Date: 20000215
Docket: T-55-97
MONTRÉAL, QUEBEC, THE 15TH DAY OF FEBRUARY, 2000
PRESENT: RICHARD MORNEAU, PROTHONOTARY
Between:
NORMAND PRONOVOST and
RÉJEAN PRONOVOST
Plaintiffs/
Defendants by counterclaim
AND
USITECH NOV. INC.
Defendant
and
ÉQUIPEMENTS GERMAIN INC.
Defendant/
Plaintiff by counterclaim
REASONS FOR ORDER AND ORDER
RICHARD MORNEAU, PROTHONOTARY:
[1] This is a motion by the plaintiffs under Rule 75 of the Federal Court Rules, 1998 (the Rules) that they be allowed to amend their statement of claim to include in their action for infringement of patent number 2,111,546 claims 1 to 19. This action is already addressed to claims 20 to 27 of that patent.
Applicable principles
[2] In regard to the principles applicable to amendments to pleadings, the following passage from Canderel Ltd. v. Canada (1993), [1994] 1 F.C. 3 (C.A.), at page 10, clearly illustrates the distinctly liberal approach the Court ought to display in such matters:
. . . while it is impossible to enumerate all the factors that a judge must take into consideration in determining whether it is just, in a given case, to authorize an amendment, the general rule is that an amendment should be allowed at any stage of an action for the purpose of determining the real questions in controversy between the parties, provided, notably, that the allowance would not result in an injustice to the other party not capable of being compensated by an award of costs and that it would serve the interests of justice.
[3] It could be added to these remarks, by way of backdrop, that in the case of an amendment, as in an application to strike out a pleading, the amendment should be allowed unless it is clear and obvious that the amendment is destined to fail (see Raymond Cardinal et al. v. Her Majesty the Queen, an unreported decision of the Appeal Division of this Court, January 31, 1994, docket A-294-77, Heald, Décary and Linden, JJ.A.).
Analysis
[4] In the case at bar, I am unable to say it is clear and obvious in light of the parties' submissions that the subject matter of the infringement at issue, the Germain bagging machine as it is now known, was disclosed to the public in July and August, 1993 - and thus before the priority date of the patent at issue, September 13, 1993. It is therefore not clear and obvious that the said patent should be considered invalid for that reason, without more.
[5] It is therefore possible to argue at this stage that this patent, and more particularly the independent claim number 1, is valid and that in view of paragraphs 7 and 11 of the affidavit of Louis Germain, dated February 9, 2000, this patent has been infringed.
[6] It seems to me, therefore, that it is in the interest of justice to allow these issues to be included in this case - which is in its initial procedural stages - instead of forcing the plaintiff to opt for a separate proceeding. This amendment does not, to my way of thinking, result in any harm that is prohibited by the Canderel decision, supra.
[7] Accordingly, I authorize the plaintiffs to amend their statement of claim as stated in their amended statement of claim of January 7, 2000 and thereby include claims 1 to 19 of patent number 2,111,546. This amended statement of claim shall be served and filed within four (4) days of this order.
[8] The whole, costs to follow.
Richard Morneau
Prothonotary
Certified true translation
Martine Brunet, LL.B.
Federal Court of Canada
Trial Division
Date: 20000215
Docket: T-55-97
Between:
NORMAND PRONOVOST and
RÉJEAN PRONOVOST
Plaintiffs/
Defendants by counterclaim
AND
USITECH NOV. INC.
Defendant
and
ÉQUIPEMENTS GERMAIN INC.
Defendant/
Plaintiff by counterclaim
REASONS FOR ORDER AND ORDER
FEDERAL COURT OF CANADA
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET NO: T-55-97
STYLE: NORMAND PRONOVOST and
RÉJEAN PRONOVOST
Plaintiffs/
Defendants by counterclaim
AND
USITECH NOV. INC.
Defendant
and
ÉQUIPEMENTS GERMAIN INC.
Defendant/
Plaintiff by counterclaim
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: February 14, 2000
REASONS FOR ORDER OF RICHARD MORNEAU, PROTHONOTARY
DATED: February 15, 2000
APPEARANCES:
Bob Sotiriadis for the plaintiffs/defendants by counterclaim
Marc Gagnon for the defendant/plaintiff by counterclaim
SOLICITORS OF RECORD:
Léger Robic Richard for the plaintiffs/defendants by counterclaim
Montréal, Quebec
Smart & Biggar for the defendant/plaintiff by counterclaim
Montréal, Quebec
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