Bauer Nike Hockey Inc. v. Easton Sports Canada Inc., 2002 FCT 691

Date: 20020619

Docket: T-237-02

Neutral citation: 2002 FCT 691

Montréal, Quebec, June 19, 2002

Before: Richard Morneau, prothonotary

BETWEEN:

BAUER NIKE HOCKEY INC.

Plaintiff

(cross-defendant)

and

EASTON SPORTS CANADA INC.

Defendant

(cross-plaintiff)

REASONS FOR ORDER AND ORDER

[1]        The case at bar concerns a motion by the plaintiff under Rules 174 and 181(2) of the Federal Court Rules (1998) ("the Rules") asking the Court to order the defendant to provide it with further and better particulars of certain paragraphs in its defence and amended counterclaim ("the defence").

[2]        Sometimes, the purpose of the particulars sought is to fill in an open wording in the defence. In such cases, the plaintiff asks the Court to strike part of the defence.

Rules of law on particulars

[3]        The standards regarding particulars which pleadings should meet are set out in Rules 174 and 181(2) of the Rules. They read as follows:

[4]        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 10, Rouleau J. makes the following comment regarding the requirement applicable for 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 . . .

[5]        However, any request for particulars also appears to be the subject of 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 argument and prepare an adequate reply, whether it may be a defence or a reply. (See Astra Aktiebolag v. Inflazyme Pharmaceuticals Inc. (1995), 61 C.P.R. (3d) 178 (F.C.T.D.), at 184.)

[6]        In Embee Electronic Agencies Ltd. v. Agence Sherwood Agencies Inc. et al. (1979), 43 C.P.R. (2d) 285 (F.C.T.D.), at 287, Marceau J. explained to what extent the defendant is entitled to obtain particulars of the plaintiff's evidence at the pleading stage. I feel that the following comments by Marceau J. may be applied mutatis mutandis to the application for particulars made by the plaintiff regarding 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

[7]        The Court must now review the paragraphs of the defence covered by the plaintiff's motion and see whether in light of the particulars sought it should assist the plaintiff in making its reply to this defence.

[8]        Paragraph 8 of the defence is the first paragraph covered by the motion. It reads:

8.             The Defendant denies that the Plaintiff has suffered damage or that the Defendant has made a profit by any wrongful act and further denies the allegations in paragraph 12 of the Statement of Claim. In fact, any damage suffered by the Plaintiff resulted from its own actions, since its Vapor skates suffered from numerous problems including cracking, discoloration, and discomfort resulting in large returns of goods. The islets pulled out of the quarter material when skates were fitted owing to a lack of reinforcement around the islets (which was later corrected). The "tendon guards" cracked since they tilted forward too much and were too stiff. Players suffered heel spurs as a result of the lack of shaping of the boot arising from the manner in which the quarter was cut. The Plaintiff is uniquely aware of all other reasons for such returns and for dissatisfaction of consumers with the Vapor skates. The Defendant relies on all such reasons for damage to sales and reputation of the Vapor skates, however caused, of which the Plaintiff is aware but of which the Defendant is not yet aware. The Plaintiff's Vapor skates suffered such problems from the time of the first use of the skates, and such problems persisted for approximately two years until the Plaintiff redesigned its Vapor skates to correct these problems.

[My emphasis.]

[9]        The plaintiff objected to the wording underlined above on the basis that it gives rise to an open list of alleged problems and, accordingly, paragraph 8 is not limited as it should be to a list of facts currently known to the defendant.

[10]      I agree with the plaintiff's position. Consequently, the defendant must list all the problems of which it is aware having to do with the plaintiff's Vapor skates and strike out from the said paragraph 8 the portions underlined above.

[11]      However, the Court notes the statement by counsel for the plaintiff that he will not object at the examination for discovery stage to counsel for the defendant questioning his representative about any other problem not so far known to the defendant.

[12]      Paragraph 10(c) of the defence is the next paragraph covered by the plaintiff's motion. That paragraph reads as follows:

10(c)         The alleged invention was on sale prior to the relevant claim date or dates, by way of the skates, disclosures and publications listed in Schedule II hereto and the Plaintiff's Vapor skate. With respect to the Plaintiff's Vapor skate, the skate was offered for sale, sold, and used publicly prior to September 4, 1997 and thereafter. In particular, the Vapor skate was disclosed by the Plaintiff at a hockey event in St. Jerome, Quebec at the Arena Melancon in August, 1997, to NHL players including Mike Peca, Eric Lindros, Adam Graves, Chris Gratton, Martin Lapointe, and Wendell Clark. The players wore the skates and were photographed doing so. The players thereafter continued using the Vapor skates publicly and the Plaintiff's Fall 1997 catalogue was shortly thereafter published, whereupon the skates were offered for sale and sold to the general public. Further particulars of such offers for sale, sales and public uses of the Plaintiff's Vapor skates are currently not known to the Defendant, but are known to the Plaintiff. The Defendant relies upon all such offers for sale, sales and public uses.

[13]      For the same reasons as with paragraph 8, the defendant must list all the events in which in its submission the plaintiff's skates were disclosed and all the players to whom such disclosure was made. The defendant will strike the portions underlined above from paragraph 10(c). Here also, as with paragraph 8, counsel for the plaintiff does not intend to limit the examination for discovery which the defendant may carry out on account of the portions ordered struck at this time.

[14]      In view of the amendments to be made to paragraph 10(c), paragraph 10(d) of the defence needs no further amplification.

[15]      Paragraph 10(e) of the defence reads as follows:

The alleged invention was obvious as of the relevant claim date or dates and did not involve any inventive step having regard to the prior knowledge referred to above and disclosures listed in Schedules I and II hereto and the common general knowledge of those skilled in the art to which the invention is directed. The patents and printed publications are short and easy to read, in particular given the drawings illustrating the invention in each case, and the essence of their teachings has been set out above with respect to sub-paragraph 10(b).

[16]      On this paragraph, the plaintiff is asking the defendant to "specify on which portions of the patents listed in Schedule I, and of the printed publications listed in Schedule II, Easton relies".

[17]      I agree with such a request and I consider that the situation should once again be governed by the following comments, taken from Machineries Tenco Ltée v. Weldco-Beales Manufacturing Ltd. (1996), 69 C.P.R. (3d) 78, at 79-80, comments which apply although the defendant strenuously argued that the patents and publications at issue here are in all respects straightforward:

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.

[18]      The next paragraph of the defence at issue is paragraph 10(f), and the portion that concerns us here is set out below:

The specification of the Patent fails to fully describe the invention and its operation or use as contemplated by the inventors. Further, it does not particularly indicate and distinctly claim that part improvement or combination which is claimed as the invention. The specification therefore does not comply with the provisions of Section 27(3) of the Patent Act by reason of the facts set out in this clause (f) and in clause (j) below. Further, the claims fail to state distinctly and in explicit terms the subject matter of the invention for which an exclusive property or privilege is claimed, contrary to Section 27(4) of the Patent Act. In particular:

[...]

[19]      On this paragraph, I agree with the written submissions made by the plaintiff asking to be given the following information and remedies which it lists in its notice of motion as follows:

(i)            specify which elements of the invention and of its operation or use are allegedly not fully described in the specification;

(ii)           specify which part improvement or combination claimed as the invention is allegedly not indicated and distinctly claimed in the specification;

(iii)          specify on what other grounds the claims of the '953 patent allegedly fail to state distinctly and in explicit terms the subject matter of the invention, and strike out the expression "in particular";

[20]      Paragraphs 10(g), (h) and (i) will not require further particulars as requested by the plaintiff in its notice of motion, since the defendant undertook to amend its defence so that each of the said paragraphs uses the phrase "by reason of all the facts".

[21]      The particulars hereby ordered shall be provided by the filing of a re-amended defence which shall also include the deletions mentioned in these reasons. Such re-amended defence shall be served and filed within 20 days of this order. The reply and defence to the counterclaim shall be served and filed by the plaintiff within 20 days of service of the re-amended defence.

[22]      Costs on the instant motion are awarded to the plaintiff. The plaintiff's motion is otherwise dismissed.

Certified true translation

Suzanne M. Gauthier, C. Tr., LL.L.

                          FEDERAL COURT OF CANADA

                                       TRIAL DIVISION

                                SOLICITORS OF RECORD

FILE:                                                T-237-02

STYLE OF CAUSE:                      BAUER NIKE HOCKEY INC.

Plaintiff

(cross-defendant)

and

EASTON SPORTS CANADA INC.

Defendant

(cross-plaintiff)

PLACE OF HEARING:              Montréal, Quebec

DATE OF HEARING:                  June 10, 2002

REASONS FOR ORDER BY: RICHARD MORNEAU, PROTHONOTARY

DATED:                                           June 19, 2002

APPEARANCES:

François Guay                                                                  for the plaintiff (cross-defendant)

Gordon Zimmerman                                                           for the defendant (cross-plaintiff)

SOLICITORS OF RECORD:

Smart & Biggar                                                                 for the plaintiff (cross-defendant)

Montréal, Quebec

Borden Ladner Gervais                                                     for the defendant (cross-plaintiff)

Toronto, Ontario