Case Summary: Enforcement of Letter Rogatory – Cisco Systems Inc. v. N. Harris Computer Corporation, 2024 ONSC 3492

Executive Summary

The Ontario Superior Court denied an application by Cisco Systems Inc. (“Cisco“) to enforce a letter rogatory from the U.S. District Court for the Eastern District of Texas (the “Letter Rogatory“), seeking production of documents and oral evidence from N. Harris Computer Corporation (“Harris“), a non-party to the underlying U.S. litigation.

The Court recognized the six “guide posts” set out by the Court of Appeal in Lantheus Medical Imaging Inc. v. Atomic Energy of Canada Ltd., 2013 ONCA 264. However, Cisco’s application failed on prongs 3 and 6, namely, Cisco could not demonstrate that:

3) the evidence sought was not otherwise obtainable; and

6) that the order sought was not unduly burdensome.

Background

Cisco’s request was prompted by its defence in a patent infringement case commenced by Video Solutions Pte. Ltd. (“Video Solutions“).

In the underlying U.S. case, Video Solutions alleged that Cisco infringed on its patents related to video conferencing technology.

Position of the Parties

Cisco denied that it infringed the patents in question and also denied the validity of the patents for failure to satisfy the conditions of patentability set forth in the U.S. Patent Act. Cisco argued that Harris possessed relevant information critical to its defense as Harris sold the patents in question to Video Solutions in 2022.

Harris contended that the request was overly burdensome, unnecessary, and not aligned with Ontario’s Rules of Civil Procedure in relation to production from non-parties. Harris had a contractual relationship with Video Solutions and claimed to have provided relevant documents to Video Solutions. Therefore, Harris took the position that such documents could be sought directly from Video Solutions, which was a party in the underlying U.S. proceeding.

Video Solutions was not a party to the letter rogatory application; however, Harris advised the court that Video Solutions had asserted a claim of privilege in the underlying patent litigation over certain documents produced by Harris.

Analysis

The court cited the well-established six factors which must be considered in determining whether to enforce a letter rogatory:

• the evidence sought is relevant;
• the evidence sought is necessary for trial and will be adduced at trial, if admissible;
• the evidence is not otherwise obtainable;
• the order sought is not contrary to public policy;
• the documents sought are identified with reasonable specificity;
• the order sought is not unduly burdensome, having in mind what the relevant witnesses would be required to do, and produce, were the action to be tried in Ontario.

The court disposed of factors 1, 2 and 4 quickly acknowledging that they were met. Factor 5 was not independently addressed. The court’s analysis focused on factors 3 and 6.

Factor 3 – The Evidence is not Otherwise Obtainable

As Video Solutions had a contractual relationship with Harris and could potentially provide the requested documents, the court found that a direct request to Harris was premature. The court observed that, under Ontario practice, Video Solutions would be required to request evidence from Harris, and only if Harris refused to provide it, would the court likely make an order for production or discovery directly against Harris.

The court also addressed Video Solution’s claim of privilege finding that the privilege claimed by Video Solutions over documents transferred to it by Harris raised further complications, necessitating a resolution in Texas before enforcement could be considered in Ontario. It was therefore premature to order Harris to produce copies of those documents to Cisco in Ontario.

Factor 6 – The Order Sought is not Unduly Burdensome

The deponent for Harris gave evidence that two senior Harris employees were tasked with searching for any documents not already produced to Video Solutions and also to determine whether anyone still employed at Harris could provide the evidence sought in Schedule “B” to the Letter Rogatory.  The affidavit stated that over 100 hours had been spent searching for records and that no records other than the documents previously provided to Video Solutions had been located. As the parties did not cross-examine on the affidavits, Harris’ evidence on this issue was uncontroverted.

The court highlighted the burden that would be placed on Harris to further attempt to retrieve the records in question. The court observed that as a non-party to the litigation with no obvious stake in the outcome, it would not order Harris to incur the costs necessary to attempt to locate the records in question. Rather, it would require Cisco to underwrite those costs.

Conclusion and Commentary

The court declined to enforce the Letter Rogatory against Harris at this time, directing that Cisco first obtain documents from Video Solutions and resolve any privilege claims. However, the court ordered Harris to preserve relevant records and indicated that Cisco could renew the application in the future with additional supporting evidence.

This decision underscores the careful balancing act that courts must perform when considering international cooperation in evidence gathering. The principles of comity and respect for foreign judicial requests are tempered by considerations of fairness, undue burden, and the rights of domestic non-parties. The decision also serves as a reminder that parties seeking to enforce a letter rogatory must exhaust all reasonable avenues of obtaining evidence from parties directly involved in the underlying litigation before turning to non-parties.

Koskie Minsky’s cross-border litigation team would be pleased to help enforce your letters rogatory and any other foreign judgments. Please contact Daniel Resnick and Simon Cox with any questions.