Reply evidence report allowed in part as it aids the Court in determining merit
Background
In Justice Furlanetto’s recent decision in Boehringer v JAMP, the Court returned to first principles in deciding whether to allow a motion for reply evidence. The decision was issued in the context of a patent infringement action relating to Boehringer’s nintedanib esilate product and Canadian Patent No. 2,726,267 (see our previous post here).
Reply Evidence
In the motion before the Court, Boehringer sought to file a reply report from Dr. Bodmeier responding to a report from Dr. Gullapalli. Dr. Gullapalli’s report addressed why lecithin was an essential element of the claims of the 267 Patent (directed to a pharmaceutical formulation containing lecithin) and that because lecitihin is not used in the JAMP formulation there could be no infringement of the asserted claims of the 267 Patent.
Dr. Bodmeier’s first report had opined on construction and infringement of the claims of the 267 Patent and provided an opinion on (a) whether the skilled person would have appreciated that lecithin in the claimed formulation could be substituted with another surfactant without affecting the working of the invention, and (b) whether the skilled person, as of December 10, 2009, would have understood that PG3D (a different pharmaceutical ingredient used in JAMP’s formulation) would obviously work in the same way in the formulation of the asserted claims.
Justice Furlanetto, citing Merck-Frosst v Canada (Health), considered whether the proposed reply:
(1) will serve the interests of justice; (2) will assist the Court to adjudicate an issue on the merits; (3) will not cause serious prejudice to the other side; and (4) was available and/or could not be anticipated as being relevant at an earlier stage of the proceeding.
Part of JAMP’s submissions relied on first principles, noting that evidence ought to be relevant and necessary to assist the trier of fact. In JAMP’s view, the Bodmeier Reply report was not relevant and would not assist the Court in determining the issue on the merits because it could not establish infringement. Specifically, Dr. Bodmeier was not asked to give an opinion on the issue of the essentiality of lecithin, one of the two requirements mandated by the Free World Trust claim construction exercise. Justice Furlanetto agreed that the issue needed to be resolved, but concluded that it was not a proper issue to be determined on a reply evidence motion.
After considering the relevant Merck-Frosst test, Justice Furlanetto allowed the Reply report in part. Paragraphs clarifying the intended meaning of ‘working of the invention’ were allowed as they were responsive and assist the Court. Justice Furlanetto used their discretion to permit other paragraphs as they would aid the court and would not prejudice JAMP. Other permissible reply included helpful context that was properly responsive and sections that included “sufficient substantive opinion” or provided useful rebuttal.
Several sections of the report were not allowed as the subject matter of those paragraphs were determined to have been better suited to cross-examination, while others were excluded as information that should have been included in Dr Brodmeier’s initial report. Additionally, the proposed reply’s introduction and summary paragraphs were not set up as direct reply. Only the paragraphs containing a proper reply that was responding to Dr Gullapalli’s report directly were permitted.
A copy of Justice Furlanetto’s Reasons for Order may be found here.