Docket:
T-2051-10
Citation:
2012 FC 754
Ottawa, Ontario,
October 25, 2012
PRESENT: The
Honourable Mr. Justice O'Keefe
BETWEEN:
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THE DOW CHEMICAL COMPANY,
DOW GLOBAL TECHNOLOGIES INC.
and
DOW CHEMICAL CANADA ULC
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Plaintiffs
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and
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NOVA CHEMICALS CORPORATION
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Defendant
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REASONS FOR ORDER
AND ORDER
[1]
This
is a motion by the defendant for attendance at tests and experiments that the
plaintiffs propose to conduct in support of their action. The plaintiffs’
action is scheduled for January 2013 and alleges that the defendant infringed
their Canadian Patent No. 2,160,705 (the ‘705 Patent).
[2]
In its amended notice of motion, the defendant sought the
following:
1. An order that
the plaintiffs (Dow) shall permit experts retained by the defendant (Nova) to
attend the testing and experiments that Dow intends to rely on at trial;
2. An order that Dow
provide Nova with samples of all fractions it obtains from its pTREF
experiments to be relied on at trial in quantities sufficient for Nova’s experts
to conduct their own comparative analysis of the experiments performed by Dow;
3. An order that Dow
provide Nova with samples of half the product made during each experiment Dow
conducts at its mini-plant facilities in Terneuzen, The Netherlands, to be
relied on at trial; and
4. An order granting
Nova leave to file the reply affidavits of Dr. Francis M. Mirabella, Dr.
Charles Stanley Speed and Gary F. Matz, all sworn on December 7, 2011, in
support of this motion.
5. Nova’s costs of
this motion; and
6. Such further and
other relief as this Honourable Court may deem just.
Background
[3]
This
motion concerns an action by the plaintiffs alleging that some of the
defendant’s SURPASS and other polyethylene products infringe the plaintiffs’
‘705 Patent. The defendant denies infringement and is counterclaiming for a
declaration that the ‘705 Patent is invalid and for other relief. The statement
of claim was filed on December 9, 2010 and the action is scheduled to be heard
in January 2013. Since February 16, 2011, the action has proceeded under case
management with Prothonotary Milczynski serving as the Case Management Judge.
[4]
This
particular motion pertains to the plaintiffs’ testing for infringement of product
samples and a sample of polymer catalyst provided to them by the defendant in
September 2011. The defendant stated that it provided these samples on the
condition that its independent expert witness would be permitted to attend and
monitor the tests. The plaintiffs plan to conduct two separate experiments with
the samples.
[5]
First,
to show component (B) of the patent suit claim, the plaintiffs plan to
fractionate the defendant’s polymers using a procedure known as preparatory
temperature rising elution fractionation (referred to as pTREF or prep-TREF)
and to perform tensile and other tests on the fractions produced. The
plaintiffs propose to conduct these tests at their facilities in Freeport, Texas.
[6]
Second,
to show component (A) of the patent suit claim, the plaintiffs plan to
manufacture replicas of a component of the defendant’s impugned polymers using
the catalyst sample. This is necessary as the defendant has advised that
samples of the polymer made in its first reactor are not available. The plaintiffs
plan to use the replicas in tests to prove that a similar component in the
defendant’s products has certain claimed properties. The plaintiffs propose to
conduct this work at their facilities in Terneuzen, The Netherlands.
[7]
Based
on safety and privacy concerns at their facilities, the plaintiffs refuse to
allow the defendant’s independent expert witnesses to attend the testing and
experimentation. The plaintiffs have instead proposed to provide the defendant
with a video of the experiments and information such as the raw data generated
during the procedure. For the reproduction work in Terneuzen, the plaintiffs
have proposed to provide a protocol, process data and samples of the products
made.
[8]
On
October 4, 2011, the parties held a case management conference with the Case
Management Judge to discuss the issue of admissibility of the testing. At this
conference, the Case Management Judge directed the defendant to bring this
motion before a Judge.
Issues
[9]
The
defendant submits the following point at issue:
Whether experts retained by
the defendant should be permitted to attend the tests and experiments that the
plaintiffs intend to rely on at trial.
[10]
I
would rephrase the issues as follows:
1. Should the
defendant be granted leave to file reply affidavits pursuant to Rule 312?
2. Should experts
retained by the defendant be permitted to attend tests and experiments that the
plaintiffs intend to rely on at trial?
Defendant’s Written Submissions
[11]
The
defendant submits that it provided product samples and a quantity of polymer
catalyst on the basis that its independent expert witnesses would be permitted
to attend and monitor the tests. The defendant submits that it is the practice
of this Court that both parties attend all tests and experiments that are relied
on at trial. This practice is intended to ensure fairness between the parties
and to ensure that the Court has evidence from both sides about the tests that
are conducted. It also ensures that the evidence before the Court is complete
and meaningful.
[12]
The
defendant submits that excluding its experts will prejudice its ability to
adequately monitor the plaintiffs’ experimental work and fully respond to the
plaintiffs’ experimental evidence at trial. The defendant has had a pTREF
expert review the plaintiffs’ pTREF protocol. This expert opinioned that a
video link would not suffice to determine whether the procedure is properly
carried out and he must therefore attend in person. The defendant also notes
that the plaintiffs have changed their position on the video stream; rather
than providing a live video stream, the plaintiffs are now proposing to only
provide a recorded video of the pTREF operations. This amplifies the importance
of having its expert in attendance to inspect the equipment and observe the experiments.
[13]
The
defendant also notes that the plaintiffs did not originally provide any
protocol for the planned reproduction work in Terneuzen. In their responding
and sur-reply evidence, the plaintiffs provided a list of information that they
intend to provide to the defendant. The defendant therefore retained an expert,
Dr. Charles Stanley Speed, to review this proposed information. In his
affidavit, Dr. Speed opinioned that this information was inadequate and an
expert observer would need to be personally present to properly understand and
comment on the experiments. In addition, to obtain a truly representative
sample of a reproduction made in the mini-plant, the defendant would need a
sample collected at appropriate intervals from the experiments, rather than a representative
sample of only a portion of each experiment. The defendant also notes that the
plaintiffs have not provided detailed designs of the equipment or information
on the planned operating conditions of the Terneuzen mini-plant.
[14]
The
defendant notes that in the previous U.S. litigation, the plaintiffs conducted
private testing of the defendant’s products and refused to disclose the
associated test results to the defendant for reason of privilege. This
heightens the need for the defendant’s experts to attend here.
[15]
The
defendant submits that the plaintiffs’ privacy concerns are unwarranted as the
existing protective order covers independent experts. The defendant submits
that the plaintiffs have previously given outside experts access to their pTREF
facilities under the terms of a confidentiality agreement. The plaintiffs’ own
witnesses testified on cross-examination that the plaintiffs have policies and
procedures in place for visitation of their facilities by outside people.
[16]
Further,
the defendant notes that only the plaintiffs have the specialized equipment
with the processing capacity necessary to complete the proposed pTREF work
before the trial date. It will take the plaintiffs six months to conduct the
pTREF testing. On the defendant’s equipment, it will take four times as long to
replicate these tests. As such, the defendant would be unable to replicate the
plaintiffs’ tests before trial and would thereby be unable to adequately
contest the plaintiffs’ results.
[17]
In
the alternative, there are at least two independent, third-party facilities
available where the plaintiffs could conduct the pTREF experiments without
exposing their laboratory. Although one of these facilities has recently
advised that it does not wish to be involved in the litigation, the experiments
can still be carried out at the remaining facility.
[18]
The
defendant also submits that the plaintiffs’ safety concerns are unwarranted.
Any of the defendant’s experts in attendance at either test will be very
familiar with the necessary safety precautions that are typical of chemical
plant operations. These concerns therefore do not justify excluding the
defendant’s experts.
[19]
Finally,
the defendant requests under Rule 312 of the Federal Court Rules,
SOR/98-106, that leave be granted for it to file the reply affidavits of Dr.
Francis M. Mirabella, Dr. Charles Stanley Speed and Gary F. Matz, all sworn on
December 7, 2011. The defendant submits that these affidavits address new
matters raised in the plaintiffs’ responding evidence and are directly relevant
to the issues on this motion.
[20]
For
example, Dr. Mirabella’s evidence addresses a previously undisclosed trailer
video, the plaintiffs’ change in position from providing a live video link to
merely providing a video recording of the pTREF operations and the recently
revealed fact that there is no automated sample collection in the plaintiffs’
pTREF operations. Dr. Speed’s evidence addresses the information that the
plaintiffs propose to provide on its planned operations at Terneuzen. Prior to
filing the responding evidence, the plaintiffs had not provided any information
on these operations that could be meaningfully commented on. The affidavit of
Gary Matz replies to the allegation in the plaintiffs’ responding evidence that
the defendant had not complained about the sufficiency of information on the
plaintiffs’ catalyst synthesis in the U.S. proceedings.
[21]
The
defendant submits that the filing of these affidavits will not cause any
prejudice to the plaintiffs who cross-examined all three individuals and
provided sur-reply evidence in response. Conversely, the defendant would be
seriously prejudiced if left without a response to the plaintiffs’ new
evidence.
Plaintiffs’ Written Submissions
[22]
The
plaintiffs submit that the equipment used for this trial testing and the
methodologies followed are well known to those skilled in the art and are
commonly used in the industry.
[23]
The
plaintiffs submit that they are prepared to provide the defendant with detailed
protocols, samples, video, process conditions and analytical data to fully
outline the trial testing and the nature of the products made by such testing.
They are also willing to have technicians involved in the testing attend at
trial to answer any questions on how the protocols were followed. This
information is more than sufficient to understand what steps will be followed in
the testing and to evaluate the results. Attendance at the experiments will not
provide any additional information. The plaintiffs highlight that the video it
has committed to providing will provide visual information on the specific
equipment and its arrangement and the manner in which the plaintiffs handle the
equipment and samples at various stages of testing.
[24]
The
plaintiffs submit that as the trial testing is expected to span over four and a
half months, the defendant’s presence at the plaintiffs’ laboratories during
trial testing would disrupt the regular functioning of these laboratories and
require the plaintiffs to cease operation of all research and development (R&D)
projects in those laboratories during this time. This would highly prejudice
the plaintiffs’ business.
[25]
The
plaintiffs submit that the trial testing procedures are standard procedures
that have been used by the plaintiffs on numerous projects for several years.
There is therefore no basis to suggest that contamination or errors will occur.
Further, the analytical data and samples that the plaintiffs are willing to
provide to the defendant will allow it to determine whether any such
contamination or errors did occur. In addition, the defendant has access to its
own SURPASS products and can therefore conduct its own tests to evaluate the
plaintiffs’ results. In support, the plaintiffs highlight the defendant’s own
admission that it intends to conduct its own tests.
[26]
Further,
the plaintiffs submit that the parties have already been involved in litigation
in the U.S. regarding the same subject matter as is at issue in this action. In
the U.S. action, the plaintiffs were awarded over $61 million in damages. The
same procedures and equipment were used for testing in the U.S. action. The plaintiffs highlight that although the defendant’s experts critiqued the
substance of the testing in the U.S. action, the defendant did not make any
complaints as to the sufficiency of the information provided on the protocols
and procedures followed there.
[27]
The
plaintiffs submit that there is no suitable alternative site for them to
conduct the pTREF and polymer reproduction work. Equipment available at third
party facilities is much smaller than the pTREF apparatus at the plaintiffs’ Freeport facility. Similarly, the continuous solution mini-plant in Terneuzen has the
capacity to produce a sufficient amount of polymer to conduct a variety of
polymer analytical and physical testing.
[28]
The
plaintiffs submit that the defendant’s request for attendance is invasive as it
presents a significant security and safety concern and compromises the
plaintiffs’ competitive position in the polyolefin industry. The plaintiffs
highlight the non-portability of their pTREF apparatus. In addition, access to
this apparatus entails walking through a significant portion of the plaintiffs’
laboratory where confidential projects, unrelated to this case, are underway.
The plaintiffs submit that it would entail significant mitigative efforts on
their part to cease operation of equipment used in other projects, conceal them
and provide an escort to the defendant or their expert representative(s) during
testing. This is exacerbated by the fact that different phases of testing would
be conducted in different R&D labs within the Freeport Polymer Centre. As
such, any observer would require uninhibited access to several locations,
further reducing the plaintiffs’ R&D and analytical functions associated
with other unrelated projects.
[29]
The
plaintiffs also highlight that the defendant’s expert, Dr. Mirabella, is not
truly independent. The plaintiffs note that Dr. Mirabella has consulted
exclusively for the defendant since early 2009. Further, this expert admitted
on cross-examination that he had not identified any deficiencies in the
information provided and that he had not considered the use of the video and
whether this approach would be sufficient.
[30]
The
plaintiffs submit that the Federal Court Rules do not require that a
party give notice of testing or experiments it intends to rely on at trial, nor
that an opposing party must be permitted to attend such testing or
experimentation. Rather, the Court has mandated notice and attendance at
testing simply as a way to ensure that each party has sufficient knowledge to
allow cross-examination of the results.
[31]
The
plaintiffs submit that for the defendant to be entitled to attend their
premises, it would have to satisfy Rule 249 of the Federal Court Rules,
which provides that an inspection may only be ordered where “the Court is
satisfied that it is necessary or expedient for the purpose of obtaining
information or evidence in full”. The plaintiffs cite PJ Wallbank
Manufacturing Co v Kuhlman Corp, (FCA) [1981] 1 FC 645, [1980] FCJ No 190,
a decision on the predecessor of Rule 249, where they submitted a request to
inspect a party’s premises which was rejected because it involved a serious
intrusion on the opposing party’s premises, posed a danger of irreparable harm
from the discovery of the opposing party’s know-how to a business competitor
and was not the only means by which it could be ascertained whether there was
actual infringement. These are similar to the plaintiffs’ concerns in this
case.
[32]
The
plaintiffs also highlight that the defendant filed no evidence on the testing
at the Terneuzen facility with its motion. This issue should therefore fail
outright for lack of evidence. The two affidavits that the defendant has since
filed (from Gary Matz and Dr. Speed) were filed contrary to the general
principles of reply evidence and should thus be excluded.
[33]
Finally,
the plaintiffs submit that the position taken by the defendant on this motion
is more about delaying the proceeding than based on any necessity for further
information. The plaintiffs highlight that the defendant has not established
any necessity for its attendance at the plaintiffs’ premises during testing.
Attendance of the defendant’s experts would be highly invasive and disruptive
to the plaintiffs. It is also not proportional to the concerns raised and would
be more extensive than the attendance of the plaintiffs’ own experts directing
the experiments. As such, the plaintiffs request that this motion be dismissed.
Analysis and Decision
[34]
Issue
1
Should the defendant be
granted leave to file reply affidavits pursuant to Rule 312?
Rule 312 of the Federal
Court Rules governs whether leave should be granted to file additional
affidavits. In this case, the defendant seeks leave to file affidavits from
Gary F. Matz, Dr. Francis M. Mirabella and Dr. Charles Stanley Speed, all sworn
on December 7, 2011.
[35]
The
test for determining whether reply evidence may be filed has four components
(see Merck-Frosst - Schering Pharma GP v Canada (Minister of Health), 2009
FC 914, [2009] FCJ No 1092 at paragraph 10; and Pfizer Canada Inc v Canada
(Minister of Health), 2007 FC 506, [2007] FCJ No 681 at paragraph 7):
1. whether the reply
evidence serves the interests of justice;
2. whether the reply
evidence assists the Court in making its determination on the merits;
3. whether granting
the motion will cause substantial or serious prejudice to the other side; and
4. whether the reply
evidence was available and/or could not be anticipated as being relevant at an
earlier date.
[36]
The
fourth component has two parts. First, the proposed evidence must be properly
responsive to the other party’s evidence. As Mr. Justice Russel Zinn explained
in Merck-Frosst - Schering Pharma above, at paragraph 23:
[…]
It is responsive if it is not a mere statement of counter-opinion but provides
evidence that critiques, rebuts, challenges, refutes, or disproves the opposite
party's evidence. It is not responsive if it merely repeats or reinforces
evidence that the party initially filed. […]
[37]
Second,
evidence that could earlier have been anticipated as relevant is not proper
reply evidence as the party proposing to file it is splitting his case (see Merck-Frosst
- Schering Pharma above, at paragraph 25).
[38]
More
recently, Mr. Justice David Near summarized the case law on Rule 312 as follows
(see Canada (Attorney General) v United States Steel Corp, 2011
FC 742, [2011] FCJ No 930 at paragraph 16):
[…]A
party must always put its best case forward at the first opportunity. A party
will be granted leave pursuant to Rule 312 where the evidence to be adduced
will serve the interests of justice, assist the Court, not cause substantial or
serious prejudice to the other side, and was not available prior to the
cross-examination of the opponent's affidavits (Atlantic Engraving Ltd v
Lapointe Rosenstein, 2002 FCA 503, 299 NR 244 at paras 8 and 9).
Additionally, the party seeking to introduce new evidence must show that its
introduction will not unduly delay the proceeding (Janssen-Ortho Inc v
Apotex Inc, 2010 FC 81 at para 33).
[39]
Further,
judges should exercise their discretion under Rule 312 in a flexible manner (see
United States Steel Corp above, at paragraph 33).
[40]
In
this case, there are three contentious affidavits. It is notable that all three
witnesses were cross-examined by the plaintiffs between December 15, 2011 and
January 10, 2012.
[41]
The
first affidavit was sworn by Gary F. Matz, the defendant’s senior intellectual property
counsel. Mr. Matz briefly replied to the comment made by one of the plaintiffs’
experts that in the U.S. proceedings, the defendant had not complained about
the sufficiency of information provided to it on the plaintiffs’ catalyst
synthesis. This evidence essentially expands on the defendant’s submission in
their original written representations (filed on November 18, 2011) that the
plaintiffs had conducted testing without the defendant having an opportunity to
monitor them and without seeing the results. I find that this affidavit both
serves the interests of justice and assists the Court in making a determination
on the merits. As it merely rebuts the plaintiffs’ evidence, I do not find that
it will cause substantial or serious prejudice to them.
[42]
The
second affidavit was sworn by Dr. Francis M. Mirabella, the defendant’s
independent expert. Dr. Mirabella commented on: the trailer video and
description of equipment included in one of the affidavits filed by the
plaintiffs; the plaintiffs’ change in position from providing a live video link
to a video recording of portions of the experiments; the sample collection
mechanism of the pTREF apparatus; and the plaintiffs’ assertion that the
attendance of the defendant’s witnesses would be invasive.
[43]
Similar
to Mr. Matz’s comments, I find that these comments critique, rebut and
challenge the plaintiffs’ evidence. They differ from those comments made by Dr.
Mirabella in his earlier affidavit and pertain to matters that could not have
been anticipated as being relevant before the plaintiffs filed their evidence.
This is particularly true with respect to the trailer video, proposed video
link and sample collection mechanism; information that was not provided until
the plaintiffs filed their evidence. I find that Dr. Mirabella’s comments serve
the interests of justice and assist this Court in making its determination on
the merits.
[44]
The
third affidavit was sworn by Dr. Charles Stanley Speed, a retired ExxonMobil
scientist retained by the defendant. Dr. Speed responded to matters raised in
the plaintiffs’ affidavits on the planned Terneuzen experiments. The defendant
submits that prior to filing their affidavits, the plaintiffs had not provided
any details on the information they proposed to provide for this work that the
defendant could meaningfully comment on. In his affidavit, Dr. Speed rebutted
the assertions made by the plaintiffs’ experts that the information they
planned to provide was sufficient to properly understand and comment on the
experiments. Dr. Speed highlighted various observations that would not be
captured in the information that the plaintiffs proposed to provide, thereby
necessitating first hand observation. I find that as the plaintiffs had not
previously provided this information, these comments could not have been made
at an earlier date.
[45]
In
summary, I find that leave should be granted to file the defendant’s three
reply affidavits. This evidence will assist the Court in making its
determination on the merits. As the affidavits all comment on evidence filed by
the plaintiffs and as the plaintiffs have had the opportunity to cross-examine
all three individuals, I do not find that granting leave will cause substantial
or serious prejudice to the plaintiffs. Rather, the filing of this evidence
will serve the interests of justice and should therefore be allowed.
[46]
Issue
2
Should experts retained
by the defendant be permitted to attend the tests and experiments that the
plaintiffs intend to rely on at trial?
The defendant submits that
it is the practice of this Court not to accept a party’s evidence of tests and
experiments where notice and an opportunity to attend have not been granted to
the opposing party. In support, the defendant cites Halford v Seed Hawk Inc,
2001 FCT 1154, [2001] FCJ No 1631. In Halford above, one of the issues
raised by the defendants pertained to an affidavit filed by the plaintiff that
included paragraphs regarding an experiment conducted in the absence of the
defendants’ representatives (at paragraphs 8 and 10). Mr. Justice Denis Pelletier
cited the older case of Omark Industries (1960) Ltd v Gouger Saw Chain Co [1965]
1 ExCR 457, 45 CPR 169, which states at paragraph 204:
There
is no question that the practice in this Court seems to have been that evidence
of tests and experiments conducted pendente lite without notice being given to
the other side and an opportunity to attend should not be considered and I
believe that this is a salutary rule. I might also add that in any event tests
and experiments conducted even before the trial in the presence of the other
party are much more probative than if conducted ex parte.
[47]
Based
on this jurisprudence, Justice Pelletier held that the tests conducted in the
absence of the defendants’ representatives were inadmissible (see Halford
above, at paragraph 37).
[48]
Similarly,
again relying on Omark above, Mr. Justice W. Andrew MacKay ruled in Merck
& Co v Apotex Inc, 88 FTR 260, [1994] FCJ No 1898 that testing
conducted solely by one party should not be admitted. Justice MacKay explained
(at paragraph 127):
I
did so on the general principles evolved in the practice of this Court in relation
to testing, whether before or during trial, which are intended to ensure
fairness as between the parties and to ensure that the Court has evidence from
both sides about tests conducted.
[49]
Conversely,
the plaintiffs submit that Merck & Co v Canada (Minister of Health),
2003 FC 1242, [2003] FCJ No 1565, stands for the proposition that notice and
attendance at testing is simply mandated as a way to ensure that each party has
sufficient knowledge to allow cross-examination of the results. However, this characterization
is not fully representative of the ruling in Merck (2003) above. In Merck
(2003) above, Prothonotary Mireille Tabib first noted that the finding of
inadmissibility of experiments conducted by a party who did not invite the
other side to attend and observe is a matter of the practice of the Court, not
a rule of evidence (at paragraph 8). Prothonotary Tabib explained that this
practice was (at paragraph 8):
[…]
designed to ensure both fairness between the parties and that the evidence
before the Court be complete and meaningful by avoiding the introduction of
test results which the opposing party cannot reasonably attack by way of
cross-examination because of insufficient knowledge as to the manner and
circumstances in which the experimentation was conducted.
[50]
Prothonotary
Tabib then explained that there is a fundamental difference between actions, where
full discovery is available and the summary procedure contemplated in the Patented
Medicines (Notice of Compliance) Regulations, SOR/93-133. Prothonotary
Tabib rejected the application of this practice of the Court to the summary
procedures (see Merck (2003) above, at paragraph 12). Conversely, for
actions, Prothonotary Tabib explained as follows (see Merck (2003)
above, at paragraph 10):
Where
full discovery is available, it is designed to allow the parties to fully
explore each other's case, to ensure that neither is taken by surprise at trial
and that they have an opportunity to present complete evidence at trial. A
practice of conducting tests in camera for presentation at trial is indeed to
be discouraged as defeating the purposes of discovery. […]
[51]
As
such, I find it is the practice of this Court to allow attendance of the
opposing party at testing conducted in support of the action, the results of
which are planned to be used at trial.
[52]
The
plaintiffs also raise other arguments to support their position, based on: use
of standard equipment and methodology; no alternative facility; provision of
extensive information to the defendant; safety concerns; and privacy concerns.
[53]
The
first two arguments conflict because if the equipment and methodology are
indeed standard, there would arguably be an alternative facility. Further,
although the defendant submits that there is one possible alternative facility,
the capacity of the plaintiffs’ facility coupled with the trial scheduling
suggests that it remains the most appropriate testing location.
[54]
As
to the provision of information, the defendant has filed extensive affidavit
evidence that speaks to the inadequacy of this information to fully understand
the testing and experimentation. I find this evidence persuasive.
[55]
With
regards to the safety concerns raised by the plaintiffs, I also agree with the
defendant that these concerns will be well understood by experts appointed to
oversee the testing and experimentation that have extensive experience working
in laboratory settings. Further, assuming that the plaintiffs operate their
facilities with appropriate due diligence, they will require any visitors to
participate in health and safety training before being permitted to enter their
premises. Any safety concerns unique to the plaintiffs’ facility would likely
be discussed at that time. I therefore do not find that the plaintiffs’ safety
concerns are warranted.
[56]
I
also do not find that the plaintiffs’ privacy concerns are warranted. As stated
by the defendant, all of its experts are covered under the protective order
issued by this Court. In addition, visitors to the plaintiffs’ facilities will
likely only be granted access under the terms of a confidentiality agreement.
[57]
Finally,
I do not agree with the plaintiffs that the defendant would have to satisfy
Rule 249 of the Federal Court Rules in order to be entitled to attend
their premises. In support of their position, the plaintiffs relied on PJ
Wallbank above. However, that case is distinguishable from the one at bar.
In PJ Wallbank above, the respondent sought to conduct an inspection of
the appellant's premises and its methods and machines to ascertain if
infringement was being committed. This intention differs from the case at bar
where the defendant seeks to have its experts in attendance to oversee the
testing and experimentation that the plaintiffs plan to rely on at trial. I do
not find this falls within the scope of an “inspection” being made of the
facilities, as provided under Rule 249.
[58]
In
summary, I find that it is a practice of this Court not to accept a party’s
evidence of tests and experiments where notice and an opportunity to attend
have not been given to the opposing party. I do not find that the plaintiffs
have raised sufficient arguments to counter this general practice. Therefore,
the relief sought by the defendant in paragraphs 1 and 4 of its amended notice
of motion should be granted.
[59]
In
paragraphs 2 and 3 of its amended notice of motion, the defendant also requests
samples of all fractions obtained by Dow and samples of half the product made
by Dow at its mini-plant in Terneuzen, The Netherlands. I see no reason why Dow
should not provide these samples mentioned in paragraph 3. However, I would
note the claim made in oral argument by Dow’s counsel that the samples sought
in paragraph 2 of the relief in the amended notice of motion cannot be provided
as it is impossible to provide these samples. This issue was not addressed in
any great detail before me. Consequently, I will not make a decision on this
relief at this time, but will retain jurisdiction to deal with it if either of
the parties believe that it needs be dealt with. In such a case, I would also
entertain further submissions from the parties.
[60]
The
relief sought by the defendant in paragraph 3 is granted. The relief sought by
paragraph 2 will be deal with as outlined in paragraph 59.
[61]
The
defendant shall have its costs of this motion.
ORDER
THIS
COURT’S ORDER is that:
1. The relief
sought by the defendant in paragraphs 1, 3 and 4 of its amended motion is
granted.
2. The relief sought
by the defendant in paragraph 2 of the amended motion is to be dealt with as
outlined in paragraph 59 of these reasons.
3. The defendant
shall have the costs of this motion.
“John A. O’Keefe”
ANNEX
Relevant
Statutory Provisions
Federal Courts Rules, SOR/98-106
|
249. (1) On
motion, where the Court is satisfied that it is necessary or expedient for
the purpose of obtaining information or evidence in full, the Court may
order, in respect of any property that is the subject-matter of an action or
as to which a question may arise therein, that
(a) a
sample be taken of the property;
(b) an
inspection be made of the property; or
(c) an
experiment be tried on or with the property.
. . .
312. With
leave of the Court, a party may
(a) file
affidavits additional to those provided for in rules 306 and 307;
(b) conduct
cross-examinations on affidavits additional to those provided for in rule
308; or
(c) file
a supplementary record.
|
249. (1) La
Cour peut, sur requête, si elle l’estime nécessaire ou opportun pour obtenir
des renseignements complets ou une preuve complète, ordonner à l’égard des
biens qui font l’objet de l’action ou au sujet desquels une question peut y
être soulevée :
a) que
des échantillons de ces biens soient prélevés;
b) que
l’examen de ces biens soit effectué;
c) que
des expériences soient effectuées sur ces biens ou à l’aide de ceux-ci.
. . .
312. Une
partie peut, avec l’autorisation de la Cour :
a) déposer
des affidavits complémentaires en plus de ceux visés aux règles 306 et 307;
b) effectuer
des contre-interrogatoires au sujet des affidavits en plus de ceux visés à la
règle 308;
c) déposer
un dossier complémentaire.
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