T-1108-94
MONTRÉAL, QUEBEC, THIS 25th DAY OF APRIL 1997
PRESENT: RICHARD MORNEAU, PROTHONOTARY
BETWEEN:
JAMES D. NOLAN,
Plaintiff,
AND
SILEX INTERNATIONAL CHEMICAL SYSTEMS INC.
and
RENÉ ST-PIERRE,
Defendants.
ORDER
The plaintiff is ordered to appear again, at such time and place in Montréal as may be agreed between the parties or, if the parties are unable to agree on these points, at such time and place as the defendants shall appoint when they serve a notice to appear, to answer questions 486, 623, 625, 626, 627 and 628 as they have been reformulated or clarified in the reasons for order, and any additional question that may logically follow either from those questions or from the supplementary answers provided by the plaintiff on February 4 and March 26, 1997.
For the purposes of this fresh appearance, the defendants shall assume the plaintiff's travelling expenses and the stenographer's fees.
Costs in the cause.
Richard Morneau
Prothonotary
Certified true translation
C. Delon, LL.L.
T-1108-94
BETWEEN:
JAMES D. NOLAN,
Plaintiff,
AND
SILEX INTERNATIONAL CHEMICAL SYSTEMS INC.
and
RENÉ ST-PIERRE,
Defendants.
REASONS FOR ORDER
RICHARD MORNEAU,
PROTHONOTARY:
This is a motion by the defendants for a ruling on certain objections made by counsel for the plaintiff at the examination for discovery of the plaintiff on March 26, 1996.
The defendants are further seeking an order that the plaintiff appear again to answer the questions to which objections were made and any other question that may follow logically either from those questions or from the supplementary answers provided by the plaintiff on February 4 and March 26, 1997.
This motion has been made in the context of an action for infringement of a patent essentially involving a process for coating the glass on fluorescent lightbulbs. In their defence, the defendants deny infringing the patent and are further claiming that the patent is invalid.
The defendants have divided the questions to which objections were stated into two categories. In view of the small number of objections in issue, I intend to deal with the objections category by category, listing the question or questions in that category at the beginning of each analysis.
It should be noted at the outset that a question deserves an answer at an examination for discovery if it is relevant to the points in issue between the parties, that is, if it may directly or indirectly advance the case of one of the parties or damage the case of the other (see Sydney Steel Corp. v. Omisalj (The), [1992] 2 F.C. 193, 197-8).
We shall now go on to analyse the questions that were not answered, category by category.
Category A: infringement
Only question 486 falls into this category, and it should be reproduced here:
| 486. If the Defendant's process or method did not involve -- and I say "if" -- did not involve the steps of securing the end caps against radial displacement with respect to said glass envelope as a first step, would the Plaintiff's position be that the Claim would be infringed? |
If we look at how this question is worded, it unquestionably refers to a hypothetical situation, and is, moreover, asking for an interpretation of the patent. For these reasons, the plaintiff does not have to answer it.
However, counsel for the defendants satisfied me in argument that apart from the wording of the question, what the defendants are really trying to do by asking it and by asking similar questions relating to the other claims in the patent is to have the plaintiff identify the essential elements of the invention, in short, the substance of the invention.
First, it must be noted that it is proper, at a preliminary stage in the proceedings, to require that a plaintiff specify what it considers to be the "substance" of its invention, even though ultimately, at the end of the road, it is up to the Court to draw a definitive conclusion on this point (Northern Telecom Ltd. v. Reliance Electric Co. (1986), 8 C.P.R. (3d) 224, at page 227).
This means looking for an answer to a question of fact. In Northern Telecom, supra, the Federal Court of Appeal stated the following on this point, at page 226:
| What the "substance" of the invention is is obviously material as it is the taking of it of which the respondents complain. It is also a question of fact, not one of law. See McPhar Engineering Co. of Canada Ltd. v. Sharpe Instruments Ltd. et al. (1961), 35 C.P.R. 105 at pp. 170-1, 21 Fox Pat. C. 1, [1956-60] Ex. C.R. 467 at p. 537, per Thorson P.: |
| And since there is infringement if the substance of the invention is taken it becomes necessary to ascertain what the substance of the invention is and that question is one of fact. |
I am aware that in principle, the Court should not interfere excessively in the proper wording of the questions to be asked. However, I do not believe that this would be the case, and that any real disservice would be done to the administration of justice, if I authorized the defendants to ask the plaintiff "whether he considers the step referred to in question 486 to be an essential element of the invention".
Of course if the question were thus reformulated it would, to some extent, require that the person answering state a technical opinion. However, it does not appear to me in the circumstances that the technical opinion element is sufficient to take away the essentially factual character of the question. (See Risi Stone Ltd. v. Groupe Permacon Inc. (1994), 56 C.P.R. (3d) 381, at page 388).
In addition, I do not think that the question as it is thus reformulated will require that the plaintiff interpret the patent.
The plaintiff will therefore have to answer the question of "whether he considers the step referred to in question 486 to be an essential element of the invention" in the place and stead of question 486 as it was originally asked.
Category B: history of the steps in the technique claimed
There are five questions in this category; they read as follows:
| 623. And I understand that the process always includes at least the following steps: You always preheat. Is that correct? |
| 625. I understand that the process includes at least the following basic steps. The first one being preheating the piece that you want to coat eventually? |
| 626. And you will preheat the piece above the melting point of the fusion bond coating to be applied? |
| 627. Then it will always include the step of dipping the piece in the bed of fluidized polymer? |
| 628. Then one of the steps is always to leave the piece to fuse the coating? |
There seems to have been some confusion between counsel for the parties during the examination for discovery of the plaintiff in terms of what counsel for the defendants was getting at.
Was counsel using these questions to get the plaintiff to testify as to general knowledge of prior art? That is the contention of counsel for the plaintiff, whence their objection to the questions.
On the other hand, did counsel for the defendants simply want the plaintiff - who is being examined also as an inventor - to testify solely with respect to the various steps he may have used, on some occasion, in the entire coating process?
Moreover, and as counsel for the plaintiff contended in argument, was the plaintiff's past experience in respect of coating processes exhaustively and definitively covered in the earlier portions of the examination for discovery of the plaintiff?
Unfortunately, it does not seem to me that we can really resolve the issue, as it relates to these aspects, on the basis of the passages from the transcript filed in support of the instant motion. Even the argument submitted by counsel for the parties does not, in my view, provide definitive clarification of these aspects.
In view of these doubts, I intend to allow the defendants to ask these questions, as long as it is clearly established that those questions are limited to the plaintiff's personal experience. I do not believe that these questions may be used to obtain testimony from the plaintiff as to general knowledge of prior art. Testimony of that nature must come from an expert (see Westinghouse Electric Corp. v. Babcock & Wilcox Industries Ltd. (1987), 15 C.P.R. (3d) 447, 448-9 and Unilever PLC v. Procter & Gamble Inc. (1988), 23 C.P.R. (3d) 279, 280-1).
Accordingly, the plaintiff will be ordered to appear again to answer the questions to which objections were made and any additional question that may logically follow either from those questions or from the supplementary answers provided by the plaintiff on February 4 and March 26, 1997.
However, given that the defendants object to continuing the examination for discovery of the plaintiff in writing, and particularly given that the context of the questions in issue here required clarification in order to be pursued, it seems to me to be fair and equitable that the defendants again assume the plaintiff's travelling expenses and the stenographer's fees.
Costs of this motion in the cause.
Richard Morneau
Prothonotary
Montréal, Quebec
April 25, 1997
Certified true translation
C. Delon, LL.L.
Federal Court of Canada
Court file No. T-1108-94
between
JAMES D. NOLAN,
Plaintiff,
" and "
| SILEX INTERNATIONAL CHEMICAL SYSTEMS INC. |
and
RENÉ ST-PIERRE,
Defendants.
REASONS FOR ORDER
| FEDERAL COURT OF CANADA |
| NAMES OF COUNSEL AND SOLICITORS OF RECORD |
| COURT FILE NO: T-1108-94 |
| STYLE OF CAUSE: JAMES D. NOLAN, |
| Plaintiff, |
| AND |
| SILEX INTERNATIONAL CHEMICAL SYSTEMS INC. |
| and |
| RENÉ ST-PIERRE, |
| Defendants. |
| PLACE OF HEARING: Montréal, Quebec |
| DATE OF HEARING: April 21, 1997 |
| REASONS FOR ORDER OF: Richard Morneau, Prothonotary |
| DATE OF REASONS FOR ORDER: April 25, 1997 |
| APPEARANCES: |
| Steven B. Garland for the plaintiff |
| Bob H. Sotiriadis for the defendants |
| SOLICITORS OF RECORD: |
| Steven B. Garland for the plaintiff |
| Smart & Biggar |
| Ottawa, Ontario |
| Bob H. Sotiriadisfor the defendants |
| Léger Robic Richard |
| Montréal, Quebec |