Date:
20090818
Docket:
T-737-08
Citation:
2009 FC 836
[ENGLISH
TRANSLATION]
Montréal, Quebec,
August 18, 2009
PRESENT:
Richard Morneau, Esq., Prothonotary
BETWEEN:
EUROCOPTER
(simplified
joint stock company)
Plaintiff/Defendant
by Counterclaim
and
BELL
HELICOPTER TEXTRON CANADA LIMITED
Defendant/Plaintiff
by Counterclaim
REASONS
FOR ORDER AND ORDER
[1]
In
this case, the Court is dealing with a motion by plaintiff Eurocopter
(hereinafter Eurocopter) to have objections decided.
Background
[2]
The
general background in which this motion was filed is essentially as follows.
[3]
On
May 9, 2008, Eurocopter instituted an infringement action regarding its
Canadian patent number 2,205,787 (hereinafter “patent ‘787”) against the
defendant Bell Helicopter Textron Canada Limited (hereinafter Bell Helicopter).
[4]
Patent
‘787 deals with landing gear for helicopters and is titled “Skid landing gear
for helicopters”.
[5]
In
its statement of claim, Eurocopter alleges, inter alia, that Bell
Helicopter manufactures, distributes, uses, imports, offers for sale or sells
in Canada a helicopter called the Bell 429 (hereinafter the Bell 429),
which is equipped with landing gear that infringe upon patent ’787.
[6]
Afterwards,
on or around July 28, 2008, Bell Helicopter filed its defence and
counterclaim in which it denies any infringement and maintains that patent ’787
is invalid.
Analysis
I ‑ Questions
to answer and documents to produce during an examination on discovery:
Applicable general principles
[7]
In
Reading & Bates Construction Co. and al v. Baker Energy Resources Corp.
and al (1988), 24 C.P.R. (3rd) 66, McNair J., in a six-point general
reminder, first defines at points 1 to 3 the parameters that make it
so that a question or a document is relevant, to then state at points 4
to 6 a series of circumstances or exceptions that make it so that on the
off chance, in the end, a question does not have to be answered or a document
does not have to be produced.
[8]
The Court states the following at pages 70 to 72:
1. The test as to what documents are required to be
produced is simply relevance. The test of relevance is not a matter for the
exercise of the discretion. What documents parties are entitled to is a matter
of law, not a matter of discretion. The principle for determining what document
properly relates to the matters in issue is that it must be one which might
reasonably be supposed to contain information which may directly or indirectly
enable the party requiring production to advance his own case or to damage the
case of his adversary, or which might fairly lead him to a train of inquiry
that could have either of these consequences: Trigg v. MI Movers Int’l
Transport Services Ltd. (1986), 13 C.P.C. (2d) 150 (Ont. H.C.); Canex Placer Ltd. v.
A.-G. B.C. (1975), 63 D.L.R. (3d) 282, [1976] 1 W.W.R. 644 (B.C.S.C.); and Compagnie
Financiere et Commerciale du Pacifique v. Peruvian Guano Co. (1882), 11
Q.B.D. 55 (C.A.).
2. On an examination for discovery prior to the commencement
of a reference that has been directed, the party being examined need only
answer questions directed to the actual issues raised by the reference.
Conversely, questions relating to information which has already been
produced and questions which are too general or ask for an opinion or
are outside the scope of the reference need not be answered by a witness: Algonquin
Mercantile Corp. v. Dart Industries Canada Ltd. (1984), 82 C.P.R. (2d) 36
(F.C.T.D.); affirmed 1 C.P.R. (3d) 242 (F.C.A.).
3. The propriety of any question on discovery must be
determined on the basis of its relevance to the facts pleaded in the statement
of claim as constituting the cause of action (...)
4. The court should not compel answers to questions which,
although they might be considered relevant, are not at all likely to advance in
any way the questioning party’s legal position: Canex Placer Ltd. v.
A.-G. B.C., supra; and Smith, Kline & French Laboratories Ltd. v.
A.-G. Can. (1982), 67 C.P.R. (2d) 103 at p. 108, 29 C.P.C. 117 (F.C.T.D.).
5. Before compelling an answer to any question on an
examination for discovery, the court must weigh the probability of the
usefulness of the answer to the party seeking the information, with the
time, trouble, expense and difficulty involved in obtaining it. Where on
the one hand both the probative value and the usefulness of the answer to the
examining party would appear to be, at the most, minimal and where, on the
other hand, obtaining the answer would involve great difficulty and a
considerable expenditure of time and effort to the party being examined, the
court should not compel an answer. One must look at what is reasonable and
fair under the circumstances: Smith, Kline & French Ltd. v. A.-G.
Can., per Addy J. at p. 109.
6. The ambit of questions on discovery must be restricted
to unadmitted allegations of fact in the pleadings, and fishing expeditions by
way of a vague, far-reaching or an irrelevant line of questioning are to be
discouraged: Carnation Foods Co. Ltd. v. Amfac Foods Inc. (1982), 63
C.P.R. (2d) 203 (F.C.A.); and Beloit Canada Ltee/Ltd. v. Valmet Oy
(1981), 60 C.P.R. (2d) 145 (F.C.T.D.).
[Emphasis added.]
[9]
In addition, the list of exceptions at points 2 and 4
to 6 of Reading & Bates does not, in my view, aim to be
strictly comprehensive.
[10]
In many situations, the balance to which the Court refers in Reading
& Bates at point 5 is required.
[11]
In fact, as mentioned in Faulding Canada Inc. v. Pharmacia
S.p.A. (1999), 3 C.P.R. (4th) 126, page 128:
[...] the general tendency of the courts to grant broad discovery
must be balanced against the tendency, particularly in industrial property
cases, of parties to attempt to engage in fishing expeditions which should not
be encouraged.
[12]
Rule 242 of the Federal Courts Rules (the Rules) has a
warning for that purpose. In fact, paragraphs 242(1)(b) to (d) of the
Rules read as follows:
|
242. (1) A person may
object to a question asked in an examination for discovery on the ground that
(…)
(b) the question is not relevant
to any unadmitted allegation of fact in a pleading filed by the party being
examined or by the examining party;
(c) the question is unreasonable
or unnecessary; or
(d) it would be unduly onerous
to require the person to make the inquiries referred to in rule 241.
|
242. (1) Une personne peut soulever une objection au sujet
de toute question posée lors d’un interrogatoire préalable au motif que,
selon le cas :
(…)
b) la
question ne se rapporte pas à un fait allégué et non admis dans un acte de
procédure déposé par la partie soumise à l’interrogatoire ou par la partie
qui l’interroge;
c) la
question est déraisonnable ou inutile;
d) il serait trop
onéreux de se renseigner auprès d’une personne visée à la règle 241.
|
[13]
Additionally, a party cannot be required during an examination for
discovery to answer a question that forces it to express an opinion, whether it
be an expert opinion, its interpretation of a patent or its beliefs. In Philips
Export B.V. v. Windmere Consumer Products Inc. (1986), 8 C.P.R. (3d) 505,
the following is stated at page 508:
Question 467, which must be read with Q. 466, asks for the belief
of the plaintiff. In both the Smith, Kline & French case and in Sperry
Corp. v. John Deere Ltd. et al. (1984), 82 C.P.R. (2d) 1, it is stated that
opinion cannot be asked, as a rule, of a person being examined who is not an
expert and that a party cannot be asked to express its position in terms of
mental attitudes.
[Emphasis added.]
(See also Rivtow Straits Ltd. v. B.C. Marine Shipbuilders Ltd.,
[1977] 1 F.C. 735, page 736.)
[14]
In
the motion under review, there are still a considerable number of objections or
questions to answer. As required by this Court, the parties produced a joint
table that, in the Court’s view, reflects the essential items of the grounds
that favour or do not favour an answer to any question to be determined.
[15]
Thus,
the Court reproduced this table and titled it “Table Regarding the Plaintiff’s
Motion”.
[16]
After
having reviewed the records for the parties’ motions, having heard their
counsel and keeping in mind the relevant case law principles, including those
cited above and those raised by the parties, the Court noted in the Table
Regarding the Plaintiff’s Motion using a double pipe (“║”) in the
margin regarding all or any of a party’s reasoning for each question to be
determined whether at the end that question must or must not be answered. The
pipe in the margin is also found in one or the other of the last two columns of
the Table Regarding the Plaintiff’s Motion.
[17]
Thus,
the motion by Eurocopter is allowed in part as follows, and Bell Helicopter
will therefore need to respond — on or before August 22, 2009 — to the ten
undertakings to which Bell Helicopter is already committed to replying and to
the questions listed in the Table Regarding the Plaintiff’s Motion, except for
the questions that were withdrawn and except for the following questions:
3 to 6, 9, 10, 22, 25 to 29, 37 to 39, 44, 46,
53, 56, 57, 61, 64 to 67, 70 to 78, 80, 81, 97, 155 to
157.
[18]
Here,
the Court finds that it did not have to make a determination in itself as to
the second remedy set forth by Eurocopter in its notice of motion, given that
the continuation of Mr. Gardner’s examination is already scheduled and
that its objective is, in principle, what is sought by this remedy.
[19]
Moreover,
as for the application from Bell Helicopter in its responding motion record
such that the Court is avoiding ruling on certain questions, given the
announcement of a motion to split, the Court decided not to accept this
possibility and its possible success as part of determining questions to be
answered here.
[20]
Moreover,
as for the application from Bell Helicopter in a letter dated August 14,
2009, and which seeks to restrict the number of people who are moreover present
at Mr. Gardner’s examination, which took place from June 10 to 12,
2009, after having considered that letter and the oral submissions from the
parties in that regard, the Court does not intend to reduce the number of such
people with respect to Mr. Gardner’s examination, which must continue on
August 25 and 26, 2009, given that the Court is not satisfied that such a
number of people prejudiced the proceedings on June 10 to 12, 2009, or
that it will prejudice the proceedings that are to be held on August 25
and 26, 2009. In addition, this is not allowing third parties, as was the case
in S & M Brands, Inc. v. Paul, 2003 F.C. 1035, to
represent one of the parties to the litigation.
[21]
Lastly,
given that some of the question sought by Eurocopter did not have to be
answered and since we cannot rule out that Bell Helicopter would possibly have
done its research for the documents sought by Eurocopter, the Court finds that
Bell Helicopter can answer, on or before August 22, 2009, to the questions
ordered here, despite the affidavit from Mr. Gardner dated August 13,
2009, which indicates that a considerable number of hours would be required to
find the information sought by the questions asked by Eurocopter.
[22]
Given
the length of the Table Regarding the Plaintiff’s Motion, it is deemed to be
part of the reasons for order and order but will be sent under separate cover
by the clerk to the counsel for the parties by confidential email.
[23]
As
for the costs in Eurocopter’s motion, after having reviewed the written and
oral submissions from the parties on the topic, and after having considered
rules 400(3)(a), (g) and (i), and 400(4), I am of the view that Eurocopter
is to be granted its costs in its motion, in accordance with the middle of
column III of Tariff B.
“Richard Morneau”
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