Tests Conducted by a Third Party Without Notice Held to Be Admissible Evidence

AbbVie Corp v Janssen Inc, 2014 FC 55 Hughes J

2,365,281 / anti-IL-12 antibodies / STELARA

One evidentiary point in AbbVie is worth noting. Janssen’s STELARA product was alleged to infringe AbbVie’s ‘281 patent, but only AbbVie, and not Janssen, conducted tests on the Janssen product [62]. For at least some of this testing, no prior notice was given to Janssen, and no one from Janssen attended [67]. Janssen moved to exclude the evidence as to this testing conducted by third parties at the request of AbbVie [63]. Hughes J refused to exclude the evidence. He noted:

[64] Unlike the practice in the United Kingdom as described in the “White Book”, Civil Procedure, Volume 2, 2013, Sweet & Maxwell, London at page 730, there is, as of yet, no Federal Courts of Canada Rule specifically directed to testing conducted for the purposes of trial. In Omark Industries (1960) Ltd v Gouger Saw Chain Co, (1965) 1 Ex C R 457 at page 516, Justice Noel discussed a “salutary” rule to the effect that an opposite party should be given notice of and an opportunity to attend at such experiments. He did, however, also say that an ex parte test may be admissible, subject to weight, particularly where, in his case the opposite party could readily have conducted the same test. Most recently Justice O’Reilly of this Court in Apotex Inc. v. Pfizer Canada Inc., 2013 FC 493 at paragraph 40,held that where a party had ample notice as to the testing and ample knowledge as to what would be done, a party cannot be held to say that the testing results are inadmissible because the party did not attend.

Hughes J reviewed the evidence briefly and held

[70] Given the evidence that I have, and having reviewed the criticisms made by Janssen and, given that Janssen did have a opportunity to cross-examine Dr Hughes, and that Janssen has provided no test results whatsoever, I conclude that the evidence of both tests is admissible. . .