Letourneau v. Clearbrook Iron Works Ltd., 2004 FC 1422

Date: 20050211

Docket: T-1864-00

Citation: 2004 FC 1422

BETWEEN:

                                                       JOHN LETOURNEAU and

                                                 LETOURNEAU LIFE RAIL LTD.

                                                                                                                                             Plaintiffs

                                                                           and

                                             CLEARBROOK IRON WORKS LTD.

                                                                                                                                           Defendant

                                              AMENDED REASONS FOR ORDER

HARGRAVEP.

[1]                Some types of buildings are constructed by casting a re-enforced concrete wall panel on a horizontal slab on the ground and then raising the cured panel into position as a vertical wall. At this point the slab may be used as the base for casting the next panel. In due course a floor or a roof is placed on top of the positioned vertical wall panels. Inherent in any construction is safety of the workers, including preventing them from wandering off the edge of a raised floor or a roof. Here the Plaintiffs present what they believe be a new solution involving portable but securely fixed perimeter rail stanchions, which are the subject of this action.

[2]                More particularly, this action involves alleged infringement of a patented rail stanchion for use with modular concrete panel walls, the stanchion being fixed on the exterior of the wall panel, near the top, either by a separate anchor sleeve fitting which is cast into the wall panel, or by being bolted to the wall panel. The stanchion utilizing the sleeve fitting embodies a right angle at the bottom, in order to fit securely into the anchor sleeve or fitting on the wall panel and a dogs-leg offset so that the stanchion holds the cable railings, which it carries, well inside the edge of the roof. When the work on the roof is completed the stanchion may be removed, leaving the anchor socket in place.

[3]                These reasons arise out of two motions, heard over the course of two days and subsequently filed law and argument. The Defendant seeks the continuation of the examination for discovery of Mr. John Letourneau, so he may answer various questions, both those which were refused and those which were taken under advisement, provide further documents and give particulars of the first claim of the patent at issue.

[4]                The Plaintiffs seek, on their motion, continuation of the examination for discovery of Mr. Noel Schellenberg, of Clearbrook Iron Works Ltd., to deal with undertakings, with questions taken under advisement and to answer questions that were refused.     Included among the matters taken under advisement was a request for particulars of the Defendant's denial that Mr. Letourneau was the inventor, which raises an issue of onus on a party attacking the validity of a patent.

[5]                The action, which as I say, is for infringement of the Letourneau patent, is also more involved than that. The Defendant, Clearbrook, contends that the patent is invalid, on various grounds and has counterclaimed to allege that the Plaintiffs have made false and misleading statements tending to discredit the business, wares and services of Clearbrook.

SOME GENERAL LEGAL PRINCIPLES

[6]                Before turning to the motion of the Defendant and then to the motion of the Plaintiffs, I will set out some applicable basic principles.

[7]                Both sides have referred to six general propositions, applying to examination for discovery, set out in Scientific Games, Inc. v. Pollard Bank Notes Ltd. (1997), 73 C.P.R. (3d) 461 (F.C.T.D.) at 468:

1.             The test as to production is that of relevancy. Relevancy is a matter of law. Documents which may reasonably be supposed to contain information which may indirectly or directly advance a party's case or damage that of the adversary are relevant;

2.             questions that are too general or require an opinion or are outside of the scope of the proceeding need not be answered;

3.             the propriety of discovery questions relates to the facts set out in the statement of claim, or the defense, as the case may be, rather than to any facts which a party proposes to prove;

4.             answers should not be required to questions which, while they might be relevant, are not likely to advance in any way the questioning party's legal position;

5.             the court, before requiring a discovery question be answered, must weigh the probable usefulness of the answer against the time, trouble and difficulty involved in obtaining the answer for one must look at what is reasonable and fair under the circumstances; and

6.             fishing expeditions in the nature of vague, far reaching or irrelevant lines of questioning are to be discouraged.

These propositions paraphrase the principles set out by Mr. Justice McNair in Reading & Bates Construction Corp. v. Baker Energy Resources Corp. (1998), 25 F.T.R. 226 (F.C.T.D.) at 230, where a number of cases underlying each proposition are set out.

[8]                I would elaborate on the first principle set out above, by adding that a question or document is relevant even though it may only indirectly lead to a train of inquiry as to relevant events: see Nolan v. Silex International Chemical Systems Inc. (1997) 77 C.P.R. (3d) 212 (F.C.T.D.) at 214, relying upon the decision of Justice MacKay in Sydney Steel Corporation v. The Omisalj [1992] 2 F.C. 193 (F.C.T.D.) at 197-198, and Fiddler Enterprises Ltd. v . Allied Shipbuilders Ltd. (2002), 215 F.T.R. 305 at 307, relying upon Compagnie Financière et Commerciale du Pacifique v. Peruvian Guano Company (1882) 11 Q.B.D. 55 (C.A.). Where there is some doubt as to whether or not a question ought to be answered, the benefit of the doubt favours the answer be required; see The Omisalj, at 198-199.

[9]                As I indicated earlier one of the issues involves who is entitled to claim as the inventor. Certainly section 43(2) of the Patent Act provides the presumption of validity. This basic proposition is considered at length by President Thorson in McPhar Engineering Co. of Canada Ltd . v . Sharpe Instruments Ltd. [1956-1960] Ex.C.R. 467 at 491-492. President Thorson, in the course of considering an attack on a patent, points out "... the onus of showing that it is invalid lies on the person attacking it, no matter what the ground of attack may be, and that until it has been shown to be invalid the statutory presumption of its validity remains." (page 492).    

CONSIDERATION OF CLEARBROOK'S MOTION

[10]            I will first deal with the motion of Clearbrook Iron Ltd., which is directed, generally, toward further discovery, questions and particulars, from John Letourneau and Letourneau Life Rail Ltd.

Experience and Background of Mr. Letourneau

[11]            At issue in the first category of refusals is the scope of questions which may be asked of a witness as to his or her background. An appropriate starting point is the view expressed by Mr. Justice Rothstein, as he then was, in Merck Frosst Canada Inc. v. Canada (Minister of National Health and Welfare), (1994), 75 F.T.R. 97 (F.C.T.D) at 100:

Under normal circumstances, a descriptive question about a deponent would be asked at the opening of an examination. There is nothing wrong with such questions that seek to identify a deponent or, indeed, shed some light on his or her background, providing the questioning party demonstrates the relevance of obtaining the background or that it is necessary in the context of the issue of credibility. It is not sufficient to say, "We want to know who he is," or "What is his litigation experience?".

Mr. Justice Rothstein elaborates on this concept of asking appropriate questions about the background of the discovery witness, either through demonstrating relevance or through putting the question in the context of an issue of credibility, by pointing out that there must be a

connection between the issues in the case and the background of the witness in order for the question to be proper. However there is substantial scope in this area, including to test whether a person who claims to be the inventor is in fact the inventor, an issue facing Mr. Justice Lemieux in Goldfarb v. W.L. Gore and Associates, Inc. (2001) 11 C.P.R. (4^th ) 129 (F.C.T.D) at 154 - 155:

The true inventor

[115]        I take from the Privy Council's decision in Canadian General Electric Company v. Fada Radio, Ltd., [1930] A.C. 97 at 101, the following proposition that a true inventor is a person who demonstrates inventive ingenuity. Lord Warrington of Clyffe quoted the trial judge, Maclean J., as follows:

"There must be a substantial exercise of the inventive power or inventive genius, though it may in cases be very slight ... if the invention requires independent thought, ingenuity and skill, producing in a distinctive form a more efficient result, converting a comparatively defective apparatus into a useful and efficient one, rejecting what is bad and useless in former attempts and retaining what is useful, and uniting them all into an apparatus which, taken as a whole, is novel, there is subject matter. A new combination of well known devices, and the application thereof to a new and useful purpose, may require invention to produce it ..."         

[116]        Justice Strayer's decision in Mahurkar v. Vas-Cath of Canada Ltd. (1988), 18 C.P.R. (3d) 417 (F.C.T.D.), in authority for the proposition that a person's skill and knowledge are relevant in determining whether that person is the true inventor, particularly with respect to inventions of a complex and technical nature. I take from Justice Teitelbaum's decision in Procter & Gamble Company v. Kimberly-Clark of Canada Ltd. (1991), 40 C.P.R. (3d) 1 (F.C.T.D.), the proposition that a person presenting a problem for solution is not an act of invention. There must be evidence that the inventor had a significant role in solving the problem.

This passage had to do with the skill and knowledge of the person claiming the invention, in effect whether that person has the capacity for independent thought, ingenuity and the skill which might allow him or her to exercise inventive power or even, as the Privy Council said in the Fada Radio case referred to by Mr. Justice Lemieux, the necessary inventive genius, to develop the stanchions in question. I now turn to the specific questions asked of Mr. Letourneau bearing on his experience.

[12]            Questions 25, 26, 27 and 33 deal with Mr. Letourneau's employment as a bulldozer operator, being when he did that job, for whom he worked, his duties and concluding with question 33, "What would you do in the course of your duties as a bulldozer operator, is there anything else you can say?". Mr. Letourneau did say that as a bulldozer operator he dug excavations, but that is rather removed from anything relevant either to the development of the rail stanchions around the edge of a roof or to the preservation of confidentiality, particularly in that Mr. Letourneau's career as a bulldozer operator was some fifteen years ago. To say, as does counsel for the Defendant, that Mr. Letourneau's experience in construction "casts a gloss on virtually everything he says or did relating to his alleged invention and in his business starting in 1997 going forward.", stretches the bounds of relevance too far, is not likely to advance anyone's legal position and appears to be more of a fishing expedition than anything else. Questions 25, 26, 27 and 33 need not be answered.

[13]            By question 39 counsel for the Defendant seeks to determine Mr. Letourneau's work experience before 1981. That may be relevant in determining what skills Mr. Letourneau might have brought with him and put to bear on the stanchion problem. Equally, his previous work experience might not have anything to do with bringing appropriate skills in his role as an inventor, however such basic inquiries are pertinent, even though the answers may not necessarily lead to further proper questions. Question 39 is to be answered.

[14]            Leading up to questions 53 and 55, Mr. Letourneau dealt with his acquaintances in the construction industry. At questions 53 and 55 he was asked whether there was anyone else whom he knew in the construction business and the number of such acquaintances. He responded that there were not a lot of such individuals and that "I don't recall all the names of people that I know that are in construction.". Mr. Letourneau goes on to observe that the question seems to cover forty years. Counsel for the Defendant has a reasonable answer and that is sufficient.

[15]            At question 65 Mr. Letourneau was asked for his understanding of the term "tilt-up construction". He observed, as paraphrased by the counsel for the Defendant that he "had very little familiarity with tilt-up construction", but defining it as "where they form concrete walls horizontally and they tilt them up with a crane to sort of have this instant wall slab." (answer 69).

[16]            Counsel for the Defendant makes the point that tilt-up construction is an important concept and that may be, however the observation as to its relevance, in that the marketing efforts of the Plaintiffs were concentrated on the tilt-up construction industry, leads nowhere in particular, for a whole nature of Mr. Letourneau's device and particularly the cast in place sleeve to support the stanchion, is founded in the idea that the sleeve can be inserted easily into the horizontal concrete slab, before the concrete is set and then the slab panel may be hoisted into place, with the sleeve then in the appropriate position to take the stanchion. However Risi Stone Ltd. v. Groupe Permacon Inc. (1994) 56 C.P.R. (3d) 381 (F.C.T.D.), a decision of Mr. Justice Nadon as he was then, does have some bearing for "The mere fact that a question may seek to elicit an expression of a technical opinion from a witness who is not an expert is not necessarily fatal." (page 388). At this point counsel for the Plaintiffs submits that while there is a denial in the pleadings that Mr. Letourneau is the inventor, there are insufficient particulars. This overlooks the many references to other patents which may well use a comparable mounting device built into a concrete wall. The Defendant is entitled to explore further Mr. Letourneau's knowledge of the term tilt-up construction, including as set out in questions 65, 73, 74 and 75.

[17]            Leading up to question 80 Mr. Letourneau acknowledges that he has a workshop at home and then refuses to answer as to the nature of things he did in the workshop. This is an appropriate testing of the skill and knowledge, referred to in Goldfarb (supra), that might be brought to bear on the rail stanchion problem. Question 80 is a proper question so long as the questions and answers are generic enough not to pry into other inventive activities of Mr. Letourneau.

[18]            At questions 82 and 85 Mr. Letourneau was asked as to his familiarity with horizontal life lines, essentially the fencing held up by the stanchions. I do not take this as an inquiry into Mr. Letourneau's knowledge as to prior art, or as an irrelevant question going to the issue of validity of the patent, or a question by which to test the extent of common general knowledge: if such were the sole purpose of the questions, the questions would be improper: see for example Unilever PLC v. Proctor and Gamble Inc. (1989) 23 C.P.R. (3d) 279 (F.C.T.D.) at 282 and Westinghouse Electric Corp. v. Babcock and Wilcox Industries Ltd. (1987) 15 C.P.R. (3d) 447 (F.C.T.D.) at 450 and 451, a decision of Mr. Justice Strayer, as he then was. However, the question is relevant to the inventiveness of Mr. Letourneau and again I refer back to Goldfarb (supra) at 154-155. Questions 82 and 85 are appropriate as an inquiry into the inventive skills which Mr. Letourneau brought to bear on stanchion design.

[19]            Leading up to question 478 Mr. Letourneau relates a conversation with his brother-in-law who had pointed to a lack of an effective safety rail, for fall protection, on some construction sites and the possibility of an opportunity to solve the problem. That is fair enough. However at question 478 counsel asked whether there was something in Mr. Letourneau's background by which his brother-in-law would characterize him as a clever person. Mr. Letourneau can have no idea what was in the mind of his brother-in-law. Question 478 requires an opinion beyond that which Mr. Letourneau can reasonably advance, without speculation. Question 478 is irrelevant and need not be answered.

[20]            Leading up to question 529 the witness recounted a discussion, again with his brother-in-law, about solving the fall protection problem. At question and answer 524 the witness confirms that he has exhausted his memory. The gist of the following question is whether the witness can remember anything further. There is then a discussion as to whether the witness anticipated being asked about the conversation with his brother-in-law, which becomes an incidental conversation between counsel. Counsel for the Defendant has his answer and Mr. Letourneau need not consider that aspect further.

[21]            At question 558 the witness is asked whether, aside from his brother-in-law, he knew anyone else involved in the tilt-up construction industry. There follows debate as to whether this question had already been asked. At question 58 the witness had indicated that he had advised of all the people he could remember in the construction industry. At question 59 through 63 the witness dealt with his familiarity with the tilt-up construction industry, being through just his brother-in-law. Question 558 has in fact been answered.

The Plaintiffs' Devices

[22]            The Plaintiffs have referred to "Life-Rails", "tilt-up life rails", "emergency life rails" and "bolt-on life rails". At question 110 Mr. Letourneau was asked as to the nature of the emergency or bolt-on life rail. Emergency or bolt-on life rails are defined in the answer to question 111. Nothing more needs to be done to question 110.

[23]            At question 189 Mr. Letourneau was asked when he began putting "pat. pend.", an abbreviation for patent pending, on his product. Counsel for the Plaintiffs correctly points out there is no issue as to the patent pending mark raised in the pleadings. At question 190 counsel for the Defendant agrees with that answer, an exchange ending the matter.

[24]            Questions 194 through 201 deal with the colour of the stanchions, a high visibility orange. This exchange is resolved at question and answer 200: the rails are painted orange in order to make them highly visible so that they stand out. Counsel has his answer. Whether the answer will be admissible at trial is another issue.

[25]            Questions 766, 767 and 776 deal with use of a wedge device, inside a sleeve, instead of a bolt fastening the stanchions directly onto the outside wall. Those questions are the culmination of a lengthy discussion as to the simplicity of using a wedge device and how it came about, in effect a sequence of evolution from the concept of bolting a stanchion to the wall, to a fastening going right through the wall and finally to the use of a wedging device in a socket cast into the wall. At question 776 counsel asks Mr. Letourneau whether there are any other advantages using the wedge device as compared with bolting the posts to the wall. Counsel for the Plaintiffs characterizes this as a comparison of the advantages of the invention over the prior art.

[26]            There is the general proposition that the state of prior art, or common general knowledge, are matters for expert evidence at trial and should not be part of examination for discovery: see Jackmorr Manufacturing Ltd v. Waterloo Metal Stampings Ltd. (1985) 8 C.P.R. (3d) 271 (F.C.T.D.), a decision of Associate Senior Prothonotary Giles. However the present questions as to the advantages of the stanchion are narrower. Counsel for the Defendant referred to Scientific Games Inc. (supra) in which at page 510 I required the Plaintiffs to provide representative proposals which the Plaintiffs had made and which referred to the advantage of an integrity number algorithmically related to accounting information on the front of a lottery ticket. The determination in that case is not strictly on point, for the information was contained in documents which the Plaintiffs had in fact already prepared and as such were completely produceable for what they were worth as evidence. In the present instance counsel did not produce any case law directly bearing on the point of whether a lay witness, but also an inventor, might give an opinion on the merits of two devices which he uses in different versions of the invention and indeed I am not aware of such a case. I will therefore analyse the question in the context of utility.

[27]            The Supreme Court of Canada pointed out, in [1981] 1 S.C.R. 504">Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd. [1981] 1 S.C.R. 504 at 521 that a patentee does not have the obligation of establishing utility of his or her invention. All the more so, I do not see that the discovery witness has an obligation of giving his or her view as to comparative utilities, that is the advantage of a wedge and socket type fastening to the wall, over a bolting of the stanchion to the wall. Indeed, Fox on Canadian Patent Law and Practice, Carswell, 4^th edition, 1969, makes the point that "invention is, however, like novelty and utility a question of fact and degree exclusively for the Court." (page 99).    It is thus not for Mr. Letourneau to give his opinion as to the utility of his rail stanchions. Certainly, if there was any written communication or advertisement by Mr. Letourneau, in the course of his business, as to the advantages of the wedge and sleeve system as compared with bolting the stanchions to the wall, that must be produced, but absent such existing material, question 766 and 767 need not be answered.

[28]            Question 776 deals with the way in which the wedging system, incorporated into the bottom end of the stanchion, holds the stanchion in the sleeve that has been cast into the concrete wall panel. The question is whether the bolt activated wedging system, at the end of the stanchion, created a sliding friction between it and the insert in the wall. Perhaps a better term would be "locking friction", for any element of sliding frictions would defeat the invention. Counsel for the Plaintiffs objected to this question on the basis that the interpretation of the operation of the patent by the witness was not relevant. The term at issue, "sliding friction", is not one used in the patent, although that is no bar in itself and here I would refer to James River Corp. of Virginia v. Hallmark Cards Inc. (1997 ) 72 C.P.R. (3d) 157 (F.C.T.D.) at page 163 where Madam Justice Reed dealt with terms put to the witness for Hallmark Cards, being terminology that had not been employed by Hallmark. Madam Justice Reed pointed out that it was not appropriate to seek, on examination for discovery, an understanding of or an interpretation of the patent from the point of the view of the witness. However, it was appropriate to ask for facts within the knowledge of Hallmark, for while the witness could not be questioned as to an understanding or interpretation of patent, facts are fair game:

The questions in issue are not of this nature. They ask about the defendant's plates, and the characteristics of those plates, as the defendant understands them. They ask for facts within the knowledge of Hallmark. They are not unlike many other questions that were asked and answered, which questions use terms found in the patent, terms such as lip, rim, scored, side wall, blank of the bottom wall. If the terms, in the questions under dispute, are not used by the defendant, and meaningful answers cannot be given by it, then, those answers will reflect that fact. The defendant is not required to do testing to ascertain the answers. But the questions themselves are not of a type that should be answered.

In effect, it matters not whether the terms used in the question appear in the patent, except to the extent that if the terms are not used by the party being examined and relevant answers cannot be given, then the answers will reflect that fact. However there still remains, in this instance, the question of relevance and I think this may be considered in the context of Mr. Letourneau's knowledge as to how the device works, relying upon his actual experience, not upon an interpretation of the patent. It may be that Mr. Letourneau is able to set out in the factual way how the prototype wedge anchor system for the stanchion worked, although the assessment of mechanical equivalence, would not be proper. Nor would discovery as to commercial success be appropriate as I do not see the relevance of that line of questioning. Indeed the principle of commercial success and its marginal use was commented upon by Mr. Justice Pinard in Équipments d'Érablière CDL Inc. v. Ératube Inc., 2001 CFPI 107, an unreported 23 February 2001 decision in file T-194-98:

Both questions involve consideration of the principle of commercial success. On this point, academic commentary and case law have clearly established that commercial success is only relevant in certain marginal cases and cannot be used as a pretext for "fishing expeditions" (Fox, Canadian Patent Law and Practice, 4^th ed., Toronto, The Carswell Company Limited, at pp. 76 and 78, CAE Machinery Ltd., v. Fuji Kogyo Kabushiki Kaisha (January 21, 2000), T-730-97 (F.C.T.D.), Canadian Buttons Limited v. Patrician Plastic Co., 35 F.P.C. 87 and Edison and Swan Electric Light Co., v. Holland (1889), 6 R.P.C. 243, at 277).

A more persuasive point is that an inventor may be asked to specify what he considers to be the substance of the invention, for that is a question of fact and here I would refer to Nolan v. Silex (supra) at pages 214-215:

However, counsel for the defendants satisfied me in argument that apart form the wording of the question, what the defendants, are really trying to do by asking it and by asking similar questions relating to the other claims in the patent is to have the plaintiff identify the essential elements of the inventions, in short, the substance of the invention.

In this instance, while there are authorities which are in favour of answering question 776 and those which are against providing an answer, doubt out to be exercised in favour of an answer as per The Omisalj (supra); moreover, I prefer full discovery, so that there are no surprises; and finally I will rely upon Nolan v. Silex (supra) at page 215:

First, it must be noted that it is proper, at a preliminary stage in the proceedings, to require that a plaintiff specify what it considers to be the "substance of its invention even though ultimately, at the end of the road, it is up to the Court to draw a definitive conclusion on this point (Northern Telecom Ltd v. Reliance Electric Co. (1986), 8 C.P.R. (3d) 224 (F.C.A.),at page 227).

Question 776 is to be answered within the limits of the above discussion being Mr. Letourneau's.

factual understanding as to the workings of the stanchions of which he claims to be the inventor.

Photographs and Observations

[29]            Mr. Letourneau took and produced four photographs, of various construction sites and went on to answer factual questions as to those photographs. He said he took the photographs because he believed someone was copying his means of holding the stanchions or guard rails to a building wall. Here I would note that the photographs apparently do not show stanchions in place. Defence counsel then went on to ask Mr. Letourneau how he concluded that there was an indication that someone had, in the past, fastened a guard rail to the wall, a guard rail which embodied a copy of his stanchion device. This crosses the line between factual question and interpretation of or opinion about what is, or may, be illustrated in the photographs. Counsel for the Plaintiffs takes a position that to go beyond factual questions is an attempt to have Mr. Letourneau identify the facts which the Plaintiffs will rely upon in order to establish infringement. Here counsel refers to Kun Shoulder Rest Inc. v. Joseph Kun Violin & Bow Maker Inc. (1997 ) 76 C.P.R. (3d) 488 (F.C.T.D.) and a passage at page 495. However I think a more appropriate starting point is a case referred to in Kun Shoulder Rest, being Aerlinte Eireann Teoranta v. Canada, an unreported 25 July 1984 decision in T-1250-80, upheld on appeal A-972-84 on 26 February 1985. In Aerlinte, Mr. Justice Strayer, as he then was, dealt with a request for a comparison or interpretation of the relationship between airport landing fees and the cost of providing those services: he was not prepared to allow the discovery to go that far, noting that the area could be explored by way of the opinions of experts at trial. He wrote:

The purpose of an examination for discovery is to ascertain the facts on which the other party intends to rely, but not to force a disclosure of the evidence by which those facts are to be determined: see e.g. Beloit Canada Lteel Ltd v. Valmet Oy (1981), 60 C.P.R. (2d) 145. Opinion evidence is just that: it is a means of establishing a fact, but it is not the fact itself. Only if the competence of the expert is itself in question can the opinion be explored on examination for discovery: The Queen v. Irish Shipping Ltd., [1976] 1 F.C. 418 (C.A.); Rivtow Straits Ltd v. B.C. Marine Shipbuilders Ltd., [1977] 1 F.C. 735 (C.A.). Basically the facts obtainable on discovery are those "patent to the senses": Bestway Lath & Plastering Co. v. McDonald Construction Co. (1972), 31 D.L.R. (3d) 47 (N.S.C.A.). In the present case the facts are the recorded costs as they appear in the data provided by the defendants. It appears to be common ground that any "allocation" of these costs to each of the three sectors will have to be based on an estimate. No matter how well-informed or logical that estimates may be, in my view it will be an opinion. It will form part of the evidence by which the plaintiff presumably will seek to establish the discrimination and excessive charges alleged in their pleadings.

In Kun Shoulder Rest I summarize some of this by writing:

It is proper to ask witness to speak of all the facts, surrounding a certain incident, of which the witness either knows or must properly inform himself or herself about. It is never permissible to ask a discovery witness as to the facts relied upon in support of a certain allegation, for this requires the witness to choose facts and disclose how his lawyer might prove a given allegation. While a witness may know the general approach that his or her lawyer intends to take, a witness cannot know what facts will assist until he or she knows the law. The particular facts that will be relied upon are based upon counsel's view of the law. An examination for discovery of a witness seeks to discover fact, not argument as to what is relevant in order to prove a given plea.

This concept, of allowing a discovery witness to set out facts, or what he or she has observed, surrounding a relevant incident, is a proper approach to discovery, but an interpretation of or a choosing or selecting of appropriate or relevant facts by the witness is an improper approach to discovery. This is an answer to the Defendant's application for answers to Questions 288 and 289, in which Mr. Letourneau was asked to say why he felt that certain patches on a building wall, constructed by someone else, might indicate a copying of his stanchion attachment procedure. The answer might be different if Mr. Letourneau had in fact set out in a produceable document a conclusion that he had reached, for the document itself would be a fact and produceable for what it was worth. Here he is asked for something less concrete: indeed being asked, as a lay person, to choose facts and then interpret them, something a witness should not be asked to do. Rather that is the job of the lawyer acting for the witness for he or she will be able to determine what facts are relevant, by reason of a knowledge of the law. The Defendant has received on discovery that to which it is entitled, the facts observed and those observable from the photographs and that is a complete answer to refusals to questions 288 and 289.

[30]            By question 290 Mr. Letourneau is asked to name who may have placed the guard rails on a building in a photograph. Mr. Letourneau, who by this point in the discovery had clearly picked up some of the ground rules, said he did not know for certain and concluded "I mean I can speculate, but that's not what we're supposed to do here.". At this point counsel has an answer to the effect that Mr. Letourneau does not know, for certain, who placed the guard rails. Certainly if that answer proves, in retrospect, to be incomplete, or to result in the Defendant being misled, or indeed to potential ambush at trial, Mr. Letourneau has an ongoing obligation, just as production of documents is ongoing, to advise defence counsel, through his own counsel, of the incompleteness or incorrectness of the answer. At this point questions 288 and 289 need not be answered and questions 290 and 295 need only be dealt with further should Mr. Letourneau decides that his answers had become incomplete or incorrect.

Prior Disclosure in August 1997

[31]            In Baker Petrolite Corp. v. Canwell Enviro-Industries Ltd. (2002 ) 17 C.P.R. (4^th ) 478 the Court of Appeal dealt with invalidity, by way of anticipation, being disclosure in a relevant manner. In effect the patent was said to be invalid because it had been disclosed to and made available to the public, in breach of section 28.2 of the Patent Act which requires that the subject matter of an application for a patent must not have been disclosed more than a year before the filing date of the application for the patent and that by s. 28.3 of the act, if there has been disclosure more than a year before the filing date for the patent, the patent is invalid. All of this is discussed at length in Baker Petrolite at page 497 and following, where Mr. Justice of Appeal Rothstein wrote in part:

For a prior sale or use to anticipate an invention, it must amount to "enabling disclosure."

Hughes & Woodley on Patents, Butterworths looseleaf edition, s. 16A defines an enabling disclosure to be such that "it must enable the public to make or obtain the invention.". From this I take it that the test is merely one of making the invention available and that it is not necessary that there be an actual making or obtaining of the invention by the public, but merely the opportunity available to some unauthorized person. Indeed this is a point made by Mr. Justice Rothstein, in Baker Petrolite, at page 499, there relying upon Lux Traffic Controls Ltd. v. Pike Signals Ltd. [1993] R.P.C. 107 at 133:

Further it is settled law that there is no need to prove that anybody actually saw the disclosure provided the relevant disclosure was in public. Thus an anticipating description in a book will invalidate a patent if the book is on a shelf of a library open to the public, whether or not anybody read the book and whether or not it was situated in a dark and dusty corner of the library. If the book is available to the public, then the public have the right to make and use the information in the book without hindrance from a monopoly granted by the state. [Emphasis added.]

It is therefore the view of the Federal Court of Appeal that the patent may be invalidated by disclosure whether or not anyone actually looked at the item in question when it was displayed: the test is merely whether the device, to be patented, was available had anyone looked.

[32]            Mr. Letourneau had a prototype of the square tubular steel stanchion fabricated by Aggressive Tube Bending, in Surrey, British Columbia. At question 1004 Mr. Letourneau was asked for a rough description of the layout of the Aggressive Tube Bending shop. It is clear that counsel initiated this subject because Aggressive Tube Bending manufactured both the prototype and the subsequent stanchions over a year before Mr. Letourneau applied for the patent. The prototypes were kept at the Aggressive Tube Bending shop for a time until Mr. Letourneau picked them up. The layout of the shop is an appropriate line of questioning: for example the prototypes might have been kept at a location in the shop where members of the public could have seen or examined a stanchion. Question 1004 shall be answered, together with any proper questions flowing from that answer, however Mr. Letourneau is not to speculate as to the exact layout at Aggressive Tube Bending, for discovery is as to facts, not as to guesses or speculations. This leads to the demonstration of the stanchions at what is called the Beedie Building and questions 1167 through 1168, 1170, 1171, 1174, 1175, 1178 through 1179, 1196 and 1204, all related to the Beedie Building and the area around it.

[33]            At questions 1167 and 1168 Mr. Letourneau was asked to recall the street arrangement near Bainbridge Avenue, which I take it to be the location of the Building. I accept from the transcript that Mr. Letourneau does not have a clear recollection of the street layout around the Beedie Building. Indeed, neither the witness nor the counsel seem certain whether one of the adjacent roads is parallel to the building or is a diagonal road. There is no point in having Mr. Letourneau guess. If the issue is important, the roads are still likely there and counsel can have someone else give evidence on the point. Questions 1167 and 1168 need not be answered. Question 1170 deals with the same road, possibly a diagonal road: the question need not be answered.

[34]            At question 1171 counsel for the Defendant asked Mr. Letourneau as to the distance between the street and the Beedie Building. Here I accept that to the extent that Mr. Letourneau is able to give estimates of distances from the building to various roads that is relevant, so far as disclosure of the device is concerned such estimates and opinions of distance, even by a witness who is not an expert, are appropriate: see [1982] 2 S.C.R. 819">Graat v. The Queen [1982] 2 S.C.R. 819 at 835. Thus questions 1171 and 1174 must be answered.

[35]            By question 1175 counsel asked whether Mr. Letourneau observed any traffic on the roadway the day the stanchions were demonstrated on the Beedie Building. The presence or absence of traffic on the road, depending upon the distance from the building to the road, might well be relevant to the issue of disclosure. Question 1175 is to be answered.

[36]            Questions 1178, 1178 and 1196 deal with distance, parking of Mr. Letourneau's truck and road layout. On the basis of [1982] 2 S.C.R. 819">Graat (supra) the best estimate of a distance is appropriate. However, it may be that Mr. Letourneau cannot give more than an estimate within a range, that being the issue at question 1196 and following. It is fairly clear that the counsel has the best answer that is available and if he needs more he can always send some other witness out to make an actual measurement. To the extent questions 1178 and 1179 are relevant, counsel has an answer. Thus questions 1178, 1179 and questions 1196 and1204, another attempt to get a better estimate, need not be further answered.

[37]            Question 1243 is the culmination of an explanation as to how a stanchion is put in place when a sleeve is not cast into the wall panel, but rather the stanchion is held in place by a bolt. Mr. Letourneau explains that the bolt, which is apparently, using the everyday vernacular, a patent bolt in the sense of an ingenious bolt or one to which there might be a propriety claim, is not screwed into the wall, but rather slid into a hole in the wall and then tightened up. The answer is clear. Mr. Letourneau need not elaborate on the method of putting the bolt in place, for that has been accomplished leading up to question 1243.

[38]            At question 1276 Mr. Letourneau was asked what he did to impress upon others, who attended the demonstration of his stanchions, that matters concerning his invention were confidential or private. Here counsel for Mr. Letourneau is concerned that his client may not have said to others "this is confidential" but that the situation at the demonstration might have been such as to imply that what took place was confidential. This appears to be the thrust of question 1276, for it leaves it open to the witness to say what in fact he did or what steps in fact he took to prevent improper disclosure of his invention. It is appropriate that the Defendant know what steps were taken, so as not to be surprised at the trial. Question 1276 is to be answered.

[39]            Question 1293 deals with the social relationship between Mr. Letourneau and a friend, a Mr. Younger. Mr. Younger's name appears earlier in the transcript, for Mr. Letourneau took a number of unpainted stanchions by Mr. Younger's house, in his pick-up truck, in order to borrow a spray gun to paint them. However, question 1293, "what would you do together" is irrelevant, particularly in that his business relationship with Mr. Younger and indeed his friendship, have already been explored and answered. Question 1293 need not be answered.

[40]            Questions 1314 and 1511 deal with the date of the load test. Mr. Letourneau, at question 1313, said that he could not recall the date of the load test of the railing system, but at questions 1314 and 1511 he was asked whether he had reason to disagree with or had any doubt about the date being 7 August 1997. If Mr. Letourneau cannot recall the date, he can scarcely agree or disagree with the date. He has given his best answer at question 1510, that a memorandum, which he did not write, puts the date as being 7 August 1997 "and it possibly could be right". These questions need not be further answered.

[41]            Leading up to question 1460 are references to a conversation between Mr. Letourneau and a Mr. Rufenecht as to various aspects of the wire rope railing. Mr. Letourneau advised that he did not know the date of the conversation, indicating that he could not put into context as to whether it was before or after 28 August 1997. Counsel tried to get Mr. Letourneau to agree that it was undisputed that the conversation was in August of 1997, but Mr. Letourneau said that he simply did not know. To proceed further is pointless or it would advance no one's position. The question need not be answered.

[42]            Question 1505 involves a photograph, not taken by Mr. Letourneau, but which he identified as a wall, with three stanchions on it and a basket with an individual inside it. Counsel then asked "and that's what it depicts?". The objection is that Mr. Letourneau should not be asked to interpret a photograph. So long as a question is limited to what the photograph depicts as opposed to an interpretion of the photograph, the question is proper. There is an instructive passage on this point in Simpson Timber Co. (Sask.) v. Bonville [1986] 5 W.W.R. 180, a decision of the Saskatchewan Court of Queens Bench, at page 187 that 188, which I will paraphrase:

1.          The admission of photographs, videotapes and motion pictures as evidence are governed by the same rules.

2.          It is immaterial who took the photograph, but when it is offered as evidence of what it represents it must be associated with the witness.

3.          The witness presenting the photograph must be a competent and a qualified witness able to say that the photograph is representative of his or her knowledge and able to say that the photographs represents to the eye what the witness claims was a real and accurate appearance of things he or she saw.

4.          A witness, even though not present when the photograph was taken, or some other witness, must be able to give a reasonable indication as to when, where and under what circumstances the photograph was taken.

5.          Relevancy depends on whether or not a witness would be permitted to describe the scene in the photograph.

6.          As to admissibility, the Court must be satisfied that a photograph is an accurate reproduction of what it purports to reproduce and that the content or quality will not mislead or prejudice, but rather will assist in providing relevant evidence, with any controversy as to accuracy going to weight and not to admissibility.

In the present instance it is not a sustainable objection to discovery to say that Mr. Letourneau did not take the photograph. Rather, at question 1505 counsel for the Defendant may discover Mr. Letourneau on the photograph within the applicable guidelines set out above.

[43]            To questions 1661 and 1683 there is a common objection. At question 1661 Mr. Letourneau was asked, following a series of questions which seem to bear on the initial demonstration of the stanchions and safety rail to the Workers Compensation Board, whether he recalled anything more about the meeting. At question 1683 Mr. Letourneau was asked whether, following the initial demonstration to the Workers Compensation Board, referred to as the "load test meeting", anything else happened with respect to the stanchions or the guard rail system before a second meeting with contractors. These questions are far too broad and need not be answered. Moreover there is no prejudice to the Defendant, for counsel followed each of the two questions with a number of specific questions. Questions 1661 and 1683 need not be answered.

[44]            Leading up to question 1692 is a request for any documents which were generated between the load test demonstration to the Workers Compensation Board and a subsequent meeting with contractors. Counsel for the Plaintiffs takes the positions that all relevant documents have been disclosed and that a mere suspicion that a document exists, or that a relevant document exists, is a fishing expedition. Counsel for the Defendant submits that production of a document and here I think the concept is production of a document whether or not it is relevant in itself, might jog the memory of the witness: by way of example counsel suggests that a hypothetical dinner receipt for August 8^th, 1997, possibly representing a dinner to celebrate the test, might lead the witness to conclude that the test had occurred before the 8^th of August. I accept that counsel for the Plaintiffs has looked at and determined various documents not to be relevant. On that basis this is not an issue of assessing marginal relevance, for a document is either relevant or not, but if the least bit relevant must be produced. Nor is it a situation in which there is a gap in the production of relevant documents as in Liebmann v. Canada (Minister of National Defence) (1994) 87 F.T.R. 154. Rather, counsel seeks unknown documents which, may or may not exist, but which are said by the other side to be irrelevant and indeed documents which, in themselves, cannot reasonably be supposed to contain material which might support or advance the case of one side, or be to the detriment of the case of the other side. A mere suspicion that a relevant document has been suppressed, or a mere suspicion that such a document exists, or that it might be relevant, or that it might indirectly jog the memory of the witness in a relevant direction, is a fishing expedition: see for example: Galehead Inc., v. The"Trinity" (1998) 160 F.T.R. 227 (F.C.T.D.) at 232 and the cases referred to therein. The existence of or likely existence of documents which may have some relevance is one thing, but litigation ought not to be extended by a fishing expedition for possible documents which might have no direct relevance, or even indirect relevance. That a person's memory might be jogged, as to a relevant matter, by a totally irrelevant document, goes too far. Nothing further needs to be done as to question 1692.

Information From Patent Agent as to Prior Disclosure

[45]            In the present instance the Defendant seeks information from Mr. Letourneau as to his

conversations with a Mr. Edwards, his solicitor, who acted both in preparing Canadian and American patent applications for Mr. Letourneau and during the early stages of this litigation.

[46]            Counsel for Plaintiffs refers to Stevens v. Canada (Prime Minister) [1998] 4 F.C. 89, a decision of the Federal Court of Appeal. At issue was whether and to what extent billing accounts of a lawyer were protected from disclosure by solicitor-client privilege. In Stevens Mr. Justice of Appeal Linden provides an interesting history of solicitor-client privilege and the balance which the Courts have sought to achieve between the sanctity of the relationship between a solicitor and his or her client and the importance of public disclosure. Mr. Justice of Appeal Linden observed that while privilege had traditionally been thought of as a rule of evidence, the Supreme Court of Canada established, in [1980] 1 S.C.R. 821">Solosky v. The Queen [1980] 1 S.C.R. 821, that it had become a substantive right: see Stevens at page 104 and following. Counsel for Mr. Letourneau refers to the broad application given to solicitor-client privilege at page 118 of Stevens, the privilege being extended, as blanket protection, to bills of account sent out by counsel.    One of the reasons for such a blanket extension of privilege is that;

Furthermore, the blanket approach to protection of solicitor's bills of account prevents the pernicious prying of lawyers who might insist that each bull be viewed and judged individually in an effort to determine if any of the material contained therein could be disclosed. This would promote a situation where it was tactically advisable for the lawyer to persist in his or her efforts to effect discovery of the accounts in the hope that, because of some error induced by the sheer volume of documents, some privileged information will fall into their hands. I do not think that such a state of affairs would promote the free flow of communication between lawyer and client, which the privilege is designed to foster.

Here one of the reasons given for solicitor-client privilege is to prevent fishing expeditions into protected material, pernicious expeditions undertaken on the off chance that some privileged information might be disclosed. Counsel for Mr. Letourneau submits that a privileged bill of account might include, among other things, dates on which a solicitor met with a client.

[47]            Counsel for the Defendant generally seeks documents and information which Mr. Letourneau might have obtained from Mr. Edwards as his patent agent or former patent agent, relying upon Control Data Canada Ltd. v. Senstar Corporation (1986) 10 C.P.R. (3d) 284 (F.C.T.D.) which involved the delivery of a paper on a relevant topic regarding a patent: Associate Senior Prothonotary Giles pointed out in Control Data that if the paper had been prepared before the patent had been granted, it was irrelevant and all the more so if the paper was delivered after the patent had been granted. In Control Data Canada Ltd. v. Senstar Corp., (1987) 13 C.P.R. (3d) 546 Mr. Justice Cullen, on the basis of Rule 465(15) of the Rules that were then in effect, which has its present equivalent in Rule 241, required that the plaintiff make inquiries of its patent agent for, as in the case of the present Rule, there was the requirement that a discovery witness inform himself or herself by making inquiries of various categories of people, including servants and agents. However present Rule 241 does not necessarily assist the Defendant, for while that Rule sets out an obligation that a discovery witness inform himself or herself, including by making inquiries of employees, servants or agents, the Rule does not force a witness to divulge privileged information, a topic to which I now turn.

[48]            The concept generally accepted is that "... communications between a client and a patent agent are not privileged, unless the documents were prepared through the medium of the client's solicitor if made in contemplation of litigation ..." , as set out in Whirlpool Corporation v. Camco Inc. (1997) 72 C.P.R. (3d) 444 (F.C.T.D.) at 448. Interestingly the Court of Appeal had pointed out, in a case referred to in the Whirlpool case, that the sole reason that professional legal privilege does not extent to patent agents ".... is that patent agents as such are not members of the legal profession." (Lumonics Research Ltd. v. Gould (1983) 70 C.P.R. (2d) 11 at 15 (F.C.A.). The Whirlpool decision does not deal with a situation which the patent agent is also a lawyer, an area touched on by Mr. Justice Walsh in Montreal Fast Print (1975) Ltd. v. Polylok Corporation (1983) 74 C.P.R. (2d) 34 (F.C.T.D.), a case involving American and Canadian patent agents and instructing lawyers. At pages 43-44 Mr. Justice Walsh acknowledged the difficulty, as to privilege, when a lawyer, engaged both in giving legal advice as a lawyer, and also in filing patent applications, and went on to write:

Nevertheless the jurisprudence appears to have made the distinction, at least in situations where litigation was not in contemplation. While in one sense it can be said that there is always a possibility of litigation arising out of any patent application, there is nothing in the present case to indicate that the primary purpose of any advice given to the client whether by the American attorneys or by the solicitors in Canada was not in connection with obtaining the patents in question, and this is primarily patent agents' work even though the patent agent can consult with or obtain legal advice from other members of his firm qualified to give such advice in connection with these applications.

On this rationale privilege should be denied when a lawyer acts as a patent agent, however the passage in Montreal Fast Print does not deal with the earlier observation of the Court of Appeal, in Lumonics (supra), that the sole reason that professional legal privilege does not extend to patent agents is that they are not members of the legal profession. Nor is a current edition of Sopinka and Lederman on the Law of Evidence in Canada, second edition, 1999, Butterworths of any assistance, for the editors merely deal with communications passing between client and patent agents who are not lawyers, even though the patent agents may be rendering legal advice (page 741) referring to Lumonics (supra).

[49]            It is instructive to examine the decision of the Court of Appeal in Lumonics (supra), for a point overlooked in the broad generalizations as to the law bearing on lawyers who are also patent agents. In Lumonics Mr. Justice of Appeal Pratte, delivering the judgment of the Court, a matter involving an American patent and production of correspondence between American patent agents and clients, set out at page 15 the law in Canada, as to privilege and the work of patent agents, as understood by the Court:

It is clear that, in this country, the professional legal privilege does not extend to patent agents. The sole reason for that, however, is that patent agents as such are not members of the legal profession. That is why communications between them and their clients are not privileged even if those communications are made for the purpose of obtaining or giving advice or assistance.

On the other hand, all confidential communication made to or from a member of the legal profession for the purpose of obtaining legal advice or assistance are privileged, whether or not those communications related to the kind of legal advice or assistance that are normally given by patent agents. Legal advice does not cease to be legal advice merely because it relates to proceedings in the Patent Office. Those proceedings normally raise legal issues; for that reason, when the assistance of a solicitor is sought with respect to such proceedings, what is sought is, in effect, legal advice assistance. [Emphasis added]

Keeping in mind that the issue in Montreal Fast Print (supra) was the position of lawyers who were not acting as patent agents and patent agents who were acting as patent agents there is no reason why I should not follow the law as understood by the Federal Court of Appeal in Lumonics, which denies patent agents the protection of privilege only because they are not members of the legal profession and confirms privilege in communications from members of the legal profession "... whether or not those communications relate to the kind of advice or assistance that are normally given by patent agents." (Lumonics at page 15).

[50]            At question 1680 Mr. Letourneau was asked, relative to his first conversation with Mr. Edwards, when they had next spoken. The question was objected on the basis that it belonged to a course of communication with counsel and that question could not be used to pry open privileged communications. The question is denied on the basis of privilege, including privilege as discussed by the Federal Court of Appeal in Stevens (supra).

[51]            Question 1738 involves a letter with respect to an American provisional patent application. On the case law disclosure of the letter from American patent agents is proper. At issue is whether Mr. Letourneau may interpret a letter which he did not write and particularly the phrase "disclosure", in the context of when disclosure of the invention had been made and, while refused, led to a question as to the date upon which disclosure had been made. Witnesses are permitted to give their opinion as to inferences with respect to what they have observed and indeed, the demarcation between observed fact and opinion is often not clear. Certainly there are many instances, including as to personal knowledge, where the witness is in a better position than the Court to form an opinion, where the witness has the necessary experience to come to a conclusion and where the witness is faced with a situation which may be more briefly and comprehensively described by giving an opinion rather than by setting out facts. However, the courts have always resisted a witness giving an opinion which might be a legal conclusion. In Wewayakum Indian Band v. Canada and Wewaykai Indian Band (1995) 99 F.T.R. 1 (F.C.T.D.) at 190 Mr. Justice Teitelbaum refers to Sopinka on Evidence for the proposition that:

Courts now have greater freedom to receive lay witnesses' opinions; but as such evidence approaches the central issue that the court must decide, one can still expect an insistence that the witnesses stick to the primary facts and refrain from giving their inferences. It is always a matter of degree. As the testimony shades to a legal conclusion resistance develops. [Page 119 of Wewawakun]

This concept, of a resistance developing as testimony shades towards a legal conclusion, finds a parallel in Sherrard v. Jacob [1965] N.I. 151 (C.A.) where at page 156 Lord McDermott said in part:

"... the inference may involve a matter of law which is for the court alone and on which the opinion of the witness is plainly irrelevant. A witness, for example, cannot be allowed to say that a defendant was negligent or that the respondent in a divorce suit was guilty of the matrimonial offences of cruelty, for while these are issues of fact they necessitate the application of standards determined by law".

An interesting concept here is that an issue of fact may require the application of a legal standard which is beyond the competence of a lay witness.

[52]            In the context of question 1738, the reference to disclosure in the letter from his lawyer as to American patent procedure, may result in an answer which is a question of fact. If Mr. Letourneau knows as a matter of fact to what the disclosure refers, he must answer. However to go further is to require testimony shading to a legal conclusion and thus be beyond the inference that a lay witness is allowed to draw. Both questions 1738 and 1739 are examples of a pronounced shading toward a legal conclusion and indeed, because they require Mr. Letourneau to draw a legal conclusion as to when disclosure of an invention takes place, they are not proper and need not be answered. Counsel for the Defendant suggests that there has been a waiver of any privilege merely by the fact that the letter has been produced. That matters not: the Defendant has the letter and can make of it what it will, but Mr. Letourneau cannot be obliged to explain the letter, for that is beyond his competence and would result in a completely irrelevant explanation.

[53]            Question 1743 seeks advice from Mr. Letourneau as to whether, in answer to the letter from his lawyer, he advised as to the "precise date of the first public disclosure.". Certainly there is the argument that privilege has been waived, but as I have set out above that does not assist, for the issue is the competence of Mr. Letourneau to answer such a question. It falls clearly beyond the bar dropped by Lord MacDermott in the Sherrard case (supra) and need not be answered.

[54]            At question 1744 there is a request that Mr. Letourneau ask his lawyer and patent agent, Mr. Edwards, as to the source of advice that disclosure was made approximately 18 August 1997. On the basis of the Court of Appeal's decision in Lumonics (supra) the request is for privileged information. This is not a case of waiving privilege by producing a letter, but rather of asking a question going beyond the letter, unless by waiving privilege over the letter there is also a collateral waiver of privilege over related communications on the same topic. Here counsel for the Defendant relies upon Risi Stone Ltd v. Groupe Permacon Inc. [1990] 3 F.C. 10 (F.C.T.D.), a decision of Madam Justice Reed. That decision involves disclosure of the whole of an edited document and does not deal with waiver of privilege over one document as constituting a waiver of the privilege attached to a related communications on the same topic.

[55]            Counsel for the Defendant also relies upon a passage in Sopinka on the Law of Evidence, 1999, second edition, Butterworths at page 757, that if privilege is waived as to one document, production of all documents relating to the acts contained in the communication will be ordered, Doland (George ) Ltd. v. Blackburn, Robson Coates and Co. [1972] 3 All E.R. 959, [1972] 1 W.L.R. 1338 (Q.B.) being relied upon for that proposition. The George Doland decision is, however, slightly narrower and indeed, may well be wrong. The privilege at stake was legal professional privilege and related to documents in existence before litigation was contemplated. The case also hinged upon the Civil Evidence Act of 1968, which brought about changes in the law of evidence and indeed before those changes the conclusion reached in the George Doland case would not have been possible. However I need not go into that area. In the George Doland case no authorities are cited and indeed Mr. Justice Lane invited the parties to test his decision on appeal.

[56]            Some ten years later the same area was explored much more extensively by Mr. Justice Hobhouse (as he then was), in General Accident Fire and Life Assurance Corporation Limited v. Tanter [1984] 1 W.L.R. 100. Mr. Justice Hobhouse concluded, in a gentle manner and after considering much case law and applying good logic, that "The decision in George Doland Ltd. v. Blackburn, Robson Coates and Co. [1972] 1 W.L.R. 1338 may be wrong unless it is to be justified on its own facts." (page 114). Mr. Justice Hobhouse went on to point out that as the document in question, on which privilege had been waived, had not been put into evidence there was no waiver as to other documents and even if and when the documents were put into evidence, the consequences of the waiver of privilege were to be construed very narrowly to what was or was not said on the date of the document and that the effect of the waiver was not such that it would open up later privileged communications as between solicitor and client for there is no spreading of waiver and such documents have not ceased to be privileged (loc cit.). Mr. Justice Hobhouse then went on to summarize the principles which he relied upon to reach the conclusion, interesting reading in themselves, but relevant here is that while the waiver of a part a document is a waiver of the whole document, the waiver of privilege in a given document does not "... of itself waive privilege in anything else." (loc cit.). He immediately goes on to point out that only by adducing evidence at trial does one become involved in the potential of further waiver. He then observes that any other approach, that is of a waiver in the case of one document having a ripple effect and resulting in waiver of privilege in other documents would "... have the most wide ranging consequences and indeed give rise a reductio ad absurdum." (page 115). In effect, the whole concept of privilege would become meaningless.

[57]            Counsel were unable to refer me to any Canadian authority for what I will call collateral waiver, other than a reference to Sopinka on the Law of Evidence in Canada, the 1997 edition, which merely suggests a broad collateral waiver comes into being based on the George Doland case. Risi Stone Ltd. v. Groupe Permacon Inc. [1990] 3 F.C. 10 (F.C.T.D.), although referred to by counsel, does not assist, for that case dealt only with disclosure of the entire content of a document, rather than only portions of a document over which privilege is claimed. Moreover, Lapointe v. Canada (Minister of Fisheries and Oceans) [1987] 1 F.C. 445 (F.C.T.D.), referred to in an aside by Madam Justice Reed in Risi Stone (supra), is of no assistance. In the Lapointe case it was not a matter of collateral waiver, but a plea that, in effect, the defendant had relied upon legal advice and in the context of the action and that, in the view of Mr. Justice Cullen, required disclosure of all legal opinions given by Crown counsel to the plaintiff, Mr. Lapointe. Mr. Justice Cullen noted, at page 450, that he had "... strong reservations against revoking solicitor/client privilege ..." but that the circumstances in that particular instance warranted disclosure of all opinions. Here I would again note that the case was not one of collateral waiver.

[58]            Relying upon General Accident Corporation v. Tanter (supra) there is no general doctrine of collateral waiver and certainly, in the present instance, no collateral waiver of privilege extending to all privileged correspondence merely on the basis of waiver of privilege over one letter. Thus question 1744 need not be answered.

Spousal Privilege

[59]            Among the numerous issues arising out of discoveries in this action is whether John and Elizabeth Letourneau, as they are known in their community, who together with their children have been a family unit for many years, may rely upon privilege as to conversations involving the stanchions, the question going to disclosure. Here the objection is based upon relevance and upon privilege. Conversations, and here I use the term generally, involving the development of the stanchions, could go to disclosure and thus be relevant. More pertinent is the objection as to privilege.

[60]            An appropriate starting point, as to whether privilege attaches to conversations between spouses, is section 4(3) of the Canada Evidence Act:

No husband is compellable to disclose any communication made to him by his wife during their marriage, and no wife is compellable to disclose any communication made to her by her husband during their marriage. [Emphasis added]

The difficulty with this section and leaving aside for the moment an aspect of the legislation which has been criticized by judges, that the communication by a husband to a wife is privileged only in that a wife may claim privilege and refuse to give evidence of the substance of the communication, is that the Letourneaus, not being formally married, do not come within the clear wording of section 4(3) of the Evidence Act, which is directed to a married couple and applies during their marriage. While I agree with counsel for the Plaintiffs, that to deny privilege to partners in a common law relationship is probably a denial of equal rights under the Charter, within the general framework of discussion and reasoning set out by Madam Justice McLachlin (as she then was) in Miron v. Trudel [1995] 2 S.C.R. 418 at 497-498 and that, in principle, a common law relationship ought to attract the benefit of and the privilege provided by section 4(3) of the Canada Evidence Act, that does not assist for, as pointed out above, a husband may still be compelled to give evidence as to what he said to his wife.

[61]            In that the Canada Evidence Act clearly does not apply to this situation it is appropriate to examine privilege in the context of this particular situation by applying the four criteria set out in Wigmore on Evidence, McNaughton Revision, Little, Brown and Company of Toronto, 1961, at section 2285, pages 527-528:

... four fundamental conditions are recognized as necessary to the establishment of a privilege against the disclosure of communications:

(1) The communications must originate in a confidence that they will not be disclosed.

(2) This element of confidentiality must be essential to the full and satisfactory maintenance of the relation between the parties.

(3) The relation must be one which in the opinion of the community ought to be sedulously fostered.

(4) The injury that would inure to the relation by the disclosure of the communications must be greater than the benefit thereby gained for the correct disposal of litigation.

Only if these four conditions are present should a privilege be recognized.

That they are present in most of the recognized privileges is plain enough; and the absence of one or more of them serves to explain why certain privileges have failed to obtain the recognition sometimes demanded for them. In the privilege for communications between attorney and client, for example, all four are present, the only condition open to any dispute being the fourth. In the privilege for communications between husband and wife, the first three conditions are again clearly present, with only the fourth in any doubt; ...

Wigmore's test as to privilege has been applied in many instances, including by the Supreme Court of Canada in R. v. Gruenke [1991] 3 S.C.R. 263 at 284 and following, by the Chief Justice, who went on to refer to the application of the Wigmore test as involving a case-by-case analysis of privilege.

[62]            In the present case I accept, on the basis of the affidavit evidence of Mr. Letourneau and the view of the editor of Wigmore that the first three elements are clearly present. This leads to a consideration of the fourth element and whether disclosure of the communication would result in injury to the relationship between the Letourneaus, greater than the benefit which might be gained in order to correctly dispose of the issue of disclosure. There are two aspects here. First, it is essential that communications, in private, between a couple, be kept confidential. It is very important that a couple be perfectly free to use each other as sounding boards to voice their aspirations, plans and ideas and all the more so where one of the partners is an inventor, interested or even excited about a project and requiring a good and perhaps critical listener. As to the necessity of access to the conversation for the correct disposal of the present litigation, I would be quite surprised if any judge considering discussion of an invention between partners, with a relationship similar to that of husband and wife, would ever hold that a discussion between those two people, as an inventor and a listener and even a listener providing comment and critique, amounted to disclosure. The benefit gained by the disclosure of whatever conversations about the stanchions took place between John Letourneau and Elizabeth Letourneau would lend, at most, exceedingly marginal benefit to the correct disposal of the portion of this action involving disclosure in the patent law sense. Questions 1053 and 1306 through 1312 need not be answered.

Canadian Applications and File History

[63]            Under this category the Defendant seeks answers to a number of questions relating to the prosecution of Mr. Letourneau's patent application in Canada. The objection to these questions is that the documents, as a part of the Canadian prosecution of the patent, are not relevant. Here counsel for the Plaintiffs relies upon CAE Machinery Ltd. v. 29598505 Quebec Inc., an unreported 21 January 2000 decision in file T-730-97, of Mr. Justice Hugessen, who commented upon the admissibility of file wrapper material or, as it is also called, the prosecution history of the patent:

[7]      I further am of the view that since file wrappers estoppel is not an admissible plea in this country, questions relating to the prosecution of the patent, to patent agent files and questions relating to the prosecution of foreign patents are generally inadmissible. There may be some circumstances in which a specific question dealing with facts as to such prosecution may be admissible but the questions asked in the present case are, in my view, without exception all too broad and general to qualify.

From this I take it that in some circumstances fairly specific questions dealing with the prosecution of the patent may be admissible. This disclosure is also bounded by the fact that information created after the filing date of the patent has neither probative value nor relevancy, a point made by Prothonotary Morneau in Richter Gedeon Vegyészeti Gyav RT v. Merck & Co. (1996) 68 C.P.R. (3d) 8 (F.C.T.D.) at 15:

Finally I am of the view that August 4, 1987, which the filing date of the patent in suit, shall serve as a bar to any of the requests discussed in the present motion since I fail to see how any information created or filed after August 4, 1987 could fairly lead to a train of inquiry which might have some useful probative value in terms of relevancy.

However, it is interesting to note that Prothonotary Morneau was satisfied that the internal prosecution file histories of the plaintiff, as to both foreign and Canadian patents, might assist the defendants, or damage the case of the plaintiff, including as to prior art (page 14).

[64]            Counsel for the Defendant concedes that prosecution history is not relevant when the issue is the scope of the patent as issued, a point made by the Supreme Court of Canada in Free World Trust v. Electro Santé Inc. (2000) 9 C.P.R. (4^th) 168 at 197, Mr. Justice Binnie going on to point out that extrinsic evidence ought not to be used to define the monopoly granted by the patent when the emphasis should be on the language of the claims themselves. However he did concede that:

[67]     This is not to suggest that prosecution history can never be relevant for a purpose other than defining the scope of the grant of the monopoly: Foseco Trading A.G. v. Canadian Ferro Hot Metal Specialties, Ltd. (1991), 36 C.P.R. (3d) 35 (F.C.T.D.) at p. 47. That point does not arise in this case for decision and lies outside the scope of these reasons. [Page 198].

In Foseco Trading, referred to in the above quotation, Madam Justice Reed felt it was clear that information contained in file wrappers, domestic or foreign, might be relevant for some purposes on some occasions:

It seems clear that information contained in file wrappers, either domestic or foreign, may be relevant for some purposes on some occasions. It may be that much of the information obtained by asking questions relating thereto will turn out to be irrelevant but that is a decision for the trial judge to decide in the context of the case as presented. It is often difficult to know whether the answer to a question is relevant before one knows what the answer is and how it fits into the defendant's theory of its case. Accordingly, I am of the view that the prothonotary proceeded on a wrong principle in refusing to require that the questions be answered. The train of inquiry is one that the defendant is entitled to pursue at this stage. In the light of the jurisprudence set out above, it is my view that it is premature at the discovery stage to prevent questions being asked concerning information contained in file wrappers.

Madam Justice Reed went on to observe, in Foseco Trading, at page 49 that, in asking questions about documents, there must be a distinction between interpretation of the document by the witness and questions which ask for information concerning facts which are stated in the document.

[65]            As Mr. Justice Muldoon pointed out in Merck Frosst Canada Inc. v. Canada (Minister of Health) (2000) 8 C.P.R. (4^th) 87 (F.C.T.D.) at 98, "... it is clear that, for purposes other than construing a patent, extrinsic evidence has repeatedly been accepted; ..." (page 98). Further, in Samsonite Corp. v. Holiday Luggage Inc. (1988) 20 C.P.R. (3d) 291 (F.C.T.D.) Madam Justice Reed acknowledged that file wrapper material might be evidence to show what prior art had been before the patent examiner, although she went on to point out that such evidence, even if technically admissible, might carry little weight (pages 315 and 316). To the same issue, that of prior art before the patent examiner, see also Scientific Games Inc. v. Pollard Banknote Ltd. (supra) at 501. This leads to the type of questions to which the Defendant seeks answers for generally, so long as the file wrapper questions do not go to the scope of the patent and do not require interpretation of the patent they may, depending upon the circumstances, be proper questions, subject to whatever evidentiary weight the hearing judge might place on the answers.

[66]            In the present instance the questions are said to go to the presumption of validity in the sense of what was before the patent examiner and by implication what was not before the examiner; to the compensation payable under section 55(2) of the Patent Act between the laid open date in March of 1999 and the date of the issuance of the patent, 11 July 2000 and here there is some issue as to whether changes were made to the patent or whether the original application matured into the patent; and to the issue of a document delivered by Mr. Letourneau to Clearbrook and whether or not it was part of the Canadian patent application, there being allegations of a sham application and a false document. None of this goes to the scope of the patent. The Plaintiff is to answer questions 1768, 1779 and 1782 to the extent that none of the questions extend past the filing date.

Questions as to Corresponding American Patent Application

[67]            This line of questioning deals with an American patent application, the Plaintiffs having produced the prior art cited in the application for the American patent. More specifically, the questions deal with prior art and communications as to prior art with the United States Patent and Trade-mark Office, including reasons for objections to and refusal of the application.

[68]            Counsel for the Plaintiffs questions the admissibility of such questions and then, correctly, points out that where admissible such questions must be fairly specific: see for example CAE Machinery Ltd. v. 29598505 Quebec Inc., an unreported 21 January 2000 decision in file T-730-97. Counsel then goes on to refer to another decision of Mr. Justice Hugessen, Eli Lilly and Co. v. Apotex Inc. (2000) 8 C.P.R. (4^th) 413 (F.C.T.D.) at 415-416:

¶ 5 That brings me to paragraph 5, which requests the production of foreign, not Canadian, file wrapper material. The only suggestion as to what might be relevant in such material with respect to the pleaded issues is prior art. I have already dealt with the issue of prior art. I am aware that there are some cases in this Court in which foreign file wrappers have been ordered produced. With respect, those cases may have turned on particular facts, or there may have been particular allegations which supported those orders for production. I am not aware that in this case, there are any allegations which would support the production sought and as I said at the beginning, I am of the view that the knowledge of the patentee or of the inventor of prior art is simply not relevant to the issue of obviousness.

In Eli Lilly Mr. Justice Hugessen was dealing with production of documents, but goes on, in the above quote, to observe that "... I am of the view that knowledge of the patentee or of the inventor of prior art is simply not relevant to the issue of obviousness.".

[69]            To the contrary counsel for the Defendant refers to Denharco Inc. v. Forespro Inc., an unreported 9 July 2002 decision of Mr. Justice Pinard in action T-1868-98 in which at issue were questions arising out of the rejection of an application for a corresponding patent in the United States. Initially the objection to the discovery questions was upheld, but on appeal from the prothonotary, the witness was required to confirm that the American patent application was never accepted, whether the reasons for the non-acceptance of the American patent were disclosed, what the reasons were that the corresponding American patent application was rejected and on what the prior art, bearing on the American patent application, consisted of. Here Mr. Justice Pinard relied upon Samsonite Corp. v. Holiday Luggage Inc. (1998) 20 C.P.R. (3d) 291 (F.C.T.D.) and upon Foseco Trading A.G. v. Canadian Ferro Hot Metal Specialties, Ltd. (1991) 36 C.P.R. (3d) 35 (F.C.T.D.).

[70]            In the Samsonite case the request for the introduction of the American file wrapper was to demonstrate what prior art had been before the patent examiner and what had not. Madam Justice Reed went on to express the view that the prior art, before the patent examiner, was relevant to the rebuttal of the presumption of validity, for at issue was not the construction of the claims: see pages 315 and 316. In Foseco Trading Madam Justice Reed relied upon Beatty Bros. Ltd. v. Lovell Manufacturing Co. and Maxwell Ltd., (1959) 30 C.P.R. 142 (S.C.C.) which deal with whether or not a pleading might refer to proceedings before the United States Patent Office as to a patent application. In Beatty Bros. the Supreme Court pointed out at page 144 that the admissibility of such evidence ought to be left to a trial judge to decide. Madam Justice Reed, in Foseco Trading, went on to refer to may authorities, including [1968] S.C.R. 307">Laboratoire Pentagon Ltée v. Parke, Davis & Co. [1968] S.C.R. 307, being cases which did not involve American documentation bearing upon scope or construction of the claim, in which information contained in file wrappers was proper evidence of the prior art that had been before the patent examiner. Madam Justice Reed summed this up at page 47:

In the light of all this jurisprudence, what is the applicable principle? It seems clear that information contained in file wrappers, either domestic or foreign, may be relevant for some purposes on some occasions. It may be that much of the information obtained by asking questions relating thereto will turn out to be irrelevant but that is a decision for the trial judge to decide in the context of the case as presented. It is often difficult to know whether the answer to a question is relevant before one knows what the answer is and how it fits into the defendant's theory of its case. Accordingly, I am of the view that the prothonotary proceeded on a wrong principle in refusing to require that the questions be answered. The train of inquiry is one that the defendant is entitled to pursue at this stage. In the light of the jurisprudence set out above, it is my view that it is premature at the discovery stage to prevent questions being asked concerning information contained in file wrappers.

It was the view of Madam Justice Reed that both domestic and foreign file wrappers may be relevant, that relevance was for the trial judge to decide but in any event that it would be premature, on discovery, to prevent questions being asked concerning information in the file wrapper.

[71]            Applying all of this questions 1752, 1753, 1755 through 1758 and 1760 shall be answered. Question 1759 and 1761 deal with whether or not the previous lawyer acting for the Plaintiffs, Mr. Edwards, advised by letter that he would be producing correspondence, record or communications with the United States Patent and Trade-mark Office relating to the patent application together with prior art dealt with in the American patent proceedings. There is a letter of 1 August 2001, from Mr. Edwards to Davis & Company, agreeing to produce that material, to the extent that it involves prior art and thus questions 1759 and 1761 are dealt with. Question 1754, the current status of the application for the American patent, is irrelevant and need not be answered.

A So-Called Sham Application

[72]            At issue here is a cease and desist letter which Mr. Edwards, lawyer for the Plaintiffs, had Mr. Letourneau deliver to Mr. Schellenberg, of the Defendant, Clearbrook Ironworks Ltd., as to a pending patent application. Here one question which was refused deals with the instructions given by Mr. Letourneau to Mr. Edwards and the other as to what material Mr. Edwards had given Mr. Letourneau. There are various ways to characterize this transaction and here I would begin by pointing out that there is no evidence of fraud or illegal conduct and I am not prepared to assume or imply such without better evidence and indeed Mr. Letourneau has explained the apparent alteration to a drawing as one made during discussion with Mr. Schellenberg to illustrate the bolt-on version of Life Rail, as compared with the Life Rail anchored in a socket passed into the wall panel. I accept this explanation.

[73]            Further, to allow expiration of this area would be to disregard the privilege which I have already found to exist as between Mr. Letourneau and Mr. Edwards. In my view there has been no waiver of privilege. Questions 1999 and 2017 need not be answered, nor must there be further production of documents in this area.

Questions Taken Under Advisement

[74]            This issue of questions as to the production of documents from Nu-Westech Engineering Ltd. was not argued on the motion. However, from the material, it would appear that the Plaintiffs have made appropriate inquiries and that if anything is outstanding it is for the Defendant to utilize Rule 233(1), dealing with the production of documents from non-parties.

[75]            As to the second category of refusals, questions as to amendments to the Canadian patent application, this area has been dealt with in my earlier discussion as to the Canadian applications and file history. Just as in that instance, the material may be relevant and should be produced.

Particulars

[76]            At issue are particulars of the features of the Plaintiffs' patent which are not found in the rail produced by the Defendant Clearbrook. In essence this is the request for particulars as to what are the essential elements in the first claim in the patent, being the "... rail mounting device for mounting railings to concrete slab walls comprising a stanchion and an anchor insert, ...". Certainly the Plaintiffs have described the substance of the invention in paragraphs 8 through 12 of the further amended statement of claim.

[77]            Arriving at or defining the essential elements is an important aspect in a patent infringement matter, for there may be no infringement if one or more essential elements are either different or are omitted. Conversely, non-essential elements can be omitted, without having a material infringement on the structure or means of operation of the invention: this concept is set out in Free World Trust v. Electro Santé Inc. (supra) at pages 178 through 180, 184-185 and at 190 through 195, summed up at pages 198 and 199. There is also a tension between requiring a plaintiff to construe the patent claim and the function of the Court, having heard all of the evidence, to construe the claim. This tension was part of the subject of the Federal Court of Appeal's decision in Northern Telecom Ltd. v. Reliance Electric Co. (1986) 8 C.P.R. (3d) 224. There the Court held that to require a plaintiff to construe a claim, at an initial stage in a proceeding to enforce a patent, despite it being a function of the Court, was not improper. In effect a plaintiff must particularized the rights to which he claims entitlement and which he alleges have been violated. This is of course a different question from asking the plaintiff for a technical opinion. Rather, it is a description of the right which the plaintiff says has been infringed. This is contrary to the view of Mr. Justice Marceau, as he was then, in McMaster Nitschke and Larimar v. Tamglass O.Y. (1981) 55 C.P.R. (2d) 69 at 71 for there all that was required were particulars as revealed in the pleadings, the view of Mr. Justice Marceau being that to further particularize a matter would induce the plaintiffs to set out large portions of the claim in the patent, which would be a useless procedure, or alternatively, would compel the plaintiffs to put a construction on those claims, which would be improper: see Tamglass at page 71. There Mr. Justice Marceau was of the view that the defendants did not need the particulars which they sought in order to understand the position of the plaintiffs, to know the case made against them or to appreciate the facts on which it was founded. Of course, in Tamglass, the issue was particulars before the filing of a defence (page 71). In Ermanco Inc. v. Rexnord Canada Ltd. (1982) 67 C.P.R. (2d) 176 Mr. Justice Walsh dismissed an application for particulars on the basis that it would be improper for the plaintiffs to, through furnishing further particulars, give their own interpretation of what constituted the subjects of the invention. After canvassing a number of substantial authorities, concluding with Tamglass, Mr. Justice Walsh determined that particulars provided were sufficient and that it would be improper that they give their own interpretation of what constituted the substance of the invention: see pages 178 through 180.

[78]            At this point it is useful to return to the Free World Trust case (supra) at pages 183 through 185. There Mr. Justice Binnie, writing for the court, observed that the identification of elements, as either essential or non-essential, should be made on a purposive construction of the language in the claim, but that there ought to be no resort to extrinsic evidence of the inventor's intention. From this I take it that the evidence of the inventor, in determining whether an element is essential or non-essential, is irrelevant.

[79]            Taking the case law into consideration and considering the statement of claim and the claims set out in the copy of the patent that is attached, no further particulars will be required, for it is now up to the Court to determine the substance of the invention, for as pointed out by Mr. Justice Rouleau, in Lapierre v. Echochem International Inc. (2002) 22 C.P.R. (4^th) 536 at 541, questions which relate to the substance of the invention or the interpretation of the patent are not appropriate. In Lapierre Mr. Justice Rouleau looked upon the questions at issue as questions which could not possibly relate to the substance or essential elements of the patent. The questions at issue in the present instance, a request that the Plaintiffs define the essential elements and the non-essential elements fall within the principle enunciated in Free World Trust and in Lapierre.

CONSIDERATION OF LETOURNEAU'S MOTION

[80]            I now turn to the motion of the Plaintiffs requiring Neil Schellenberg's attendance at a continuation of his oral discovery to deal with, where appropriate, various undertakings; to answer questions taken under advisement; to answer questions refused; and to answer questions properly arising out of required answers.

Undertakings

[81]            As to discovery undertakings, Plaintiffs' counsel advises that they have been provided, or perhaps more properly, provided to the extent presently relevant, for some are related to matters subject to a bifurcation order.

Questions Taken Under Advisement

[82]            Under this category the questions taken under advisement, these remain questions 355 and 600.

[83]            To begin, counsel for the Plaintiffs submits that on taking a question under advisement the witness, or in practice counsel, ought to provide reasons for not providing an answer at that point.                  

[84]            Rule 95 requires a reason be given for an outright refusal to answer a question and this is proper, for it makes the discovery process more efficient, including by giving an indication to counsel for the discovering party as to whether he or she ought to invest time and money in requiring an answer: see Scientific Games Inc. v. Pollard Banknote Ltd. (1997) 73 C.P.R. (3d) 461 (F.C.) at page 491. Mr. Justice Evans, as he was then, makes the point in Glaxo Group Ltd. v. Novopharm Ltd. (1999) 3 C.P.R. (4^th) 333 (F.C.) at 339 that questions ought not to be taken under advisement in order merely to avoid the requirement, in Rule 95, that grounds must be given for objecting to a question, particularly so as to give questioning counsel the opportunity to revise the question in order to meet the objection.

[85]            Counsel for the Plaintiffs submits that if counsel for the Defendant had intended to object to questions taken under advisement, he ought to have given a reason during the discovery: the Rules do not go that far, nor has there been any apparent abuse of the advisement procedure, a point which concerned Mr. Justice Evans in the Glaxo Group case (supra).

[86]            Question 355 itself deals with the validity of the Letourneau patent and particularly, given a denial in the further amended defence and counterclaim, that John Letourneau is the inventor of the patented rail stanchion, a response which has now gone from taking the question under advisement to a crystallized denial.

[87]            While Mr. Schellenberg felt the invention was largely in the public domain, defence counsel said:

... we'll take the request under advisement and advise you accordingly as to any particular names of other inventors we'll be pursuing at trial.

Going on to say that

Particulars of what we pursue have not been determined, but as soon as we have made the determination, we will advise in ample time before trial.

At that point counsel for the Plaintiffs makes the point that the request is one which might be brought as soon as the defence is filed, although sometimes it is deferred until examination for discovery, pointing out that, in his view, the case law was clear that such particulars have to be provided.

[88]            In the present instance counsel for the Defendant submits that the Plaintiffs seek these particulars for trial, but goes on to point out that a traverse of an allegation does not give rise to a right to particulars, referring to McLeod Lake Indian Band v. Chingee (1998) 144 F.T.R. 156 (F.C.T.D.) at 159 and to a related decision, to the same effect, McLeod Lake Indian Band v. Chingee, (1998) 149 F.T.R. 113 (F.C.T.D.) an unreported 8 May 1998 decision in file T-2327-97 at paragraph 5. However the matter does not end there.

[89]            Counsel for the Plaintiffs points out that by section 43(2) of the Patent Act the patent is assumed to be valid, with the onus of showing invalidity upon the party attacking the patent, here referring to McPhar Engineering Co. of Canada Ltd. v. Sharpe Instruments Ltd. (1960) 35 C.P.R. 105 (Ex. C.C.) at 129:

It must follow from the provision of the Act that a patent granted under it "shall thereafter be prima facie valid" and avail its grantee and his legal representatives for the term of the patent that the onus of showing that it is invalid lies on the person attacking it, no matter what the ground of attack may be, and that until it has been shown to be invalid the statutory presumption of its validity remains.

This does not mean that the patent is immune from attack or that the patentee is free from the obligations that are incumbent on him by way of consideration for the grant of the patent monopoly to him, but it seems clear that, since Parliament has deliberately endowed a patent granted under the Act with a presumption of validity, the onus of showing that such a patent is invalid is not an easy one to discharge. That being so, the English decisions indicating that a patentee must prove the existence of the essential attributes of the patentability of the invention covered by his patent before he can succeed in an action for damages for infringement of his rights under his patent are no longer applicable in Canada. He need not prove the existence of these attributes, for he starts with a statutory presumption of their existence in his favour and the onus of showing their non-existence lies on the alleged infringer of the patent. The enactment of the statutory presumption of validity effected an important change in Canadian patent law and marked a substantial advance in the protection of a patentee's rights.

In the further amended defence the Defendant denies that Mr. Letourneau is either the inventor or the sole inventor of the patented rail stanchion. Moreover, the Defendant goes on, in its counterclaim, to challenge the validity of the patent, thus the Defendant's position goes beyond a mere traverse. Counsel for the Defendant submits that to have standing to bring the present action the Plaintiffs must establish that Mr. Letourneau is the patentee, otherwise he may not enforce the patent, notwithstanding validity of the patent. Here counsel refers to a Federal Court of Appeal decision, 671905 Alberta Inc. v. Q'Max Solutions Inc. (2003) 241 F.T.R. 160 at paragraphs 37 through 40. In that instance at issue was the chain of title, the Trial Judge having determined that the line of title, from the original patentee through to the plaintiffs in that action, had not been established. However in the present instance it is not a chain of title which is of concern, but rather an assertion by the Defendant that someone else, unidentified, is the proper patentee. Here counsel for the Defendant refers to a headnote in [1967] S.C.R. 196">Traver Investments Inc. v. Union Carbide Corp. [1967] S.C.R. 196, to the effect that the onus of proof was on the inventor not only because he was asserting an affirmative, that he was the inventor, but also because the subject matter of the allegations, concerning the patent, lay particularly within the inventor's knowledge. Headnotes are always a dangerous source for any proposition. The Traver case does not particularly assist the Defendant, in that I do not see it as on point.    Moreover, we are not yet at a point at which the Plaintiffs must satisfy the Court, on the balance of probabilities, that Mr. Letourneau is the true inventor. Here I refer back to McPhar Engineering Co. of Canada Ltd. v. Sharpe Instruments Ltd. and repeat the observation that the onus is on the party attacking the patent and that the statutory presumption of validity remains until the contrary has been established.

[90]            Generally, where a Defendant attacks the validity of a patent by asserting that a named inventor was not in fact the actual inventor, particulars will be ordered: see for example Contour Optical B.T.K.I. Inc. v. Hakim Optical Laboratory Ltd. (2001) 201 F.T.R. 152 (F.C.T.D.) at paragraphs 7 through 34, and Amerace Corp. v. Minnesota Mining & Manufacturing Corp. (1975) 20 C.P.R. (2d) 105 (F.C.T.D.) at 107.

[91]            I also note, as properly pointed out by counsel for the Plaintiffs, that particulars for trial, as is the case here, are much broader, so that a party may properly prepare its case for trial: see for example Cat Productions Ltd. v. Macedo (1984) 1 C.P.R. (3d) 517 (F.C.T.D.) at 519-520.

[92]            In Cat Productions Mr. Justice McNair observed that "Particulars are ordered more freely than in earlier times for the days of 'trial by ambush' are now gone." (loc cit.). In the present instance the Defendant will provide particulars of the person or persons whom they believe in fact to be the inventor or inventors for various reasons.    First, this is not a matter of a mere traverse, but by the counterclaim is a positive allegation going beyond a mere traverse. Second, to deny particulars of the view of the Defendant as to the actual inventor would invite a trial by ambush. Finally, counsel for the Defendant undertook, on discovery, to advise counsel for the Plaintiffs "... as to any particular names of other inventors we'll be pursuing at trial." (page 63) and in the case where the Defendant had not determined the particulars to "... advise in ample time before trial." (page 64).

[93]            Allegations in a defence or a counterclaim, particularly where they are positive allegations, ought not to be made in a vacuum in the hope that something will turn up before trial. To the extent that the Defendant presently has particulars as to the person or persons whom it believes to be the inventor, those shall be provided forthwith. To the extent that the Defendant intends to argue, at trial, that another person or persons are the true inventors, they shall complete their research and in order to give the Plaintiffs opportunity to assess their position, before unnecessary further expenditures of time and money, provide those particulars, as requested under question 355, within 45 days.

[94]            Following question 600 counsel for the Plaintiffs seeks particulars of the defence, that is of the denial of the infringement, by asking what features of claim 1 in the patent, the rail mounting device comprising a stanchion and an anchor insert with, among other features, a stanchion offset to bring the rail up and over the edge of the floor being worked from, are not found in the competing product produced by the Defendant, Clearbrook: in effect, what is sought are particulars of the defence, the denial of the infringement, a matter taken under advisement. Here counsel for the Plaintiffs refers to lengthy paragraph 11 of the defence in which the Defendant says that after the 11^th of July, the day on which the patent was issued to the Plaintiff, the Defendant manufactured stanchion devices which "could be used for mounting on concrete wall and on other structures and could be used in conjunction with railings." but apparently did not manufacture a stanchion involving an anchor insert in a concrete wall, but rather manufactured, sold or rented an offset or dog-leg stanchion designed to be bolted to a wall or other structure, apparently precast in the concrete wall.

[95]            In this instance the Plaintiffs refer to Cabot Safety Intermediate Corp. v. Minnesota Mining and Manufacturing Co., a 27 June 2000 decision of Prothonotary Morneau in action T-385-00. In Cabot Safety at issue was the design of earplugs and particularly mere denials of various paragraphs of the statement of claim. There the defendants submitted that to state the material facts upon which they relied to give rise to denials would provide an interpretation of the claims found in the patent. Particulars were ordered. This is in line with the general proposition that explanation of relevant issues in order to prove or disprove an allegation, is proper: see Hayden Manufacturing Co. v. Camplas Industries Ltd. (1998) 83 C.P.R. (3d) 19 (F.C.) at page 21.

[96]            In the present instance I am guided by the decision of Mr. Justice Muldoon in Ductmate Industries Inc. v. Exanno Products Ltd. (1983) 75 C.P.R. (2d) 190 (F.C.T.D.) at 193, a decision dismissing the request of the plaintiff that the defendant express, through oral examination for discovery, the elements of the claim of the plaintiff not found in the system used by the defendant. In the present instance I accept that the Defendant has produced samples of his products, placing the parties in a position to argue at trial, on the basis of factual information in the form of the stanchions produced by both sides and the patent held by the Plaintiffs, that the product of the Defendant does or does not embody features claimed in the patent.

[97]            Certainly an explanation of the relevant issues between the parties is, generally, proper. However in this instance it is for a court to distinguish essential and non-essential claims in the patent, as compared with the Clearbrook product and following that exercise to determine the protection to which the Plaintiffs are entitled. Here I would refer to the interesting analysis of patent claims in the context of fences and boundaries to establish the field of the monopoly as discussed by the Supreme Court of Canada in Free World Trust v. Électro Santé Inc. (supra) at 178-179. The Defendant need not answer the question which follows immediately on question 600. I now turn to the refusals of the Defendant, which are set out in Schedule "C" to the motion of the Plaintiffs.

Refusals

[98]            The refusals of various discovery questions by the Defendant, which the Plaintiffs characterizes largely as a matter of privilege and of identity of witnesses, is by far the largest category dealt with on this motion by the Plaintiffs. Here counsel for the Plaintiffs, quite properly, is not looking for communications after the commencement of litigation. However the Plaintiffs do look for what they characterize as raw facts about which the witness may inform himself.

Privilege

[99]            More particularly, question 216 arises out of an earlier resolved action involving Fairwind Construction Products Ltd., Ram Construction Inc. and Mr. Al Lloyd. Mr. Schellenberg acknowledged that he had spoken to Fairwind about their guard rail system. Thus at question 216 counsel for the Defendant objects to disclosure of the substance of a conversation between Mr. Schellenberg and someone at Fairwind on the grounds that communications with third parties, in some other litigation, is privileged.

[100]        At questions 222 and 223 counsel for the Defendant takes the same position as to discussions between his client and Ram Construction and his client and Mr. Al Lloyd, neither of whom are parties to the present litigation, but who were involved in an action, since settled, by the present Plaintiffs. Those conversations were after commencement of the present litigation and while counsel for the Plaintiffs looks not to disclosure as to communications, but rather as to factual information, such are said by counsel for the Defendant to be privileged. Similarly at question 243 counsel for the Defendant takes the position that the content of the discussions between his client and non-parties, for the purpose of the present litigation, is privileged.

[101]        The basic position of the Plaintiffs is that litigation privilege attaches to communication conveyed to and by a lawyer for the purposes of litigation, but does not apply to relevant facts that are within the knowledge of a witness, regardless of the source of the information. Certainly legal advice and evidence used to establish legal facts need not be disclosed. However counsel for the Plaintiffs submits that factual information arising out of the discussions by Mr. Schellenberg, with non-parties, is not privileged.

[102]        A starting point for this position is the decision of Mr. Justice Hugessen in Dupont Canada Inc. v. Emballage St-Jean Ltée, [1999] F.C.J. No. 1429 (QL), at paragraphs 3 and 4:

The questions were refused to be answered, however, on the ground of litigation privilege. Litigation privilege is not the same as solicitor and client privilege. It is in my view a far more restricted privilege than that which attaches to communication between solicitor and client. It is my view that the privilege attaches to documents conveyed to a solicitor for the purposes of or a contemplation of litigation. It does not, however, apply to relevant facts which are within a party's knowledge, even though the information may also be contained in documents which are generated for the purposes of litigation. It is the fact of communication and not the fact communicated which is protected.

It must be born in mind as well that examination for discovery is an examination not of a witness but of a party and what is being sought is the knowledge of the party with respect to the facts which are relevant and at issue in the subject litigation.

In short, Mr. Justice Hugessen circumscribes and limits litigation privilege to documents conveyed to a solicitor for the purposes of or a contemplation of litigation. In the present instance documents are not at issue, but merely relevant facts, which are produceable, even if contained in documents generated for the purposes of litigation, so long as those facts are within the knowledge of the party.

[103]        To the same effect is the decision of the Nova Scotia Court of Appeal, Global Petroleum Corp. v. CBI Industries Inc. (1998) 172 D.L.R. (4^th) 689. In that case there had been a refusal to answer questions on the basis of litigation privilege, lawyers' work product and lawyers' brief rules. In Global Petroleum, there are several relevant passages at page 695:

... The privileged communication itself need not be disclosed nor need a party disclose the evidence on which he will rely to prove his case at trial in the sense of disclosing trial strategy. However, facts of which the appellants were aware that relate to the allegations in their statement of claim - whatever the source, including lawyers - must be disclosed. The source need not be.

It is beyond dispute that privilege cannot be used to protect factual disclosure if those facts are relied on by a party in support of its case. It is immaterial that the fact was discovered through the solicitor or as the result of the solicitor's direction. If it is relied on it must be disclosed.

I would observe that, on discovery, counsel for the Defendant was not prepared to advise that there would be no allegation that any of the products made by Fairwind constituted an alternative to the product of the Plaintiff. Here I note the concept set out by the Nova Scotia Court of Appeal in Global Petroleum that if a fact is going to be relied upon, it must be disclosed.

[104]        Interestingly, the Nova Scotia Court of Appeal in Global Petroleum, went on to refer to a passage from Maines and Silver on Solicitor-Client Privilege in Canadian Law, Butterworth, 1993, at page 32, there referring to a decision of President Jackett of the Exchequer Court in Susan Hosiery Ltd. v. Minister of National Revenue [1969] C.T.C. 353 at 361:

Whether we are thinking of a letter to a lawyer for the purpose of obtaining a legal opinion or the statement of facts in a particular form requested by a lawyer for use in litigation, the letter or statement itself is privileged but the facts contained therein or the documents from those facts were drawn are not privileged from discovery if, apart from the facts having been reflected in the privileged documents, it would have been subject to discovery.

And similarly, also from the Susan Hosiery case:

What is privileged is the communications or working papers that came into existence by reason of the desire to obtain a legal opinion ... in the one case, and the materials created for the lawyer's brief in the other case. The facts or documents which happen to be reflected in such communications or material are not privileged from discovery if the party would otherwise would be bound to give discovery of them.

To summarize the position of the Plaintiffs is that it seeks purely factual information from the witness for the Defendant, Mr. Schellenberg.

[105]        Counsel for the Defendant relies upon the affidavit of Mr. Schellenberg which refers to a meeting with Mr. Lloyd, of Ram Construction Inc., in about July of 2000, to discuss and deal with the threat of legal action arising from the earlier approaches and demands made by Mr. Letourneau. Subsequently Clearbrook and Ram Construction Inc. each retained the same counsel to deal with litigation commenced against them in October of 2000.

[106]        Counsel for the Defendant refers first to Commercial Union Assurance Co. PLC v. M.T. Fishing Co., a 14 January 1999 decision in Federal Court file T-248-95, affirmed 10 June 1999, file A-70-99. In the Commercial Union case the analysis was on the basis of litigation privilege and the dominant purpose of a communication which, as Mr. Justice Dubé pointed out, at paragraph 6, and applied to a communication made by a party before counsel had been retained. Involved in Commercial Union was an investigation as to possible insurance fraud. Mr. Justice Dubé went on to point out that "The point in time at which the dominant purpose of communications becomes that of furthering the course of litigation must be determined by the particular facts in each case." (paragraph 6). Here there is a difference in opinion between that of Mr. Justice Dubé, upheld by the Court of Appeal, and the opinions expressed by Mr. Justice Hugessen, in Dupont Canada Inc., upheld (2000) 266 N.R. 366 and of the Nova Scotia Court of Appeal in Global Petroleum, relying upon Maines and Silver and the Susan Hosiery case (supra). However, while counsel for the Defendant relied upon litigation privilege, in objecting to the question on discovery, counsel has now changed position, referring to common interest privilege and thus while I favour the view expressed in Dupont Canada Inc. (supra) I need not choose between two somewhat contradictory lines of cases.

[107]        Madam Justice Reed touches upon common interest privilege in Almecon Industries Ltd. v. Anchortek Ltd. (1998) 85 C.P.R. (3d) 30 (F.C.T.D.) at 33, defining common interest privilege as the privilege between a plaintiff or a defendant and other persons standing alongside him or her, who have the self-same interest and who have consulted lawyers on the same point, but have not been made a party to the action. Madam Justice Reed referred to Sopinka on the Law of Evidence, Butterworth, 1992, at page 669:

In all such cases I think the court should, for the purposes of discovery, treat all lay persons interested as if they were partners in a single firm or departments in a single company. Each can avail himself of the privilege in aid of litigation. Each can collect information for the use of his or the other's legal advisor. Each can hold originals and each make copies. And so forth. All are the subject of the privilege in aid of anticipated litigation, even though it should transpire that, when the litigation is afterward commenced, only one of them is made a party to it. No matter that one has the originals and the other has the copies. All are privileged.

In Pitney Bowes of Canada Ltd. v. Canada (2003) 225 D.L.R. (4^th) 747 (F.C.T.D.) Mr. Justice O'Reilly, at page 750, looked upon common interest privilege as attaching to documents when litigation was anticipated. Such documents might be shared with others, not party to the litigation, but who had a common interest and the privilege would be maintained. Similarly, in St. Joseph Corp. v. Canada (Public Works & Government Services) (2002) 218 F.T.R. 41 (F.C.T.D.), at paragraph 78, Madam Justice Heneghan looked upon common interest privilege in terms of protecting "... shared, but otherwise privileged, communication between individuals who have a common interest in anticipated litigation from disclosure to the world at large." (page 538). Similarly, counsel for the Defendant refers to Maines and Silver (supra) for the proposition, at page 65, that:

If two clients with a common interest and a common solicitor exchange information for the purpose of obtaining legal advice, the communications are privileged in the hands of each to the outside world.

[108]        Finally, I would refer to UPM-Kymmene Corp. v. Repap Enterprises Inc., [2001] O.J. No. 4220 (QL), a decision in Ontario Superior Court of Justice file 99-CL3536. There Justice O'Driscoll was of the view, relying upon Maines and Silver (supra) that:

If two clients with a common interest and a common solicitor exchange information for the purpose of obtaining legal advice, the communications are privileged in the hands of each to the outside world.

[109]        The cases on common interest privilege are ambiguous in that some of them refer to documents passing between clients with a common interest and others refer to communications. This to my mind is a distinction which ought not to be made. Moreover, to try to break off purely factual information, from privileged information, would seem to break into the concept of privilege, for all information, to at least some degree, must be factual. Moreover, the concept of communication is broad, going to a sharing of knowledge, the transmission of information and the deliberate interchange of thoughts or opinions: see Chmara v. Nguyen [1993] 6 W.W.R. 286 (Manitoba Court of Appeal) at 292, referring to the entry for communication in Black's Law Dictionary, 6^th Edition, 1990. This may be coupled with the concept that where a valid privilege exists, information is privileged and need not be disclosed: see for example Smith v. Jones (1999) 169 D.L.R. (4^th) 385 (S.C.C.) at 399-400 and also, for a similar proposition, the dissenting decision of Justice Major at pages 392 through 397.

[110]        Analysing this privilege issue in a slightly different context, a request for factual information, tracked down by a client with the dominant purpose of pending litigation, if not subject to privilege, would entitle the other side to find out what was in opposing lawyers' brief. To quote President Jackett, in Susan Hosiery Ltd. (supra) at page 34, "If lawyers were entitled to dip into each other's briefs by means of the discover process, the straightforward preparation of cases for trial would develop into a most unsatisfactory travesty of our present system.". In short, this would emasculate privilege, a retrograde step.

[111]        Clearly, certain facts may not be privileged and here I have in mind the often cited example from Lyell v. Kennedy (No. 2) (1883) 9 App. Cas. 81 (C.A.) to the effect that if a person saw the thing itself that is not a privileged fact, but if the fact comes from counsel's brief privilege does, in fact, attach (page 87). This concept is picked up and explained by President Jackett, in Susan Hosiery (supra) at page 34 extending privilege to communications coming into existence by reason of a desire to obtain legal assistance, including material created for the brief of the lawyer. In short, information coming from a privileged communication, here communication between clients with a common lawyer, information which, as here, is for the dominant purpose of litigation, is privileged. Thus questions 216, 222, 223 and 243 need not be answered except as to the names of witnesses and address information, which I understand have now been provided to counsel for the Plaintiffs.

Prior Art

[112]        At question 235 at issue is the issue of the knowledge of prior art held by anyone at either Fairwind or Ram Construction. That issue is now moot, for not only did the witness advise that he had no idea, but also there was considerable discovery of Fairwind and of Ram Construction, by counsel for the Plaintiffs, in the related action.

[113]        A number of areas and principles of law, including those involving disclosure of the invention, Workers Compensation involvement, statements by Mr. Letourneau to Mr. Tecklenborg and documentation as to the form of the coil braces have been dealt with in these reasons in the context of the Defendant's motion. I turn first to questions of disclosure of the invention asked by counsel for the Plaintiffs.

Allegations of Disclosure of the Invention

[114]        The group of questions under this heading, put to Mr. Schellenberg, reflects a parallel set of questions asked of Mr. Letourneau and with which I have already dealt. I have also set out the applicable law earlier in these reasons.

[115]        At question 373, undesignated in the transcript but at page 87, line 8, counsel asks Mr. Schellenberg as to his information about conversations, before 17 August 1997, between Mr. Letourneau and those at Aggressive Tube Bending. Here and at lines 20 and 25, dealing with knowledge of conversations between Mr. Letourneau and other individuals, the witness replies that he has no personal knowledge. This is a proper answer. I am not about to require Mr. Schellenberg to delve into his counsel's brief in order to produce answers. Counsel already has a factual answer on these questions. Nothing further is required.

[116]        The questions at paragraph 426, pages 105 and 106, deal with the information which Mr. Schellenberg might have as to the public demonstration of the Letourneau system and the sources of that information. Here the witness responds first that he obtained the information that he has by sitting through the discovery of Mr. Letourneau and second, that he has no personal knowledge that he would consider either factual or reliable. The answers leave open what might be in counsel's brief. The answer is sufficient.

[117]        Questions 501, 543 and 544 seek to explore Mr. Schellenberg's knowledge of statements made by Mr. Letourneau and information which Mr. Schellenberg might have gathered from third parties going to disclosure by Mr. Letourneau of the invention. Mr. Schellenberg makes it clear that he himself has no information as to what was said by Mr. Letourneau to various third parties. The questions need not be further answered.

Documents from the Workers Compensation Board

[118]        At questions 358 and 359 counsel for the Plaintiffs seeks to determine the inquiries made of the Workers Compensation Board for documents, names and addresses of persons at the WCB who have provided specific relevant factual material and whether any inquiry was made on behalf of the Defendant. Here the response of Mr. Schellenberg is that there was no inquiry of the WCB for any specific information and that he does not believe any inquiry was made on his behalf.

[119]        Whether or not counsel may have, for the purposes of his brief, gathered information from the WCB, is unclear. However counsel takes the position that if there was any information gathered for the purpose of the action, that information is sacrosanct as it would be in counsel's brief.

[120]        There are two issues. The first, involves factual information known to Mr. Schellenberg. That would be information which Mr. Schellenberg gathered or saw for himself. We have Mr. Schellenberg's answer that there is none.

[121]        The second category, here in question 358, seeks names and addresses of persons at the WCB who have provided specific material. Here counsel for the Plaintiffs relies again upon Dupont Canada Inc. for the proposition that litigation privilege attaches to documents but does not apply to relevant facts which a party knows, even though that information may be in the documents which are privileged. In effect it is the knowledge of the party that is relevant. Yet Mr. Schellenberg says that he personally has no information of this sort.

[122]        Counsel for the Plaintiffs also refers to Risi Stone Ltd. v. Groupe Permacon Inc. (1994) 56 C.P.R. (3d) 381 (F.C.T.D.), a decision of Mr. Justice Nadon, as he was then, at page 386. There Mr. Justice Nadon held that the witness should have informed himself by making inquiries of those in his employment and should have answered questions concerning the names and addresses of persons "who might reasonably be expected to have knowledge relating to any matter in question in the action". However, that list only included members of the team employed by Risi Stone in the research and development of the particular project.

[123]        More on point is Eli Lilly and Co. v. Nu-Pharm Inc. (1996) 69 C.P.R. (3d) 474, a decision of Mr. Justice Rothstein, as he was then. At issue there, on discovery, were the names and addresses of persons who had information pertinent to the issues. Mr. Justice Rothstein was:

... not satisfied that the information sought is subject to litigation privilege. The question asks for the names and addresses of persons who have information pertinent to the issues. As I apprehend the question, it seeks the names of those who have factual information. Litigation privilege will protect information obtained by a lawyer for the dominant purpose of use in litigation but does not extend to protecting names of factual witnesses even if such witnesses have been contacted by the lawyer. (Page 476).

Mr. Justice Rothstein went on to make it clear that the question must be interpreted in a restrictive manner to those who have provided specific material and factual information, both positive and negative, with respect to the issues, excluding expert witnesses.

[124]        In the present instance the names and addresses of witnesses, who provided specific factual information and material to the Defendant must be provided as sought in part of question 358. The balance of question 358 and question 359 need not be answered.

Statements by Mr. Letourneau to Mr. Tecklenborg

[125]        This topic is raised in the counterclaim, in the form of a discrediting by the Plaintiffs of the Defendant's business and particularly:

19(a)        On or about June 2, 2000, Letourneau made such statements to George Tecklenborg of Teck Construction. As a result of these statements, Teck Construction cancelled an order placed with the Plaintiff by counterclaim;

This is fairly serious in that the counterclaim puts the allegation into the context of a false and misleading statement. Certainly Rule 181(a) requires that particulars be provided of various serious allegations, including misrepresentation and fraud. I do not read fraud into the pleading, however there is clearly an allegation of a false and misleading statement, which I equate with misrepresentation under Rule 181(a). To allow the Plaintiff to properly deal with the counterclaim, to avoid ambush and so as not to waste the time of everyone, the hearing judge included, question 628, to the extent it bears on the allegations of false and misleading statements in section 19 of the counterclaim, must be answered.

Additional Document Production

[126]        I understand question 361, dealing with a letter from Weiler Smith Bowers, of 18 July 1997, addressed to the Workers Compensation Board, has been adequately resolved between the parties and indeed the following questions and answers would seem to exhaust anything useful which the witness might say.

Validity of the Letourneau Patent

[127]        At question 375 counsel for the Plaintiff refers to a plea of common general knowledge at paragraph 7 of the amended defence. Paragraph 7 sets out, in some detail, what is said to be information both known and available to those skilled in the art of designing railings, which term includes safety railing and supporting stanchions. However the reference there is to a mounting of stanchions on various material "including concrete materials". Here I acknowledge that common general knowledge is usually determined by experts and that parties to a litigation need not provide an opinion as to the state of common general knowledge: see for example Westinghouse Electric Corp. v. Babcock & Wilcox Industries Ltd. (1987) 14 C.P.R. (3d) 214 at 217-218, upheld 15 C.P.R. (3d) 447 (F.C.T.D.) at 449. Associate Senior Prothonotary Giles, in Unilever PLC v. Procter & Gamble Inc. (1998) 23 C.P.R. (3d) 279 went on to observe that a sweeping defence involving common general knowledge should be circumscribed on discovery for it may result in surprise. However the witness in the present instance did go on to provide what may be the best answer he was able to give. Nothing further need be done with question 375.       

[128]        Question 386 deals with a load test done on a prototype stanchion produced by the Defendant Clearbrook and involves the determination of the thickness of the stanchion and the pigtails holding the rail itself. Counsel for the Defendant objected on the basis of relevance. The position of counsel for the Plaintiff is that the question is relevant for it may be that Clearbrook relied upon a pre-existing Letourneau stanchion in order to determine dimensions for its own stanchions and that this would go to obviousness. Thus the dimensions could be relevant. Question 387 is related to question 985 in which counsel asked the witness for Clearbrook whether Clearbrook had a Letourneau stanchion to work from when it designed its own stanchion. Again the issue is obviousness and whether Clearbrook needed or in fact did copy the stanchion of the Plaintiffs. The Defendant need not answer this question, for the date of determining obviousness is the date of the invention, which was earlier than the production by the Defendant of the competing product for "... development of a production, which is alleged to infringe, cannot possibly be relevant to obviousness if development took place after the relevant time for assessing obviousness.": Hayden Manufacturing Co. v. Camplas Industries Ltd. (1998) 83 C.P.R. (3d) 19 at 24 and the cases referred to therein and Risi Stone Ltd. v. Groupe Permacon Inc. (supra) at 387, Mr. Justice Nadon, being of the opinion that details and documents relating to development of a product were not relevant in an infringement action (page 387). Questions 387 and 985 need not be further answered, however I would observe that there is a reasonably full explanation of the selection of dimensions for the Clearbrook stanchion at questions 986 and following.

Infringement of Letourneau Patent

[129]        Questions 950, 961 and 1006 involve the interpretation by Mr. Schellenberg, of Clearbrook, of a letter to Teck Construction as to the likelihood of Mr. Letourneau suing for infringement, whether Mr. Schellenberg had given his views, to other people, as to whether he would succeed in defending the present action, and the use of the trade-mark of the Plaintiff in describing the system which Clearbrook wished to have produced.

[130]        At issue, initially, is whether question 950 calls for some conjecture or speculation as to how a document ought to be interpreted, which is improper, or of asking the author of a document as to his or her understanding of a phrase and what he or she, as an author, meant to convey: see for example Kun Shoulder Rest Inc. v. Joseph Kun Violin and Bow Maker Inc. (1997) 76 C.P.R. (3d) 488 (F.C.T.D.) at 493-494. Here I will adopt the position taken by counsel for the Defendant, that the document speaks for itself and that it is not for the witness to draw an inference, reasonable or otherwise, as to whether the intent of the letter was to say to Mr. Tecklenborg, of Teck Construction, that it was not going to be worth the while of the Letourneau interests to sue for infringement. Question 950 need not be answered.

[131]        Question 961 deals with possible discussion with anyone as to whether or not Clearbrook would succeed. This I believe has been answered, outside of the discovery, in the 30 October 2003 affidavit of Mr. Schellenberg which sets out, at paragraphs 17 and 18, that other than discussions of a legal opinion, bearing on success, with Clearbrook personnel, or with the Ram Construction group of Defendants, Mr. Schellenberg did not recall having told anyone else about the legal opinion as to success. Moreover, what Teck Construction might understand, by the term "life-rail" is a speculative exercise as to the perception of someone else. Questions 950, 961 and 1006 need not be further answered.

Financial Organization of Clearbrook

[132]        This aspect, by reason of the bifurcation, is now moot.

Identification of Witnesses

[133]        These questions would seem to have been covered elsewhere and, to the extent that they have not, are governed by Eli Lilly and Co. v. Nu-Pharm Inc. (supra) and the view of Mr. Justice Rothstein that privilege does not extend to protect the names of factual witnesses, even though those witnesses may have been approached by the lawyer involved. Thus the questions in category 10, to the extent which they have not been answered, are to be answered.

CONCLUSION

[134]        It is appropriate that both discovery witnesses re-attend to answer questions as required by these reasons and accompanying orders, together with all proper questions arising by way of those answers. As the witnesses are local, re-attendance will be at their own initial cost.

[135]        I thank counsel for their thorough presentations. Costs to be determined during a case management conference.            

(Sgd.) "John A. Hargrave"

     Prothonotary

                                     FEDERAL COURT

    NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                  T-1864-00

STYLE OF CAUSE: John Letourneau v Clearbrook Iron Works Ltd.

PLACE OF HEARING:                                 Vancouver, BC

DATE OF HEARING:                                   November 4, 2003

REASONS FOR ORDER:                           John A. Hargrave, Prothonotary

DATED:                     February 11, 2005

APPEARANCES:

Mr. Paul Smith                                                  FOR PLAINTIFF

Mr. Kevin Wright                                              FOR DEFENDANT

SOLICITORS OF RECORD:

Paul Smith Intellectual Property Law                  FOR PLAINTIFF

Vancouver

Davis & Co.                                                      FOR DEFENDANT

Vancouver