Teva Canada Limited v. Janssen Inc., 2016 FC 318

Intellectual property litigants are encouraged to put a significant degree of effort into arguing their case before a prothonotary, as the Federal Court (“FC”) continues to demonstrate the high degree of deference owed to discretionary orders made by prothonotaries. A prothonotary is a judicial officer who exercises many of the same powers as Federal Court judges, including mediation, case management, practice motions and trials of actions in which up to $50,000 is claimed.

This appeal arises from a prothonotary order refusing to grant the motion of Janssen Inc. (“Janssen”) for bifurcation of (i) a damages action brought by Teva Canada Limited (“Teva”)  against Janssen pursuant to section 8 of the Patented Medicines Notice of Compliance Regulations and (ii) Janssen’s counterclaim that Teva  infringement of four of its patents. [1] Upon the FC’s review of the factors to be considered in granting a bifurcation motion, as enunciated in Merck & Co, Inc v Brantford Chemicals Inc, 2004 FC 1400, [6] the FC found that the prothonotary’s findings were a valid application of the factors and entirely reasonable. [9]

Although the FC felt that it was possible that the opposite conclusion could have been reached, to find fault with the prothonotary’s decision would amount to a reweighing of the evidence, which would subvert the high degree of evidence owed to a discretionary decision of a prothonotary, as held by the Federal Court of Appeal in Turmel v Canada, 2016 FCA 9 and Sport Maska Inc v Bauer Hockey Corp, 2016 FCA 44. [10] Since Teva failed to demonstrate that the prothonotary’s findings were clearly wrong in fact or law, the FC declined to interfere with the order. [13]