Date: 20060307
Docket: T-491-04
Citation: 2006 FC 293
Ottawa, Ontario, March 7, 2006
PRESENT:
THE HONOURABLE MR. JUSTICE Noël
BETWEEN:
LES
INSTALLATIONS SPORTIVES DEFARGO INC.
Plaintiff/
Defendant to counterclaim
and
FIELDTURF
INC.
Defendant/
Plaintiff by counterclaim
REASONS FOR ORDER AND ORDER
NOEL J.
[1]
This is a
motion by the defendant pursuant to subsection 51(1) of the Federal
Courts Rules to appeal part of the order by Prothonotary R. Morneau
(“Prothonotary”) dated December 15, 2005, in which the Prothonotary
sustained the objection of counsel for the plaintiff (“Defargo”) to certain
questions asked during the examination of counsel for the defendant.
[2]
The
examination took place in connection with an action for a declaratory
judgment of non-infringement of patents held by Fieldturf. Defargo’s products
are synthetic grass products (models
AstroPlay®N and AstroPlay® Plus). The defendant added a counterclaim to its
defence, in which it seeks a declaration that the Defargo products installed at
Concordia University infringe two of its patents
and claims damages in the amount of $100,000.00.
[3]
At the
motion hearing, counsel for the defendant informed the Court that, of the three
(3) questions to which an objection was sustained by the Prothonotary, only one
remained subject to appeal:
[translation]
Provide a list of synthetic
turf surfaces sold or installed in Canada
by the plaintiff and having the characteristics described in paragraphs 4(a)
and (b) of the amended defence and counterclaim [sic, the statement of
claim]; indicate the parameters for each case.
[4]
In his
decision dated December 15, 2005, the Prothonotary sustained the objection for
the following reasons:
10. As far as the
questions and requests in categories A and D are concerned, they do not have to
be answered, because the information sought is not relevant, since it is
contrary to the scheme of my decision rendered on October 19, 2004 in this file, in which I
ruled that the products as described by Defargo in its statement of claim could
be the subject of an action under subsection 60(2) of the Patent Act. My
decision rendered on April 27, 2005 in T-3375-05 reinforces the distinction to
be made between a more theoretical description (T-491-04) and actual
installations (T-375-05).
[5]
The
decision in this case to which the Prothonotary refers, dated October 19,
2004, dismissed the defendant’s motion to strike the action for declaration of
non-infringement, the main grounds for that motion being that the action asked
the Court to intervene in a factual vacuum, that any judgment in the matter
would serve no practical purpose, and that the actions in infringement related
to Defargo’s products had already been filed with this Court and the Quebec
Superior Court.
[6]
The other
decision to which the Prothonotary refers is one dated April 27, 2005 in another case, T-375-05. In
this case, Fieldturf had brought a claim of infringement against Defargo,
alleging infringement of a patent related to the three (3) synthetic grass
fields sold to and installed for the City of Montréal. Fieldturf also claimed
damages in this case. Defargo filed a motion to strike this statement of claim
and alternative conclusions, its main argument being that there was a
duplication of proceedings between the case at bar and T-375-05. The
Prothonotary dismissed the motion, the main reason being that the synthetic
grass products installed for the City of Montréal were different from the ones
described in the statement of claim in the case at bar.
[7]
The
standard of review for a decision by a prothonotary was established by the
Federal Court of Appeal (per MacGuigan J.A.) in Canada v. Aqua-Gem
Investments Ltd., [1993] 2 F.C. 425, [1993] F.C.J. No. 103,
at paragraph 64. The standard was refined by Décary J.A in Merck & Co.,
Inc. v. Apotex Inc., 2003 FCA 488, [2003] F.C.J. No. 1925, at paragraph 19:
To avoid the confusion which
we have seen from time to time arising from the wording used by MacGuigan J.A.,
I think it is appropriate to slightly reformulate the test for the standard of
review. I will use the occasion to reverse the sequence of the propositions as
originally set out, for the practical reason that a judge should logically
determine first whether the questions are vital to the final issue: it is only
when they are not that the judge effectively needs to engage in the process of
determining whether the orders are clearly wrong. The test would now read:
“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.”
[8]
First of
all, it is obvious that sustaining the objection to the question reproduced at
paragraph 3 of the present decision is not a question that could be
characterized as “vital to the final issues of a case”. The meaning of this
expression is well illustrated by the following passage from James River
Corp. of Virginia v. Hallmark Cards, [1997] F.C.J. No. 152, at
paragraph 4:
Questions that are vital to
the final issues of a case are, for example, the entering of default judgment,
a decision not to allow an amendment to pleadings, a decision to add additional
defendants and thereby potentially reduce the liability of the existing
defendant, or a decision on a motion for dismissal for want of prosecution.
None of the questions raised by the present appeals with respect to the
answering of questions on discovery can be characterized as vital to the final
issues of the case. [Citations omitted.]
The question currently in dispute concerns the gathering of
information in support of the proceeding, and in this respect the answer is not
vital to the final issues of the case.
[9]
Therefore,
all that remains to be determined is whether the decision is clearly wrong,
such that the exercise of discretion by the Prothonotary was based upon a wrong
principle or a misapprehension of facts.
[10]
In his
decision, the Prothonotary refers to Reading & Bates Construction Co. v.
Baker Energy Resources Corp., [1988] F.C.J. No. 1025, at paragraph 11,
in which the factors to be considered when assessing the merit of an objection
to a question were established:
1. The test as to what
documents are required to be produced is simply relevance. The test of
relevance is not a matter for the exercise of the discretion. What documents
parties are entitled to is a matter of law, not a matter of discretion. The
principle for determining what document properly relates to the matters in
issue is that it must be one which might reasonably be supposed to contain
information which may directly or indirectly enable the party requiring
production to advance his own case or to damage the case of his adversary, or
which might fairly lead him to a train of inquiry that could have either of
these consequences: Trigg v. MI Movers Int'l Transport Services Ltd.
(1986), 13 C.P.C. (2d) 150 (Ont. H.C.); Canex Placer Ltd. v. A.-G.
B.C. (1975), 63 D.L.R. (3d) 282; and Compagnie Financiere et
Commerciale du Pacifique v. Peruvian Guano Co. (1882), 11 Q.B.D. 55 (C.A.).
2. On an examination for
discovery prior to the commencement of a reference that has been directed, the
party being examined need only answer questions directed to the actual issues
raised by the reference. Conversely, questions relating to information which
has already been produced and questions which are too general or ask for an
opinion or are outside the scope of the reference need not be answered by a
witness: Algonquin Mercantile Corp. v. Dart Industries Canada Ltd.
(1984), 82 C.P.R. (2d) 36 (F.C.T.D.); affirmed 1 C.P.R. (3d) 242
(F.C.A.).
3. The propriety of any
question on discovery must be determined on the basis of its relevance to the
facts pleaded in the statement of claim as constituting the cause of action
rather than on its relevance to facts which the plaintiff proposes to prove to
establish the facts constituting the cause of action. Additionally, where a
reference has been directed, the application of Rule 465(15) requires that the
answers on discovery be restricted to questions as to facts that may prove or
tend to prove or disprove or tend to disprove any unadmitted allegation of fact
placed in issue on the reference: Armstrong Cork Canada Ltd. v. Domco
Industries Ltd. (1983), 71 C.P.R. (2d) 5, 48 N.R. 157 (F.C.A.).
4. The court should not compel
answers to questions which, although they might be considered relevant, are not
at all likely to advance in any way the questioning party's legal position: Canex
Placer Ltd. v. A.-G. B.C., supra; and Smith, Kline & French
Laboratories Ltd. v. A.-G. Can. (1982), 67 C.P.R. (2d) 103 at p.
108.
5. Before compelling an answer
to any question on an examination for discovery, the court must weigh the
probability of the usefulness of the answer to the party seeking the
information, with the time, trouble, expense and difficulty involved in
obtaining it. Where on the one hand both the probative value and the usefulness
of the answer to the examining party would appear to be, at the most, minimal
and where, on the other hand, obtaining the answer would involve great
difficulty and a considerable expenditure of time and effort to the party being
examined, the court should not compel an answer. One must look at what is
reasonable and fair under the circumstances: Smith, Kline & French Ltd.
v. A.-G. Can., per Addy J. at p. 109.
6. The ambit of questions on
discovery must be restricted to unadmitted allegations of fact in the
pleadings, and fishing expeditions by way of a vague, far-reaching or an
irrelevant line of questioning are to be discouraged: Carnation Foods Co.
Ltd. v. Amfac Foods Inc. (1982), 63 C.P.R. (2d) 203 (F.C.A.); and Beloit
Canada Ltee/Ltd. v. Valmet Oy (1981), 60 C.P.R. (2d) 145 (F.C.T.D.).
[11]
In its
action for a declaratory
judgement of non-infringement
(cause of action), Defargo alleges the following:
[translation]
3. The plaintiff has
been active in the sale and installation of synthetic grass surfaces across
Canada since the year 2000.
4. The
plaintiff sells several types of synthetic grass surfaces, including the
following makes:
(a) AstroPlay®Plus, a make
with a 3/8-inch space between rows of synthetic grass fibres and an
approximately 44-millimetre-high rubber in-fill;
b) AstroPlay®N, a make with a
¾-inch space between rows of 61 or 64-millimetre-high synthetic grass fibres
and an approximately 52-millimetre-high rubber in-fill.
6. The
plaintiff sold and installed the Products and, more specifically, sold
AstroPlay®N-type synthetic grass surfaces to Concordia University and installed
said surfaces for the University.
24. As
stated above, the plaintiff sells and installs synthetic grass surfaces with
the abovementioned characteristics.
[12]
Defargo
accordingly asks the Court to declare [translation]
“that
the plaintiff has not infringed Canadian patents No. 2095 158, No. 2 218314 and
No. 2 247 484 in using, distributing, selling or otherwise disposing of said products”.
[13]
In its
defence, Fieldturf denies that the products sold and installed by the plaintiff
are those described in paragraphs 4(a) and (b) of the statement of claim (see
paragraphs 3 and 4 of the amended defence).
[14]
The legal
basis for an action for a declaratory
judgement of non-infringement is subsection 60(2) of the Patent Act, R.S.,
1985, c. P-4:
|
60
(2) Where any person has reasonable cause to believe that any process used or
proposed to be used or any article made, used or sold or proposed to be made,
used or sold by him might be alleged by any patentee to constitute an
infringement of an exclusive property or privilege granted thereby, he may
bring an action in the Federal Court against the patentee for a declaration
that the process or article does not or would not constitute an infringement
of the exclusive property or privilege.
|
60
(2) Si une personne a un motif raisonnable de croire qu’un procédé employé ou
dont l’emploi est projeté, ou qu’un article fabriqué, employé ou vendu ou
dont sont projetés la fabrication, l’emploi ou la vente par elle, pourrait,
d’après l’allégation d’un breveté, constituer une violation d’un droit de
propriété ou privilège exclusif accordé de ce chef, elle peut intenter une
action devant la
Cour
fédérale contre le breveté afin d’obtenir une déclaration que ce procédé ou
cet article ne constitue pas ou ne constituerait pas une violation de ce
droit de propriété ou de ce privilège exclusif.
|
[15]
In both
the action for a declaratory judgment of non-infringement and subsection 60(2)
of the Patent Act, very specific reference is made to articles and
products sold, not just the possible sale of these articles. Furthermore, it is
asked that the products to be distributed and sold be declared not to constitute
an infringement of Fieldturf’s patents.
[16]
I would
add that paragraph 6 of the declaration of non-infringement clearly states that
Defargo sold the products (more specifically, synthetic grass surfaces) to Concordia University and installed
them. In the defence, as already mentioned, Fieldturf denied that the products
described in paragraphs 4(a) and (b) are sold by the plaintiff.
[17]
The
question reproduced in paragraph 3 could help yield more information on the
issue of whether or not the products in question were sold and installed. The
Prothonotary nevertheless sustained the objection on the ground the information
sought through this question was “contrary to
the scheme of my decision rendered on October 19,
2004
in this file, in which I ruled that the products as described by Defargo in its
statement of claim could be the subject of an action under subsection 60(2) of
the Patent Act”.
[18]
With
respect for the Prothonotary, I believe this statement is clearly wrong, such
that the exercise of discretion by the Prothonotary was based upon a wrong
principle not having been applied for the purposes of determining the question.
The tests in Reading & Bates Construction Co., supra, apply
in such circumstances, and the Prothonotary failed to apply them, as I will
explain:
- The
action for a declaratory judgment of non-infringement specifically mentions
several times that the product having the characteristics described in
paragraphs 4(a) and (b) was sold to and installed for, “more specifically”, Concordia University;
- In its
amended defence, Fieldturf denies that the products sold and installed were
those mentioned in paragraphs 4(a) and (b) of the statement of claim;
- Subsection
60(2) of the Patent Act specifically includes the sale of articles;
- Non-infringement
of Fieldturf’s patents by Defargo’s product (described in paragraphs 4(a) and
(b) of the statement of claim) is at the very heart of the dispute stemming
from the proceeding;
- The
question under consideration requires information arising from allegations in
the declaration of non-infringement (paragraphs 3, 6 and 24) and the main
declaration sought;
- The
question is relevant to the facts alleged in the statement of claim and the
cause of action (paragraphs 3, 6 and 24);
- Answering
the question will allow the parties to specify their respective claims in legal
terms;
- The
Court has no information regarding the consequences of such a question or the
excessive complications or astronomical costs that could result, since Defargo
has not introduced any evidence on this subject;
- An
answer to this question could be useful for both parties;
- In my
view, the question is neither too general nor unrelated to the allegations of
fact in the statement of claim;
- As
worded, the question should be allowed based on tests 2, 3, 4, 5 and 6 in Reading
& Bates Construction Co., supra.
[19]
The
references to the decisions dated October 19, 2004 and April 27, 2005 in
T-375-05, upon which the Prothonotary relies to support his view that the question
is not relevant are not, in my view, convincing. In my opinion, the question
and the objection to it should be analysed in light of the parties’
proceedings, that is, the statement of claim and the amended defence, as well
as the counterclaim. These proceedings allow us to assess whether or not the
relevance is sufficient to sustain a given objection. I do not think that the
“scheme” of a decision (i.e., the decision dated October 19, 2004) or the
distinction to be made between a “more theoretical decision” (T-491-04) and
“actual installations” (T-375-05) are relevant considerations, given the
factors in Reading & Bates Construction Co., supra. Each case
must be assessed independently. As officer in charge of case management for
certain related cases, a prothonotary may take into consideration all of cases
before him or her that involve the same parties and same cause of action. The
prothonotary must nevertheless apply the test in Reading & Bates
Construction Co., supra, when he or she has to rule on an objection
to a question in connection with an examination.
[20]
I believe
I understand the Prothonotary’s reasons for referring back to the two decisions
to justify the relevance of a question, or the lack thereof. However, I think
the objectives of achieving a decisional scheme and distinguishing between
proceedings are in themselves laudable but, in my view, are not useful when
disposing of an objection to a question in the context of an examination
arising out of judicial proceedings.
[21]
Having
concluded as I have, I feel it necessary to evaluate the relevance of the
question, given that I must consider the situation de novo. For
the reasons mentioned, particularly at paragraph 18 of this order, I think
that the question (see paragraph 3 of this order) is relevant and requires
an answer. The objection to this question is therefore overruled.
[22]
Given the
special nature of the case and the question, I refer the case back to the
Prothonotary in charge of case management so that the terms and conditions of
the answer may be established.
[23]
On the
question of costs in the present proceeding, costs are allowed for the
defendant.
ORDER
FOR THESE REASONS, THE COURT ORDERS THE
FOLLOWING:
- The motion on appeal from the
decision of the Prothonotary is granted;
- The objection to the question is
overruled;
- Counsel for the plaintiff shall
answer the following question:
“Provide a
list of synthetic turf surfaces sold or installed in Canada by the plaintiff
and having the characteristics described in paragraphs 4(a) and (b) of the
amended defence and counterclaim [sic, the statement of claim]; indicate
the parameters for each case”;
- The
terms and conditions for answering the question will be determined by the
Prothonotary, and the case is referred back to him accordingly;
- The costs of the present proceeding
are in favour of the defendant.
“Simon
Noël”
Certified
true translation
Michael
Palles
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