Docket: T-2105-13
Citation:
2015 FC 1176
Ottawa, Ontario, October 16, 2015
PRESENT: The Honourable Mr. Justice LeBlanc
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BETWEEN:
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BARD PERIPHERAL
VASCULAR, INC.
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AND
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BARD CANADA
INC.
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Plaintiff/
Defendants
by counterclaim
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and
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W.L. GORE &
ASSOCIATES, INC.
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AND
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W.L. GORE &
ASSOCIATES CANADA INC.
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Defendant/
Plaintiffs
by counterclaim
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ORDER AND REASONS
I.
Introduction
[1]
This is an appeal by the Defendants/Plaintiffs
by counterclaim, W.L Gore & Associates Inc. [Gore US] and W.L Gore &
Associates Canada Inc. [Gore Canada] [collectively referred to as Gore],
pursuant to Rule 51 of the Federal Courts Rules, SOR/98-106 [the Rules],
of part of Prothonotary Richard Morneau’s Order , dated August 24, 2015 [the
Order], disposing of the request for answers to questions posed to the
representative of the Plaintiffs/Defendants by counterclaim [Bard] during
discovery. Gore seeks to compel answers be given by Bard’s representative, Mr.
Scott Randall, to a number of questions which Prothonotary Morneau held need
not be given.
[2]
Gore also challenges the part of Prothonotary
Morneau’s Order awarding costs to Bard.
[3]
For the reasons that follow, Gore’s appeal is
dismissed.
II.
Background
[4]
This appeal arises in the context of an action
brought by Bard seeking a declaration that Gore has infringed Canadian Patent
No. 1,341, 519 [the 519 Patent] as well as injunctive relief and damages,
including punitive and exemplary damages. The 519 Patent, entitled Prosthetic
Vascular Graft, contains 27 claims and relates to prosthetic devices,
including artificial veins and arteries, made of expanded Teflon known as ePTFE.
Bard alleges that 12 broad families of Gore products include all the elements
of, and therefore infringe, certain claims of the said patent.
[5]
Gore is denying infringement and has
counterclaimed that the 519 Patent is invalid in several respects, including
lack of utility, insufficient disclosure, overbreadth, and co- inventorship.
[6]
As noted by Prothonotary Morneau, the parties to
this case are not strangers to each other or to the technology and patent in
suit as this matter has been prosecuted and litigated for more than four
decades both in Canada and the United States. The 519 Patent was issued
on January 2, 2007 to the named inventor, Dr. David Goldfarb, from a Canadian
application filed in January 1975, which claimed priority based on a US
application filed by Dr. Goldfarb on October 24, 1974. The Canadian
application was put into conflict by the Canadian Patent Office in 1980 against
an application filed in Canada by Gore US in order to determine the issue of
inventorship. This gave rise to proceedings before this Court. In February
2001, Justice François Lemieux held that Dr. Goldfarb, instead of Peter
Cooper, an employee of Gore US who had assigned his rights to Gore US, was the
first inventor (Goldfarb v W.L. Gore & Associates Inc., 2001 FCT 45,
200 FTR 184) [Goldfarb]. This judgment was affirmed on appeal (W.L.
Gore & Associates Inc. v Goldfarb, 2002 FCA 486, 235 FTR 167). Dr.
Goldfarb’s US patent application was also put in an interference proceeding
against an application filed by Gore US. In 2002, after years of litigation, a
US patent was issued to Dr. Goldfarb.
[7]
Justice Lemieux, in Goldfarb, above,
described Dr. Goldfarb’s invention as follows:
[118] The first step in the analysis to
determine who, as between Dr. Goldfarb and Mr. Cooper, was the first inventor
of a successful artificial small vascular human vein or artery replacement, is
to define exactly what the invention is.
[119] The invention relates to an
artificial vascular prosthesis made from ePTFE. The properties and method of
manufacture of ePTFE are not new. They are prior art. Robert Gore was the
inventor and obtained, in 1976, a patent on that invention.
[120] What was not known in 1970, however,
was whether ePTFE tubing could have a medical use. Experimentation or search
for use for it as a vascular graft in replacement for natural arteries and
veins in humans began almost immediately after Mr. Gore filed his U. S. patent
application in 1970.
[121] The invention, an appropriate range
of fibril length in the material, is what made the ePTFE tubing useful for such
purpose. The essential feature of the invention is the distance between the
nodes (or the length of the fibres connecting them) which forms part of the
internal structure of ePTFE tubing.
[122] An appropriate fibril length is what
permits this ePTFE tubing to act as a useful artificial graft which remains
patent because it allows cellular or fibroblastic movement and thus tissue
ingrowth.
[8]
The present action was initiated in 2013. It is
casemanaged by Prothonotary Morneau as a specially managed proceeding. By
Order dated November 12, 2014, the trial - on the issues of infringement and
validity - is scheduled to commence in a year from now, that is on October 3,
2016. Discoveries of each party’s corporate representative were held in the spring
of 2015 and followed by written questions. In each case approximately 1200
questions were not answered by the other side’s representative and motions were
brought to compel answers to some of them. Bard sought to compel answers to 72
refused or unanswered questions whereas Gore sought the adjudication of some
940 unanswered questions. At the time of the hearing of both motions held
before Prothonotary Morneau on August 12, 2015 and as a result of ongoing
efforts to reduce the issues in dispute, these figures were brought down to six
questions by Bard and to approximately 450 by Gore.
[9]
Gore’s 450 questions were broken down into some
30 categories or sub-categories. The questions at issue in this appeal are in
relation to three of these categories: the Prosecution Questions, the Aneurysm
Questions, and the Pore Size Questions. There were 17 questions at issue
initially but this total was reduced to 13 [the Refused Questions] at the
outset of the hearing of the appeal.
[10]
After having set out what were, in his view, the
legal principles applicable to the analysis of both parties’ motions to compel
answers, and pointed to the Notice to the Profession, issued by the Chief
Justice of this Court on June 25, 2015 with a view of bringing increased
proportionality in complex litigation before the Court [the Proportionality
Guidelines], Prothonotary Morneau held that the Refused Questions need not be
answered either because they were not relevant to unadmitted allegations of
fact or because they sought expert opinion, legal conclusions, or expressions
of opinion or state of mind.
[11]
On the whole, Gore was successful on 13 of the
450 questions for which it sought answers from Bard’s representative. Given
this limited success and being of the view that Gore’s motion to compel
answers, by its magnitude, was unreasonable and excessive, Prothonotary Morneau
awarded costs to Bard at the top of Column IV of the Tariff.
[12]
The issue to be determined in this case is
whether the Court should interfere with these findings.
III.
Analysis
A.
The Standard of Review
[13]
Prothonotaries’ decisions ordering questions to
be answered or not answered on discovery are interlocutory, discretionary decisions
(Bell Helicopter Textron Canada Limitée v Eurocopter, 2010 FCA 142 [Bell
Helicopter], at para 17; Apotex Inc. v Welcome Foundation Limited,
2008 FCA 131, at para 3; Hayden Manufacturing Co. v Canplas Industries Ltd.,
161 FTR 57, 85 ACWS (3d) 12, at para 8 [Hayden Manufacturing]; Létourneau
v Clearbrook Iron Works Ltd., 2005 FC 475, at para 4; AstraZeneca Canada
Inc. v Apotex Inc., 2008 FC 1301, [2009] 4 FCR 243, at para 22 [AstraZeneca
Canada]).
[14]
As is well-settled, discretionary orders of
Prothonotaries ought not to be disturbed on appeal before a judge of the Court
unless they raise questions vital to the final issue of the case or they 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.
Therefore, the Court may only consider the matter de novo when the
Prothonotary’s decision falls within the scope of one of these two criteria (R
v Aqua-Gem Investments Ltd. [1993] 2 FC 425, 61 FTR 44 [Aqua-Gem] ; Z.I.
Pompey Industrie v ECU-Line N.V., 2003 SCC 27, [2003] 1 S.C.R. 450; Merck
& Co. Inc. v Apotex Inc., 2003 FCA 488, 246 FTR 319; Bell Helicopter,
above at para 18; Apotex Inc v Sanofi-Aventis, 2011 FC 52, 383 FTR 37,
at para 13 [Sanofi-Aventis] ; NOV Downhole Eurasia Limited v TLL Oil
Field Consulting, 2014 FC 889, at paras 13-14 [NOV Downhole]).
[15]
As Justice Yves de Montigny stated in Sanofi-Aventis,
above, it will be a rare occurrence when it can be shown that the denial of
further discovery will be vital to the outcome of a case (Sanofi-Aventis,
at para 14). Here, Gore has not attempted to show that the part of
Prothonotary Morneau’s Order under appeal is vital to the final issue of the
case.
[16]
Therefore, the issue is whether Prothonotary
Morneau, in finding that Bard’s representative need not answer the questions at
issue in this appeal, exercised his discretion based upon a wrong principle or
upon a misapprehension of the facts. If he did not, then his decision attracts
considerable deference and should only be interfered with “in the clearest case of misuse of judicial discretion”
(NOV Downhole, above at para 14; L’Hirondelle v Canada, 2001 FCA
338, (sub nom Sawridge Band v
R) [2002] 2 FC 346, at para 11). This is
particularly the case where, as here, the impugned decision was rendered in the
context of case management. In such context, it is generally recognized that
the burden of a party seeking to overturn an interlocutory order by a
case-manager is a heavy one as a casemanager is normally intimately familiar
with the history, details, and complexities of the casemanaged matter (Sanofi-Aventis,
above at para 15).
[17]
In other words, I should not substitute my
discretion for that of Prothonotary Morneau, even if I may have arrived at
different results had I been hearing the matter at first instance, unless he
made a fundamental error of principle or misapprehended the evidence or the
pleadings (Merck & Co. Inc. v Apotex Inc., 2005 FC 582, 273 FTR 160,
at para 59; Hayden Manufacturing, above at para 12).
B.
Oral Discovery: Relevant Principles
[18]
As reaffirmed by the Federal Court of Appeal in Canada
v Lehigh Cement Limited, 2011 FCA 120, at paragraph 30 [Lehigh Cement],
the general purpose of discovery “is to render the
trial fairer and more efficient by allowing each party to inform itself fully
prior to trial of the precise nature of all other parties’ positions so as to
define fully the issues between them.” This calls for a liberal
approach to the scope of questioning on discovery (Lehigh Cement, at
para 30; Sanofi-Aventis, above at para 19).
[19]
Examinations on discovery in proceedings before
this Court are governed by Rules 234 to 248. Rules 240 and 242(1) are of
particular relevance to the present case. Rule 240 provides for the scope of
the examination for discovery. It states that a person examined for discovery
is required to answer, inter alia, any questions relevant to any
unadmitted allegation of fact disclosed in the pleadings. In Lehigh Cement,
above, the Federal Court of Appeal reiterated that a question is
relevant “when there is a reasonable likelihood that it
might elicit information which may directly or indirectly enable the party
seeking the answer to advance its case or to damage the case of its adversary,
or which fairly might lead to a train of inquiry that may either advance the
questioning party’s case or damage the case of its adversary” (Lehigh
Cement, at para 34).
[20]
For its part, Rule
242(1) establishes permissible objections during an examination for discovery.
It provides that a person may object to a question when, for example, the
answer is not relevant, is unreasonable, is unnecessary, or would be unduly
onerous to answer. The following types of questions have generally been found
not to be proper subject matters for discovery : (i) questions seeking expert
opinion, (ii) questions seeking the witness to testify as to questions of law,
(iii) questions seeking law or argument, as opposed to facts, and (iv)
questions where the witness is being asked: “upon what facts do you rely for paragraph x of your pleading” (Apotex Inc. v Pharmascience Inc.,
2004 FC 1198, 260 FTR 254, at para 19; AstraZeneca
Canada, above at para 14).
[21]
There is more to
it. The simple fact that a question is “relevant”
does not mean that it must inevitably be answered and cannot, as a result, be
objected to. In AstraZeneca Canada, above, the Court held that relevance is always subject to the overriding
discretion of a Prothonotary to control abuses of the discovery process:
[16] “Relevance” alone is not the test as
to whether a question put on discovery must be answered. Of course, if a
question is irrelevant, it need not be answered. However, if a question
is relevant to some degree or another, then, if an objection is raised, the
Court must consider factors such as the degree of relevance, how burdensome is
it to obtain an answer, is the question fair, is it abusive and so forth.
Strayer JA. when he was in the Federal Court of Appeal wrote in Merck &
Co. v. Apotex Inc. 2003 FCA 438, 28 C.P.R. (4th) 491 at
paragraph 13:
A person who is a party to a civil
action is entitled to ask any question on discovery that is relevant to the
issue: that is a matter of justice to him, subject of course to the
discretionary power of the prothonotary or a judge to disallow the question where
it is abusive for one of the reasons mentioned above.
[17] The Federal Court of Appeal again
considered the scope of “relevance” in the context of oral discovery in Apotex
Inc. v. Bristol-Myers Squibb Co., 2007 FCA 379. In
that decision Shallow JA. for the Court, considered "relevance" as including not only
that which will go to proving or disproving the case of one or other party, and
considered the "train of inquiry" test which she stated was subject always to the "... overriding discretion of a prothonotary or judge to control
abuses of the discovery process". At
paragraphs 30, 31 and 35, Shadow JA. wrote:
30 In determining the propriety of a particular question posed in the
examination for discovery of Dr. Ryan, the test is whether it is reasonable to
conclude that the answer to that question might lead Apotex to a train of
enquiry that may either advance its case or damage the case of BMS: Apotex v.
Canada, [2005] F.C.J. No. 1021, 2005 FCA 217. For example, Apotex is entitled
to ask any question that could elicit an admission by BMS as to a relevant
fact, or that could elicit information about the existence of documents that
have not been disclosed but that meet the test of relevance for the purposes of
pre-trial discovery, as set out in the Further and Better Order, subject always
to the overriding discretion of a prothonotary or judge to control abuses of
the discovery process.
31 In determining whether the test of
relevance is met in a particular case, it is necessary to consider the
allegation that the questioning party is attempting to establish or refute. In
this case, Apotex is attempting to advance its allegation of inutility (based
on its interpretation of the promise of the 436 patent as explained above), or
to damage the position of BMS that denies the allegation of inutility.
[…]
35 The task of distinguishing proper
questions from improper ones requires consideration of the factual and
procedural context of the case, informed by an appreciation of the applicable
legal principles. The determination made by the judge or prothonotary at first
instance will stand if it is reasonable, unless it is based on an error of law.
[22]
Relevance must
therefore be weighed against matters such as the degree of relevance, how
onerous it is to provide an answer, or if the answer requires fact or
opinion or law. This is how the Court protects against
abuses so as to secure, as required by Rule 3, the just, most expeditious and
least expensive resolution of every proceeding on its merits. As the Court
reiterated in AstraZeneca Canada, above at paragraph 7, Rule 3 - the
Rules’ “procedural foundation” - is to be
followed in all matters before the Court, including discovery.
[23]
As indicated previously, Prothonotary
Morneau, in his Order dated August 24, 2015, spent quite some time setting
forth the principles he relied on to reach his conclusions. He first
reproduced the six principles regarding relevancy set
out by Justice John McNair in Reading & Bates Construction Co. v Baker
Energy Resources Corp., 25 FTR 226, (1988), 24 CPR (3d) 66, [Reading
& Bates], pointing out that the first three define the parameters that
determine whether a question is relevant whereas the last three set out a
non-exhaustive series of circumstances or exceptions in which a question need
not be answered. He then quoted extensively from Merck & Co. Inc. v
Apotex, 2004 FC 1166 [Merck & Co], a decision where he insisted,
in reference to the fifth principle set out by Justice McNair in Reading
& Bates, above, on the need to maintain a balance between the broadest
possible examinations for discovery and the tendency of parties, particularly
in the field of intellectual property, to engage in fishing expeditions which
should not be encouraged by the Court. The Reading & Bates fifth
principle reads as follows at paragraph 10 of the decision:
[10] Before compelling an answer to any
question on an examination for discovery, the court must weigh the probability
of the usefulness of the answer to the party seeking the information, with the
time, trouble, expense and difficulty involved in obtaining it. Where on the
one hand both the probative value and the usefulness of the answer to the
examining party would appear to be, at the most, minimal and where, on the
other hand, obtaining the answer would involve great difficulty and a
considerable expenditure of time and effort to the party being examined, the
court should not compel an answer. One must look at what is reasonable and fair
under the circumstances: Smith, Kline & French Ltd. v. A.-G. Can.,
per Addy J. at p. 109.
[24]
Still quoting from his decision in Merck & Co., above,
Prothonotary Morneau had this to say, on the basis of this Court’s Judgment
in Westinghouse Electric Corp. v Babcock & Wilcox Industries Ltd., 15
FTR 154, (1987), 15 CPR (3d) 447, about the need for such balancing in patent
infringement cases where the defendant is attacking the validity of the patent
it allegedly infringed:
[15] This
passage therefore testifies more particularly that in a patent infringement
action in which the defendant is attacking the validity of the patent, the
Court has little inclination to force the plaintiff to engage in
disproportionate research to support the allegations of invalidity raised by
the defendant when, inter alia, the conclusions sought by this defending party
pertain primarily to the interpretation that the Court will give to the patent
claims in light of its reading of the patent, the state of the applicable law
and any expert evidence adduced by the parties, and not in terms of what the
plaintiff may have thought or argued in the past as to the validity of the
patent.
[16] Similarly, Mr. Justice Hugessen, in
Eli Lilly and Co. v Apotex Inc. (2000), 8 C.P.R. (4th) 413 (upheld on appeal,
at 12 C.P.R. (4th) 127), stated the following at pages 414-15 concerning the
relevance of the inventor’s knowledge about the obviousness of an invention:
I am not prepared to order the
plaintiffs to produce documents relating to the state of knowledge of prior art
on the part of the inventors or of the patentees at the time of the issue of
the patents in suit. Such knowledge can only be relevant to the pleaded issue
of obviousness. The test for obviousness is, in my view, and there is ample
authority to this effect, an objective test. The touchstone is the person skilled
in the art, whether or not the invention would have been obvious to that
person. The actual knowledge of the inventor or inventors is irrelevant.
[Emphasis added]
[25]
Further quoting from Merck
& Co at paragraph 19 of the Order, Prothonotary
Morneau relied on Philips Export B.V. v Windmere
Consumer Products Inc., 1 FTR 300, (1986) 8 CPR (3d) 505, to state that “a party may not be required, on an examination for
discovery, to answer a question that forces it to express an opinion, whether
it is an expert opinion, its interpretation of a patent or its beliefs.”
[26]
Finally, he referred to Justice
Roger Hughes’s comments in AstraZeneca Canada, above, regarding the tendency of
parties and counsel in patent infringement cases to use the discovery process
to uncover as much as possible from the other side however marginally relevant
so as to defeat the real purpose of discovery, which is directed to what a
party truly requires for trial, and found them to be “forcefully” applicable to the present case (AstraZeneca
Canada, at paras 6 and 19).
[27]
It is “with that in
mind, including the relevant jurisprudential principles, which comprehend those
cited earlier as well as those raised by the parties” that Prothonotary
Morneau disposed of Gore’s motion to compel answers to the Refused Questions.
[28]
So far, I do not see any failure in Prothonotary
Morneau’s approach and identification of the relevant applicable principles.
C.
The Refused Questions
(1)
The Prosecution Questions
[29]
Gore claims that Prothonotary Morneau erred in
law when he declined to compel Bard to answer a total of six questions
pertaining to how the claimed numeric ranges within the 519 Patent were arrived
at, on the basis that they were not relevant. More particularly, these
questions essentially pertain to alleged discrepancies between what Dr.
Goldfarb told his US Patent Agent, Mr. Sam Sutton, about these ranges and what
Mr. Sutton put in the patent application.
[30]
Gore says these questions - the Prosecution
Questions (numbered 781 to 786 in Gore’s Confidential Chart) - are relevant to
its allegation that the disclosure of the 519 Patent is insufficient within the
meaning of subsection 34(1) of the Patent Act, RSC, 195, c P-4 (the Act)
because it is broader than what was contemplated by Dr. Goldfarb, as well as to
its allegation that the 519 Patent is invalid pursuant to section 53 of the Act
on the ground that the statements in said patent about the ranges of certain
claimed features are incorrect and were wilfully made for the purpose of being
misleading.
[31]
Bard contends that Gore failed to direct the
Court to specific legal principles which would have been wrongly considered or
applied by Prothonotary Morneau and that what Gore is ultimately asking the
Court to do is to substitute its own assessment of the same facts considered
and arrive at conclusions different from those reached by the Prothonotary.
This is indeed, in my view, what Gore’s argument amounts to. As I indicated
previously, this is not a permissible approach when one is appealing a
Prothonotary’s interlocutory, discretionary decision rendered in the context of
case management. The burden on the appealing party is a heavy one and requires
that it be shown that the impugned decision results from a clear misuse of
judicial discretion. Overall, I am not satisfied that this demonstration has
been made.
[32]
Gore insists that relevance is a matter of law
and that no deference is therefore owed to Prothonotary Morneau’s decision
regarding the Prosecution Questions. This, again, is not entirely correct. As
Justice Hughes stated in AstraZeneca Canada, above, at paragraph 23, “law establishes if a question is relevant, discretion may be
applied as to whether, nonetheless, it is appropriate to Order, or not to
Order, that an answer be given.” This, in my view, quite appropriately
sums up this Court’s case law regarding relevancy and the nature of the
decisions rendered in this respect by the Court’s Prothonotaries.
[33]
Here, it is clear from the reasons for
Prothonotary Morneau’s decision that he was not only concerned with the
relevance of the Prosecution Questions, from a strict legal technical
standpoint, but also with the need to balance the usefulness of the information
sought with the trouble and inconvenience involved in obtaining it, the Court’s
little inclination to force a plaintiff to engage in disproportionate research
to support the allegations of patent invalidity often raised by the defendant
in an action for patent infringement, and the tendency, observed by Justice
Hughes in AstraZeneca Canada, above, by parties and counsel in patent
infringement cases to lose sight of the real purpose of discovery by attempting
to uncover as much as possible from the other side however marginally relevant.
[34]
As Bard points out, Gore is asking Bard, through
the Prosecution Questions, to answer questions pertaining to private
discussions between Dr. Goldfarb and his then US Patent agent, Mr. Sutton,
neither of whom are parties to the present proceedings or within the control of
Bard, in an effort to arrive at what Dr. Goldfarb contemplated the 519 Patent
to be.
[35]
In my view, it was open to Prothonotary Morneau,
based on the considerations outlined in his Order, to find that the Prosecution
Questions need not be answered. These considerations were all valid and supported
by this Court’s jurisprudence. I also agree with Bard that the case of Ratiopharm
Inc. v Pfizer Limited, 2009 FC 711, 350 FTR 250 [Ratiopharm], relied
on by Gore to argue that what was contemplated by Dr. Goldfarb is relevant to
Gore’s patent invalidity counterclaim, is distinguishable from the present case
as evidence regarding what was contemplated by the inventors in that case was
provided to the Court by the inventors themselves “live
in the witness box” at trial and was so provided in a context where the
Court will normally look at the patent itself in order to determine its
sufficiency within the meaning of subsection 34(1) of the Act (Ratiopharm,
above at paras 188 to 190). As Bard points out, Ratiopharm was
brought to the attention of Prothonotary Morneau and I agree that it was within
his discretion to distinguish it from the present scenario.
[36]
Bard claims that in any event, answers to the
Prosecution Questions cannot be compelled on discovery as these questions
relate to privileged communications between Dr. Goldfarb and his then US patent
attorney, Mr. Sutton. This argument was not considered by Prothonotary Morneau
as it was submitted on the eve of the hearing of the parties’ motions to compel
answers. This issue was discussed at some length by the parties at the hearing
of Gore’s appeal. However, given my conclusion that there is no basis to
interfere with Prothonotary Moneau’s finding regarding the Prosecutions
Questions, there is no need to determine Bard’s privilege assertion in this
appeal.
(2)
The Aneurysm Questions and the Pore Size
Question
[37]
There are six Aneurysm Questions and one Pore
Size Question at issue (numbered 1224, 1225, 1237, 1238, 1239, 1246 and 1073 in
Gore’s Confidential Chart). With respect to Question 1224, Gore claims that
Prothonotary Morneau erred in law by declining to order Bard to provide an
answer on the basis that this question is not relevant. Question 1224 sought
Bard’s knowledge, information, and belief about the alleged failure of certain
early Gore products with a wall thickness between 0.2 and 0.8 mm. Bard
contends that Gore’s submissions shed no light as to how knowledge of the
specification of Gore’s product is relevant and that in any case, to the extent
that this question concerns Gore’s own products, there are other means for Gore
to obtain the information sought.
[38]
Again, relevance alone does not determine
whether an answer is to be given as there are other matters to be considered.
As we have seen, deference is owed to a Prothonotary’s decision regarding his
or her consideration of those other matters and the burden on the party seeking
to set aside such a decision is a heavy one, the test being not whether I might
have arrived at a different result had I been hearing the matter in first
instance but whether the decision amounts to a clear case of misuse of judicial
discretion. Having read the context in which Question 1224 was put to Bard’s
representative, I will not interfere with Prothonotary Morneau’s exercise of
discretion in ordering that this question need not be answered even if I might
have arrived at a different result had I been hearing the matter at first
instance.
[39]
As for the remaining Aneurysm Questions and the
Pore Size Question, Gore claims that Prothonotary Morneau erred in law in
declining to order Bard to answer these questions on the ground that they
required an opinion. More particularly, Gore contends that Prothonotary
Morneau erred in principle by adopting Bard’s blanket statement that questions
seeking to elicit an opinion are not permitted. It says that this goes against
the teachings of the Federal Court of Appeal’s decision in Bell Helicopter,
above, which stresses the fact that although the general principles set out in
the case law regarding questions requiring an expression of opinion are useful,
these principles do not provide a magic formula applicable to all situations
and require, therefore, a case-by-case, or question-by-question, analysis (Bell
Helicopter, above at para 13).
[40]
Bard submits that each of these questions do
elicit its representative’s opinion on the functioning of early Gore products
and the alleged occurrence of certain graft failures as well as his
interpretation as to the beliefs of others concerning the technical issues and
conclusions discussed in the referred-to scientific publication. More
particularly, Bard argues that nothing suggests that Prothonotary Morneau
accepted its submission in this regard without proper consideration of the
application of the law to the facts of the case or that he went against
the directives of the Federal Court of Appeal in Bell Helicopter, above.
[41]
Bard claims that Gore has therefore failed to
establish that Prothonotary Morneau’s analysis of the remaining Aneurysm
Questions and of the Pore Size Question was based upon a wrong legal principle
or a misapprehension of the facts of the case and that as a result, Gore has
not established that a de novo examination is required to decide where
these questions need to be answered. I agree. There is indeed nothing to
suggest that Prothonotary Morneau did not proceed on a question-by-question
basis. As Bard points out, this Court has held on many occasions that it is
virtually impossible for the Court’s Prothonotaries to give detailed reasons
for each order issued by them given the number of motions they have to decide,
including burdensome motions seeking to compel answers to questions put on
discovery where hundreds of question must often be considered, as was the case
here, and where the only practical way to dispose of answerability issues is to
state reasons cryptically (Foseco Trading AG v Canadian Ferro Hot Metal
Specialties Ltd, 46 FTR 81, 36 CPR (3d) 35, at para 5; AstraZeneca
Canada, above at paras 19 and 25). As the Court further held in this
regard, this is no reason to set aside Prothonotaries’ decisions or to
determine them de novo (AstraZeneca Canada, above at para 25; Anchor
Brewing Co. v The Sleeman Brewing & Malting Co., 2001 FCT 1066, 15 CPR
(4th) 63, at para 31).
[42]
Whether a question elicits opinion or fact is
often not clear. It requires a contextualized measure of judgment. As the
Court has stated on a number of occasions, Prothonotaries, in their
case-management capacity in particular, are in the best position to direct and
control the discovery process due to their intimate knowledge of the history
and details of casemanaged matters (Galerie au chocolat Inc. v Orient
Overseas Container Line Ltd, 2010 FC 327, at para 10). In such matters,
the office of a Prothonotary is not a mere “preliminary
“rest-stop” along the procedural route to a motion judge” (Aqua-Gem,
above at para 70).
[43]
On examining the remaining Aneurysm Questions
and the Pore Size Question in context and considering the submissions of Gore’s
counsel, I am not satisfied that Prothonotary Morneau was wrong in ordering
that these questions need not be answered. Again, this is not an instance of
clear misuse of judicial discretion.
[44]
On the whole, I see no reason to interfere with
Prothonotary Morneau’s finding that the Refused Questions need not be answered.
D.
Prothonotary Morneau’s Determination on Costs
[45]
Gore claims that Prothonotary Morneau erred by
awarding costs to Bard at the top of Column IV of Tariff B of the Rules. It
contends that Prothonotary Morneau failed to give sufficient weight to
paragraph 400(3)(k) of the Rules by not considering whether any step in the
proceeding was improper, vexatious or unnecessary. In particular, Gore says
that Prothonotary Morneau misapprehended the facts by not considering that the
magnitude of its motion to compel answers was the result of Bard’s excessive
use of “under advisements” and improper refusals
at the examination for discovery and by not considering Bard’s decision to
answer more than 300 questions after Gore’s motion was brought.
[46]
Bard responds that Gore’s position proceeds from
an erroneous understanding of Prothonotary Morneau’s determination on costs.
Bard claims that what prompted Prothonotary Morneau’s determination is
not Gore’s initial motion seeking answers to some 940 questions but its motion,
as it stood at the time of the hearing before Prothonotary Morneau, which still
sought adjudication of over 450 questions in clear disregard of the purpose of
discovery, jurisprudence related thereto, and the recommendations set out in
the Proportionality Guidelines, all of which were properly taken into account
by Prothonotary Morneau. Coupled with the fact that Bard was not
ordered to pay costs to Gore because it “managed to
reduce considerably the number of questions to be adjudicated” (to six),
Bard submits that Prothonotary Morneau exercised his discretion within the
appropriate framework and that there is therefore no basis to interfere with
his costs determination.
[47]
I agree with Bard. Rule 400 of the Rules
provides the Court with “full discretionary power over
the amount and allocation of costs and the determination of by whom they are to
be paid.” In other words, costs awards are highly discretionary and I
have not been convinced by Gore that Prothonotary Morneau’s determination as to
costs resulted from an improper exercise of discretion.
[48]
As for this appeal, each party is claiming
costs. Since it is the successful party to this appeal, costs, to be assessed
in accordance with Column III of the table to Tariff B, are awarded to Bard in
any event of the cause.
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