James River Corp. of Virginia v. Hallmark Cards, Inc.
T-2286-94
Reed J.
11/2/97
17 pp.
Appeal from A.S.P.'s decision ordering answering of certain questions, on discovery, by defendant, and declining to order answering of others-Patent infringement action (type and method of making paper plates)-Principles applicable on appeal of prothonotary's order: orders should not be disturbed on appeal unless clearly wrong as based on error of law (wrong principle or misapprehension of facts) or raising questions vital to final issues of case-Questions relating to inducing infringement: no error of law in decision to require answers be given thereto as allegation of inducement conclusion of fact or allegation of factual inference-Questions employing patent terminology: A.S.P. did not err when requiring answers to questions employing terminology not used by defendant-Defendant not required to do testing to ascertain answers but questions herein should be answered to extent possible in view of different terminology-Questions relating to commercial success: commercial success proper area for discovery and questions relative thereto should be answered-Matter in issue obviousness-Where defendant pleading obviousness, questions relating to commercial success relevant-Questions relating to sales of products other than plates: A.S.P. did not err in finding, based on relevance, most questions, save three, need not be answered-Questions relating to what would have happened had Hallmark not sold plates to Coutts: questions require conjecture and speculation, not questions of knowledge, information or belief as to facts-A.S.P. erred in principle in not including two questions in category of questions to which answers not required: questions no doubt proper with respect to accounting of profits but excluded as requiring speculation-Questions relating to companies occasionally making plates for Hallmark: A.S.P. erred in finding questions relative thereto not required to be answered on basis since companies not presently parties to litigation and manufacturing took place in United States, not Canada, questions did not come within R. 458, as being relevant to any unadmitted allegations of fact-To extent questions relate to methods and manufacturing operations of defendant's third party contractors, questions relevant to issues of infringement, utility and calculation of profits-Questions seeking production of documents used in United States litigation excluded on ground absence of evidence before A.S.P. demonstrating U.S. proceeding existed and parallel to present proceeding, and absence of evidence demonstrating documentation sought relevant to present proceeding-Not proper to allow filing with Court of affidavit to supply missing evidence as role of judge on appeal of prothonotary's order to exercise discretion de novo, on material before prothonotary, and not to engage in hearing de novo based on new materials-Questions relating to pleadings: A.S.P. did not err in declining to require questions relating to the state of prior art or common general knowledge where not based on opinion of experts-Federal Court Rules, C.R.C., c. 663, R. 458 (as am. by SOR/90-846, s. 15).