Federal Court Decisions

Date: 20051215

Docket: T-491-04

Citation: 2005 FC 1699

Montréal, Quebec, December 15, 2005

Present:          MR. RICHARD MORNEAU, PROTHONOTARY

BETWEEN:

                                LES INSTALLATIONS SPORTIVES DEFARGO INC.

                                                                                                                                              Plaintiff/

                                                                                                                Defendant to counterclaim

                                                                           and

                                                              FIELDTURF INC.

                                                                                                                                          Defendant/

                                                                                                                    Plaintiff by counterclaim

                                            REASONS FOR ORDER AND ORDER

RICHARD MORNEAU, PROTHONOTARY

[1]               These are motions by each of the parties, the plaintiff Defargo and the defendant Fieldturf, for rulings on a series of questions following the respective examinations on discovery of their representatives in an action for a declaratory judgement of non-infringement instituted by Defargo. In connection with this action, a defence by Fieldturf  in infringement and an application by Defargo to invalidate some of Fieldturf’s patents concerning synthetic grass were filed.

Applicable general principles

[2]               In Reading & Bates Construction Co. et al v. Baker Energy Resources Corp. et al (1988), 24 C.P.R. (3rd) 66, at paragraphs 70-72 (Reading & Bates), McNair J., in a six-point general reminder, first of all defined in points 1 to 3 the parameters according to which a document or a question is relevant. He then mentioned in points 4 to 6 a series of circumstances or exceptions, the final result of which is such that a question does not have to be answered or a document does not have to be filed.

[3]               The Court mentioned the following at pages 70 to 72:

1.             The test as to what documents are required to be produced is simply relevance. The test of relevance is not a matter for the exercise of the discretion. What documents parties are entitled to is a matter of law, not a matter of discretion. The principle for determining what document properly relates to the matters in issue is that it must be one which might reasonably be supposed to contain information which may directly or indirectly enable the party requiring production to advance his own case or to damage the case of his adversary, or which might fairly lead him to a train of inquiry that could have either of these consequences: Trigg v. MI Movers Int’l Transport Services Ltd. (1986), 13 C.P.C. (2d) 150 (Ont. H.C.); Canex Placer Ltd. v. A.G. B.C. (1975), 63 D.L.R. (3d) 282, [1976] 1 W.W.R. 644 (B.C.S.C.); and Compagnie Financiere et Commerciale du Pacifique v. Peruvian Guano Co. (1882), 11 Q.B.D. 55 (C.A.).

2.             On an examination for discovery prior to the commencement of a reference that has been directed, the party being examined need only answer questions directed to the actual issues raised by the reference. Conversely, questions relating to information which has already been produced and questions which are too general or ask for an opinion or are outside the scope of the reference need not be answered by a witness: Algonquin Mercantile Corp. v. Dart Industries Canada Ltd. (1984), 82 C.P.R. (2d) 36 (F.C.T.D.); affirmed 1 C.P.R. (3d) 242 (F.C.A).

3.             The propriety of any question on discovery must be determined on the basis of its relevance to the facts pleaded in the statement of claim as constituting the cause of action . . . .

4.             The court should not compel answers to questions which, although they might be considered relevant, are not at all likely to advance in any way the questioning party’s legal position: Canex Placer Ltd. v. A.G.B.C., supra; and Smith, Kline & French Laboratories Ltd. v. A.-G. Can. (1982), 67 C.P.R. (2d) 103 at p. 108, 29 C.P.C. 117 (F.C.T.D.).

5.             Before compelling an answer to any question on an examination for discovery, the court must weigh the probability of the usefulness of the answer to the party seeking the information, with the time, trouble, expense and difficulty involved in obtaining it. Where on the one hand both the probative value and the usefulness of the answer to the examining party would appear to be, at the most, minimal and where, on the other hand, obtaining the answer would involve great difficulty and a considerable expenditure of time and effort to the party being examined, the court should not compel an answer. One must look at what is reasonable and fair under the circumstances: Smith, Kline & French Ltd. v. A.-G. Can., per Addy J. at p. 109.

6.             The ambit of questions on discovery must be restricted to unadmitted allegations of fact in the pleadings, and fishing expeditions by way of a vague, far-reaching or an irrelevant line of questioning are to be discouraged: Carnation Foods Co. Ltd. v. Amfac Foods Inc. (1982), 63 C.P.R. (2d) 203 (F.C.A.) and Beloit Canada Ltee/Ltd. v. Valmet Oy (1981), 60 C.P.R. (2d) 145 (F.C.T.D.).

[Emphasis added.]

[4]               On the basis of these principles, we will now deal with the remaining requests and questions for each motion, beginning with Defargo’s motion.

[5]               First off, it is to be noted that, before the beginning of the hearing on the motions in question on October 31, 2005, the parties signed an agreement on that day to deal with a series of questions and requests. Therefore, the present Reasons for Order and the Order will not deal with what is specified in this agreement (the Agreement).

I.          Defargo’s Motion

Category A: Requests and Questions Concerning Tarkett

[6]               Requests 3 and 4 must be answered here, because Fieldturf’s duty of confidentiality to another entity cannot prevent the filing of relevant information in this case.

[7]               As far as Request 11 is concerned, it must be answered in accordance with the following terms:

11 : Documentation in the possession of Fieldturf (IP) Inc. re allegations 11.1, 11.2, and 11.3 of the Statement of Claim in the Federal Court file T-1164-02.

Category B:  Questions and Requests Concerning Fieldturf’s Product

[8]               Although the Court agrees that strictly speaking Fieldturf’s product is not involved in the assessment of the validity of its patents, the situation alleged by Defargo in paragraphs 37 to 40 of its written submissions is relevant, and therefore the remaining questions and requests in this category must be answered.

Category C: Requests Concerning the Tufting Machines

[9]               The requests in this category must be answered within the time limit agreed to by the parties because, even if the final appreciation of the state of the previous technology of the tufting machines will be made by an expert, the Fieldturf machines may contain partial or complete information that may be relevant as to the position to be adopted. In addition, Fieldturf did not submit in evidence by a valid affidavit that the trouble and inconvenience in connection with the requests in this category exceed the value of the information sought.

II.        Fieldturf’s Motion

[10]           As far as the questions and requests in categories A and D are concerned, they do not have to be answered, because the information sought is not relevant, since it is contrary to the scheme of my decision rendered on October 19, 2004 in this file, in which I ruled that the products as described by Defargo in its statement of claim could be the subject of an action under subsection 60(2) of the Patent Act. My decision rendered on April 27, 2005 in T-375-05 reinforces the distinction to be made between a more theoretical description (T-491-04) and actual installations (T-375-05).

[11]           As far as Objection 4 in Category B is concerned, it will not have to be answered, because it refers in more than one aspect to a hypothetical situation.

[12]           Unless otherwise specified in the Agreement, the answers ordered to be given under these Reasons for Order and Order with respect to either one of the motions at issue must be given within thirty (30) days of this ruling and by continuing and terminating the examinations on discovery of the representatives of the parties. In the case of Fieldturf, its representative will be Jean Prévost.

[13]           The motions presented by the parties are otherwise dismissed, each party paying its own costs.

[14]           As for the timetable that remains to be completed in this case, the parties are at Point 7 of the order rendered by this Court on June 29, 2005. However, the time for Point 7, as well as for points 8 and 9 of the same order, are respectively extended as follows:

7.         The parties will hold at least one conciliation discussion in writing or in person before March 1, 2006;

8.         The plaintiff will serve and file a requisition for a pre-trial conference no later than April 3, 2006;

9.         A pre-trial conference will be scheduled at a date suitable to the parties and the Court as soon as possible after the requisition for a pre-trial conference is filed.

                                     FEDERAL COURT

                              SOLICITORS OF RECORD

DOCKET:

STYLE OF CAUSE:

T-491-04

LES INSTALLATIONS SPORTIVES DEFARGO INC. v. FIELDTURF INC.

PLACE OF HEARING:                                Montréal, Quebec

DATE OF HEARING:                                  October 31, 2005

REASONS FOR ORDER BY:                    RICHARD MORNEAU, PROTHONOTARY

DATED:                                             December 15, 2005

APPEARANCES:

SOLICITORS OF RECORD: