J2 Global Communications, Inc. v. Protus IP Solutions Inc.

J2 Global Communications, Inc. v. Protus IP Solutions Inc.

The Court allowed the appeals in part: it dismissed Protus' appeal as to Order #1 but, applying the relevance test in Apotex and the balancing factors in Reading & Bates de novo where the Prothonotary was clearly wrong, ordered the Plaintiffs to answer and produce specified discovery items (products/services item 29(3) adjustments, inventorship inquiry item 49, assignment items 57 and 58, enforcement items 94-105, certain relationship items 137,143-146, an extensive list of Category 8.3 statements, and J2's validity analysis item 9 subject to privilege). The Court reaffirmed deference to prothonotary discretion except where legal error or misapprehension is shown and applied the principle...

Citation
2008 FC 760
Parties
Plaintiff; Defendant by Counterclaim: J2 Global Communications, Inc.; Defendant; Plaintiff by Counterclaim: Protus IP Solutions Inc.; Plaintiff; Defendant by Counterclaim: Catch Curve Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
18 June 2008
Procedural Posture
Patent Infringement With Counterclaims for Invalidity and Claims Under Trademarks Act and Competition Act / Appeal From Prothonotary Orders on Refusals to Answer at Examinations for Discovery
Outcome
Appeal allowed in part; Protus' appeal regarding Order #1 dismissed; Orders of Prothonotary modified as set out and Plaintiffs ordered to answer and produce specified discovery; parties to re-attend for further discovery; timeline for compliance set at 30 days; costs reserved
Legal Topics
Discovery Scope and Relevance, Validity/invalidity of Patents, Inventorship and Assignment, Prosecution History Disclosure, Enforcement of Patents, Statements to Third Parties and S.7(a) Trademarks Act / S.52 Competition Act, Standard of Review of Prothonotary Orders
Source Language
English
Intellectual Property Patent Law Competition Law Trademark Law Civil Procedure Evidence Discovery Discovery Scope and Relevance +6 more

Case Brief

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Parties

J2 Global Communications, Inc.

Plaintiff; Defendant by Counterclaim

Protus IP Solutions Inc.

Defendant; Plaintiff by Counterclaim

Catch Curve Inc.

Plaintiff; Defendant by Counterclaim

Procedural Posture

Patent Infringement With Counterclaims for Invalidity and Claims Under Trademarks Act and Competition Act / Appeal From Prothonotary Orders on Refusals to Answer at Examinations for Discovery

Legal Issues

  1. 1 Whether the Prothonotary erred in ordering or refusing answers to specific discovery questions
  2. 2 Proper test for relevance and balancing onerousness under Reading & Bates and Apotex
  3. 3 Whether plaintiffs must inquire of an inventor where a relationship suggests the request will be honoured

Ratio Decidendi

The Court allowed the appeals in part: it dismissed Protus' appeal as to Order #1 but, applying the relevance test in Apotex and the balancing factors in Reading & Bates de novo where the Prothonotary was clearly wrong, ordered the Plaintiffs to answer and produce specified discovery items (products/services item 29(3) adjustments, inventorship inquiry item 49, assignment items 57 and 58, enforcement items 94-105, certain relationship items 137,143-146, an extensive list of Category 8.3 statements, and J2's validity analysis item 9 subject to privilege). The Court reaffirmed deference to prothonotary discretion except where legal error or misapprehension is shown and applied the principle...

Court Disposition

Appeal allowed in part; Protus' appeal regarding Order #1 dismissed; Orders of Prothonotary modified as set out and Plaintiffs ordered to answer and produce specified discovery; parties to re-attend for further discovery; timeline for compliance set at 30 days; costs reserved

Orders

  • Appeals allowed in part and dismissed as to Order #1
  • Plaintiffs to provide answers/production for items specified in reasons: Schedule B1/C product/service item 29(3) and related adjustments