Date: 20050112
Docket: T-754-01
Citation: 2005 FC 20
Ottawa, Ontario, January 12, 2005
Present: The Honourable Mr. Justice Blais
BETWEEN:
BAUER NIKE HOCKEY INC.
Plaintiff/
Defendant by Counterclaim
and
PAUL REGAN
Defendant/
Plaintiff by Counterclaim
REASONS FOR ORDER AND ORDER
[1] This is an appeal by the plaintiff Bauer Nike Hockey Inc. (plaintiff/BNH) from a decision of case management Prothonotary Morneau dated November 4, 2004.
[2] The defendant, Paul Regan, (defendant/Mr. Regan) is the owner of Canadian Patent 2,219,072 for a protective hockey undershirt.
[3] The order under appeal dismissed BNH's motion to compel answers to 130 questions that were refused by Mr. Regan on his examination for discovery by BNH.
[4] The case management prothonotary dismissed the plaintiff's application on two grounds:
1) The plaintiff's application was late given that the case management prothonotary's earlier scheduling order provided a "final" deadline for the completion of examinations for discovery unless "special circumstances" were shown. The case management prothonotary found that the plaintiff had not shown special circumstances for bringing its motion late;
2) On the merits, the questions were not proper questions. The case management prothonotary was satisfied that the plaintiff's non-compliance with the earlier scheduling order was a sufficient basis for dismissing the application. However the prothonotary then went on to consider the application on its merits and was satisfied that, on the merits, the questions were not proper questions and need not be answered.
[5] Since this is a motion for a review of the decision of a prothonotary, the correct standard of review to be applied is that set out in Canada v. Aqua-Gem Investments Ltd., [1993] 2 F.C. 425 (C.A.), as reformulated in Z.I. Pompey Industrie v. ECU-LINE N.V. (2003), 30 C.P.C. (5th) 1, 224 D.L.R. (4th) 577, 2003 SCC 27. That test is that:
Discretionary orders of prothonotaries ought to be disturbed by a motions judge only where (a) they are clearly wrong, in the sense that the exercise of discretion was based upon a wrong principle or a misapprehension of the facts, or (b) in making them, the prothonotary improperly exercised his or her discretion on a question vital to the final issue of the case.
[6] Therefore, in order for this motion to be granted, there must be a clearly wrong error on the part of Prothonotary Morneau.
1. The Time Deadline
[7] The prothonotary made the proper decision. BNH was advised on May 5, 2004 that Mr. Regan would not be answering any written questions. The schedule was not amended until May 25, 2004 therefore BNH would have known at that point that no answers were forthcoming. It was up to it to ensure that it filed its motion to compel the answers in time. If the date was set by the prothonotary to have all final examinations completed by a certain date, then that point in time must be respected.
[8] I understand that BNH sent numerous letters to Mr. Regan to try and coax him to answer, however, if no answers were offered, it was up to BNH to decide to present its motion before the expiry of the deadline set by the prothonotary. Although I realize that the plaintiff asked for the amendment before it knew that Mr. Regan refused to respond, it was still very much aware of the deadlines, seeing as to how it was the one that requested it.
[9] BNH learned that Mr. Regan refused to answer the written questions on May 5, 2004, which left it 20 days to write a letter or send a fax or to inform the prothonotary by any other means that a motion was on its way to finally settle the matter of those written questions. Nevertheless, the plaintiff decided to wait until the very last minute on the eve of the final date to file a request for a pre-trial conference.
[10] No valid reasons were provided before the prothonotary, nor before me to explain why the plaintiff waited that long. I should also mention that it is less excusable, given that the plaintiff had written a letter to the defendant every month to get an answer but that as soon as it got the answer, it waited close to four months before bringing a motion.
[11] Furthermore, BNH submitted that on two separate occasions it sent correspondence advising of its intent to make a motion if the questions were not answered. That being the case, why did it not go through with its threat of a motion? That is the way the legal system works, and I know that both parties are well aware of how it works, seeing as to how they have each filed numerous motions, requests and other documents since this suit was filed in 2001.
[12] Prothonotary Morneau is the case management master, and as such, is well aware of the happenings in this case. If he made a discretionary decision as to the timing of examinations and it was not respected, he was in the best position to evaluate the circumstances surrounding the lapse of the deadline. As such, I find that the deadline has passed and that there is no clearly wrong error on behalf of the prothonotary as to this first question.
2. The Appropriateness of the Questions
[13] During an examination for discovery, much latitude is given to the array of questions asked, to enable the examining party to avail itself of the case it has to meet, as well as procure admissions which will allow it to destroy the opponent's case. Nonetheless, it is generally accepted that asking questions which require an interpretation of the patent, or that simply replicate the claim, are inappropriate. (See Kun Shoulder Rest Inc. v. Joseph Kun Violin and Bow Maker Inc. et al. (1997), 76 C.P.R. (3d) 488 (FCTD); Lapierre v. Ecochem International Inc., [2002] F.C.J. No. 839, 2002 FCT 617.)
[14] The case before me however, is a particular one, in that the witness being examined in discovery is also the inventor of the patent at issue. Furthermore, an examination of the 130 questions presented, reveals that the majority of them are not opinion based but fact driven, in that they are simply requesting a factual yes/no answer, and possibly an indication of where on the product a certain product appears. For example:
5. Does PR-2 have a head opening? If so, identify the head opening.
45. Does the neck guard of PR-4 include a layer of rip proof nylon? If so, identify the layer of rip proof nylon on the neck guard.
95. Does the V-shaped slit of the head opening of PR-8 include a finished edge? If so, identify the finished edge of the V-shaped slit.
[15] When questions such as these arise, I find that the comments of Justice Reed in James River Corp. of Virginia v. Hallmark Cards, Inc. (1997), 72 C.P.R. (3d) 157 find application:
Counsel for the defendant argues that these questions should not have been ordered to be answered because they employ terminology not used by Hallmark. The decisions in Owens-Illinois, Inc. v. AMCA International Ltd. (1987), 14 C.P.R. (3d) 536, 12 C.I.P.R. 209 (F.C.T.D.) (A.S.P.); Corning Glass Works v. Canada Wire and Cable Co. (1983), 74 C.P.R. (2d) 105 (F.C.T.D.), and Geo Vann Inc. v. N. L. Industries, Inc. (1983), 75 C.P.R. (2d) 68 (F.C.T.D.), state that it is not appropriate to ask a person being examined for discovery questions calling for that person's understanding or interpretation of the patent.
The questions in issue are not of this nature. They ask about the defendant's plates, and the characteristics of those plates, as the defendant understands them. They ask for facts within the knowledge of Hallmark. They are not unlike many other questions that were asked and answered, which questions use terms found in the patent, terms such as lip, rim, scored, side wall, blank of the bottom wall. If the terms, in the questions under dispute, are not used by the defendant, and meaningful answers cannot be given by it, then, those answers will reflect that fact. The defendant is not required to do testing to ascertain the answers. But the questions themselves are of a type that should be answered. [my emphasis]
[16] I also reproduce the comments of Justice Nadon in Risi Stone Ltd. v. Groupe Permacon Inc., [1994] F.C.J. No. 777, as they are of particular guidance to the present case:
On several occasions Mr. Uger, counsel for the plaintiffs, tried to obtain information which, in my view, required an interpretation of the patents by an expert. Accordingly, Mr. Castonguay did not answer questions 19, 24, 25, 57, 58, 59, 74, 79, 84, 92, 93, 94, 95, 96, 101, 102, 203, 104, 105 and 106. The objections to these questions are accordingly upheld.
On the other hand, certain of the questions asked by Mr. Uger fall within the general knowledge of the witness as a "block man" and as president of the defendant, even though that required, to some extent, the expression of a technical opinion. The mere fact that a question may seek to elicit an expression of a technical opinion from a witness who is not an expert is not necessarily fatal. My colleague Reed J. stated the following in Foseco Trading A.G. et al. v. Canadian Ferro Hot Metal Specialties Ltd. (1991), 36 C. P. R. 35 at page 52:
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 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. [my emphasis]
[17] I am therefore of the opinion that the questions being asked of the witness on discovery, do not require an interpretation of the patent, nor an opinion per se, but are fact driven and are well within the knowledge of the defendant. As pointed out by Justice Reed in James River (supra), if meaningful answers cannot be given by Mr. Regan, then those answers will reflect that fact.
[18] However, although the questions should have been allowed, the case management prothonotary had set a deadline for the conclusion of discovery and that deadline was not respected. As my above reasons reflect, I find that the prothonotary properly exercised his discretion in deciding that the discovery phase had come to a close.
[19] In such a case, although the substance of the questions may have been appropriate, the timing of the discovery having not been met, this appeal must be dismissed. The Federal Court of Appeal has made it clear that case management judges must be given latitude to manage cases. If I were to allow the plaintiff to continue with its discovery examination, I would not be giving Prothonotary Morneau the allotted "elbow room" which the Federal Court of Appeal mentions. The case management prothonotary had already extended deadlines and was simply exercising his discretion to ensure a swift transition to trial.
We would take this opportunity to state the position of this Court on appeals from orders of case management judges. Case management judges must be given latitude to manage cases. This Court will interfere only in the clearest case of a misuse of judicial discretion. This approach was well stated by the Alberta Court of Appeal in Korte v. Deloitte, Haskins and Sells (1995), 36 Alta. L.R. (3d) 56, paragraph 3, and is applicable in these appeals. We adopt these words as our own.
This is a very complicated lawsuit. It is subject to case management and has been since 1993. The orders made here are discretionary. We have said before, and we repeat, that case management judges in these complex matters must be given some "elbow room" to resolve endless interlocutory matters and move these cases on to trial. In some cases, the case management judge will have to be innovative to avoid having the case bog down in a morass of technical matters. Only in the clearest cases of misuse of judicial discretion will we interfere. In this case, the carefully crafted orders made by the case management judge display a sound knowledge of the rules and the related case law. In particular, the order contains a provision that the parties are free to return to the case management judge for relief from the imposition of any intolerable burden imposed by the order. No clear error has been shown and we decline to interfere. While there may be some inconvenience to some of the parties, this does not translate into reversible error. We are not here to fine tune orders made in interlocutory proceedings, particularly in a case such as this one.
(Sawridge Band v. Canada (C.A.), [2002] 2 F.C. 346, [2001] F.C.J. No. 1684 at paragraph 11)
[20] The Aqua-Gem and Pompey Industrie cases (supra) indicate that discretionary orders of prothonotaries ought not to be disturbed unless they were based upon a wrong principle or a misapprehension of the facts, or that the prothonotary improperly exercised his or her discretion on a question vital to the final issue of the case.
[21] As discussed earlier in my analysis, I find that the decision by the case management prothonotary in regards to the time deadline was correct and therefore, that even though the prothonotary made an erroneous conclusion as to the validity of the questions, his decision as a whole was not clearly wrong. I am furthermore comforted by the fact that dismissing this appeal will not raise a question vital to the final issue of the case; although the plaintiff is barred from submitting those questions to the defendant during discovery, nothing prevents it from putting those same questions to Mr. Regan during trial. Although BNH will not have the advantage of knowing the answers before-hand, that is a result of its own actions in bringing this motion after the imposed deadline.
ORDER
Therefore, THIS COURT ORDERS that:
1. The motion is dismissed;
2. Costs in the cause;
3. The plaintiff is allowed until February 15, 2005 to file and serve a requisition for a pre-trial conference.
"Pierre Blais"
J.F.C.
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-754-01
STYLE OF CAUSE:
BAUER NIKE HOCKEY INC.
Plaintiff/
Defendant by Counterclaim
and
PAUL REGAN
Defendant/
Plaintiff by Counterclaim
PLACE OF HEARING: Montreal
DATE OF HEARING: December 20, 2004
REASONS FOR ORDER AND ORDER : Mr. Justice Blais
APPEARANCES:
Me François Guay FOR PLAINTIFF / APPLICANT
Mr. Gregory A. Piasetzki FOR DEFENDANT/
Mr. Sam El-Khazen RESPONDENT
SOLICITORS OF RECORD:
Smart & Biggar FOR PLAINTIFF/APPLICANT
55 Metcalfe Street, Suite 900
Ottawa, Ontario
K1P 5Y6
Piasetzki & Nenniger FOR DEFENDANT/
120 Adelaide Street West RESPONDENT
Suite 2308
Toronto, Ontario
M5H 1T1