Contour Optik Inc. v. Viva Canada Inc., 2004 FC 1271

                                                                                                                                  Date: 20040916

                                                                                                                             Docket: T-1927-02

Citation: 2004 FC 1271

BETWEEN:

CONTOUR OPTIK, INC.

and

                                                              CHIC OPTIC INC.

                                                                                                                                             Plaintiffs

                                                                           and

                                                            VIVA CANADA INC.

                                                                           and

                                                           VIVA OPTIQUE, INC.

                                                                                                                                         Defendants

                                                                           and

                                                            VIVA CANADA INC.

                                                                                                                    Plaintiff by counterclaim

                                                                           and

                                                        CONTOUR OPTIK, INC.

                                                                           and

                                                              CHIC OPTIC INC.

Defendants to counterclaim

REASONS FOR ORDER

RICHARD MORNEAU, PROTHONOTARY:

[1]         This is a motion by the defendants and plaintiffs by counterclaim Viva Canada Inc. and Viva Optique, Inc. (collectively hereinafter Viva) for an order under rule 238 of the Federal Court Rules, 1998 (the rules) granting leave to examine Scott Miller, a lawyer.

[2]         Mr. Miller is acting in docket T-710-02 as counsel for the defendants and plaintiffs by counterclaim Elite Optik, Inc. and Elite Optik Canada Inc. (collectively hereinafter Elite) in an action similar to this one.

[3]         In the present case, the plaintiffs and defendants to counterclaim Contour Optik, Inc. and Chic Optic Inc. (collectively hereinafter Contour and Chic) allege that Viva has infringed patent 714 and, in return, Viva in its counterclaim cites the invalidity of that patent, which has to do with magnetic eyewear items.

Context

[4]         The motion under review pursuant to rule 238 is raised by Viva while the latter already has a motion pending in this Court for service on it of further and better affidavits of documents by Contour and Chic, particularly in regard to prior art that might support Viva's allegations concerning the invalidity of patent 714.

[5]         It is essentially and primarily in order to enhance its chances of success on this motion to come that Viva wishes to examine Mr. Miller.

[6]         The search for further and better affidavits of documents has already resulted in the staying of the examination for discovery of Contour's representative, an examination that the Court is trying to reopen, by the way.

Analysis

[7]         Rule 238 reads:

[8]         Although it is not completely clear from a combined reading of the English and French versions of subsection 238(1) of the rules, it appears that the examination of a third party under this rule is for the purposes of an examination for discovery. My position in this case is that Viva is applying to the Court under rule 238 for the purposes of supporting another motion. The general scheme of the rules is not, of course, one that would favour a motion being made within the more general framework of another motion that is already pending.

[9]         Moreover, Viva's counsel consulted with Mr. Miller on July 23, 2004, and the latter has in my opinion already given Viva sufficient further information to enable Viva to advance its motion for further and better affidavits of documents on the basis that Contour and Chic have failed to comply with their obligation to list in the affidavits already produced all of the relevant documents affecting the validity or invalidity of patent 714. Indeed, paragraphs 55 to 58 of the affidavit of Natacha Lecompte contain the following description of this conversation of July 23, 2004:

55.            During the said conversation, Me Argun asked Me Miller whether the latter was aware of the existence of documents, testimony and/or evidence given or gathered in any proceedings around the world and not listed in Viva's affidavits of documents and that could be useful to Viva in defending the suit brought against it, and more specifically as regards the defense of non-infringement and the cross-claim of invalidity of the patent Contour and Chic are invoking (the '714 patent, and corresponding US '545 patent).

56.            Me Miller answered "yes" to the above-mentioned question.

57.            During the said conversation, Me Argun also asked Me Miller whether he provided any such documents, testimony and/or evidence to any counsel acting for Contour, Chic, or Messrs. David and Richard Chao, Nonu Iffergan, MDS (Manhattan Design Studios Inc.), Aspex Eyewear Inc.

58.            Me Miller answered "yes" to the above-mentioned question.

[10]       Viva also argues that it is seeking to examine Mr. Miller in order to demonstrate that Contour and Chic sought his co-operation for the purpose of supporting the efforts of Contour and Chic to prevent Viva from gaining access to some relevant information. However, this claim by Viva is flatly repudiated by Mr. Miller, Contour and Chic. These allegations by Viva are not sufficient, in my opinion, to allow Viva to examine Mr. Miller. The latter further indicated to Viva's counsel, in an email dated August 6, 2004, that because of his duties and obligations to his client Elite - which is a direct competitor of Viva - he was unable to provide any other information further to what has already been provided.

[11]       If I were now to order an examination of Mr. Miller, it could legitimately be anticipated that a host of strenuous objections would be raised both by Mr. Miller and by Contour and Chic - apart from the fact that this order would surely be appealed.

[12]       For all of the preceding reasons, I am of the opinion that the requirements of at least one of the paragraphs of subsection 238(3) of the rules is not fulfilled: paragraph 238(3)(d), in the sense that Mr. Miller's examination, if allowed, would cause undue delay, inconvenience and expense both to Mr. Miller and to Contour and Chic.

[13]       Consequently, Viva's motion under rule 238 will be dismissed with costs according to column III of Tariff B to Contour and Chic and to Mr. Miller. Mr. Miller's motion under subsection 239(3) of the rules is consequently moot and is therefore dismissed, without costs.

[14]       In addition, Viva will have to bring its motion for further and better affidavits of documents before a general sitting in Montréal within the near future. The hearing of that motion, the record of which is already served and filed, should take in all less than two hours to argue. Any record in reply to that motion will have to be served and filed at least five days prior to the presentation of the motion. The Court expects that counsel will co-operate with each other in this regard.

Richard Morneau

                          Prothonotary

Montréal, Quebec

September 16, 2004

Certified true translation

Suzanne M. Gauthier, C Tr, LLL

FEDERAL COURT

SOLICITORS OF RECORD

DOCKET:                                            T-1927-02

STYLE:                                                CONTOUR OPTIK, INC. and CHIC OPTIC INC.

                                                            Plaintiffs

and

VIVA CANADA INC. and VIVA OPTIQUE, INC.

                                                       Defendants

AND BETWEEN:

VIVA CANADA INC.

                                    Plaintiff by counterclaim

and

CONTOUR OPTIK, INC. and CHIC OPTIC INC.

Defendants to counterclaim

PLACE OF HEARING:                      Montréal, Quebec

DATE OF HEARING:                        August 18, 2004

REASONS FOR ORDER:                Richard Morneau, Prothonotary                        

DATED:                                              September 16, 2004

APPEARANCES:

Richard Uditsky

L.B. Erdle        

FOR THE PLAINTIFFS/DEFENDANTS TO COUNTERCLAIM

Ali T. Argun

Robert Brouillette

FOR THE DEFENDANTS/PLAINTIFFS BY COUNTERCLAIM

Mervyn Valadares

FOR THE THIRD PARTY, SCOTT MILLER

SOLICITORS OF RECORD: