Date: 19980520
Docket: T-1334-97
BETWEEN:
DEK-BLOCK ONTARIO LTD.
Plaintiff
- and -
BÉTON BOLDUC (1982) INC.
Defendant
REASONS FOR ORDER
RICHARD J.:
[1] The plaintiff (the moving party) has brought a motion to compel the defendant to provide answers to the following questions:
| (a) those refused to be answered on the defendant"s examination for discovery, namely questions relating to the prior art asserted in the Défense et Demande Reconventionnelle, Annexe "A", identified at the examination for discovery of the defendant as Requests 13 and 17-27, inclusive; |
| (b) those unresponsively answered in writing by the defendant, namely questions: |
| (i) relating to the identification of prior art allegedly located in Europe, identified at the examination for discovery of the defendant as Requests 3, 4, 5 and 6, and the prior art listed in Annexe "A" (Request 12), |
| (ii) relating to the allegations of improper reissue of the plaintiff"s patent, identified at the examination for discovery of the defendant as Request 16, |
| (iii) relating to the identification of the man skilled in the art, identified at the examination for discovery of the defendant as Request 29. |
[2] The examination for discovery of Maurice Bolduc, the representative of the defendant, was held on January 27, 1998, and this motion to compel answers to questions on that discovery was brought on May 8, 1998.
REQUESTS 3, 4, 5 AND 6
[3] At the hearing, counsel for the plaintiff, the moving party, withdrew the demand for answers to Requests 3, 4, 5 and 6 found in subparagraph 1(b)(i) of the motion.
REQUEST 29
[4] Request 29 reads as follows:
| To provide the information as to who is the man of the art referred to in paragraph 10 b) of the statement of defense. |
[5] Paragraph 10(b) of the statement of defence alleges that the claimed invention was obvious to a person skilled in the art at the date of the invention.
[6] The plaintiff claims it is entitled to know whether such person is a maker, a user, a retailer, or otherwise, and that this is a question of fact. However, the Federal Court of Appeal in the Almecon case1 referred to the fundamental artificiality of the concept of the "skilled workman". What is important is that he be a person who understands, as a practical matter, the problem to be overcome, how different remedial devices might work, and the likely effect of using them.
[7] In my opinion, the defendant is not required, on discovery, to further define who the "skilled workman" is.
[8] Accordingly, the motion to compel an answer to Request 29 is denied.
REQUEST 16
Request 16 reads as follows:
| To provide the information as to which statements are being relied on in that material to support the allegations of paragraph 10 f). |
[9] Paragraph 10(f) of the statement of defence alleges that the reissue of the "260 patent is void for the reasons set out in section 47 of the Patent Act .
[10] On discovery, the defendant stated that it relied on the entire content of two relatively short affidavits in the reissue file.
[11] The plaintiff is entitled to demand and have answered which parts of the affidavit the defendant relies on to support its allegation of improper reissue of the plaintiff"s patent.
REQUESTS 13 AND 17 TO 27
[12] These requests as a group relate to the prior art relied on by the defendant as detailed in Annexe "A" to its statement of defence. They go to the issue of anticipation and of obviousness.
[13] The plaintiff did not seek particulars from the defendant concerning those parts of the prior art it relied on to support its claim of invalidity. However, this does not foreclose the plaintiff from asking such questions on discovery.
[14] The burden is on the defendant to establish the facts on which it bases its allegations that the invention described and claimed in the plaintiff"s patent was not novel, was obvious or did not involve any inventive step.
[15] Merely scheduling a list of patents and articles does not satisfy the burden on the defendant2.
[16] The plaintiff is entitled to be told the parts of those prior patents or prior publications the defendant relies on to establish anticipation or obviousness. The defendant must be specific.
[17] Rule 240(a) of the Federal Court Rules, 1998, provides a broad scope for examination for discovery. The person being examined must answer, to the best of the person"s knowledge, information and belief, any question that is relevant to any unadmitted question of fact in a pleading.
[18] The purpose is to elicit facts and obtain admissions. It is also intended to enhance settlement opportunities.
[19] Except in the case of the examination of a non-party, the person being examined may not object to a question asked in an examination for discovery on the ground that the answer would be evidence or hearsay, or the question constitutes cross-examination.
[20] Clearly, the discovery rules place emphasis on full disclosure.
[21] The defendant objects to answer this group of questions on the ground that they require an interpretation of the patent in issue or the expression of an expert opinion and relies on the Risi Stone case3.
[22] The questions do not call for an interpretation of the patent in issue.
[23] In the Risi Stone case, Mr. Justice Nadon, at page 388, also recognized that the mere fact that a question may seek to elicit an expression of a technical opinion from a person who is not an expert, is not necessarily fatal.
[24] He adopted the test formulated by Madame Justice Reed in Foseco4:
| The Federal Court of Appeal has made it plain that when the evidence sought is the subject-matter of expert opinion, evidence to be disclosed pursuant to Rule 482 [now Rule 279], questions relating thereto are not required to be answered on discovery. It has also made it plain that where the question is one clearly on its face seeking an opinion from the witness, that the question is not required to be answered. I have not been able to find, however, an articulation of the appropriate principle, in a case such as the present, where the information sought is technical in nature (and for that reason might be addressed in an affidavit of an expert witness), but is within the common knowledge of the plaintiff and where the question is of a factual nature although it can arguably be said to require an expression of opinion by the witness, in the sense that many assertions of "fact" require the expression of an "opinion". It is my conclusion that in such cases the principle to be applied is that the factual nature of the question takes precedence and the question should be answered. Accordingly, I find that the prothonotary proceeded on a wrong principle and the question should be answered. |
[25] The plaintiff is entitled to know not only which of the patents or publications referred to in Annexe "A" are alleged to contain a description of the invention claimed in each of the patent claims in issue, but also, in each case, where in such patents or printed publications, such description is to be found5.
[26] Insofar as the defendant is being asked to identify where, in the cited patents and prior publications, the description of the invention is to be found, the defendant must answer the question.
[27] The motion to compel the defendant to answer Request 13 and Requests 17 to 27, to the extent only that the defendant is being asked to identify where, in the cited patents and prior publications, the description of the invention is to be found, is allowed, and the order to answer such questions is limited accordingly.
[28] Costs to the plaintiff.
__________________________
Judge
Ottawa, Ontario
May 20, 1998
__________________1 Almecon Industries Ltd. v. Nutron Manufacturing Ltd. (1997), 72 C.P.R. (3d) 397.
2 Wellcome Foundation Ltd. v. Novopharm Ltd., (1992) 44 C.P.R. (3d) 456 at 458 (F.C.T.D.).
3 Risi Stone Ltd. v. Groupe Permacon Inc., (1994) 56 C.P.R. (3d) 381 at 387 (F.C.T.D.).
4 Foseco Trading A.G. v. Canadian Ferro Hot Metal Specialties, Ltd. (1991), 36 C.P.R. (3d) 35 at 52 (F.C.T.D.).
5 Zamboni v. Town of Preston, (1969) 61 C.P.R. 233 at 234 (Ex. Ct. of Canada, per Thurlow J.).