Date: 20060316
Docket: T-426-04
Citation: 2006 FC 348
Montréal, Quebec, March 16,
2006
PRESENT:
RICHARD MORNEAU, PROTHONOTARY
BETWEEN:
SHMUEL
HERSHKOVITZ
SYSTÈMES DE SÉCURITÉ
PARADOX LTÉE/
PARADOX SECURITY
SYSTEMS LTD.
and
PINHAS SHPATER
Plaintiffs/
Defendants by
Counterclaim
and
TYCO SAFETY
PRODUCTS CANADA LTD.
Defendant/
Plaintiff by
Counterclaim
REASONS FOR ORDER AND ORDER
[1]
UPON a motion made by the defendant and
plaintiff by counterclaim (defendant Tyco) under Rule 97 of the Federal
Courts Rules (the Rules) seeking an order for plaintiff Paradox’s
representative, Mr. Pinhas Shpater, to return to Canada at his own expense to
reply to the six questions contained in Schedule A, attached to the motion (the
Schedule A questions) as well as any other questions that may reasonably arise
from his replies to the Schedule A questions and any questions that may
reasonably arise from the replies to undertakings that were filed on
January 31, 2006;
[2]
GIVEN that defendant Tyco counterclaimed against
the disclaimers filed in Canada by Paradox on October 6, 2003, on the
grounds, inter alia, that these disclaimers were filed after the
deadline and furthermore were not the result of an error;
[3]
GIVEN that Paradox, in its reply to this
counterclaim, denied the grounds upon which defendant Tyco based its challenge
and argued that its disclaimers were valid;
[4]
GIVEN that Paradox and defendant Tyco both refer
to the American file wrappers of patent ‘803 and the application for reissue of
said patent (the file wrappers) to support their respective positions
concerning the disclaimers;
[5]
GIVEN that the file wrappers were referred to in
the plaintiffs’ affidavit of documents, that they were given to Tyco and that
they were the subject of questions, often questions to which no objections were
raised, at least during Mr. Shpater’s examination in November 2005;
[6]
GIVEN that at this stage of Mr. Shpater’s
examination in chief, the Schedule A questions must be considered relevant
in that the responses that might arise from them could foreseeably be used to
support or undermine the parties’ theory of a purported error and delay by
Paradox in the filing of the disclaimers in October 2003;
[7]
GIVEN that we should not focus too much at this
stage on the positions that Paradox could possibly raise successfully during
the hearing on the merits. With respect to the deadline issue, Paradox’s
position may be summarized as follows: it was not until April 2003, as opposed
to May 2000, that Paradox fully understood the scope of the prior art disclosed
on January 14, 2000, by defendant Tyco, and it was only then that it
took action with the American authorities, and with the Canadian authorities in
October 2003, to limit the relevant claims with respect to that prior art. As
for the claims concerning the method, Paradox plans to submit at the hearing on
the merits that there was nothing in the relevant background to lead Paradox to
believe as early as July 2002, much less on June 17, 1999, when the
divisional application ‘148 was filed, that said application ‘148 required any
amendment;
[8]
GIVEN the principles developed by this Court in Reading
& Bates Construction Co. et al. v. Baker Energy Resources Corp. et al.
(1988), 24 C.P.R. (3d) 66, at pages 70-72, where the following point, inter
alia, is raised:
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,
[1976] 1 W.W.R. 644 (B.C.S.C.); and Compagnie Financière et Commerciale du
Pacifique v. Peruvian Guano Co. (1882), 11 Q.B.D.
55 (C.A.).
(Emphasis added.)
[9]
GIVEN that the Court is of the opinion that it
would be fair and reasonable to direct Mr. Shpater to come to Canada, at
his own expense, for the continuation and conclusion of his examination in
chief;
ORDER
THE COURT:
·
ORDERS that the motion of the defendant and plaintiff by
counterclaim be allowed with costs;
·
ORDERS Mr. Shpater to return to Canada at his own expense to reply to the six questions contained in Schedule A, attached to
the motion (the Schedule A questions) as well as any other questions that may
reasonably arise from his replies to the Schedule A questions and any questions
that may reasonably arise from the replies to undertakings that were filed on
January 31, 2006.
·
ENJOINS the parties, as discussed at the hearing of March 13,
2006, to proceed and complete this exercise as expeditiously as possible and,
once this is done, to provide the Court with a draft order containing a jointly
agreed-upon schedule with regard to the steps that remain to be completed in
the docket.
“Richard Morneau”
Certified
true translation
Francie
Gow
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