Denharco Inc. v. Forespro Inc.

Denharco Inc. v. Forespro Inc.

The prothonotary erred in refusing to compel answers and production relating to the corresponding U.S. patent application and file wrappers because such material may be relevant to prior art and is appropriately pursued at discovery; however, the prothonotary did not err in sustaining objections to questions seeking the inventor's account of a non-party's opinion on patent invalidity since validity is a legal question for the court. The appeal is allowed in part and the order is varied to compel specified answers and documents.

Citation
2002 FCT 756
Parties
Plaintiff (cross Defendant): Denharco Inc.; Defendant (cross Plaintiff): Forespro Inc.; Defendant (cross Plaintiff): Quadco Equipment Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
9 July 2002
Procedural Posture
Patent Litigation Discovery Dispute / Appeal From Prothonotary Order on Objections at Examination for Discovery (pre Trial Discovery)
Outcome
Appeal allowed in part; prothonotary's order varied
Legal Topics
File Wrappers, Prior Art, Examination for Discovery, Standard of Review, Admissibility of Evidence, Patent Validity
Source Language
English
Intellectual Property Patent Law Civil Procedure Discovery File Wrappers Prior Art Examination for Discovery Standard of Review +2 more

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Parties

Denharco Inc.

Plaintiff (cross Defendant)

Forespro Inc.

Defendant (cross Plaintiff)

Quadco Equipment Inc.

Defendant (cross Plaintiff)

Procedural Posture

Patent Litigation Discovery Dispute / Appeal From Prothonotary Order on Objections at Examination for Discovery (pre Trial Discovery)

Legal Issues

  1. 1 Whether questions about the corresponding U.S. patent application and related file wrappers are discoverable
  2. 2 Whether the inventor must answer questions about an extrajudicial statement concerning patent invalidity by a non-party
  3. 3 What standard of review applies to appeals from discretionary prothonotary orders

Ratio Decidendi

The prothonotary erred in refusing to compel answers and production relating to the corresponding U.S. patent application and file wrappers because such material may be relevant to prior art and is appropriately pursued at discovery; however, the prothonotary did not err in sustaining objections to questions seeking the inventor's account of a non-party's opinion on patent invalidity since validity is a legal question for the court. The appeal is allowed in part and the order is varied to compel specified answers and documents.

Court Disposition

Appeal allowed in part; prothonotary's order varied

Orders

  • Motion allowed on the following points; it is otherwise dismissed.
  • The inventor Laurent Denis shall promptly appear again to answer questions 568, 570, 571(a) and 571(c) and shall provide the information and documents requested in question 571(b).