Jeremy Want

Following the dismissal of an application to enforce a letter rogatory from a U.S. court against a non-party, the court determined the issue of costs.

The respondent successfully resisted the application by demonstrating it had searched its records and that the request was overly broad and premature.

The court found the respondent acted reasonably and did not thwart a legitimate inquiry.

Costs were awarded to the respondent on a partial indemnity scale, fixed at $32,053.03.

The applicant, Cisco Systems Inc., sought to enforce a Letter Rogatory from a U.S. District Court against N. Harris Computer Corporation, a non-party in the U.S. patent litigation, to obtain documents and depositions.

Harris resisted the order, arguing it was burdensome and unnecessary, and that the evidence could be obtained from a party to the U.S. litigation (Video Solutions).

The court declined to enforce the order at this time, finding it premature, but ordered Harris to preserve legacy records and allowed Cisco to renew the application with further evidence after certain steps are taken in the U.S. litigation.

The appellant infringed a patent held by the respondents for metallocene linear low-density polyethylenes (thin but strong plastics).

Following a liability finding, a reference judge awarded the respondents an accounting of profits equal to the appellant's actual revenue minus actual full costs, and also awarded springboard profits — profits earned post-patent-expiry causally attributable to infringement during the patent period.

The majority dismissed the appeal, holding that an accounting of profits requires disgorgement of all profits causally attributable to the invention using a three-step framework; the appellant's concession that no non-infringing option existed precluded reduction of the award; and springboard profits are legally permissible and factually supported.

Côté J. dissented, arguing the differential profit approach should have been available and the matter remitted to the Federal Court.