Dupont Canada Inc. v. Glopak Inc., docket T-2565-96

     T-2565-96

BETWEEN:

     DUPONT CANADA INC.,

     Plaintiff,

     - and -

     GLOPAK INC.,

     Defendant.

     REASONS FOR ORDER

LUTFY J.:

     The defendant in this patent infringement action seeks responses to some fifty questions to which counsel for the plaintiff objected during examination for discovery.

     The plaintiff's objections can substantially be grouped under two headings: (a) on the ground of the solicitor-client privilege, more particularly, that the responses would tend to disclose information obtained for the dominant purpose of litigation ("privilege"); and (b) on the ground that questions concerning the plaintiff's products are not relevant to an inquiry as to infringement of the patent in issue nor the damages. There is a third category of objections raising miscellaneous issues.

     The plaintiff alleges the defendant's infringement of its invention concerning pouches made to contain liquid material such as milk and, in particular, the film from which the pouches are made. The defendant is also a manufacturer of film for pouches used by foodstuff and beverage producers.

     This action was issued on November 21, 1996. On December 13, 1996, Dubé J. dismissed the defendant's motion for an order striking the statement of claim. The motion alleged that the plaintiff's pleading does not disclose a cause of action under Rule 419(1)(a), it is frivolous and vexatious under Rule 419(1)(c) and it is an abuse of the process of this Court under Rule 419(1)(f). That decision is under appeal.

     On January 14, 1997 the defendant examined for discovery a representative of the plaintiff pursuant to Rule 457(2): a defendant may examine a plaintiff any time after the statement of claim is filed. The examination proceeded prior to the filing of the statement of defence and the parties' affidavits of documents.

The Refusals to Respond on the Ground of the Privilege

     The plaintiff's in-house corporate counsel with primary responsibility for the conduct of this litigation was not cross-examined on her affidavit which stated in part:

2.      In preparation for and during the conduct of this litigation, I have asked various technical people at Dupont Canada Inc. to perform technical tests on Glopak film to assist me in determining whether the Glopak film in pouch form is an infringement of the patent at issue in this lawsuit.

3.      On January 14, 1997 I attended the examination for discovery of Alan K. Breck on behalf of Dupont Canada Inc. During the examination for discovery, counsel for Glopak Inc. asked Mr. Breck about several experiments, tests or observations performed or made by Dupont Canada Inc. All of those experiments, tests and observations were performed at my request and the results given to me. The results were either sent to me in a memo (I am the "Judith" referred to in some of the documentation) or were forwarded to me by Mr. Breck or others at Dupont Canada Inc. who performed the tests in response to my requests. The experiments, tests and observations were not done for any purpose other than to provide me and outside counsel with the necessary information to determine whether Glopak Inc.'s film and pouches made from it are infringements of the patent at issue in this lawsuit.

4.      I have maintained the memos and experimental results as confidential circulating them only to certain Dupont Canada Inc. employees and to outside counsel under circumstances of confidence.

     Counsel for the plaintiff filed with this Court, on a confidential basis,¹ copies of those documents concerning which it claims privilege in respect of the questions objected to on discovery. These documents would, in a normal course of events, be listed in Schedule II of its affidavit of documents and not be disclosed to the defendant. Because the parties have yet to exchange their affidavit of documents, a list identifying these documents has been delivered to the defendant.

     The defendant does not challenge the plaintiff's assertion of its privilege for the purposes of the examination for discovery. However, it distinguishes between information concerning the nature and scope of the tests carried out by the plaintiff on the defendant's product prior to the institution of this action and the results of those tests. For the defendant, the privilege can apply only to the results but not to the nature and scope of the tests. In addition, the defendant argues that the plaintiff's responses to some of the questions concerning the tests constitute a waiver to the assertion of its privilege.

     The plaintiff's refusals to respond on the ground of privilege were accompanied with its counsel's undertaking that the information concerning the tests in respect of which the privilege is asserted will not be relied upon at trial. The plaintiff expects to carry out new tests at which, in the words of its counsel on discovery, "...we will likely invite you and representatives of Glopak to attend to observe them for trial."²

     The privilege, when properly asserted, is all-encompassing.³ The privilege applies to all of the information in respect of the tests performed in accordance with paragraphs 2, 3 and 4 of the deponent's affidavit. Information relating to the tests as well as their results comes within the scope of the privilege. Similarly, a reading of the discovery transcript discloses that counsel for the plaintiff was consistent in maintaining the privilege throughout the examination despite very limited responses to certain questions. The defendant has not established the waiver of the privilege. In my view, the plaintiff's objections on the grounds of privilege must be maintained.

The Plaintiff's Own Products in Relation to the Patent

     In this category of questions, the defendant seeks to obtain information concerning the sub-components of the plaintiff's products for purposes of comparison with its own and in relation to the patent. In the written submission of defendant's counsel:

This relates to another film made by DuPont that is a sealant film to make pouches. The relevancy of these questions is in respect of the contention of DuPont that in measuring the density and melt index of the film and bearing in mind the very high concentration of octene, they have observed and may estimate the density and melt index of ingredients, at least linear copolymer of octene-1. It is relevant to know from DuPont's own product, the composition, proportions and density as this is the basis of their estimation with respect to Glopak film.

     The plaintiff objects on the basis of the general principles enunciated by Dr. Fox:⁴

Infringement must be based upon the invention as claimed and not upon the invention as described in the evidence, or as constructed by the plaintiff. It is quite irrelevant to compare a defendant's structure with that of the plaintiff who claims to be manufacturing under his patent. What must be compared are the defendant's structure and that defined in the claims for it is obvious that the plaintiff's structure may itself not be within the claims of his patent. It is an illegitimate approach to compare the defendant's structure with the plaintiff's structure unless the latter has been verified as embodying the claims of the patent in suit.

     (references omitted)

     Without questioning these general principles, the preferable approach on discovery is to encourage disclosure within the context of the pleadings. The plaintiff has referred to its film under designation SM3 in the statement of claim. I find no reference in the plaintiff's pleading to its product designated as CL303. The defendant has chosen to proceed to its discovery prior to filing its statement of defence. In the circumstances, the questions relating to the film SM3 will be allowed for purposes of discovery (questions 155 and 156). The objections to the questions concerning the film CL303 will be maintained because no reference to this product has been made in the pleadings to date. For the same reasons, the objections to questions 282 and 283 will be maintained at this stage of the proceedings.

Miscellaneous Questions

     The objection to question 41 has been withdrawn subject to the plaintiff's right to claim privilege.

     Counsel for both parties acknowledge that questions 187-188 could have been posed differently to achieve their intended result. In their present form, the questions do not invite substantive responses. After reviewing the comments of counsel in the transcript, I have concluded that the defendant has the right to establish whether the plaintiff's representative on discovery has personal knowledge concerning the allegations in paragraphs 9, 10 and 12 of the statement of claim and to that extent the questions must be answered.

     Similarly, the ground of the objection asserted by the plaintiff in response to question 261 is premature. The defendant has the right to establish if the plaintiff's representative has knowledge as to whether "...the Glopak film, when sealed into pouches, each layer maintains its integrity". If the response is affirmative, whether the privilege applies to subsequent questions will presumably depend on the source of his knowledge. For the same reasons, the witness must answer question 267.

     On the basis of the case law submitted by the plaintiff,⁵ the objections to questions 269 and 270 are maintained as they tend to require the witness to interpret the patent.

     Finally, question 284 should be answered. The question may require the witness to express a technical opinion as the plaintiff's senior research scientist. This is not the kind of opinion evidence concerning which an objection can properly be made in respect of this witness.⁶

     Costs will be to the plaintiff in the cause.

                         Allan Lutfy

                         Judge

Ottawa, Ontario

March 7, 1997

__________________

     ¹      See Nabisco Brands Ltd. v. Procter & Gamble Co. (1989), 24 C.P.R. (3d) 570.

     ²      During the hearing of this motion, counsel for the plaintiff did reserve his client's rights to rely on the privileged information should the defendant move to have the action dismissed prior to trial.

     ³      Samson Indian Nation and Band v. Canada, [1995] 2 F.C. 762 at 769 (F.C.A.); and Flexi-Coil Ltd. v. Smith-Roles Ltd. (1983), 73 C.P.R. (2d) 89 at 92. See also Proctor & Gamble Co. v. Kimberly-Clark of Canada Ltd. (1990), 35 C.P.R. (3d) 321 at 326; and Corning Glass Works v. Canada Wire and Cable Co. Ltd. (1983), 74 C.P.R. (2d) 105 at 108. The defendant's reliance on Ohl v. Cannito, [1972] 2 O.R. 763 at 768 is of no assistance, in my view, to its position. In that case, the defendant was ordered to disclose if surveillance reports existed, not their contents. Here, the plaintiff has advised the defendant that its products have been tested.

     ⁴      Fox, H.G., The Canadian Law and Practice Relating to Letters Patents for Inventions, 4th ed. (Toronto: Carswell, 1969) p. 355. See also Airseal Controls Inc. v. M. & I. Heat Transfer Products (1993), 53 C.P.R. (3d) 259 at 270.

     ⁵      Sperry Corporation v. John Deere Ltd. (1984), 82 C.P.R. (2d) 1 at 14; and Risi Stone Ltd. v. Groupe Permacon Inc. (1994), 56 C.P.R. (3d) 380 at 387.

     ⁶      Risi Stone Ltd, ibid. at 388.