Date: 20010223
Docket: T-194-98
Ottawa, Ontario, February 23, 2001
Before: Pinard J.
Between:
LES ÉQUIPEMENTS D'ÉRABLIÈRE CDL INC.
Plaintiff/
Cross-defendant
- and -
ÉRATUBE INC.
- and -
RAYNALD DÉSORCY
Defendants/
Cross-plaintiffs
Motion by the defendant for an order:
(i) reversing the portion of the decision by the prothonotary Morneau in which the plaintiff was not ordered to answer the questions appearing as an appendix to the motion ("the Questions"), set out in the defendants' motion record filed in Court in support of the defendants' motion to resolve the objections made and questions taken under reserve in connection with the examinations of Jean-Marie Chabot, Dominique Lesquir and Bernard Landry and argued before the prothonotary Morneau;
(ii) directing the plaintiff to provide a reply to the Questions in the second round of examinations (at the plaintiff's expense) mentioned in para. 37 of the prothonotary Morneau's decision;
(iii) postponing the submission of the schedule ordered by the prothonotary Morneau to a later date to be set by the Court, and which the defendants suggest may be 20 days after the Court's decision to be rendered in the instant proceeding;
(iv) the costs of the motion at bar in the event of opposition;
(v) any other order which this Honourable Court may see fit to make in the circumstances.
[Rule 51 of the Federal Court Rules (1998)]
ORDER
Motion dismissed.
YVON PINARD
JUDGE
Certified true translation
Suzanne M. Gauthier, LL.L. Trad. a.
Date: 20010223
Docket: T-194-98
Ottawa, Ontario, February 23, 2001
Before: Pinard J.
Between:
LES ÉQUIPEMENTS D'ÉRABLIÈRE CDL INC.
Plaintiff/
Cross-defendant
- and -
ÉRATUBE INC.
- and -
RAYNALD DÉSORCY
Defendants/
Cross-plaintiffs
Motion by the plaintiff to appeal the portion of the order by the prothonotary Morneau dated January 8, 2001 directing the plaintiff to answer certain questions under objection raised at the examinations of its representative Jean-Marie Chabot and the co-inventors of Canadian patent No. 1,321,806, Dominique Lesquir and Bernard Landry. In particular, the plaintiff is seeking:
(a) an order reversing the decision of the prothonotary Morneau directing the plaintiff to answer questions 13 to 38, 49, 60 and 75, as numbered in the defendants' table;
(b) the costs of the instant motion;
(c) any other order which this Honourable Court shall consider fit and proper in the circumstances.
[Rule 51 of the Federal Court Rules (1998)]
ORDER
Motion dismissed.
YVON PINARD
JUDGE
Certified true translation
Suzanne M. Gauthier, LL.L. Trad. a.
Date: 20010223
Docket: T-194-98
Neutral reference: 2001 FCT 107
Between:
LES ÉQUIPEMENTS D'ÉRABLIÈRE CDL INC.
Plaintiff/
Cross-defendant
- and -
ÉRATUBE INC.
- and -
RAYNALD DÉSORCY
Defendants/
Cross-plaintiffs
REASONS FOR ORDER
PINARD J.
[1] These are two motions, filed by the plaintiff and defendant respectively, appealing a decision by the prothonotary Morneau on January 8, 2001 allowing in part the objections made by the plaintiff to certain questions asked at the examinations for discovery of Jean-Marie Chabot, Dominique Lesquir and Bernard Landry.
[2] The standard of review to be applied by a judge hearing an appeal from a discretionary decision by a prothonotary has been clearly set out by MacGuigan J.A. in Canada v. Aqua-Gem Investments Ltd., [1993] 2 F.C. 425 (F.C. Appeal), at 462 and 463:
I also agree with the Chief Justice in part as to the standard of review to be applied by a motions judge to a discretionary decision of a prothonotary. Following in particular Lord Wright in Evans v. Bartlam, [1937] A.C. 473 (H.L.) at page 484, and Lacourcière J.A. in Stoicevski v. Casement (1983), 43 O.R. (2d) 436 (Div. Ct.), discretionary orders of prothonotaries ought not to be disturbed on appeal to a judge unless:
(a) they are 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
(b) they raise questions vital to the final issue of the case.15
Where such discretionary orders are clearly wrong in that the prothonotary has fallen into error of law (a concept in which I include a discretion based upon a wrong principle or upon a misapprehension of the facts), or where they raise questions vital to the final issue of the case, a judge ought to exercise his own discretion de novo.
__________
15 It should be noted that Lord Wright's phrase "the final issue of the case" is quite different from "the final issue in the case." Lord Wright means "vital to the result of a case" rather than "vital to the ultimate issue on the merits of the case."
[3] It is also worth noting the relevance of the following extract from the prothonotary's decision:
[6] . . . 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).
[4] Looking first at the appeal by the plaintiff, this relates to the portion of the prothonotary's order directing its witnesses to answer questions 13 to 38, 49, 60 and 75 mentioned therein.
[5] On questions 13 to 38, I consider they are relevant in view of the need to determine the substance of the alleged invention described in the patent at issue. Like the prothonotary, whose decision in this regard was based on very relevant authorities, I have to conclude that the plaintiff has failed in its burden of showing that the decision a quo was obviously wrong.
[6] Question 49 seems equally relevant to me because it concerns the determination of the essential aspects of the same invention.
[7] At the hearing in this Court the plaintiff through its counsel stated that it was discontinuing its appeal with regard to question 60.
[8] Finally, the relevance of question 75 was admitted by the plaintiff itself in para. 42 of its written submissions. Moreover, the question concerns information which the plaintiff is readily able to provide.
[9] Accordingly, the plaintiff's appeal cannot succeed.
[10] Turning to the appeal by the defendant, this relates to the portion of the prothonotary's order allowing the objections made by the plaintiff and so preventing the latter's witnesses from answering questions 12 and 76 mentioned therein.
[11] Both questions involve consideration of the principle of commercial success. On this point, academic commentary and case law have clearly established that commercial success is only relevant in certain marginal cases and cannot be used as a pretext for "fishing expeditions" (see Fox, Canadian Patent Law and Practice, 4th ed., Toronto, The Carswell Company Limited, at pp. 76 and 78, CAE Machinery Ltd. v. Fuji Kogyo Kabushiki Kaisha (January 21, 2000), T-730-97 (F.C.T.D.), Canadian Buttons Limited v. Patrician Plastic Co., 35 F.P.C. 87 and Edison and Swan Electric Light Co. v. Holland (1889), 6 R.P.C. 243, at 277).
[12] Bearing these principles in mind and considering that it is not the plaintiff in the case at bar which is relying on commercial success to establish that there was an invention, but instead the defendant which, in order to show an absence of inventive activity, is alleging that the patented invention has not been marketed, I consider that the well-supported arguments in paras. 24, 25 and 30 to 35 of the plaintiff's reply record (filed on February 16, 2001) are valid and provide a basis for dismissing the appeal on both questions. This latter conclusion is reinforced by the plaintiff's undertaking through its counsel, with regard to question 76, to break down the figure of 1,590,000 units so as to indicate the sales figures for the double fork, the CDL-IPL adaptor and the subsequent versions of that adaptor.
[13] For these reasons, the two motions in appeal are dismissed. By consent of the parties no costs will be awarded and it is ordered that henceforth this case will be specially managed by the person or persons appointed pursuant to Rule 383 of the Federal Court Rules (1998).
YVON PINARD
JUDGE
OTTAWA, ONTARIO
February 23, 2001
Certified true translation
Suzanne M. Gauthier, LL.L. Trad. a.
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT No.: T-194-98
STYLE OF CAUSE: LES ÉQUIPEMENTS D'ÉRABLIÈRE CDL INC.
v. ÉRATUBE INC. et al.
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: February 20, 2001
REASONS FOR ORDER BY: PINARD J.
DATED: February 23, 2001
APPEARANCES:
Marie Lafleur FOR THE PLAINTIFF
Daniel S. Drapeau FOR THE DEFENDANT
Nathalie Gosset
SOLICITORS OF RECORD:
Fasken, Martineau, DuMoulin FOR THE PLAINTIFF
Montréal, Quebec
Ogilvy, Renault FOR THE PLAINTIFF
Montréal, Quebec