Date: 20100719
Docket: T-916-09
Citation: 2010
FC 756
Toronto, Ontario, July 19, 2010
PRESENT: The Honourable Mr. Justice Beaudry
BETWEEN:
WOODSTREAM
CORPORATION
Plaintiff
and
KOOLATRON
CORPORATION
Defendant
AND BETWEEN:
KOOLATRON CORPORATION
Plaintiff by Counterclaim
and
WOODSTREAM CORPORATION
Defendant by Counterclaim
REASONS FOR ORDER AND ORDER
UPON MOTION by the Applicant, Koolatron
Corporation (the defendant in the main action), for an order setting aside the
Order of Prothonotary Morneau dated June 2, 2010, ordering that the documentary
and oral discovery of the alleged infringement and validity of the patents at
issue in this case and the appropriate remedy be held separately before the
determination of the quantum of any remedial award pursuant to Rule 107 of the Federal
Courts Rules, S.O.R./98-106.
AND UPON considering the written
representations filed by both parties as well as oral submissions.
AND UPON considering the standard of
review applicable to discretionary decisions of prothonotaries as provided in Canada
v. Aqua-Gem Investments Ltd., [1993] 2 F.C. 425 (C.A.), slightly
modified in Merck & Co. v. Apotex Inc., 2003 FCA 488, [2004] 2
F.C.R. 459.
AND UPON considering the totality of the
evidence, the Court shall dismiss the appeal of the order of the Prothonotary
for the following reasons:
[1]
The
Applicant failed to demonstrate that de novo review of the
Prothonotary’s order dated June 2, 2010 essentially bifurcating the liability
issues from the issues of quantum of damages or profits and extent of any
infringement is warranted.
[2]
The
standard of review set out in Merck & Co. v. Apotex Inc., above at
paragraph 19 provides that:
Discretionary orders of prothonotaries
ought not to be disturbed on appeal unless:
a) the questions raised in the
motion are vital to the final issue of the case, or
b) the orders are clearly wrong,
in the sense that the exercise of discretion by the prothonotary was based upon
a wrong principle or upon a misapprehension of the facts.
[3]
The
question of whether or not issues in a trial are to be determined separately is
not an issue vital to the case, and the Prothonotary did not exercise his
discretion based upon a wrong principle or misapprehension of the facts, so as
to be clearly wrong.
[4]
Rather,
the Prothonotary correctly stated and applied the test formulated in Illva
Saronno S.p.A. v. Privilegiata Fabbrica Maraschino "Excelsior",
[1999] 1 F.C. 146 (F.C.T.D.).
[5]
More
specifically, the Prothonotary addressed and considered the applicant's
submissions and came to the conclusions - that there is no overlap between the
issues of liability and damages where the legal defence of obviousness is
raised, that the Applicant would not suffer any injustice or prejudice in
ordering separate trials of the issues, and that ordering separate trial would
lead to the least expensive determination of the proceedings. Despite the opposition
raised by the Applicant, the Prothonotary concluded that a departure from the
general principle was warranted in this case.
[6]
I am
satisfied that there are no reviewable errors here and the court's intervention
is not warranted.
ORDER
THIS COURT ORDERS that the motion in appeal of the
order of the Prothonotary dated June 2, 2010 be dismissed. Costs in the
way of a lump sum of $ 1000.00 shall be payable forthwith by the Applicant
to the Respondent.
“Michel Beaudry”
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