Teva Canada Limited v. Janssen Inc., 2016 FC 318
Intellectual property litigants are encouraged to put a significant degree of effort into arguing their case before a prothonotary, as the Federal Court (“FC”) continues to demonstrate the high degree of deference owed to discretionary orders made by prothonotaries. A prothonotary is a judicial officer who exercises many of the same powers as Federal Court judges, including mediation, case management, practice motions and trials of actions in which up to $50,000 is claimed.
This appeal arises from a prothonotary order refusing to grant the motion of Janssen Inc. (“Janssen”) for bifurcation of (i) a damages action brought by Teva Canada Limited (“Teva”) against Janssen pursuant to section 8 of the Patented Medicines Notice of Compliance Regulations and (ii) Janssen’s counterclaim that Teva infringement of four of its patents.  Upon the FC’s review of the factors to be considered in granting a bifurcation motion, as enunciated in Merck & Co, Inc v Brantford Chemicals Inc, 2004 FC 1400,  the FC found that the prothonotary’s findings were a valid application of the factors and entirely reasonable. 
Although the FC felt that it was possible that the opposite conclusion could have been reached, to find fault with the prothonotary’s decision would amount to a reweighing of the evidence, which would subvert the high degree of evidence owed to a discretionary decision of a prothonotary, as held by the Federal Court of Appeal in Turmel v Canada, 2016 FCA 9 and Sport Maska Inc v Bauer Hockey Corp, 2016 FCA 44.  Since Teva failed to demonstrate that the prothonotary’s findings were clearly wrong in fact or law, the FC declined to interfere with the order.