Date: 19980401 Docket: T-195-94
Between:
VISX INCORPORATED
Plaintiff
- and -
NIDEK CO., LTD., 707284 ONTARIO INC. c.o.b. as INSTRUMED CANADA, DR. HOWARD GIMBEL and DR. DONALD JOHNSON
Defendants
REASONS FOR ORDER (Delivered from the Bench at Toronto, Ontario Monday, March 30th, 1998 as edited)
ROTHSTEIN J.:
[1] This is an appeal from a March 6th, 1998 Order of Giles A.S.P. dismissing the defendant Nidek's motion for relief from the implied undertaking rule not to use documents obtained in the discovery process for purposes other than the proceedings in which the documents were obtained. Nidek seeks relief from the rule so that certain documents may be provided to Nidek's United Kingdom counsel for litigation between the same parties on similar issues in that country.
Page: 2 [2] On an appeal from a discretionary decision of the Prothonotary, the Motions Judge should interfere only when the decision is clearly wrong, having been based upon a wrong principle or on a misapprehension of the facts (or is vital to the result of the case, clearly not a consideration here), see Aqua-Gem Investments Ltd. v. Minister of National Revenue, [199312 F.C. 425 (C.A.) at 463; 1 C.T.C. 186 at 207.
[3] The first question is whether the learned Prothonotary's decision was based upon a
wrong principle. The principles respecting granting relief from the implied undertaking rule
are set forth in Goodman v. Rossi (1995), 24 O.R. (3d) 359 (C.A.) at 377 where Morden,
A.C.J.O. states:
The criteria for granting relief from the implied undertaking rule are an important part of the rule itself. In Crest Homes plc v. Marks, [1987] 2 All E.R. 1074 Lord Oliver said at p. 1085 on behalf of the House of Lords that the authorities on the question "illustrate no general principle beyond this, that the court will not release or modify the implied undertaking given on discovery save in special circumstances and where the release or modification will not occasion injustice to the person giving discovery".
At page 378 he continues:
For the purpose of the present case I am prepared to consider the applicable test as being more liberal than that stated in Crest Homes - as one tolerating some injustice to the discovered party if it is outweighed by a greater injustice to the discovering party if he or she could not make use of the discovered documents.
I summarize the factors to be considered as:
1. the existence of special circumstances; and
2. the weighing of the injustice between the parties between granting or denying the application for relief from the rule.
Page: 3
In his order Giles A.S.P. stated at page 2:
If the documents are exigible in the Courts in England from the same source as they were obtained in Canada, there is no need to relieve from the implied undertaking applicable here. If the documents are not exigible in England, I see no special circumstances which would indicate that this Court should relieve from the implied undertaking here.
[4] The learned Prothonotary took into account the requirement of special circumstances
and found there were no circumstances justifying relief from the implied undertaking rule in this case. Nidek's counsel says that special circumstances were that the parties and the issues in this action and those in the United Kingdom action are the same or similar. He also says that the documents came from the United States, where there is no implied undertaking rule, and that they were filed publicly in that country. However, the learned Prothonotary was entitled to exercise his discretion as to whether he considered these to constitute special circumstances and a Motions Judge should not interfere with the exercise of that discretion. Having put his mind to whether or not special circumstances existed, the learned Prothonotary did not base his decision on a wrong principle.
[5] With respect to weighing the injustice between the parties, having found no special circumstances, the learned Prothonotary was not obliged to address the issue. However, he did have regard for the fact that there are procedures available for disclosure of documents in the United Kingdom proceedings. Before this Court there was evidence that the defendants had availed themselves of at least some of those procedures. Thus, having regard to the balance of injustice between the parties, there is no obvious prejudice to Nidek if relief from the implied undertaking rule is not granted.
Page: 4 [6] Further, there is no indication that the learned Prothonotary misapprehended the facts. The documents in question come from the United States where Nidek says they were tiled in a United States patent interference proceeding. As I earlier observed, Nidek says there is no implied undertaking rule in the United States. Plaintiff's counsel say they do not believe the documents were filed in the United States proceedings. When this became an issue, plaintiffs
counsel made an effort to check, but was unable to obtain precise information regarding filing in the United States. Nidek says that it sought to obtain the documents from the United States patent office, but was unable to do so. Nidek concedes this may be because they were never filed. The learned Prothonotary did not make explicit reference to the source of the documents, or to whether or not he believed they were filed in the United States patent office. However, if they were indeed filed in the United States patent office, and there is no implied undertaking rule in the United States, Nidek's United Kingdom counsel should be able to obtain them directly. Alternatively, if they were not filed they would not have been made public in the United States and the fact that there is no implied undertaking rule in that country would be irrelevant.
[7] I conclude that the learned Prothonotary's decision was not based upon a misapprehension of the facts or a wrong principle.
[8] The appeal is dismissed.
"Marshall Rothstein"
Toronto, Ontario April 1, 1998
Judge
SOLICITORS OF RECORD:
Piasetzki & Nenniger
120 Adelaide Street West Suite 2308
Toronto, Ontario M5H 1T1
For the Plaintiff
Sim, Hughes, Ashton & McKay 6th Floor
330 University Avenue Toronto, Ontario M5G 1R7
For the Defendants
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
COURT NO: T-195-94
STYLE OF CAUSE: VISX INCORPORATED
- and -
NIDEK CO., LTD. and
707284 ONTARIO INC. c.o.b. as INSTRUMED CANADA, DR. HOWARD GIMBEL and DR. DONALD JOHNSON
DATE OF HEARING: MARCH 30, 1998
PLACE OF HEARING: TORONTO, ONTARIO
REASONS FOR ORDER BY: ROTHSTEIN, J.
DATED: APRIL 1, 1998
APPEARANCES:
Mr. Gregory A. Piasetzki Mr. Chan
For the Plaintiff
Mr. Arthur B. Renaud For the Defendants