A-199-87
Valmet Oy (Appellant)(Defendant)
v.
Beloit Canada Ltée/Ltd. and Beloit Corporation
(Respondents) (Plaintiffs)
INDEXED AS: BELOIT CANADA LTÉE'LTD. v. VALMET OY
Court of Appeal, Pratte, Marceau and Hugessen
JJ.—Ottawa, June 2, 1987.
Practice — Discovery — Examination for discovery —
Appeal from order requiring defendant to submit to examina
tion for discovery prior to plaintiffs' election for damages or
accounting of profits — Appeal allowed — R. 501(2) requiring
definition of issues that are subject of reference prior to order
for discovery on reference — Definition usually taking place
on order of reference under R. 500(1) — No R. 500(1) order —
Such order only given after election between damages and
accounting of profits — Irrelevant that if no pre-trial order
under R. 480(1), discovery not subject to R. 466 and would
have extended to all matters in issue — Federal Court Rules,
C.R.C., c. 663, RR. 466, 480(1), 500(1), 501(2).
Practice — References — Determination of damages or
accounting of profits according to election — Defendant
ordered to submit to examination for discovery prior to elec
tion — Under R. 501(2), can be no order for discovery on
reference until issues subject of reference defined — Defini
tion should take place on order of reference under R. 500(1) —
Federal Court Rules, C.R.C., c. 663, RR. 500(1), 501(2).
COUNSEL:
Jacques A. Léger for appellant (defendant).
Donald H. MacOdrum for respondents
(plaintiffs).
SOLICITORS:
Léger, Robic & Richard, Montréal, for appel
lant (defendant).
Ridout & Maybee, Toronto, for respondents
(plaintiffs).
The following are the reasons for judgment of
the Court delivered orally in English by
HUG ESSEN J.: This is an appeal from a decision
of Cullen J. [(1986), 64 N.R. 287; 8 C.P.R. (3d)
289; 7 C.I.P.R. 205 (F.C.T.D.)] ordering that
defendant [appellant] submit to examination for
discovery prior to the plaintiffs [respondents]
electing either damages or an account of profits
resulting from the defendant's infringement of
plaintiffs' patent.
In the judgment of this Court on the question of
infringement, it was ordered
... the appellants shall be entitled to damages or an accounting
of profits, as they may elect, and a reference shall be had for
the determination thereof following such election unless the
parties otherwise agree .... (Appeal book, page 4.)
The basis for the Trial Judge's decision [(1984),
78 C.P.R. (2d) 1], and for the principal submission
by the respondents on the present appeal, is that, if
an order under Rule 480(1) [Federal Court Rules,
C.R.C., c. 663]' had not been made before trial,
the examination for discovery would not have been
subject to the provisions of Rule 466 2 and would
therefore have extended to all the matters then in
issue, including both damages and profits.
'Rule 480. (1) Any party desiring to proceed to trial without
adducing evidence upon any issue of fact including, without
limiting the generality thereof,
(a) any question as to the extent of the infringement of any
right,
(b) any question as to the damages flowing from any
infringement of any right, and
(c) any question as to the profits arising from any infringe
ment of any right,
shall, at least 10 days before the day fixed for the commence
ment of trial, apply for an order that such issue of fact be,
after trial, the subject of a reference under Rules 500 et seq.
if it then appears that such issue requires to be decided.
2 Rule 466. Where, prior to the time when an examination
for discovery is being conducted or discovery or inspection of
documents is being obtained or given under these Rules, an
order has been made under Rule 480 that an issue of fact be,
after trial, the subject of a reference, the discovery or inspection
shall not extend to such issue of fact.
With respect we think this reasoning is beside
the point. Whatever might have been possible if
there had been no pre-trial order under Rule
480(1), as to which we express no opinion, there
was such an order in this case. However, neither
that order nor the order of this Court quoted above
constitute an order of reference under Rule
500(1). 3 As we read Rule 501(2) 4 there can be no
order for discovery on a reference until the issues
that are the subject of the reference have been
defined. In our view, such definition should nor
mally take place on an order of reference under
Rule 500(1). In the light of our prior judgment in
this case, such an order can only be given herein
after the plaintiffs have elected as between dam
ages and an account of profits.
•
The appeal will be allowed and the order of the
Trial Division set aside; either party may reapply
for an order under Rule 500(1) once plaintiffs
have made their election. Defendant its entitled to
its costs in both divisions.
3 Rule 500. (1) The Court may, for the purpose of taking
accounts or making inquiries, or for the determination of any
question or issue of fact, refer any matter to a judge nominated
by the Associate Chief Justice, a prothonotary, or any other
person deemed by the Court to be qualified for the purpose, for
inquiry and report.
4 Rule 501. ..
(2) The Court may make such order as seems just for
examination for discovery in respect of any issue that is the
subject of reference.
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.