Canadian National Railway Company v. BNSF Railway Company

Canadian National Railway Company v. BNSF Railway Company

The Court declined to issue the proposed protective order because the Sierra Club test was not satisfied: a reasonable alternative measure existed — a protective agreement incorporating an express undertaking to the Court supplemented by the implied undertaking rule — which adequately protects the parties' confidential discovery information; accordingly the motion for a court-issued protective order was dismissed.

Citation
2019 FC 281
Parties
Plaintiff/defendant by Counterclaim: CANADIAN NATIONAL RAILWAY COMPANY; Defendant/plaintiff by Counterclaim: BNSF RAILWAY COMPANY
Court
Federal Court
Jurisdiction
Canada
Judgment Date
7 March 2019
Procedural Posture
Patent Infringement With Counterclaim for Invalidity / Motion for Protective Order in Discovery Phase
Outcome
Motion for protective order dismissed
Legal Topics
Protective Order, Confidentiality Order, Implied Undertaking Rule, Discovery, Third Party Use of Discovery Materials
Source Language
English
Intellectual Property Civil Procedure Evidence Confidentiality Protective Order Confidentiality Order Implied Undertaking Rule Discovery +1 more

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Parties

CANADIAN NATIONAL RAILWAY COMPANY

Plaintiff/defendant by Counterclaim

BNSF RAILWAY COMPANY

Defendant/plaintiff by Counterclaim

Procedural Posture

Patent Infringement With Counterclaim for Invalidity / Motion for Protective Order in Discovery Phase

Legal Issues

  1. 1 What legal test applies to issuance of a protective order under Sierra Club
  2. 2 Whether a court-issued protective order is necessary where parties can enter a protective agreement supplemented by the implied undertaking rule
  3. 3 Whether implied undertaking and protective agreement are enforceable and protect against collateral use by third parties

Ratio Decidendi

The Court declined to issue the proposed protective order because the Sierra Club test was not satisfied: a reasonable alternative measure existed — a protective agreement incorporating an express undertaking to the Court supplemented by the implied undertaking rule — which adequately protects the parties' confidential discovery information; accordingly the motion for a court-issued protective order was dismissed.

Court Disposition

Motion for protective order dismissed

Orders

  • Motion for protective order dismissed
  • Parties may adopt a protective agreement incorporating an express undertaking to the Court and rely on the implied undertaking rule to protect discovery materials