Canada’s Federal Court: expert opinions and legal arguments are not proper discovery in patent cases

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In this decision, “position questions” (seeking disclosure of expert opinions and legal arguments) were ruled improper discovery questions. The decision also clarifies that requests for particulars are not prohibited after the parties have pleaded over, and that these can be made at various times during a proceeding.  

On March 3, 2020, the Federal Court delivered its decision on a motion to compel in Bayer Inc. v Apotex 2020 FC 325. The Court reiterated that examinations for discovery are not the proper venue for a party to seek positions from the opposite party. It emphasized that discovery should not be directed at advanced disclosure of an opponent’s expert reports or legal arguments. Prothonotary Tabib held that particulars for trial, and not examinations for discovery, is how a party might obtain disclosure of the opposing party’s positions, expert opinions, and legal arguments.

Particulars are not limited to situations where they are needed to plead over. The Prothonotary believes there is a “common misconception” that a party loses the right to request particulars after it has pleaded over, and that motions for particulars are “seldom granted by the Court”. She noted that particulars may be sought at different times in a proceeding. She also noted that particulars are typically ordered before the close of pleadings, and then potentially again in preparation for trial. In the latter situation particulars are ordered to “perfect a party’s understanding of the case for trial”. She further agreed that, although unusual, the Court could order particulars between these two stages if such an order was necessary. 

In any event, the Prothonotary explained that part of the importance of separating opinion answers given on discovery from opinion answers provided in trial particulars lies is the binding nature of the disclosure given. Specifically, she noted that if an opinion answer were given on discovery, “[i]t is unrealistic to believe that such questions, if answered on discovery or as undertakings, could be held or used against the party at trial as an admission.” Conversely, particulars are binding on the parties as if they are pleadings.

It remains to be seen if this decision will withstand appeal, and whether it will be followed in other cases.

For more information, please contact the McCarthy Tétrault Intellectual Property Litigation group in Toronto.

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