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Letter rogatory for US patent infringement case not enforced for previous patent owners

A letter of request (a.k.a. letter rogatory) is a request by a foreign Court seeking the assistance of a Canadian court to enforce a foreign order within Canada. Courts give deference to these requests under the principle of comity and tend to honour such requests unless the request is contrary to public policy or is prejudicial to Canada’s sovereignty or citizens. Canadian courts may make similar requests and it is important that such requests can be honoured.

In a patent dispute in Texas between Video Solutions and Cisco Systems, an Order was made for the production of documents and depositions from Ontario based inventors and N. Harris Computer Corporation. Harris acquired Magor, the original owner of the patent rights, in 2017 and then assigned the rights to Video Solutions in 2022.

To this end, Cisco brought an application to enforce a letter of request in Ontario. The inventors did not resist the request while Harris opposed the Order as burdensome and unnecessary. It sought a deposition of Harris and the production of several categories of documents.

The Court declined to enforce the letter rogatory. To reach this decision, Justice MacLeod considered the six factors identified by the Court of Appeal in Presbytarian Church of Sudan v. Rybiak:

  1. the evidence sought is relevant;
  2. the evidence sought is necessary for trial and will be adduced at trial, if admissible;
  3. the evidence is not otherwise obtainable;
  4. the order sought is not contrary to public policy;
  5. the documents sought are identified with reasonable specificity; and
  6. the order sought is not unduly burdensome, having in mind what the relevant witnesses would be required to do, and produce, were the action to be tried here.

The Court found factors (3) and (6) were engaged. An order is appropriate against a non-party only if the evidence cannot be obtained from one of the parties. Harris’s evidence was that approximately 700 documents – which it believed would be responsive to at least six of the categories sought – were given to Video Solutions (a party in the U.S. case) when they purchased the patent rights. If so, the documents should be produced by Video Solutions in the U.S. litigation and it would not be necessary to obtain copies of the same documents from Harris. The two companies were also in a contractual relationship and, under Ontario practice, Video Solutions would be required to request evidence from Harris. Only if Harris refused to provide it would the Court make an order for production or discovery against Harris.

Harris also suggested that the documents may be subject to claims of privilege by Video Solutions. As the Order was unopposed in Texas and a privilege log had not been produced in the US action, the confidentiality and Video Solutions’ access to these documents was not known. The Court found it “odd” that Video Solutions chose not to oppose the Order in Texas but found the question of privilege should be resolved in Texas before an order is made in Ontario.

Harris argued that the production of records and computer code of Magor (the original patent owner) would be burdensome since it may be on server archives, with recovery requiring third parties and an expert. Discovery in Ontario is also subject to considerations of proportionality and reasonableness including application of the Sedona Canada Principles in relation to electronic documents. The sixth principle requires the consideration of need and relevance for recovering deleted or residual electronically stored information. As Harris is a non-party to the litigation in Texas, the proportionality and cost must also be considered.

The Court also noted it is possible the inventors – who were yet to be deposed – may have records or answers which provide the information Cisco was seeking.

The Court directed that before an order is made, Cisco should determine if Video Solutions has the documents they seek and whether Video Solutions is claiming privilege over the documents requested from Harris. The inventors’ examinations should also be done first to determine if they have the required evidence and documents. Finally, Cisco will need to suggest an external expert to investigate the cost of Harris finding the required documents, records and computer code.

Justice MacLeod ordered Harris to preserve the related legacy records and Harris will be required to provide information to allow an expert to determine the state and accessibility of records. The decision was without prejudice to Cisco’s ability to submit another application with supplementary evidence. 

A copy of Justice MacLeod’s Reasons may be found here.

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