A-860-77
Lido Industrial Products Limited (Appellant)
(Defendant)
v.
Teledyne Industries, Inc. and Teledyne Water Pik
Limited (Respondents) (Plaintiffs)
Court of Appeal, Jackett C.J., Heald J. and
MacKay D.J.—Toronto, September 13, 1978.
Practice — Discovery — Application to compel named
officers, employees and assignors of respondent companies to
attend examination for discovery — Whether or not au
thority for making order — Federal Court Rule 465(1)(6).
This is an appeal from a judgment of the Trial Division in an
action for patent infringement in so far as it dismissed appel
lant's application, made pursuant to Rule 465(1)(b), for several
different orders requiring named individuals, either officers or
employees and assignors of the respondent companies, to be
examined for discovery. The named individuals reside in the
United States.
Held, the appeal is dismissed. There is no author
ity for the order sought, namely that one of the named
employees and assignors of respondent Teledyne Industries Inc.
be examined for discovery. Rule 465(1)(b) is intended for use
in situations where the parties cannot agree on the officer or
member of a corporation to be questioned; it permits a party to
seek an order of the Court by which one is nominated. The
application is not only misconceived but is also an attempt to
obtain relief that is not available under the Rules.
APPEAL.
COUNSEL:
W. F. Green, Q.C., and W. Wong for appellant
(defendant).
D. F. Sim, Q.C., for respondents (plaintiffs).
SOLICITORS:
Weldon F. Green, Q.C., Toronto, for appellant
(defendant).
Donald F. Sim, Q.C., Toronto, for respond
ents (plaintiffs).
The following are the reasons for judgment
delivered orally in English by
JACKETT C.J.: According to the notice of
appeal, this is an appeal from a judgment of the
Trial Division in so far as it dismissed with costs
an application by the appellant that the respond
ents be required to produce David W. Smith for
discovery under Rule 456(5) (sic).
The proceedings in the Trial Division were com
menced by an action by the respondents against
the appellant for infringement of patent.
The application giving rise to the judgment that
is the subject of this appeal was made pursuant to
a notice of motion for several different orders of
which one was an order naming an officer of one
respondent to be examined for discovery under
Rule 465(1)(b), one was an order naming an
officer of the other respondent to be examined for
discovery under that provision and the other perti
nent ones were orders:
(iv) that John M. Trenary and David W. Smith, the employees
of the plaintiff Teledyne Industries, Inc. and assignors named
in the Canadian Letters Patent No. 1,001,689, whose addresses
are 3327 Boxelder Drive, Fort Collins, Colorado 80521 and P.
O. Box 174, Wellington, Colorado 80549 respectively, be exam
ined for discovery pursuant to Rule 465(5) of the said rules;
(v) that the said persons be ordered to attend before Paul W.
Rosenberger, Special Examiner, 390 Bay Street, in the City of
Toronto, Canada pursuant to Rule 465(6)(c) of the said rules
or before such other special examiner as may be agreed upon
between counsel for the parties hereto and be examined pursu
ant to Rule 465(14) of the said rules;
(vi) that the remaining provisions of Rule 465 shall apply
mutatis mutandis to such examinations for discovery;
In my view, the appeal should be dismissed
because there is no authority for the order sought,
namely, that David W. Smith be examined for
discovery. No such authority has been referred to
and I know of none.
Having said that, I should explain why, in my
opinion, the application was not only misconceived
but was an attempt to obtain relief that is not
available under the Rules.
As I understand it, examination for discovery, as
commonly understood, is a pre-trial process where
by one party to an action obtains information or
admissions from the other and is one of the few
aspects of our procedure that has no root in the
procedure of the United Kingdom. It is now almost
universally found in superior courts in Canada but,
in each court, is a product of the relevant statute
and the Rules made thereunder. For present pur
poses, the relevant rule is 465 of the Federal Court
Rules, which was made under section 46 of the
Federal Court Act.'
The simplest case of examination for discovery
is in an action of one individual against another
where one party examines the other (Rule
465(1),(2) and (3)). In such a case, no order of the
Court is contemplated unless it is required to
nominate an examiner (Rule 465(6)(c)). The
examining party obtains an appointment from the
examiner fixing a time and place for the examina
tion (Rule 465(7)), and the examination is com
menced in accordance with the Rule without any
preliminary order from the Court. The sanction
available to the examining party is that, if the
opposing party fails to submit himself for discov
ery, or to answer questions as required by the
Court, the delinquent party becomes liable, if a
defendant, to having his defence struck out or, if a
plaintiff, to having his action dismissed. (Rule
465(20).) 2
The other typical case for examination for dis
covery is where the party to be examined is the
Crown or a corporation or other body or group of
persons. In such a case, it is not feasible for the
party to be questioned and an appropriate officer
or member is nominated to be questioned by way
of examination of the party. In such a case, if the
parties cannot agree on the officer or member to
be questioned, it is necessary to seek an order of
the court by which one is nominated. (Rule
465(1)(b).) This is a second exception to the gen
eral rule that an order of the court is not necessary
for arranging for commencement of an examina
tion for discovery.
Rule 465 also contemplates the possibility that
an examination for discovery might, in certain
circumstances, be held outside Canada but such an
' A copy of Rule 465 will be attached as an appendix to these
reasons when they are transcribed.
2 Rule 465(1)(d) contemplates the possibility of some person
being examined in place of the individual party but this does
not affect the general scheme.
examination for discovery can only be held by
agreement or with authority of an order of the
Court. (Rule 465(12).) This is a third exception to
the general rule that an order of the court is not
necessary for arranging for commencement of an
examination for discovery.
In so far as the notice of motion gives notice of
an application for nomination of officers to be
questioned on behalf of the corporate respondents
by way of examination for discovery, it is seeking
orders contemplated by Rule 465(1)(b) that fall
within the second exception referred to above in
the case of a typical examination for discovery by
one party of another.
Rule 465 also includes provision (Rule 465(5))
for something that is called an examination for
discovery but that does not fall within what is
ordinarily thought of as an examination for discov
ery. It is not an examination for discovery of one
party by another; it is a pre-trial questioning of a
potential witness, and the only person who can be
questioned thereunder is the assignor of the prop
erty right that is the subject of the litigation, who
is subject to being questioned whether or not he is
an officer or other employee of the opposing party.
The mode of enforcing attendance for examina
tion of a person subject to questioning by virtue of
Rule 465(5) is a subpoena (Rule 465(9)); as such
a person is not necessarily under the control of the
opposing party, that party does not become subject
to having his defence struck out or to having his
action dismissed by reason of such person failing
to attend and answer as required. (Rule 465(20).)
Presumably, Rule 465(12) contemplates the Court
authorizing such an examination taking place out
side Canada but one does not find anything in the
Rules authorizing the Court to order such a person
to appear for examination inside or outside
Canada; and any such authority would not be
expected having regard to the provision for a
subpoena in Canada and the Court's inability to
issue orders or other process having effect outside
its geographical jurisdiction. 3 In other words, there
is an implied limitation, as far as Rule 465 is
concerned, on the ambit of Rule 465(5) in that it
3 See McGuire v. McGuire [1953] O.R. 328.
cannot operate where the person to be examined is
outside Canada and cannot be made the subject of
a subpoena issued out of a Canadian court. This is
not to say that there may not be an international
convention between Canada and another country,
duly implemented by statute in both countries,
that would authorize such examinations. I do not
recall any such convention that contemplates pre-
trial examination of potential witnesses as opposed
to obtaining evidence in one country for use at trial
in another country.
I have said so much in this connection not only
to make it clear that, in my view, the appellant is
not failing to obtain what he seeks merely because
he frames his application inadequately, but also to
make it clear that, in my view, he sought some
thing that the Rules did not, and could not, give
him any right to obtain. I also have attempted to
bring out that there seems to be a tendency to seek
from the Court orders concerning the details of
launching an examination for discovery (person to
be examined, place, time, etc.) that should not be
taking up the time of the Court when the Rules do
not provide for them.
I am of the opinion that the appeal should be
dismissed with costs.
APPENDIX
Rule 465:
Examination for Discovery
Rule 465. (1) For the purpose of this Rule, a party may be
examined for discovery, as hereinafter in this Rule provided,
(a) if the party is an individual, by questioning the party
himself,
(b) if the party is a corporation or any body or group of
persons empowered by law to sue or to be sued, either in its
own name or in the name of any officer or other person, by
questioning any member or officer of such corporation, body
or group,
(c) if the party is the Crown, by questioning any departmen
tal or other officer of the Crown nominated by the Attorney
General of Canada or Deputy Attorney General of Canada
or by order of the Court, and
(d) in any case, by questioning a person who has beed
agreed upon by the examining party and the party to be
examined with the consent of such person,
and, in this Rule, a party who is being, or is to be, so examined
for discovery is sometimes referred to as the "party being
examined" or the "party to be examined", as the case may be,
and the individual who is being, or is to be, questioned is
sometimes referred to as the "individual being questioned" or
the "individual to be questioned", as the case may be.
(2) Before the defence has been filed, the plaintiff may be
examined for discovery by a defendant.
(3) After the defence has been filed, and after a party has
served on an adverse party a list of documents as required by
Rule 447 or the filing of such a list has been waived, that party
may examine such adverse party for discovery.
(4) Where a defendant has examined a plaintiff for discov
ery under paragraph (2), he may not, without leave of the
Court, examine the same party for discovery under paragraph
( 3 )-
(5) The assignor of a patent of invention, copyright, 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.)
(6) An examination for discovery under this Rule may be
conducted before a person hereinafter referred to as "the
examiner" who may be
(a) a prothonotary;
(b) a person agreed upon by the parties, who may be the
verbatim reporter or;
(c) a judge nominated by the Associate Chief Justice, or
some other person, if so ordered by the Court.
(7) Upon request of the party who proposes to exercise a
right under this Rule to examine for discovery, a person who is
qualified by paragraph (6) to be the examiner and who has
agreed so to act for the particular examination shall issue an
appointment signed by him fixing the time when, and the place
where, the examination is to be conducted. (Such appointment
shall indicate the names of the examining party, the party to be
examined for discovery, and the individual to be questioned.)
(8) An appointment issued under paragraph (7), together
with appropriate conduct money, shall be served upon the
attorney or solicitor for the party to be examined in the case of
an examination for discovery other than one falling under
paragraph (1)(b) or paragraph (5); and it shall be so served in
the case of an examination for discovery falling under (1)(b) if
the Court so orders before the service is effected; and, in any
case to which this paragraph applies, no notification other than
service of the appointment on the attorney or solicitor for the
party to be examined is necessary.
(9) In any case to which paragraph (8) does not apply, the
attendance of the individual to be questioned may be enforced
by subpoena (which may be a subpoena ad testificandum or a
subpoena duces tecum) in the same manner as the attendance
of a witness at the trial of an action. In any such case, the
appointment issued under paragraph (7) shall be served on the
attorney or solicitor for the party to be examined or the party
adverse in interest to the examining party, as the case may be.
(10) Where there is attached to the appointment issued
under paragraph (7), when it is served on the attorney or
solicitor for the party to be examined or the party adverse in
interest to the examining party, a demand for production, at
the time and place of the examination for discovery, of books,
documents or papers, such a demand shall be complied with as
if it were a subpoena duces tecum.
(11) Unless otherwise ordered by the Court or the parties
otherwise agree, an examination for discovery that takes place
in Canada shall be under oath administered by the examiner or
upon affirmation as provided in the Canada Evidence Act.
(12) Where an individual to be questioned on an examina
tion for discovery in 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.
(13) Service of the order, if any, and of all papers necessary
to obtain an examination for discovery under paragraph (12)
may be made upon the attorney or solicitor for the party to be
examined, together with conduct money for the individual to be
questioned.
(14) Unless otherwise ordered by the Court, or the parties
otherwise agree, an examination for discovery shall be recorded
by a verbatim reporter and arrangements for the attendance of
a reporter shall be made by the party conducting the examina
tion, who shall pay the reporter's fees. (It is not necessary for
the deposition to be read over to, or signed by, the individual
questioned.)
(Note: There is no authority to place a copy of the transcript
on the Court file. Such copies should be delivered to the
parties and, except during an interlocutory application, the
examination should not be put before the Court until a party
tenders it under Rule 494(9).)
(15) Upon examination for discovery otherwise than under
paragraph (5), the individual being questioned shall answer any
question as to any fact within the knowledge or means of
knowledge of the party being examined for discovery that may
prove or tend to prove or disprove or tend to disprove any
unadmitted allegation of fact in any pleading filed by the party
being examined for discovery or the examining party.
(16) Upon examination for discovery of a person under
paragraph (5), he shall answer any question as to any fact
within his knowledge that may prove or tend to prove or
disprove or tend to disprove any unadmitted allegation of fact
in any pleading filed by the assignee or the examining party.
(17) In order to comply with paragraph (15), the individual
being questioned may be required to inform himself and for
that purpose the examination may be adjourned if necessary.
(18) The examiner, unless he is a prothonotary or a judge,
has no authority to determine any question arising under
paragraphs (15) or (16). In any case other than one where a
judge is the examiner, if the party examining is of the view that
the individual being questioned has omitted to answer, or has
answered insufficiently, the party examining may apply by
motion or informally to the Court for an order requiring him to
answer, or to answer further. Where a judge is the examiner,
his ruling on any question shall be deemed to be an order of the
Court.
(See Rule 476 re determination of some question before an
order is made re discovery.)
(19) The Court may, for special reason in an exceptional
case, in its discretion, order a further examination for discovery
after a party or assignor has been examined for discovery under
this rule.
(20) If any individual to be questioned fails without reason
able excuse to attend and submit to questioning as required by
this Rule, or to comply with an order under paragraph (18), the
party being examined is liable, in the discretion of the Court, if
a plaintiff to have his action dismissed, and if a defendant to
have his defence struck out and to be placed in the same
position as if no defence had been filed. The onus of proof of
"reasonable excuse" for the purpose of this Rule is on the party
being examined.
(See Rule 494(9) re use of examination for discovery at
trial.)
* * *
HEALD J. concurred.
* * *
MACKAY D.J. concurred.
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.