Hospira Healthcare Corporation v. Kennedy Institute of Rheumatology

Hospira Healthcare Corporation v. Kennedy Institute of Rheumatology
Court (s) Database
Federal Court Decisions
Date
2015-11-18
Neutral citation
2015 FC 1292
File numbers
T-396-13
Decision Content
Date: 20151118
Docket: T-396-13
Citation: 2015 FC 1292
Ottawa, Ontario, November 18, 2015
PRESENT: The Honourable Madam Justice Kane
BETWEEN:
HOSPIRA HEALTHCARE CORPORATION
Plaintiff/Moving Party
and
THE KENNEDY INSTITUTE OF RHEUMATOLOGY
Defendant/Responding Party
AND BETWEEN:
THE KENNEDY TRUST FOR RHEUMATOLOGY RESEARCH,
JANSSEN BIOTECH, INC., JANSSEN INC. AND
CILAG GMBH INTERNATIONAL
Plaintiffs by Counterclaim/Responding Parties
and
HOSPIRA HEALTHCARE CORPORATION,
CELLTRION HEALTHCARE CO. LTD. AND CELLTRION INC.
Defendants by Counterclaim/Moving Parties
PUBLIC ORDER AND REASONS
I. Overview [1] This is an appeal from the Order of Prothonotary Martha Milczynski, made on January 15, 2015, arising from the motion by Hospira Healthcare Corporation [Hospira] and Celltrion Healthcare Co. Ltd. and Celltrion Inc. [collectively, the appellants] to compel the respondents, the Kennedy Institute of Rheumatology and the Kennedy Trust for Rheumatology Research [Kennedy], to answer questions refused at the examination for discovery of Kennedy’s representative.
[2] The underlying dispute is a patent impeachment action. The appellants, the plaintiffs in the underlying action, seek a declaration that claims 1-42 of Canadian Patent No 2,261,630 are invalid and that the appellants’ proposed product will not infringe these claims. The respondents, the defendants in the underlying action, counterclaim and seek a declaration that the claims of the patent are valid and that the appellants have or will infringe the patent. Janssen Biotech Inc, Janssen Inc and CILAG GmbH International, who are licensees, distributors of the licensees and manufacturers of the licensees [Janssen], are plaintiffs by counterclaim. Celltrion Healthcare Co Ltd and Celltrion Inc are defendants to the counterclaim. The pleadings were closed on January 28, 2014.
[3] On February 24, 2014, the Court issued a bifurcation order; the liability issues will proceed before the quantification of damages issues. The order provides that the liability phase would include the respondents’ entitlement to damages, that during the liability phase there shall be no documentary or other discovery on matters solely relating to the quantification issues, and that the quantum of damages would be decided during the quantification phase.
[4] The examination for discovery of Mr Espinasse, the representative for Kennedy, took place in May 2014. After two full days and before discovery was complete, the respondents refused the re-attendance of Mr Espinasse. The respondents were subsequently ordered to produce Mr Espinasse for two additional days.
[5] The appellants brought a motion to compel the respondents to answer 354 questions that were taken under advisement or refused at the examination for discovery of Mr Espinasse,
[6] Prothonotary Milczynski heard the motion on September 10-11 and October 1-2, 2014 and ordered that the respondents answer nineteen of the 354 questions which were either refused or taken under advisement at the examination for discovery.
[7] The appellants now appeal 85 rulings in the order.
[8] The Court notes that the examination for discovery which gave rise to the refusals and the subsequent motion lasted two days (with two additional days subsequently ordered). The hearing of the motion by the prothonotary was also four days. The hearing of this appeal was one day. The Court’s review of the record, including the pleadings, the examination for discovery and the transcript of the motion hearing, has required many additional days. Despite the Court’s comprehensive review of the record, the Court does not have the same grasp of all the issues at stake, the history of the proceedings and the context which the prothonotary has acquired over the two years she has case managed this litigation. However, the Court has a sufficient grasp of the issues on this appeal to reach a determination. Even if a de novo review were warranted, which it is not, it would require a great deal more time than a one day hearing and the additional days of review to do so. These observations highlight the importance of proportionality as a consideration in the management of complex litigation.
[9] The motion hearing before the prothonotary provided ample opportunity for the appellants to make submissions on the relevance of the questions they sought to have answered. The decision of the prothonotary reveals that careful consideration was given to the appellants’ arguments. Several of the prothonotary’s rulings were based on balancing the degree of relevance of the question or request and the onerousness of requiring the respondents to answer or provide documents, often in circumstances where the respondents had already indicated that they had provided what they possessed, the information had been provided by others, or the appellants could not elaborate on why the information was relevant. There are several instances where the prothonotary encouraged the appellants to provide an explanation or elaborate on why a question was relevant, but rather than do so, the appellants preferred to regard the question as dismissed.
[10] It would be impractical to pen a decision of hundreds of pages to address each question refused and each argument the appellants raised on appeal with respect to each of those questions. The Court’s Order, as long as it is, cannot address every argument raised by the appellants on the questions they submit should have been ordered to be answered.
[11] For the reasons that follow the appeal is dismissed.
II. The Prothonotary’s Order [12] By order dated January 15, 2015, Prothonotary Milczynski ordered that 19 of the questions be answered, at least in part, and dismissed the balance of the motion. (There are some minor discrepancies regarding the number of questions posed and refused because several were multi-part questions.)
[13] The prothonotary noted that the purpose of examinations for discovery is to advance the case; discoveries ought to be conducted to obtain omissions from the opposing party, narrow the issues for trial, and, through gathering the facts, “shape the case that must be met at trial without risk of ambush or surprise”.
[14] The prothonotary then noted the principles governing the scope of examinations, including: that questions must be relevant, in that they advance a party’s case or damage the opposing party’s case; questions that call for privileged information to be disclosed, for speculation, or for expert or legal opinion do not need to be answered; and, that vague or overbroad questions are improper. The prothonotary added that while questions that could lead to a “train of inquiry” may be relevant, they must not go off track or show little prospect of reaching their destination. Finally, the prothonotary explained that the principle of proportionality must be applied: questions that require onerous or costly efforts will not be compelled when the information is of limited usefulness and not likely to advance a party’s legal position.
[15] The prothonotary found that, for the oral reasons she provided at the hearing of the motion, many of the questions did not need to be answered. She also found that many questions had been resolved by the respondents providing or agreeing to provide answers.
III. The Issues [16] The issues raised in the appeal are:
1. What is the applicable standard of review?
2. Should the decision as a whole be reviewed on a de novo basis?
3. Should specific rulings be reviewed on a de novo basis?
IV. The Standard of Review [17] The parties agree that the current standard of review of a prothonotary’s discretionary decision is that established in Canada v Aqua-Gem Investments Ltd, [1993] 2 FC 425, 149 NR 273 (FCA) [Aqua-Gem].
[18] In Merck & Co, Inc v Apotex Inc, 2003 FCA 488 at para 19, [2004] 2 FCR 459, leave to appeal to SCC refused, [2004] SCCA No 80 [Merck], the standard of review previously established in Aqua-Gem was restated as follows: “Discretionary orders of prothonotaries ought not to be disturbed on appeal to a judge unless: (a) the questions 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 facts.”
[19] Prothonotaries are given wide discretion by virtue of their case management role; see e.g., j2 Global Communications, Inc v Protus IP Solutions Inc, 2009 FCA 41 at para 16, 387 NR 135 [j2 Global]:
[16] It has often been said in this Court that, because of their intimate knowledge of the litigation and its dynamics, prothonotaries and trial judges are to be afforded ample scope in the exercise of their discretion when managing cases: see also Federal Courts Rules, rules 75 and 385. Since this Court is far removed from the fray, it should only intervene in order to prevent undoubted injustices and to correct clear material errors. None have been demonstrated here. […]
[20] The Court should only intervene in a prothonotary’s decision “in the clearest case[s] of a misuse of judicial discretion” (Sawbridge Band v Canada, 2001 FCA 338 at para 11, [2002] 2 FCR 346 [Sawbridge Band]). The Federal Court of Appeal clarified in Apotex Inc v Merck & Co, 2003 FCA 438 at para 13, 28 CPR (4th) 491 [Apotex] that this principle does not permit the prothonotary to deny a party the legal right to have questions answered on examination for discovery that are relevant to the issues in the pleadings. The prothonotary must direct their mind to several considerations in discovery, including relevance (at para 15). Other considerations were noted at para 10:
[…] It is clear that the primary consideration is relevance. If a prothonotary or a judge does, however, find a question to be relevant he or she may still decline to order the question to be answered if it is not at all likely to advance the questioner’s legal position, or if the answer to a question would require much time and effort and expense to obtain and its value would appear to be minimal, or where the question forms part of a “fishing expedition” of vague and far-reaching scope.
[21] In Soderstrom v Canada (Attorney General), 2011 FC 575, 2011 DTC 5092 [Soderstrom], Justice Paul Crampton considered both the Aqua-Gem test and the principle that deference is owed to prothonotaries, at para 10, noting that the principle in j2 Global does not appear to apply when the question is vital to the final issue in the case:
[10] More recently, the Federal Court of Appeal has stated that discretionary decisions of prothonotaries should stand unless intervention is warranted “to prevent undoubted injustices and to correct clear material errors” (j2 Global Communications, Inc v. Protus IP Solutions Inc, 2009 FCA 41, at para 16). However, the latter statement appears to have been made solely with respect to the second prong of the test set forth above, as the Court in that case agreed with the motions judge that the issue that had been raised was not vital to the final issue of the case (j2 Global Communications, above, at para 15). Based on a more recent decision of the Federal Court of Appeal, it is clear that this Court is still obliged to conduct a de novo review of a prothonotary’s decision in respect of a question that is vital to the final issue in the case (Apotex Inc v. Bristol-Myers Squibb Company, 2011 FCA 34, at paras 6 and 9).
[22] The respondents submit that the test in Aqua-Gem has been the subject of commentary in the Federal Court of Appeal and that there is some support for moving toward deference to the prothonotory’s decision even on issues that are vital to the final outcome of the case (Bristol-Myers Squibb v Apotex Inc, 2011 FCA 34 at paras 6-9, 91 CPR (4th) 307 [Bristol-Myers Squibb]) and toward following the normal appellate standard of review articulated in Housen v Nikolaison, 2002 SCC 33, [2002] 2 SCR 235 [Housen] of “palpable and overriding error”.
[23] In Fraser v Janes Family Foods Ltd, 2011 FC 569 at paras 11-12, 390 FTR 82, Justice Donald Rennie referred to Bristol-Myers Squibb, noting that it articulated “sound policy reasons” for the application of the Housen standard, but found that the comments were obiter and applied the Aqua-Gem standard.
[24] In Soderstrom at para 12, Justice Crampton also cited Bristol-Myers Squibb and found that, because the prothonotary’s decision was vital to the final issue in the proceeding, he was obliged to perform a de novo review of the decision. However, he noted that he was “attracted to the view that deference should be given to determinations made by a prothonotary, even where they raise a question vital to the final issue of the case.”
[25] In the present case, the parties agree that the current or prevailing standard of review is that set out in Aqua-Gem. While the respondents have raised good arguments for breaking new ground regarding the standard of review, I do not find that this case is the case to do so. Moreover, the result would be the same whether the Aqua-Gem test is applied or whether the palpable and overriding error standard is applied.
V. Is the decision as a whole clearly wrong and should a de novo review be conducted? The Appellants’ Position [26] The appellants argue that the prothonotary’s decision fails both parts of the Aqua-Gem test.
[27] The prothonotary’s decision discloses a lack of appreciation of relevant evidence, a misapprehension of the facts, and her exercise of discretion was based upon a wrong principle of law.
[28] Alternatively, or in addition, the appellants submit that the prothonotary improperly exercised her discretion on matters that relate to an issue vital to the final outcome of the case.
[29] The appellants claim that the order does not address why the questions, either individually or categorically, were dismissed. While the order refers to oral reasons, many of the oral reasons were “inaudible” on the transcript. It is unclear whether the questions were dismissed because they lacked relevance or because, while relevant, they were unduly onerous or otherwise improper.
[30] The appellants argue that the respondents provided no evidence that the questions were unduly onerous or would require an inordinate amount of time, effort or cost that would be disproportionate to the results. There were only submissions by counsel on this issue, rather than an affidavit attesting to how or why this would be onerous.
[31] The appellants submit that the litigation is complicated, the litigants are sophisticated and the stakes are high, as these proceedings relate to the highest selling drug in Canada. Although this should not impact the scope of discovery, the respondents cannot complain about the extra time needed to look for the answers or the documents because they have the resources to do so.
[32] The appellants point to the Federal Court’s Practice Direction dated June 24, 2015, “Case Management: Increased Proportionality in Complex Litigation Before the Federal Court,” which provides that “[q]uestions should be answered unless clearly improper or prejudicial, or would require the disclosure of a privileged communication.”
[33] The appellants submit that the prothonotary made a broad ruling based on Rule 3 of the Federal Courts Rules, SOR/98-106 [Rules] to provide an expeditious determination without regard to other principles, including that answers cannot be refused on issues relevant to an issue in the pleadings and justice cannot be subordinated to expediency.
[34] The appellants allege several errors of law and fact by the prothonotary.
[35] The appellants allege that the prothonotary applied the wrong test of relevance by asking whether a document was “relevant enough” rather than “relevant”. She further erred by requesting privileged information, trial strategy and how documents would be used at trial as a measure of relevance.
[36] The appellants note that the test for relevance is whether something will lead to information or a train of inquiry which may directly or indirectly allow a party to advance its own case or damage the case of its adversary (Bristol-Myers Squibb Co v Apotex Inc, 2007 FCA 379 at para 30, 162 ACWS (3d) 911). The purpose of discovery is to inform the adverse party of the case it has to meet. There should be flexibility in examinations and the production of documents. Relevant questions should only be disallowed when they are abusive. The appellants argue that the prothonotary did not apply the train of inquiry approach, but rather took a narrow approach and improperly put a higher onus on the appellants by asking them to provide the theory of their case.
[37] The appellants argue that the prothonotary erred in accepting the oral argument of Kennedy’s counsel as evidence of onerousness and undue effort, rather than an affidavit attesting to how or why a question would be onerous.
[38] The appellants also allege that the prothonotary erred by not requiring Kennedy to answer a question based on the fact that Janssen had already provided an answer to that question and by not requiring Kennedy to assist Hospira’s counsel by directing them to an answer previously given by Kennedy or Janssen. The appellants submit that a party cannot refuse to answer a question or produce a document on the basis that a co-defendant has already answered the question or produced the document (Havana House Cigar & Tobacco Merchants Ltd v Naeini (1998), 147 FTR 189 at para 22, 80 CPR (3d) 132 (Proth) [Havana House]).
[39] The appellants also argue that Kennedy’s witness, Mr Espinasse, was uninformed and unprepared, which resulted in many refusals and undertakings. The appellants acknowledge that they will have an opportunity to examine Dr Maini, who they initially requested as the witness, and that they have examined Dr Baker, a representative of Janssen.
[40] The appellants contend that Kennedy delivered an unsworn affidavit of documents that lacked detail regarding dates, authors, titles or descriptions for the majority of the 770 documents listed. Even if an affidavit with an index was provided afterward, expecting the appellants to sort it out is not reasonable.
[41] The appellants dispute the respondents’ contention that they simply asked the questions and failed to read the documents provided. The appellants submit that they still needed to ask questions to determine relevance.
The Respondents’ Position [42] The respondents submit that the context is an important consideration in the appeal. The prothonotary has case-managed this protracted litigation with a view to moving it forward for over two years. There have been several discovery motions and many interlocutory decisions, several have been or are being appealed. The respondents suggest that the appellants have not heeded the Court’s guidance and their actions are abusive and wasteful.
[43] The respondents submit that the 85 questions under appeal out of over 500 cannot be argued to be vital to the final outcome. Additional days of discovery are scheduled, or have already taken place, and if the questions were vital, there will be another opportunity to ask them. Moreover, the disposition of a discovery motion will rarely be vital to the final outcome of the case (Apotex v Warner-Lambert Co LLC, 2011 FC 1136 at para 4, [2011] FCJ No 1402 (QL) [Warner-Lambert]).
[44] The respondents submit that the absence of written reasons for each ruling is not grounds for a de novo hearing. Although the transcript includes some parts that are inaudible or unclear, the oral reasons and written order as a whole clearly convey that the prothonotary applied the legal principles of discovery and refusals motions to her understanding of the case.
[45] The respondents add that even when a question is relevant, the Court has a discretion to disallow it, for example where it would be onerous or cause hardship, where other means exist to address it, or where it is vague or a fishing expedition (Canada v Lehigh Cement Limited, 2011 FCA 120 at para 35, [2011] FCJ No 515 (QL) [Lehigh Cement]).
[46] The appellants were aware that Mr Espinasse would be the respondents’ representative. The appellants’ motion to have an inventor appear as the witness was dismissed. However, the inventors have been subsequently discovered.
[47] The respondents dispute that Mr Espinasse was unprepared. No one could have been able to answer the inappropriate questions posed by the appellants, some of which raised ancient events beyond his knowledge.
[48] The respondents also note several exchanges between the appellants and the prothonotary where the appellants failed to make submissions on how the documents requested were relevant and simply took the prothonotary’s inquiry as a dismissal of the question. The respondents also submit that the appellants preferred to ask questions rather than review the documents that would have provided the answers to the questions asked.
The decision as a whole is not clearly wrong; the prothonotary did not exercise her discretion based upon a wrong principle or upon a misapprehension of facts [49] None of the questions on the discovery motion will likely be vital to the final outcome of the case (Warner-Lambert at para 4). As a result, the applicable standard is whether the prothonotary’s order was clearly wrong, in that the exercise of her discretion was based on a wrong principle or a misapprehension of the facts (Aqua-Gem at 462-463).
[50] The appellants bear the burden of establishing that the prothonotary was clearly wrong and that the Court should intervene. They have not met this burden.
[51] With respect to the appellants’ submissions that the prothonotary applied the wrong test for relevance, failed to appreciate relevant evidence, misapprehended the facts and did not make clear findings, the appellants make only broad references to the oral reasons.
[52] The prothonotary’s findings are clear and the decision refers to the appropriate considerations and principles in the jurisprudence. The appellants have not established that the prothonotary’s order was based on a wrong principle or a misapprehension of the facts.
[53] As noted above regarding the standard of review, the prothonotary must consider relevance, but even if a question is relevant, it may be refused if, for example, it is not at all likely to advance the questioner’s legal position, the answer to a question would require significant time, effort and expense to obtain and its value would be minimal, or the question forms part of a “fishing expedition” of vague and far-reaching scope (Apotex at paras 10, 13).
[54] The prothonotary did not ask or consider whether the questions or issues were “relevant enough”. However, if she had, this would not necessarily be an error. The degree of relevance of a question is an appropriate consideration (Apotex Inc v Sanofi-Aventis, 2011 FC 52 at para 21, 383 FTR 37 [Apotex II]). Even the train of inquiry approach does not provide a vehicle to permit remotely potentially relevant questions to ride along. As the prothonotary noted, not every question deserves an answer.
[55] The appellants’ submission that the prothonotary erred by requesting privileged information, trial strategy and how documents would be used at trial as a measure of relevance are also addressed below as they arise in the question-by-question submissions.
[56] The prothonotary did not err in asking the appellants to better explain why particular questions or documents were relevant. The onus was on the appellants to provide more than an assertion and, for many requests, they failed to do so.
[57] The prothonotary’s order reflects that she applied the principles summarised by Justice Yves de Montigny in Apotex II at paras 16-21:
[16] Pursuant to Rule 240, a person being examined for discovery is required to answer any questions relevant to any unadmitted allegation of fact disclosed in the pleadings as well as any question concerning the identity of any person, other than an expert witness, who may reasonably be expected to have knowledge of matters in issue.
[17] Rule 242(1) establishes, however, permissible objections during an examination for discovery, if, for example, the question is not relevant, is unreasonable, is unnecessary or would be unduly onerous. Relevance is a matter of law, not discretion. The question of whether a document “relates” to an issue in the case depends upon a reasonable interpretation of the pleadings. The party demanding a document must demonstrate that the information in the document may, either directly or indirectly, advance its own case or damage the case of an opponent.
[18] More recently, the Federal Court of Appeal has adopted the “train of inquiry test” with respect to which documents may be deemed to advance a party’s case. In other words, the Court must determine whether it is reasonable to conclude that the answer to a particular question might lead the questioning party to a train of enquiry that may either advance its case or damage the case of its opponent: see Apotex inc. v Brystol-Myers Squibb Company, 2007 FCA 379 at para 30.
[19] It is fair to say, therefore, that the Court will apply a generous and flexible standard of relevance in determining whether a question should be answered. A fair amount of latitude will be allowed on discovery provided that a question is relevant to issues raised by the pleadings. The standard of relevance on discovery is lower than at trial and doubt as to the propriety of the question will be resolved in favour of disclosure: see Monit International Inc. v Canada (1999), 175 FTR 258; Glaxo Group Ltd. v Novopharm Ltd., [1998] FCJ No 1808, at para 4 (FCA).
[20] That being said, the Court retains a residual discretion to decide not to compel the production of technically relevant documents where such production would have no benefit or could not be used to advance a party’s case. Although there is a broad right of examination, there are limits on that right of discovery and the Court will not permit the discovery process to be used as a fishing expedition: see Apotex Inc. v Merck & Co. Inc., 2004 FC 1038, at para 16; Eli Lilly Canada Inc. v Novopharm Limited, 2007 FC 1195, at para 19, aff’d 2008 FC 281; aff’d 2008 FCA 287, at paras 69-70; Pharmacia S.p.A. v. Faulding (Canada) Inc. (1999) 3 CPR(4th) 126, at paras 2-3 (F.C.A.).
[21] Moreover, the simple fact that a question can be considered “relevant” does not mean that it must inevitably be answered. Relevance must be weighed against matters such as the degree of relevance, how onerous it is to provide an answer, whether the answer requires fact or opinion of law, and so forth: GSC Technologies Corp. v Pelican International, 2009 FC 223, at para 11; AstraZeneca Canada Inc. v Apotex Inc., 2008 FC 1301.
[58] The Federal Court of Appeal in Lehigh Cement at para 35 also clearly stated that relevance is not the only consideration and that questions can be disallowed following a balancing of other factors:
[35] Where relevance is established the Court retains discretion to disallow a question. The exercise of this discretion requires a weighing of the potential value of the answer against the risk that a party is abusing the discovery process. See Bristol-Myers Squibb Co. v. Apotex Inc. at paragraph 34. The Court might disallow a relevant question where responding to it would place undue hardship on the answering party, where there are other means of obtaining the information sought, or where “the question forms part of a ‘fishing expedition’ of vague and far-reaching scope”: Merck & Co. v. Apotex Inc., 2003 FCA 438, 312 N.R. 273 at paragraph 10; Apotex Inc. v. Wellcome Foundation Ltd., 2008 FCA 131, 166 A.C.W.S. (3d) 850 at paragraph 3.
[59] The appellants argue that the stakes are very high in this litigation and that the determination of the issues in the appeal should be assessed in this context and, therefore, relevance should be more broadly interpreted. While I agree that context is important, high stakes are not the only contextual consideration and cannot trump other well-established principles.
[60] Moreover, the corollary cannot be supported, i.e., that where the stakes are not as high, the determinations of relevance would be less important or the scope of relevance would be narrower.
[61] It is apparent that while the prothonotary may have found some of the questions and requests to have some relevance, she also went on to consider the other factors, and in many instances properly concluded that the value of requiring an answer was disproportionate for varying reasons, including onerousness, vagueness or that the information had already been provided by others.
[62] With respect to the appellants’ submission that the prothonotary erred in accepting the oral submissions of Kennedy’s counsel as evidence of onerousness and undue effort, rather than requiring an affidavit, the appellants have not cited any authority to support that this is an error. It was open to the prothonotary to accept the explanations offered by the respondents regarding the onerous impact of producing particular documents in the context of her awareness of the case, given her experience case managing the litigation. Similarly, the appellants do not point to a legal principle that requires the prothonotary to order the respondents to assist the appellants by directing them to an answer previously given. The prothonotary pointed out that many documents appeared not to have been read by the appellants and, rather than read them, the appellants simply asked the respondents to pinpoint particular information.
[63] With respect to the appellants’ argument that the prothonotary erred by dismissing questions based on the fact that Janssen had already provided answers to the questions, Havana House, relied on by the appellants, does not, in my view, support the broad proposition advanced by the appellants. Havana House dealt with gaps in the production of documents and referred to circumstances where the documents had been provided by another source, i.e., a third party. In the present case, the questions have been answered by a party to the proceedings, i.e., Janssen. Kennedy had clearly stated that it provided all it had in its possession. Moreover, even if Kennedy had the documents, it would be a waste of resources to require them to provide answers or documents already known to the appellants. Even if the respondents have adequate resources, there is no reason to exploit them.
[64] With respect to the appellants’ submission that there were no reasons provided for some of the prothonotary’s determinations due to inaudible portions of the transcript, I do not agree that the inaudible portions make it impossible for the Court to consider the issues raised on this appeal. The motion occurred over four days, the record is voluminous and the majority of the transcript is audible. Moreover, the appellants were present and heard the prothonotary’s rulings as the motion proceeded. If there were examples of the oral reasons that are not transcribed that the appellants take issue with, the appellants should have been able to provide some of the specific examples.
[65] The Saskatchewan Court of Queen’s Bench addressed a similar issue in Fehr v Robinson Diesel Injection Ltd, [1986] SJ No 179 (QL), 47 Sask R 12:
When I read the impugned portion of the transcript by itself I am able to ascertain the basic content and effect of the evidence. This portion of the transcript relates only to the rebuttal evidence of Robinson and when I read it in conjunction with the preceding portion of the transcript I am confident that I have a proper understanding and appreciation of the deficient portion of the transcript. More importantly, I am satisfied from a perusal of the portions of the transcript surrounding the inaudible portions that whatever has not been transcribed would not have brought about a different decision. In short, I am not persuaded that the interests of justice require a trial de novo. Accordingly, the application for such a trial is dismissed.
[66] Although the absence of parts of a transcript or record may, in some cases, affect a party’s right to know the reasons for a decision and the Court’s ability to determine if the decision is clearly wrong, this is not such a case. The inaudible parts of the transcript were heard by the appellants in person, they have not provided specific examples of the errors alleged and the inaudible portions would not likely have brought about a different decision.
[67] With respect to the appellants’ suggestion that the prothonotary misapplied the June 24, 2015 Practice Direction and focussed only on expediency, I note that the appellants have selectively extracted one part of that Practice Direction (which was not in effect at the time of the motion or the prothonotary’s order) without reference to its overall purpose and the related principles. The Practice Direction is intended to bring about increased proportionality in proceedings before this Court. Amoung other recommendations, it proposes limits on documentary and oral discovery and limits on refusals motions “to ensure the proportionate use of the Court’s scarce resources by parties.”
[68] The appellants referred only to the proposal that questions should be answered unless they are clearly improper or prejudicial, or would require disclosure of privileged information. Equally applicable are the following proposals:
No refusals motions will be permitted until discoveries are complete. Such motions will be limited to one hour per day of discovery of each party’s representative. Potentially significant cost sanctions may be imposed against unsuccessful/unreasonable parties. No questions will be taken under advisement. Answers provided under objection will be considered by the trial judge, if the objection is not sustained.
[69] The prothonotary did not place expediency ahead of the need to assess the relevance of the questions and the other considerations. Moreover, had the June 24, 2015 Practice Direction been in effect at the time of the motion, the appellants would have been far more limited in their approach to discovery.
VI. Are any of the prothonotary’s specific rulings clearly wrong? [70] As noted above, the appellants appealed 85 of the prothonotary’s rulings on the refusals motion and have raised some similar and some specific arguments regarding the rulings on this appeal, several of which are addressed below.
[71] The applicable test for each ruling remains whether the prothonotary was clearly wrong: did the prothonotary exercise her discretion based upon a wrong principle or upon a misapprehension of facts?
Category 1: Standing and entitlement of the relief sought Motion items 29, 30, 38, 40, and 41 The Appellants’ Submissions [72] The appellants submit that the standing of Janssen and its entitlement to relief goes to the final outcome of the case. It is unclear what type of license was granted to any Janssen entity, who plead they are licensees of the patent and are claiming under the patentee. The appellants dispute the standing of the parties and the existence of the license and submit that the type of license is essential, particularly to the issue of accounting for profits. There was no clear finding on the relevance of these questions by the prothonotary.
[73] The prothonotary dismissed question 38, which asked Kennedy to provide the nature of the damage that it refers to as “significant damage” that will be caused as a result of the acts of alleged infringement, on the basis that it was not relevant at this stage of the proceedings and would be relevant only to the quantification stage. The appellants argue that the prothonotary based her decision on the wrong principle because the question is directed to the nature of the harm, including causation and proximity, not simply the quantum of liability. The appellants should not be surprised at trial when the nature of the “significant damage” and its relationship to the appellants’ actions is disclosed.
[74] The appellants make a similar argument regarding questions 40 and 41, which asked Kennedy to provide its knowledge, information and belief regarding how the respondents would suffer “irrevocable damage” if the case succeeds.
The Respondents’ Submissions [75] The respondents submit that the threshold for standing is very low and the appellants’ own evidence shows that Kennedy and Janssen have repeatedly confirmed their relationship as one of patentee and licensee. The transcript and order reveal that these questions were dismissed because the respondents’ interpretation of their agreement is not relevant to any issue in the proceedings.
[76] The damages information that is relevant to the first phase of the trial has already been produced (data on sales in Canada). Causation and proximity are established by the appellants’ pleadings that their products are a biosimilar version of the respondents’ products. The appellants did not provide any evidence about the relevance of the additional information requested and did not point to any deficiencies in the information that has been produced.
The prothonotary did not err [77] Although the prothonotary’s reasons on the issue of the nature of the license are inaudible, the respondents are correct: the threshold to establish standing is low and Kennedy and Janssen have repeatedly described their relationship.
[78] The prothonotary did not misapprehend the facts or base her discretion on a wrong principle in finding that the nature of the damages is not relevant at the first stage of the proceeding, given the bifurcation order.
Category 2: Deposition Transcripts from Foreign Proceedings Motion items 45 and 53 The Appellants’ Submissions [79] The questions at issue request that Kennedy produce the deposition transcripts from proceedings in the US and UK that Mr Espinasse reviewed in preparation for his examination for discovery. The deposition transcripts were from the inventors, Drs Maini and Feldmann, and Mr Espinasse in those US and UK proceedings.
[80] The appellants argue that because Mr Espinasse prepared for discovery using evidence from a previous action, these transcripts are clearly relevant to the present proceedings. Transcripts from other proceedings should be produced where they may provide useful information to assist the Court in determining the true facts (Ed Miller Sales & Rentals Ltd v Caterpiller Tractor Co, 1988 ABCA 282 at para 34, 22 CPR (3d) 290 [Ed Miller]).
[81] The appellants also argue that the Canadian position regarding production from one jurisdiction to another was summarized by Prothonotary Kevin Aalto in Gap Inc v GAP Adventures Inc, [2011] FCJ No 1582 (QL), 95 CPR (4th) 377 [Gap], where he found that production should be guided by the principles that: (a) where prejudice to the examinee is virtually non-existent, and the material is regarding the same or similar issues and the same or similar parties, leave will generally be granted; (b) the order should be almost automatic, provided there is sufficient connection between the two actions, the parties, their interests, and the issues between them; and, (c) the overall question is whether the evidence given by the witness at discovery in the earlier action may have some bearing or relevance, directly or indirectly, on the evidence he or she may give in the second action.
[82] The transcripts are not expert evidence and, despite their obvious relevance, the prothonotary dismissed the requests “with the proviso that it is open … at the appropriate time to seek the transcripts … for the purposes of impeaching a witness.” The appellants submit that the p