Docket:
T-1310-09
Citation: 2014 FC 178
Toronto, Ontario, February 26, 2014
PRESENT: The
Honourable Mr. Justice Hughes
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BETWEEN:
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ABBVIE CORPORATION, ABBVIE DEUTSCHLAND GMBH & CO. KG AND
ABBVIE BIOTECHNOLOGY LTD.
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Plaintiffs
(Defendants by
Counterclaim)
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and
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JANSSEN INC.
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Defendant
(Plaintiff by
Counterclaim)
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REASONS FOR ORDER
AND ORDER
[1]
The Defendant (Plaintiff by Counterclaim)
Janssen Inc. has brought by way of this motion, an appeal from an Order made by
the Case Management Judge, Prothonotary Aalto, dated February 13, 2014, wherein
he Ordered that the hearing of the trial respecting an injunction should
proceed the week of May 12, 2014, and Ordered a number of other matters as a
consequence. Janssen seeks to set aside the fixing of the trial date in respect
of the injunction and some of the consequential matters, all as set out in
paragraphs 1, 2, 3, 4, 5 and 9 of the Case Management Judge’s Order.
[2]
It is trite law in this Court that an Order of a
Prothonotary; particularly, that of one acting as a Case Management Judge, will
not be set aside in the absence of an error in law or a fundamental
misapprehension of material facts. An Order given by a Case Management Judge in
the exercise of managing a case, particularly a case such as this which has
been going on for close to five years, and where the parties have demonstrated
that they are extremely difficult to manage, should be afforded great respect.
[3]
In December and January last, I heard the trial
of the infringement and validity issues in this action and, on January 17,
2014, I gave Judgment in the following terms:
1.
It is declared that, as between the
parties and their privies, claims 143 and 222 of Canadian Letters Patent Number
2,365,281 are valid and have been infringed by the Defendant Janssen Inc. by
its promoting, offering for sale, and selling in Canada its product known as
STELARA;
2.
Either party, or both, may apply to the
Office of the Chief Justice for the fixing of a second trial in respect of the
remaining issues in this action; and
3.
Save where as otherwise previously
expressly Ordered by this Court, each party should bear its own costs.
[4]
In my Reasons, 2014 FC 55, I commented on the
case management process and the failure of the parties in that respect at
paragraphs 186 and 187:
186 I come to
the issue of costs. As I expressed to Counsel during the trial, I am extremely
disappointed that they did not take advantage of the Case Management and Trial
Management process so as to narrow the issues, make appropriate agreements as
to facts, and otherwise get this matter ready for trial; focusing on the
important issues. The case has been instituted some four years ago, yet even up
to and during the trial, Counsel was going back and forth as to issues and
factual concessions. Expert reports were served that never were made part of
the record. Letters rogatory were issued, yet never used. Other witnesses,
whose names were mentioned from time to time, were never called. Discovery of
the parties and named inventors were prolonged and numerous tedious motions
were brought to compel yet further discovery. Scant portions of the discovery
transcripts were deemed read in at trial; most of which could have been dealt
with by an agreement as to facts. In all, the parties have not made full or
proper use of the pre-trial process and management procedures, notwithstanding
abundant applications to the Court about this or that point. We expect better.
187 Therefore,
each party will bear its own costs, except where there has been a particular
Order of this Court awarding costs. Where costs have been left to the Trial
Judge or in the cause, there will be no costs.
[5]
The issue that was before the Case Management Judge
and now under appeal, arose as a result of a proposed motion by the Plaintiffs
for a limited interlocutory injunction and a request, by correspondence, by
Janssen that injunctive issues be stayed pending the outcome of its appeal from
my decision as to infringement and validity to the Federal Court of Appeal. In
a letter to the Chief Administrator of this Court dated January 24, 2014,
Janssen’s Counsel had requested that the matter of fixing a trial date of the
further issues be referred to the Case Management Judge, Prothonotary Aalto “…
who has much familiarity with the issues in the case and conduct of the action
to date”. Counsel subsequently appeared before Prothonotary Aalto and were
given a full opportunity to make their arguments. The result was the Order now
appealed by Janssen.
[6]
The thrust of Janssen’s argument before me was
that the Order under appeal was an improper unilateral variation of an earlier
Order made by the same Case Management Judge of September 26, 2011, which was
not appealed, in which it was Ordered, inter alia:
1.
The issues of validity and infringement
of Canadian Patent No. 2,365,281 (the 281 Patent) shall be determined at the
trial presently scheduled to commence on October 22, 2012.
2.
In the event that any asserted claim of
the 281 Patent is found to be valid and infringed, then the issue of the
Plaintiff’s (collectively Abbott) rights to elect as between profits and
damages, Abbott’s entitlement of injunctive relief, the extent of infringement,
and the quantum of any damages or profits, as the case may be, shall be
determine at a second trial (the “Reference”), on a date as may be agreed upon
or ordered by the Court.
[7]
I do not read this Order, as Janssen’s Counsel
seems to read it, as requiring that the second trial take place only at a time
when all the remaining issues are placed before the Court. That Order does not
preclude a trial as to some of those remaining issues to be held at a time
before a trial as to some or all of the remaining issues. This is a matter for
the exercise of discretion of the Case Management Judge. As Justice Pelletier
in MicroFibres, Inc v Annabel Canada Inc, 2001 FCT 1032, at paragraphs 3
and 4, and in Montana Band v Canada, 2002 FCA 331, at paragraph 7 said;
a Case Management Judge is entitled to Order severance of issues on his or her own
motion; and Orders of such kind, particularly those made by such a person
intimately familiar with the history and complexity of the matters, should only
be interfered with in the clearest of cases.
[8]
Counsel for Janssen relies on Rule 399 to argue
that Prothonotary Aalto could not vary his earlier Order except on a motion by
one of the parties and then, only in limited circumstances. As I have said, I
do not take the view that the earlier Order has been varied as it does not
preclude the fixing of separate trial dates for one or more of the remaining
issues. In any event as Justice Pelletier (as he then was) said at paragraphs
14 and 15 in MicroFibres, supra. Rule 385 gives a Case Management Judge
authority by his or her motion, without the constraints of res judicata, to
make or vary an earlier case management Order, in view of the circumstances of
the case before him or her at the time, which best serves to bring the matter
to a fair trial.
[9]
I find no basis
in the circumstances of this case for interfering with the Order under appeal.
[10]
The Plaintiffs are seeking solicitor-client or
substantial costs on this motion. They argue that this appeal was unnecessary
and appeals of this kind should be discouraged. As I have said in my Reasons in
the earlier trial, there has been a history of a lack of respect for the case
management process. I did not ascribe particular blame to either party.
[11]
In this case, I will award costs of the motion
before me to the Plaintiffs as there must be some message that the parties must
respect the case management process. Given the submissions of the parties I fix
those costs (including disbursements and taxes) at $5000.00.
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