Date: 20080819
Docket: T-444-08
Citation: 2008
FC 957
Vancouver, British
Columbia, August 19, 2008
PRESENT: The Honourable Mr. Justice Mosley
BETWEEN:
PEERLESS
LIMITED
Plaintiff
Defendant by Counterclaim
and
ASPEN CUSTOM TRAILERS INC.
and
ASPEN TRAILER COMPANY LTD.
Defendants
Plaintiffs by Counterclaim
REASONS FOR ORDER AND ORDER
[1]
The defendants,
plaintiffs by counterclaim, Aspen Custom Trailers Inc. and Aspen Trailer
Company Ltd. (“Aspen”), seek an order requiring the plaintiff, defendant by counterclaim,
Peerless Limited (“Peerless”), to provide particulars regarding material facts
alleged in paragraphs 3 and 4 of the plaintiff’s Reply and Defence to
Counterclaim, failing which the paragraphs are to be deemed struck out.
[2]
This
motion arises in the context of an action for patent infringement. Peerless
alleges that Aspen has infringed its Canadian
Patent 2,402,741 through the manufacture, use and sale of heavy vehicle trailer
suspensions (the “Aspen Suspension”) as described in the patent. Aspen denies the allegations and, among other
things, alleges that the patent is invalid by virtue of public disclosure of
the subject-matter within the meaning of section 28.2 of the Patent Act,
R.S.C. 1985, c. P-4.
[3]
In its
Reply and Defence to Counterclaim, Peerless asserts that the first public
disclosure of the invention was made by it on September 13, 2001, by
the sale of a trailer incorporating the patented suspension system. The
following claims are asserted in paragraphs 3 and 4:
3. The Defendants, Plaintiffs by
Counterclaim, became aware of the Patented suspension of the Plaintiff,
Defendant by Counterclaim, at a time presently unknown to the Plaintiff,
Defendant by Counterclaim, but known to them and before the first public
disclosure of the Aspen Suspension in late 2001 or early January, 2002.
4. The Plaintiff, Defendant by
Counterclaim, states that, at the time of the first public disclosure of the
Aspen Suspension by the Defendants, Plaintiffs by Counterclaim, said
Defendants, Plaintiffs by Counterclaim, has obtained knowledge directly or
indirectly of the invention from the Plaintiff, Defendant by Counterclaim.
[4]
By letter
dated July 16, 2008, Aspen requested particulars with
respect to paragraphs 3 and 4 of the Reply and Defence to Counterclaim.
Regarding paragraph 3, Aspen sought particulars of how,
where and under what circumstances the defendants allegedly became aware of the
patented suspension before the first public disclosure of the Aspen Suspension.
As to paragraph 4, Aspen asked for particulars of the
means, location, date and circumstances in which such knowledge was allegedly
obtained.
[5]
Peerless’
initial response to the request is dated July 29, 2008, the same day as the
filing of this motion. It describes the delivery of Peerless trailers using the
patented suspension system to customers in Alberta in the fall of 2001 and alleges that
representatives of Aspen attended at the premises of
those companies “or at other locations” and examined Peerless trailers during
that period. The response also states that “the Reply and Defense to
Counterclaim alleges that information was acquired by Aspen at other times and
by other means concerning the invention not presently known to Peerless but
particulars of such information are within the knowledge of Aspen.”
[6]
A further
response to Aspen’s request for particulars was provided by Peerless on August 11,
2008, in which it was alleged that Aspen representatives visited the premises
of a named trucking company in Red Deer, Alberta, in December 2001 and
examined a Peerless trailer. It is asserted that it is believed that one of the
representatives was the President of the Aspen companies.
[7]
Aspen’s evidence on this motion
consists of an affidavit by a legal secretary which states that she was
informed by a Vice President of the defendants’ companies that they “do not
know on which material facts the plaintiff relies in its allegations in
paragraphs 3 and 4 of the Reply and Defence to Counterclaim.” In my view, such
an affidavit is of little or no value as the secretary has no direct knowledge
of the facts and the company official who presumably does is shielded from
cross-examination. It is insufficient to establish that the information sought
is not within the knowledge of the defendants.
[8]
Aspen submits that the allegations
contained in the Reply and Defence to Counterclaim are open ended and that it
is plain on the face of the pleading that particulars are required. In such
circumstances, evidence is not required to support the motion: DePalma v.
Bauer Nike Hockey Inc., [2003] F.C.J. No. 949 at paragraphs 5 and 6.
Moreover, Aspen submits that it is not an
appropriate defence against particulars for the plaintiff to say that the
information requested is within the knowledge of the defendants: Contour
Optik Inc. v. Hakim Optical Laboratory Ltd., [2001] F.C.J. No. 274 at paragraph
8.
[9]
The plaintiff’s
position is that the defendants know the case that they have to meet, that
Peerless has provided the best information it presently possesses as to the
circumstances in which the defendants learned of the invention by examining
trailers sold to the plaintiff’s customers. The defendants are in a
superior position to know when and under what circumstances they first examined
one of the plaintiff’s suspension systems and it is impractical to require such
information from the plaintiff prior to documentary and oral discovery: Linden
Fabricating and Engineering (Prince George) Ltd. v. Équipement Hydraulique
Boréal Inc., 57 C.P.R. (3rd) 89 at 90.
[10]
The issue
is the adequacy of the pleading. The defendants contend that particulars are
necessary at this stage of the proceeding to enable them to adequately plead to
the Defence to Counterclaim and to prepare for trial. They are quite properly
seeking to limit the plaintiff to allegations which it may or may not be able
to obtain evidence to substantiate. But an applicant for particulars is only
entitled to learn the nature of the case and not the way in which it is to be
proven: see Cremco Supply Ltd. v. Canada Pipe Co. (c.o.b. Bibby Ste-Croix
Foundries) [1998] F.C.J. No 435 at paragraph 16.
[11]
The facts
in Contour Optik, above, differ from those of the present motion. In
that case the impugned paragraphs of the Defence for which particulars were
claimed contained a long list of allegations that the patent at issue was
invalid unsupported by any assertions of material facts.
[12]
Here, the plaintiff
has pleaded material facts as to how the defendants obtained knowledge of the
subject-matter. These events occurred more than six years ago and it is to be
expected that details of when and where that occurred may be difficult to
obtain. In an analogous context, Justice Dubé in Linden Fabricating,
above, held that it was premature to require particulars of the customers
to whom the defendants had sold an allegedly infringing product prior to
discovery and that, in any event, the defendants were in a far better position
to have that knowledge. Similarly, I conclude that the defendants know the case
they have to meet and do not require particulars from the plaintiff in order to
plead to the Defence to their Counterclaim.
[13]
The defendants
seek leave to file a Reply to the Defence to Counterclaim if the motion is
dismissed as the time limit for such filing was July 25, 2008. The plaintiff
has not opposed the grant of an extension and I see no reason to deny it. While
the plaintiff has been successful on the motion, the costs should follow the
cause as the filing of the motion effectively produced the result sought by the
defendants.
ORDER
THIS COURT ORDERS that:
- the defendants’ motion for
particulars is dismissed;
- the defendants’ are granted leave to
file a Reply to the Defence to Counterclaim within 15 days of the
date of this Order; and
- costs of the motion will be in the
cause.
“Richard
G. Mosley”
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