Date: 19990224
Docket: T-195-94
BETWEEN:
VISX INCORPORATED
Plaintiff
- and -
NIDEK CO., LTD. and
707284 ONTARIO INC. c.o.b. as INSTRUMED CANADA,
DR. HOWARD GIMBEL and DR. DONALD JOHNSON
Defendants
REASONS FOR ORDER and ORDER
(Rendered orally at a telephone conference in
Ottawa, Ontario, Friday, February 19, 1999)
HUGESSEN J.
[1] This is a motion by the defendant Nidek to compel the alleged inventor of patents in suit, Dr. L"Esperance, who is being examined on discovery out of the jurisdiction, to answer certain questions and to respond to certain undertakings given in the course that discovery.
[2] Two preliminary points before I come to the substance of the questions:
[3] First, I have been made aware of the fact that, at an earlier time, the then Associate Chief Justice of this Court ordered that certain very similar questions to those which are before me today need not be answered. The plea of res judicata or issue estoppel is therefor taken with respect to the questions before me today. Second, however, I am satisfied that since that time there has been a substantial amendment to the pleadings and particularly to the statement of defence both of the defendant, Nidek, and of the defendant doctors.
[4] The Associate Chief Justice did not give any reasons for his order and it is impossible to know on precisely what basis he ruled as he did. However, the fact that the pleadings, which have to be the foundation of any decision as to the relevance of questions on an examination for discovery, have been changed since the time of his ruling leads me to conclude that I am not in a situation where the rule of issue estoppel should be applied.
[5] That said, I have examined the questions which are listed as Schedule A to the defendants" motion. They are not numbered but in the course of the hearing of this motion, we, counsel and I that is, numbered them and they number from 1 to 14.
[6] I am satisfied that questions and undertakings number 1 to 8 inclusive, are relevant and should properly be answered as relating to the issue of the alleged inventorship or noninventor ship by Dr. L"Esperance of the patents in suit. I, however, am not prepared to find that questions 9, 10, 11, 12 and 13 are relevant to those patents or should properly be answered. Question 14 is relevant and should be answered.
[7] Because the examination is taking place out of the jurisdiction, there can be no order to Dr. L"Esperance to answer and no requirement that he re-attend. However, I shall make an order finding that the questions that I have mentioned are proper questions and should be answered. I shall also make an order, as requested in the motion, that the plaintiff, who has a continuing contractual relationship with Dr. L"Esperance, use its best efforts to have him respond to the questions. If that does not do the trick, then the defendant Nidek and the defendant doctors will have to re-apply to the United-States District Court for the southern district of New York for the exercise of the compulsive powers of that Court subject, of course, to that Court"s own rules and to the applicable law in the state of New York.
ORDER
IT IS ORDERED THAT:
1) questions 1 to 8 and 14 of Schedule A are proper and should be answered. The plaintiff is required to use its best efforts to have Dr. L"Esperance answer them;
2) costs of this motion fixed in the amount of $750.00 to the defendant Nidek in any event of the cause.
"James K. Hugessen"
Judge
OTTAWA, Ontario, Wednesday, February 24, 1999.