T-431-94
B E T W E E N:
GLAXO GROUP LIMITED and
GLAXO WELLCOME INC.
Plaintiffs
- and -
NOVOPHARM LIMITED
Defendant
REASONS FOR ORDER
ROTHSTEIN, J.:
This is an application to require the plaintiffs to produce for Examination for Discovery Dr. Dereck Crookes, the named inventor of an invention under Canadian Patent 1,202,638 assigned to the plaintiffs. The plaintiffs originally agreed to produce Dr. Crookes, but they have now changed their mind and refuse to produce him, giving rise to this motion. Plaintiffs' counsel indicates that Dr. Crookes is the assignee of interest in an invention which is the subject of Canadian Patent 1,202, 638 which is at issue in this case. Rule 456(5) of the Federal Court Rules provides:
| (5) Where an assignee is a party to an action, the assignor may also be examined for discovery. |
The plaintiffs say Dr. Crookes is an employee of a related company to the plaintiffs and that discovery of Dr. Crookes gives the defendant the right to an additional discovery of the plaintiffs contrary to Rule 456(1), which provides:
| Rule 456. (1) A party may, without leave of the Court, examine for discovery any adverse party only once. |
The plaintiffs' own material indicates that Dr. Crookes is not an employee of the plaintiffs. The plaintiffs argument therefore fails on the facts.
While it is not necessary to decide the question, I doubt that Rule 456(5) is restricted in the way argued by counsel for the plaintiffs. Counsel for the plaintiffs argues that Rule 456(5) is subordinate to Rule 456(1) and that if examination of an assignor would give a party an additional right of discovery of an adverse party, Rule 456(1) would override, thereby precluding operation of Rule 456(5). However, in Richter Gedeon v. Merck (1995), 62 C.P.R. (3rd) 137, the Chief Justice states at page 144:
The right given in Rule 456(5) is separate from and independent of that which is given in Rules 456(1), (2) or (3) to examine an adverse party, if an individual, or an informed officer, director, member or employee, if a corporation or the Crown.
The dicta of the Chief Justice indicates that the right to examine an assignor is independent from the right to examine an adverse party.
Although Dr. Crookes resides in the United Kingdom it has been represented to me that the plaintiffs have waived the necessity for letters rogatory. The application to examine Dr. Crookes as an assignor is allowed in the form requested by the defendant. Costs will be in the cause.
Judge
Toronto, Ontario
April 9, 1997
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
COURT NO: T-431-94
STYLE OF CAUSE: GLAXO GROUP LIMITED and
GLAXO WELLCOME INC.
- and -
| NOVOPHARM LIMITED |
DATE OF HEARING: APRIL 8, 1997
PLACE OF HEARING: TORONTO, ONTARIO
REASONS FOR ORDER BY: ROTHSTEIN, J.
DATED: APRIL 9, 1997
APPEARANCES:
Mr. Gunars Gaikis
For the Plaintiffs
Ms. Carol Hitchman
For the Defendant
SOLICITORS OF RECORD:
SMART & BIGGAR
Barristers and Solicitors
P.O. Box 39, Station P
439 University Avenue
Suite 2300
Toronto, Ontario
M5S 2S6
For the Plaintiffs
HITCHMAN & SPRIGINGS
120 Adelaide Street West
Suite 2340
Toronto, Ontario
M5H 1T1
For the Defendant
FEDERAL COURT OF CANADA
Court No.: T-431-94
Between:
GLAXO GROUP LIMITED ET AL.
Plaintiffs
- and -
| NOVOPHARM LIMITED |
Defendant
REASONS FOR ORDER