Onus is on (you) to Further Restrict a Protective Order

In Janssen Pharmaceutica N.V. v Apotex Inc., 2022 FC 1262, Case Management Judge Trent Horne held that where parties cannot agree on the terms of a protective order, the party seeking further restriction bears the onus of demonstrating why additional restrictions are required.

Background

The action was brought to settle a disagreement on two terms of a protective order:

1. whether Confidential Information can be disclosed to two employees or corporate officers of the receiving party; and
2. what number of independent consultants and outside experts could receive Confidential Information, subject to terms of the order.

Janssen objected to disclosure to employees or corporate officers of the receiving party and sought to cap the number of independent consultants or outside experts at five, where Apotex asserted there should be no limitation.

Decision

Prothonotary Horne discussed CNR v BNSF, 2020 FCA 45 which explains there is no compelling reason to refuse granting a protective order on consent if:

1. the AB Hassle test is met; and
2. the protective order follows the template developed by the Federal Court and IP Bar.

However, he noted the model order is a resource that facilitates the negotiation and issuance of an order but does not create a presumption that such an order is inherently required or presumptively available in all matters.

Prothonotary Horne explained that neither the implied undertaking, the Canada Evidence Act, nor the Federal Court Rules impose a cap on the number of independent consultants or outside experts to whom confidential information of an adverse party may be disclosed. He held the onus was on Janssen to demonstrate why the additional restrictions in the protective order are required. To meet this onus, Janssen had to satisfy the three-part AB Hassle test:

1. Has the information at issue been treated at all relevant times as Confidential?
2. Is the information confidential in nature?
3. Is there a reasonable probability that disclosure of the information could cause harm to proprietary, commercial, and scientific interests?

Janssen argued that once a person gains access to a competitor’s confidential information, they cannot be expected to erase this information from their minds when making business decisions (the “empty head” principle.) Janssen relied on 2006 FC 1338 and 2018 FCA 192 where protective orders were granted because of evidence showing a risk of damage from disclosure. Prothonotary Horne distinguished both cases because Janssen’s evidence was not “extensive, ample, significant or specific” to meet their onus and “to accept Janssen’s position, and preclude two Apotex employees from receiving designated information, would effectively reverse the onus.” He commented that although most protective orders have limits on the number of independent consultants or outside experts who can receive designated information, this does not mean that a limit is presumptively required.

Prothonotary Horne held that Janssen had not met its onus, so Apotex’s form of protective order containing no limitation on the number of independent consultants or outside experts would issue.

The decision can be found here.