Date: 19980818
Docket: T-873-93
BETWEEN:
HAYDEN MANUFACTURING CO. LTD.,
Plaintiff,
- and -
CANPLAS INDUSTRIES LTD.,
Defendant.
REASONS FOR ORDER
MR. JOHN A. HARGRAVE,
PROTHONOTARY
[1] The Plaintiff seeks answers to examination for discovery questions asked of Paul Henderson on 16 and 17 January 1995 and to written follow-up questions, arising out of answers to oral discovery questions, which were subsequently provided in writing. The litigation itself relates to alleged infringement of a patent for an inlet or suction valve for a built in vacuum cleaning system, the valve being designed to provide a source of electrical power by which to operate motor-driven cleaning attachments. The Plaintiff's patent application was made 17 February 1986, but the patent was not issued until some four years later, 17 March 1990.
SOME PRINCIPLES OF LAW GOVERNING DISCOVERY
[2] The general principles governing examination for discovery and requests for documents are not disputed. Such discovery is generally broad, with relevance being the critical factor. However, there are some limitations upon which the Defendant relies.
[3] As to the scope of examination for discovery, Rule 240(a) provides that:
| . . . A person being examined for discovery shall answer, to the best of the person's knowledge, information and belief, any question that |
| (a) is relevant to any unadmitted allegation of fact in a pleading filed by the party being examined or by the examining party; or . . . |
Thus, as a general proposition, questions exploring issues that are relevant between the parties, in order to prove or disprove allegations of fact which are not admitted, are proper. As to documents which may be called for on examination for discovery, those are limited to material that may, directly or indirectly, enable a party to advance his or her own case, or to damage the case of the adversary. A leading case on these points is Reading & Bates Construction Co. v. Baker Energy Resources Co., (1988), 25 F.T.R. 226 (T.D.) at p. 230. The difficulty with such general propositions is the number of fine distinctions that have been drawn as to what questions are allowed and what production of documents is or is not required on discovery.
[4] In the present instance the Plaintiff makes a number of submissions as to applicable law including that there is a tendency, in Canada, to provide full and complete discovery and so remove the possibility of ambush: Irish Shipping Ltd. v. The Queen, [1974] F.C. 445 (T.D.) at 449. Next, if there is an arguable case that the facts requested on discovery are marginally relevant then, even at the risk of extending the scope of the case, such ought to be allowed, leaving it to the trial judge to determine the pertinence, if any, of that evidence: Sperry Corporation v. John Deere Ltd. (1982), 64 C.P.R. (2d) 217 (F.C.T.D.) at 221. Further, commercial success is a proper area for discovery in the context of obviousness: James River Corporation of Virginia v. Hallmark Cards Inc. (1997), 72 C.P.R. (3d) 157 at 163-164 (F.C.T.D.) and Procter and Gamble v. Kimberly-Clark of Canada Ltd. (1991), 35 C.P.R. (2d) 321 at 325 (F.C.T.D.).
[5] Still dealing with applicable law and more particularly with patent infringement actions, certainly questions seeking expert opinion need not be answered, yet technical questions requiring answers of a factual nature are proper so long as the information sought is both factual and within the common knowledge of the party being discovered. This is set out in a concluding passage in Foseco Trading A.G. v. Canadian Ferro Hot Metals Specialties Ltd. (1991), 36 C.P.R. (3d) 35 at 52, a decision of Madame Justice Reed:
| 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, 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. |
[6] There must, of course, be some limitation on general propositions allowing broad discovery, for given the resources of courts and the concern over costs, congestion and delay, it would be an unaffordable luxury to allow litigants to engage in protracted and far-reaching discovery of marginal usefulness. I return to Reading & Bates (supra) at p. 230, for six general principles which place sensible limitations on the scope of discovery generally and here I paraphrase:
| 1. The documents to which parties are entitled are those which are relevant. Relevance is a matter of law, not discretion. The test to apply, in determining relevance, is whether information obtained may directly or indirectly advance one party's case, or damage that of the other party. |
| 2. Questions which are too general, or which seek an opinion, or are outside the scope of a proceeding, need not be answered. |
| 3. Discovery is confined to matters relevant to the facts which have been pleaded, rather than to facts which a party proposes to prove and thus relevance, in the context of discovery, limits questions to those that may prove or disprove allegations of fact which have not been admitted. |
| 4. A court should not compel answers which, although perhaps relevant, are not likely to advance the party's legal position. |
| 5. Before requiring an answer to a discovery question, the court should weigh the probability of the usefulness of the answer against the time, trouble, expense and difficulty which might be involved in obtaining it: "One must look at what is reasonable and fair under the circumstances: . . . " (loc.cit.). |
| 6. Fishing expeditions undertaken through far-reaching, vague or irrelevant questions are to be discouraged. |
These limitations place reasonable bounds on discovery. In addition, I have not ignored particular case law to which counsel for the Defendant has referred in opposing the Plaintiff's request, but will touch upon those references in due course.
CONSIDERATION
Obviousness and Market Research
[7] The presently outstanding items in the Plaintiff's first group of questions, 167, 168, 175, 182 through 185, 434 through 438, 441 and 442, 543, 913 and 914, deal with the Defendant's perception of a need for a vacuum suction valve containing electrical contacts and with market studies and market research done by the Defendant in 1991. Initially the Plaintiff characterized these questions as going to infringement (see page 35 of the discovery transcript of Mr. Henderson). The Plaintiff now says the questions go to obviousness. To thus swap horses in mid stream comes parlous close to a fishing expedition. However, that is not the ground by which I disallow the questions.
[8] Counsel for the Defendant submits that the test for obviousness is objective with prior art and common general knowledge proven by expert evidence only, any particular knowledge in the Defendant, as to the state of art, being irrelevant: Westinghouse Electric Corporation v. Babcock & Wilcox Industries Ltd. (1987), 15 C.P.R. (3d) 447 at 449, a decision of Mr. Justice Strayer as he then was. However, counsel for the Plaintiff is of the view that these questions do not deal with expert opinion, but rather with factual technical information within the knowledge of the witness, thus bringing the questions within the ambit of Foseco Trading A.G., which I have already touched upon. For the sake of argument and giving the Plaintiff the benefit of any doubt this may be so, but that does not conclude the issue.
[9] The relevant date for determining obviousness is the date of the invention of the patented device (Hughes and Woodley on Patents, Butterworths, Issue 36-7/98, page 349). Mr. Justice Nadon pointed out, in Risi Stone Ltd. v. Groupe Permacon Inc. (1994), 56 C.P.R. (3d) 381 at 386-378 that, except in certain circumstances which are not applicable here, the development of an allegedly infringing product is not relevant: see also Kun Shoulder Rest Inc. v. Joseph Kun Violin and Bow Maker (1998), 76 C.P.R. (3d) 488 at 492. A fortiori development of a product, which is alleged to infringe, cannot possibly be relevant to obviousness if development took place after the relevant time for assessing obviousness. In the present instance the Plaintiff's patent application was made in 1986 and the patent granted in March of 1990, but the Defendant's market research was not done until 1991, some five years after the Plaintiff filed for its patent. The Defendant need not answer any of the questions in the above group or produce any of the material requested, beyond that which the Defendant has already volunteered.
Duty to Enquire
[10] Question 288 involves the function of a certain component which apparently has an electrical receptacle contiguous to an air inlet. The Defendant's witness says the Defendant has given its best evidence as to what the component appears to be, an electrical receptacle and, at page 60 of the transcript, has agreed to see if the Defendant has any further information. This is proper, for a witness being examined on behalf of a corporation has an obligation to inform himself or herself of facts. This obligation can be an extensive one, embodying enquiries of corporate officers, servants and agents: see for example Sperry Corporation v. John Deere Ltd. (1984), 82 C.P.R. (2d) 1 at 12. There, Mr. Justice McNair, of the Federal Court, went on to limit the duty to inform by pointing out that it does not extend to various persons, including former employees or third parties who are neither within the control of the corporation nor readily available:
| This duty to inform does not extend to the knowledge of some former employee or witness in previous proceedings or other third party who is not presently within the control of the corporation and readily available to provide the information sought (loc. cit.). |
The Chief Justice Isaac considered this area in some detail in Crestbrook Forest Industries Ltd. v. Minister of National Revenue (1993), 153 N.R. 122, beginning at page 130. The Chief Justice, writing for the Court of Appeal, was of the view that the Court might order a party being examined to obtain information from a third party where the information was relevant and the company had the means to obtain that information. As I read Crestbrook Forest Industries the witness being discovered must use best efforts to obtain information from third parties, but except in special situations the Court ought not to make a peremptory order for answers to the effect that if they are not provided a statement of claim or defence, as the case may be, will be struck out. In the present instance, the Defendant's witness will use best efforts to obtain information as to the nature of the fitting at issue and shall so advise as to the outcome and the efforts made. To require more from the Defendant's witness would not only run counter to what is set out in the Crestbrook Forest Industries case, but could well take time, trouble, expense and difficulty well beyond the usefulness of any answer as to whether the piece of equipment has a function going beyond that dictated by its appearance.
Supplemental Discovery Questions
[11] The final group of questions arise out of answers provided to outstanding discovery issues by means of a letter of 22 July 1997. The general group of questions is made up of three specific groups: first, questions relating to obviousness and prior art, questions 263, 269, 334 and 342; second, a question relating to sales by the Defendant and infringement, question 871; and third, a question relating to the validity of the patent, question 939.
[12] The Defendant's overall position is that a party may not, by reason of rule 234(1), conduct both oral and written discovery without leave of the Court or by consent. The Defendant refers to Satellite Earth Station Technology Inc. v. The Queen, [1994] 2 C.T.C. 61, where there had been written examination for discovery, pursuant to what was then rule 466.1, which provided for ". . . one list of concise, separately numbered questions . . . for the adverse party to answer.". The plaintiff was held to have no right to file supplementary or follow-up written questions. While present rule 234(1) is clear, that without leave or consent there may be only oral or written discovery, neither the rule nor the Satellite Earth Station Technology case is of any real assistance. In the present instance, as I understand it, the Defendant provided written answers to oral discovery questions, sometimes a sensible approach, rather than to schedule a second round of discoveries. The Plaintiff now seeks, in writing, to have follow-up questions answered. This is very different from discovery through interrogatories. Indeed, written supplemental answers were, at the relevant time, provided for in Rule 465.2(2) and now in Rule 244(2). The issue is thus whether there may in this instance be follow-up questions to written answers arising out of oral discovery pursuant to Rules 244(2) and (3):
| (2) A person being examined who is required to become better informed shall provide the information sought by the examining party by submitting to a continuation of the oral examination for discovery in respect of the information or, where the parties agree, by providing the information in writing. |
| (3) Information provided under subsection (2) is deemed to be part of the examination for discovery. |
Rule 244(2) clearly allows a witness, who does not know the answer to a question, to make further inquiries and, if the parties are in agreement, to provide answers in writing. Those answers become part of the examination for discovery. It logically follows that those answers may be tested further to the extent of proper questions arising from those answers. However, nothing in Rule 244 provides for a further exchange of written questions and answers arising from the initial written answers, unless the parties agree or the Court so orders. This is perhaps a drawback to the informal practice, between counsel, of providing written answers to oral questions which the witness could not initially answer. However, the Rule may also be recognition that discovery must be finite for it is ". . . not a never ending process that knows no boundaries.": John Labbatt Ltd. v. Molson Breweries, A Partnership (1997), 69 C.P.R. (3d) 126 at 128.
[13] In the John Labbatt case Mr. Justice Rouleau had to deal with a motion to require the plaintiff to re-attend for examination for discovery to answer questions arising from answers in writing and documents produced following the first round of discovery. This is in effect the present situation, with the Plaintiff, Hayden Manufacturing Co. Ltd., seeking answers to questions arising from the written answers of 22 July 1997. In the John Labbatt case, as I understand is also the situation in the present instance, discoveries were not formally concluded, but were adjourned. Where the John Labbatt case differs is that the party being examined gave notice that it would only re-attend for a given number of days of discovery. The other side knew and accepted that fact. This, not any procedural law limiting proper questions arising from subsequent written answers to oral discovery questions, was the governing factor in Mr. justice Rouleau's decision to limit further discovery, cutting off follow-up questions, but allowing the defendant to pursue fifteen questions which the witness had been unable to answer.
[14] In the present instance and subject to the questions themselves being proper questions, a point to which I will shortly turn, the Plaintiff may have further discovery of the Defendant, but it shall be oral discovery, for nothing would be gained by ongoing written supplemental questions, written answers and yet the possibility of more supplemental questions.
| (i) Obviousness and Prior Art |
[15] The test for invalidity by reason of obviousness involves the perceptive ability of a skilled but completely uninventive technician: such a technician is the standard by which obviousness is judged. This is memorably summarized by Mr. Justice of Appeal Hugessen in Beloit Canada Ltd. v. Valme Oy (1986), 8 C.P.R. (3d) 289 at 294:
| The test for obviousness is not to ask what competent inventors did or would have done to solve the problem. Inventors are by definition inventive. The classical touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right. The question to be asked is whether this mythical creature (the man in the Clapham omnibus of patent law) would, in the light of the state of the art and of common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent. It is a very difficult test to satisfy. |
[16] Turning to prior art, an invention must not have been anticipated by some other patent or publication for in such an instance it would lack the novelty required to be patentable. When a litigant attacks novelty or refers to prior art, the opposing party is entitled to know which parts of prior patents or publications are relied upon and this information must be specific: see for example Dek-Block Ontario Ltd. v. Béton Bolduc (1982) Inc., an unreported 20 May 1998 decision of Mr. Justice Richard (as he then was) in Action T-1334-97, at pages 4 and 5. Mr. Justice Richard then went on to point out that questions of this nature do not require interpretation of a patent and are thus proper on discovery. I have looked at the questions in this category from the point of view of the definition of obviousness, keeping in mind the entitlement of the Plaintiff under the Dek-Block case and have also considered whether they are truly follow-up questions.
[17] Question 263 deals with the trademark of another firm and that question was answered. Examining counsel then went on to ask whether the Defendant would be relying upon a certain document. There was an undertaking to advise, the answer being in the affirmative, that the Defendant would be relying upon " . . . the public use and sale of an inlet valve (4940) with a built-in receptacle contiguous to the vacuum inlet.". In determining whether a question is proper or whether follow-up questions ought to be allowed, I may look at other questions that are in the same context. At questions 265 through 267 the witness for the Defendant advised that, to his knowledge, he had exhausted all the information that the Defendant had on the particular fitting. An undertaking was then given that the company would check to see if there was further information. Thus the supplemental questions based on question 263, involving the use of a built-in receptacle on the inlet valve are proper.
[18] Question 269 deals with the date of the sale or public knowledge relating to the same inlet valve. In response to an undertaking to advise of the earliest date, the Defendant says that the valve was designed in the early 1970s and commercialized at least as early as the Defendant's document no. 41. The follow-up questions, as to the facts supporting the belief that the valve was designed in the early 1970s and a request for information as to the sale of the valve in Canada are proper follow-up questions.
[19] Question 334 resulted in an undertaking to determine if the company had any additional information about a 110 volt counterpart for electric powerheads. In response, the company advised that it was a vacuum hose with a 110 volt conductor running from the outlet to the electrical powerhead. The first part of the supplemental, whether the outlet to which the Defendant refers is located in a certain inlet valve, is proper. The second part of the question, whether it "was an outlet for powering an electrical powerhead", is redundant for that question has been answered clearly in the undertaking.
[20] Question 341 relates to the plugging of a vacuum hose into an inlet valve by which a valve switch is overridden and the electric control then passes to a switch on the handle of the vacuum tool being used. The Plaintiff wished to know whether the Defendant had "any information regarding what is the valve switch?", which was answered in the negative, but was an undertaking to check further. The Defendant then replied to this undertaking by saying that "the valve switch is in exhibit "B" to W. Westman examination. The Plaintiff now wishes the valve switch identified, advice as to how the valve switch is overridden when the hose is plugged into the inlet valve and whether the valve switch carries electricity for powering an electric powerhead. The Defendant will identify the valve switch on a copy of the exhibit, but unless the operation of the valve switch and what it does are factual technical information, within the knowledge of the witness, the second and third portions of follow-up question 342 need not be answered.
| (ii) Sales by the Defendant and Infringement |
[21] The Plaintiff, in written representations, notes that the sale of infringing articles are relevant in the context of liability, referring to Domco Industries Ltd. v. Mannington Mills Inc. (1990), 29 C.P.R. (3d) 481 (F.C.A.) and Béloit Canada Ltd. v. Valmet-Dominion Inc. (1997), 73 C.P.R. (3d) 321 (F.C.A.).
[22] The Statement of Claim alleges infringement by the manufacture and sale of vacuum suction valves in Canada. Infringement is not defined in the Patent Act, but includes interference with the monopoly of making and selling the patented device, the sale of which must be in Canada. Promotion and sales generating activity are relevant.
[23] At issue are supplemental questions posed by the Plaintiff arising out of question 871, at which point the Defendant was asked to produce copies of all price lists relating to the valve. However, the preceding and subsequent questions and answers are also relevant, for it is apparent that while, according to the witness, price lists are provided to customers, they are not customers in Canada, nor does the Defendant enter into supply or contractual arrangements with customers in Canada. A conflict in evidence arises at this point, for the written response to the request for price lists is that there are no published price lists.
[24] The follow-up questions which the Plaintiff wishes to ask involve the conflict between the witness's assertion that there are price lists and the subsequent written advice that there are not and that is a fair issue for further discovery, just as are the questions bearing on the terms for shipping and passage of title. Certainly, one who sells the patented invention abroad is not in breach of Canadian patented legislation, however, the Plaintiff is entitled to explore, on discovery, where the sale and passage of title of the items, made in Canada, actually takes place. Thus the follow-up questions are proper.
(iii) Validity of the Patent
[25] At issue here is the Defendant's plea of willful overclaiming by the Plaintiff as to a wall mounting plate for the suction valve, referred to in claims 3 and 10 of the patent. This wall mounting plate is said to have been in the public domain, having been sold in Canada, by the Plaintiff, as least as early as 1982, the plate being designated as model T-31.
[26] At question 939 of the discovery of Mr. Henderson, counsel for the Plaintiff asked whether the Defendant made a connection between claims 3 and 10 of the patent and the Plaintiff's T-31 mounting plate. The written response is that the connection was made during the course of investigations relating to this lawsuit. That is apparent for the willful overclaiming plea did not initially appear in the Defence and Counterclaim, but was added some five months later, by amendment.
[27] The supplemental written questions first ask the Defendant to identify the mounting plate which the Defendant thought claims 3 and 10 pertained to before the Defendant made the connection between the claims and the Plaintiff's T-31 mounting plate and second, before making the connection between claims 3 and 10 and the T-31 mounting plate was it the Defendant's belief that claims 3 and 10 pertained to the Plaintiff's mounting plate used with its electrified valve.
[28] These supplemental questions are not proper and are denied, for the Plaintiff received an appropriate written response to question 939. The new questions do not flow from that response.
CONCLUSION
[29] The Plaintiff may have further oral discovery within the bounds set out in these reasons and the accompanying order and all proper questions arising from answers.
[30] As success has been mixed, costs will be in the cause.
(Sgd.) "John A. Hargrave"
Prothonotary
Vancouver, British Columbia
20 August 1998