T-730-72; T-3217-73
Xerox of Canada Limited and Xerox' Corporation
(Plaintiffs)
v.
IBM Canada Limited, IBM Canada Limitée
(Defendant)
Trial Division, Heald J.—Toronto, August 20, 21;
Ottawa, September 5, 1975.
Patents—Practice—Letters rogatory—Application for issue
of letters of request to various U.S. courts to permit examina
tions for discovery outside Canada—Whether jurisdiction—
Federal Court Rule 465(5), (12)—Canada Evidence Act,
R.S.C. 1970, c. E-10, ss. 40, 41, 43, 44.
Defendant, relying on Rule 465(5) and (12), moved for
orders authorizing issue of letters rogatory to permit examina
tions for discovery of 18 inventors/assignors residing in 5
different jurisdictions in the United States. Defendant in each
case tendered evidence that there is a reasonable probability
that the letter of request would be effective. Plaintiff claims
that the Court has no jurisdiction to issue letters rogatory, and
that even if it does, the power is discretionary and can not be
exercised to order examination of an assignor not party to the
action. Plaintiff submits that since this Court cannot recipro
cate, and the Supreme Court of Ontario will not, in these
circumstances, the Court should not ask a foreign Court for
something which Canadian Courts can not or will not do in
return.
Held, the motions are dismissed. Assuming jurisdiction, these
are not cases where the Court should exercise its discretion
under Rule 465(12) to make such orders. Reasonable probabili
ty of effectiveness has not been shown. Each person would have
the right to contest the order sought before the proper court in
the jurisdiction, and delays of several years might result.
Defendant will not be prejudiced if the orders are refused.
Textron Canada Limited v. Rodi & Wienenberger Aktien-
gesellschaft [1973] F.C. 667, applied. Re Raychem Corp.
v. Canusa Coating Systems [1971] 1 O.R. 192, discussed.
MOTION.
COUNSEL:
D. F. Sim, Q. C., for plaintiff.
R. S. Smart, Q. C., for defendant.
SOLICITORS:
D. F. Sim, Q. C., Toronto, for plaintiff.
Smart & Biggar, Ottawa, for defendant.
The following are the reasons for judgment
rendered in English by
HEALD J.: These two motions were heard to
gether by consent of counsel since the issues raised
therein are identical. Each motion is an application
on behalf of the defendant "for an order or orders,
including if necessary orders authorizing issue by
this Court of letters of requests to courts in the
United States, whereby to permit and enable coun
sel for the defendant to conduct an examination on
discovery of each of the inventors/assignors of the
patents relied upon by the plaintiffs herein, as
listed on Schedule A to the notice of motion,
before the person respectively nominated in such
Schedule as Special Examiner for the purpose of
such examination."
Subject actions allege infringement by the
defendant of some 11 Canadian patents. The
defendant denies infringement and also attacks the
validity of said patents. Under the authority of
Federal Court Rule 465(5)', the defendant desires
to examine for discovery some 18 inventors, of
which 12 are presently employees of the plaintiff
Xerox Corporation in the United States. Said
inventors presently reside in five different jurisdic-
tions in the U.S.A. (New York, Connecticut, two
Districts in California and Hawaii). The defendant
Rule 465. (5) The assignor of a patent of invention, copy
right, trade mark, industrial design or any property, right or
interest may be examined for discovery by any party who is
adverse to an assignee thereof. (Where the context so permits, a
reference in this Rule to an individual to be questioned or to an
individual being questioned includes such an assignor.)
relies on Rule 465(5) supra and Rule 465(12) z
which, it submits, gives this Court jurisdiction to
make the orders herein requested.
The defendant also relies on the judgment of
Mr. Justice Kerr in the case of Textron Canada
Limited v. Rodi & Wienenberger Aktien-
gesellschaft'. In that case, the plaintiff was seeking.
to examine the inventor/assignor of a patent in
Japan and another inventor/assignor of a patent in
Germany. At page 668 of the judgment, Mr. Jus
tice Kerr said:
However I think that, in the absence of specific provisions
governing the manner of the examination for discovery of
patent assignors out of Canada, Rule 465(12) permits the
Court to make orders for discovery analogous to the kind of
order provided for in Rule 477(1), or even, but less preferably,
to issue commissions for the examination with appropriate
modifications. I need not at this stage decide what use may be
made of the examination if it takes place, conceivably it may be
useful, even if only informative to the plaintiff. Nor need I
speculate as to whether the assignors will attend for examina
tion, or what recourse the plaintiff may have_ if they do not
attend.
Then, on page 669, the concluding paragraph of
the judgment reads:
I would be willing to make an appropriate order for the
requested examination for discovery of the assignors in Japan
and Germany or as the case may be, but before making an
order I would want to be satisfied that there would be a
reasonable probability that it would be effective under the laws
2 Rule 465. (12) Where an individual to be questioned on an
examination for discovery is temporarily or permanently out of
the jurisdiction, it may be ordered by the Court, or the parties
may agree, that the examination for discovery be at such place,
and take place in such manner, as may be deemed just and
convenient.
[1973] F.C. 667—NoTE: Counsel informed me that the
Textron case was settled shortly after the above quoted judg
ment of Kerr J. was issued. Accordingly, there was no further
action taken on the application.
of those countries. Consequently I will reserve judgment on the
application for one month in order to give counsel for the
plaintiff time meanwhile to enquire in that respect and if the
application is pursued he may propose the terms to be incorpo
rated in any order sought, and I will hear the parties on further
notice of motion therefor.
Based on Mr. Justice Kerr's view referred to
supra that he would have to be satisfied that there
would be a reasonable probability that the order
would be effective under the laws of Japan and
Germany, defendant's counsel, in the case at bar,
tendered affidavit evidence from the five U.S.
jurisdictions affected. In each case, the defendant
filed an affidavit from a qualified attorney speak
ing to the practice and procedure in said U.S.
Courts and stating that, in his opinion it is reason
ably probable that the Court for which he speaks
would execute a letter of request of the general
kind exhibited to his affidavit to enable the
defendant to obtain examination on discovery of
the inventor/assignor herein.
In response to this evidence, the plaintiffs filed
four affidavits. The affiants; Utecht and Haas,
being California attorneys of some considerable
experience at the bar, both expressed the firm view
that the letters of request herein sought would not
be acted upon by the California courts because the
evidence sought could not be introduced as evi
dence in the action but could be used only for the
purpose of gaining information by the party
requesting it. Their evidence was rebutted by the
further affidavits of Messrs. Bobb and Thelen,
filed by the defendant, who disagreed with the
views of Messrs. Utecht and Haas, referred to
supra on the basis that said discovery evidence
since it could be used:
(a) for impeachment of the deponent as a
witness;
(b) to discover admissible testimony;
(c) to identify or authenticate books, documents
or other things; and
(d) for use at deposition of a party witness to
elicit testimony or authenticate books, docu
ments or other things,
would be ordered by the California courts.
The plaintiffs' affiants Kier and Kaufman are
clearly of the . opinion that the New York and
Connecticut courts would not act on such letters of
request of this Court because of the inability of the
Federal Court of Canada to reciprocate 4 . This
evidence is rebutted by the reply affidavits of
Murphy and Hansen filed by the defendant who
disagree with the opinions of Messrs. Kier and
Kaufman for the reasons stated in their affidavits.
The plaintiffs filed no evidence with respect to
the legal position in the State of Hawaii.
Counsel, for the plaintiffs opposed these motions
on a twofold basis. He submitted, firstly, that this
Court has no jurisdiction under any circumstances
to issue letters rogatory to a foreign court. His
second submission was on the basis that even if
this Court does have the power to issue letters
rogatory, that power is discretionary and should
not be exercised to order the examination for
discovery of an assignor who is not a party to the
action. This submission is to the effect that since
the Federal Court of Canada cannot reciprocate
and the Supreme Court of Ontario will not recip
rocate in these circumstances', this Court should
not place itself in the position of asking a foreign
court to do that which courts in Canada could not
or would not do in return.
In view of the conclusion which I have reached,
it is unnecessary for me to make a determination
on the question of jurisdiction. Assuming jurisdic
tion in the Court, without expressly so deciding, I
have concluded, on the facts here present, that
these are not cases where the Court should exer
cise its discretion in favour of -making the orders
sought. Adopting the language used by Kerr J. in
the Textron case (supra), I am not satisfied that
there is a reasonable probability that the orders
sought would be effective. The evidence before me
4 It seems clear that this Court does not have the right to act
upon Letters Rogatory issued by a foreign Court. See: Canada
Evidence Act, R.S.C. 1970, c. E-10, ss. 40, 41, 43 & 44.
5 See: Re Raychem Corp. v. Canusa Coating Systems [1971]
1 O.R. 192, Ontario Court of Appeal, per Brooke J.A. at 197
& 198.
of the various attorneys in the various jurisdictions
is highly contradictory and amounts to conflicting
legal opinions of attorneys. I am not all satisfied
on the evidence that the defendant has established
reasonable probability. We have, in this case, some
18 different persons in five different jurisdictions.
It was common ground between counsel that each
of these persons would have the right to appear
before the proper Court in the jurisdiction where
each of them resides and to contest, before that
Court, the order sought by the defendant to
enforce the letters of request from this Court.
Presumably, the usual appeal procedures would
also be available to these persons through the
United States' judicial system. This might well
result in delays of several years before these
actions could be brought to trial in this Court. I
am not satisfied that the defendant will be prejud
iced if the orders sought herein are refused. It still
has available to it the normal party examination
procedures under Rule 465 and the right to pro
duction and examination of relevant documents as
provided for by our-Rules.
Having regard to all of the above considerations,
I have concluded that the Court's discretion under
Rule 465(12) should not be exercised in favour of
the defendant in these cases.
The defendant's motions are accordingly dis
missed with costs.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.