in the '732 Patent and in the '606 Patent.

[25]            I would note that Mr. Reddon's uncontradicted evidence is to the effect that Dr. Dunitz received confidential evidence from Abbott concerning its legal strategy relating to Form II which is the issue raised in Form II. As I noted earlier in these reasons, Dr. Dunitz's recollections of what was conveyed to him was not clear at all.

[26]            In the present case, the risk of the confidential information being disclosed is even greater because Dr. Dunitz cannot now recall what information was given to him. Thus, it is not possible to verify whether the expert has forgotten the confidential information. In Burgess (Litigation Guardian) v. Wu (2003), 68 O.R. (3d) 710 at pages 729 to 730, Ontario Superior Court Justice Ferguson stated:

[106]     I note that it would be an impossible task to enforce a rule which permitted a person who had received confidential information to act for an opposing part if they said they did not remember the information. How would the court verify the lack of memory? At what stage? It would be practically impossible to police and the person whose confidences were at stake would inevitably feel betrayed.

[107]     Moreover, the influence of even forgotten information cannot be discounted. As Dr. MacDonald himself said in his report, " . . . the opinion any medical specialist has to offer necessarily reflects their personal experience and sometimes subtle biases resulting from their particular clinical experience . . ." (at p. 4).

[108]     The rule established in MacDonald Estate requires an automatic disqualification where the person has received confidential information. There is no automatic exception for the case where the recipient of the information says that they cannot remember it. As stated in MacDonald Estate, at para. 44, " . . . the test must be such that the public represented by the reasonably informed person would be satisfied that no use of confidential information would occur."

There is, in the present case, a risk that the confidential information would be disclosed.

[27]            There is also a risk of prejudice to the applicants if Dr. Dunitz is allowed to be an expert for Apotex on NOA #2 proceedings as the applicants' legal strategy was disclosed. On the other hand, the respondent was alerted by Dr. Dunitz before it retained him that there might be a problem due to confidential information from the previous retainer with the applicants.

[28]            As I have noted earlier, there is no evidence which would indicate that Abbott was attempting to retain experts to prevent them from testifying for the opposing party. Thus, there is nothing that negatively impacts the interests of justice and public confidence in the judicial process.

[29]            I would therefore allow the applicants' motion and disqualify Dr. Jack Dunitz from appearing as a witness for Apotex in this proceeding and I would also strike out his evidence from the record.

ORDER

[30]            IT IS ORDERED that Dr. Jack Dunitz is disqualified from appearing as a witness for Apotex Inc. in this proceeding and his evidence is struck from the record.

"John A. O'Keefe"

Judge


FEDERAL COURT

NAME OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                                           T-1847-03

STYLE OF CAUSE:                           ABBOTT LABORATORIES and

                                                            ABBOTT LABORATORIES LIMITED

                                                            - AND -

                                                            THE MINISTER OF HEALTH and

                                                            APOTEX INC.

PLACE OF HEARING:                     Toronto, Ontario

DATE OF HEARING:                       October 24, 2005

REASONS FOR ORDER

AND ORDER OF:                             O'KEEFE J.

DATED:                                              March 15, 2006

APPEARANCES:

Steven G. Mason

Aaron Sawchuk

FOR THE APPLICANTS

Kent E. Thomson

Matthew Milne-Smith

FOR THE RESPONDENT,

APOTEX INC.

SOLICITORS OF RECORD:

McCarthy Tétrault LLP

Toronto, Ontario

FOR THE APPLICANTS

Davies Ward Phillips & Vineberg LLP

Toronto, Ontario

John H. Sims, Q.C.

Deputy Attorney General of Canada

FOR THE RESPONDENT,

APOTEX INC.

FOR THE RESPONDENT,

THE MINISTER OF HEALTH

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Date Modified: 2014-09-16