Date: 19990401
Docket: T-421-97
BETWEEN:
FAULDING (CANADA) INC.
Plaintiff
- and -
PHARMACIA S.p.A.
Defendant
REASONS FOR ORDER
(Delivered orally on the Bench at Toronto, Ontario
Thursday, April 1, 1999)
HUGESSEN J.
[1] This is a motion brought by the defendant seeking to strike in their entirety all the questions and all the answers given in the course of an examination for discovery conducted by the plaintiff of the inventors and assignors of the patent in suit. That examination for discovery was conducted pursuant to orders given by this Court and is, of course, authorized by the specific terms of Rule 237(4) of the Federal Court Rules, 1998.
[2] The ground upon which the defendant places its motion is that the questions and answers are, all of them, irrelevant to the issues pleaded in the present case in which the pleadings are closed.
[3] I may say at the outset, that the questions asked and answers given, while they may be of questionable relevance in the light of the pleadings, and I make no finding in that regard, are not what I may call egregiously irrelevant. In other words, the questions all bear on what the inventors did, how they did it and when they did it in the course of making their invention. They are not questions that are totally beside and outside the issues raised in the case.
[4] It is common ground between the parties that the state of the law is that an examination under Rule 237(4) is of a different character from an ordinary examination for discovery of a party1. In particular, it is common ground that the examination for discovery of an assignor or inventor cannot be used at trial without leave of the Court2. It is common ground that the purpose of such examination for discovery is two-fold. The first being to allow the examining party to obtain general information and possible lines of inquiry with respect to the circumstances of the assignment and the right assigned. The second is to allow the examining party in the event that the assignor or, in case of patent, the inventor, should be called as a witness at trial, the transcript of the examination for discovery may be used to impeach his or her credibility3.
[5] In those circumstances, I am satisfied that it is not appropriate, at this stage of the action, for me to decide the question of relevance. That question may indeed never come up since there may never be an application to make use of the transcript of the examination for discovery. If it does come up, the relevance of the questions and answers given at the examination of the inventors will be much more readily apparent at that time than it is now and the trial judge who will, in any event, have to deal with the question of the use of that transcript, will be much better placed to decide the issue.
[6] Accordingly, I am going to dismiss the motion which is before me today but I shall do so without prejudice so that the defendant may, if the occasion arises at some future time, take the same points that have been taken today. I shall also make no order as to costs.
"James K. Hugessen"
Judge
__________________1 See Lido Industrial Products Ltd. v. Teledyne Industries Inc. et al (1978), 41 C.P.R.(2d) 1.
2 See Richter Gedeon Vegyeszeti Gyar RT v. Merck & Co. (1995), 62 C.P.R.(3d) 137.
3 See Scott Paper Co. v. Minnesota Mining & Manufacturing Co. (1982), 70 C.P.R. (2d) 68