In Eli Lilly Canada Inc. v. Teva Canada Ltd., 2015 FC 801, Justice Annis allowed Teva’s appeal in part finding that the Prothonotary’s order (see here) to produce trade-spend documents for examinations for discovery from two prior (unrelated) actions was overbroad, but otherwise dismissed Teva’s appeal.
The underlying action seeks recovery of Teva’s damages under section 8 of the Patented Medicines (Notice of Compliance) Regulations for olanzapine. The present discovery dispute arose when Lilly brought a motion to compel the production of certain documents consisting of confidential trial transcripts of trial testimony in two prior actions involving venlafaxine and ramipril as well as the confidential judgment from the venlafaxine action. Lilly was a not a party to either of the previous two actions and Lilly sought the documents as they related to Teva’s trade-spend.
Prothonotary Tabib allowed Lilly’s motion for the production of the documents on the basis that the trade-spend documents were relevant in the present case, and would have been public and accessible but for the previous confidentiality orders. Further, Prothonotary Tabib noted that Lilly’s request pertained to Teva’s information, and that Teva could waive the confidentiality over its own information.
On appeal, Teva advanced a number of submissions challenging the Prothonotary’s order including that the Prothonotary exceeded her jurisdiction by varying orders made by judges, contrary to Rule 50(1)(g) of the Federal Court Rules. Rule 50(1)(g) states that a Prothonotary does not have the jurisdiction “to stay, vary or set aside an order of a judge, other than an order under paragraph 385(a), (b) or (c).” The exceptions to this rule refer to case management duties.
Justice Annis ruled that a proper reading of Rule 50(1)(g) must take into consideration Rules 3, 151, and 152 of the Federal Court Rules along with the “presumption of openness”, a fundamental principle of Canadian courts that they should be open and accessible. Justice Annis noted that:
 The emphasis in Rules 151 and 152 therefore, is with respect to the care required in making the confidentiality order, not working with discretions contained in the order so as to ensure it may continue in effect without causing an injustice. Moreover, Prothonotary’s have the same powers as judges to grant confidentiality orders and to amend them within their jurisdiction conferred by the rules. In practice as in this matter, it is the Prothonotary, who makes the initial order, which is endorsed and expanded by the trial judge to the trial and decision.
 In conclusion, to interpret Rules 151 and 152 in fashion that does not recognize the Prothonotary’s authority to order a party to exercise its discretion to waive the confidentiality order to produce relevant documents in the interests of procedural fairness will result in a multitude of proceedings and the least expeditious and most expensive determination of the issue on its merits. This is a perverse interpretation of Rules 151 and 152 to the opposite effect of their intended purposes.
Consequently, Justice Annis found that not only was the Prothonotary within her jurisdiction when she made the order, but that a Prothonotary is probably best placed to preside over disputes over production of materials covered by such a confidentiality order.
Justice Annis also ruled that Prothonotary Tabib’s order to produce the Confidential Document was proper because:
 A party may waive the order to disclose its own confidential information, which I conclude does not affect the confidentiality order remaining in force and effect. Indeed, Prothonotary Tabib’s order was made with the express understanding that the Order of confidentiality remained in force, in addition to Lilly’s undertaking to ensure that no confidential documents of third parties were disclosed in the process by their being contacted for that purpose.
Even on a de novo review Justice Annis found that the substantive rationale behind Prothonotary Tabib’s order allowing the production of the confidential documents was correct, but agreed with Teva that the Prothonotary’s order was overbroad and should be restricted to production of the portions of the transcripts relevant to the issue of trade-spend (the need for information on trade-spend having been the rationale for Lilly’s production request). Justice Annis ruled that the Prothonotary failed to make an allowance for irrelevant material that should not be required to be produced. The Court rejected the Prothonotary’s rationale that if the irrelevant materials would normally be available, but for the confidentiality order based on the open court rule, they should be produced. Justice Annis noted:
 I do not believe that this approach recognizes the Courts’ reasoning for imposing the confidentiality orders in the first place. I understand that their purposes would have been to prevent disclosure of confidential information to the parties’ competitors, when they would otherwise have been forced to make this information public in order to be able to resolve the dispute at trial.
 Therefore, I agree with Teva that irrelevant confidential information of Teva that is contained in the transcripts and reasons covered by the confidentiality order should not be disclosed. In the same vein, in accordance with the general doctrine of producing only relevant documents, Teva should not be required to disclose irrelevant portions of the materials, whether of a confidential nature or not.
Given the shared success between the parties, no costs were awarded.
Teva was represented by Aitken Klee.
Justice Annis’ decision is available here.