Docket: T-421-97
Citation: 2004 FC 1273
Toronto, Ontario, September 16th, 2004
Present: The Honourable Madam Justice Heneghan
BETWEEN:
FAULDING (CANADA) INC.
Plaintiff
and
PHARMACIA ITALIA & UPJOHN S.P.A.
Defendant
REASONS FOR ORDER AND ORDER
[1] Faulding (Canada) Inc. ("Faulding") commenced this action on March 12, 1997. In its Statement of Claim, it alleged that Canadian Patent No. 1,291,037 (the "'037 Patent") recorded at the Canadian Patent Office in the name of Pharmacia & Upjohn S.P.A. ("Pharmacia & Upjohn") was invalid.
[2] As part of the pre-trial process, Faulding and Pharmarcia & Upjohn consented to the terms of a Protective Order ("Protective Order") dated October 27, 2000. The action did not proceed to trial. It was dismissed by a consent judgment dated March 3, 2001.
[3] Pharmacia Italia S.p.A. ("Pharmacia Italia") now brings a motion seeking variation of the Protective Order. Specifically, Pharmacia Italia seeks the following relief:
1. An Order permitting Pharmacia Italia S.p.A. to obtain from the Federal Court Registry a copy, including a certified copy, of the following expert statements marked as subject to the Protective Order dated October 27, 2000:
(i) Dr. Carstensen's statement dated August 29, 2000 and three statements dated February 6, 2001;
(ii) Dr. Rhodes's two statements dated February 6, 2001;
(iii) Dr. Stella's statements dated December 4, 2000 (Volume I of III) and February 12, 2001; and
(iv) Dr. Beijnen's statement dated December 4, 2000 (Volume I of IV).
2. An Order modifying the strictures on disclosure arguably imposed by the Protective Order dated October 27, 2000, specifically, permitting Pharmacia Italia S.p.A. to disclose the information marked as subject to the Protective Order referred to in paragraph 1, above, to whomever it sees fit and
(a) for whatever purpose it sees fit or,
(b) in the alternative, permitting Pharmacia Italia S.p.A. to use this information for the purpose of the following other related proceedings:
(i) Canada
Federal Court proceeding in Court File No. T-1142-04
Parties: Pfizer Canada Inc. And Pharmacia Italia S.p.A., The Minister of Health and Mayne Pharma (Canada) Inc.
(ii) Australia
Federal Court proceeding No. V439 of 2003
Parties: (1) Pharmacia Italia S.p.A. (2) Pfizer (Perth) Pty Limited v (1) Mayne
Pharma Pty Ltd (2) F H Faulding & Co Ltd (3) Faulding Healthcare Pty Ltd
(iii) Hong Kong
High Court of Hong Kong, Court of First Instance, proceeding No. HCA 1345 of 2004
Parties: Pharmacia Italia S.p.A. v. Mayne Pharma (Hong Kong) Limited
(iv) England
High Court of Justice, Chancery Division, Patents Court proceeding No. HC-04-C01628
Parties: (1) Mayne Pharma Pty Ltd (2) Mayne Pharma plc v. Pharmacia Italia S.p.A.
3. Such further and other relief as this Honourable Court may deem just.
[4] Faulding opposes the motion and argues that there is insufficient evidence that Pharmacia Italia is the legal successor of Pharmacia & Upjohn, the Defendant in this action. In this regard, Faulding refers to the affidavit of Mr. Gunars A. Gaikis which provides as follows:
I GUNARS A. GAIKIS, of the City of Toronto, in the Province of Ontario, swear that:
1. I am a partner with the law firm of Smart & Biggar, counsel for the Defendant. I have been the partner responsible for the handling of this action (the "Action") since the Action was commenced. As such, I have knowledge of the matters herein, except where statements are stated to be based on information and belief.
2. I am advised by Nancy P. Pei and do verily believe that Pharmacia & Upjohn S.p.A. is now called Pharmacia Italia S.p.A. (Pharmacia Italia).
No details are given to support the statement or belief in paragraph 2 and Faulding argues that this bare statement is insufficient to show that Pharmacia Italia is the successor or assignor of the Defendant.
[5] More importantly, however, Faulding submits that the moving party has failed to meet the test for varying a protective order as set out in Smith, Kline and French Laboratories Ltd. v. Canada, [1989] 3 F.C. 540, app'd (1997), 214 N.R. 312 (Fed. C.A.), that is the existence of "truly compelling reasons" for such variation.
[6] For its part, Pharmacia Italia argues that it is the "owner" of the confidential matters to which it now seeks access. The affidavit of Mr. Gaikis filed in support of this motion refers to current litigation in Australia, Hong Kong and England respecting patents corresponding to the '307 Patent. Mr. Gaikis says those proceedings require expert construction of the terms of the Canadian patent and corresponding patents.
[7] Pharmacia Italia argues that the test set out in Smith, Kline and French, supra, does not apply in this case because it is merely seeking access to its "own" documents and reports.
[8] Alternatively, if the test does apply, then Pharmacia Italia suggests that the conduct of current litigation in varying the same or corresponding patents is essentially compelling them to vary the Protective Order.
Discussion
[9] The test for varying a protective order was considered in Smith, Kline and French, supra where the court said as follows at p. 559:
On principle, where the court has ordered, with consent of the parties, that documents be sealed in confidence in the interests of seeking justice in the issues between parties to an action, the reason for varying the orders should be truly compelling especially where the purpose for access is unrelated in any way and is in that sense collateral or ulterior to the action in which the documents are filed and sealed. Only in truly exceptional cases would it be warranted to change a "confidentiality order" in these circumstances. Indeed, even in the absence of an order the Court might well preclude use or access to information arising from discovery for purposes of a collateral action because of an implied undertaking that this information is to be used only for purposes of the action in which it is produced: Riddick, supra. If it were otherwise, confidence in the integrity of the judicial process, including the responsibility of the court to protect the interests of the parties in litigation, would be eroded.
[10] I see no good reason to diverge from this jurisprudence. The test for varying a protective order is the existence of some compelling reason. I am not persuaded that the conduct of litigation in other parts of the world or the commencement of proceedings in Canada pursuant to the Patented Medicine (Notice of Compliance) Regulations, SOR/98-166, constitutes a "truly compelling" reason or circumstance to justify variation of the existing Protective Order. The terms of that Order show that the parties to that order contemplated that the protected documents would be used for no purpose other than the conduct of the proceeding in which the Order was issued and those proceedings were effectively dismissed on consent in March 2001.
[11] I am not satisfied that Pharmacia has met the applicable test for varying the Protective Order in issue and its motion is dismissed with costs to Faulding.
ORDER
THIS COURT ORDERS that the application to vary the Protective Order dated October 27, 2000, is dismissed with costs to Faulding.
"E. Heneghan"
J.F.C.
FEDERAL COURT
NAME OF COUNSEL AND SOLICITORS OF RECORD
STYLE OF CAUSE: FAULDING (CANADA) INC.
Plaintiff
and
PHARMACIA ITALIA & UPJOHN S.P.A.
Defendant
PLACE OF HEARING: Toronto, Ontario
DATE OF HEARING: SEPTEMBER 13, 2004
REASONS FOR ORDER: HENEGHAN J.
APPEARANCES:
Ms. Susan Beaubien FOR THE PLAINTIFF
Ms. Nancy Pei FOR THE DEFENDANT
SOLICITORS OF RECORD:
Borden Ladner Gervais LLP
Barristers & Solicitors
Ottawa, ON
FOR THE PLAINTIFF
Smart & Biggar
Barristers & Solicitors
FEDERAL COURT
Date: 20040916
Docket: T-421-97
BETWEEN:
FAULDING (CANADA) INC.
Plaintiff
and
PHARMACIA ITALIA & UPJOHN S.P.A.
Defendant
REASONS FOR ORDER
AND ORDER