Date: 20100608
Dockets:
A‑466‑09
A‑467‑09
Citation:
2010 FCA 142
CORAM: BLAIS C.J.
LÉTOURNEAU J.A.
PELLETIER J.A.
BETWEEN:
BELL HELICOPTER TEXTRON CANADA LIMITED
Appellant
and
EUROCOPTER
(Simplified
Joint Stock Company)
Respondent
REASONS FOR JUDGMENT
BLAIS C.J.
INTRODUCTION
[1]
These are two appeals of orders by Madam
Justice Tremblay‑Lamer (the judge), on November 9, 2009 (2009
FC 1141 and 2009 FC 1142), in which she allowed in part the respondent’s
appeals of two orders by Prothonotary Morneau (the prothonotary), dated
August 8 and October 8, 2009 (2009 FC 836 and 2009 FC 1021),
respectively. The prothonotary allowed the appellant’s objections to certain
questions asked during the examination for discovery of its representative.
RELEVANT
FACTS
[2]
This appeal is made in the
context of a dispute concerning a helicopter skid landing gear assembly for
which Eurocopter holds patent 2,207,787 (Patent 787).
[3]
According to Eurocopter,
this landing gear assembly boasts numerous improvements which make it lighter
and eliminate certain mechanisms related to the ground resonance phenomenon.
[4]
On May 9, 2008,
Eurocopter commenced an action for infringement of its Patent 787 against
Bell Helicopter Textron Canada Limited (hereafter Bell Helicopter or the
appellant).
[5]
In its statement of claim in
support of its action, Eurocopter contended, among other things, that Bell
Helicopter had committed patent infringement by installing a landing gear
assembly identical to the one protected by Eurocopter’s patent on a helicopter
that Bell Helicopter manufactures and sells in Canada, the Bell 429.
[6]
It was therefore in the
course of proceedings related to that action for infringement that a
representative of Bell Helicopter was examined twice, on June 10, 11 and
12 and August 25, 2009, respectively. During the examinations, the appellant objected to the
questions asked, which led to the subsequent decisions made by the prothonotary
and the judge.
ANALYSIS
[7]
In his order dated
August 18, 2009, the prothonotary set forth the general principles he
relied on to reach his conclusions. He relied on those same principles in his subsequent order
dated October 8, 2009.
[8]
Since the prothonotary
grounded his reasoning in the principles regarding the relevance of questions
set out by Justice McNair in Reading & Bates Construction Co. et
al. v. Baker Energy Resources Corp. et al. (1988), 24 C.P.R. (3d) 66 (Reading
& Bates), it is important to note that Justice McNair first took
care, at paragraph 8 of his decision, to clarify the purpose of
examinations for discovery, as follows:
8 The purpose of
discovery, whether oral or by production of documents, is to obtain admissions
to facilitate proof of all the matters which are relevant and properly in issue
between the parties.
The prevailing trend today favours broadening the avenues of fair and full
disclosure to enable the party to advance his own case or to damage the case of
his adversary. Discovery can serve to bring the issues more clearly into focus,
thus avoiding unnecessary proof and additional costs at trial. Discovery can
also provide a very useful tool for purposes of cross‑examination.
[9]
At paragraph 8 of the first order, the
prothonotary reproduced the six principles set out by Justice McNair
regarding the relevance of questions.
[10]
For the purposes of this decision,
principles 1, 2 and 3, excerpted from paragraph 11 of Reading
& Bates, are particularly appropriate:
1. The test as to what documents are
required to produce 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
International (1987), 13 C.P.C. (2d) 150 (Ont. H.C.); Canex Placer Ltd.
v. A.‑G. B.C. (1976) 63 D.L.R. (3d) 282 (B.C.S.C.); and Compagnie
Financière 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.), aff’d (1984), 1 C.P.R. (3d) 242 (F.C.T.D.).
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. . . .
[11]
Quoting from Faulding
Canada Inc. v. Pharmacia S.p.A. (1999), 3 C.P.R. (4th) 126 and
Rule 242 of the Federal Courts Rules on objections to questions in
an examination for discovery, the prothonotary reiterated the need to maintain
a balance between the broadest possible examinations for discovery and the
fishing expeditions some parties engage in, particularly in the field of
intellectual property, which the Court should not encourage.
[12]
In addition, the
prothonotary relied on Philips Export B.V. v. Windmere Consumer Products
Inc., (1986) 8 C.P.R. (3d) 505 to state that [translation] “a party cannot be required in an examination
for discovery to answer a question that forces the party to express
. . . an expert opinion, its interpretation of a patent or its
beliefs”. (Prothonotary’s
Order, 2009 FC 836, paragraph 13)
[13]
Although the general
principles established in the case law are useful, they do not provide a magic
formula that is applicable to all situations. In such matters, it is necessary to follow the case‑by‑case
rule.
[14]
Moreover, I believe it is useful to note the
remarks of Justice Hugessen in Montana Band v. Canada, [2000] 1
F.C. 267 at paragraph 5:
[5]The general purpose of examination for discovery is
to render the trial process fairer and more efficient by allowing each party to
inform itself fully prior to trial of the precise nature of all other parties’
positions so as to define fully the issues between them. It is in the interest
of Justice that each party should be as well informed as possible about
the positions of the other parties and should not be put at a disadvantage by
being taken by surprise at trial. It is sound policy for the Court to adopt a
liberal approach to the scope of questioning on discovery since any error on
the side of allowing questions may always be corrected by the trial judge who
retains the ultimate mastery over all matters relating to admissibility of evidence;
on the other hand any error which unduly restricts the scope of discovery may
lead to serious problems or even injustice at trial.
[15]
In my opinion, the very purpose of examinations
for discovery weights in favour of broad flexibility in examination and the
production of documents.
[16]
It is therefore in light of the above that we
must consider the prothonotary’s orders regarding the questions that are the
subject of this appeal and the merits of the judge’s subsequent intervention.
[17]
As mentioned above, the nature of the
prothonotary’s decisions in those files is not in issue. They are
interlocutory, discretionary decisions. Consequently, the judge had to restrict
her intervention to the standard set forth in Canada v. Aqua‑Gem
Investments Ltd. (C.A.), 1993 CanLII 2939 (F.C.A.), [1993] 2 F.C. 425, and
reformulated in Merck & Co., Inc. v. Apotex Inc., 2003 FCA 488
(CanLII), 2003 FCA 488 (Merck v. Apotex).
[18]
Therefore, in this case, the judge ought not to
disturb the orders unless “they 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”. (according to Merck v. Apotex)
[19]
In my opinion, in the circumstances, the judge’s
intervention was partly warranted.
[20]
Regarding questions 5 to 10 and 12 to 14 in
file A‑466‑09, the prothonotary deemed them to be questions
that forced the witness to [translation]
“express an opinion, be it an expert opinion, [his] interpretation of a patent
or [his] beliefs”. (Prothonotary’s Order, 2009 FC 836, paragraph 13)
[21]
The prothonotary agreed with Bell’s contentions that the terms used in
the questions asked elicited an interpretation of the claims of Patent 787
and required expert evidence.
[22]
In fact, the questions asked, although dealt out
piecemeal, referred specifically and generally to the terms and phrases found
in the patent and particularly in its description at page 15.
[23]
In my opinion, the interpretation and the scope
of the patent are questions for the trial judge to decide, who could benefit
from expert opinions at that time. Those questions are clearly the domain of
experts, and the prothonotary was correct to sustain the objections made.
[24]
The judge made an error of law in overturning
the prothonotary’s decision. This Court must therefore intervene and restore
his decision.
[25]
Regarding questions 17, 18 and 19 in
file A‑466‑09, I believe that the judge’s intervention was
warranted. The purpose of those questions was to verify whether, in using the
landing gear configuration claimed in Patent 787, Bell Helicopter had been
able to remove the dampers and shock absorbers, two mechanisms designed to
eliminate the ground resonance phenomenon. The judge considered those questions
to be relevant and, in so doing, was not clearly wrong in setting aside the
prothonotary’s decision.
[26]
With regard to the other questions in issue,
that is, questions 24 and 25 in file A‑466‑09 and
questions 22, 24, 25 to 27, 28, 61, 64 to 66 and 76 in file A‑467‑09,
all of those questions relate to documentation and belong to two broad
categories: the documents provided to Transport Canada and the internal
documents related to development and tests carried out on Bell Helicopter’s
landing gear assemblies.
[27]
In general, the prothonotary agreed with Bell
Helicopter’s position on the irrelevance of those questions and the documents
that related to them. In particular, he took Bell Helicopter’s submissions at
face value, that is, primarily that the information was not relevant to the
issue of infringement, that the respondent was engaging in a fishing expedition
by asking those questions and that the documents sent to Transport Canada could not contain relevant
information.
[28]
In setting aside the prothonotary’s decision on
those questions, with the exception of question 61, the judge found that [translation] “the test information and
the correspondence between Bell and Transport Canada are relevant
. . . to show that the new landing gear of the Bell 429 ‘would
perform substantially the same function in substantially the same way to obtain
substantially the same result’ as that described by patent ’787”.
(Decision 2009 FC 1141, paragraph 10)
[29]
Furthermore, she found that the documents
related to the development of the landing gear assembly within Bell
Helicopter’s research program were also relevant because that program had led
to the development of the Bell 429.
(Decision 2009 FC 1141, paragraphs 46‑47)
[30]
She dismissed Bell Helicopter’s argument that
the relevance of the documents should be appreciated in relation to the date of
publication of the patent, in accordance with the Supreme Court of Canada’s
decision in Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R.
1024, 194 D.L.R. (4th) 232.
[31]
According to the judge, [translation] “although it is necessary to establish that the
similarity would have been obvious on the date of publication of the patent,
the fact remains that the applicant must, before reaching that step, establish
that this similarity does exist”. (Decision 2009 FC 1141,
paragraph 10)
[32]
She therefore found that the prothonotary’s
decision regarding those questions was incorrect and that she had to intervene.
[33]
Like the judge, I am of the opinion that the
questions and documents would directly or indirectly enable the respondent to
advance its own case or to damage the case of its adversary. At a hearing,
where all of the exhibits, witnesses and relevant documents will have been
considered and taken into account, it will be up to the trial judge to
establish the degree of relevance that should be applied to the documents that
are the subject of this decision.
CONCLUSION
[34]
To conclude, I would allow
the appeal in part with regard to questions 5 to 10 and 12 to 14 in
file A‑466‑09 in the appellant’s favour, set aside the judge’s
decision on those questions and restore, in their regard, the order made by
Prothonotary Morneau. I would dismiss the appeal as to
the remainder, and order costs in the cause.
[35]
With regard to file A‑467‑09, I
would dismiss the appeal with costs.
“Pierre Blais”
“I agree.
Gilles Létourneau J.A.”
“I agree.
J.D. Denis Pelletier J.A.”
Certified true
translation
Sarah Burns
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