Bemalux Inc. v. Bentofix Technologies Inc., docket T-1051-95

Date: 19980616

Dossier: T-1051-95

MONTREAL, QUEBEC, THIS 16^th DAY OF JUNE 1998

Present:                  RICHARD MORNEAU, ESQ. , PROTHONOTARY

BETWEEN:

                                                                BEMALUX INC.

                                                                                                                                              Plaintiff

                                                                          AND

                                              BENTOFIX TECHNOLOGIES, INC.

                                                                                                                                        Defendant

                                                                     O R D E R

The Defendant's motion is granted in part. Counsel for the Defendant shall prepare a draft Confidentiality Order in accordance with the Reasons for order. This could be accomplished by adapting the draft order attached as Schedule 1 to the Defendant's motion.    Counsel for the Defendant is granted ten (10) days from the date of this order to act accordingly.

Costs in the cause.

Richard Morneau

                                      Prothonotary

Date: 19980616

Docket: T-1051-95

BETWEEN:

                                                                BEMALUX INC.

                                                                                                                                              Plaintiff

                                                                          AND

                                              BENTOFIX TECHNOLOGIES, INC.

                                                                                                                                        Defendant

                                                        REASONS FOR ORDER

RICHARD MORNEAU, ESQ., PROTHONOTARY

[1]       This is a motion on behalf of the Defendant under rule 151 of the Federal Court Rules, 1998 for a confidentiality order protecting and maintaining the confidentiality of various documents to be produced by the parties during the course of the proceedings.

[2]       Pleadings are closed and each party has filed an affidavit of documents and exchanged production documents.

[3]       Although both parties in this patent infringement action acknowledge that a confidentiality order is required, they are unable to agree on a suitable form of order; hence the instant motion.

[4]       More precisely, with respect to alleged technical specifications pertaining to the Defendant's products and with respect to alleged sensitive financial information, the Defendant requires a confidentiality order with mention of "for counsel's eyes only" whereas the Plaintiff does not.

[5]       In paragraph 2 of his supporting affidavit, the Vice President Manufacturing of the Defendant asserts as follows:

With respect to the defendant's request for a restricted category of documents whose disclosure is limited to counsel only, the documents marked "FOR COUNSEL'S EYES ONLY" in the defendant's affidavit of documents contain particularly sensitive commercial information. The commercial interests of the defendant would be harmed if these documents were to fall into the hands of any competitor, including the plaintiff. In particular:

(i)             documents 4, 9.3, 9.4, and 13 contain highly proprietary technical specifications pertaining to the defendant's products - disclosure of these specifications could put the defendant at a competitive disadvantage, seriously affecting the viability of the defendant's business;

(ii)            documents 11.2 and 11.3 contain sensitive financial information, disclosure of which could severely damage the defendant's business activities.

[6]       The above-mentioned documents, which would only be disclosed to counsel, are more fully described as follows in the Defendant's affidavit of documents:

4.              Copy of Letter from GeoSyntec Consultants, Dated August 31, 1991, to Mr. Kolbasuk re: Final report, Interface Direct Shear Testing and NSC Textured HDPE Geomembrane (FOR COUNSEL'S EYES ONLY)

9.3           Relevant portions of facsimile copy of letter from Synthetic Industries, Inc. to Albarrie, dated October 9, 1992 (FOR COUNSEL'S EYES ONLY)

9.4           Relevant portions of facsimile copy of letter from Synthetic Industries, Inc. to Albarrie, dated May 29, 1997 (FOR COUNSEL'S EYES ONLY)

11.2         Statements of earnings and retained earnings (1992-1996) (FOR COUNSEL'S EYES ONLY)

11.3         Sales history from 1992 to 1997. (FOR COUNSEL'S EYES ONLY)

13.           Relevant portions of Albarrie Technical Specifications Sheets (FOR COUNSEL'S EYES ONLY)

[7]       Rule 151 reads as follows:

151.(1) On motion, the Court may order that material to be filed shall be treated as confidential.

(2) Before making an order under subsection (1), the Court must be satisfied that the material should be treated as confidential, notwithstanding the public interest in open and accessible court proceedings.

[8]       Based on the material submitted by the Defendant, and upon reading the decisions of this Court in Apotex and Novopharm Ltd. v. The Wellcome Foundation Ltd. (1993) 51 C.P.R. (3d) 305, AB Hassle v. Canada (Minister of National Health and Welfare) (unreported decision of Justice Teitelbaum, [1998] F.C.J. No. 497, April 20, 1998) and Novopharm Ltd. v. Glaxo Group Ltd., (unreported decision of Stone, Linden and Robertson of the Federal Court of Appeal dated April 24, 1998, Docket No. A-768-95), I am satisfied for the purpose of rule 151(1) that a confidentiality order should issue in the present circumstances.

[9]       I am also satisfied that the Defendant's documents 11.2 and 11.3 need the protection afforded by a designation "for counsel's eyes only".

[10]     As to documents 4, 9.3, 9.4 and 13 which contain technical specifications, I am of the view, based on the affidavit of Victor Cossette filed in contesting the motion at bar, that it would be sufficient to classify them as "confidential information" in a confidentiality order with the proviso, however, that in the case of the Plaintiff, only Mr. Victor Cossette can access these documents. The implied undertaking rule should satisfy the Defendant that Mr. Cossette as President of the Plaintiff will not misuse the information which he will access. Accordingly, the Defendant should declassify documents 4, 9.3, 9.4 and 13 so as to include them under the designation "Confidential Information".

[11]     Thus, the Defendant's motion is granted in part. Counsel for the Defendant shall prepare a draft Confidentiality Order in accordance with these reasons. This could be accomplished by adapting the draft order attached as Schedule 1 to the Defendant's motion.

[12]     Costs in the cause.

Richard Morneau

Prothonotary

MONTREAL, QUEBEC

June 16, 1998

                        T-1051-95

BEMALUX INC.

                                                                 Plaintiff

BENTOFIX TECHNOLOGIES, INC.

                                                            Defendant

                   REASONS FOR ORDER

                                                     FEDERAL COURT OF CANADA

                                  NAMES OF COUNSEL AND SOLICITORS OF RECORD

COURT NO.:

STYLE OF CAUSE:

T-1051-95

BEMALUX INC.

Plaintiff

AND

BENTOFIX TECHNOLOGIES, INC.

Defendant

PLACE OF HEARING:             Ottawa, Ontario

DATE OF HEARING:             May 28, 1998

REASONS FOR ORDER BY RICHARD MORNEAU, ESQ., PROTHONOTARY

DATE OF REASONS FOR ORDER:             June 16, 1998

SOLICITORS OF RECORD: