Date: 20000121
Docket: T-730-97
BETWEEN:
CAE MACHINERY LTD.
Plaintiff
- and -
29598505 QUÉBEC INC.,
FRÉDÉRIC DEBAETS AND
FUJI KOGYO KABUSHIKI KAISHA
Defendants
REASONS FOR ORDER
(Delivered orally from the Bench at Ottawa
on Thursday, January 20, 2000)
Hugessen J.
[1] I am going to dispose of this matter in general terms and it may be that I shall require counsel to draw an order at the conclusion of my reasons.
[2] In the first place, I am not prepared to order the plaintiff CAE to produce documents which are not in its possession but which are in the possession of the co-defendant Fuji. I do not believe that the terms of the licence agreement between Fuji and CAE have the effect of giving CAE the right to obtain the originals or copies of such documents but even if they did, the fact is that Fuji is a party and if those documents are relevant, they can and must be produced by Fuji. That being so, they are compellable at the instance of a party adverse in interest and are not within the control of CAE under Rule 223(3).
[3] With regard to virtually all of the questions which have been refused and not answered, I agree with the submissions made by plaintiff"s counsel that they are cast too broadly in terms or are too general and non-specific and should not make the subject of an order for compulsion.
[4] I also agreed that it is wrong to require a witness on discovery to construe the terms of the patents in issue or to construe the terms of any prior art that may have been cited.
[5] It is further my view that the requests for document production are cast too broadly and that most of the documents sought to be produced are irrelevant. In particular, there having been a Rule 107 order in this case, it is my view that invoices and sales details with respect to the sales by plaintiff of the machines that they have manufactured under the licence of the patents in suit are not relevant.
[6] The rubric of commercial success invoked by defendants" counsel does not in my view justify so far ranging an exploration on examination for discovery. Commercial success is but one of many tests that a Court may apply in assessing the validity of a patent and it is one that is generally useful only in marginal cases. Even if commercial success was to be an issue in the ultimate trial in this action, it is my view that details of invoices, like details of the royalty terms of the licence agreement between Fuji and the plaintiff, are too remote and too marginal to be properly the subject of discoveries. There must be limits on discovery; litigation already takes far too long and there must be some restraint placed upon the excursions of counsel on what are sometimes quaintly called fishing expeditions.
[7] I further am of the view that since file wrappers estoppel is not an admissible plea in this country, questions relating to the prosecution of the patent, to patent agent files and questions relating to the prosecution of foreign patents are generally inadmissible. There may be some circumstances in which a specific question dealing with facts as to such prosecution may be admissible but the questions asked in the present case are, in my view, without exception all too broad and general to qualify.
[8] I am, however, of the view that in one respect at least the present motion is well taken, namely, the claim of privilege asserted by CAE with respect to correspondence passing between itself and the defendant Fuji. It is said that that correspondence is privileged because it was instituted at the request of CAE"s counsel in contemplation of the pending litigation. It seems to me, however, that that claim for privilege overreaches. Certainly, I can see no basis upon which a letter received by the plaintiff CAE from the defendant Fuji in response to a letter written by the plaintiff whether or not at its counsel"s request could be privileged. Nothing about the letter seems to me to enjoy privilege. Equally, I can see nothing about the letter emanating from the plaintiff CAE being privileged once it reaches the hands of the defendant Fuji. I accordingly reject the claim of privilege and will order the production of the 6 letters for which privilege was claimed under that head.
[9] As far as the defendant Fuji itself is concerned, the present motion seeks that I order Fuji to name a specific person as its representative, I will not do that, the right of the defendant to name the person who will speak on its behalf on discovery is clear, I think, and the opposite party who examines has no right to require that some other person appear unless and until it is shown that the person named and proffered is incapable of answering.
[10] I equally will not order that the examination be conducted in any particular language. It is my understanding that the person being proffered by Fuji is Japanese, lives in Japan and his first language is Japanese. If he prefers to testify in Japanese, that, I think is his right, and I will not impose upon him any obligation to speak in any other language.
[11] Next, I have been asked to order that the examination take place here in Canada. I can see no basis for my ordering that. The person is entitled to appear and be questioned in Japan and if that involves further expenses for the party examining, so be it, this kind of litigation is expensive.
[12] Now I come to the question of the request that I issue an order for the examination on Commission of the three named inventors of the patent in suit, all of them Japanese residents. As we discussed at the hearing, the evidence that the Japanese Court will comply with such a request is inadequate and at the request of counsel for the moving defendant, that motion is withdrawn with leave to reapply.
[13] There is one final matter which I omitted to mention and that is that the moving defendant has also asked for leave to reexamine the representative of the plaintiff CAE. There were documents produced during the course of the original examination which were difficult for counsel to seize and to digest within the period of time that was available, there were further answers given and further documents produced as a result of undertakings following examination for discovery. It is absolutely normal in litigation of this sort that in those circumstances, a further examination for discovery should be held and I am quite prepared to order such an examination. If counsel cannot agree as to where it should be held, it should be held where the original examination took place, each party dealing with the cost of that examination on its own.
[14] I said at the beginning that I would ask counsel for the plaintiff to draw an appropriate order. I will also invite parties to make submissions to me on costs of this motion. Just before hearing counsel on costs, I indicated during the course of the hearing that I would not order the defendant Fuji to, at this time, produce a supplementary affidavit of documents, simply on the basis that there is no evidence presently before the Court that there are any documents other than those listed in the present affidavit of documents. Again, I think that it is entirely possible that following examination of the Fuji representative other documents will come out and it may well be that at that time the moving defendant could obtain an order for the production of a further affidavit of documents if the documents are not themselves produced.
[15] Later, as I said, I think the plaintiff CAE and the defendant Fuji have each enjoyed a very substantial measure of success although not total success, I believe an order for costs against the moving defendant is appropriate. I think it is more appropriate because I have to say that I found the material in support of this motion to be not as well organized as I would have liked it to be and as they normally are in cases of this sort. It is usual for counsel to group questions and refusals into categories to enable the Court to deal with them. That was not done or not completely done in this case which resulted in more work for counsel for the plaintiff and for the successful defendant Fuji. I am, however, extremely conscious that litigation of this sort is extremely expensive and I am not prepared to impose an order of costs that is unduly burdensome. In the circumstances, the moving defendant will pay costs to the plaintiff CAE in the amount of $2,000 and to the defendant Fuji in the amount of $1,500 forthwith. In each case there is to be added to that payment all reasonable and proper disbursements in association with this motion including proper travelling and living expenses for counsel who in one case travelled from Vancouver and the other from Toronto.
"James K. Hugessen"
Judge
Ottawa, Ontario
January 21, 2000