Date: 20000928
Docket: T-1064-97
MONTRÉAL, QUEBEC, SEPTEMBER 28, 2000
Before: RICHARD MORNEAU, PROTHONOTARY
Between:
GROUPE TREMCA INC.
- and -
JAGNA LIMITED
Plaintiffs
AND
TECHO-BLOC INC.
Defendant
ORDER
On the motion by the plaintiffs, on resumption of the examinations the defendant shall answer the following questions: 353, 361 and 664.
This motion is otherwise dismissed without costs.
On the motion by the defendant, on the resumption of the examinations the plaintiffs shall answer the following questions:
– the questions in appendix 1 to 5;
– questions 742, 1252, 1253 and 1254 in appendix 9;
– questions 1264 to 1267 in appendix 11;
– questions in appendix 12;
– question 1202 in appendix 13.
This motion is otherwise dismissed without costs.
Additionally, the parties shall observe the following new schedule:
(1) on or before December 1, 2000 the defendant shall have served and filed any motion pursuant to the commitments given by the plaintiffs in the week of September 26, 2000;
(2) within 60 days of the time this order becomes final the parties shall, if necessary, complete the examinations for discovery;
(3) the parties shall proceed with a settlement discussion pursuant to Rule 257 of the Federal Court Rules, 1998 within the same deadline as paragraph (b);
(4) the plaintiffs shall ask that a pre-trial conference be held within the next 30 days.
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Richard Morneau Prothonotary |
Certified true translation
Suzanne M. Gauthier, LL.L. Trad. a.
Date: 20000928
Docket: T-1064-97
Between:
GROUPE TREMCA INC.
- and -
JAGNA LIMITED
Plaintiffs
AND
TECHO-BLOC INC.
Defendant
REASONS FOR ORDER
RICHARD MORNEAU, PROTHONOTARY
[1] The Court has two motions before it, one filed by each party, asking it to resolve the objections made during the examinations for discovery of the parties' respective representatives.
State of law on questions posed during examination for discovery
[2] As MacKay J. said in Sydney Steel Corp. v. The Omisalj, [1992] 2 F.C. 193, at 197:
. . . the standard for propriety of a question asked in discovery . . . is whether the information solicited by a question may be relevant to the matters which at the discovery stage are in issue on the basis of pleadings filed by the parties.
[3] Despite this broad statement of principle, however, there are limits to the scope of an examination for discovery, in particular that questions which are too broad and in the nature of fishing expeditions should not be allowed (see Reading & Bates Construction Co. v. Baker Energy Resources Corp. (1988), 24 C.P.R. (3d) 66 (F.C.T.D.), at 72).
[4] The Court intends to deal with the plaintiffs' motion first.
Plaintiffs' motion
Appendix 2
[5] Question 160 will not have to be answered, in view of the Court's comments in Risi Stone Ltd. v. Groupe Permacon Inc. (1994), 56 C.P.R. (3d) 381, at 386 and 387 (per Nadon J.).
Appendix 3
[6] For the reasons stated on p. 84 of the defendant's motion record, this question will not have to be answered.
Appendix 4
[7] Question 353: the wording of this question is not really similar to those already answered; accordingly, it will have to be answered.
[8] Question 361: for the reasons stated on page 17 of the plaintiffs' written submissions made in support of their motion ("the plaintiffs' submissions"), this question will have to be answered. I do not feel that by answering it Risi Stone, supra, is contravened.
[9] Question 664: for the reasons stated in paragraph 34, page 18 of the plaintiffs' submissions, this question will have to be answered. An affirmative answer could move matters forward.
Appendix 5
[10] As to questions 356 and 357, the reasons put forward by the defendant at p. 86 of its motion record mean that these questions will not have to be answered.
Undertakings
[11] As to undertakings U61 and U62, I agree with the defendant in saying that these are really in the nature of future questions to be asked when the examinations resume. No further answer will be needed. As to undertaking U67, contrary to what the plaintiffs argued in their pleadings, this undertaking in no way seeks a reply or information on a specific point. As worded, it is in the nature of a fishing expedition. I am not prepared to say that since certain information was produced in the past this situation means that the defendant must produce what the plaintiffs are now seeking. This undertaking will not have to be answered.
[12] On undertaking U76, it appears that this undertaking has already received an answer which must be regarded as satisfactory for the moment. For any further information, the undertaking given by counsel for the defendant will suffice.
[13] No costs will be awarded on the instant motion, since the outcome is divided.
Defendant's motion
Appendix 1
[14] It appears to the Court that paragraph 17 of the defence suffices to support the defendant's search for admissions covered by the three questions in this appendix. The said questions will therefore have to be answered.
Appendix 2
[15] It appears to the Court that at this stage all the questions in this appendix should be answered. The questions are primarily designed to obtain admissions on simple matters of fact. Although they come close to it, these questions do not seem to the Court at this stage to seek information on the review record for the purpose of interpreting the patent claims at issue. These questions will therefore have to be answered.
Appendices 3, 4 and 5
[16] Mutatis mutandis, the reasoning given under appendix 2 above is applicable to these appendices. The questions under the latter will therefore have to be answered.
Appendices 6 and 8
[17] The remaining questions under appendix 6 and those under appendix 8 in my opinion overstep the limits imposed by the decisions of this Court on the circumstances and exceptions permitting the use of a review or prosecution file (see Groupe Tremca Inc. et al. v. Techno-Bloc Inc. (1998), 149 F.T.R. 92). By the questions under these appendices, the defendant is seeking access to the prosecution record in order to attach a legal interpretation on the scope of the patent claims at issue. That is prohibited in this Court.
[18] Counsel for the defendant submitted a vigorous argument in favour of a change of the state of the law in our Court so as to be in line with what prevails in U.S. law. However, I am bound by stare decisis and will leave it up to the higher courts to make such a change, if of course such a change should all things considered be made.
Appendix 9
[19] Question 742 must be answered. It is factual in nature.
[20] Questions 1246 to 1248, however, require the witness to interpret the patent in question in light of the blocks illustrated and described in Canadian patent 2,045,953. They will not have to be answered.
[21] Questions 1252, 1253 and 1254 will have to be answered. They are factual in nature.
[22] Questions 1255 to 1258 will not have to be answered because of the reasons stated in paragraphs 22 to 24, at p. 22 of the plaintiffs' written submissions.
Appendix 10
[23] Question 775 will not have to be answered. It seeks an interpretation of the patent at issue.
[24] On the other questions in this appendix, they will not have to be answered consistent with paragraph 26, p. 23 of the plaintiffs' written submissions.
Appendix 11
[25] On questions 1264 and 1265 in this appendix, these are factual in nature and will have to be answered.
[26] As to questions 1266 and 1267, although the infringement of the patent at issue is the responsibility of this Court at the trial on the merits, I intend to allow these questions since an affirmative answer might be a factor which the Court could consider in drawing a conclusion on the infringement of the patent issue.
Appendix 12
[27] The three questions in this category are allowed since they are factual in nature and relevant in order to allow the defendant to distinguish the past decision of Dubé J. on the patent at issue. As to questions 1328 and 1330, their scope clearly cannot be covered by solicitor-client privilege applicable to the preparation of a case.
Appendix 13
[28] Question 1202, unlike questions 1302 and 1303 in the same appendix, seeks a factual reply and not a legal opinion or an interpretation of the patent at issue. Accordingly this question, unlike the other two, will have to be answered.
[29] As the outcome is also divided on this motion, no costs will be awarded.
[30] An order will be made accordingly on these two motions. This order will also set out a schedule for further action in this matter.
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Richard Morneau Prothonotary |
MONTRÉAL, QUEBEC
September 28, 2000
Certified true translation
Suzanne M. Gauthier, LL.L. Trad. a.
FEDERAL COURT OF CANADA
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT FILE No.: T-1064-97
STYLE OF CAUSE: GROUPE TREMCA INC.
- and -
JAGNA LIMITED
Plaintiffs
AND
TECHO-BLOC INC.
Defendant
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: September 19, 2000
REASONS FOR ORDER BY: RICHARD MORNEAU, PROTHONOTARY
DATE OF REASONS FOR ORDER: September 28, 2000
APPEARANCES:
François Guay for the plaintiffs
Marc Gagnon
Jean Carrière for the defendant
Richard Uditsky
SOLICITORS OF RECORD:
Smart & Biggar for the plaintiffs
Montréal, Quebec
Mendelsohn, Rosentzveig, Shacter for the defendant
Montréal, Quebec
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Federal Court of Canada Trial Division Date: 20000928 Docket: T-1064-97 Between: GROUPE TREMCA INC. - and - JAGNA LIMITED Plaintiffs AND TECHO-BLOC INC. Defendant REASONS FOR ORDER |