An unusual five-member panel of the Federal Court of Appeal re-considered the appropriate standard of review in the Federal Court. The decision simplified the standard of review by focusing on the Housen standard described the Supreme Court of Canada (see 2002 SCC 33). The court also emphasized the importance of prothonotaries in the Federal Court, which is of particular significance to intellectual property proceedings which are almost always case managed by a prothonotary.
The court decided to expand its usual three member panel to a five-member panel in order to revisit its earlier Aqua-Gem decision (Canada v. Aqua-Gem Investments Ltd.,  2 F.C. 425), where it had previously sat as a five-member panel. The court stated by way of introduction that, “the issue of the standard of review applicable to orders of both judges and prothonotaries has been one of the most contentious issues before our Court and before all courts of appeal, including before the Supreme Court of Canada, in the last 10 to 15 years.”
In the underlying proceeding, the defendant in a patent proceeding sought additional time to complete its examination of inventors. The case management prothonotary had permitted further examination but limited to half-a-day by telephone. The defendant appealed, first to a judge of the Federal Court, who had upheld the prothonotary’s decision. The defendant then appealed to the Federal Court of Appeal. The Federal Courts Rules permit appeals of both interlocutory and final decisions to be made as a matter of right in most circumstances.
Previously, prothontary decisions were reviewed on different standards depending on whether the decisions were interlocutory or final. For discretionary orders, the type of decision at issue in this appeal, the Aqua-Gem decision had held that:
Discretionary orders of prothonotaries ought not be disturbed on appeal to a judge unless:
a) the questions raised in the motion are vital to the final issue of the case, or
b) the orders are clearly wrong, in the sense that the exercise of discretion by the prothonotary was based upon a wrong principle or upon a misapprehension of the facts.
In Housen, the standard of review was described for appeals from trial judges. For factual conclusions of a trial judge, the applicable standard was palpable and overriding error. For legal questions, or mixed law and fact, where there was “an extricable legal principle at issue”, the standard of review was correctness.
First the court had to determine that it could overrule its Aqua-Gem decision which it held it could based on Supreme Court’s 2002 Houssen decision, confusion within the Federal Court on the application of the Aqua-Gem standard, persuasive decisions from the Ontario Superior Court adopting the Housen standard, and the evolution in the role of prothonotaries and masters within the court.
After the discussion and conclusion on standard of review, the court held that there was no reviewable error by the prothonotary and so the lower decisions would stand and the appeal dismissed. The prothonotary had considered appropriate factors to impose reasonable limits on the examinations of the inventors.
The decision raises the important role that prothonotaries play in the Federal Court, including as case managing most of the intellectual property proceedings in the court. The court noted at paragraph 63:
Needless to say, prothonotaries are no longer, if they ever were, viewed by the legal community as inferior or second class judicial officers. Other than in regard to the type of matters assigned to them by Parliament, they are, for all intents and purposes, performing the same task as Federal Court Judges.
The Federal Court of Appeal also recently had an opportunity to discuss the standard of review on the mixed law and fact frequently arising in patent proceedings where expert evidence is introduced on claim construction. Claim construction is considered a question of law but based on a consideration of the expert evidence. In Nova Chemicals Corporation v. Dow Chemical Company, 2016 FCA 216, the court said that a judge is “nevertheless entitled to some leeway” on claim construction because the trial judge is better placed to understand the intricacies of the patent and its technology.
Various courts have also described the scope of deference given to prothonotary decisions when they are acting as case managers. In Hospira, the lower court judge had characterized the deference as ‘elbow room’. In an early decision, the Federal Court of Appeal had identified a “heavy burden upon litigants seeking to overturn an interlocutory order by a case management judge” (Montana Indian Band v Canada, 2002 FCA 331).
This simplifying of the standard of review, and the important role of prothonotaries in the Federal Court generally and in intellectual property cases will make appeals more straightforward. At times, people have questioned whether in at least some cases, parties should be able to appeal prothonotary decisions directly to the Federal Court of Appeal, rather than first to a single judge of the Federal Court. The Federal Court of Appeal’s Hospira decision therefore raises questions about the role and jurisdiction of prothonotaries in the Federal Court as well as these appeal routes with the Federal Court as the court equalizes the standard of reviews between prothonotaries and judges.