Date: 20051230
Docket: T-432-05
Citation: 2005 FC 1743
Montréal, Quebec, the 30th
day of December 2005
PRESENT:
RICHARD MORNEAU, PROTHONOTARY
BETWEEN:
IPL
INC.
Plaintiff
(defendant by counterclaim)
and
HOFMANN
PLASTICS CANADA INC.
Defendant
(plaintiff by counterclaim)
REASONS FOR ORDER AND ORDER
[1]
This is a
motion by the plaintiff and defendant by counterclaim (the plaintiff) in an
action for infringement of a patent filed pursuant to Rule 181 of the Federal
Courts Rules (the Rules) for the defendant and plaintiff by counterclaim
(the defendant) to provide further particulars in respect of four paragraphs of
its defence and counterclaim (the defence).
Rules of
law on particulars
|
174. 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.
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174. Tout acte de procédure contient un exposé concis des faits
substantiels sur lesquels la partie se fonde; il ne comprend pas les moyens
de preuve à l’appui de ces faits.
|
|
181.(2)
On motion, the Court may order a party to serve and file further and better
particulars of any allegation in its pleading.
|
181.(2)
La Cour peut, sur requête, ordonner à une partie de signifier et de déposer
des précisions supplémentaires sur toute allégation figurant dans l’un de ses
actes de procédure.
|
[3]
In Glaxo
Canada Inc. v. Department of National Health and Welfare of the Government
of Canada et al. (1987), 15 C.P.R. (3d) 1 (F.C.T.D.), at page 10, Mr.
Justice Rouleau made the following comment on the requirement applicable to
particulars:
Proper pleadings define with precision and
clarity the question in dispute between the litigants. Both parties are
entitled to fair notice of the case which they are bound to meet so that they
may procure evidence relevant to the issues disclosed by the pleadings.
[4]
However, any
request for particulars also seems to be subject to certain limitations. In a
word, before making an order in such a matter, the Court must consider whether
a party has sufficient information to understand the opposing party’s case and
prepare an adequate response, whether that be a defence or reply. (See Astra
Aktiebolag v. Inflazyme Pharmaceuticals Inc. (1995), 61 C.P.R. (3d) 178
(F.C.T.D.), at page 184.)
[5]
In Embee
Electronic Agencies Ltd. v. Agence Sherwood Agencies Inc. et al. (1979), 43
C.P.R. (2d) 285 (F.C.T.D.), at page 287, Mr. Justice Marceau explained the
extent to which a defendant is entitled at the stage of the pleadings to have
particulars about the plaintiff’s evidence. I am of the view that the
following observations by Mr. Justice Marceau may be applied mutatis
mutandis to the request for particulars made by the plaintiff concerning
the defence:
At that early stage, a defendant is
entitled to be furnished all particulars which will enable him to better
understand the position of the plaintiff, see the basis of the case made
against him and appreciate the facts on which it is founded so that he may
reply intelligently to the statement of claim and state properly the
grounds of defence on which he himself relies, but he is not entitled to go any
further and require more than that.
[Emphasis
added.]
Analysis
[6]
The
defendant emphasized from the outset that a strict approach should be taken to
this motion by the plaintiff since the latter did not really support it by an
affidavit setting out why it was not able to give instructions to its counsel
in relation to its reply.
[7]
Although
the point of the defendant is well taken, the absence of affidavit is not
necessarily fatal in every case. As the Court indicated in Covington Fabrics Corp. v. Master Fabrics Ltd. (1993), 48 C.P.R. (3d) 521, at page 522:
The absence of a request and of an affidavit setting out with some
particularity what particulars are required can be waived if the need for
particulars is obvious from the file. That the party cannot plead without the
particular might also be obvious from the file and that the party does not have
the particulars might be assumed in a proper case.
(See also Omark Industries Inc. v. Windsor Machine Co.
Ltd. (1980), 56 C.P.R. (2d) 111, at page 112, at the bottom of the
page.)
[8]
In the
case at bar, I am of the view that the need to obtain the particulars sought is
apparent from the record.
[9]
As to
paragraph 6 of the defence, the plaintiff complained that the defendant
did not disclose the substantive facts on which it relied in denying that there
was an infringement of the patent at issue. In other words, as to
paragraph 6 of the defence, the plaintiff essentially wanted to know what
elements described in the patent are not incorporated in the defendant’s
products.
[10]
Paragraph 6
of the defence reads as follows:
6. Hofmann
Plastics denies that any of the products made, distributed and sold by it in
Canada infringe any of the claims of the ‘225 Patent. In particular, the
Hofmann Plastics products do not have the essential elements of any of the
claims of the ‘225 Patent, as set out in those claims and as described above.
[11]
Paragraph 6
should, however, not be read in isolation, and in this regard said paragraph
refers indirectly to paragraph 5 of the defence, and I would think that
subparagraphs (a) to (c) thereof, in the absence of an affidavit by the
plaintiff to the contrary, identify a sufficient number of elements to enable
the plaintiff to respond intelligently to the defence. Paragraph 5 of the
defence reads:
5. The ‘225
Patent claims a specific tamper-evident container and closure combination with
specific essential elements including at least:
(a)
The
claimed container must consist of a body having a bottom wall and side walls
joined with rounded corners;
(b)
the
claimed container must display a continuous peripheral flange including a
horizontal portion projecting outwardly from the side walls and rounded
corners, said flange being integrally connected to the side walls and rounded
corners; and
(c)
there
must be gap means in the connection of the continuous and integrally-connected
flange at at least one corner of the claimed container to weaken and render
breakable the corner connection.
[12]
Therefore,
paragraph 6 of the defence does not call for further particulars.
[13]
The
plaintiff also took issue with paragraph 9 of the defence, which reads:
9.
In
addition, the 225 Patent is invalid for obviousness in light of the prior art
references cited in the proceeding paragraph and the common general knowledge
of persons skilled in the art.
[14]
The prior
art references to which the defendant refers in paragraph 9 of its defence
are five in number and are listed without particulars at paragraph 8 of
the defence.
[15]
In its
written submissions in opposition to this motion, the defendant argued that the
number of prior art references is thus rather small and the patents in question
are short and straightforward. However, I am not willing to dispense the
defendant from having to give further particulars in relation to said
paragraph 9. On the contrary, I agree with the plaintiff’s request for
particulars and I consider that prima facie the following comments from Machineries
Tenco Ltée v. Weldco-Beales Manufacturing Ltd. (1996), 69 C.P.R. (3d) 78,
at pages 79‑80, should also be followed even though the defendant argued
that the patents here are, in all respects, straightforward and not numerous:
Defendant’s counsel also contended that the invention reflected in each of
the patents relied on in paragraph 17 of the statement of defence is a
simple one and, therefore, no further particularization was required to allow
the Plaintiffs to plead intelligently. I was referred in that regard to the
case of Parker et al. v. G. M. Gest Ltd. et al. (1951), 15 C.P.R. 76, in
which Senior Master Marriott refused to order most of the particulars sought on
the basis that the patent in suit was not of a sufficiently complicated nature
to warrant particularization.
However, as Walsh J. ruled in Bror With, supra, I am not
prepared here to conclude that the inventions relied upon by the Defendant in
paragraph 17 of its statement of defence are “... so simple that the
judgment in the Parker case should be followed” (at 8). In addition, I
am of the opinion that the situation at bar should be governed by the following
comments of Jerome A.C.J. in the case of T.J. Smith & Nephew Ltd. et al.
v. Deseret Canada Inc. et al. (1984), 78 C.P.R. (2d) 227, at 228:
The defendants contend that since the invention is not complex and since
the number of patents is not great, the pleading is sufficient and that the
plaintiffs are not placed under an unreasonable burden. I have recently
canvassed the jurisprudence on the issue of sufficiency of pleadings in the
cases of FMC Corp. et al. v. Canadian Pneumatic Tool Co. (Ltd.) et al.; B
& J Mfg. Co. v. Canadian Pneumatic Tool Co. (Ltd.) et al. and for the
reasons set out there, I must reject the defendants’ contention.
[16]
Therefore,
within 30 days of the date of these reasons for order and order, the
defendant shall provide to the plaintiff with respect to paragraph 9 of
the defence the following particulars:
What elements
of each of the prior art references in paragraph 8 Hofmann relies on in
arguing that Patent 225 is obvious to a person skilled in the art of the invention
described in the said patent.
[17]
Finally,
the plaintiff took issue with paragraphs 10 and 11 of the defence, which
read:
10.
The
225 Patent is also invalid for covetous claiming as the patentee has disclosed
and described one closure and container combination having specific attributes,
but has claimed so as to include closure and container combinations that are
not disclosed or described anywhere in the specification of the 225 Patent.
11. Further, to
the extent that there is an invention disclosed in the 225 Patent, which is
denied, the claims of the 225 Patent are broader than any invention actually
made or disclosed and, therefore, are invalid.
[18]
These
paragraphs in the defence thus refer, without listing them, to elements in the
patent which apparently are not listed in the specification.
[19]
As
to those paragraphs, the defendant submitted that they constitute technical
challenges to the validity of the patent which are based on an interpretation
of the claims.
[20]
I do not
share the defendant’s viewpoint at all.
[21]
In the
case at bar, it is important to bear in mind that, in terms of pleadings, the
defendant is in the position of a plaintiff when the adequacy of its
allegations is to be assessed. As Mr. Justice Addy said in Caterpillar
Tractor Co. v. Babcock Allatt Ltd. (1982), 67 C.P.R. (2d) 135, at
page 137, the defendant’s assertions:
. . . are not mere denials of matters alleged by the plaintiff
and which the latter must prove but, on the contrary, constitute positive
assertions which must be affirmatively proven by the defendant. The latter, in
so far as these assertions are concerned, is in the same position as a
plaintiff would be in seeking to have a patent declared null and void.
(See also on this point Bror With v. Ruko of
Canada Ltd. (1976), 31 C.P.R. (2d) 3, at page 5.)
[22]
In B
& J Mfg. Co. v. Canadian Pneumatic Tool Co. (1984), 77 C.P.R. (2d) 257,
the Court dealt with a request for particulars regarding a defence and
counterclaim in a patent infringement action. In examining the request, Associate
Chief Justice Jerome noted the following , at page 259:
The remaining issues raise questions which
have given this court considerable difficulty in the past. They touch several
defences commonly raised in infringement cases by way of attack upon the
validity of the patent in suit:
(1)
prior use;
(2)
prior publication;
(3)
common general knowledge;
(4)
lack of distinction;
(5)
failure to disclose the distinctive features of the invention
in clear terms;
(6)
the patent claims more than the invention; and
(7)
the invention is inoperative.
The defendants have followed the customary
practice of pleading the defences in language as close as possible to the
statute or jurisprudence, as the case may be. I am frankly somewhat puzzled at
the constant reluctance of counsel to make a more direct connection between
these general defences and the particular issues in suit and, as a matter of
principle and good practice, it seems well established that they ought to be
required to do so. I base that conclusion upon the reasoning of four learned
members of this court as follows.
[23]
The four
judges cited by Associate Chief Justice Jerome were Mr. Justice Jackett in Leithiser
et al. v. Pengo Hydra‑Pull of Canada Ltd. (1974), 17 C.P.R. (2d) 110,
at pages 115 and 116; Mr. Justice Walsh in Bror With, supra; Mr.
Justice Marceau in Mitten et al. v. P. H. Tech Inc. (1982), 63 C.P.R.
(2d) 232, at page 233; and Mr. Justice Mahoney in Omark Industries
Inc., supra, at pages 113 and 114.
[24]
Therefore,
based on these general comments, the defendant is hereby ordered, within
30 days of the date of these reasons for order and order, to provide the
plaintiff further particulars with respect to paragraphs 10 and 11 of the
defence:
What elements claimed in Patent
225 are not described in the specification.
[25]
In
addition, the plaintiff shall file and serve its reply and defence to the
counterclaim within 20 days of receipt of the further particulars here
ordered.
[26]
Costs in
the cause.
“Richard
Morneau”
Certified
true translation
François
Brunet, LLB, BCL
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