A-249-80
P. J. Wallbank Manufacturing Co. Limited
(Appellant)
v.
Kuhlman Corporation (Respondent)
Court of Appeal Thurlow C.J., Urie and Ryan
JJ.—Ottawa, June 20, 1980.
Practice — Appeal from order of the Trial Division permit
ting respondent to inspect appellant's premises, methods,
machines and records in order to obtain particulars for pur
pose of pleading — Whether the evidence supports the conclu
sion that such an inspection is the only means by which
respondent can ascertain if actual infringement of its patents is
being committed, or that inspection was necessary at that stage
of the proceedings — Appeal allowed.
Edler v. Victoria Press Mfg. Co. (1910) 27 R.P.C. 114,
distinguished. Dow Chemical Co. v. Kayson Plastics and
Chemicals Ltd. [1967] 1 Ex.C.R. 71, considered.
APPEAL.
COUNSEL:
J. Kokonis, Q.C. and W. C. Kent for
appellant.
G. A. Macklin and B. E. Morgan for
respondent.
SOLICITORS:
Burke-Robertson, Chadwick & Ritchie,
Ottawa, for appellant.
Gowling & Henderson, Ottawa, for respond
ent.
The following are the reasons for judgment of
the Court delivered orally in English by
THE COURT: This is an appeal from an order of
the Trial Division',
(1) permitting the respondent, through its
authorized representatives and legal counsel, to
attend and enter the premises of the appellant at
Plattsville, Ontario to inspect the methods and
machines used by the appellant in the manufacture
of spring assemblies for automatic transmissions
which are the subject matter of this action and to
make such tests and to take such photographs as
' Page 639 supra.
may reasonably be required to obtain particulars
of the appellant's said methods and machines for
the purpose of pleading, and
(2) permitting the respondent to inspect records
and documents in the possession, custody or power
of the appellant relating to the methods and
machines used by the appellant in the manufacture
of spring assemblies for automatic transmissions
which are the subject matter of this action as may
reasonably be required to obtain particulars of the
appellant's said methods and machines for the
purpose of pleading.
The application for the order was launched
immediately upon the filing of the statement of
claim and was supported by an affidavit which
disclosed what the learned Trial Judge considered
to be a prima facie case of infringement of the
appellant's three patents. It went on to say in
paragraphs 12 and 13:
12. I have been requested by Plaintiff's counsel to furnish full
particulars of the method and machines used by the Defendant
since the year 1974 at its plant in Plattsville, Ontario, to
produce the said spring assemblies, however, I and my associ
ates have been unable to do so, due to the lack of detailed
knowledge of the said method and machines used by the
Defendant for the manufacture of the said spring assemblies.
13. I am informed by our counsel and verily believe that an
inspection of the plant premises of the Defendant's plant in
Plattsville, Ontario, which is near Chatham, is essential in
order that the Plaintiff will be able to supply sufficient and
adequate particulars of patent infringement in respect of its
action in this Honourable Court against the Defendant.
The learned Trial Judge considered the matter
carefully before exercising his discretion to grant
the order, but we are, with respect, of the opinion
that the evidence before him does not afford sup
port for his conclusion that in the circumstances
disclosed an inspection of the appellant's premises,
its methods and machines is the only means by
which the respondent can ascertain if actual
infringement is being committed. Nor does the
material support a conclusion that such an inspec
tion, involving as it does a serious intrusion upon
the appellant's premises and a danger of irrepa
rable harm to the appellant in the discovery of its
know-how to a business competitor, was necessary
at the stage which the action had reached, either
for the purpose of pleading or for any immediate
purpose.
In our view cases such as Edler v. Victoria Press
Manufacturing Company 2 which were decided in
the context of civil procedure by writ of summons
and before the present day discovery practices
applicable in this Court were developed are not
sufficiently in point to have much persuasive
weight in considering a case such as the present
one. Further, there is in our view, nothing in the
decision of the President of the Court in Dow
Chemical Co. v. Kayson Plastics and Chemicals
Ltd.' which indicates that the present is the kind
of case in which an order for inspection at this
stage would be appropriate.
We should add that the second paragraph of the
order, resembling as it does procedure by a search
warrant, is to us a novel way of obtaining discov
ery of documents. It is one that in our view is not
provided for by the Rules for obtaining discovery
of documents and should not be countenanced.
The appeal will be allowed, the order will be set
aside and the respondent's application will be dis
missed with costs in the Trial Division and on the
appeal.
2 (1910) 27 R.P.C. 114.
3 [1967] 1 Ex.C.R. 71.
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.