Textron Canada Limited (Plaintiff)
v.
Rodi & Wienenberger Aktiengesellschaft
(Defendant)
Trial Division, Kerr J.—Ottawa, June 12 and 19,
1973.
Practice—Discovery—Witnesses—Patents—Action for
annulment of patents—Allegation that patent assigned to
defendant in Japan and Germany—Application to examine
assignors for discovery abroad—Procedure—Rules 465(12),
477.
Plaintiff brought action against defendant to annul certain
patents alleged to have been assigned to defendant by
persons resident in Japan and in Germany, and applied for
an order under Rule 477 to examine the assignors for
discovery on commission.
Held, an order for a commission to examine persons for
discovery in a foreign country cannot be made under Rule
477, but an order to examine them for discovery in a foreign
country can be made under Rule 465(12) on proof that such
an examination would likely be effective under the laws of
Japan and Germany.
ACTION.
COUNSEL:
David Scott for plaintiff.
Jim Kokonis for defendant.
SOLICITORS:
Scott and Aylen, Ottawa, for plaintiff.
Smart and Biggar, Ottawa, for defendant.
KERR J.—In this action the plaintiff seeks
annulment of Canadian Patents No. 527990 and
No. 623916, both of which are alleged to have
been assigned to and are owned by the defend
ant, and now the plaintiff applies to this Court
for an order for leave to examine for discovery
Isao Yamada, the inventor and assignor of
Patent No. 527990, in Japan, and Ludwig Kunz-
mann, the inventor and assignor of the other
Patent No. 623916, in Germany, pursuant to
Rule 465(5) of this Court, and for the issue of
commissions for the said examinations for dis
covery, pursuant to Rule 477, directed to named
persons as special examiners in Japan and Ger-
many, respectively, and for an order for the
issuance of writs of commission therefor.
Clearly, what the plaintiff seeks is an exami
nation of the assignors for discovery under Rule
465(5), (6) and (12) and counsel for the plaintiff
submits that the appropriate machinery for such
examinations is commissions under Rule 477(1).
The purposes of discovery are well known,
and in my opinion, Rule 477 is designed for
very different purposes. That Rule provides for
depositions to be filed with the Court and the
use of them in evidence at the trial by any party,
whereas the use of examination for discovery is
very limited and under Rule 494(9) it is the
party examining who may use in evidence at
trial the examination for discovery of the
adverse party. In the present case neither of the
assignors sought to be examined is a party in the
action and neither is an employee or under the
control of the defendant.
However I think that, in the absence of spe
cific 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 modifica
tions. 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 specu
late as to whether the assignors will attend for
examination, or what recourse the plaintiff may
have if they do not attend.
However at the hearing of the motion counsel
for the plaintiff was not able to say whether
there are conventions or treaties between
Canada and Japan and Germany under which
the requested examination may be held in those
countries, or whether the examination is permit
ted by their laws. A paper published in Volume
13 of International and Comparative Law Quar
terly in 1964 states at page 271 that there are in
force certain treaties between Canada and Euro-
pean countries on legal proceedings and that the
conventions were negotiated by the United
Kingdom and were extended to Canada by
exchange of notes. The 1973 English Supreme
Court Practice, Vol. 1, gives a list at page 587 of
European countries that have entered into con
ventions with the United Kingdom in that
respect; at page 586 it is said that the taking of
evidence before a special examiner under the
English Rule (O. 39(r).2) is not an available
method in Japan; and at page 588 it is said that
under the convention with Germany the special
examiner must be a Consular officer. Hinton's
Evidence and Service Abroad, published in
1930, may well be useful in this connection.
I would be willing to make an appropriate
order for the requested examination for discov
ery 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 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 incorporated in any
order sought, and I will hear the parties on
further notice of motion therefor.
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.