T-2566-94
MONTRÉAL, QUEBEC, THIS 21st DAY OF MARCH 1997
PRESENT: RICHARD MORNEAU, PROTHONOTARY
BETWEEN:
A. PELLERIN ET FILS LTÉE,
Plaintiff,
AND
LES ENTREPRISES DENIS DARVEAU INC.,
- and -
LES ÉQUIPEMENTS D'ÉRABLIÈRE C.D.L. INC.,
- and -
ÉVAPORATEURS SMALL FRÈRES INC.,
Defendants.
O R D E R
The Court orders Yvon and André Pellerin to appear at their own expense at a place in Montréal to be agreed between the parties, or, if the parties are unable to agree, at a place that the defendant will determine when serving the directions to attend, to answer questions 58, 59 and 98, in the case of Yvon Pellerin, and questions 137, 138, 183, 153, 153/2 and 155, in the case of André Pellerin, and any additional questions arising out of those questions.
Richard Morneau
Prothonotary
Certified true translation
C. Delon, LL.L.
T-2566-94
BETWEEN:
A. PELLERIN ET FILS LTÉE,
Plaintiff,
AND
LES ENTREPRISES DENIS DARVEAU INC.,
- and -
LES ÉQUIPEMENTS D'ÉRABLIÈRE C.D.L. INC.,
- and -
ÉVAPORATEURS SMALL FRÈRES INC.,
Defendants.
REASONS FOR ORDER
RICHARD MORNEAU,
PROTHONOTARY:
This is a motion by the defendant Les Entreprises Denis Darveau Inc. seeking a ruling in its favour in respect of a number of objections made by counsel for the plaintiff at the examination for discovery of the plaintiff.
More precisely, it should be noted that on June 27, 1996, the defendant examined Yvon Pellerin as the representative of the plaintiff. On July 3, 1996, the defendant examined André Pellerin as the inventor.
In addition, the defendant is asking that the said Yvon Pellerin and André Pellerin be ordered to appear again to answer the questions to which objection was made and any additional questions arising out of those questions.
The defendant has divided the questions to which objection was made into five categories. In view of the relatively limited number of objections in issue, I intend to deal with the objections category by category, listing the questions that fall into each category at the beginning of each analysis, where necessary.
First, however, it would seem advisable to review what the record has to say about the dispute between the parties.
In its statement of claim for infringement, the plaintiff alleges that the defendant manufactured, distributed and sold in Canada, without a licence or the consent of the plaintiff, a filtration device with recirculation which constitutes an infringement of the major claims in Canadian patent 2,048,423 entitled "Filtration device with recirculation" issued to the plaintiff on August 2, 1994, by the Patent Office.
It appears that these devices are used for filtering maple syrup.
In its statement of defence, the defendant admits that it manufactured and sold filtration systems with recirculation (the first and second Darveau systems), but denies that those systems constitute a literal or substantial infringement of the claims in the plaintiff's patent. It further adds that the plaintiff's patent must be regarded as being and having always been invalid because, inter alia, the invention covered by the patent was obvious and not inventive, and on this point, by counter-claim, it seeks a declaration to that effect.
It should be noted at the outset that a question deserves an answer at an examination for discovery if it is relevant to the points in issue between the parties, that is, if it may directly or indirectly advance the case of one of the parties or damage the case of the other (see Sydney Steel Corp. v. The Ship Omisalj, [1992] 2 F.C. 193, 197-8).
I shall now move on to analyze the unanswered questions, category by category.
Category I: The patent application
Counsel for the parties informed the Court that questions 41/97 and 45 did not need to be decided at this time. Accordingly, they will not be.
[translation]
| Question 137 Indicate whether it should be understood from the inventor's explanation that he never had to discuss the objections raised by the examiner in respect of the Grundfos and Hagemann patents directly with the patent officer |
| Question 138 Indicate the substance of the inventor's discussions, at any time and with any person, concerning the Grundfos patent |
Both these questions were asked during the examination of André Pellerin, the inventor. They relate to discussions that André Pellerin may have had in respect of the two patents that apparently form part of the prior art. According to counsel for the defendant, they are intended to provide support for the assertions set out by the defendant in paragraph 14 of its statement of defence, as follows:
[translation]
| 14. At the time of the review procedure that led to issuance of the patent, both the plaintiff and the alleged inventor made vague, biased and misleading statements with the aim of saving the initial application. By making those statements, the plaintiff and the alleged inventor were able to persuade the examiner to recognize their invention although it was different from the one that it had asserted at the outset, thereby taking advantage of his good faith, twisting the process to their advantage and obtaining the patent in an illegal manner, as will be proved. |
These two questions appear to me to be relevant in that it should be possible to explore information that is part of the file history of the patent in issue. The objective of the defendant here corresponds to certain purposes for which the courts have allowed access to information that is part of the file history of a patent. In Heffco Inc. v. Dreco Energy Services Ltd. (1995), 62 C.P.R. (3d) 81, at page 84, my colleague Hargrave summarized his understanding of the law as follows:
| Traditionally, the courts have not allowed the file history of a patent to be used in order to interpret patents classifications. In contrast, the courts have considered file history in other contexts, for example to determine the prior art that was before the patent examiner (Samsonite Corp. v. Holiday Luggage Inc. (1988), 20 C.P.R. (3d) 291 at p. 314 et seq., 21 C.I.P.R. 286, 9 A.C.W.S. (3d) 440 (F.C.T.D.)), and also to determine whether inaccurate or misleading information was presented to the Patent Commissioner's office: Beloit Canada Ltd. v. Valmet Oy (1986), 8 C.P.R. (3d) 289 at p. 300 et seq., 7 C.I.P.R. 205, 64 N.R. 287 (C.A.). |
Accordingly, questions 137 and 138 will have to be answered. With respect to question 183, it should be noted here, without reproducing that question, that I am not entirely satisfied, on reading the transcript, that it has really been answered completely and satisfactorily. I therefore intend to allow the defendant to ask it again since it is potentially relevant to the theory advanced in paragraph 14 of the defence.
Category II: The patent and the invention claimed in it
The four questions in this category read as follows:
[translation]
| Question 58 Indicate whether it is an essential element of the invention that the pump used must be centrifugal |
| Question 59 Same question concerning each of the pumps at the first level and the second level |
| Question 98 Indicate whether the multi-stage aspect is an essential aspect of the invention |
| Question 164 Indicate whether the plaintiff is claiming a monopoly over each and every one of the characteristics found in the patent |
They were put to Yvon Pellerin as representative of the plaintiff.
The defendant has raised the first three questions " questions 58, 59 and 98 " because in paragraph 13 of its statement of claim the plaintiff alleges that the defendant has engaged in what must be understood to be an infringement in substance of the claims in the patent.
According to counsel for the defendant, there can only be infringement of the substance in respect of the essential elements of the invention and it must have more knowledge of those elements in order to be able to prepare properly for the trial on the merits.
First, it must be noted that it is proper, at a preliminary stage in the proceedings, to require that a plaintiff specify what it considers to be the "substance" of its invention, even though ultimately, at the end of the road, it is up to the Court to draw a definitive conclusion on this point (Northern Telecom Ltd. v. Reliance Electric Co. (1986), 8 C.P.R. (3d) 224, at page 227).
This means looking for an answer to a question of fact. In Northern Telecom, supra, the Federal Court of Appeal stated the following on this point, at page 226:
| What the "substance" of the invention is is obviously material as it is the taking of it of which the respondents complain. It is also a question of fact, not one of law. See McPhar Engineering Co. of Canada Ltd. v. Sharpe Instruments Ltd. et al. (1961), 35 C.P.R. 105 at pp. 170-1, 21 Fox Pat. C. 1, [1956-60] Ex. C.R. 467 at p. 537, per Thorson P.: |
| And since there is infringement if the substance of the invention is taken it becomes necessary to ascertain what the substance of the invention is and that question is one of fact. |
Of course that sort of question, like the questions raised here, to some extent requires that the person answering state a technical opinion. However, it does not appear to me in the circumstances that the technical opinion element of the questions asked is sufficient to take away their essentially factual character. (See Risi Stone Ltd. v. Groupe Permacon Inc. (1994), 56 C.P.R. (3d) 381, at page 388).
I do not think that the questions in issue are fundamentally intended to ask Mr. Pellerin to engage in an interpretation of the patent.
Moreover, I consider that even if Yvon Pellerin is not being examined as an inventor, let alone as an expert witness, he can, based on the factual and technical knowledge he has exhibited to date in his examination, answer the questions in issue. Accordingly, those questions should be answered.
With respect to question 163, I believe that paragraph 13 of the statement of claim and the patent itself provide an adequate answer to that question. They therefore need not be answered.
Category III: The inventive activity
The two questions in this category read as follows:
[translation]
| Question 148 Explain, in the words of the inventor, what is new in the invention in comparison to what existed at the time |
| Question 149 Indicate, in the patent or in the patented system, what the inventor considers to have been the flash he says he had in September 1990 |
These questions to the inventor, André Pellerin, were raised in view of the fact that the defendant alleged, at paragraph 13(d) of its statement of defence:
[translation]
| The Patent, including each of the claims therein cited by the plaintiff in this instance, is and has always been invalid, void and of no effect in that |
...
| (d) Neither the invention described in the initial application nor the invention claimed discloses any inventive activity; |
I intend to reject these two questions since, as I reminded the defendant in an earlier decision in this case,
| ... the question of the innovative nature of any invention is one that must be determined by the Court in light of expert testimony on the matter concerning general knowledge and prior art (see Jackmorr Manufacturing Ltd. v. Waterloo Metal Stampings Ltd. (1986), 8 C.P.R. (3d) 271, at 275). |
(Pellerin et Fils Ltée v. Les Entreprises Denis Darveau Inc. et al., unreported decision dated March 15, 1996, file no. T-2566-94, at page 3.)
Category IV: Confusion in terms
Counsel for the parties told the Court that questions 147 and 189 in this category need not be decided for the moment.
What remains are questions 153, 153/2 and 155, which read as follows:
[translation]
| Question 153 Indicate whether, when the two pumps are mounted on the same axle, it is a coaxial mount |
| Question 153/2 Indicate whether it should be understood that the construction in Grundfos is both axial and coaxial |
| Question 155 Indicate whether, in the Grundfos patent, it is an axial pump |
Plainly, these questions are relevant to the issue, and on reading the transcript, more detail about the concepts that these questions are seeking to clarify is required. These questions may therefore be asked.
Category V: Privilege
At the hearing of this motion, counsel for the defendant asked that this Court not rule for the moment on the two questions in this category the answers to which might possibly be protected by solicitor-client privilege. Counsel for the plaintiff expressed agreement with this approach. There will therefore be no ruling in respect of those questions.
Given that success has been divided on this motion, no costs will be awarded.
Richard Morneau
Prothonotary
Montréal, Quebec
March 21, 1997
Certified true translation
C. Delon, LL.L.
Federal Court of Canada
Court file No. T-2566-94
between
A. PELLERIN ET FILS LTÉE
Plaintiff,
" and "
LES ENTREPRISES DENIS DARVEAU INC.,
- and -
LES ÉQUIPEMENTS D'ÉRABLIÈRE C.D.L. INC.,
- and -
ÉVAPORATEURS SMALL FRÈRES INC.,
Defendants.
REASONS FOR ORDER
FEDERAL COURT OF CANADA
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT FILE NO: T-2566-94
STYLE OF CAUSE: A. PELLERIN ET FILS LTÉE
Plaintiff,
AND
LES ENTREPRISES DENIS DARVEAU INC.,
- and -
LES ÉQUIPEMENTS D'ÉRABLIÈRE C.D.L. INC.,
- and -
ÉVAPORATEURS SMALL FRÈRES INC.,
Defendants.
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: March 17, 1997
REASONS FOR ORDER BY: Richard Morneau, Prothonotary
DATE OF REASONS FOR ORDER: March 21, 1997
APPEARANCES:
Jacques Lemoine for the plaintiff
| Marie Lafleur for the defendant Les Entreprises |
Denis Darveau Inc.
SOLICITORS OF RECORD:
Léger, Robic, Richard for the plaintiff
François Grenier/Jacques Lemoine
Montréal, Quebec
Martineau Walker for the defendant Les Entreprises
Marie Lafleur Denis Darveau Inc.
Montréal, Quebec
Lavin & Far for the defendant Évaporateurs
Thomas Lavin Small Frères Inc.
Cowansville, Quebec