Fortier 2000 Ltée v. Matière, 2003 FC 1007

Date: 20030827

Docket: T-611-01

Citation: 2003 FC 1007

Montréal, Quebec, August 27, 2003

Present: Mr. Richard Morneau, Prothonotary

BETWEEN:

FORTIER 2000 LTÉE

Plaintiff

and

MARCEL MATIÈRE

Defendant

and

MARCEL MATIÈRE and

BÉTON PROVINCIAL LTÉE

Plaintiffs by Counterclaim

and

FORTIER 2000 LTÉE

Defendant to Counterclaim

REASONS FOR ORDER AND ORDER

RICHARD MORNEAU, PROTHONOTARY

[1]        In the instant case the Court has before it a motion by either party to decide objections to questions raised in the examination for discovery of the parties' representatives.

[2]        It should be noted at the outset that a question requires an answer in an examination for discovery if it is relevant to the points at issue between the parties, that is, if it is likely to directly or indirectly advance the case of either party or to damage it (Sydney Steel Corp. v. The Ship Omisalj (1992), 2 F.C. 193, at 197-8).

[3]        The gist of the issue between the parties may be stated as follows.

[4]        The plaintiff Fortier manufactures and sells several types of prefabricated vaults. These vaults are in the form of arches and have no revetment, that is, have no support platform, and in its submission do not form a cylindrical or tubular object.

[5]        The defendant Marcel Matière is the inventor and the holder of the Canadian patents in question.

[6]        In the plaintiff's submission, the patent claims apply especially to vaults with revetments, in the shape of a tube and/or with semi-cylindrical walls.

[7]        The plaintiff's position is that it is not infringing the patents at issue as its activities are clearly not covered by the patent claims, especially on account of the fact that the vaults it builds have no revetment and are not cylindrical or tubular, contrary to the descriptions contained in the patent claims. Further, the plaintiff maintained that its prefabricated vaults use aspects of the prior art which have been in the public domain for a very long time.

[8]        The plaintiff brought an action against the defendant Matière, inter alia, asking the Court to rule among other things that none of the patent claims cover the Fortier prefabricated vaults.

[9]        The defendant Matière filed his defence and a counterclaim together with Béton Provincial Ltée.

[10]      In January 2003, the Court allowed the plaintiff to amend its reply and cross-defence, to add conclusions regarding the invalidity of the claims in the patents as they purportedly related to aspects of prior art publicly disclosed in the past.

[11]      The Court must now consider the points still outstanding, proceeding category by category, and beginning with the plaintiff's motion.

Analysis

I.          Plaintiff's motion

[12]      The remaining questions or undertakings begin with category 3. In this regard, the plaintiff did not persuade the Court that these were clear undertakings by the defendant. Accordingly, I prefer to examine this category in terms of whether the questions raised have substantive merit.

[13]      Undertakings 19 and 20 in this category seek to determine whether a reading of the plaintiff's works by the defendant leads the latter to consider that the said works deal with a tube. Although these questions deal with the plaintiff's property, and the latter should know its products, and although they do have a technical aspect, it would seem that the defendant should answer them since they are still factual in nature and the defendant, who is the inventor in this instance, is able to answer them.

[14]      In Foseco Trading A.G. v. Canadian Ferro Hot Metal Specialties, Ltd. (1991), 36 C.P.R. (3d) 35, Reed J. had to determine the validity of a question seeking information of both a factual and technical nature. She said the following, at 52:

I have not been able to find, however, an articulation of the appropriate principle, in such a case as the present, where the information sought is technical in nature (and for that reason might be addressed in an affidavit of an expert witness), but is within the common knowledge of the plaintiff and where the question is of a factual nature although it can arguably be said to require an expression of opinion by the witness, in the sense that many expressions of "fact" require the expression of an "opinion". It is my conclusion that in such cases the principle to be applied is that the factual nature of the question takes precedence and the question should be answered.

[15]      However, as regards undertaking 21 in the same category 3, and the undertakings in category 4, the questions raised are much broader and more far-reaching than undertakings 19 and 20 discussed above. These undertakings therefore will not have to be answered, because it amounts to asking the defendant to interpret the claims of the patents in question.

[16]      The question in category 6 concerns analysis of a work by the defendant. That exercise is not relevant here. This question will not have to be answered.

[17]      I do not think the question in category 8 is appropriate and it is thus for the defendant to indicate whether a dictionary definition applies to a given situation. This question does not have to be answered.

[18]      On category 9, the two questions which it contains squarely commit the defendant to interpretation of the claims of a patent. That is the function of the Court and of expert witnesses. These questions do not have to be answered.

[19]      On category 10, and in particular the questions remaining in that category, these seek to have the defendant identify the innovative and inventive nature of his patents. The question of the innovative nature of any invention is a matter for the Court to decide based on the testimony of expert witnesses as to common general knowledge and prior art (see Jackmorr Manufacturing Ltd. v. Waterloo Metal Stampings Ltd. (1985), 8 C.P.R. (3d) 271, at 275). These questions therefore will not have to be answered.

II.        Motion by defendant Marcel Matière

[20]      The remaining questions under this motion will be disposed of as follows.

[21]      Questions 4, 5 and 16 (page 316, defendant's motion record) will have to be answered since they involve a factual exercise, with technical aspects, which is authorized by Foseco, supra, para. [14].

[22]      Questions 9 and 10 are much too hypothetical in nature to be answered. They will therefore not have to be answered.

[23]      In summary on the two motions at issue and the schedule to be followed in this matter, the parties will have to do the following.

            1.         By September 12, 2003, at the latest, the parties will provide answers to the questions on which they have agreed and to those ordered here by the Court.

            2.         By September 30, 2003, at the latest, the parties will present their witnesses for re-examination. It appears to the Court that as the invalidity of the patents will be raised in the re-examination of Mr. Matière for the first time, the questions ordered concerning him are not many and he lives in France, if the plaintiff wishes to re-examine him in person it will have to pay the costs of his travel.

            3.         By October 30, 2003, at the latest, the parties will serve and file any motion requiring decision, if this is necessary, on the objections raised and undertakings made in the re-examinations of their witnesses, to which answers were not given.

            4.         Unless settlement discussions are underway after that date, the plaintiff will serve and file an application for a pre-trial conference by November 17, 2003, at the latest.

[24]      As success on the two motions at issue was largely divided, there is no basis for awarding costs against either party.

Certified true translation

Suzanne M. Gauthier, C. Tr., LL.L.

                                                             FEDERAL COURT

                                                      SOLICITORS OF RECORD

FILE:                                                                           T-611-01

STYLE OF CAUSE:                                                   FORTIER 2000 LTÉE

Plaintiff

and

MARCEL MATIÈRE

Defendant

and

MARCEL MATIÈRE

and

BÉTON PROVINCIAL LTÉE

Plaintiffs by Counterclaim

and

FORTIER 2000 LTÉE

Defendant to Counterclaim

PLACE OF HEARING:                                             Montréal, Quebec

DATE OF HEARING:                                               August 22, 2003

REASONS FOR ORDER BY: RICHARD MORNEAU, PROTHONOTARY

DATED:                                                                      August 27, 2003

APPEARANCES:

Pascal Lauzon                                                               FOR THE PLAINTIFF/DEFENDANT TO COUNTERCLAIM

Katherine Stachrowski                                                   FOR THE DEFENDANT AND PLAINTIFFS BY COUNTERCLAIM

SOLICITORS OF RECORD:

Brouillette, Charpentier, Fortin                                       FOR THE PLAINTIFF/DEFENDANT TO

Montréal, Quebec                                                         COUNTERCLAIM

Gowling, Lafleur, Henderson                                          FOR THE DEFENDANT AND

Montréal, Quebec                                                         PLAINTIFFS BY COUNTERCLAIM