Date: 20100908
Docket: A-220-10
Citation: 2010 FCA 223
Present: NADON
J.A.
BETWEEN:
DYWIDAG SYSTEMS INTERNATIONAL,
CANADA, LTD.
Appellant
and
GARFORD PTY LTD.
Respondent
REASONS FOR ORDER
NADON J.A.
[1]
This is a
motion by the appellant, pursuant to Rules 369 and 343(3) of the Federal
Courts Rules, for an Order determining the contents of the Appeal Book.
The parties are in agreement with respect to what documents
should be included in the Appeal Book, except for the Affidavit and
Cross-Examination Transcript of Mr. Neil Belmore, a prominent lawyer in the
area of intellectual property litigation. Mr. Belmore was asked by the
respondent to provide his opinion as to whether the Court should bifurcate the underlying
proceedings still pending before the Federal Court, i.e. an action by the
respondent alleging infringement of Canadian Patent No. 2,002,806
[2]
The appeal
before this Court is one from an Order of Zinn J. dated May 28, 2010, which
allowed the respondent’s appeal of an Order made by Prothonotary Milczynski (the
“Prothonotary”) on February 5, 2010. In her Order, the Prothonotary disposed of
two motions, one brought by the respondent and the other brought by the
appellant.
[3]
The respondent
brought a motion for an Order granting it leave to admit into the record the
Affidavits of three deponents, Messrs. Welford, Ott and Belmore. The
Prothonotary granted leave to the respondent to file the Affidavits of Messrs.
Welford and Ott, but denied leave in respect of Mr. Belmore’s Affidavit.
[4]
The
Prothonotary also disposed of a motion brought by the appellant, namely, a
motion to bifurcate the Federal Court proceedings. The Prothonotary concluded
that “bifurcation is not only appropriate, but it is necessary” (page 8 of her
Reasons). Hence, paragraph 1 of her Order is as follows:
1. The
matter may proceed to trial without the parties making production, conducting
discoveries or adducing evidence at trial on any issue of fact where such
production, discovery or evidence relates solely to the following:
(a) the
quantum of damages claimed by Garford Pty Ltd. (“Garford”); or
(b) the
quantum of profits earned by the defendant, DSI, and claimed by the plaintiff.
[5]
On February
15, 2010, the respondent, by way of a Notice of Motion, appealed the
Prothonotary’s Order. The motion sought the following remedies:
1.
An Order
pursuant to Rules 3 and 51 of the Federal Courts Rules, 1998, to appeal
and reverse in part an Order of Prothonotary Milczynski dated February 5, 2010.
2.
Specifically,
the Plaintiff seeks to reverse that part of the Order with bifurcates the
proceedings.
[6]
Thus, the
respondent did not appeal the Prothonotary’s Order refusing it leave to file
the Affidavit and Cross-Examination Transcript of Mr. Belmore.
[7]
In taking
the position that the Belmore Affidavit and Cross-Examination Transcript should
not be included in the Appeal Book, the appellant says that the Appeal Book
should only contain those documents that are relevant to the appeal, i.e. those
documents that are required to dispose of the appeal. The appellant further
says that the inclusion of the Belmore Affidavit and Cross-Examination
Transcript in the Appeal Book “is apt to divert the attention of the appellate
court from its essential function – determining whether or not the judge below
erred on the basis of material adduced by the parties”. (paragraph 22 of the
appellant’s Written Submissions).
[8]
The
appellant also says, relying on the decision of my colleague Sharlow J.A. in Entral
Group International Inc. v. MCUE Enterprises Corp., [2006] F.C.J. No. 1304
(QL) (F.C.A.), and more particularly on paragraph 7 thereof, that because the
Belmore Affidavit and Cross-Examination Transcript were excluded from the record
by the Prothonotary, they are not relevant for the purpose of the appeal.
[9]
The
respondent disagrees with the appellant’s position. It says that the Belmore
documents should be included in the Appeal Book because that evidence was in
the record before Zinn J. Thus, they say that the record on appeal should be
the same as that which was before the learned Judge.
[10]
In my
view, the Belmore Affidavit and Cross-Examination Transcript should not be
included in the Appeal Book. As I indicated earlier, the purpose of Mr.
Belmore’s Affidavit was to allow him to state his opinion as to whether the
Court should bifurcate the underlying proceedings. After setting out, at
paragraph 1(c) and (d) of his Affidavit, his qualifications in the relevant
area of the law, Mr. Belmore concludes, inter alia, at paragraph 16 of
his Affidavit, that bifurcation does not generally save time and costs and
that, more often than not, it results in more protracted and expensive
proceedings.
[11]
In my
view, the subject on which Mr. Belmore was asked to provide his opinion is
clearly a matter which falls within the domain of the judiciary. Although Mr.
Belmore’s opinion is based on his experience as an intellectual property lawyer
and on a review of the relevant cases, it is irrelevant since it was up to the
Prothonotary and to the learned Judge to determine, on the factual evidence
before them and on their understanding of the applicable law, whether
bifurcation should be ordered or not. In Sopinka, Lederman & Bryant: The
Law of Evidence in Canada, Alan W. Bryant, Sidney N. Lederman,
Michelle K. Fuerst, 3d ed., (Toronto: Lexis Nexis, 2009), the learned authors,
at pages 832-833, paragraphs 12.155 and 12.156, make the following remarks
12.155.
Questions of domestic law as opposed to foreign law are not matters upon which
a court will receive opinion evidence. In R. v. Century 21 Ramos Realty Inc.,
the sole principal of a real estate company was charged with income tax evasion
as a result of appropriation of property belonging to the company. An issue at
trial was the taxation year when the appropriation took place. The Crown called
an employee of Revenue Canada to give expert evidence as to when the
accused had appropriated the property. The Ontario Court of appeal held that
such evidence was inadmissible.
It was a
question of law for the judge as to what constitutes an appropriation. It was
for the judge to determine, in compliance with the legal definition, if and
when an appropriation took place. This was not something on which an expert
witness could give evidence.
12.156 The case
law illustrates that there are certain subject matters which go to the very
heart of judicial decision-making and courts remain wary of expert witnesses
providing advice as to how they should decide [such] issues. […]
[12]
In my
view, the question before the Prothonotary and the Judge, i.e. whether the
underlying proceedings should be bifurcated, is one in regard to which expert
evidence should not be allowed. This appears to be the reason why the
Prothonotary denied leave to the respondent to file the Belmore Affidavit and Cross-Examination
Transcript. At page 2 of her Order, the Prothonotary wrote as follows:
With
respect to the affidavit of Mr. Neil Belmore, leave is not granted. Mr. Belmore’s
opinion and comments upon his experience in cases where bifurcation has or has
not been ordered is not helpful, as he himself acknowledges that each case
turns on its facts, and that the Court is familiar with the law and appropriate
factors to be applied and considered.
[13]
Another
reason for excluding from the Appeal Book the Belmore Affidavit and
Cross-Examination Affidavit is that the Prothonotary’s Order, insofar as it
refused leave to the respondent to file these documents, was not appealed. As a
result, the documents are not relevant for the purpose of the appeal.
[14]
The
appellant’s motion will therefore be allowed with costs.
“M.
Nadon”
Email this Content