Apotex Inc.. v. H. Lundbeck A/S (2011 FC 88), citalopram, T-575-04, January 26, 2011

In an action for patent infringement and under s. 8 of the Patented Medicines (Notice of Compliance) Regulations regarding citalopram, Prothonotary Tabib granted Lundeck’s request for letters rogatory with respect of Matrix Laboratories Ltd. (Apotex’ manufacturer) in India and denied Apotex’ request for letters rogatory with respect of Dr. Adlington (a chemistry professor who visited Matrix in the context of European proceedings between Lundbeck and another generic manufacturer) in the U.K.

In her decision, Prothonotary Tabib noted that relevant factors on the issue were: (a) Matrix had not provided manufacturing documents sought by Lundbeck; (b) Apotex reported to the Court that Matrix had destroyed all batch production records for the citalopram it manufactured for Apotex prior to 2005, pursuant to its document control policy; and (c) Apotex and Matrix confirm that a Matrix representative would give oral evidence at trial regarding the manufacturing process used between 2001 and 2004. In view of these factors, Prothonotary Tabib held that “it seems to be well within the powers of a case management Judge to order Apotex to disclose the precise identity of the representative or representatives of Matrix whom it intends or expects to call at trial to ensure that Lundbeck will be allowed to question on discovery the very same person or persons.”

In denying Apotex’ request for the discovery of Dr. Adlington, Prothonotary Tabib noted that such discovery was not warranted because (a) much of Dr. Adlington’s evidence might involve opinion testimony; and (b) Apotex had failed to show a good reason why Dr. Adlington cannot or will not attend trial in Canada.

A copy of this decision may be found at the following link:

http://decisions.fct-cf.gc.ca/en/2011/2011fc88/2011fc88.html