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Norwich Orders are not a Second Stab at Discovery

In the context of Worthware’s action against Raysoft for inducing patent infringement, Worthware brought a motion for a Norwich Order under Rules 233 and 238 of the Federal Courts Rules. The Order would have compelled Richard Lalancette, the sole shareholder and director of the defendant Raysoft, to disclose information concerning clients of Raysoft. Worthware said it needed this information to institute proceedings against each client as direct infringers of its 486 Patent.

A Norwich Order is an extraordinary equitable remedy which provides a means of obtaining necessary information from a third party. Justice Pentney applied the test for Norwich Orders articulated in Rogers Communications Inc. v. Voltage Pictures, LLC, 2018 SCC 38 at paragraph 18:

  1. A bona fide claim against the unknown alleged wrongdoer;
  2. The person from whom discovery is sought must be in some way involved in the matter under dispute, he or she must be more than an innocent bystander;
  3. The person from whom discovery is sought must be the only practical source of the information available to the applicants;
  4. The person from whom discovery is sought must be reasonably compensated for his or her expenses arising out of compliance with the discovery order, in addition to his or her legal costs; and
  5. The public interest in favour of disclosure must outweigh the legitimate privacy concerns.

Justice Pentney refused to grant a Norwich Order, holding that Worthware had failed to establish an “ironclad” element of the test for Norwich Orders: that Mr. Lalancette was the only practical source of the client information. Worthware’s own evidence on the motion acknowledged that the defendant company, Raysoft, also holds the requested information.

Several additional factors weighed against Worthware’s motion.

Justice Pentney observed that Worthware had previously asked for – and was denied – the same information. During discovery, Raysoft refused to provide the client information after it was requested during the examination for discovery of Mr. Lalancette. The Case Management Judge considered the issue in the context of refusals motions. The CMJ rejected Worthware’s request for the customer list, stating: “the discovery process does not serve to obtain names of potential witnesses for the sole purpose of starting an action against them.” Worthware did not appeal this decision and, as noted by Justice Pentney, it is firmly established that a Norwich Order is not intended to be used to circumvent the normal discovery process.

Worthware brought its motion for a Norwich Order almost one year after the CMJ’s decision, citing doubts about Raysoft’s ability to pay an eventual damages award. Justice Pentney held there was no evidence to call into question Raysoft’s financial situation. Worthware did not seek security for costs or taken any other step to protect its position.

Had Worthware framed its patent infringement action differently by pointing the litigation finger at unnamed John Doe defendants as direct infringers, it may well have obtained the client information during discovery. Justice Pentney dismissed Worthware’s motion for a Norwich Order. A copy of the decision is available here.