Date: 20090211
Dockets: A-354-08
A-356-08
Citation: 2009 FCA 42
CORAM: DESJARDINS J.A.
EVANS
J.A.
RYER
J.A.
Docket: A-354-08
BETWEEN:
j2 GLOBAL COMMUNICATIONS, INC.
Appellant (Plaintiff)
and
PROTUS IP SOLUTIONS INC.
Respondent (Defendant)
AND
BETWEEN:
PROTUS IP SOLUTIONS INC.
Respondent
(Plaintiff by Counterclaim)
and
j2 GLOBAL COMMUNICATIONS, INC.
and CATCH CURVE INC.
Appellants
(Defendants by Counterclaim)
Docket: A-356-08
BETWEEN:
CATCH CURVE INC.
Appellant (Plaintiff)
and
PROTUS IP SOLUTIONS INC.
Respondent (Defendant)
AND
BETWEEN:
PROTUS IP SOLUTIONS INC.
Respondent
(Plaintiff by Counterclaim)
and
CATCH CURVE INC. and
j2 GLOBAL COMMUNICATIONS, INC.
Appellants
(Defendants by Counterclaim)
Heard at Toronto, Ontario,
on February
10, 2009.
Judgment delivered at Toronto, Ontario,
on February
11, 2009.
REASONS FOR JUDGMENT BY: EVANS
J.A.
CONCURRED
IN BY:
DESJARDINS J.A.
RYER J.A.
Date: 20090211
Dockets: A-354-08
A-356-08
Citation: 2009 FCA 42
CORAM: DESJARDINS
J.A.
EVANS
J.A.
RYER
J.A.
Docket: A-354-08
BETWEEN:
j2 GLOBAL COMMUNICATIONS, INC.
Appellant
(Plaintiff)
and
PROTUS
IP SOLUTIONS INC.
Respondent (Defendant)
AND BETWEEN:
PROTUS IP
SOLUTIONS INC.
Respondent
(Plaintiff by Counterclaim)
and
j2 GLOBAL COMMUNICATIONS, INC.
and CATCH
CURVE INC.
Appellants
(Defendants by Counterclaim)
Docket: A-356-08
BETWEEN:
CATCH CURVE INC.
Appellant (Plaintiff)
and
PROTUS IP SOLUTIONS INC.
Respondent (Defendant)
AND
BETWEEN:
PROTUS IP SOLUTIONS INC.
Respondent
(Plaintiff by Counterclaim)
and
CATCH CURVE INC. and
j2 GLOBAL COMMUNICATIONS, INC.
Appellants
(Defendants by Counterclaim)
REASONS FOR JUDGMENT
EVANS J.A.
[1]
j2 Global Communications Inc. and Catch Curve
Inc. (“appellants”) have appealed an order of the Federal Court (2008 FC 760),
in which Justice Russell allowed in part a motion by Protus IP Solutions Inc.
(“Protus”) appealing an order of Prothonotary Tabib relating to a requirement
to answer further questions on discovery. Justice Russell held that the
Prothonotary was clearly wrong in refusing to require that certain questions be
answered, on the ground that they were relevant to Protus’s statements of
defence and counterclaim.
[2]
This Court
heard the appeals together, and these reasons apply to both. A copy of these
reasons will be inserted in each Court file.
[3]
Underlying these interlocutory proceedings are
actions by the appellants against Protus alleging infringement of their
Canadian patents relating to internet-based facsimile services. In its
statements of defence and counterclaim, Protus attacks the validity of the
appellants’ patents and alleges breaches by the appellants of the Trade-marks
Act and the Competition Act. The questions in dispute relate to
these latter issues.
[4]
No doubt, from the appellants’ perspective,
Protus’s statements of defence and counterclaim have broadened the scope of
their infringement actions in a most unwelcome manner. However, such is the
nature of litigation in this contentious area of the law.
[5]
In considering the issues raised by the
appellants in these appeals, I have borne in mind the following considerations:
(i) the discretionary nature of most of the decisions made by the Motions
Judge; (ii) the fact that the Motions Judge is significantly closer than this
Court to the litigation; (iii) that, with one exception, it is not alleged that
the questions in dispute are vital to the final issue in the case; and (iv)
that the principle of proportionality in the conduct of litigation means that
the time and resources, both public and private, devoted to the issues in
dispute must be proportionate to their importance.
[6]
Hence, the appellants have a heavy duty to
discharge in order to persuade the Court that the Motions Judge had no basis
for interfering with the Prothonotary’s order and that his decision was clearly
wrong.
[7]
Having examined the parties’ written materials
and the judgments below, and having heard oral submissions, I am not persuaded
that the Motions Judge made any error that would warrant the intervention of
this Court.
[8]
Accordingly, I would dismiss the appeals with
costs.
“John M. Evans”
“I agree
Alice Desjardins J.A.”
“I agree
C. Michael Ryer
J.A.”
FEDERAL COURT OF APPEAL
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKETS: A-354-08
& A-356-08
For A-354-08: (APPEAL FROM THE JUDGMENT OF MR. JUSTICE RUSSELL DATED
18-JUN-2008, ALLOWING IN PART, THE RESPONDENT’S APPEAL OF THE ORDER OF
PROTHONOTARY TABIB DATED 04-JUL-2007 IN FEDERAL COURT FILE T-139-06.)
For A-356-08: (APPEAL FROM THE JUDGMENT OF MR. JUSTICE RUSSELL DATED
18-JUN-2008, ALLOWING IN PART, THE RESPONDENT’S APPEAL OF THE ORDER OF
PROTHONOTARY TABIB DATED 04-JUL-2007 IN FEDERAL COURT FILE T-140-06.)
STYLES OF CAUSE: A-354-08
j2
GLOBAL COMMUNICATIONS, INC. v. PROTUS IP SOLUTIONS INC.
AND
BETWEEN: PROTUS IP SOLUCTIONS INC. v. j2
GLOBAL COMMUNICATIONS, INC. and CATCH CURVE INC.
A-356-08
BETWEEN: CATCH
CURVE INC. v. PROTUS IP SOLUTIONS INC.
AND
BETWEEN: PROTUS IP SOLUTIONS INC. v. CATCH
CURVE INC. and j2 GLOBAL COMMUNICATIONS, INC.
PLACE OF HEARING: TORONTO, ONTARIO
DATE OF HEARING: FEBRUARY 10, 2009
REASONS FOR JUDGMENT BY: EVANS J.A.
CONCURRED IN BY: DESJARDINS J.A.
RYER J.A.
DATED: FEBRUARY 11, 2009
APPEARANCES:
|
Paul V. Lomic
Kenneth D. Hanna
|
FOR THE APPELLANT
|
|
Steven B.
Garland
Kevin K. Graham
|
FOR THE RESPONDENT
|
SOLICITORS
OF RECORD:
|
RIDOUT & MAYBEE
LLP
Toronto, Ontario
|
FOR THE
APPELLANT
|
|
SMART &
BIGGAR
Toronto, Ontario
|
FOR THE RESPONDENT
|
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