Court File and Parties

COURT FILE NO.: 1621/13

DATE: 2013/11/06

SUPERIOR COURT OF JUSTICE - ONTARIO

RE: AKER BIOMARINE AS, AKER BIOMARINE ANTARCTIC AS, AKER BIOMARINE ANTARTIC US, INC., OLYMPIC SEAFOOD AS, OLYMPIC BIOTEC LTD., AVOCA INC., RIMFROST USA, LLC, BIORIGINAL FOOD & SCIENCE CORP., ENZYMOTEC LTD., and ENZYMOTIC USA, INC.

Applicants

AND:

KGK SYNERGIZE INC.

Respondent

BEFORE: Leach J.

COUNSEL: Arden V. MacLean, for the Applicants

Antonio Di Domenico, for the Respondent

HEARD: October 25, 2013

judgment

[1] Before me is an application for an order giving effect to letters rogatory, (the foreign counterpart to what now is referred to in Ontario as a “letter of request”), issued by the United States District Court for the District of Columbia, in relation to ongoing patent litigation before the United States International Trade Commission (“ITC”).

[2] In essence, the letters rogatory and ancillary orders sought by the Applicants request formal directives from this court authorizing and compelling certain oral and documentary discovery from the Respondent KGK Synergize Inc., (“KGK”), a company located in London, Ontario, and a non-party witness, which is alleged to have information relevant to the patent litigation.

[3] Full particulars of the relief sought in that regard are set forth in the notice of application, letters rogatory and attachments thereto, including a six page list of instructions, definitions and categorical description of documents to be produced by KGK, and a two page description of the “topics for testimony” that KGK’s president and CEO, (or “the most knowledgeable representative of KGK”), will be asked about during a proposed 7 to 10.5 hour examination under oath, at an Ontario location convenient to KGK.

[4] The Applicants say that the documents and information sought from KGK are relevant and necessary for justice to be done in the ITC litigation, and are otherwise unobtainable. They also assert the requested relief is neither contrary to Canadian public policy nor unduly burdensome to KGK, having regard to the Applicant’s efforts to identify what is sought with reasonable specificity, their willingness to reimburse KGK for its reasonable and documented expense incurred in addressing the production and examination requests, and mechanisms such as the deemed or implied undertaking rule and/or “protection order” arrangements in the ITC litigation that will shield KGK from potential collateral uses of the documentation and information being sought.

[5] KGK says that the requested relief would impose inappropriate and unduly burdensome obligations on it as an innocent non-party, not only because the scope of intended documentary and oral discovery is overly broad and in the nature of a “fishing expedition”, but because the evidence tendered in support of the application is inadmissible or otherwise far from sufficient to satisfy the preconditions for such relief. In that regard, KGK relies in particular on the suggested absence of any satisfactory evidence that the documents and information sought from KGC are otherwise unavailable, as well as indications that the entire suggested exercise is unnecessary because any evidence obtained from KGK will be inadmissible in the ITC proceeding.

Background

[6] I will be returning in greater detail to certain aspects of the evidence before me, but the general background to the present application is set forth in the following chronology:

• KGK admits that, at some point in the past, it tested krill extract samples provided by Neptune Technologies & Bioresources, Inc. (“Neptune”), which apparently is a company based in Laval, Quebec. KGK’s specific admissions include conducting one or more analyses of krill oil for Neptune in 2001, and one or more analyses of krill oil for Neptune in 2002.
• On or about July 8, 2008, Najla Guthrie (president and CEO of KGK) wrote a relatively brief three paragraph “to whom it may concern” cover letter, supplied to Neptune, confirming that KGK conducted analysis for Neptune in 2001. Attached to the letter was a 1½ page typed report, entitled “Investigation of the presence of Polyphenolic Compounds in Krill Oil”. Attached in turn, to that 1½ page report, were attached five pages, each containing a single diagram or graph, apparently depicting the results of the particular analysis described in the typed report. The cover letter and its attachments apparently were provided to support Neptune’s claim that the subject matter of a European Patent was indeed patentable.
• On January 29, 2013, a complaint was filed with the ITC by Neptune and Acasti Pharma, Inc., (“Acasti”), which apparently is another Quebec company and a subsidiary of Neptune, and which is located at the same address is Laval, Quebec.
• On March 21, 2013, Neptune and Acasti amended their formal complaint in the ITC proceedings. The amended complaint is approximately 35 pages in length, and its content will not be reproduced or described at length herein. For present purposes:
  • Neptune and Acasti accused the Applicants, (in the proceeding before me), of importing, selling for importation, and/or selling within the USA after importation, certain “omega-3 extracts from marine or aquatic biomass and products containing the same” that allegedly infringe patents asserted by Neptune and Acasti. Various specific products associated with the Applicants are identified by name.
  • In essence, Neptune and Acasti assert that, through years of research and development, they were able to develop, refine and patent a proprietary extraction process relating to krill oil; i.e., a processed oil extract with concentrated omega-3 harvested from Antarctic krill, (shrimp-like crustaceans that live deep in the ocean), which in turn is used in various phospholipid products that Neptune, Acasti and partner companies manufacture, package and sell for and in lucrative pharmaceutical and “nutraceutical” markets.
  • The patents primarily asserted and relied upon by Neptune and Acasti are United States Patent No. 8,278,351, (referred to as “the 351 Patent”), and United States Patent No. 8,383,675, (referred to as “the 675 Patent”, and identified as a continuation of the 351 Patent). These two patents were issued on October 2, 2012, and February 26, 2013, respectively. However, the amended complaint also makes reference to “related litigation” and what are described as additional foreign and domestic (from the American perspective) “counterparts” to the 351 Patent and the 675 Patent. These include a European patent, an Australian patent, a Canadian patent, and additional American patents, (noted as being “parent”, “grandparent” and “child” patents of the 351 Patent and the 675 Patent). All of these additional patents, obtained on various dates between July 27, 2001, and January 25, 2013, are identified by specific numbers rather than names.
  • In addition to asking the ITC to initiate an investigation, Neptune and Acasti are seeking relief from the ITC in the form of permanent exclusion and “cease and desist” orders.
• On April 23, 2013, the Administrative Law Judge in charge of the ITC proceeding made an order issuing “Ground Rules” for the conduct of the proceeding. On the same day, the same judge also made a “Protective Order” placing restrictions on the circulation and dissemination of “confidential business information”, (such as material relating to trade secrets or other confidential research, development or commercial information, as such terms are used in the rules of the ITC).
• On May 14, 2013, the Applicants herein responded at length to the ITC complaint initiated by Neptune and Acasti. Indeed, their “Response to Complaint” extends over the course of some 377 pages, and its content similarly will not be reproduced or described in great detail here. In essence, the Applicants, in addition to denying any patent infringement, assert various other affirmative defences that include the following:
  • Assertions that the asserted patents are invalid; e.g., because the underlying subject matter is unpatentable, (as it relates to compositions that exist in nature and/or because it overlaps different statutory classes of invention), and owing to other alleged failures in relation to description, “enablement” and “definiteness” requirements.
  • Allegations that the asserted patents are unenforceable due to inequitable conduct. These include very detailed, technical and complex allegations that, during prosecution of the 351 Patent, material misrepresentations were made regarding the krill oil extraction process attributed to inventor Adrien Beaudoin (disclosed in a “prior art reference”), alleged use of that process, and the analysis and attributes of the krill oil produced according to that process. There are also allegations of material non-disclosures and misrepresentations during the course of efforts made to prosecute the earlier European patent; e.g., of the alleged material facts that the phospholipid claimed in the parent patent for the 351 Patent was “known in the art” as of July 27, 2001, (if not before), and that a skilled person would have had no difficulties, as of that time, producing a krill extract containing the phospholipid claimed in the 351 Patent. Similar failures and improprieties are alleged in relation to re-examination leading to the 675 Patent. All of these various alleged material misrepresentations, omissions and non-disclosures are said to have led to findings of patentability that otherwise would or should not have been made.
• After tendering its formal response to the ITC complaint, (if not before), the Applicants embarked on what their American counsel describes as “extensive discovery relating to the invalidity, non-infringement, and unenforceability” of the asserted patents. To that end, the Applicants are “in the process of taking numerous depositions relating to these issues”. They also are said to have “produced and reviewed hundreds of thousands of pages of documents related to the issues in this case”. On or before July 9, 2013, the Applicants “became aware that KGK “performed testing and was involved in the development” related to the asserted patents. In that regard, the aforesaid KGK letter dated July 8, 2008, and its attachments, were included in the record before me “by way of example only”.
• On July 9, 2013, American counsel representing the Applicants spoke with KCK’s president and CEO Ms Guthrie, (author of the 2008 KGK cover letter described above), requesting KGK’s voluntary disclosure of documents and information relating to the testing done by KGK for Neptune. Ms Guthrie indicated that she could not discuss any testing done on Neptune’s behalf, or provide the requested information.
• On July 19, 2013, the Applicants asked the Administrative Law Judge charged with overseeing the ITC litigation, (Judge Shaw), to issue a recommendation to the United States District Court for the District of Columbia, for issuance of letters rogatory to allow the Applicants to obtain the requested disclosure from KGK in Canada. The attorney for the Office of Unfair Import Investigations did not oppose motion. Neptune and Acasti also filed a response indicating that they did not oppose the relief requested.
• On July 31, 2013, the ITC Administrative Law Judge granted the unopposed “Request for Recommendation for Issuance of Letters Rogatory”. The relevant order suggests no hearing, but simply grants the request after noting that a motion had been filed “to obtain documents and recorded testimony from the following third party”, [KGK], and that other parties to the ITC proceeding did not oppose the request.
• On August 5, 2013, the Applicants then embarked on the further steps required to relay the request from the Administrative Law Judge, and to ask the United States District Court for the District of Columbia to issue the desired letters rogatory. Neptune and Acasti filed no response or opposition to that request.
• On August 14, 2013, the Administrative Law Judge granted a motion to amend the procedural schedule imposed on the ITC proceeding. Notwithstanding the Applicants’ then ongoing efforts to process the desired letters rogatory and pursue additional discovery from KGK, the date set by the Administrative Law Judge for “fact discovery cut off and completion” was August 23, 2013. That particular deadline was supplemented by no less than 26 subsequent deadlines set forth in a detailed timetable leading to a hearing/trial set for December 10-13, 2013.
• On August 22, 2014, the letters rogatory desired by the Applicants, (and now the subject of the application before me), were issued by Judge Huvelle of the United States District Court for the District of Columbia. Consistent with the unopposed nature of the underlying request, the content of the letters strongly suggests the absence of any detailed hearing or pro-active findings by the court. Rather, although the document includes various conclusory statements, (e.g., that the desired evidence from KGK is relevant, necessary for trial, not otherwise available and specifically identified, and that its provision will not be unduly burdensome), other content makes it clear that the Court’s belief is “based on the representations made” by the Applicants, and their understanding and belief. Moreover, there are, to me, other important indications, (perhaps because of the unopposed nature of the request), that the United States District Court may have signed off on letters rogatory prepared by the Applicants without any detailed review of their content. In particular, there would seem to be no other explanation for the Court signing letters rogatory on August 22, 2014, ostensibly indicating an urgent need for the information and expressly requesting a response from the Ontario Superior Court of Justice by August 9, 2013; i.e., almost two weeks before the letters were even issued. Similarly, although the letters rogatory emphasize the pending discovery cut-off date as a reason why an urgent response is required, and specific reference is made in that regard to that date being August 23, 2013, the letters rogatory issued by the court apparently give no thought whatsoever to the practical impossibility of the Ontario court enforcing the letters rogatory and KGK making the desired documentary and oral disclosure all within a period of less than 24 hours.
• On August 23, 2013, (one day after the relevant letters rogatory were issued), the “cut off” deadline for fact discovery in the ITC proceeding expired. There was no evidence before me to suggest that the deadline has been extended or modified in any way.
• On August 29, 2013, through their Ontario counsel, the Applicants served their original application material herein on KGK, returnable September 10, 2013.
• On September 6, 2013, Ontario counsel representing KGK wrote Ontario counsel representing the Applicants to indicate their retention by KGK, and that it would be opposing the application. Litigation timetable discussions ensued, but led to no agreement.
• On September 10, 2013, counsel for the Applicants and counsel for KGK appeared before Justice Grace here in London to settle a litigation timetable, including adjournment of the application to a special appointment hearing on October 25, 2013. Justice Grace’s endorsement emphasized it was “very important argument occur that day in light of December 2013 trial date and paragraph 4 of letters rogatory emphasizing urgency”.
• On September 16, 2013, KGK formally served its notice of appearance herein.
• On September 19, 2013, the Applicants served a formal Request to Admit detailing approximately 30 requests for admissions from KGK.
• On September 23, 2013, the deadline for KGK’s filing of responding material, pursuant to the timetable set by Justice Grace, passed without KGK tendering any responding evidence.
• On October 4, 2013, the deadline for completion of cross-examinations, pursuant to the timetable set by Justice Grace, passed without any cross-examinations being requested or conducted.
• On October 8, 2013, KGK delivered a response to the Applicants’ Request to Admit, acknowledging, (as indicated above), that it has tested krill extract samples provided by Neptune, and that it conducting one or more analysis in 2001 and one or more analysis in 2002. Beyond that, KGK refused to admit the remaining facts contained in the request, based on its position that the Rules of Civil Procedure did not contemplate service of a Request to Admit in such circumstances, and that a response was not required unless and until issues concerning the letters rogatory were resolved.
• On October 11, 2013, Ontario counsel for the Applicants delivered their factum.
• On October 18, 2013, KGK delivered its factum.
• On October 22, 2013, Ontario counsel representing the Applicants submitted a “Confirmation of Application” form suggesting that there would be a contested adjournment request, on the basis that a 16 day shutdown of the United States government might affect the litigation schedule and trial date set for the ITC proceeding.
• On October 23, 2013, KGK tendered its own “Confirmation of Application” form indicating that it would be opposing the suggested adjournment, noting the Applicants’ earlier protestations, reflected in Justice Grace’s endorsement, that there was urgency to having the application heard and decided as soon as possible. Later that day, Ontario counsel representing the Applicants sent a letter advising the court that the Applicants no longer would be requesting adjournment of the hearing. However, the Applicants also served KGK, and provided the court, with a short supplementary affidavit from the Applicants’ American counsel, (and original affiant). The supplementary affidavit indicates that, if the request to enforce the letters rogatory is granted, the Applicants will “bring any motion that may be necessary before the ITC Administrative Law Judge in order to use the evidence received from KGK, both documentary and oral, in the ITC investigation”. (Although reference is made to “the ITC investigation”, I note that the same affiant defined that wording, in his earlier affidavit, as intended reference to the entire lawsuit for patent infringement brought before the ITC.)
• On October 25, 2013, the application was argued before me, without any further evidence being filed apart from the aforesaid supplementary affidavit of the Applicants. That evidence was served and tendered well past September 27, 2013; i.e., the deadline for reply evidence set by Justice Grace. It was, moreover, in my view, a belated attempt to address an alleged deficiency in evidence suggested by paragraph 13 of KGK’s factum, which noted that “The Applicants [had] filed no evidence demonstrating that they will seek the express authorization of Justice Shaw to extend the fact discovery cut off”. In the exercise of my discretion, I nevertheless permitted its filing, having regard to its brevity and the nature of its content, which effectively was limited to a statement of future intent rather than factual evidence. Moreover, reception of that limited evidence also seemed consistent with the generally flexible approach to consideration of letters rogatory underscored by the authorities, having regard to considerations of comity with the courts of other jurisdictions.

Evidentiary concerns

[7] Before more detailed consideration of the application and evidence offered in support thereof by the Applicants, I have regard to a preliminary evidentiary concern and objection advanced by KGK.

[8] In particular, KGK submits that significant portions of the affidavit evidence tendered by the Applicants are inadmissible, as violations of Rule 4.06(2) and/or Rule 39.01(5) of the Rules of Civil Procedure, such that they accordingly are not evidence at all and must be disregarded entirely for purposes of determining the application.

[9] The aforesaid rules, and the very similar Rule 39.01(4) applicable to affidavit evidence for use on motions, (the subject of many of the authorities relied upon by KGK), read as follows:

4.06 (2) An affidavit shall be confined to the statement of facts within the personal knowledge of the deponent or to other evidence that the deponent could give if testifying as a witness in court, except where these rules provide otherwise.

39.01 (4) An affidavit for use on a motion may contain statements of the deponent’s information and belief, if the source of the information and the fact of the belief are specified in the affidavit.

39.01 (5) An affidavit for use on an application may contain statements of the deponent’s information and belief with respect to facts that are not contentious, if the source of the information and the fact of the belief are specified in the affidavit.

[10] These rules repeatedly have been the subject of judicial comment, emphasizing their importance and outlining a number of general principles and considerations to be borne in mind in their application. These include the following:

• An affidavit should generally conform to the requirements for affidavits as set out in Rule 4.02 of the Rules of Civil Procedure, and therefore be confined to statements of fact within the personal knowledge of the deponent. An affidavit should not contain improper hearsay. See, for example: Chopik v. Mitsubishi Paper Mills Ltd., [2002] O.J. No. 2780 (S.C.J.); White v. Merk First Canada, [2004] O.J. No. 623 (S.C.J.); Punit v. Wawanesa Mutual Insurance Co., [2006] O.J. No. 3685 (S.C.J.); Metzler Investment Gmbh v. Gildan Activewear Inc., [2009] O.J. No. 3394 (S.C.J.).
• Exceptions to the requirement of personal knowledge rule may be permitted where the facts attested are not contentious, clearly relevant, and not purposely put forward to avoid cross-examination. See, for example: Chopik v. Mitsubishi Paper Mills Ltd., supra; Punit v. Wawanesa Mutual Insurance Co., supra; Metzler Investment Gmbh v. Gildan Activewear Inc., supra.
• In this context, “contentious” refers to something that is in dispute or in respect of which there are differences between the contending parties. See, for example: Ontario (Attorney General) v. Paul Magder Furs Ltd. (1989), 71 O.R. (2d) 513 (H.C.J.); and Cameron v. Taylor (1992), 10 O.R. (3d) 277 (Gen.Div.)
• Violations of Rules 4.06(2), 39.01(4) and 39.01(5) are not mere technicalities or irregularities that may be cured or waived. To the contrary, where it is clear in law that evidence is inadmissible, leaving it on the record is embarrassing and prejudicial to the fair hearing of the motion or application. Evidence tendered in violation of the rules of evidence and Rules of Civil Procedure therefore must be regarded as worthless, and should not be considered; e.g., by the court refusing to receive the affidavit, striking the relevant paragraphs from the offending affidavit, and/or by the court otherwise paying no regard to the evidence. See, for example: Scarr v. Gower (1956), 2 D.L.R. (2d) 402 (B.C.C.A.); Merker v. Leader Terrazzo Tile Mosaic Ltd. (1983), 43 O.R. (2d) 632 (H.C.J.); Bank of Montreal v. Anco Investments Ltd. (1986), 9 C.P.C. (2d) 97 (Ont.Dist.Ct.); Standelmier v. Hoffman (1986), 57 O.R. (2d) 495 (Surr.Ct.); Ontario (Attorney General) v. Paul Magder Furs Ltd., supra; Cameron v. Taylor, supra; Noble China Inc. v. Lei (1998), 42 O.R. (3d) 316 (Gen.Div.); Chopik v. Mitsubishi Paper Mills Ltd., supra; and Toronto Standard Condominium Corp. No. 1510 v. McCauley, [2008] O.J. No. 2291 (S.C.J.).

[11] However, it must be remembered that the concern underlying these particular rules is and at all times remains the prevention of inadmissible hearsay; a necessary context for the application of Rules 39.01(4) and (5) made clear by many of the authorities relied upon by KGK. See, for example: Evans v. Holroyd, [1988] O.J. No. 1705 (H.C.J.), at paragraphs 12, 17 and 18; Metzler Investment GmbH v. Gildan Activewear Inc., supra, at paragraphs 11, 15, 48-51, and 54-55; and Lockridge v. Ontario (Director, Ministry of the Environment), 2012 ONSC 2316, [2012] O.J. No. 3016 (S.C.J.), at paragraphs 109 to 116.

[12] What these and other authorities in this area make clear is that Rules 39.01(4) and 39.01(5) operate as controlled exceptions to the hearsay rule, and that challenges to admissibility based on alleged failure to satisfy the demands of those exceptions are predicated on an express or implicit finding that the impugned affidavit evidence should indeed be characterized as hearsay.

[13] Put another way, the literal wording of Rule 39.01(5) should not be interpreted or applied so as to create some form of “stand alone” method of challenging and excluding evidence that is not clearly hearsay; i.e., on the alleged basis that the affiant has not detailed the basis of his or her evidence to an opponent’s satisfaction and/or in a manner to satisfy the demands of the applicable test or burden under consideration.

[14] In my view, that is the real basis of KGK’s objection; an underlying concern which may have merit, for the reasons outlined below, but which does not render the Applicants’ affidavit evidence inadmissible.

[15] In particular, I do not regard either affidavit relied upon by the Applicants as hearsay for the reasons that include the following:

• The affiant Mr Hertko identifies himself as an American attorney and counsel representing the Applicants in the ITC litigation, and repeatedly indicates that his sworn evidence is based on his personal knowledge and review of the relevant files, “except where he relies on information obtained from others”, in which instances he has identified the source of the information and believes it to be true.
• The evidence of Mr Hertko is directed primarily to the nature and conduct of the ITC litigation, the reasons why the Applicants seek disclosure from KGK for use in that litigation, the manner in which the Applicants and their counsel contemplate eliciting that desired disclosure, and the intended use and treatment of such disclosure. In my view, these are matters in respect of which counsel in Mr Hertko’s position is likely to have personal knowledge.
• Except in relation to matters of Ontario law relating to concerns often raised by Ontario courts in relation to our enforcement of letters rogatory, (e.g., safeguarding the policy underlying our implied and deemed undertaking rules, consideration of Canadian public policy, and comparisons to the disclosure burdens imposed on non-parties in domestic Ontario litigation), in respect of which Mr Hertko expressly indicates his reliance on and belief in information provided by the Applicants’ named Ontario counsel, this is not a case where the affiant indicates that he or she is relying on information provided by others.
• At one point in his affidavit, Mr Hertko does use the words “I believe, on information and belief”, when referring to his belief that KGK has unique information that cannot be obtained from any other source. However, I think one must be careful to avoid readily and necessarily equating this to the wording often used in our jurisdiction to introduce hearsay evidence; i.e., “I am informed by X and do verily believe”. In particular, a review of the pleadings in the ITC litigation suggests the particular phrase used by Mr Hertko is an American legal term of art, (employed frequently in both the Amended Complaint and Response to Complaint), and apparently used to qualify an allegation which may entail a degree of supposition based on known information; for example, where full particulars of an allegation inherently lie within the knowledge of another party. In this case, Mr Hertko’s assertion of belief that KGK has unique and otherwise unavailable information may entail supposition, and border on opinion or argument. But in my view it is not hearsay, in the sense required to trigger application of Rule 39.01(4).

[16] Rather, as noted above, I think KGK’s objection really relates to another concern; i.e., that a simple affidavit recitation of the factors usually considered by Ontario courts when determining whether or not to enforce letters rogatory, coupled with bald assertions or conclusions unsupported by detailed reasons or evidence, should not be enough to satisfy the burdens placed on a party seeking such relief.

[17] Our courts have recognized this as a valid concern. Before imposing on Ontario residents a requirement to search for and produce documents relevant to issues in a foreign proceeding, an applicant seeking to enforce letters rogatory must adduce evidence, not merely unhelpful assertions, demonstrating that the necessary preconditions have been established. See, for example: Presbyterian Church of Sudan v. Taylor (2006), 275 D.L.R. (4th) 512 (Ont.C.A.), at paragraphs 13, 32-33 and 41-42; and Oticon Inc. v. Gennum Corp., [2009] O.J. No. 5478 (S.C.J.), at paragraphs 31 and 36.

[18] For the reasons noted below, I think such concerns are indeed present in this particular case, and that the evidence tendered by the Applicants is insufficient to justify granting of the relief requested.

[19] However, concerns about sufficiency of evidence should not be confused with admissibility of evidence.

[20] In ruling on the application, I therefore have regard to all the evidence tendered by the Applicants.

Jurisdiction

[21] The Applicants rely on Rule 14.05(2) of the Rules of Civil Procedure, (which authorizes commencement of a proceeding by way of an application to this court if a statute so authorizes), as well as the provisions of s.46 of the Canada Evidence Act, R.S.C. 1985, c. C-5, and s.60 of the Evidence Act, R.S.O. 1990, c.E.23.

[22] Those legislative provisions read in part as follows:

Canada Evidence Act …

Order for examination of witness in Canada

46. (1) If, on an application for that purpose, it is made to appear to any court or judge that any court or tribunal outside Canada, before which any civil [or] commercial … matter is pending, is desirous of obtaining the testimony in relation to that matter of … witness within the jurisdiction of the first mentioned court, … the court or judge may, in its or their discretion, order the examination on oath on interrogatories or otherwise, before any person or persons named in the order, of that … witness accordingly, and by the same or any subsequent order may command the attendance of that … witness for the purpose of being examined, and for the production of any writings or documents relating to the matter in question that are in the possession or power of that … witness.

Video links, etc.

(2) For greater certainty, testimony for the purposes of subsection (1) may be given by means of technology that permits the virtual presence of the … witness before the court or tribunal outside Canada or that permits that court or tribunal, and the parties, to hear and examine the … witness.

Evidence Act …

Evidence for foreign tribunals

s.60 (1) Where it is made to appear to the Superior Court of Justice or a judge thereof, that a court or tribunal of competent jurisdiction in a foreign country has duly authorized, by commission, order or other process, for a purpose for which a latter of request could be issued under the rules of court, the obtaining of the testimony in or in relation to an action, suit or proceeding pending in or before such foreign tribunal, of a witness out of the jurisdiction thereof and within the jurisdiction of the court or judge so applied to, such court or judge may order the examination of such witness before the person appointed, and in the manner and form directed by the commission, order or other process, and may, by the same or a subsequent order, command the attendance of a person named therein for the purpose of being examined, or the production of a writing or other document or thing mentioned in the order, and may give all such directions as to the time and place of the examination, and all other matters connected therewith as seem proper, and the order may be enforced, and any disobedience thereto punished, in like manner as in the case of an order made by the court or judge in an action pending in the court or before a judge of the court. …

Right of refusal to answer questions and to produce documents

(3) A person examined under such commission, order or process has the like right to object to answer questions tending to criminate himself or herself, and to refuse to answer any questions that, in an action pending in the court by which or by a judge whereof or before the judge by whom the order for examination was made, the witness would be entitled to object or to refuse to answer, and no person shall be compelled to produce at the examination any writing, document or thing that the person could not be compelled to produce at the trial of such an action. …

[Emphasis added.]

[23] It was not seriously disputed, and I find, that these provisions confer sufficient jurisdiction to grant the various forms of relief requested by the Applicants – if the circumstances and evidence are otherwise sufficient to make the exercise of that conferred discretion appropriate.

[24] In particular, without limiting the generality of the foregoing:

• the ITC litigation clearly is a pending civil or commercial matter in a tribunal outside of Canada, in respect of which evidence from KGK is desired by the foreign tribunal (the ITC) and the foreign court (the United States District Court for the District of Columbia) apparently charged with assisting the tribunal in relation to obtaining evidence from witnesses located in other jurisdictions;
• KGK, based here in London, Ontario, is a witness within the jurisdiction of this court;
• subject to the provision of satisfactory evidence providing an adequate justification, the relief requested is for a purpose for which a letter of request could (not necessarily would) be issued under our rules of court, and Rule 34.07 in particular, if the matter concerned commercial litigation here in Ontario and evidence was being sought from a contemplated non-party witness located in the United States; and
• the particular documentary and oral discovery procedures contemplated by the requested relief fall within the broad parameters of what the court may order pursuant to the legislative provisions.

[25] Again, however, it remains to be seen whether the circumstances and evidence are sufficient to warrant the granting of such discretionary relief in this particular case.

General Principles

[26] Relevant general principles and considerations relating to recognition and enforcement of letters rogatory include the following:

• Enforcement of letters rogatory rests upon the comity of nations. Courts of one jurisdiction give effect to the laws and judicial decisions of another jurisdiction, not as a matter of obligation, but out of mutual deference and respect. A foreign request generally is given full force and effect unless doing so would be contrary to the public policy of the jurisdiction to which the request is directed. However, such relief is discretionary, and will depend on the facts and circumstances of each case. Comity and the natural desire to assist foreign courts in the pursuit of justice must be balanced against the possible infringement of Canadian sovereignty. This requires consideration of other more specific factors, (e.g., relating to the nature and basis of the request and possible impacts of its enforcement), that may impact on the assessment. See R. v. Zingre, [1981] 2 S.C.R. 392, at paragraphs 17-19, 22 and 30; Fecht v. Deloitte & Touche (1997), 32 O.R. (3d) 417 (C.A.), at paragraph 5; and Optimight Communications Inc. v. Innovance Inc., [2002] O.J. No. 577 (C.A.), at paragraph 22.
• Requests by foreign courts for assistance should be looked at without rigidity, and enumerations of factors to be considered therefore are non-exhaustive. However, before an Ontario court will grant an order giving effect to letters rogatory, the applicant for such relief has the burden of demonstrating, at a minimum, the satisfaction of certain criteria which to some extent are inter-related. In particular, the evidence on the application must establish that: i. the evidence sought is relevant; ii. the evidence sought is necessary for trial and will be adduced at trial, if admissible; iii. the evidence sought is not otherwise obtainable; iv. the order sought is not contrary to public policy; v. the documents sought are identified with reasonable specificity; and vi. the order sought will not be unduly burdensome on the targeted witness, having in mind what the relevant witness would be required to do and produce, were the action to be tried here. See, for example: Friction Division Products Inc. v. E.I. du Pont de Nemours & Co. (1986), 56 O.R. (2d) 722 (H.C.J.), at paragraphs 25 and 30; Optimight Communications Inc. v. Innovance Inc., supra, at paragraph 22; Presbyterian Church of Sudan v. Rybiak, [2006] O.J. No. 3822 (C.A.); Connecticut Retirement Plans and Trust Funds v. Buchan, 2007 ONCA 462, [2007] O.J. No. 2492 (C.A.), at paragraph 7; AstraZeneca LP v. Wolman, [2009] O.J. No. 5344 (S.C.J.), at paragraph 22; and Oticon Inc. v. Gennum Corp., supra, at paragraph 19.
• If the record cannot sustain a finding that each of the criteria for enforcement of letters rogatory has been met, the application for enforcement should be dismissed. See Presbyterian Church of Sudan v. Rybiak, supra, at paragraphs 3, 20, 44 and 46.
• Although the Ontario court considering enforcement of the letters rogatory does not function as an appellate court in respect of the foreign “requesting court”, it is not bound to accept the language or stated conclusions of the letters rogatory as the “final say” on matters relating to their enforcement. To the contrary, the Ontario court must reach its own findings and conclusions based on the evidence filed. Observations and conclusions of the foreign court generally are entitled to deference and respect, especially if they are reached after a thorough review of the matter and full and contested argument. However, it is also possible that the court issuing the letters rogatory may have done so in a perfunctory manner, without consideration of the matters at issue and without testing the evidence relied on in support of the request. The Ontario court therefore is entitled and obliged to go behind the text and terms of the request to examine precisely what it is the foreign court is seeking to do, and give effect to the request only if the Ontario court is independently satisfied that the requirements of the law in this jurisdiction have been met. See: Westinghouse Electric Corp. v. Duquesne Light Co. (1977), 16 O.R. (2d) 273 (H.C.J.), at paragraph 26; Fecht v. Deloitte & Touche (1996), 28 O.R. (3d) 188 (Gen.Div.), at paragraph 18, aff’d supra; Connecticut Retirement Plans & Trust Funds v. Buchan, supra, at paragraph 13; Presbyterian Church of Sudan v. Rybiak, supra, at paragraph 32; O.P.S.E.U. Pension Trust Fund v. Clark (2006), 270 D.L.R. (4th) 429 (C.A.); AstraZeneca LP v. Wolman, supra, at paragraphs 18-19; Oticon Inc. v. Gennum Corp., supra, at paragraphs 31-32 and 33; and Treat America Ltd. v. Nestlé Canada Inc., 2011 ONCA 560, [2011] O.J. No. 3802 (C.A.), at paragraphs 13-16 and 19-20. See also The Sedona Conference, “Sedona Canada Commentary on Enforcing Letters Rogatory Issued by an American Court in Canada”, June 2011, at p.3.

[27] In relation to demonstration of “relevance”:

• Relevance generally is determined having regard to the issues in the underlying litigation, and whether it would be unfair to require the applicant to proceed to trial without the desired and requested evidence. See Friction Division Products Inc. v. E.I. du Pont de Nemours & Co., supra, at paragraph 29.
• In considering letters rogatory issued by American courts and their indications of relevance, it is important to remember that the scope of what is discoverable in the United States generally is much broader than in Canada. In the United States, if there is “any possibility the information sought may be relevant to the case, it is discoverable; information is not discoverable only if it is clear that “the information sought can have no possible bearing on the claims or defence of a party”. In Canada, the scope of discovery is much narrower, due to our interpretation of what is “relevant”. In Ontario, evidence must be relevant to matters actually in issue, and this does not include evidence sought only because it “may” be relevant, or relate to matters that “could” be in issue. See The Sedona Conference, “Sedona Canada Commentary on Enforcing Letters Rogatory Issued by an American Court in Canada”, June 2011, at pp. 5-6.
• Without an adequate showing of relevance according to our domestic interpretation of that term, the Ontario court may be sanctioning a “fishing expedition” and requiring one of its citizens to participate in a process that may be of no assistance to the foreign litigation. See Presbyterian Church of Sudan v. Rybiak, supra, at paragraph 31.
• Courts generally should be loathe to enforce a letter of request requiring an Ontario citizen who is not a party to a foreign proceeding to produce large numbers of documents, and to be examined under oath, with respect to issues over which there is considerable uncertainty as to whether they properly form part of the issues in the foreign proceeding. See Pecarsky v. Lipton Wiseman Altbaum & Partners, [1999] O.J. No. 2004 (S.C.J.), at paragraph 10.
• Numerous courts in Ontario have held that they have no power to narrow the request contained in letters rogatory to relevant information, and that if the requested documentation or any part of it is not relevant, the letters rogatory should be denied in their entirety. In other words, if the request for documentary production is of such a sweeping nature that significant portions of it are irrelevant or at best of marginal relevance, the letters rogatory should not be enforced. See Scholnik v. Bank of Nova Scotia (1987), 59 O.R. (2d) 538 (H.C.J.), at p.543; Coats Co. V. Bruno Wessel Ltd. (1990), 46 C.P.C. (2d) 316 (Ont.Gen.Div.), at p.320; and Fecht v. Deloitte & Touche, at first instance, supra, at paragraph 44, aff’d, supra. However, there is some authority indicating that a court’s discretion may be exercised to narrow the overbroad scope and language of letters rogatory, consistent with considerations of mutual deference and respect between courts; see Pecarsky v. Lipton Wiseman Altbaum & Partners, supra, at paragraph 39.

[28] In relation to demonstration of the evidence being “necessary for trial”:

• Despite earlier authority suggesting the contrary, it is now clear that enforcement of letters rogatory is not necessarily limited to the gathering of evidence to be used at trial. The underlying legislation makes no distinction between pre-trial and trial proceedings. Depending on the circumstances, the Ontario court therefore may be prepared to order productions and examination even if the evidence is to be used in pre-trial proceedings, including pre-trial discovery. However, the standard to be met by an applicant in enforcing a request for pre-trial discovery generally will be more onerous than a request for commission evidence that will be adduced at trial in the foreign jurisdiction. Moreover, the Ontario court may have regard to the fact that the foreign discovery process in the United States is much broader than in Canada. See R. v. Zingre, supra, at paragraph 22; France (Republic) v. De Havilland Aircraft of Canada Ltd. (1991), 3 O.R. (3d) 705 (C.A.), at paragraph 30; Fecht v. Deloitte & Touche (1996), 28 O.R. (3d) 188 (S.C.J.), aff’d supra, at paragraph 23; Pecarsky v. Lipton Wiseman Altbaum & Partners, supra, at paragraph 13; D.G. Jewellery of Canada Ltd. v. Valentine, [2000] O.J. No. 4177 (S.C.J.), at paragraph 2; Presbyterian Church of Sudan v. Rybiak, supra, at paragraph 18; and AstraZeneca LP v. Wolman, supra, at paragraph 20.
• Like the required showing of relevance, the need to establish necessity acts as a safeguard to ensure that the Ontario court is not requiring one of its citizens to participate in a process that may be of no assistance to the foreign litigation. See Presbyterian Church of Sudan v. Rybiak, supra, at paragraph 31.
• The Ontario court should take into account any scheduling orders in place in the foreign litigation, (including reasonable possibilities of those orders being amended), to ensure that non-party witnesses resident in Ontario are not placed under unnecessary or undue burdens, having regard to deadlines and time constraints in the foreign litigation. In that regard, however, the court also may have regard to conduct which may have fostered such concerns. See The Sedona Conference, “Sedona Canada Commentary on Enforcing Letters Rogatory Issued by an American Court in Canada”, June 2011, at p.3; Oticon Inc. v. Gennum Corp., supra, at paragraphs 21-22.

[29] In relation to demonstration of the evidence being “not otherwise obtainable”:

• This factor considers whether evidence of the same value as that sought from the witness to be examined can be obtained by other means. The requirement may be demonstrated even where some evidence on the subject is otherwise available. See AstraZeneca LP v. Wolman, supra, at paragraph 27, and Treat America Ltd. v. Nestlé Canada Inc., supra, at paragraph 24.
• As with the first two criteria of relevance and necessity, the need to establish that the desired information is “not otherwise obtainable” also acts as a safeguard to ensure that the Ontario court is not requiring one of its citizens to participate unnecessarily in in the foreign litigation, and thereby assume an unfair burden in the process. See Fecht v. Deloitte & Touche, supra, at first instance, at pp. 204-205, aff’d supra; and Presbyterian Church of Sudan v. Rybiak, supra, at paragraph 31.
• A successful application will put forward evidence indicating the ways in which the applicant has sought to obtain the information, without success. See Treat America Ltd. v. Nestlé Canada Inc., supra, at paragraph 24.
• In considering letters rogatory from American courts requesting disclosure from non-parties, it also is important to remember that the American approach to such matters is fundamentally different from that which prevails in Ontario and elsewhere in Canada. Here, production of documents and information from non-parties generally can be obtained only in limited circumstances, and typically only with leave of the court obtained after a motion brought on notice – with the such leave normally being granted only where the moving party demonstrates, inter alia, that the party is otherwise unable to obtain the desired information. In contrast, litigants in the United States generally have expansive powers to compel non-parties to produce a wide range of documents and testimony without leave of the court, even if it is only marginally or possibly relevant. Because of these broad rights to obtain evidence from non-parties, letters rogatory are often issued by American courts “on consent, in a relatively perfunctory fashion without any meaningful consideration of the issues and without notice to the non-party”. See The Sedona Conference, “Sedona Canada Commentary on Enforcing Letters Rogatory Issued by an American Court in Canada”, June 2011, at p 6.

[30] In determining whether the order sought is “contrary to public policy”:

• Such concerns generally do not rise unless the resisting party raises such arguments, and identifies the domestic public policy said to be threatened by enforcement of the letters rogatory. See Treat America Ltd. v. Nestlé Canada Inc., supra, at paragraph 26.
• However, consideration should be given to the existence of any “blocking statutes” and any similar indications of domestic public policy that would prevent the Ontario court from enforcing letters rogatory. See The Sedona Conference, “Sedona Canada Commentary on Enforcing Letters Rogatory Issued by an American Court in Canada”, June 2011, at p.3; Westinghouse Electric Corp. v. Duquesne Light Co., supra, at paragraphs 17 and 35; and Aker Biomarine et al. v. Neptune Technologies & Bioresources Inc., et al, 2013 QCCS 4841, at paragraphs 35-37.
• Moreover, it must be remembered that various protections and statutory immunities extended to litigants and witnesses by our domestic law are not enjoyed by those in other jurisdictions such as the United States. For example, Ontario courts recognize that a non-party witness in Ontario may not be protected elsewhere by the implied or deemed undertaking applicable in our jurisdiction, (ensuring that documents and information provided under compulsion will be used only in connection with the litigation in respect of which disclosure was required). Applicants for enforcement of letters rogatory from a foreign jurisdiction which does not recognize any such undertaking or limitation, and allows parties to use documents for any purpose including commencement of fresh litigation, (such as the United States), therefore should be obliged to provide a written undertaking similar to the obligations contemplated by Rule 30.1 of our Rules of Civil Procedure. Such an undertaking may generally be regarded as a pre-condition to any order for the enforcement of letters rogatory. In the absence of such an undertaking, or a protective order providing a similar protection to the non-party witness, enforcement of letters rogatory should be regarded as contrary to the public policy of Ontario. See Pecarsky v. Lipton Wiseman Altbaum & Partners, supra, at paragraphs 28-31 and 34; D.G. Jewellery of Canada Ltd. v. Valentine, supra, at paragraph 7; AstaZeneka LP v. Wolman, supra, at paragraph 39; and Oticon Inc. v. Gennum Corp., supra, at paragraph 39.

[31] In relation to demonstrating that requested documents are identified with “reasonable specificity”:

• Requests for documentary production must not be vague or too wide-ranging, and documents sought must be set out with as much specificity as possible. However, Ontario courts also recognize that, in many instances, it will be impossible for a party “on the outside, denied a look inside”, to determine what documents are relevant to the issues and would documents may reasonably be ancillary to the evidence of a witness sought to be examined. Requiring a witness to search a number of files in one case may be burdensome, and another quite reasonable. See Friction Division Products Inc. v. E.I. du Pont de Nemours & Co., supra, at paragraph 38, and AstraZeneca LP v. Wolman, supra, at paragraph 28.
• Documents may be specifically identified, or identified by class, to pass the threshold test for production. Depending on the circumstances, production requests may be wide yet not unreasonable or unduly onerous. See Friction Division Products Inc. v. E.I. du Pont de Nemours & Co., supra, at paragraph 43.
• Generally speaking, however, a wide-ranging “fishing trip” type of discovery pursuant to letters rogatory inherently imposes a greater burden on non-party witnesses in Canada than does simply providing known evidence for trial. See Henry Bacon Buildings Materials Inc. v. Royal Canadian Mounted Police (1994), 98 B.C.L.R. (2d) 59 (B.C.S.C.), at paragraphs 32-34.

[32] In relation to demonstrating that the order sought is “not unduly burdensome”:

• As noted above, this requirement is framed in terms of focusing on whether the order sought will be unduly burdensome on the targeted witness, having in mind what the relevant witness would be required to do and produce, were the action to be tried here in Ontario. This underscores the inter-related nature of other criteria canvassed above; e.g., insofar as a non-party witness in Ontario generally should not be subjected to the burden of having to produce evidence that would not be considered relevant by Ontario standards, or involvement that might not be considered necessary or appropriate according to our rules.
• While enforcement of letters rogatory by an Ontario court against a non-party will not necessarily be limited to situations in which an Ontario court would make an order for discovery of non-parties under Rule 30.10 of our Rules of Civil Procedure, the requirements for such orders may still serve as “useful guideposts” in this area to determine what would be reasonable, as they contain within them elements acknowledged to be important criteria for determining whether an order should be granted giving effect to letters rogatory. In commenting on the application of Rule 30.10 to secure disclosure from non-parties, our Court of Appeal has noted that, “save in the circumstances specifically addressed by the rules, non-parties are immune from the potentially intrusive, costly and time-consuming process of discovery and production”. See Ontario (Attorney General) v. Ballard Estate (1995), 26 O.R. (3d) 39, at pp. 47-48; Fecht v. Deloitte & Touche, supra, at first instance, at paragraphs 27-29; Pecarsky v. Lipton Wiseman Altbaum & Partners, supra, at paragraphs 21-22; Four Seasons Hotels Ltd. v. Legacy HotelsReal Estate Investment Trust, [2003] O.J. No. 1341 (S.C.J.), at paragraph 20; AstraZeneca LP v. Wolman, supra, at paragraph 20.
• Ontario courts also are sensitive to the fact that such orders create burdens for non-party witnesses that extend beyond the effort and expense associated with making required disclosure. As noted above, (in connection with considerations of public policy), the evidence should address and demonstrate that satisfactory measures that will be taken to address and safeguard the non-party’s interest in such matters as preservation of confidentiality and preventing collateral use of information provided in further litigation. Nor should a Canadian court turn a blind eye to other possible consequences of compelled testimony outside this country, such as exposure to possible criminal or quasi-criminal proceedings; a consideration which may warrant further deeming orders. See, for example : Friction Division Products Inc. v. E.I. du Pont de Nemours & Co., supra, at paragraph 47; Pecarsky v. Lipton Wiseman Altbaum & Partners, supra, at paragraphs 28-31; D.G. Jewellery of Canada Ltd. v. Valentine, supra, at paragraph 7; and EchoStar Satellite Corp. v. Quinn (2006), 2007 BCSC 1225, 71 B.C.L.R. (4th) 172 (S.C.), at paragraphs 62 and 90.

Application

[33] With the above in mind, I return to the particular application before me, and consideration of whether the criteria for enforcement of the letters rogatory have been satisfied.

[34] As for relevance:

• I agree with the submission of KGK that neither the rulings by Judges Shaw and Huvelle, nor the repeated assertions of relevance contained within the letters rogatory document itself, are decisive or persuasive in terms of establishing that the documents and testimony sought from KGK are relevant to the ITC litigation. As noted above, the relevant proceedings before Judges Shaw and Huvelle were unopposed, and there is nothing in the evidence before me to suggest any detailed or considered review of relevance. To the contrary, as noted above, there are indications that the letters rogatory, at least, were not the subject of any careful review by the United States District Court. In any event, for the reasons outlined above, conclusions of relevance based on application of American law may very well from the result dictated by the law of Ontario.
• Nor do I find the repeated assertions of relevance in the Applicants’ affidavit material to be of much assistance. They are largely bald and conclusory statements.
• I nevertheless do not agree with KGK’s submission that there is no evidence before the court on which to base findings of relevance, in the sense required, or with KGK’s suggestion that anything not strictly related to the 351 Patent or 675 Patent should be considered relevant. Certainly, if the parameters of relevance in the ITC litigation are defined primarily by the pleadings therein, (which are before me in evidence), in a manner similar to what would be done here in Ontario, I think the constraints on relevance suggested by KGK are far too narrow. Those pleadings make it clear that Neptune and Acasti are asserting rights of intellectual property in an allegedly unique underlying process and associated results; a process and results they have attempted to protect through numerous patents that are indeed related, despite their necessarily being asserted in various disparate locations around the world. It seems to me that testing and analysis formally used and relied upon by Neptune and/or Acasti to support the patentability of that particular process and those results, (such as that apparently done by KGK, at least to some extent), would be relevant by Ontario standards, regardless of the particular geographic location or patent office and number that provided a particular context or opportunity for its filing. (Such a conclusion is supported not only by the pleadings in evidence, but also, to some extent at least, by the affidavit of Mr Hertko indicating that known and identified KGK test results relate to patentability of the underlying subject matter, even if the particular context was a European “foreign relative of the Patents-in-Suit”.) For similar reasons, I think that, having regard to the nature of the central defences being asserted by the Applicants, (insofar as they concern patentability and misrepresentations allegedly made about the underlying process and its results), fairness arguably militates in favour of the Applicants having such information as the matter proceeds to trial, barring other overriding considerations.
• However, despite my finding that some of the evidence being sought by the Applicants from KGK may be relevant, by Ontario standards, I agree with KGK that, in their current form, the stated particulars of documentation and examination topics included within attachments A and B to the letters rogatory are unacceptably vague, general and potentially overly broad. More fulsome evidence and clarification should have been offered, in my opinion, to make it abundantly clear which particular patents are said to be “related” patents, and why that is so. Similarly, in my view the literal wording of the requests for sweeping disclosure of “all” and “any” documents within the various categorized descriptions has the potential to encompass matters and activities in respect of which KGK may have had involvement at the request of Neptune and/or Acasti, but which also may in fact have had nothing whatsoever to do with the particular process and/or results in respect of which the relevant underlying patents have been obtained and asserted. As I think the application fails in any event for other reasons, (noted below), I will not spend further time addressing the precise manner in which these deficiencies may have been addressed and corrected. For present purposes, further particulars and limitations were required, in my opinion, so that both the Ontario court and KGK would have no doubt as to the scope of the disclosure being sought and/or directed.
• While elements of the relief requested target evidence that is “relevant”, in the sense required, I find for the above reasons that the request as a whole fails to satisfy this component of the test for enforcement of the letters rogatory.

[35] As for demonstration of “necessity”, the evidence is also problematic and unsatisfactory. In particular:

• Repeated assertions of necessity in the letters rogatory are not binding or persuasive, for reasons similar to those set out above in relation to relevance. Again, the requesting court apparently has simply relied on the unopposed and untested assertions of the Applicants.
• The very similar statements of necessity in the letters rogatory and affidavit of the Applicants’ American counsel are problematic on their face, insofar as they both assert that the evidence desired from KGK would allow the Applicants “to further establish” alleged conduct of KGK, and the Applicants’ defences. Such wording does not suggest necessity, but a desire for reinforcement of other persuasive evidence already in the Applicants’ possession, which may be sufficient to make out its arguments without imposing additional burdens on KGK. My concerns in that regard are compounded by the Applicants’ apparent reticence to provide further details regarding the full extent of other information in their possession relating to KGK’s involvement or work. (Again, in their affidavit material, the Applicants assert that the KGK report and attachments from July of 2008 are produced “by way of example only”.) Nor do they provide any indication or description of the other evidence already in their possession, (of the “hundreds of thousands of pages of documents” produced and reviewed), that might be available to substantiate the Applicants’ assertions without the need for the additional information desired from KGK. There is, in short, no evidence to provide any context for examining what is really a bald and unsupported assertion that it is necessary for the Applicants to have such additional information from KGK in order for justice to be done.
• In my view, suggestions of necessity also are significantly undermined and perhaps negated completely by the undisputed evidence concerning the schedule imposed on the ITC proceedings by the Administrative Law Judge. In particular:
  • As noted above, our Court of Appeal has emphasized that demonstration of necessity is required for enforcement of letters rogatory, as a safeguard to ensure that the Ontario court is not requiring one of its citizens to participate in a process that may be of no assistance to the foreign litigation. In this case, however, the evidence before me suggests a very real prospect that compelling KGK to produce further documents and submit to a formal examination would be a moot exercise, as the “fact discovery cut off and completion” date now has passed. In the circumstances, any further evidence obtained from KGK at this point apparently has no prospect of being used in the ITC proceedings unless and until the Applicants request and obtain a further order revising the existing timetable.
  • To counter the suggestion that subjecting KGK to such procedures would be a moot exercise, the Applicants rely upon the comments of Justice Brown in Oticon Inc. v. Gennum Corp, supra, at paragraphs 21 and 22, wherein he rejected a preliminary submission that a letters rogatory enforcement request was moot owing to prior passage of a deadline for the completion of all discoveries. However, Justice Brown rejected the submission in that particular case largely because the party seeking disclosure had brought its application for enforcement of the letters rogatory many months before expiry of the deadline, only to have the party resisting the application then “run out the clock” by its vigorous and sustained opposition to the application. There are no such overriding equities in the case before me, where the relevant “cut off” deadline passed just one day after the letters rogatory were issued, and approximately one week before KGK was even served with the application for enforcement in Ontario of the letters rogatory. Moreover, although Justice Brown also relied on experience showing that “extensions to discovery timetables are often granted”, it seems to me that the granting of such extensions cannot easily be assumed in the particular case before me, where trial of the ITC proceeding is now imminent, and the existing timetable was considered, revised and finalized by the Administrative Law Judge just 10 weeks ago notwithstanding awareness of that judge and all parties to the ITC proceeding that the Applicants were in the process of seeking further disclosure from KGK. Indeed, in my opinion, the apparent failure of the Applicants to seek any modification of the timetable and discovery cut-off date to allow for its pursuit of further disclosure from KGK, when the revised timetable was set on August 14, 2013, provides another indirect indication of the relatively modest importance the Applicants actually attach to having KGK’s potential additional evidence for use in the ITC proceedings.
• I therefore find that the Applicants also have failed to demonstrate “necessity”, in the sense required.

[36] Evidence that the information sought from KGK is “not otherwise obtainable” is even less satisfactory. In that regard:

• The letters rogatory simply say that the evidence “is not otherwise available because KGK Synergize performed relevant development, testing and analysis, and thus would be the only entity which could provide those documents”. However, this assertion by the requesting court suffers from the same frailties as other assertions in the letters rogatory; i.e., in terms of the indications, noted above, that the court simply relied on the assertions of counsel without any meaningful review or testing of such representations.
• Although the affidavit of the Applicants’ American counsel asserts that “KGK has information unique to it that cannot be obtained from any other source”, and that the Applicants are “unable to obtain the documents and oral evidence from other sources or by other means”, the affidavit itself offers no supportive details or other information for these bald assertions, apart from statements that KGK did testing and development and has declined the Applicants’ direct requests for voluntary disclosure.
• The simple fact that KGK may have done such testing does not inherently foreclose the possibility that the desired information might very well be obtained through other means short of involving KGK directly in the litigation process. Indeed, the evidence before me indicates that the Applicants already have been able to secure documentation generated by KGK, (of which the 2008 letter and attachments are tendered “by way of example only”), by some means other than direct contact with KGK. In my view, the complete failure of the letters rogatory and affidavit to address or explain how the Applicants were able to obtain such KGK information indirectly, (e.g., indicating what alternate means of obtaining such information were available and attempted, and the extent to which they were successful or frustrated), and the full extent of KGK information the Applicants already have been able to obtain from such alternate indirect methods, is a glaring deficiency in the application material. (The affidavit evidence is frustratingly coy in that regard, insofar as the Applicants’ American counsel simply indicates that, during the extensive discovery to date, the Applicants “became aware” that KGK performed testing and was involved in the development related to the asserted patents.) Without such information, the Ontario court is deprived of any meaningful basis on which to explore the Applicants’ assertions that direct targeting and formal involvement of KGK is necessary or appropriate.
• In particular, to note the obvious: if parties to the ITC litigation commissioned KGK to do the relevant underlying work, they not only are likely to have information about what KGK was asked to do and then did, but also are likely in a position to authorize and direct KGK to make further disclosure without KGK being subjected unnecessarily to court orders or other formal involvement in the litigation. There is absolutely no evidence before me, however, to indicate whether or not such measures were explored, or why such methods would be frustrated or inadequate to provide the Applicants with the information they desire. It may be that no such methods were attempted because, as noted above, they simply are not prerequisites in the more liberal American approach to involvement of non-party witnesses as of right. However, pursuant to the law of Ontario, more is required before non-parties are subjected to such burdens. For example, in application of our Rule 30.10, (dealing with production from non-parties with leave), our Court of Appeal has emphasized the importance of first exploring whether discovery from parties to a proceeding is adequate and, if not, whether responsibility for the inadequacy rests with a party; see Ontario (Attorney General) v. Ballard Estate, supra, at p.48. Similarly, our Rule 31.10, (permitting oral discovery examination of non-parties), expressly requires demonstration that “the moving party has been unable to obtain the information from other persons whom the moving party is entitled to examine for discovery, or from the person the party seeks to examine”.
• In the circumstances, having regard to the record before me, I accordingly am not satisfied that the information desired from KGK is “not otherwise available”, in the sense required for recognition and enforcement of the letters rogatory. Like Justice Brown in Oticon Inc. v. Gennum Corporation, supra, at paragraphs 31 and 36, I think the “not otherwise obtainable” factor requires further explanation, “especially where the evidence strongly suggests that one of the parties to the U.S. Proceedings likely already possesses some or all of the requested documents”, and that the “absence of concrete evidence from [an applicant] that it was unable to obtain some or all of the documentation sought from its discovery of [parties to the litigation] is fatal … to this application seeking enforcement of the Letters Rogatory”. Before KGK is subjected to formal orders compelling its direct involvement and disclosures, the Applicants should be obliged to tender appropriate evidence indicating what other means of obtaining disclosure were available and attempted, the extent to which they were successful or unsuccessful, the reasons why such efforts may have failed or fallen short of what was desired, and the extent to which further direct discovery from KGK therefore is necessary to supplement that other disclosure; e.g., because disclosure directly from KGK is the only way to obtain certain information, and/or because KGK’s independent information is somehow necessary in the circumstances to test or confirm the accuracy of information already supplied by others.

[37] As for whether the order requested would be “contrary to public policy”:

• There was no express suggestion in the evidence or submissions before me that the relief sought would raise any such concerns, apart from a KGK request that any order enforcing the letters rogatory be made subject to additional terms extending effective protection against any collateral use of information disclosed by KGK. Having reviewed the terms of the protective order made in the ITC proceedings, and those of the written undertaking which the Applicants were willing to provide, I believe such concerns were capable of being adequately addressed, had the evidence and circumstances otherwise justified granting the relief requested. There is nothing in the evidence to suggest that the requested disclosure would expose KGK to possible criminal proceedings.
• My attention was not drawn to any applicable “blocking statute”, here in Ontario, akin to that which helped to frustrate the Applicants’ efforts to enforce similar letters rogatory in the province of Quebec.
• In the circumstances, this aspect of the test for enforcement of the letters rogatory would have been satisfied.

[38] To some extent, I already have addressed, (when dealing with demonstration of relevance), whether the documents being sought from KGK have been identified with “reasonable specificity”. In that regard:

• Despite use of expansive references to “any” and “all” documents relating to certain described categories of documents, such descriptions reflect the challenges necessarily faced by a party who knows that the witness has engaged in certain types of relevant activity, but lacks knowledge of the particular manner and context in which that activity was carried out and/or characterized internally by the witness. In other words, given the indications that KGK has carried out at least some degree of relevant development, testing and analysis, I am reluctant to characterize the Applicants’ request as a “fishing expedition”. Rather, in this case, to extend the metaphor, the Applicants’ efforts are directed to all aspects of particular fish known to be present – despite ignorance as to their number or size.
• For the reasons outlined above, I nevertheless think that the requests in their current form cast the net too wide, with terms that are unacceptably vague and general; e.g., insofar as they fail to provide adequate specifications as to which patents are related and why, and may catch documentation having nothing to do with the particular process or results underlying the related patents.
• While such concerns might be addressed through further refinement of the relief being sought, the request as framed therefore fails to meet the demands of this aspect of the criteria for enforcement of letters rogatory.

[39] That leaves, for consideration, the final element of the stated criteria for enforcement of letters rogatory; i.e., demonstration that the order sought is “not unduly burdensome”. In that regard:

• To some extent, the inter-related nature of the criteria influences my views on this point. In particular, if the information sought exceeds the proper bounds of relevance, is not demonstrably necessary for the underlying proceeding, is not necessarily available only by involving the non-party witness, and the suggested disclosure obligations are not described with reasonable specificity, imposing such disclosure obligations inherently would be “unduly burdensome” for all these reasons.
• I already have noted and explained, for example, (having regard to the protections normally extended to non-party witnesses under Rules 30.10 and 31.10 of our Rules of Civil Procedure), why the requested relief would exceed, in the circumstances and on the evidence filed, “what the relevant witness would be required to do and produce, where the action to be tried here”.
• Beyond those concerns, the extent of burdens imposed on KGK by the requested belief obviously would depend, in large measure, on the extent of its underlying involvement, records and personnel, (given the suggested obligation that KGK make appropriate inquiries of “any agent, employee, attorney or any other person or entity acting on your behalf or subject to your control”). For example, it may be that KGK’s total involvement was limited to two or three minor and isolated testing procedures and reports, that the associated documentation is quite limited and readily available, and that KGK’s operation is sufficiently small and static to enable all relevant productions and inquiries to be completed with relative ease and within a reasonably short space of time. Alternatively, however, KGK’s relevant involvement may have been much greater, generating substantial documentation, and necessitating inquiries of former employees and other representatives who may have left the company over the past 12 or more years – all of which would create significant challenges and hardship for KGK. There is little or no evidence before me to indicate which type of scenario may be more likely - but the onus to demonstrate satisfaction of this element of the test remains on the Applicants. This in turn provides another reason why more fulsome disclosure by the Applicants of the evidence already in their possession indicating the scope of KGK’s involvement, (and not just a sample document tendered “by way of example only”), would have been appropriate and helpful.
• Moreover, requiring KGK to address and deal with such matters in the very compressed time frame available between now and the ITC trial scheduled for this December inherently would create additional burdens for KGK; a reality which in my view warrants some form of explanation as to why the Applicants are pursuing disclosure from KGK so late in the ITC proceeding. However, the Applicants’ material is silent on this. (There is no indication of how or when the Applicants learned of KGK’s involvement, prior to their contacting KGK on July 9, 2013.)
• On balance, although the Applicants commendably have expressed willingness to reimburse KGK for the reasonable expense it may incur in making the requested disclosure, and to conduct the proposed examination in a manner minimizing any inconvenience from KGK’s perspective, I am not inclined to find, in these particular circumstances, that this aspect of the test for enforcement of the letters rogatory has been satisfied.

[40] The authorities indicate that failure to demonstrate any aspect of the required criteria is fatal to such an application.

[41] As there are multiple deficiencies in the Applicants’ material, (for the reasons outlined above), the application therefore must be dismissed.

Costs

[42] Because my decision was reserved, the parties were unable to make any submissions regarding costs. If the parties are unable to reach an agreement on costs:

a. the Respondent KGK may serve and file written cost submissions, not to exceed five pages in length, (not including any bill of costs), within two weeks of the release of this decision;

b. the Applicants then may serve and file responding written cost submissions, also not to exceed five pages in length, within two weeks of service of the Respondent’s written cost submissions; and

c. the Respondent KGK then may serve and file, within one week of receiving any responding cost submissions from the Applicants, reply cost submissions not exceeding two pages in length

[43] If no written cost submissions are received within two weeks of the release of this decision, there shall be no costs awarded.

Ian F. Leach

Justice

Date: November 6, 2013