Date: 20021126
Docket: T-1791-00
Neutral citation: 2002 FCT 1225
BETWEEN:
WALTER NICHOLSON
Plaintiff
and
CWS INDUSTRIES LTD.
Defendant
REASONS FOR ORDER
HARGRAVE P.
[1] The Plaintiff holds a patent on a tined rake attachment for use with powered digging machines. These rake attachments have various uses including clearing away of underbrush. By this motion the Plaintiff wishes to obtain documents from the Defendant in order to determine the latter's profits on clearing rakes, including the profits on associated lugs and couplers used to connect the rakes to the arms of excavating machines. The coupling device acts in such a manner that it will pivot about one axis, much as if it were a person's wrist bending only up and down when using the fingers as a rake to pull in objects lying on a flat plane.
ANALYSIS
[2] I do not see a serious issue as to profit material on the clearing rakes themselves. That material is relevant. Notwithstanding some possible vacillation on the part of the Plaintiff, as to the extent of the claim, that material is to be produced.
[3] Both more contentious and more complex is production of profit material relative to the hinged or pivoting device used to attach the patent rake to the arm of the machine itself.
[4] The Defendant submits that the present written motion ought to be dealt with orally. I am not convinced that the motion cannot be adequately dealt with in writing, being the test set out in Sterritt v. Cancda (1995), 98 F.T.R. 68 (F.C.T.D.) at 70 - 71, affirmed (1995), 98 F.T.R. 72 (F.C.T.D.).
[5] There are various well-established rules for the production of documents, to which I will refer, although I will not necessarily refer to the cases themselves. To begin, production of documents is governed by relevance, not discretion, with even marginally relevant documents to be produced, leaving it to the trial judge to make a final determination. In the context of the whole case the judge will be in a better position to look at the relevancy, worth and weight to be given to specific documents.
[6] As to what is relevant, basic is the Peruvian Guano case, (1882) 11 Q.B.D. 55 at 63, in which the Court of Appeal established that a document is relevant not only when it relates to matters in question in the action, but also when "... it is reasonable to suppose, contains information which may - not which must - either directly or indirectly enable the party requiring the affidavit either to advance his own case or to damage the case of his adversary.".
[7] As I pointed out in Galehead Inc. v. The Ship "Trinity" (1998), 160 F.T.R. 227 (F.C.T.D.), in which some of the above propositions are attributed to specific authorities, production under the 1998 Rules may be slightly narrower than was formerly the case, however any narrowing is not relevant to an appreciable degree in the present instance.
[8] Relevance, in the formal sense, is defined by the pleadings. Here I would refer to the decision of Mr Justice Hugessen, as he now is, in Merck Frosst Canada Inc. v. Canada (Minister of Health) (1997), 80 C.P.R. (3d) 550 at 555 - 556. Legal relevance, which related to matters such as cross-examination on affidavits, is not here at issue. Mr Justice Hugessen's decision in Merck Frost was upheld by the Court of Appeal in very brief reasons, (2000), 249 N.R. 15. However, the Court of Appeal seemed to agree with the analysis of relevance, or at least as to the conclusion drawn. I thus proceed on the basis that relevance, in the case of what the Plaintiff refers to as "associated lugs and couplers" must be formally relevant as defined by the pleadings in this action. The Plaintiff's coupling device, between the rake and the machine upon which it is mounted, is not particularized in the written portion of the patent so as to mean much. However it is shown in the accompanying drawings. In layman's terms, it consist of various moving linkage-plates, including a triangular plate and a connecting bar. One corner of the triangular plate is activated by a hydraulic ram to produce a levering action to pivot the rake back and forth, on fixed pins, at the end of the arm of the machine. This is a common mechanical movement, seen in even the most basic machinery, perhaps today most frequently on earth moving machinery, where it is often clearly visible. Here I would note that it appears to be a very different mechanism from that shown in the Defendant's drawings and photographs. The Defendant's device is a quick-change coupling involving a lug, an integral part of the rake, which hooks over a fixed shaft in order to provide a pivoting point. Leaving this aside I must determine whether documents showing profit on the connecting device are relevant, or even remotely relevant, in the context of the pleadings.
[9] The Statement of Claim describes the invention as related to a multi-tined rake attachment, more particularly described in the patent, for cutting and clearing undergrowth and timber. A function of the rake and particularly the movement of the tines and the apparently novel curvature of the tines of the rake, are detailed in the Statement of Claim. While the device is described as being mounted on the arm of, presumably, a digging machine, the initial portion of the Statement of Claim itself, while describing the connecting device, stops short of claiming the array of plates, shaft and hydraulic ram as an invention. Without more, documents dealing with profit on the Defendant's mode of connection, between the rake and the machine, have no formal relevance.
[10] The Statement of Claim goes on to take issue with the activities of the Defendant, describing the offending rake attachment as including the pivoting mounting device, which is said to offend. This does not advance the Plaintiff's request for documents detailing coupling device profits for, to this point in the Statement of Claim, there is still no claim by the Plaintiff to invention of an array of plates and a hydraulic ram.
[11] More difficult for the Defendant to deal with is paragraph 15 of the Statement of Claim, which alleges that the activities of the Defendant, including that of selling a pivoting mounting device, have infringed claims 1 through 3 and 5 through 7 of the patent, a copy of which is attached to the Statement of Claim. Claim 1(c) of the patent does refer to a pivoting mounting device as being embodied in the invention.
[12] Attachment of document, here a copy of the patent, is in keeping with Rules 174 which requires that "[every] pleading shall contain a concise statement of the material facts" and also with Rule 206, which requires that a document referred in pleading be served within 10 days after service of the pleading itself. However, there are several difficulties with this. First, I had some initial difficulty with a reference to a portion of an attached document as fair notice of a claim. In Esso Petroleum Corp Ltd. v. Southport Corporation (1956), A.C. 218 the House of Lords dealt with a situation in which the Court of Appeal, in overturning the trial judge, travelled beyond the negligence alleged in the claim. Lord Justice Normand, in his speech, said:
| I wish to associate myself with the observations of my noble and learned friend, Lord Radcliffe, on the value of the pleadings. To condemn a party on a ground of which no fair notice has been given may be as great a denial of justice as to condemn him on a ground on which evidence has been improperly excluded. (Page 239)
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[13] Certainly mere reference to a document, in a pleading, does not constitute that document, in itself, a pleading: see for example Margem Chartering Co. Inc. v. The Bocsa, [1997] 2 F.C. 1001 (F.C.T.D.) at 1012 - 13. However, actual attachment of a document to a statement of claim does, apparently, have a different effect.
[14] In Precision Metalsmiths Inc. v. Cercast Inc. (1966), 49 C.P.R. 234 (Can. Ex. Ct.) President Jackett dealt with a motion to strike out portions of a statement of claim on the grounds that it did not contain a concise statement of the material fact relied upon in order to provide a cause of action. From that decision it is apparent that had copies of patents been attached to the statement of claim, instead of being merely presented to the court at the time of the motion in order to demonstrate a cause of action, the copies of the patents would have been a part of the statement of claim that the result might well had been different.
[15] Precision Metalsmiths has as its foundation Dow Chemical Co. v. Kayson Plastics & Chemicals Ltd. (1966), 47 C.P.R. 1 (Can. Ex. Ct.), again a decision of President Jackett of the Exchequer Court, dealing with particulars, although it might, as he points out, have been disposed of by a motion to strike out for want of cause of action. In concluding his reasons he deplored the practice whereby a statement of claim describes no particular monopoly rights belonging to the plaintiffs and for which the plaintiffs claimed infringement, but rather the pleadings were limited to assertions that plaintiffs were owners of a certain patent. He went on to point out that in such instances a patent was not part of a pleading, and that such pleadings were of no help either to the court or to the defendant in explaining anything about the rights which the plaintiff felt were infringed. Thus there is the implication that the patent ought to be attached to the statement of claim in order to add to the statement of claim. He went on to point out that while the defendant might easily acquire a copy of the patent, at a price, the defendant would be none the wiser for he would then be left to guess which of the monopolies claimed in the patent were the subject matter of the action.
[16] From both Precision Metalsmiths and Dow Chemical it would seem that a patent attached to a statement of claim, so long as there are sufficient directions in the statement of claim as to the applicable portions of the patent, becomes a part of the statement of claim.
[17] This approach, attach patent and a clear reference in the statement of claim to the applicable portions of the patent, deals with the concern which Lord Normand had in Essso Petroleum (supra), that of giving fair notice what the action was all about.
[18] It would have been better had the Plaintiff set out clearly, in the Statement of Claim itself, that the pivoting mechanism is claimed as part of the invention. However, in the present instance there are clear enough directions in the statement of claim, referring to specific portions of the attached patent, to make it clear that the claim is, in part, for the pivoting mechanism.
[19] Leaving aside whether such a common pivoting mechanism as designed by the Plaintiff can be an invention, there is still the issue of the clear lack of similarity in the pivoting mechanism, but that is not something I may decide at this point. At best I may say that documents relating to the profit on the Defendant's pivoting mechanism might be marginally relevant. Even a marginally relevant document must be produced, leaving it to the trial judge to determine, assuming that the Plaintiff might be to some degree successful, whether these documents have any bearing on the particular aspect of damages claimed, that is for the articulated attachment mechanism.
(Sgd.) "John A. Hargrave"
Prothonotary
Vancouver, British Columbia
26 November 2002
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
MOTION DEALT WITH IN WRITING WITHOUT THE APPEARANCE OF PARTIES
DOCKET: T-1791-00
STYLE OF CAUSE: Walter Nicholson v. CWS Industries Ltd.
REASONS FOR ORDER OF: Hargrave P.
DATED: 26 November 2002
WRITTEN REPRESENTATIONS BY:
Antony C Edwards FOR PLAINTIFF
Timothy J Delaney FOR DEFENDANT
SOLICITORS ON THE RECORD:
Petraroia Langford Edwards & Rush FOR PLAINTIFF
Barristers & Solicitors
Vancouver, British Columbia
Lindsay Kenney FOR DEFENDANT
Barristers & Solicitors
Vancouver, British Columbia
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