Docket: T-1269-10
Citation: 2011 FC 1219
BETWEEN:
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LARRY BERTELSEN
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Plaintiff
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and
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AUTOMATED TANK MANUFACTURING INC.
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Defendant
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REASONS
FOR ORDER
O’KEEFE J.
[1]
This
is a motion by the defendant, Automated Tank Manufacturing Inc., appealing the
order of the prothonotary dated February 7, 2011, which allowed the amendment
of the statement of claim.
[2]
The
motion is for an order:
1. Reversing the Amendment Order
in part and directing that paragraphs 9, 10, 11, 12, 13 and 15 of the Thrice
Amended Statement of Claim be struck, without leave to amend.
2. Dismissing the Plaintiff’s
action.
3. Extending the time for the
filing of the statement of defence, if required, to a date that is at least 30
days from the date of the determination of this motion.
4. Awarding costs of this motion,
the motion below and the action to the Defendant.
5. Such further and other order
as this Honourable Court may deem just.
Background
[3]
The
statement of claim issued on August 4, 2010 alleges infringement of Canadian
Patent 2,479,412 (the ‘412 Patent).
[4]
The
statement of claim was amended on August 11, 2010.
[5]
In
September 2010, the plaintiff amended the amended statement of claim by
removing his claim for punitive and exemplary damages.
[6]
The
defendant made a motion to strike the amended amended statement of claim and on
November 26, 2010, the prothonotary struck the paragraphs of the amended amended
statement of claim dealing with the plaintiff’s interests in the ‘412 Patent
and the defendant’s infringement.
[7]
The
prothonotary also ordered that if the defendant did not consent to the
plaintiff filing a further amended statement of claim, the plaintiff was
granted leave to apply to amend the amended amended statement of claim.
[8]
The
plaintiff made the motion to amend the statement of claim and on February 7,
2011, the prothonotary allowed the amendments and the thrice amended statement
of claim (TASOC) is attached to these reasons as Schedule “A”.
Issues
[9]
The
issues as stated by the defendant are:
1. What is the correct
standard of review?
2. Does the purported
description of patent infringement in the TASOC contain the requisite material
facts and/or is it impermissibly speculative?
3. In the alternative,
does paragraph 10 of the TASOC contain sufficient material facts to constitute
a reasonable cause of action for infringement of Claim 2 of the ‘412 Patent?
4. In the alternative,
should paragraph 12 of the TASOC be struck as immaterial and embarrassing?
5. In the alternative,
should the open ended allegations of other patent infringement in paragraphs 10
and 13 of the TASOC be struck?
Analysis and Decision
[10]
Issue
1
What is the correct standard
of review?
As stated by Madam Justice
Sandra Simpson in Harrison v Sterling Lumber Co 2008 FC 220, [2008] FCJ
No 270, at paragraph 7:
The
law is clear that, if the questions raised on a motion before a prothonotary
are vital to the final issue in a case, the decision on those questions should
be reviewed on a de novo basis (see Merck & Co. Inc. v. Apotex
Inc., [2003] F.C.J. No. 1925, 2003 FCA 488 at paras. 18-19).
[11]
In
the present case, the issue deals with the striking of the operative parts of
the statement of claim. In my view, this is a matter that is vital to the final
issue in the case and consequently, I must deal with the matter on a de novo
basis.
[12]
Issue
2
Does the purported
description of patent infringement in the TASOC contain the requisite material
facts and/or is it impermissibly speculative?
This issue simply deals with
whether the plaintiff has pleaded the material facts of the alleged
infringement of the defendant. The defendant submits that the plaintiff has
merely stated the words of the claim to show the alleged infringement.
[13]
The
two key paragraphs of the TASOC that are in issue are paragraphs 9 and 10 which
read:
9. The Defendant has since a
date that is unknown to the Plaintiff but that is as [sic] least as early as
October, 2008 at Kitscoty,
Alberta,
utilized equipment and manufactured, constructed, made and repaired oilfield
storage tanks in manner that utilizes a method:
providing a vertical shaft
extending below ground at a permanent fabrication facility;
suspending an elevator
platform in the shaft by cables, the elevator platform being raised and lowered
in the shaft by winches which control a length of the cables to lower the
elevator platform and raise the elevator platform in the shaft;
providing at least one above
ground work station at the upper end of the shaft;
placing a work piece on a
motor driven rotating turntable on the elevator platform;
activating the motor driven
rotating turntable to rotate the turntable as required during fabrication to
permit workers access to an entire circumference of the work piece without
moving from the at least one above ground work station;
lowering the elevator platform
as each stage of the work piece is completed in order to maintain a desired
working height for workers at the at least one above ground work station; and
raising the elevator platform
and removing the work piece from the elevator platform when fabrication is
complete.
10. The Defendant has, since a date
that is unknown to the Plaintiff but that is as [sic] least as early as
September 12, 2007, constructed or used a fabrication station for a tall
multi-stage work piece including the manufacture, construction, making and
repair of oilfield storage tanks, at 4601-49 Avenue, Kitscoty, Alberta or other
locations unknown to the Plaintiff that includes:
a vertical shaft extending below ground;
an elevator platform suspended by cables
in the shaft, winches being provided to control a length of the cables to lower
the elevator platform and list [sic] the elevator platform in the shaft;
[14]
In
Dow Chemical Co v Kayson Plastics & Chemicals Ltd (1996), 47 CPR 1,
[1967] 1 Ex Cr 71, Mr. Justice Jackett said the following, about pleadings in
patent infringement cases, at page 11:
In
general, under our system of pleading, a Statement of Claim for an infringement
of a right should clearly show
(a)
facts by virtue of which the law recognizes a defined right as belonging to the
plaintiff, and
(b)
facts that constitute an encroachment by the defendant on that defined right of
the plaintiff.
[15]
The
same direction is stated in Rule 174 of the Federal Courts Rules SOR/98-106
which reads:
Every
pleading shall contain a concise statement of the material facts on which the
party relies, but shall not include evidence by which those facts are to be
proved.
[16]
The
prothonotary recognized this principle in the preamble to his November 26, 2010
order in which he struck portions of the statement of claim. He stated at page
3:
A
plaintiff must describe with particularity the right to which he claims to be
entitled and which he alleges has been infringed by the defendant. This is
particularly important in patent infringement actions, which are generally
complex and technical in nature. The allegations proposed by the Plaintiff
relating to infringement by the Defendant simply refer back to the claims in
the patent at issue. Such general allegations are insufficient and cannot be
allowed.
As
was stated by Mr. Justice Jackett in Precision Metalsmiths Inc. v. Cercast
Inc. (1966), 49 C.P.R. 234 (Ex. Ct.) at page 242-243: “It is not a
compliance with the requirement that the material facts be alleged merely to
state the conclusions that the Court will be asked to draw…” The Defendant is
entitled to know with precision what exactly it has done that is alleged to
have infringed the rights of the Plaintiff. Being substantially in agreement with the
written submissions filed on behalf of the Defendant, I conclude that the essential elements
of a cause of action for patent infringement have not been pleaded at
paragraphs 2, 6 and 7 of the Amended Amended Statement of Claim.
[17]
I
have reviewed the amendments proposed by the plaintiff and I am of the view
that paragraphs 9 and 10 with the proposed amendments are in essence a
restatement of the claims of the ‘412 Patent. This, according to the
jurisprudence cited above, is not a proper pleading of infringement. It is plain
and obvious that the pleadings are deficient. They do not plead the facts upon
which a claim for infringement can be based.
[18]
As
a result, the prothonotary should not have allowed the proposed amendments and
erred in so doing. The pleadings relating to the alleged infringement by the
defendant do not make it plain and obvious that a proper cause of action is
disclosed. Consequently, the amendment order of the prothonotary is reversed in
part and paragraphs 9, 10, 11, 12, 13 and 15 of the TASOC are struck without
leave to amend.
[19]
The
plaintiff’s action is dismissed with costs to the defendant.
[20]
The
defendant shall have its costs of this motion, the action and the costs of the
motion below as set by the prothonotary.
“John
A. O’Keefe”
Ottawa,
Ontario
October
25, 2011
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