FCA Clarifies Test for Production of Samples under Rule 249 of the Federal Court Rules

FCA Clarifies Test for Production of Samples under Rule 249 of the Federal Court Rules

Apotex Inc. v. Eli Lilly Canada Inc., 2013 FCA

This was an appeal by Apotex from a
FC decision upholding the order of Prothonotary Aronovitch permitting Eli Lilly
to obtain samples from various batches of bulk raloxifene hydrochloride for the
purpose of conducting tests. The impugned order was made pursuant to Rule 249
of the Federal Courts Rules.

Appeal is dismissed.

Read in the context of Rule 3, the
test set out in Rule 249 is clear and does not require that the Court provide
more detailed and strict guidelines in respect of its application. In fact, it
would be unwise to try to do so as it is evident that the use of the words
“necessary or expedient” was intended to give a broad discretion to the Court.
Facts do matter and they are particularly important when dealing with motions
such as those under Rule 249, which require the Court to balance any number of
factors relevant to the three main interests at play: those of the party
requesting the inspection or samples, those of the party in possession of the
property concerned, and those of the trier of fact.

The Court rejected Apotex’s
submission that the Prothonotary and the Trial Judge were bound to require
evidence that the proposed tests were “the only means” for Eli Lilly to
establish its case, or at least that this was an “exceptional case” where such
testing was the solution of “last resort”.

Usually, the information that is
available through discovery (for example, a full and detailed description of
the property or machinery or photographs thereof) is sufficient to satisfy all
the interests at play. However, in complex pharmaceutical patent cases like the
present ones, the usual mechanisms of discovery may well not suffice and
parties will often have to rely on Rule 249. In such cases, “expediency” may
well be a major factor for the Court in exercising its discretion.