Date: 20010108
Docket: T-194-98
MONTRÉAL, QUEBEC, JANUARY 8, 2001
BEFORE: RICHARD MORNEAU, PROTHONOTARY
Between:
LES ÉQUIPEMENTS D'ÉRABLIÈRE CDL INC.
Plaintiff and
cross-defendant
AND
ÉRATUBE INC. and
RAYNALD DÉSORCY
Defendants and
cross-plaintiffs
REASONS FOR ORDER AND ORDER
RICHARD MORNEAU, PROTHONOTARY
[1] The Court has before it a motion by the defendants and cross-plaintiffs ("the defendants") asking it to resolve in their favour certain objections made by counsel for the plaintiff and cross-defendant ("the plaintiff") during the examination for discovery of the plaintiff's representative and the co-inventors of the invention covered by the patent at issue.
[2] The defendants are also asking that the said persons be ordered to appear again at their expense to answer questions to which objections were made and any additional question arising therefrom.
[3] As the parties grouped the one hundred or so questions in various categories and sub-categories, the Court intends to follow this classification for purposes of its decision.
BACKGROUND
[4] This motion is part of a proceeding brought by statement of claim alleging that the defendants contravened Canadian patent 1,321,806. The patent relates to a [TRANSLATION] "connector for a sap collection system".
[5] In their defence the defendants denied that there had been any contravention of the disputed patent and, by a counterclaim, alleged that each of the ten claims in the patent is invalid.
ANALYSIS
[6] It should be noted at the outset that in an examination for discovery a question requires an answer if it is relevant to the points in dispute between the parties, that is, if it is likely to assist directly or indirectly the case of one of the parties or to impede the other's case (see Sydney Steel Corp. v. The Ship Omisalj (Le), [1992] 2 F.C. 193, at 197-8).
Category I: Invalidity of patent at issue
(1) Essential aspects of disputed patent
[7] Although the defendants included in this sub-category questions 2 to 8, the latter deal with the advantages of the invention as compared with prior art. The question of an invention's innovativeness, and so its patentability, is one which is for the Court to decide based on the testimony and the opinions of experts in the matter on general knowledge and prior art at the relevant time. (See Cabot Safety Intermediate Corp. v. Arkon Safety Equipment Inc. (1996), 68 C.P.R. (3d) 490, at 498 (F.C.T.D.); Jackmorr Manufacturing Ltd. v. Waterloo Metal Stampings Ltd. (1985), 8 C.P.R. (3d) 271, at 275 (F.C.T.D.).)
[8] These questions will therefore not have to be answered.
[9] Questions 13 to 38 deal with the essential aspects of the patent at issue. Although it could be said that there is more than one school of thought about the admissibility of questions dealing with these aspects, and so the substance of the invention, the Court has already ruled in Nolan v. Silex International Chemical Systems Inc. (1997), 77 C.P.R. (3d) 212, in favour of such questions since they must be seen above all as questions of fact. That decision also recognizes - and this corresponds to the aspect pleaded by the plaintiff in the case at bar - that it is ultimately for the Court, at the end of the day, to decide what constitutes the substance of an invention. In Nolan, the Court had to consider the relevance of the following question about the substance of the alleged invention:
Question 486 - If the Defendant's process or method did not involve - and I say "if" - did not involve the steps of securing the end caps against radial displacement with respect to said glass envelope as a first step, would the Plaintiff's position be that the Claim would be infringed?
[10] At page 214, the Court came to the following conclusion:
If we look at how this question is worded, it unquestionably refers to a hypothetical situation, and is, moreover, asking for an interpretation of the patent. For these reasons, the plaintiff does not have to answer it.
However, counsel for the defendants satisfied me in argument that apart from 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 invention, in short, the substance of the invention.
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).
This means looking for an answer to a question of fact. In Northern Telecom, supra, the Federal Court of Appeal stated the following on this point, at page 226:
What the "substance" of the invention is is obviously material as it is the taking of it of which the respondents complain. It is also a question of fact, not one of law. See McPhar Engineering Co. of Canada Ltd. v. Sharpe Instruments Ltd. et al. (1960) 35 C.P.R. 105 at pp. 170-1, 21 Fox Pat. C.1, [1956-60] Ex. C.R. 467 at p. 537, per Thorson P.:
And since there is infringement if the substance of the invention is taken it becomes necessary to ascertain what the substance of the invention is and that question is one of fact.
I am aware that in principle, the Court should not interfere excessively in the proper wording of the questions to be asked. However, I do not believe that this would be the case, and that any real disservice would be done to the administration of justice, if I authorized the defendants to ask the plaintiff "whether he considers the steps referred to in question 486 to be an essential element of the invention".
[11] Questions 13 to 38 will therefore have to be answered.
(1) Summary of prior art
[12] Question 40 will have to be answered according to the context identified in Court. Question 41 will be the subject of a letter from counsel for the plaintiff in which the documents will be further identified.
[13] Question 43 will have to be answered in the limited context discussed in Court.
[14] Questions 48 and 49 will have to be answered in accordance with the requirements of the Rules of this Court.
(c) Anticipation/evidence
[15] On question 50, it appears to me that paragraph 68 of the plaintiff's written submissions sufficiently answers this question.
[16] On questions 51 to 55, the defendants by these questions are asking the witnesses to indicate what certain of the components illustrated in the designs for this patent do. These questions clearly seek to interpret prior art and so they will not have to be answered.
[17] Questions 56 and 57 essentially seek an expert opinion and so they will not have to be answered.
[18] Question 60 will have to be answered.
(d) Commercial success
[19] In this sub-category of the category dealing with the invalidity of the patent at issue, it appeared that the defendants were seeking to establish that the adapter produced and marketed by the plaintiff does not correspond to the patented product and that further the marketed product has not been as successful as expected.
[20] To achieve their aims the defendants are seeking, first, by questions 12 and 61 to 64 to make a comparison between the plaintiff's product and the patent. Through this comparison the questions become questions of interpretation which are for experts to answer and they will therefore not have to be answered (see Kun Shoulder Rest Inc. v. Joseph Kun Violin and Bow Maker Inc. (1997), 76 C.P.R. (3d) 488, at 497).
[21] Secondly, by questions 66 to 70 the defendants are seeking an admission by the witnesses that the [TRANSLATION] "sealing joint" contained in the plaintiff's product is an improved version of the patented product. However, the judgment in Edison and Swan Electric Light v. Holland (1889), 6 R.P.C. 243, at 277, clearly indicates that questions raised under cover of such an argument are not relevant for purposes of invalidity:
. . . a patent is not to be defeated simply because subsequent inventions improve the patented article, or because in consequence of subsequent improvements, no article was in fact made in accordance with the specification.
See also Riddell v. Patrick Harrison & Co. Ltd. (1957), 28 C.P.R. 85, at 115.
[22] On question 76, this is denied for the reasons stated by the plaintiff in paragraphs 98 and 99 of its written submissions.
[23] As to question 65, the first part of this question is not relevant. On the remainder of the question, the defendants should be guided by paragraph 104 of the plaintiff's written submissions.
[24] Question 75 will have to be answered.
(e) Overbroad claim
[25] This sub-category covers questions 81 to 84 and is part of the defendant's challenge alleging the claim of the patent at issue is invalid because it is broader than the alleged invention filed by the inventors: this challenge is meant to be different from the more traditional challenge in which a party seeks to argue invalidity because the claims are broader than the invention described in the specifications of the patent.
[26] In view of the written representations submitted by the parties on this point as further arguments, it seems to the Court that there is sufficient authority in support of the defendant's view for the Court to agree to consider the questions raised by the defendants, providing of course that these questions are not inadmissible on another ground. Questions 81 to 83 seek the observations which one of the inventors may have made in his work of developing the turret. Although there are technical aspects to the answers to these questions, in the circumstances it does not appear that the technical opinion aspect of the questions will be sufficient to deprive the latter of their basically factual nature. (See Risi Stone Ltd. v. Groupe Permacon Inc. (1994), 56 C.P.R. (3d) 381, at 388.)
[27] As co-inventor, Mr. Lesquir can certainly answer these questions, and hence questions 81 to 83 will have to be answered.
[28] Question 84 is squarely intended to obtain from the witness a comparison between the plaintiff's product and a piece of prior art. This exercise is within the competence of an expert. This question will not have to be answered.
Category II: Absence of infringement
[29] Questions 93 to 98, 103 and 104 will not have to be answered because although the exercise sought by the defendants may seem uncomplicated to them, it still remains one which is within the province of experts. The defendants will therefore have to take up these questions with their own experts.
[30] Question 99 will have to be answered, which for the moment at least results in the withdrawal of questions 100 to 102.
[31] Question 106 will have to be answered.
Category III: Questions of general nature
[32] Precise answers will have to be given to questions 113 and 114.
[33] At the conclusion of a discussion in Court, questions 116 and 117 appeared irrelevant and in the nature of a fishing expedition. They will not have to be answered.
[34] On questions 128, 130 and 131 the samples sought will have to be supplied unless a single copy of each unit is available. In that case, the plaintiff will have to file an affidavit to that effect.
[35] On questions 129 and 132, the defendants will have to proceed in accordance with the invitation issued by the plaintiff in paragraph 136 of its written submissions.
[36] As to the "reservations" made by the plaintiff regarding various replies given in the examination, it seems sufficient at this stage for the Court to note the plaintiff's submissions in paragraphs 10 to 15 of its written submissions, and at the same time acknowledge that it would be inappropriate for the plaintiff to seek to limit the later use of a reply given to which no objection was raised and upheld by this Court.
[37] Within 20 days of the date of this order, the parties will be required to submit to the Court jointly a schedule of the action to be taken in the case at bar subsequently, including the holding of a second round of examinations of Messrs. Chabot, Lesquir and Landry, at the plaintiff's expense.
[38] As success on the instant motion is divided, no costs will be awarded.
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Richard Morneau
Prothonotary
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Certified true translation
Suzanne M. Gauthier, LL.L. Trad. a.
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Federal Court of Canada
Trial Division
Date: 20010108
Docket: T-194-98
Between:
LES ÉQUIPEMENTS D'ÉRABLIÈRE CDL INC.
Plaintiff and
cross-defendant
AND
ÉRATUBE INC.
and
RAYNALD DÉSORCY
Defendants and
cross-plaintiffs
REASONS FOR ORDER AND ORDER
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FEDERAL COURT OF CANADA
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT FILE No.: T-194-98
STYLE OF CAUSE: LES ÉQUIPEMENTS D'ÉRABLIÈRE CDL INC.
Plaintiff and
cross-defendant
AND
ÉRATUBE INC. and RAYNALD DÉSORCY
Defendants and
cross-plaintiffs
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: December 6, 2000
REASONS FOR ORDER BY: RICHARD MORNEAU, PROTHONOTARY
DATE OF REASONS FOR ORDER: January 8, 2001
APPEARANCES:
Marie Lafleur for the plaintiff and cross-defendant
Daniel S. Drapeau for the defendants and cross-plaintiffs
SOLICITORS OF RECORD:
Fasken, Martineau, DuMoulin for the plaintiff and cross-defendant
Montréal, Quebec
Ogilvy, Renault for the defendants and cross-plaintiffs
Montréal, Quebec
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