An Invitation to Attend (From the land of 10,000 lakes)

On January 7, 2015, Justice Stewart of the Ontario Superior Court of Justice, released her endorsement in Arctic Cat Inc. et al. v. Peter Watson. In this case Arctic Cat applied for an Order to give effect to a Letter of Request issued by a Court in Minnesota.

The request arose in the context of a civil patent infringement proceeding in which Arctic Cat was a defendant to an action for damages brought by Bombardier Recreational Products Inc. and BRP U.S Inc., in relation to a Bombardier snowmobile design.

The Minnesota Court requested that the Ontario Superior Court of Justice compel the attendance of Peter Watson to give deposition testimony and to produce documents for use in the patent action. Watson was a resident of Ontario and refused to attend voluntarily in Minnesota for this purpose.

Watson, who was represented by counsel for BRP in the application before Justice Stewart, had done consulting work for Bombardier in the past, had tested snowmobiles embodying the technology disclosed in the patent at issue, and was the named inventor on the Canadian patent in related litigation in the Federal Court of Canada. It was believed that Watson was an inventor of the technology claimed in the Bombardier US patents, even though he was not a named inventor.

In her endorsement, Justice Stewart confirmed the following general legal principles with respect to requests of a foreign court:

• That the Ontario Superior Court of Justice will give effect to the request of a foreign court as a matter of comity;
• That the courts may grant leave to examine a person who is a non-party to the foreign proceeding where there is a reason to believe that person has information relevant to a material issue in the action;
• That a letter of request for pre trial discovery of a non-party can be enforced and should be not be any rarer than when an Ontario Court makes a similar request to a foreign jurisdiction; and
• That the observations and conclusions of the foreign court making the request is entitled to deference and respect unless to do so would be contrary to the interests of justice or would infringe Canadian sovereignty.

Justice Stewart went on to confirm that the following factors should guide the court when deciding whether to enforce a letter of request: (i) the evidence sought is relevant, (ii) the evidence is necessary for trial and will be adduced at trial if admissible, (iii) the evidence is not otherwise obtainable, (iv) the order sought is not contrary to public policy, (v) the documents are identified with reasonable specificity, and (vi) the order sought is not unduly burdensome, bearing in mind what the witness would be required to do and produce were the action to be tried here.

Relying upon these factors Justice Stewart granted the Application and an Order was granted giving effect to the letter of request.

A copy of the decision can be found here.