Grand Tank (International) Inc. v. Brown, 2004 FC 1355

Date: 20041001

Docket: T-2083-99

Citation: 2004 FC 1355

BETWEEN:

                                          GRAND TANK (INTERNATIONAL) INC.

                                                   and DAVLIN HOLDINGS LTD.

                                                                                                                         Plaintiffs/Defendants

                                                                                                                                 by Counterclaim

                                                                         - and -

                                    EARL BROWN, NORTH PINE RENTALS LTD.

                                              and DONALDA MARY COCHRANE

                                                                                                                         Defendants/Plaintiffs

                                                                                                                                 by Counterclaim

                                                        REASONS FOR ORDER

GIBSON, J.

INTRODUCTION

[1]                By motion filed July 26, 2004, and heard at Vancouver, British Columbia, on September 27, 2004, the Defendants/Plaintiffs by counterclaim (the "Defendants") seek the following relief:

1.          An Order pursuant to Rule 213(2) of the Federal Court Rules, 1998 granting the Defendants summary judgment and dismissing the within action as against them; and

2.          Costs of the motion and the action; or in the alternative,

3.          An Order pursuant to Rule 238(1) of the Federal Court Rules, 1998 granting the Defendants leave to examine non-parties to the action; namely, Mr. David McGruder and Mr. Gavin Manning;

4.          Costs of the motion; and

5.          Such further and other relief as counsel may advise and this Court may permit.

[2]                Counsel for the Defendants urges as grounds for the principal relief sought on the motion that the Plaintiffs' claim against the Defendants is so doubtful that it deserves no further consideration and presents no genuine issue for trial because the re-issuance of Patent No. 2,219,053 (the "'053 Patent"), pursuant to section 47 of the Patent Act^[1] (the "Act"), was invalid, as the application for re-issuance failed to fulfill the requirements of that section, and Rules 213 to 219 of the Federal Court Rules, 1998^[2] (the "Rules"). In respect of the alternative remedy, counsel urges that the requirements of Rule 238, that is to say: that the persons sought to be examined may have information on an issue in the action; the applicant has been unable to obtain the information informally from the person or from another source by any other reasonable means; that it would be unfair not to allow the party an opportunity to question the person before trial; and the questioning will not cause an undue delay, inconvenience or expense to the person sought to be examined or to the other parties, have been fulfilled.

[3]                Attached as an annex to these reasons is the text of subsection 47(1) of the Act and of Rules 213(2), 216(1), (2) and (3) and 238.

THE POSITION OF THE DEFENDANTS

a)          With Regard to Summary Judgment

[4]                Counsel for the Defendants urges that, on the facts of this matter, there is no genuine issue for trial with respect to the Plaintiffs' claim because the Plaintiffs' material simply fails to show that the '053 Patent, as originally issued, was not defective or inoperative by reason of insufficient description and specification, or by reason of the patentees' claiming more or less than they had a right to claim as new and that the error arose by inadvertence, accident or mistake, without any fraudulent or deceptive intention. Counsel further urges that, while the foregoing issue is urged not to be a genuine issue for trial, it is nonetheless a pure question of law. Counsel relies on the following passage from Mobil Oil Corp. v. Hercules Canada Inc.^[3] where Justice Wetston wrote:

The purpose of s. 47 is to allow a patentee an opportunity to correct any deficiencies in the patent in order to properly disclose the invention, as was intended at the time of the invention. It is not to allow the patentee an opportunity to alter the subject-matter of the patent so that it is outside the limits of the intended invention:...

                                                                                                                   [citations omitted]

[5]                Counsel urges that, on the facts of this matter, the re-issuance allowed the patentees an opportunity to alter the subject-matter of the patent, thus taking it outside the limits of the intended invention, rather than merely correcting deficiencies in order to properly disclose the invention as was intended at the time of the invention.

b)          With Regard to Examination of Non-Parties

[6]                With respect to the alternative relief, that is leave to examine non-parties, counsel seeks leave to examine two solicitors, one of whom appeared as counsel for the Plaintiffs on this motion, who are both patent agents and each of whom has, at various times, provided legal advice to the Plaintiffs. Counsel urges that examination of the non-parties is essential since examination of the inventors simply failed to disclose in a manner that would promote confidence that they knew what their intention was in relation to the scope of the invention at the time the patent issued.

THE POSITION OF THE PLAINTIFFS

a)          With Regard to Summary Judgment

[7]                Counsel for the Plaintiffs urges that the re-issue of the '053 Patent was entirely in accordance with subsection 47(1) of the Act. In support of this position, counsel for the Plaintiffs relies on the same authority as is relied on by counsel for the Defendants, that is to say, Mobil Oil Corp. v. Hercules Canada Inc.^[4], where Justice Wetston wrote at page 9:

... Section 47 allows for amendments to amend the claims to match the inventor's intention. Given that, the claims of the reissue patent and the original patent will be different. A requirement of the "same invention" necessitates that the amended claims must be for an invention as disclosed in the original patent specification, although somewhat imperfectly....

Counsel urges that the foregoing passage is apt on the facts of this matter and that a "person skilled in the art", at the relevant time, would have interpreted the disclosure of the '053 Patent, as originally issued, to extend to the claims added on the re-issuance of the patent.

[8]                Counsel urges that the issue that counsel for the Defendants presents as a pure question of law and the basis on which summary judgment ought to be granted is not a pure question of law but rather a question on which evidence, not now before the Court, is required and on which there might well be different expert opinion; that issue being how a person skilled in the art and at the relevant time, would have interpreted the disclosure of the '053 Patent. The question would be whether or not such a person would have interpreted the disclosure so as to include the claims added on the re-issuance of the patent.

b)          With Regard to Examination of Non-Parties

[9]                Counsel urges that an order authorizing examination of non-parties is a "wholly exceptional remedy" and that Rule 238 should thus "... be construed and applied carefully." For these propositions, counsel cites first, Justice Hugessen in Sawridge Band v. Canada^[5] where he wrote at paragraph 4:

... That said, however, I do think Rule[s] 238and 239 make it quite clear that examination for discovery of non-parties is a wholly exceptional remedy. And that means that anyone who moves for leave to conduct such an examination has the burden of persuading the Court that it is necessary for the just, expeditious, least expensive, and above all fair disposition of the case that such examination should be allowed.

and Bayside Towing Ltd. v. Canadian Pacific Railway^[6], where Prothonotary Hargrave wrote at paragraph 24:

Rule 238 is a useful Rule, but it is not an ordinary rule. The usual discovery process, is available to learn from a witness on the other side the nature of their case so as to be prepared to meet the case and to destroy it. However, Rule 238 extends the discovery process, beyond that one witness, to bystanders and to those who might merely have information on an issue. It therefore ought to be construed and applied carefully.

ANALYSIS

[10]            With regard to the summary judgment issue, I favour the position put forward on behalf of the Plaintiffs. Counsel for the Plaintiffs, on the application for a re-issuance of the '053 Patent, was able to convince the Canadian Intellectual Property Office, Patents Branch, that a person skilled in the art and at the relevant time, would have interpreted the disclosure of the '053 Patent in a manner sufficient to support the claims added on the re-issuance of the patent. Before this Court, on the material now available to it, that case is simply not made out. Further, assuming evidence on the issue were before the Court and that that evidence were found to be conflicting, it would not be for this Court to weigh such evidence. That weighing process should be left for trial.^[7]

[11]            With regard to the Defendants' motion to examine non-parties, the alternative relief requested in the event relief by way of summary judgment is rejected, as it will be, I reach a conclusion in favour of the Defendants. As noted earlier in these reasons, the Defendants seek leave to examine Messrs. McGruder and Manning, each of whom has acted as a patent agent for the Plaintiffs, one on the initial prosecution of the patent and the other on the prosecution of the application for re-issuance, and each of whom has, at one time or another, provided legal counsel to the Plaintiffs. They are thus admirably situated to have information on the issues in this action, issues on which the recollection of the inventors themselves can be demonstrated by reference to transcripts of their examinations for discovery to be vague and unsupported by notes made at times relevant for the purpose of this action. That some of the information in the knowledge and records of Messrs. McGruder and Manning might be solicitor-client privileged is a complicating factor but not one sufficient to totally immunize them from examination for discovery.

[12]            I am satisfied that the Defendants, through their counsel, have been unable to obtain information that they might seek on examination for discovery of Messrs McGruder and Manning, informally either from those persons or from another source, such as the inventors, by any other reasonable means.

[13]            I am satisfied, given the vague recollections of the inventors, that it would be unfair not to allow the Defendants an opportunity to question Messrs. McGruder and Manning.

[14]            Finally, I am satisfied that questioning of Messrs. McGruder and Manning will not cause undue delay, inconvenience or expense to them or to the parties to this litigation which has now been ongoing for a number of years.

[15]            In the result, I am satisfied that an order authorizing the Defendants to examine for discovery Messrs. McGruder and Manning, or either of them, is warranted notwithstanding that such an order is a rather extraordinary remedy. I am satisfied that the Defendants have met the burden on them of persuading this Court that an order authorizing such examination is necessary for the just, expeditious and above all fair disposition of this litigation, whether or not at this stage such an order might lead to an increase in the cost of the litigation over what it might be in the absence of such an order.

CONCLUSION

[16]            In the result, based upon the foregoing brief analysis, the Defendants' motion for summary judgment dismissing this action against them will be dismissed. The alternative relief sought on behalf of the Defendants, that is to say an Order pursuant to Rule 238, granting the Defendants leave to examine non-parties to this action, namely Messrs. David McGruder and Gavin Manning, will be granted.

[17]            Given the divided success on this motion, each of the Plaintiffs and Defendants should bear their own costs of the motion.

(Sgd.) "Frederick E. Gibson"

Judge

Vancouver, BC

October 1, 2004

                                     FEDERAL COURT

    NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                  T-2083-99

STYLE OF CAUSE: GRAND TANK (INTERNATIONAL) INC. et al.

v. EARL BROWN et al.

PLACE OF HEARING:                                 Vancouver, BC

DATE OF HEARING:                                   September 27, 2004

REASONS FOR ORDER:                            GIBSON J.

DATED:                     October 1, 2004

APPEARANCES:

David McGruder                                               For Plaintiffs/Defendants

Craig Ash                                                          by Counterclaim

J. Mark Raven-Jackson                                                 For Defendants/Plaintiffs

by Counterclaim

SOLICITORS OF RECORD:

Oyen Wiggs Green & Mutala                                         For Plaintiffs/Defendants

Vancouver, BC                                                 by Counterclaim

Field LLP                                                          For Defendants/Plaintiffs

Edmonton, AB                                                  by Counterclaim

                                               ANNEX

                                             Patent Act

                               Federal Court Rules, 1998