Court File and Parties

COURT FILE NO.: CV-11-420115 DATE: 20190426 ONTARIO SUPERIOR COURT OF JUSTICE

BETWEEN:

APOTEX INC. Plaintiff Harry Radomski and Jerry Topolski, for the Plaintiff

– and –

ELI LILLY AND COMPANY, ELI LILLY KINSALE LIMITED, LILLY DEL CARIBE, INC., LILLY S.A., ELI LILLY EXPORT S.A., AND ELI LILLY CANADA INC. Defendants Marc Richard, Richard Dearden, and Cole Meagher, for the Defendants

HEARD at Toronto: April 25, 2019

F.L. MYERS J.

REASONS FOR JUDGMENT

The Motion

[1] The defendants move to amend the Protective and Confidentiality Order made on consent on November 30, 2016. Paragraph 10 of the order prohibits disclosure of information that has been designated as confidential information by the parties in this action. The paragraph contains a list of exceptions. Currently, sub-paragraph 10(b) allows the defendants to share the plaintiff’s confidential information with their outside counsel Gowling WLG (Canada), LLP. The defendants wish to have lawyers from Norton Rose represent them at trial in addition to Gowling WLG. They ask to amend sub-paragraph 10(b) to add Norton Rose as follows:

(b) outside counsel for the Defendants, Gowling WLG (Canada) LLP and Norton Rose Fulbright LLP, including their support staff.

[2] Sub-paragraph 10(g) of the order allows the parties and the court to add others to the list of those exempted from the confidentiality terms of the order. But nothing in paras. 10, 20, or 23 of the order specifically allow for the amendment of the order to add to the recognized “outside counsel” for the defendants.

[3] The defendants argue that they have the right to counsel of their choice. They want to use three individuals from Norton Rose in addition to their lawyers from Gowling WLG. Subject to the overriding discretion of the trial judge to maintain order at the trial, I have no doubt that lawyers from Norton Rose could help, act as special counsel, act as agent for Gowling WLG, and certainly sit in the public courtroom to assist the defendants and their counsel. Again, subject to the trial judge’s ultimate authority, no order is required from me for any of that.

[4] In their factum and orally, the defendants point out that the action has some complexities. But the only relevancy of that fact is if the defendants argue that they need a second firm because of the complexity. That is distinctly not the defendants’ argument. There is no question that Gowling WLG has significant expertise and is perfectly capable of acting in this action with all its complexities. The complexity of the case is a red herring. The defendants want Norton Rose because they want Norton Rose. And as I found above already, one would expect that Norton Rose should be able to assist at trial in the ordinary course.

[5] I specifically asked counsel for Eli Lilly whether it needed to amend the protective order at all, since the court has authority under para. 10(g) of the order to simply add names to the list of those exempted from the confidentiality restrictions. Counsel was clear and express in response that Eli Lilly seeks to amend para. 10(b) to add Norton Rose as an “outside counsel” rather than just having the court grant leave to let them see confidential information. This is consistent with two emails that counsel for Eli Lilly sent to counsel for Apotex indicating that Norton Rose has been “retained by the defendants to act on their behalf, alongside Gowling WLG” and that “Norton Rose will be of counsel to the defendants alongside Gowlings WLG at the upcoming trial”.

[6] The protective order refers to “outside counsel” rather than to the term used in the Rules – lawyer of record. A party is only entitled to one lawyer of record without good reason for having more. Eli Lilly says that Gowling WLG will be the sole lawyer of record for service and filing of document purposes. While I do not necessarily understand the difference between amending the order as sought or simply granting leave under para. 10(g), the fact that Eli Lilly is being so specific in the relief it seeks and defines the relationship with Norton Rose so broadly in counsel’s emails is more consistent with a situation of two firms acting for one party than someone coming in to act as trial counsel for another firm.

[7] Apotex points out that Norton Rose is counsel for another drug manufacturer against whom Apotex has claims that are very similar to its claims in this action. I am case managing that action as well. Apotex fears that the two manufacturers are pooling resources so that they will both be able to take part in the argument of issues in this case that will bear upon the other case. The trial of this action is scheduled to begin in just under a month. The other case in which Norton Rose is acting is not yet ready for trial.

[8] Apotex argues that the other manufacturer has not and could not obtain standing as an intervenor in this case. Apotex submits that is wrongful therefore for its counsel to be able to make arguments on the issues that will affect the other client in the other case under the guise of acting for the defendants.

[9] I do not accept any suggestion that, if they act for Eli Lilly, lawyers from Norton Rose would knowingly take any step to assist their other manufacturer client at Eli Lilly’s expense. The two entities share a common interest. The identity of a lawyer who makes an argument in court does not mean that the lawyer is arguing “for” another client or that the other client is somehow advancing its own agenda by having “its” lawyer argue Eli Lilly’s case. The same unusual statutory scheme is engaged in both actions. The fact that the same arguments may be relevant in both cases does not make it nefarious for the same counsel to argue in both for both clients. In fact, that may be particularly efficient. I have no concern about the nature of legal arguments that might be made or any alleged unfairness to Apotex as a result of legal arguments being made by one lawyer or the other.

[10] But, legal arguments and confidential information are very different things. If Norton Rose obtains access to confidential information of Apotex in this action, how does it guard against the risk of sharing that information with its other client or using that information for the benefit of its other client? Are they not in a potential conflict of interest if they obtain information in this action that they believe might assist their other client but which they cannot disclose to their other client? What if the other client positively instructs them to divulge information that they obtain in this action that is subject to the protective order? I do not accept any suggestion that lawyers from Norton Rose would knowingly take any step to violate the protective order, the deemed undertaking rule, or any legal or ethical rule. I know them to be lawyers of the highest character. But the law protects confidentiality. It also presumes that lawyers share confidences within their firms. There is no evidence to show that the other manufacturer already has access to the all of the same confidential information of Apotex in its other action. There is no evidence that the other client has already given a knowing waiver of any conflict of interest that may arise. Absent proof of these facts, then I must assume that lawyers from Norton Rose will be obliged to keep some of Apotex’s information confidential from its other client and that this creates a foreseeable risk of conflict of interest. They will have a duty of confidentiality to Apotex and a competing duty of loyalty to a party adverse in interest to Apotex. There is no evidence of any steps being taken to protect the confidential information to be disclosed to Norton Rose in this action from the risk of disclosure or use in the other action for the benefit of the other client. There is no evidence of any screens or protective mechanisms having been put in place to protect confidentiality or to guard against the risk of conflict of interest. Moreover, at least one of the lawyers is proposed to be involved in both actions. There is no evidence of how he intends or can be capable of protecting information obtained under the protective order in this case from unwitting use in the other case.

[11] I agree with Eli Lilly that parties are entitled to counsel of their choice. Here however, they are not making a choice. They want two full sets of counsel in circumstances the firm to be added may be put into a foreseeable conflict of interest. While Mr. Richard submits that only Gowlings will be the solicitor of record for the purposes of serving or filing documents on behalf of the client, that is not the order that he seeks. He wants more than an order to allow Norton Rose to receive confidential information under para. 10(g) to enable them to assist Gowlings WLG at trial. He seeks instead some type of recognition that Norton Rose is co-counsel under para. 10(b) to allow them to act “alongside” Gowling WLG. There is no explanation before me of what difference this makes or why it is sought in this way or any reason for it.

[12] I do not need to decide whether the test for a party to have more than one counsel of record is “special circumstances” or a “change in circumstances” or “absence of prejudice”. There is a nuance being advanced here that Eli Lilly chooses not to explain. Whatever the test is to amend the order, the test is not “because I want both”. And that is all that is before me in evidence. If Eli Lilly wants Norton Rose to be its counsel at trial, it can serve a Notice of Change of Lawyer or it can retain them to assist trial counsel as is done all the time as I referred to above. Moreover, had it sought leave under para. 10(g) to see some confidential information to enable trial counsel to prepare, with evidence of screening mechanisms to protect the confidentiality, different principles might have applied.

[13] But these are very sophisticated parties with complex relationships that extend far beyond this piece of litigation. There is as much or more going on below the surface as there is above. The defendants sought specific relief on specific grounds and specific evidence (or lack thereof). In my view they have not shown that they are entitled to what they seek.

[14] For completeness, I note that I have ignored the evidence concerning issues that arose among multiple counsel in a different case which strikes me as irrelevant. I have also ignored evidence concerning Apotex’s theories as to the reasons for this motion which is also inadmissible.

Conclusion

[15] The motion is dismissed. Apotex may deliver no more than three pages of costs submissions by May 3, 2019. Eli Lilly may deliver no more than three pages of costs submissions by May 10, 2019. Costs submissions shall be accompanied by Costs Outlines from both sides. Parties may also include copies of any relevant offers to settle on which they rely for costs purposes. All documents shall be delivered as searchable PDF attachments to an email to my Assistant. No case law or statutory material are to be filed. Rather, references to case law or statutory material, if any, shall be by way of hyperlinks to in the parties’ submissions.

F.L. MYERS J.