Date: 19981216
Docket: T-873-93
BETWEEN:
HAYDEN MANUFACTURING CO. LTD.
Plaintiff
- and -
CANPLAS INDUSTRIES LTD.
Defendant
REASONS FOR ORDER AND ORDER
WETSTON J.:
[1] The defendant, Canplas Industries Ltd., appeals a decision by the Associate Senior Prothonotary (A.S.P.), dated November 24, 1998. The only issue before the Court concerns the refusal by Mr. Westman to answer certain questions refused by him at his examination for discovery and not ordered to be answered by the A.S.P. Mr. Westman is a representative of Hayden Manufacturing Co. Ltd., the plaintiff in the action.
[2] The action is one for patent infringement. The patent in suit relates to inlet valves, including face plates and mounting plates for central vacuum systems. The action was started April 16, 1993. The examination for discovery of the plaintiff's representative took place on November 16 and 17, 1994, and discovery of the defendant's representative took place on January 16 and 17, 1995. The allegation of infringement relates only to claim 2. The patent in suit was filed on February 17, 1986. Beginning in 1981 or 1982 the plaintiff had been selling a central vacuum inlet mounting plate (the T-31-MP) which was covered by claims 3 and 10 of the patent in suit.
[3] It is clear that under section 27(1)(c) of the Patent Act an applicant may not obtain a patent for an invention on sale in Canada more than two years before the filing of the patent application. Therefore, the plaintiff was not entitled, according to the defendant, to a patent for claims 3 and 10.
[4] At paragraph 15 to 20 of the amended amended defence and counter-claim, the defendant alleges that the plaintiff willfully included claims 3 and 10 in the patent in suit despite knowing that it was not entitled to a patent for the subject matter of these claims. It is further alleged that under section 53 of the Patent Act such willful overclaiming rendered the patent in suit void. On December 23, 1993 the plaintiff disclaimed claims 3 and 10 thus in the defendant's view admitting that the subject matter of those claims was not patentable. Therefore, the defendant contends that it must now prove that the overclaiming by the defendant was willful since this is not admitted.
[5] There are eight questions which the defendant further requires Mr. Westman to answer. The defendant argues that they are related to (a) the depth of the plaintiff's and Mr. Westman's experience in obtaining patent protection; (b) prior patent litigation in which the plaintiff was involved, wherein the plaintiff defended itself from an allegation of patent infringement by alleging that the relevant patent was invalid because it claimed old subject matter; and (c) the length and extent of sales of the T-31-MP prior to the filing of the patent application for the patent in suit.
[6] The A.S.P. did not provide any reasons for his order dated November 24, 1998 with respect to this matter. The lack of written reasons by the Prothonotary does not automatically mean that the proceeding before the Court should proceed as a hearing de novo. It is clear that a discretionary order of a Prothonotary should not be disturbed on appeal unless it is clearly wrong in the sense that the exercise of discretion by the Prothonotary was based upon a wrong principle or upon a misapprehension of the facts, or it raises a question which is vital to the final issue of the case. It would appear that only where such discretionary orders are clearly wrong in that the Prothonotary has fallen into an error of law (including discretion based upon a wrong principle or upon a misapprehension of the facts, or where it raises a question vital to the final issue in the case) should the Court exercise its own discretion de novo, Canada v. Aqua-Gem Investments Ltd. [1993] 2 F.C. 425 at 463.
[7] Both parties agree that it is well established that the scope of discovery is limited to that which is relevant to the pleadings and to information that may either directly or indirectly enable a party to advance his own case or damage the case of his adversary. The defendant relies upon the case of Reading & Bates Construction Co. v. Baker Energy Resources Corp. (1988) 24 C.P.R. (3d) 66, for the proposition that the test as to whether a discovery question should be answered is simply relevance. He further contends that relevance is a matter of law, not a matter of discretion, Reading & Bates, supra, at p. 70. This decision, while referred to in the Aqua-Gem decision, supra, preceded that decision. In James River Corp. of Virginia v. Hallmark Cards Inc. (1997) 72 C.P.R. (3d) 157 at p. 160, Reed, J. considered the Aqua-Gem decision and the specific issue of answering questions in discovery. In that case at p. 160 she stated as follows:
| I understand the Aqua-Gem decision to state that a trial judge should show deference to a prothonotary's decision, in a manner similar to that exercised by courts of appeal in the case of discretionary decisions by trial judges. Such deference should be shown unless the prothonotary's decision is: (1) clearly wrong in the sense that the decision was based on either a wrong principle of law or a misapprehension of the facts; or (2) deals with a matter vital to the final issues of the case. |
| Questions that are vital to the final issues of a case are, for example, the entering of default judgment, a decision not to allow an amendment to pleadings, a decision to add additional defendants and thereby potentially reduce the liability of the existing defendant, or a decision on a motion for dismissal for want of prosecution. None of the questions raised by the present appeals with respect to the answering of questions on discovery can be characterized as vital to the final issues of the case. |
| Counsel raised the question, at least with respect to category 7, on page 168 infra, whether the decisions of the Associate Senior Prothonotary could be said to be discretionary ones. If they are not, the logical consequence would be that a judge should apply a more stringent test when reviewing the orders on appeal. It is difficult to characterize a prothonotary's authority to require that a person, being examined for discovery, reattend to answer questions as discretionary, if that term is being used only to signify a situation in which there is room for reasonable people to hold differing opinions as to the appropriate decision. The prothonotary's authority to require that certain questions be answered on discovery is not of that nature. |
| A useful explanation of the use of the label discretion, however, is found in the text R.P. Kerans, Standards of Review Employed be Appellate Courts (1994) at 122-149. Discretion is described as a term that is used for two categories of decisions: (1) those involving the management of the trial and the pre-trial process; and (2) those where the rule of law is one that makes many factors relevant and requires a decision-maker to weigh and balance them. In both cases "the inclination of the reviewing courts has always been to govern with a light hand. They do this by assigning the issue to the "discretion' category". The text notes that courts use this terminology to describe most interlocutory matters including, for example, the amendment of pleadings, the striking of pleadings and "a host of other situations where the judge manages or supervises ... the process of preparation for trial". It is in this sense that I understand the Aqua-Gem case to be using the term discretionary when speaking of decision-making by a prothonotary. |
| Also, the Chief Justice in the Aqua-Gem case, at 446, clearly indicated that an order requiring the giving of particulars is a discretionary order. An order with respect to the giving of answers on discovery is of a similar nature. |
In Reading & Bates Construction v. Baker Energy Resources, supra, McNair, J. states at p. 71-72:
| The case of authorities afford some useful guidelines bearing on the issue of relevance vis-à-vis the determination of whether the learned prothonotary was clearly wrong in compelling answers to the questions enumerated in the defendant's notice of motion. I will endeavour to review briefly the ones I consider to be most applicable. |
| 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 Financière et Commerciale du Pacifique v. Peruvian Guano Co. (1882), 11 Q.B.D. 55 (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 rather than on its relevance to facts which the plaintiff proposes to prove to establish the facts constituting the cause of action. Additionally, where a reference has been directed, the application of Rule 464(15) requires that the answers on discovery be restricted to questions as to facts that may prove or tend to prove or disprove or tend to disprove any unadmitted allegation of fact placed in issue on the reference: Armstrong Cork Canada Ltd. v. Domco Industries Ltd. (1983), 71 C.P.R. (2d) 5, 48 N.R. 157 (F.C.A.). |
[8] The above two decisions appear to be taking a somewhat different approach to whether or not this order is in the nature of a discretionary order. I agree that relevance is the test, but I also am of the opinion that the order is discretionary in that the Court must consider whether the Prothonotary had fallen into legal error of law which prevented him from exercising his discretion properly. If so the Court must exercise its own discretion de novo. In other words even if I would have made a different order, unless the Prothonotary erred in the manner described previously, this Court should not interfere. I am of the opinion therefore the order of the A.S.P. in this case is both interlocutory and discretionary.
[9] I have considered the questions refused and reviewed the transcript of the examination of Mr. Westman. First, I disagree with the defendant that the answer to any of these questions is vital to the final issue of the case, that is to its final resolution. Obviously, the defendant is not precluded whatsoever from pursuing these issues at trial in the cause of action. While Mr. Westman, as company representative, has an obligation under rule 241 to inform himself, I am not satisfied that the A.S.P. has fallen into legal error of law or principle which prevented from exercising his discretion in the proper manner. As such this Court shall not exercise its own discretion de novo. In particular, I say this because with respect to certain questions it is possible that de novo, might rule otherwise.
Questions 29 and 30
[10] With respect to the answer to question 29, the plaintiff states that Mr. Westman, by written reply indicated that this was the first patent application in which he was directly involved. With respect to this question as framed, this a complete answer. The Court will not rewrite the question. With respect to the question posed this a complete answer and the court will not rewrite the question. to the refusal for question 30, I see no basis to interfere with the discretion of the Prothonotary in this matter. In any event, as a matter of legal principle the answer to question 30 and its relevance to the question of overclaiming is not immediately apparent. Experience is one thing, but the highly technical legal issues associated with patent claims is another matter entirely.
Questions 204, 207, 208, and 212
[11] These questions all relate to U.S. litigation involving a U.S. patent and obviously involve questions of U.S. law which, it is contended by the plaintiff, is irrelevant to the present action. Neither Mr. Westman nor Mr. Hayden are experts in U.S. law and it was argued that they cannot give evidence in regard to such proceedings. It is also contended that whether Smart & Biggar or Fetherstonhaugh had any involvement with Hayden in connection with that litigation is irrelevant. The defendant contends that the documents relate to a U.S. patent infringement action brought in 1984 approximately two years before the filing of the patent in suit against the plaintiff by a company called Vacu Maid. In its defence at that time the plaintiff pleaded that the relevant patent was invalid because it claimed subject matter that was sold to the public long before the filing of the patent. It is contended that the plaintiff must have been aware of and understood its own pleading in that litigation. Having an understanding of the concept of prior public sale the plaintiff would not likely have overclaimed in its own patent application by mistake.
[12] In my opinion these matters could be remotely relevant to the pleading and may indirectly enable the defendant to advance his case. However, the connection is, at best, tenuous. While in the first instance the Court might have ordered answers to these questions I do not see any error in law in the application of the Prothonotary's discretion in refusing to order such answers.
Questions 777 and 779
[13] Finally, with respect to questions 777 and 779, the plaintiff contends that these questions relate to a device that has been disclaimed from the patent at issue and therefore the questions are irrelevant. Moreover, the plaintiff notes that pursuant to rule 240(a) the questions are not relevant to any unadmitted allegation of fact in a pleading filed by itself and being examined by the examining party. The plaintiff admitted sales prior to the two year period but not willfulness. The defendant contends that if the T-31-MP had been sold for a long period of time and in high volume prior to the filing of the patent application, then it is unlikely that the T-31-MP would have escaped the plaintiff's attention at the time of filing. This would suggest that the overclaiming was not accidental. Once again, these facts can obviously be established at trial. However, from the perspective of the exercise of the his discretion, the A.S.P. decided that he would not order the questions answered. Once again, I see no error in law or principle that would suggest that this Court should interfere with that order.
[14] Finally, I would like to bring to the attention of the parties in this matter rule 95 of the Federal Court Rules, 1998. Rule 95(1) states:
| 95. (1) A person who objects to a question that is asked in an oral examination shall briefly state the grounds for the objection for the record. |
Rule 95(2) states:
| 95. (2) A person may answer a question that was objected to in an oral |
| examination subject to the right to have the propriety of the question |
| determined, on motion, before the answer is used at trial. |
[15] In my opinion, this practice, if adopted in cases such as this, would greatly enhance the capacity of both the Prothonotary (Rule 50(2)) and the Court to deal with the failure of a party to answer questions on discovery. In my opinion such a procedure might reduce considerably the time, effort and resources that need be devoted to the hearing of these interlocutory matters before the Prothonotary or a Judge of the Trial Division.
ORDER
[16] The appeal is dismissed. Costs shall be in the cause.
"Howard I. Wetston"
Judge
TORONTO, ONTARIO
December 16, 1998
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
COURT NO: T-873-93
| STYLE OF CAUSE: HAYDEN MANUFACTURING CO. LTD. |
and -
| CANPLAS INDUSTRIES LTD. |
DATE OF HEARING: MONDAY, DECEMBER 14, 1998
PLACE OF HEARING: TORONTO, ONTARIO
REASONS FOR ORDER AND ORDER BY: WETSTON, J.
DATED: WEDNESDAY, DECEMBER 16, 1998
APPEARANCES: Mr. J. Sheldon Hamilton
For the Plaintiff
Mr. Stephen Shoshan
For the Defendant
SOLICITORS OF RECORD: Smart & Biggar
Barristers & Solicitors
Box 111
1500 - 438 University Ave.,
Toronto, Ontario
M5G 2R8
For the Plaintiff
Piasetzki & Nenniger
Barristers & Solicitors
2308 - 120 Adelaide St. W.
Toronto, Ontario
M5H 1T1
For the Defendant
FEDERAL COURT OF CANADA
Date: 19981216
Docket: T-873-93
Between:
HAYDEN MANUFACTURING CO. LTD.
Plaintiff
- and -
| CANPLAS INDUSTRIES LTD. |
Defendant
REASONS FOR ORDER AND ORDER