JANSSEN INC., JANSSEN BIOTECH, INC., CILAG GmbH INTERNATIONAL, CILAG AG v. THE KENNEDY TRUST FOR RHEUMATOLOGY RESEARCH, 2019 FCA 188

Date: 20190620 Docket: A-336-18 Citation: 2019 FCA 188 CORAM: BOIVIN J.A. RENNIE J.A. GLEASON J.A. BETWEEN: JANSSEN INC., JANSSEN BIOTECH, INC., CILAG GmbH INTERNATIONAL, CILAG AG and THE KENNEDY TRUST FOR RHEUMATOLOGY RESEARCH Appellants and PFIZER CANADA INC., HOSPIRA HEALTHCARE CORPORATION, CELLTRION HEALTHCARE CO. LTD., CELLTRION, INC. and INNOMAR STRATEGIES, INC. Respondents Heard at Ottawa, Ontario, on June 20, 2019. Judgment delivered from the Bench at Ottawa, Ontario, on June 20, 2019. REASONS FOR JUDGMENT OF THE COURT BY: GLEASON J.A.

Date: 20190620 Docket: A-336-18 Citation: 2019 FCA 188 CORAM: BOIVIN J.A. RENNIE J.A. GLEASON J.A. BETWEEN: JANSSEN INC., JANSSEN BIOTECH, INC., CILAG GmbH INTERNATIONAL, CILAG AG and THE KENNEDY TRUST FOR RHEUMATOLOGY RESEARCH Appellants and PFIZER CANADA INC., HOSPIRA HEALTHCARE CORPORATION, CELLTRION HEALTHCARE CO. LTD., CELLTRION, INC. and INNOMAR STRATEGIES, INC. Respondents REASONS FOR JUDGMENT OF THE COURT (Delivered from the Bench at Ottawa, Ontario, on June 20, 2019).

GLEASON J.A. [ 1 ] The appellants appeal from the portions of the order of the Federal Court ( per Southcott J.) in Hospira Healthcare Corporation v. Kennedy Institute of Rheumatology , 2018 FC 992 , in which the Federal Court dismissed the appellants’ motion under Rule 233 of the Federal Courts Rules , SOR/98-106 for an order requiring production of documents from a non-party.

[2] The Federal Court held that it had discretion under Rule 233 as to whether to order the requested production.

In the exercise of thatdiscretion, the Federal Court denied the appellants’ request for several reasons, including: (1) the production request was prematurebecause it was made before the parties opposite had completed their initial documentary production and before any oral examinationshad taken place; (2) it appeared that many of the documents that the appellants sought could be obtained from an opposing party, whichhad a contractual right to them, but would receive the documents in a format where irrelevant personal information was redacted; and (3)the documents in the non-party’s possession contained irrelevant personal information about people who were not involved in thelitigation and would need to be redacted to protect such information. [3] The appellants submit that the Federal Court erred because they say that Rule 233 is mandatory and requires the Court to orderdisclosure of documents from a non-party whenever the criteria set out in the Rule are met.

They also say that the Federal Court erred indeclining to strike the affidavit of the representative of the non-party because he failed to produce the documents requested in thedirection to attend that the appellants served on him. The appellants contend that without this evidence there was no basis for the FederalCourt’s factual findings and that the decision must be set aside for this reason as well. [4] On the latter point, we see no reviewable error having been committed by the Federal Court in declining to strike the impugnedaffidavit in the circumstances of this case.

To hold otherwise would require a party disputing an order for production to produce the verydocuments in dispute before the return of the motion. [5] As concerns the appellants’ arguments on the merits of the Federal Court’s decision, we cannot accept the appellants’ position. Boththe wording of the Rule and the relevant case law recognize that the Court possesses discretion under Rule 233 to grant what may becharacterized as an exceptional remedy to require that a stranger to litigation produce documents to a party involved in a proceedingbefore the Court. [6] Rule 233(1) is cast in permissive terms.

It provides: On motion, the Court may order theproduction of any document that is in thepossession of a person who is not a party tothe action, if the document is relevant andits production could be compelled at trial.[emphasis added] La Cour peut, sur requête, ordonner qu’undocument en la possession d’une personnequi n’est pas une

partie à l’action soitproduit s’il est pertinent et si sa productionpourrait être exigée lors de l’instruction.[mon soulignement] [7] Similar wording elsewhere in the Rules or the Patented Medicines (Notice of Compliance) Regulations, SOR/93-133 has beeninterpreted as conferring discretion, provided the conditions precedent to its exercise are met: see, e.g., Horizon Pharma PLC v. Canada(Health), 2015 FC 744 at para. 30; Novartis Pharmaceuticals Canada Inc. v. Abbott Laboratories Ltd. (2000), (FCA), 7 C.P.R. (4th) 264 (F.C.A.) at paras. 12-15.

Ontario courts have reached a similar conclusion in interpreting the provision inOntario’s Rules of Civil Procedure, R.R.O. 1990, Reg. 194 governing disclosure from non-parties and have held that even if theconditions listed in the Rule for disclosure are met, the court retains discretion to grant or refuse disclosure: see, e.g. Philip ServicesCorp. v.

Deloitte & Touche, 2015 ONCA 60 at paras. 8, 10, 330 O.A.C. 148. [8] The Federal Court therefore did not err in concluding that it has discretion under Rule 233. [9] Nor did the Federal Court commit a palpable and overriding error in exercising that discretion. [10] Contrary to what the appellants submit, it was open to the Federal Court to consider the availability of the information sought fromother parties to the action and Rule 238 of the Federal Courts Rules (dealing with third party examinations) does not forecloseconsideration of this issue on a non-party production request.

In short, the mere fact that availability of the documents is not listed inRule 233 as a relevant factor for the Court to consider, but is listed in Rule 238, does not prevent the Court from considering availabilityof the documents through the normal discovery process as being a factor that weighs against ordering production from a non-party. Givenits exceptional nature, common sense would dictate that third party production should not be ordered where it is not necessary. [11] We also are of the view that the Federal Court did not err in considering the privacy interests in the documents sought by theappellants.

Indeed, the case law recognizes that such interests may be weighed in appropriate cases, as was noted by this Court in BMGCanada Inc. v. Doe, 2005 FCA 193, [2005] 4 F.C.R. 81 at para. 42 and by the Supreme Court of Canada in M.(A.) v. Ryan, (SCC), [1997] 1 S.C.R. 157 at paras. 36-37, 207 N.R. 81.

Once again, the Federal Court reached what we would characterize as acommon sense conclusion that non-parties’ privacy interests should not be impacted or a non-party put to the expense of redactingdocuments when it was not clear that the appellants could not receive what they sought from a party to the litigation in a form where thepersonal information was already redacted. [12] In closing, the small slice of this litigation to which we have been exposed seems to demonstrate an unfortunate lack of cooperation,which no longer has its place in litigation, if indeed it ever was appropriate.

We would urge counsel and the parties to re-read thedecision of the Supreme Court of Canada in Hryniak v. Mauldin, [2014] 1 S.C.R. 87, 2014 SCC 7. We also note that to the extent thenon-party is in possession of documents that the appellants have not obtained that are relevant to the litigation before the Federal Court,if the non-party does not cooperate in their production, it is of course open to the appellants to seek to compel their production and to theFederal Court to make the appropriate costs awards. [13] We will accordingly dismiss this appeal.

In the circumstances, we decline to make an order of costs. “Mary J.L. Gleason” J.A.

FEDERAL COURT OF APPEAL NAMES OF COUNSEL AND SOLICITORS OF RECORD DOCKET: A-336-18 STYLE OF CAUSE: JANSSEN INC. ET AL v. PFIZER CANADA INC. ET AL. PLACE OF HEARING: Ottawa, Ontario DATE OF HEARING: June 20, 2019 REASONS FOR JUDGMENT OF THE COURT BY: BOIVIN J.A. RENNIE J.A. GLEASON J.A. DELIVERED FROM THE BENCH BY: GLEASON J.A. APPEARANCES : Andrew Skodyn Melanie K. Baird For The Appellants Warren Sprigings For The Respondents (Pfizer Canada Inc., Hospira Healthcare Corporation, Celltrion Healthcare Co.

Ltd. and Celltrion, Inc.) Christiaan Jordaan Victoria Yang FOR THE RESPONDENT (Innomar Strategies, Inc.) SOLICITORS OF RECORD : Blake, Cassels & Graydon LLP Barristers & Solicitors Toronto, ON For The Appellants Sprigings IP Barristers & Solicitors Toronto, ON For The Respondents (Pfizer Canada Inc., Hospira Healthcare Corporation, Celltrion Healthcare Co. Ltd. and Celltrion, Inc.) Theall Group LLP Litigation Lawyers Toronto, ON FOR THE RESPONDENT (Innomar Strategies, Inc.)