Docket: T-366-11
(consolidated with T-719-14)
Citation:
2016 FC 109
Ottawa, Ontario, January 29, 2016
PRESENT: The Honourable Mr. Justice Barnes
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BETWEEN:
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CANPLAS
INDUSTRIES LTD.
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Plaintiff
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and
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AIRTURN
PRODUCTS INC. AND
MERIT PRECISION
MOULDING LIMITED
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Defendants
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ORDER AND REASONS
[1]
The Defendants have moved to amend their Second
Amended Statement of Defence and Counterclaim. In support of their defence of
obviousness, they seek to add a prior art reference concerning a product made
by Vent Air, Inc.
[2]
The Plaintiff opposes the amendments on the
ground that the Defendants have not and cannot establish that the Vent Air
product was disclosed to the public before the claim date of February 11, 2002.
[3]
In the absence of an evidentiary foundation, the
Plaintiff contends that the proposed citation is speculative and should not be
permitted. In addition, the Plaintiff has moved to strike all of the
references to the Vent Air product from the expert report of Richard Figliola
and from the Joint Book of Documents.
[4]
The Plaintiff does not assert that this late
amendment would create any prejudice to its ability to respond. It is common
ground that the Vent Air product was disclosed to the Plaintiff in late 2014
and it was made available for inspection to the Plaintiff and its expert
witness in March 2015. The Plaintiff’s expert then dealt with the substance of
the prior art reference in his report of April 30, 2015. In doing so, he
assumed the Vent Air product was publicly available before February 11, 2002.
[5]
The Defendants characterize the Plaintiff’s
position as “technical”. They maintain that, in the absence of any prejudice,
even late amendments are generally permitted in furtherance of the goal “of determining the real questions in controversy between the
parties”: see Canderel Ltd v Canada, [1994] 1 FC 3 at
para 10, 1993 CanLII 2990 (FCA).
[6]
The Plaintiff’s objection to the proposed
amendment is based on the Defendants’ failure to produce particulars of the
public disclosure of the Vent Air product before the claim date. It is clear
that the sample of the product the Defendants produced for inspection was
manufactured several years after the claim date. Although that sample does
reference three United States design patents dating back to the 1980s, none of
those patents discloses the screen that is the innovation claimed by the
Plaintiff. According to the Plaintiff, this evidence is insufficient to prove
the temporal provenance of the Vent Air product. The Plaintiff argues that amendments
should be refused where it is “plain and obvious” that the assertion will not
succeed. A pleading based only on assumptions and speculation will be struck.
Similarly, an amendment that is unsupported by any evidence should be refused.
In support of this argument, the Plaintiff cites Bauer Hockey Corp v Sport
Maska Inc, 2014 FCA 158, [2014] FCJ No 646, Caterpillar Tractor Co v
Babcock Allatt Limited, [1983] 1 FC 487, [1983] FCJ No 528, Terra
Nova Shoes Ltd v Nike Inc, 2003 FC 1053, [2003] FCJ No 1326, and Nidek
Co, Ltd v Visx Inc, 2009 NR 342 (FCAD).
[7]
I do not doubt that, in appropriate
circumstances, a pleading amendment stands to be refused where it is “manifestly incapable of being proven”: see Bauer Hockey,
above, at para 14.
[8]
The same result would be warranted where as in Caterpillar
Tractor, above, at para 11, the moving party admits it has no evidence
to support the impugned allegation or where the allegation is otherwise certain
to fail.
[9]
What distinguishes this case from the above
authorities is that the Defendants are continuing to search for evidence to
establish that the Vent Air product is, in fact, prior art. To refuse the
proposed amendments before trial would be to foreclose that possibility and
exclude from the record what may turn out to be relevant evidence.
[10]
On the other hand, if the Defendants cannot
prove that the Vent Air product is prior art, the allegation and the opinion
evidence it supports will be excluded from the validity analysis. The Court is
quite capable of ignoring an unproven allegation along with an opinion that is
premised on an unsubstantiated assumption.
[11]
It seems to me that the authorities cited by the
Plaintiff need to be read in light of the Federal Court of Appeal decision in Janssen
Inc v Abbvie Corp, 2014 FCA 242, [2014] FCJ No 1082. That decision
teaches that a holistic approach is required. The test stated at paras 7 and
18 is particularly apt in the context of this motion:
[17] In the context of this case, it
would have served the interests of justice that all the relevant prior art be
before the Judge to allow him to fully address the issue of obviousness
especially in a case where Janssen was not on a fishing expedition for “the”
piece of prior art that would support its position. As stated above, the
experts on both sides knew of the existence of the Yawalkar paper. It was
alleged that Dr. Chizzonite, an IL-12 specialist with a purported expertise in
its potential use in treating diseases, was an author of one of the additional
prior art references. Yet, AbbVie had directed Dr. Chizzonite to not address
the Yawalkar paper in his report.
[18] The jurisprudence on amendments
teaches us that no single factor is determinative. The list of factors to be
considered is not exhaustive. This is a balancing exercise and although no
single factor predominates, proper weight has to be given to the relevant
factors applicable to each particular case. In our view, the Judge misapplied
the stated test and failed to give proper consideration to the relevant factors
including the particularity of this case which involves novel technology with
complex scientific and commercial realities going at the heart of the patent
bargain between the inventor and the public. Had the Judge considered all of
the relevant factors and applied them appropriately to the case at hand, he
would have allowed the amendment. Once again, the interests of justice required
that the Judge be in possession of the entire relevant prior art.
[12]
Where a proposed amendment creates no de
facto prejudice, it will almost always be in the interests of justice to
err on the side of allowing it. To decide otherwise is to run the considerable
risk that came to pass in Janssen, above, where a new trial was
required. It is far less disruptive to permit the amendment and to exclude it
from later consideration if it is unproven.
[13]
I will accordingly allow the amendments as set
out in Schedule “A” to the Defendants’ Notice of Motion. The Plaintiff
acknowledges that its motion to strike portions of the Defendants’ expert
reports and certain documents from the Joint Book of Documents is entirely
dependent on the outcome of the Defendants’ motion to amend. In the result, that
motion is dismissed.
[14]
The Defendants will have their costs of the
motions in the amount of $2,500.
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