Date:
20010402
Docket:
T-808-98
Neutral
Citation: 2001 FCT 269
Ottawa, Ontario, this 2nd day
of April, 2001
PRESENT: THE HONOURABLE MR. JUSTICE
BLANCHARD
BETWEEN:
JOHNSON
& JOHNSON INC.,
EXPANDABLE
GRAFTS PARTNERSHIP and CORDIS CORPORATION
Plaintiffs
-
and -
ARTERIAL
VASCULAR ENGINEERING CANADA INC.
Defendant
REASONS
FOR ORDER AND ORDER
[1]
On February 7, 2001, Johnson & Johnson Inc., Expandable Grafts
Partnership and Cordis Corporation, hereinafter the plaintiffs, brought a
motion appealing the order of Prothonotary Lafrenière dated January 4, 2001,
requiring the plaintiffs to produce Dr. Richard Schatz for a further three days
for examination for discovery, and awarding costs in favour of Arterial
Vascular Engineering Canada, Inc. (AVEC).
FACTS
[2]
The relevant facts pertaining to this motion can be briefly summarized
as follows.
The within
action involves allegations of infringement and invalidity of Canadian Letters
Patent Nos. 1,281,505, 1,338,303, 1,322,628 and 1,330,186, hereinafter the
"Patents". Each of the Patents lists either or both of Dr. Julio C.
Palmaz and Dr. Richard A. Schatz as the inventors, and each of the Patents
lists the plaintiff, Expandable Grafts Partnership, hereinafter EGP, as owner.
As such, Dr. Palmaz and Dr. Schatz are the assignors of the Patents and they
reside in the United States of America.
[3]
The inventors assigned their interests in the "Patents" to
EGP. Dr. Schatz is a partner of EGP. Dr. Palmaz is a partner of Oak Court
Partners, LP, which is a partner of EGP.
[4]
On April 27, 2000, the defendant brought a motion for the examination
for discovery of the inventors.
[5]
On June 1, 2000, Prothonotary Lafrenière ordered that the plaintiffs
request the inventors attend in specific locations for three consecutive days
to be examined for discovery, as assignors, by the defendant.
[6]
On July 10, 2000, an appeal of the Prothonotary's order by the defendant
and cross-motion by the plaintiffs to set aside the prothonotary's order were
both dismissed by Gibson J.
[7]
On October 4, 2000, the defendant, brought a motion seeking additional
time for the examination for discovery of the inventors. The motion was heard
on December 18, 2000 by Prothonotary Lafrenière.
[8]
On January 4, 2001, Prothonotary Lafrenière ordered that the plaintiffs
were required to produce Dr. Schatz in La Jolla, California, for a further
three days of examination for discovery. The order further provided that the
costs of the motion were payable to the defendant in the amount of $1,500, plus
disbursements, payable in any event of the cause. As well, the travel and
specified legal costs for the re-attendance of Dr. Schatz were to be borne by
the plaintiffs.
[9]
It is the order of January 4, 2001 that the plaintiffs are appealing
before this Court.
DECISION
OF PROTHONOTARY LAFRENIERE
[10]
At the hearing of the motion, the only issue to be decided by
Prothonotary Lafrenière was whether the plaintiffs had adduced sufficient
evidence to satisfy the test in Rule 243 of the Federal Court Rules, 1998
for setting limits on an examination for discovery. In order to meet this test,
the plaintiffs had the burden of satisfying the Court, in its discretion, that
the examination was "oppressive, vexatious or unnecessary". Rule 243
of the Federal Court Rules, 1998 reads as follows:
243.
On motion, the Court may limit an examination for discovery that it considers
to be oppressive, vexatious or unnecessary.
243.
La Cour peut, sur requête, limiter les interrogatoires préalables qu'elle
estime abusifs, vexatoires ou inutiles.
[11]
After considering Rule 243 and all the evidence presented to him,
Prothonotary Lafrenière held that the plaintiffs had failed to demonstrate that
the examination had been conducted in a oppressive, vexatious or unnecessary
manner such that the defendant's right to discovery should be limited.
STANDARD
OF REVIEW
[12]
The standard of review of discretionary orders of Prothonotaries in the
Federal Court is well established. Discretionary orders of a Prothonotary
cannot be disturbed on appeal unless they are clearly wrong, in the sense that
the exercise of discretion by the Prothonotary was based upon a wrong principal
of law or upon a misapprehension of the facts on a question vital to the final
issue of the case.
ANALYSIS
[13]
Rule 243 of the Federal Court Rules, 1998, provides for limits or
constraints to be imposed upon examination for discovery. A moving party
seeking to limit an examination bears the burden of showing that the discovery
is oppressive, vexatious or unnecessary. In the case at bar, Prothonotary
Lafrenière, in his discretion, found that the plaintiffs failed to discharge
this burden.
[14]
In order for the Court to set aside the discretionary order of a
Prothonotary, it must find the decision of the Prothonotary to be clearly wrong
in accordance with the test set out in the Aqua-Gem case.
[15]
A Prothonotary's decision should be afforded a high degree of deference and
should only be disturbed if it is based either upon a wrong principle of law or
upon a misapprehension of the facts on a question vital to the final issue of
the case.
[16]
At the hearing of this appeal, the plaintiffs requested that an
additional affidavit of Bill K. Chan dated February 7, 2001, be accepted into
evidence and filed. The affidavit in question essentially attempts to add new
evidence as to what took place at the hearing before the Prothonotary. Evidence
of proceedings before the Prothonotary would be admissible to prove misconduct
by the Prothonotary, i.e., bias, failure to listen, etc. However, such evidence
is not admissible to supplement the factual record. In the instant case, there
is no allegation, or evidence of misconduct by the Prothonotary.
[17]
Reasons were issued by Prothonotary Lafrenière and this appeal must be
decided on the record of reasons before me. To allow evidence, at this stage,
of what the Prothonotary said or didn't say at the hearing would, in my view,
be wrong. Such would run the risk of inappropriately distorting the record of
decision. In appeal proceedings, parties are quite free to bring arguments to
advance their case, as did the plaintiffs in this instance. However, it is my
view, that this appeal must be decided on the record of decision before the
Court, and on the evidence that was before the Prothonotary at the time of his
decision. I am also of the view that the affidavit of Bill K. Chan, dated
February 7, 2001, does not contain new evidence relevant to the matter that
would be admissible at this stage of the proceeding.
[18]
For these reasons, the additional affidavit of Bill K. Chan dated
February 7, 2001, will not be accepted as part of the record for this motion
and will not be filed.
[19]
In his reasons, the Prothonotary expressed that although counsel for the
defendant explored a number of areas which had already been canvassed in an
earlier discovery, he was satisfied that counsel for the defendant made good
use of the transcripts from the earlier discovery and was not wastefully
replicating the work already done.
[20]
I am satisfied that the Prothonotary, in the exercise of his discretion
in this case, did not apply any wrong principle nor misapprehended the facts on
a question vital to the final issue in this case.
[21]
The decision of Prothonotary Lafrenière is not clearly wrong and it
should stand. It follows therefore that the appeal should be dismissed.
ORDER
THIS COURT ORDERS that:
1. The plaintiffs' appeal is dismissed
2. Costs are awarded to the defendant in any
event of the cause.
“Edmond P. Blanchard”
Judge
Canada v. Aqua-Gem
Investments Ltd., [1993] 2 F.C. 425 at 454 (C.A.).
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