Hospira Healthcare Corp. v. Kennedy Institute of Rheumatology, 2016 FCA 215

• Court: Federal Court of Appeal (Canada)
• Case Date: August 31, 2016
• Jurisdiction: Canada (Federal)
• Citations: 2016 FCA 215;(2016), 487 N.R. 208 (FCA)

Hospira Healthcare v. Kennedy Institute (2016), 487 N.R. 208 (FCA)

MLB headnote and full text

Temp. Cite: [2016] N.R. TBEd. SE.006

Hospira Healthcare Corporation (appellant) (plaintiff) v. The Kennedy Institute of Rheumatology (respondent) (defendant)

The Kennedy Trust for Rheumatology Research, Janssen Biotech, Inc., Janssen Inc. and Cilag GmbH International (respondents) (plaintiffs by counterclaim) and Hospira Healthcare Corporation, Celltrion Healthcare Co., Ltd. and Celltrion, Inc. (appellants) (defendants by counterclaim)

(A-303-15; 2016 FCA 215)

Indexed As: Hospira Healthcare Corp. v. Kennedy Institute of Rheumatology

Federal Court of Appeal

Nadon, Pelletier, Rennie, de Montigny and Gleason, JJ.A.

August 31, 2016.

Summary:

Kennedy owned a patent. Maini and Feldman were the two named inventors. They were 71 and 79 years of age respectively, retired, and lived in the United Kingdom. Hospira commenced an action against Kennedy seeking, inter alia, a declaration that the patent was invalid and that its proposed product did not infringe the patent. Kennedy and others counterclaimed, claiming that the patent was valid and infringed by Hospira's proposed product. Hospira's discovery examination of the two inventors was not completed as they needed two days each but Kennedy would agree to only one day each. Hospira moved to continue the examination of the inventors, at their own expense, for one additional day each in Toronto.

A Prothonotary of the Federal Court ordered that the examination of the two inventors be completed in one-half day each by way of teleconference. Hospira appealed.

The Federal Court, in a judgment reported [2015] F.T.R. Uned. 591, dismissed the appeal. Applying the standard of review in Aqua-Gem (FCA 1993), the court held that the re-attendance of the inventors and their continued examination was not vital to the final issue of the case. The Prothonotary's order was not clearly wrong. Hospira appealed.

The Federal Court of Appeal, although substituting a new standard of review of a Prothonotary's discretionary order, dismissed the appeal. The Federal Court did not err in refusing to interfere with the Prothonotary's discretionary order.

Courts - Topic 2583

Registrars and prothonotaries - Appeals from - Scope of review - The Federal Court of Appeal, in Canada v. Aqua-Gem Investments Ltd. (1993), 149 N.R. 273, determined that "discretionary orders of prothonotaries ought not to be disturbed on appeal to a judge unless: (a) 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, or (b) they raise questions vital to the final issue of the case." - The court held that "the question of the standard of review applicable to discretionary decisions of prothonotaries is one that needs to be revisited. It is my opinion that we should now adopt the Housen standard with regard to discretionary decisions made by prothonotaries as we have done in respect of similar decisions made by judges of first instance" - In Aqua-Gem, "only decisions that decided questions vital to the final issue of a case should be reviewed de novo by a judge of the Federal Court" - The court held that it was time to move "away from the Aqua-Gem standard and [do] away with de novo review of discretionary orders made by prothonotarites in regard to questions vital to the final issue of the case" - The standard of review was now that "discretionary orders of prothonotaries should only be interfered with when such decisions are incorrect in law or are based on a palpable and overriding error in regard to the facts. ... if the decision-maker has made an error of law, the reviewing court is entitled to intervene and substitute its own discretion or decision. With respect to factual conclusions, the reviewing court must defer unless ... the motions judge has failed to give sufficient weight to the relevant circumstances or ... the prothonotary has misapprehended the facts. ... there is, in the end, no substantial difference between these standards." - See paragraphs 26 to 79.

Courts - Topic 2583

Registrars and prothonotaries - Appeals from - Scope of review - Kennedy owned a patent - Maini and Feldman were the two named inventors - They were 71 and 79 years of age respectively, retired, and lived in the United Kingdom - Hospira commenced an action against Kennedy seeking, inter alia, a declaration that the patent was invalid and that its proposed product did not infringe the patent - Kennedy and others counterclaimed, claiming that the patent was valid and infringed by Hospira's proposed product - Hospira's discovery examination of the two inventors was not completed as they needed two days each but Kennedy would agree to only one day each - Hospira moved to continue the examination of the inventors, at their own expense, for one additional day each in Toronto - A Prothonotary of the Federal Court ordered that the examination of the two inventors be completed in one-half day each by way of teleconference - Hospira appealed - A Motions judge dismissed the appeal - Applying the standard of review in Aqua-Gem (FCA 1993), the judge held that the re-attendance of the inventors and their continued examination was not vital to the final issue of the case - The Prothonotary's order was not clearly wrong - Hospira appealed - The Federal Court of Appeal, although substituting a new standard of review of a Prothonotary's discretionary order, dismissed the appeal - The court stated that "I can see no basis which would allow us to conclude that the Motions Judge ought to have interfered with the Prothonotary's decision. In other words, I have not been persuaded that the Motions Judge either erred in law or made an overriding and palpable error which would have allowed us to intervene." - See paragraphs 80 to 105.

Practice - Topic 4175.3

Discovery - Examination - General - By video conference or telephone - [See second Courts - Topic 2583 ].

Practice - Topic 4176.1

Discovery - Examination - General - Time of examination (incl. time limits on) - [See second Courts - Topic 2583 ].

Counsel:

Warren Sprigings and Mary McMillan, for the appellants;

Marguerite Ethier, Melanie Baird and James Holtom, for the respondents.

Solicitors of Record:

Sprigings IP, Toronto, Ontario, for the appellants;

Lenczner Slaght Royce Smith Griffin LLP, Toronto, Ontario, for the respondents.

This appeal was heard at Ottawa, Ontario, on April 15, 2016, before Nadon, Pelletier, Rennie, de Montigny and Gleason, JJ.A., of the Federal Court of Appeal.

On August 31, 2016, Nadon, J.A., delivered the following judgment for the Court of Appeal.