Sharlow J.A. dismissed Shire’s motion to determine the contents of an appeal book and to adduce new evidence on appeal. The decision under appeal concerned an amendment to Shire’s statement of defence wherein Shire sought to include a defence of infringement to Apotex’s statutory claim for section 8 damages under the Patented Medicines (Notice of Compliance) Regulations. The proposed amendment did not allege infringement directly, however it relied on the outcome of the patentee’s concurrent infringement action. In the decision below, the trial judge abandoned the Prothonotary’s ruling that the pleading was speculative and hypothetical and held that it disclosed no reasonable cause of action or defence.

At issue before Sharlow J.A. was the inclusion of eleven contentious documents in the appeal book. Ten of the eleven documents constituted evidence of infringement that was served on Shire as part of the patentee’s motion to consolidate the two proceedings, after the decisions under appeal were rendered. Shire submitted that the evidence of infringement may have influenced the decisions below as it demonstrates that a ruling of infringement is not beyond doubt, certain to fail.

Sharlow J.A. acknowledged that the ten documents showing infringement were not in existence at the time the decisions under appeal were rendered however, she held that there was no basis to conclude that Shire could not have conducted its own tests to show that Apotex infringed the patent notwithstanding that Shire’s proposed defence relied on the patentee’s infringement action. Ultimately, none of the contentious documents were allowed to be included.

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