Montréal, Québec, February 15, 2007
PRESENT: The Honourable Mr. Justice de Montigny
BETWEEN:
and
REASONS FOR ORDER AND ORDER
[1] The present motion is an appeal from the Order of Prothonotary Morneau dated January 3, 2007 granting leave to the Respondent to file new evidence in the form of an affidavit from Murray Wilson from the patent Re-Examination Board.
BACKGROUND
[2] The factual background is essentially agreed upon the by parties and, with the exception of the information set out in the affidavit that is the subject of this appeal, is uncontested.
[3] On November 16, 2005, the Re-examination Board, convened by the Commissioner of patents pursuant to section 48.1 of the Patent Act (R.S., 1985, c. 33 (3rd Supp.), s. 18; 1993, c. 15, s. 45), held that all claims of the Canadian Patent No. 2,093,422 (‘422 Patent) issued to Genencor on April 3, 2001 were anticipated by a patent application (“Rasmussen application”), tendered as prior art by Novozymes A/S. The Board issued a certificate pursuant to section 48.4 of the Patent Act which cancelled all claims of the ‘422 Patent.
[4] On February 14, 2006, Genencor appealed the decision of the Re-examination Board and named the Commissioner of Patents as Respondent.
[5] Subsequent to this appeal, Novozymes A/S filed a motion to be added as party or, alternatively, as intervener. This request was granted by Prothonotary Morneau on July 13, 2006. This decision was subsequently overturned by Justice Pinard on August 24, 2006.
[6] Novozymes A/S appealed this decision before the Federal Court of Appeal and, concurrently, filed a motion before this Court seeking leave to be granted intervener status. This motion was heard by Prothonotary Tabib on January 9th, 2007 and taken under reserve.
[7] Subsequent to the hearing before Prothonotary Morneau concerning Novozymes A/S status as party, Genencor International brought a motion to amend its notice of appeal to include reference to the reply submissions that had been filed by Novozymes A/S to the Re-examination Board on March 14, 2005 and September 29, 2005. Genencor alleged that it only became aware of these submissions as a result of Novozymes’ motion to be added as party, as it was not copied on these communications by the Re-Examination Board or by Novozymes A/S and, as such, was not given the opportunity to address the allegations contained therein during the re-examination proceeding.
[8] Genencor’s request to amend its notice of appeal was granted and the amendment was filed on August 8, 2006. The amended notice of appeal contained new submissions to the effect that the Re-examination Board had failed to follow the procedure set out in sections 48.1 to 48.4 of the Patent Act and had breached the principles of natural justice and procedural fairness. It was claimed, more specifically, that:
4. “In rendering its decision, the appellant submits that the Re-examination Board failed to follow the procedure set out in Sections 48.1 to 48.5 of the Patent Act. More particularly,
a. The Re-examination Board erred in accepting and considering the new material and evidence submitted by the requester Novozymes A/S after the initial request for re-examination under Section 48.1 was made.
5. In rendering its decision, the appellant submits that when the Re-examination Board accepted and considered the further submissions made by the requester Novozymes on March 14, 2005 and September 29, 2005, it breached the principles of natural justice and procedural fairness by failing to inform the appellant of said submissions.
6. In rendering its decision, the appellant submits that the Re-examination Board breached the principles of natural justice and procedural fairness in failing to provide the appellant with the opportunity to respond to adverse submissions made against them pursuant to Section 48.2(5) of the Patent Act.”
Genencor’s Amemded Notice of Appeal, at Tab 2 of the Respondent’s Motion Record.
[9] The Commissioner of Patents took the position that the full and correct factual record needed to be put before the Court as a result of these arguments, and presented a motion to adduce new evidence and file a memorandum of fact and law. The evidence the Commissioner of Patents wishes to adduce is in the form of an affidavit by Murray Wilson, interim Chairperson of the Patent Appeal Board.
DECISION UNDER REVIEW
[10] Coming to the conclusion that the affidavit submitted by the Commissioner “can be considered an objective description of the regulatory framework underlining the re-examination process and of the actual unfolding of the said process in this instance” (Reasons for Order, 2007 FC 2, para. 18), and that this evidence is material to the new issues raised by Genencor on August 8, 2006 without “venturing inappropriately on any aspects the Commissioner should not tackle” (Reasons for Order, 2007 FC 2, para. 21), the Prothonotary came to the following conclusions:
· The Respondent shall have until January 9, 2007 to serve and file the Wilson affidavit;
· The Appellant shall have until January 25, 2007 to examine Mr. Wilson on the first sentence contained in paragraph 8 of the affidavit;
· The Appellant shall have until February 5, 2007 to serve and file a further amended memorandum of fact and law;
· The Respondent shall have until February 16, 2007 to serve and file a memorandum of fact and law.
ANALYSIS
[11] There is no dispute between the parties as to the applicable standard of review. Because decisions of a prothonotary are discretionary, a judge seized with the appeal of a prothonotary’s order will not intervene unless: a) the questions raised in the motion are vital to the final issue of the case, or b) the order is 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. In these cases, the reviewing judge ought to exercise his discretion de novo: Canada v. Aqua-Gem Investments Ltd., [1993] 2 F.C. 425 (F.C.A.); A.I. Pompey Industrie v. ECU-Line NV, [2003] 1 S.C.R. 450; Merck & Co. Inc. v. Apotex Inc., [2004] 2 F.C.R. 459 (F.C.A.).
[12] As important as it may be, I do not think that the decision rendered by Prothonotary Morneau can be said to be “vital to the final issue of the case”. As the Federal Court of Appeal pointed out in Merck & Co., Inc. v. Apotex Inc., supra (at para. 22), this test must be a stringent one if we are to give effect to the intention of Parliament in creating the office of prothonotary. If we are not to reduce the office of the prothonotary to that of a “preliminary ‘rest stop’ along the procedural route to a motions judge”, we must strike the right balance between coming too quickly to the conclusion that a question is a vital one, on the one hand, and a propensity to defer to prothonotaries in procedural matters.
[13] In the present case, I do not think that the admissibility of the Wilson affidavit is vital to the final outcome of the case, in that it does not affect the substantive rights of the parties or preclude a hearing of the case on its merits (Canada v. Aqua-Gem Investments Ltd, supra, para. 40). It remains open to the Appellant to argue that the affidavit should be accorded little or no weight. I understand that the Appellant has been restricted to cross-examine on one sentence of the affidavit, thus severely limiting its ability to put it in proper context. I shall revert to that issue later in my reasons.
[14] The Appellant also argued that in rendering his decision, Prothonotary Morneau committed errors of law and acted on a misapprehension of the facts in his interpretation of Rule 351 of the Federal Courts Rules. Rule 351 provides that in special circumstances, the Court may grant leave to a party to present new evidence on a question of fact. The Appellant submitted that the prothonotary failed to consider whether or not “special circumstances” existed and erred in assessing the content of the affidavit as relating to factual matters.
[15] In BC Tel v. Seabird Island Indian Band, 2002 FCA 288, the Federal Court of Appeal set forth a three prong test for adducing new factual evidence under Rule 351 in the following terms:
Generally, new factual evidence can be considered by an appellate court if it could not have been discovered earlier through reasonable diligence, is practically conclusive of an issue on appeal and, of course, is credible.
[16] Prothonotary Morneau found that the kind of “new evidence” at issue in this appeal does not fit neatly into the test and refused to apply it. Not only was he of the view that Genencor raised new allegations in its amended Notice of Appeal in August 2006, but he also ruled that this test is applicable only when one party who was present at the first instance seeks to introduce fresh evidence on appeal.
[17] Whether the Prothonotary was right or wrong is somewhat academic in the present circumstances. Even if the evidence sought to be adduced by the Commissioner of patents fails the three prong test set out in BC Tel, supra, it is well established that the Court retains overriding discretion to admit new evidence whether or not the three prong test is met: BC Tel, supra, at para. 30. Such discretion is exercised with a view to “permit a complete record on the appeals so as not to leave the court in any doubt as to the surrounding circumstances”: Glaxo Wellcome PLC v. Canada (M.N.R.), [1998] F.C.J. No. 358 (FCA), at para. 12; see also Amchem Products Inc. v. British Columbia (Workers’ Compensation Board), [1992] S.C.J. No. 110, at para. 7. Such discretion can also be exercised if the interests of justice require it: Humanist Assn. of Toronto v. Canada, [2002] F.C.J. No. 1259, at para. 12.
[18] What, then, is the content of the evidence set out in the affidavit of Murray Wilson? The substantive paragraphs provide: a) that the re-examination procedure is outlined in the patent Act and the Manual of Patent Office Practice and was followed in the proceeding in issue (paras. 3-4); b) the timeline of some of some of the steps of the re-examination of the record (para. 5); c) the requester was routinely copied on correspondence from the Board as a matter of courtesy, but was never invited to respond (para. 6); d) the receipt of the additional submissions from Novozymes was not confirmed (para. 7); and e) the Patent Office routinely receives material which it places in the patent file and the Board did not consider the additional material submitted (para. 8).
[19] The Appellant contends that most of the information contained in this affidavit is already part of the record and cannot be assimilated to new evidence. On the other hand, Genencor objects to paragraph 3, because it offers a legal conclusion, and to paragraph 8, because it seeks to justify the conduct of the Board in an effort to defeat the allegations of breach of the principles of natural justice and procedural fairness raised in this appeal.
[20] Prothonotary Morneau rejected these allegations. Relying on the decision of the Federal Court of Appeal in Genex v. Canada (Attorney General), 2005 FCA 283, he came to the conclusion that the affidavit “can be considered an objective description of the regulatory framework underlining the re-examination process and of the actual unfolding of the said process in this instance” (2007 FC 2, at para. 18). He added, at paragraph 19:
Only the Commissioner, who appends (sic) in addition to be the actual sole respondent named by Genencor in this appeal, would possess the material information to inform the Court with respect to the view put forwards (sic) now by Genencor that the board did receive and consider Novozymes’ submissions.
[21] After having carefully reviewed the affidavit sought to be introduced by the Respondent, I am of the view that the prothonotary did not err. Considered as a whole, the affidavit essentially provides context and explains the process adopted by the Re-examination Board. It does not purport to defend, and still less to justify, the substantive or procedural correctness of the decision reached by the Board.
[22] The Appellant is right in arguing that the issue of whether the Re-examination Board violated the principles of natural justice and procedural fairness are questions of law that cannot be addressed by factual evidence under Rule 351. But all things considered, I believe this is not a proper characterization of the Wilson affidavit. On the contrary, it provides useful information with respect to the re-examination process, which may be of assistance to the Court in its assessment of that very process. In other words, it falls squarely within the ambit of what was found permissible to argue for a federal agency by the Federal Court of Appeal in Genex, supra, that is, “…an objective description of its jurisdiction, the regulatory framework in which it operates, its procedure and the facts indicating how the proceeding before it had unfolded” (at para. 67).
[23] It is also worth noting that there are at least two factors in the appeal from the decision of the Re-Examination Board that qualify as “special circumstances” under Rule 351. First of all, there is no other person but the Commissioner of Patents who possesses the material information required to inform the Court on the re-examination process. Secondly, it is also relevant to note that this is the first time that a decision of the Re-Examination Board is appealed.
[24] To the extent that the affidavit offers a legal conclusion, it bears stressing the obvious that it can be disregarded by the presiding judge. As is always the case, it will be for the judge hearing the appeal to assess the evidence and to give it proper weight.
[25] As for the restriction on the Appellant’s right to cross-examine to the first sentence of paragraph 8 of the affidavit, I have taken note of the Respondent’s position that they do not object to lifting that restriction. The Prothonotary apparently came to that conclusion on the basis of the fact that Genencor’s counsel would have expressed the wish to cross-examine Mr. Wilson because of the alleged vagueness of the first sentence of paragraph 8 of his affidavit. Whether this was a misperception is immaterial.
[26] The right to cross-examine on an affidavit is a well established right and is subject to restrictions by the Court only in very exceptional circumstances: see Hoffman-La Roche Ltd. v. Canada (Minister of National Health and Welfare), (1997), 72 C.P.R.(3d) 362 (F.C.); Upjohn Inter-American Corp. v. Canada (Minister of National Health and Welfare), (1987) 14 C.P.R.(3d) 50 (F.C.). No such circumstances exist and no request was made by counsel for the Commissioner that the cross-examination be limited to specific portions of the affidavit; indeed, as I have just noted, it is quite the contrary. The cross-examination may also be of some help to the Court in clarifying the affidavit and contextualizing it.
[27] For all the foregoing reasons, the appeal shall therefore be dismissed, except as for the possibility to cross-examine on the whole of the affidavit. The schedule for the completion of the various steps that flow from the present decision will accordingly be varied, as provided in the following order.
[28] There will be no costs in this motion.
ORDER
THIS COURT ORDERS that
o The appeal is dismissed, except that the Appellant will be authorized to cross-examine Mr. Wilson on the whole of his affidavit.
o The Respondent shall have until February 23, 2007 to serve and file the Wilson affidavit;
o The Appellant shall have until March 9, 2007 to examine Mr. Wilson on his affidavit;
o The Appellant shall have until March 19, 2007 to serve and file a further amended memorandum of fact and law;
o The Respondent shall have until March 29, 2007 to serve and file a memorandum of fact and law.
FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-262-06
STYLE OF CAUSE: Genencor International, Inc. v. Commissioner of Patents
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: February 12, 2007
APPEARANCES:
|
Ms. Hélène D’Iorio
|
|
|
Ms. Yolaine Williams
|
SOLICITORS OF RECORD:
|
Gowling Lafleur Henderson LLP Montréal, Quebec
|
|
|
John H. Sims, Q.C. Deputy Attorney General of Canada
|