Date: 20001213
Docket: A-582-99
CORAM: THE CHIEF JUSTICE
McDONALD J.A.
SHARLOW J.A.
BETWEEN:
DUPONT CANADA INC.
Plaintiff
(Appellant)
- and -
EMBALLAGE ST-JEAN LTÉE.
Defendant
(Respondent)
REASONS FOR JUDGMENT
THE CHIEF JUSTICE
[1] This is an appeal from the Order of the Motions Judge dismissing an appeal of a part of the Order of the learned Prothonotary which requires DuPont to answer questions 74, 77, 78 and 188 from the examination for discovery of Mr. Alan Breck held on March 22, 1999 (the Questions).
[2] The discovery was conducted as part of an action for infringement of a Canadian patent relating generally to pouches that are filled with flowable material such as milk and, in particular, to the film from which such pouches are made. DuPont owns the patent and has alleged that the manufacture and sale by Emballage St-Jean of its film infringes the patent.
[3] Emballage St-Jean has denied infringement.
[4] The claims in the patent include as a characteristic film density "of from .916 to .930 g/cm3".
[5] The statement of claim alleges that the copolymer of Emballage St-Jean's film has a density of approximately .916 g/cm3.
[6] In its amended statement of defence, Emballage St-Jean claims that its film has a density of between .89 and .915 g/cm3.
[7] The Questions relate to DuPont's knowledge of certain characteristics of Emballage St-Jean's film. The Questions are:
| 74. Q. The sealant film, to your knowledge, is it made from a material comprising about 50 to 100 parts of a linear copolymer of ethylene? |
| MR. CLARIZIO: If your knowledge is obtained from the tests that were made, then we will refuse to answer the question, so I will -- |
| BY MR. SOTIRIADIS: |
| Q. If you have knowledge, does it come from the tests? |
A. Yes.
| R/F MR. CLARIZIO: Privileged. |
* * * * *
| 77. Q. To your knowledge, does the ... whether a defendant's sealant film is made from a C6 to C10 alpha olefin? Again if your knowledge comes from the tests, don't answer and we will take an objection. |
| R/F MR. CLARIZIO: Yes. |
THE DEPONENT: That's where it would come from.
BY MR. SOTIRIADIS:
| 78. Q. And do you know whether the defendant's sealant film has a density from .916 to .930 grams per cubic centimeter? |
| R/F MR. CLARIZIO: Again it comes from the tests, we claim privilege on it. |
| * * * * * |
| 188. MR. SOTIRIADIS: All right. Maybe this was part of the under advisement, but I want to know whether it is the position of the plaintiff that the resins of the defendant have a density of .916 -- sorry -- between .916 and .930, and whether it is the plaintiff's position that the pouches made by the customers of defendant have a density of between .916 and .930, that sort of flow from the response to the analyses, but I think it is clearer this way. |
| U/A MR. CLARIZIO: I will take that under advisement as well. |
[8] The first two questions deal with the composition of the respondent's film while the other two deal with the density of such film. The argument of counsel focused on the question directed to the density of the film.
[9] On the return of the motion to compel DuPont to answer those questions, the Prothonotary held that the Questions must be answered notwithstanding that DuPont had objected to answering on the basis of privilege.
[10] An appeal from the Order of the learned Prothonotary was heard by way of motion. The Motions Judge dismissed the appeal with costs, [1999] F.C.J. No. 1429.
[11] In preparation for and during the conduct of this litigation, Ms. McKay, an in-house lawyer for DuPont, asked various technical people at DuPont to perform technical tests and experiments on Emballage St-Jean's film to assist her and DuPont's outside lawyers in determining whether the Emballage St-Jean's film in pouch form is an infringement of the patent.
[12] All the experiments, tests and observations were performed at the request of Ms. McKay and the results were either sent to her in a memo or were forwarded to her by Mr. Breck or others at DuPont who performed the tests in response to her requests. The experiments, tests and observations were not done for any purpose other than to provide Ms. McKay and DuPont's outside lawyers with the necessary information to determine whether Emballage St-Jean's film and the pouches made from it are infringements of the patent. The memos and experimental results have since been maintained in confidence.
[13] It is conceded that the facts sought on discovery are relevant to the claim of infringement in DuPont's action.
[14] It is also common ground that it is proper on discovery to seek admissions against interest from the other party.
[15] There is no question that were it not for the claim of privilege asserted by DuPont, the Questions ought to be answered.
[16] There is no claim that the density of the respondent's film is information that is itself confidential in nature.
[17] Emballage St-Jean seeks only the discovery of facts relied on by DuPont, not opinions or legal advice.
[18] The principal fact sought to be established is the density of the Emballage St-Jean's film.
[19] This fact is a pre-existing fact, even though it only came to the knowledge of DuPont after it conducted tests on the film.
[20] Before the Prothonotary and the Motions Judge and in its notice of appeal, DuPont relied on litigation privilege as the ground for objecting to answer the questions. In the memorandum of fact and law and in oral argument, DuPont also raised solicitor-client privilege.
[21] Counsel for DuPont argued that both rules supported the objection to answer the Questions and that both were an absolute bar to compelling an answer to the Questions.
[22] It is clear, from the decision of this Court in Susan Hosiery Ltd. v. Minister of National Revenue [1969] 2 Ex. C.R. 27 at p. 34, that neither rule affords a privilege against the discovery of facts that are or may be relevant to the determination of the facts in issue.
[23] More recently, in Global Petroleum Corporation v. CBI Industries Inc. et al. (1998), 172 NSR [2d] 326, the Nova Scotia Court of Appeal held at paragraph 21:
| It is beyond dispute that privilege cannot be used to protect facts from disclosure if those facts are relied on by a party in support of its case. It is immaterial that the fact was discovered through the solicitor or as the result of the solicitor's direction. If it is relied on it must be disclosed. |
[24] We were referred by counsel for DuPont to four decisions of the Trial Division of this Court which counsel submits support the appellant's position that test results are protected by privilege.
Corning Glass Works v. Canada Wire and Cable Co. Ltd. et al. (1983), 74 C.P.R. (2d) 105 (F.C.T.D.)
Syntex Pharmaceuticals International Ltd. et al. v. Apotex Inc. (1984), 2 C.P.R. (3d) 533 (F.C.T.D.)
Proctor & Gamble Co. et al. v. Kimberly-Clark of Canada Ltd. (1990), 35 C.P.R. (3d) 321 (F.C.T.D.)
Dupont Canada Inc. v. Glopak Inc. (1997), 72 C.P.R. (3d) 312 (F.C.T.D.)
[25] In these cases, the Motions Judges held that the results of tests and information relating to the tests were privileged. The specific questions asked on discovery are not set out in the judgments.
[26] In the Glopak case, which involved the same plaintiff and the same patent as in the present case, the plaintiff's refusals to respond on the ground of privilege were accompanied by its counsel's undertaking that the information concerning the tests, in respect of which the privilege was asserted, would not be relied upon at trial. By contrast, counsel for the appellant in this case has offered no such undertaking. He seeks to withhold the information at the discovery stage while preserving the option of using it at trial.
[27] In Samson Indian Nation and Band v. Canada [1995] 2 F.C. 763 (C.A.), this Court held that it is preferable to err on the side of caution and protect privilege and that reasons of equity and openness cannot found an order of disclosure of privileged documents.
[28] What is sought to be obtained on discovery in this case is not privileged merely because it is contained in a document that may otherwise be privileged.
[29] The respondent is not seeking access to any legal advice, opinion or evaluation.
[30] Here Emballage St-Jean has not asked a question directed generally to the test results or sought the production of a document containing such test results.
[31] Emballage St-Jean has asked the appellant a specific question: whether, to its knowledge, the respondent's sealant film has a density from .916 to .930 grams per cubic centimeter.
[32] The question is directed to a specific allegation of fact relied on by DuPont in its statement of claim. The onus of establishing this allegation lies with the plaintiff in action for infringement.
[33] The respondent's question concerning the density of its film as alleged in the appellant's pleading is specific and relevant to an allegation of fact relied upon by the plaintiff in its pleadings.
[34] It is immaterial that the facts relied on by DuPont in support of its case were discovered by DuPont through a solicitor.
[35] Accordingly, the appeal is dismissed with costs.
"J. Richard"
Chief Justice
"I agree
F.J. McDonald J.A."
"I agree
K. Sharlow J.A."