Date: 20030527
Docket: T-808-98
Citation: 2003 FCT 659
OTTAWA, ONTARIO, this 27th day of May, 2003
PRESENT: The Honourable Mr. Justice Rouleau
BETWEEN:
JOHNSON & JOHNSON INC., EXPANDABLE GRAFTS PARTNERSHIP
and CORDIS CORPORATION
Plaintiffs
AND:
ARTERIAL VASCULAR ENGINEERING CANADA INC.,
MEDTRONIC AVE., INC. and MEDTRONIC OF CANADA LTD.
Defendants
ROULEAU, J.
[1] The plaintiffs brought a motion before the Court on Monday, May 12, 2003 in which they are seeking an order setting aside certain parts of the order of Prothonotary Lafrenière dated February 20, 2003.
[2] This proceeding arises in an action commenced by Statement of Claim filed in 1998 in which the plaintiffs alleged infringement of certain Canadian patents relating to a "stent". From the beginning this action had been subjected to case management under the direction of the Prothonotary.
[3] The order under appeal arose as a result of a motion brought by the defendants before the Prothonotary seeking answers to questions refused at examinations for discovery of witnesses on behalf of various plaintiffs and the inventors of the patents at issue.
[4] The motion heard by Prothonotary Lafrenière proceeded over two days and he ordered that certain questions be answered by the plaintiffs; as well, others that did not require an answer.
[5] The questions ordered to be answered and which are being objected to by the plaintiffs are the following:
1. Question 376, Page 109 To inquire and advise the names of the people to whom Dr. Palmaz disclosed or discussed his work on the stents prior to October, 1984.
2. Question 377, Page 110 To inquire of Cordis and advise what arrangements vis-à-vis confidentiality were made betweenDr. Palmaz and each of the people referred to in question 376 of Paul Coeltti's examination for discovery. If such arrangements are written, to produce same. If such arrangements are oral, to advise who the parties were and what words constituted the oral agreement.
3. Question 391, Page 115 To inquire of Dr. Palmaz and advise, for each of the instances in which he communicated his stent work to another person before November, 19o84, whether he did so to persons inside or outside the University of Texas system. If he needed to do it to obtain funding, to whom did he provide the information and what circumstances and confidentiality agreements existed between Dr. Palmaz and such persons.
4. Question 675, Page 240 To advise if there were any drafts of the Licensing Agreement prior to April 14, 1986, and to produce copies.
5. Question 677, Page 241 With respect to Exhibit No. 38, to produce the marketing surveys mentioned in paragraph three.
6. Question 899, Page 322 With respect to Exhibit No. 45, to advise if Johnson & Johnson was aware of the alleged misstatement made on July 30, 1985 to which this letter refers, by August 13, 1986.
7. Question 1915, page 688 To inquire and advise when a description of the stent that is described in 0012 to 0014 was first supplied to someone outside Johnson & Johnson, namely Bodic, or any other manufacturer, and whether it was also contained in any documents or presentations that were made to people outside Johnson & Johnson. If there were such descriptions, to advise what the particulars of those were, the timing, and who the audience was, and where the publication is.
8. Question 2391, Page 907 To explain what the term "radiopacity" refers to in the context of a stent.
9. Question 2406, Page 915 To advise as to whether any of the sales of stents, for which relief is being sought in this action, were also the subject of an action for relief in the United States. To indicate whether the sale of a single stent was ever the subject of the American decision.
[6] Generally speaking, the Prothonotary ruled that the questions should be answered, more particularly dealing with questions 1, 2 and 3; he referred to paragraph 29 of the Statement of Defence and Counterclaim dated June 27, 2002 and determined that the defendants were not limited to prior disclosure and that a general plea of disclosure by a witness required him to provide facts to any disclosure of which he has knowledge.
[7] Dealing with question 4, the Prothonotary determined that a first draft should be produced based on its relevance in order to ascertain the relationship between the parties.
[8] With respect to question 5, he ordered that it be answered on the basis that it was relevant to the issue of commercial success.
[9] Dealing with question 6, he determined that the plaintiffs' knowledge may have an impact on the equities.
[10] With respect to question 7, he restricted the witness to advise when certain documents were first supplied to individuals outside Johnson & Johnson prior to 1995.
[11] With respect to question 8, he determined that an explanation of the term "radiopacity" appears in many documents produced by the plaintiffs and a definition of the manner in which the term was being used required clarification.
[12] Dealing with question 9, he found that an answer was required since both parties to this action are involved in similar actions in the United States in which similar relief is being sought and an answer is relevant to the issue of relief.
[13] The main argument advanced by the plaintiffs suggest that the defendants' pleading was open-ended and failed to provide full particulars of the material facts on which it relies. The plaintiffs further argue that relevance with respect to the question being asked is of primary importance in that there is no foundation to support the Prothonotary's decision in law; that a judge hearing an appeal of the Prothonotary's order should exercise his or her discretion de novo to determine the relevance of the impugned questions.
[14] In dealing with the first three questions, the plaintiffs submit that the Prothonotary exercised his discretion based on a wrong legal principle; that the questions cannot be relevant since they are beyond the scope of the pleading. Dealing with question 4, he submits that no question of law to be decided in the action turns on the relationship between the parties to the Licensing Agreement. The comments on question 5 is that surveys dating back to 1986 are not relevant to the issue of commercial success. Dealing with question 7, he submits that the defendants failed to plead prior disclosure. Defining the term "radiopacity" he suggests that the question lacks specificity. Finally, he finds that the scope of the U.S. proceeding is in fact seeking for a legal opinion and not a proper subject for discovery.
[15] The defendants' argument in reply is that there is no clear error of law by the Prothonotary with respect to relevance and therefore the Court's interference is not justified. In defence to questions 1, 2 and 3, he submits they are relevant as to the issue of prior disclosure which is a subject matter of importance in patent cases. In response to the arguments raised in dealing with question 4, it is submitted that the question seeks general background information concerning relationship between the parties and arises directly out of documents produced by the plaintiffs. Dealing with question 5, since the plaintiffs have indicated they intended to plead commercial success the defendants are entitled to discovery in respect to the issue. Dealing with question 7, the defendants have pleaded invalidity among other things, prior disclosure, relevant in any patent dispute. Dealing with question 8, "radiopacity" relates to the "stent" device visibility to X-rays during implantation. The defendants have pleaded that the patents are invalid and "radiopacity" is essential to visualization during implantation. It constitutes an embodiment of the invention and therefore relevant to the pleaded issue. Dealing with question 9, the defendants submit that the plaintiffs had sought relief with respect to the very same sales of "stents" in the U.S. action and that the plaintiffs should not be entitled to seek recovery of the same sales in this action. Seeking double recovery is factual information within the knowledge of the plaintiffs and is not a legal opinion as suggested by the plaintiffs.
[16] The Federal Court of Appeal has clearly established that discretionary orders of prothonotaries are not to be disturbed on appeal unless they are clearly wrong, that the exercise of discretion by the prothonotary was based upon a wrong principle of law or misapprehension of the facts; that the question raised is vital to the final issue of the case.
[17] Also it should be noted that the Court of Appeal has further emphasized that a trial judge or prothonotary dealing with discovery should be allowed considerable latitude when it comes to questions of relevance and it is more acceptable that the ultimate determination be made by the trial judge.
[18] In this particular dispute, case management has been under the guidance and control of Prothonotary Lafrenière since its inception. His familiarity with the case is beyond dispute and, as the case law has suggested, a case management prothonotary should be given more latitude. He is familiar with these proceedings and a trial judge sitting on appeal cannot be expected to be as familiar with the facts in dispute. As recently as May 13, 2003, in a case involving Jaguar Cars Limited et al and Remo Imports Ltd., A-65-03, the Federal Court of Appeal once again, upholding Gibson J. of this Court who had determined that one should not intervene with the decision of a case management judge except "in the clearest case of a misuse of judicial discretion".
[19] As ably as counsel for the plaintiffs may have argued this dispute, I have not been convinced that Prothonotary Lafrenière in his order of February 20, 2003 erred in the exercise of his discretion. The motion is dismissed and the order should be complied with. Costs to the defendants in any event of the cause.
JUDGE
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-808-98
STYLE OF CAUSE: JOHNSON & JOHNSON et al v. ARTERIAL VASCULAR ENGINEERING CANADA, INC. ET AL
PLACE OF HEARING: Toronto
DATE OF HEARING: May 12, 2003
REASONS FOR : THE HONOURABLE MR. JUSTICE ROULEAU
APPEARANCES:
Mr. Mark Edward Davis FOR THE PLAINTIFFS
Ms. Julie Perrin FOR THE DEFENDANTS
SOLICITORS OF RECORD:
OGILVY RENAULT FOR THE PLAINTIFFS
Merrill Lynch Canada Tower
Suite 1100, P.O. Box 11
200 King Street West
Toronto, Ontario
M5H 3T4
GOODMANS LLP FOR THE DEFENDANTS
Suite 2400, Box 24
250 Yonge Street
Toronto, Ontario
M5B 2M6