In all three cases (2013 FCA 45, 2013 FCA 46 and 2013 FCA 47), the Federal Court of Appeal upheld orders under Rule 249 permitting the obtaining of samples for the purpose of conducting tests described in the order.
Rule 249(1) recites:
(1) On motion, where the Court is satisfied that it is necessary or expedient for the purpose of obtaining information or evidence in full, the Court may order, in respect of any property that is the subject-matter of an action or as to which a question may arise therein, thatThe reasons for the Federal Court of Appeal are detailed in 2013 FCA 45 and incorporated by reference into the two other decisions. The Federal Court of Appeal, in 2013 FCA 45, stated that “it is evident that the use of the words “necessary or expedient” [in Rule 249] was intended to give broad discretion to the Court” and did not accept Apotex’s submission that evidence was required ‘that the proposed tests were “the only means” for the Respondents to establish their case or at least that this was an “exceptional case” where such testing was the solution of “last resort”’. The Federal Court of Appeal further stated, for complex pharmaceutical patent cases, ‘“expediency” may well be a major factor for the Court in exercising its discretion”.
(a) a sample be taken of the property;
(b) an inspection be made of the property; or
(c) an experiment be tried on or with the property.
By Kay Palmer