Date: 20041104
Docket: T-754-01
Citation: 2004 FC 1560
BETWEEN:
BAUER NIKE HOCKEY INC.
Plaintiff/
Defendant to counterclaim
and
PAUL REGAN
Defendant/
Plaintiff by counterclaim
REASONS FOR ORDER
RICHARD MORNEAU, PROTHONOTARY:
[1] This is a motion by the plaintiff and Defendant to counterclaim (the plaintiff) to have the Court decide in its favour a series of questions (130 in all, hereinafter the List) that the plaintiff sent to the defendant and plaintiff by counterclaim (the defendant).
Context
[2] The defendant is the inventor and owner of Canadian patent No. 2219072 (the patent 072), which was issued on August 22, 2000. The invention disclosed in patent 072 is a hockey shirt fitted with integrated wrist support and neck guard, which allows a hockey player to dress and undress more quickly and simplifies the maintenance and storing of hockey clothing and protective equipment.
[3] The plaintiff apparently manufactures and sells products that include certain components and characteristics of the invention disclosed by patent 072.
[4] The plaintiff served on the defendant a statement of claim in which it seeks the following remedies in particular:
(a) a judgment declaring that the plaintiff's products do not infringe the claims of patent 072;
(b) a judgment declaring invalid some of the claims in patent 072.
[5] The defendant rejects this claim and alleges, in a counterclaim, that three of the plaintiff's products infringe the patent.
Analysis
[6] This motion by the plaintiff must be dismissed for some substantive issues and because of the belatedness of the motion. I will discuss the latter reason first.
[7] The idea that the plaintiff send the List to the defendant originated somehow, in the first place, during the defendant's examination for discovery on April 7 and 8, 2003, then in the course of discussions between the parties surrounding the hearing on October 8, 2003, of motions on some questions that were not answered in the April 2003 examination for discovery. It appears that it was agreed at that time that the questions now being litigated in the List would not be discussed in April or October 2003, but would be the subject matter of a list of questions subject to the defendant's right to answer or not to answer and, as a corollary, the plaintiff's right to present a motion to have these questions decided in its favour.
[8] The List was sent to the defendant toward the end of November 2003.
[9] Subsequently, the plaintiff urged the defendant to take a position concerning the List on several occasions (between November 2003 and April 2004).
[10] It is true that the defendant took some time to make its position known, but nevertheless, on May 5, 2004, the plaintiff was notified that the defendant did not intend to answer the questions listed by the plaintiff. On May 7, 2004, the plaintiff notified the defendant that it would get back to him shortly concerning the defendant's refusal.
[11] The plaintiff did not actually reveal its position until August 24, 2004, through service of the present motion.
[12] However, in the interval, an order altering the schedule for the stages remaining to be completed in the case was issued May 25, 2004, pursuant to a motion by the plaintiff. This order reads as follows:
ORDER
Upon motion by the Plaintiff/Defendant by Counterclaim under Rule 369 of the Federal Court Rules, 1998, and upon reading the Consent of the solicitors for the parties;
IT IS HEREBY ORDERED that:
1. Paragraph 2 of the Order of Mr. Morneau dated October 28, 2003, as amended pursuant to the Order of Mr. Morneau dated January 22, 2004, is further amended as follows:
Paragraphs 9, 10, 11 and 12 of the Order of the Court dated December 17, 2002, regarding the timetable for the completion of steps in this action shall be replaced by the following paragraphs:
9. Follow up examinations of both parties shall be completed no later than June 30, 2004;
10. Settlement discussions shall be completed no later than July 31, 2004;
11. Bauer shall file a requisition for pre-trial conference no later than August 15, 2004;
12. The deadlines noted in this Order are extendable, by up to two weeks, by mutual consent of the parties and upon written notice being provided to the Court.
2. Parties and counsel shall note that the above extension shall be considered final unless special circumstances are evidenced.
3. There shall be no costs of this motion.
[13] As the scheme of this order of May 25, 2004 indicates, the plaintiff was not at that point (or even later in the following days, through an application to amend the order) trying to write into the order the possibility of moving to have the Court decide on the defendant's rejection of the List, even though that rejection had been known at least since May 7, 2004. On the contrary, the only relevant stage addressed in that order is the one simply affecting the continuation of the examinations by the parties. In fact, the defendant's examination continued on June 14, 2004, and it does not appear that at that time, either, was there any discussion of the List and the defendant's rejection of it.
[14] So it was only when the present motion was served that the plaintiff revived its interest in the List. This motion was filed at the very end of the schedule contained in the order of May 25, 2004, although the Court had been very careful to indicate clearly in this order that the schedule contained therein was final absent special circumstances.
[15] It must therefore be concluded from this background that the plaintiff's motion is belated and serves to disrupt the schedule adhered to between the parties since and through the order of May 25, 2004. In my opinion, as the manager of this case, the plaintiff's motion can be dismissed on these grounds alone.
[16] Similarly, it seems that the Federal Court of Appeal recognizes that the case manager has considerable "elbow room" in moving cases to trial, since in Sawridge Band v. Canada, [2001] F.C.J. No. 1684, at paragraph 11, it adopts the following position expressed by the Alberta Court of Appeal:
We would take this opportunity to state the position of this Court on appeals from orders of case management judges. Case management judges must be given latitude to manage cases. This Court will interfere only in the clearest case of a misuse of judicial discretion. This approach was well stated by the Alberta Court of Appeal in Korte v. Deloitte, Haskins and Sells (1995), 36 Alta. L.R. (3d) 56, at 58, and is applicable in these appeals. We adopt these words as our own.
[...] This is a very complicated lawsuit. It is the subject of case management and has been since 1993. The orders made here are discretionary. We have said before, and we repeat, that case management judges in those complex matters must be given some "elbow room" to resolve endless interlocutory matters and to move these cases on to trial. In some cases, the case management judge will have to be innovative to avoid having the case bog down in a morass of technical matters. Only in the clearest cases of misuse of judicial discretion will we interfere. [...]
(See also the decision of Gibson J. in Microfibres Inc. v. Annabel Canada Inc. et al., 2001 FCT 1336, dated December 5, 2001.)
[17] However, should it be found that the plaintiff's present motion is not inadmissible for the foregoing reasons, I think it must be dismissed as well for the following reasons, which go to the merits of this motion.
[18] The List was divided by the plaintiff into two major categories, A and B, and the parties addressed this motion on the basis of the titles given to these two categories. The following analysis will follow that approach, therefore.
[19] Category A deals with questions affecting the defendant's products. In this case, however, it must be noted that it is the plaintiff's products and not the defendant's that are the subject of the infringement allegations.
[20] In the first place, it is trite law that examining the defendant about its products is of no relevance in such a context. It is the plaintiff's products that are significant in relation to the infringement alleged by the defendant, and the latter's patent in relation to the validity of that patent (see, inter alia, Lapierre v. Echochem International Inc., [2002] F.C.J. No. 839).
[21] On the other hand, although the defendant is the inventor of the disputed patent and also has a number of years of experience in the field of hockey equipment, it seems to me that the ultimate exercise the plaintiff is trying to get the defendant to engage in through its questions goes beyond the mere identification of technical terms and instead falls indirectly into the interpretation of the patent, a role that is not that of the defendant, who is not being examined as an expert.
[22] For these reasons the category A questions on the List need not be answered.
[23] The questions listed under category B have to do with the products of the plaintiff that the defendant, in its counterclaim, alleges infringe its patent. It is recognized in principle, as it was in Leithiser et al. v. Pengo Hydra Pull of Canada Limited (per Heald J., June 29, 1972, docket T-1738-71), that the defendant could have been required to expand on the material facts underlying its allegations of infringement. As the following passages in Leithiser indicate, it is only that and nothing more that the Court enjoined the plaintiff to carry out:
On this examination for discovery, defendant sought to ask the plaintiff, George Leithiser, who is also the licensee of the plaintiffs' Canadian patent, the devices in the defendant's machines which, it is alleged, incorporate certain features of the various claims in the plaintiffs' patents.
[....]
I believe also that counsel for the defendant is entitled to discovery on the particulars of infringement and that is what he is seeking to establish by this line of questioning. It is not sufficient for the plaintiffs to say that their patent claim is infringed; the defendant is entitled to full particulars of the alleged infringement (see Dow Chemical Co. v. Kayson (1967) 1 Ex. C.R. 71).
[No underlining in the original.]
[24] In this case, this type or degree of particulars is not what the plaintiff is seeking through its questions. It would be surprising if it needed particulars like those allowed in the Leithiser case, since its own action argues that its products do not infringe the disputed patent. The plaintiff is therefore capable itself of comparing its products to the disputed patent.
[25] Through category B, the plaintiff is indirectly looking for an interpretation of the disputed patent, since its questions adhere very closely to the language used in the claims of this particular patent. But it is well established that such interpretation cannot be sought on the examination for discovery of a party or its representative.
[26] For all of these reasons, this motion by the plaintiff will be dismissed with costs.
[27] The plaintiff shall serve and file its requisition for pre-trial conference within fifteen days of the date of the order accompanying these reasons.
"Richard Morneau"
Prothonotary
Montréal, Quebec
November 4, 2004
Certified true translation
Suzanne M. Gauthier, C Tr, LL L
FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-754-01
STYLE: BAUER NIKE HOCKEY INC.
Plaintiff/
Defendant to counterclaim
and
PAUL REGAN
Defendant/
Plaintiff by counterclaim
PLACE OF HEARING: Montréal and Toronto, by videoconference
DATE OF HEARING: October 25, 2004
REASONS FOR ORDER: Richard Morneau, Prothonotary
DATED: November 4, 2004
APPEARANCES:
François Guay for the plaintiff/Defendant to counterclaim
Gregory A. Piasetzki for the defendant/plaintiff by counterclaim
Sam El-Khazen
SOLICITORS OF RECORD:
Smart & Biggar for the plaintiff/Defendant to counterclaim
Ottawa, Ontario
Piasetzki & Nenniger for the defendant/plaintiff by counterclaim
Toronto, Ontario
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