In response to a motion brought by Defendants in patent litigation, the Court refused to order the Plaintiffs to serve evidence regarding the invention story prior to service of the Defendants’ invalidity expert reports. The Defendants argued that to fully address their invalidity pleas, they needed full disclosure of the invention story and inventor evidence in advance of their expert deadline. The Defendants further argued they are “strangers to the invention story” as a basis for the requested relief, but the Court considered document and oral discovery to be an adequate process by which the Defendants could gather the necessary facts. After balancing all the factors, the Court concluded that “considerations of justice, fairness, and prejudiced do not favour granting the Defendants’ motion.” The Court also did not view the requested order as a more efficient process. The court awarded costs of $7,500 but refused to awards costs payable forthwith.
Boehringer Ingelheim (Canada) Ltd. v. Sandoz Canada Inc., 2023 FC 1149