Date: 19990203
Docket: T-431-94
BETWEEN:
GLAXO GROUP LIMITED and
GLAXO WELLCOME INC.
Plaintiffs
- and -
NOVOPHARM LIMITED
Defendant
REASONS FOR ORDER
REED J..
[1] This is an appeal of a decision dated December 15, 1998, of the Associate Senior Prothonotary refusing the defendant's request that the plaintiff Glaxo Wellcome Inc. ("Glaxo Canada") produce Dr. Ian Winterborn as its representative to be examined on discovery instead of Mr. Woloschuk.
[2] In refusing the defendant's motion, the Associate Senior Prothonotary gave very brief reasons: "Motion dismissed because information he [Mr. Woloschuk] does not have is available on the other discoveries [that of the inventor and that of Glaxo Group Limited ("Glaxo U.K.")] or by inquiry of parent company [Glaxo U.K.]."
[3] The test to be applied in reviewing a prothonotary's decision is set out in Aqua Gem Investments Ltd. v. Minister of National Revenue, [1993] 2 F.C. 425 (C.A.). Counsel for the defendant argues that the Associate Senior Prothonotary proceeded on the basis of an error of law because a party is required, pursuant to Federal Court Rule 240, to put forward a knowledgeable representative for discovery, and there is no lessening of that obligation merely because a co-plaintiff or co-defendant exists.
[4] Even if the prothonotary proceeded on the basis of a wrong principle of law, as I agree he appears at least in part to have done, the defendant must still persuade me that it is entitled to the order sought. The defendant must persuade me that Mr. Woloschuk was not sufficiently knowledgeable to be a proper representative of Glaxo Canada for discovery purposes.
[5] The examination for discovery of Mr. Woloschuk took place on September 9, 1997. He worked for Glaxo Canada from 1982 to 1987 and from 1991 to 1995. Glaxo U.K. is the owner of the patent in issue. Glaxo Canada is a plaintiff as a result of being a licensee of Glaxo U.K. The alleged invention to which the patent relates took place in the U.K., at the Glaxo premises in the early 1980s. Dr. Winterborn worked for that company at that location during the relevant time. He moved to Canada to work with Glaxo Canada in 1993.
[6] The motion record (document 203) contains a copy of the notice of motion, a copy of the Associate Senior Prothonotary's decision, counsel's written submissions and copies of the jurisprudence on which those submissions rely. The submissions contain references to various documents: the examination for discovery of Mr. Woloschuk dated September 9, 1997; the written answers of Mr. Woloschuk dated August 31, 1998; an affidavit of Dr. Winterborn sworn May 13, 1997; the examination for discovery of Dr. Price, the representative of Glaxo U.K., dated August 18, 1997; excerpts from the trial transcript of May 6, 1997 in Action No. T-3197-90; various productions from the discovery of Dr. Price. None of these documents were, as far as I can ascertain, made part of the defendant's motion record. Rule 364(2) sets out the contents required for a motion record.
[7] I sought to review the record that had been before the Associate Senior Prothonotary, with a view to possibly making an order that this would suffice for purposes of the motion record before me since it seemed clear that both counsel were familiar with that record. However, that record also does not contain much of the relevant documentation.
[8] The defendant's motion record filed before the prothonotary (document 176) contains some excerpts from the transcript of T-3197-90, some excerpts from an affidavit of Mr. Winterborn that appears to have been sworn April 9, 1997 and some answers, undated, to questions that had been left unanswered at Mr. Woloschuk's examination for discovery. The defendant's motion record before the prothonotary (document 181) contains a more complete version of those answers and that document carries the date October 23, 1998. That motion record also contains answers to undertakings provided to the defendant arising out of the examinations for discovery of Dr. Crookes, the inventor, and Dr. Price, as well as related correspondence between counsel. The transcript of the examination for discovery of Mr. Woloschuk is not part of the record.
[9] Without a copy of the transcript of the examination for discovery of Mr. Woloschuk, I cannot assess whether he was an inadequate representative. I cannot assess whether he was unable to answer most, or only some questions. I can not assess whether the alleged inability to answer questions related to many areas or only one area of questioning, and whether those areas were major or minor in the context of the overall discovery. I cannot assess whether any inability to answer questions, in the light of the written answers subsequently provided, led to less than a full and adequate discovery for the defendant. Thus, I cannot conclude from the material on the record that the defendant has met the burden of demonstrating that Mr. Woloschuk was not informed or capable of being informed with respect to the issues of relevance in the case. It is not appropriate, then, to order that the plaintiff produce Dr. Winterborn instead of Mr. Woloschuk or, now, instead of Mr. Sabatino, who will replace Mr. Woloschuk as Glaxo Canada's representative since Mr. Woloschuk has left the company.
[10] The appeal must therefore be dismissed.
"B. Reed"
Judge
TORONTO, ONTARIO
February 3, 1999
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
COURT NO: T-431-94
| STYLE OF CAUSE: GLAXO GROUP LIMITED and |
GLAXO WELLCOME INC.
and -
| NOVOPHARM LIMITED |
DATE OF HEARING: MONDAY, FEBRUARY 1, 1999
PLACE OF HEARING: TORONTO, ONTARIO
REASONS FOR ORDER BY: REED J.
DATED: WEDNESDAY, FEBRUARY 3, 1999
APPEARANCES: Mr. Gunars A. Gaikis
For the Plaintiff
Ms. Carol Hitchman
For the Defendant
SOLICITORS OF RECORD: Smart & Biggar
Barristers & Solicitors
900-55 Metcalfe St.,
PO Box 2999, Stn. D
Ottawa, Ontario
K1P 5Y6
For the Plaintiff
Hitchman & Sprigings
Barristers & Solicitors
80 Richmond Street West
Suite 1200
Toronto, Ontario
M5H 2A4
For the Defendant
FEDERAL COURT OF CANADA
Date: 19990203
Docket: T-431-94
Between:
GLAXO GROUP LIMITED and
GLAXO WELLCOME INC
Applicant
- and -
| NOVOPHARM LIMITED |
Respondent
REASONS FOR ORDER