Cabot Safety Intermediate Co. v. Minnesota Mining and Manufacturing Co., docket T-385-00

Date: 20000915

Docket: T-385-00

MONTREAL, QUEBEC, THIS 15^th DAY OF SEPTEMBER 2000

PRESENT: RICHARD MORNEAU, ESQ., PROTHONOTARY

Between:

     CABOT SAFETY INTERMEDIATE CORPORATION

     AEARO COMPANY

     and

     AEARO CANADA LIMITED

     Plaintiffs

     AND

     MINNESOTA MINING AND MANUFACTURING COMPANY

     and

     3M CANADA COMPANY

     Defendants

     Motion on behalf of Plaintiffs for:

A.      An Order declaring that the Defendants have not fully complied with the Order of Prothonotary Richard Morneau dated June 27, 2000 in the action;

B.      An Order directing that the Defendants, within fifteen (15) days, either admit the allegations contained in subparagraphs 34.8, 34.13, 34.14, 34.16 and 34.17 of the Statement of Claim or state the material facts upon which they rely to deny the allegation, failing which the Defence could be struck out upon a further application by the Plaintiffs;

C.      An Order striking the following words from paragraph 12 of the Further Amended Statement of Defence;

"or, the words "generally hemispherical" contained in the patent at issue are vague and ambiguous since to apply to the Defendants' earplugs these words must mean something other than as set out in paragraph 10 above, hence the patent at issue is invalid."

D.      An Order directing that the Defendants serve and file an amendment to their Further Amended Statement of Defence complying with paragraphs B and C above within fifteen (15) days;

E.      An Order extending the time allowed for the Plaintiffs to serve and file their "Reply to the Statement of Defence" to thirty (30) days after the Defendants comply with the Order to be rendered herein;

F.      The costs of this motion in any event of the cause payable forthwith; and

G.      Such other relief as to this Court may seem just.

     REASONS FOR ORDER AND ORDER

RICHARD MORNEAU, ESQ., PROTHONOTARY:

[1]      This motion by the Plaintiffs deals with whether or not the Defendants' Further Amended Statement of Defence complies with the Order of this Court dated June 27, 2000 by which the Defendants were ordered to provide the following particulars:

1.      With respect to paragraph 9 of the Amended Statement of Defence, the Defendants are ordered to either admit the allegations contained in each of the subparagraphs of paragraph 34 of the Statement of Claim or state the material facts upon which they rely to deny the allegation.

2.      As to paragraph 12 of the Amended Statement of Defence, the Defendants shall identify what portion of the term "generally hemispherical" is ambiguous and why.

[2]      In paragraph 9 of the Further Amended Statement of Defence, the Defendants' allegations in respect of two of the subparagraphs of paragraph 34 of the Statement of Claim - 34.8 and 34.13 - are that the subparagraphs are "not known". I agree that this is neither an admission nor a statement of material facts upon which the subparagraphs are denied. As presently framed, these subparagraphs do not present an acceptable form of pleading. Finally, there is no evidence here that the Defendants need to perform tests in order to plead better. In this regard, the June 27 Order has not been complied with.

[3]      Paragraph 9 of the Further Amended Statement of Defence also includes denials of subparagraphs 34.14, 34.16 and 34.17 of the Statement of Claim in which the denials are based on the Defendants' failure to understand a term used in the subparagraphs in question. I am prepared to accept that failure to understand a claim in the patent or a term in the patent which is not defined is a material fact which supports a denial. With respect to those subparagraphs, the Further Amended Statement of Defence need not be corrected.

[4]      Paragraph 12 of the Further Amended Statement of Defence has been amended to read as follows:

12.      Therefore, either the Defendants' earplugs do not infringe the patent at issue or, the patent at issue is invalid as not being patentable over the Henderson patent or the Fling patent, or both, which had been issued more than two years before the application was filed for the patent at issue or, the words "generally hemispherical" contained in the patent at issue are vague and ambiguous since to apply to the Defendants' earplugs these words must mean something other than as set out in paragraph 10 above hence the patent at issue is valid.

[5]      The wording added in the Further Amended Statement of Defence is indicated by double underlining.

[6]      I agree that this added wording does not identify what portion of the term "generally hemispherical" is ambiguous and why, as required by the June 27 Order. I do not agree with the Defendants that as presently drafted paragraph 12 presents a "Gillette style defence" (see Gillette Safety Razor Co. v. Anglo-American Trading Co. (1913), 30 RPC 465).

[7]      For the above reasons, it is hereby ordered that:

    

A.      The Defendants, within fifteen (15) days, shall either admit the allegations contained in subparagraphs 34.8 and 34.13 of the Statement of Claim or state the material facts upon which they rely to deny the allegation, failing which the Defence could be struck out upon a further application by the Plaintiffs.

    

B.      The following words from paragraph 12 of the Further Amended Statement of Defence are struck:

"or, the words "generally hemispherical" contained in the patent at issue are vague and ambiguous since to apply to the Defendants' earplugs these words must mean something other than as set out in paragraph 10 above, hence the patent at issue is invalid."

    

C.      The Defendants shall serve and file an amendment to their Further Amended Statement of Defence complying with paragraphs A and B above within fifteen (15) days of the date of the instant Order;

    

D.      The time allowed for the Plaintiffs to serve and file their "Reply to the Statement of Defence" is extended to thirty (30) days after the Defendants comply with the instant Order;

E.      Costs of this motion to the Plaintiffs in any event of the cause.

Richard Morneau

     Prothonotary

     FEDERAL COURT OF CANADA

     NAMES OF COUNSEL AND SOLICITORS OF RECORD

COURT NO.:

STYLE OF CAUSE:

T-385-00

CABOT SAFETY INTERMEDIATE CORPORATION

AEARO COMPANY and

AEARO CANADA LIMITED

     Plaintiffs

AND

MINNESOTA MINING AND MANUFACTURING COMPANY and

3M CANADA COMPANY

     Defendants

PLACE OF HEARING:Montreal, Quebec

DATE OF HEARING:September 11, 2000

REASONS FOR ORDER BY RICHARD MORNEAU, ESQ., PROTHONOTARY

DATE OF REASONS FOR ORDER:September 15, 2000

APPEARANCES:

Mr. Brian Daley

for the Plaintiffs

Ms. Elizabeth Valentina

for the Defendants

SOLICITORS OF RECORD:

Ogilvy Renault Montreal, Quebec

for the Plaintiffs

Sim, Hughes, Ashton & McKay Toronto, Ontario

for the Defendants