Federal Court Decisions

Date: 20061120

Docket: T-1548-06

Citation: 2006 FC 1405

BETWEEN:

LES LABORATOIRES SERVIER, ADIR,

ORIL INDUSTRIES, SERVIER CANADA INC.,

SERVIER LABORATORIES (AUSTRALIA) PTY LTD

and

SERVIER LABORATORIES LIMITED

Plaintiffs

and

APOTEX INC.

and

APOTEX PHARMACHEM INC.

Defendants

REASONS FOR ORDER

MORNEAU P.

[1]               This is a motion by the plaintiffs to have a confidentiality order issued pursuant to rule 151 of the Federal Courts Rules (the rules) in order to provide for the preservation of the confidentiality of certain information and documents to be exchanged between the parties during the discovery phase of a full-fledged action for patent infringement.

[2]               These are the reasons why I did believe it was appropriate to grant the plaintiffs’ motion and to issue this day a confidentiality order under separate cover in accordance with the terms submitted by the plaintiffs in the draft order attached to their motion record.

[3]               In support of their motion, the plaintiffs submitted an affidavit from the Directeur Brevets for the plaintiff Les Laboratoires Servier (the affidavit of Mrs. Sylvie Jaguelin-Guinamant) in which Mrs. Guinamant identifies sufficiently in my view that the documents to be protected are of a confidential nature, that they were and are treated as such at all relevant times and a serious prejudice would be caused to the plaintiffs if the requested confidential order is not issued.  To evidence more particularly the nature of the evidence to be disclosed, the plaintiffs also brought the attention of the Court to the affidavit of a Mr. Sumpter (on of the three affidavits, as I understood, to be used by the plaintiffs in support of a motion for an interlocutory injunction).

[4]               I believe in this case the plaintiffs’ evidence (constituted by Mrs. Guinamant affidavit with the aid of the Sumpter affidavit) meets the relevant considerations recognized in 2005 by this Court in the case of Merck & Co. v. Brantford Chemicals Inc. (2005), 43 C.P.R. (4^th) 233 where at paragraph [14] therein the Court refers to the principles laid out by Mackay J. in Apotex Inc  v. Wellcome Foundation Ltd (1993), 51 C.P.R. (3d) 305, at 311.

[5]               Plaintiffs’ evidence also meets, as far as one judges them applicable, the instructions of the Supreme Court in Sierra Club of Canada v. Canada (Minister of Finance), [2002] 2 S.C.R. 522.

[6]               In Sierra Club, the Court was dealing with a motion for a confidentiality order under rule 151 in a context that is very different from ours. The Supreme Court identifies, at paragraph 84 of its reasons, the public law context confronting it:

[84] This motion relates to an application for judicial review of a decision by the government to fund a nuclear energy project. Such an application is clearly of a public nature, as it relates to the distribution of public funds in relation to an issue of demonstrated public interest. Moreover, as pointed out by Evans J.A., openness and public participation are of fundamental importance under the CEAA. Indeed, by their very nature, environmental matters carry significant public import, and openness in judicial proceedings involving environmental issues will generally attract a high degree of protection. In this regard, I agree with Evans J.A. that the public interest is engaged here more than it would be if this were an action between private parties relating to purely private interests.

(My emphasis.)

[7]               The case herein as mentioned before is one of alleged infringement and invalidity of a patent. Therefore it is closer to "an action between private parties relating to purely private interests".  In addition, here, the plaintiffs moved the Court for a confidentiality order which did not seek to restrain access to counsel only.

[8]               At paragraph 53 of its reasons in Sierra Club, the Supreme Court sets out the following two-step test required to resolve the situation submitted to it:

[53] Applying the rights and interests engaged in this case to the analytical framework of Dagenais and subsequent cases discussed above, the test for whether a confidentiality order ought to be granted in a case such as this one should be framed as follows:

A confidentiality order under Rule 151 should only be granted when:

(a) such an order is necessary in order to prevent a serious risk to an important interest, including a commercial interest, in the context of litigation because reasonably alternative measures will not prevent the risk; and

(b) the salutary effects of the confidentiality order, including the effects on the right of civil litigants to a fair trial, outweigh its deleterious effects, including the effects on the right to free expression, which in this context includes the public interest in open and accessible court proceedings.

[9]               As for the first branch of the test, that of necessity, Mrs. Guinamant’s affidavit refers, aside from the confidential aspects already mentioned, to the existence of reciprocal confidentiality undertakings in parallel foreign litigation between the same parties. Mrs. Guinamant was not cross-examined on her affidavit and Apotex did not file any evidence to the contrary. I am therefore satisfied that the plaintiffs’ evidence demonstrate a question of general commercial or important interest.

[10]           As for the possibility of other reasonable alternatives to the confidentiality order being sought, I am satisfied in this case that there are not any other reasonable alternatives to issuing the order that is sought.

[11]           As for the rest of the Sierra Club test, I am persuaded that the beneficial effects of the confidentiality order being sought outweigh its deleterious effects.

“Richard Morneau”

MONTRÉAL, Quebec

November 20, 2006

FEDERAL COURT

SOLICITORS OF RECORD

DOCKET:                                                       T-1548-06

STYLE OF CAUSE:                LES LABORATOIRES SERVIER, ADIR,

ORIL INDUSTRIES, SERVIER CANADA INC.,

SERVIER LABORATORIES (AUSTRALIA) PTY LTD

and

SERVIER LABORATORIES LIMITED

Plaintiffs

and

APOTEX INC.

and

APOTEX PHARMACHEM INC.

Defendants

PLACE OF HEARING:                                 Montréal, Quebec

DATE OF HEARING:                                   November 20, 2006

REASONS FOR ORDER AND ORDER:   PROTHONOTARY MORNEAU

DATED:                                                          November 20, 2006

APPEARANCES:

SOLICITORS OF RECORD: