Date: 20030430
Docket: T-18-03
Citation: 2003 FCT 537
Ottawa, Ontario, this 30th day of April, 2003
Present: THE HONOURABLE JOHANNE GAUTHIER
BETWEEN:
GENERAL ELECTRIC COMPANY and
GE WIND ENERGY LLC
Plaintiffs
- and -
WIND POWER INC. and ENERCON GMBH
Defendants
REASONS FOR ORDER AND ORDER
[1] This is an appeal of the order of Prothonotary Aronovitch dated April 1, 2003, denying part of the defendants' motion for particulars. In particular, Prothonotary Aronovitch denied the request for particulars concerning paragraphs 13 and 14 of the statement of claim. The appeal is concerned only with that part of her order.
[2] The parties agreed that this order should not be disturbed on appeal unless the defendants convince the Court that it was wrong, in the sense that the exercise of the discretion was based upon wrong principles or a misapprehension of the facts or of the law or because it raises questions vital to the final issue of the case [Canada v. Aquagem Investments Ltd. (1993) 2 F.C. 425 at 463 (C.A.)]. Only in such cases will the Court exercise its discretion de novo.
[3] It has not been argued that this order could be vital to the final issue in this case.
[4] What has been argued is that Prothonotary Aronovitch ignored the case law with respect to the need to plead all material facts and based her decision on an erroneous principle of law.
[5] The defendants noted that Prothonotary Aronovitch gave no reason to support her order. She referred to the written and oral submissions of the parties. As mentioned by Justice Layden-Stevenson in Pharmaceutical Partners of Canada v. Faulding (Canada) Inc. 2002 FCT 1010; [2002] F.C.J. 1305 (QL) (at para.9), this "does not mean that the test set out in Aqua Gem, supra, does not apply. Absent an error by the prothonotary as set out in Aquagem, the Court will not exercise its discretion de novo: Anchor Brewing Co. v. Sleeman Brewing & Malting Co. (2001), 15 C.P.R. (4th) 63 (F.C.T.D.)."
[6] It is important to note that the parties agreed on some general principles applicable to motions for particulars. There is no dispute that the purpose of particulars is properly set out in Gulf Can v. The Mary MacKen (1984) 1 F.C. 884 at 889 (F.C.A.) and that, prior to the filing of the statement of defence, the main issue is to enable the defendants to plead. It is also agreed that to comply with the Rules of this Court in patent infringement actions, the statement of claim must set out: (a) facts from which it follows that the plaintiff has the exclusive right to do certain things, or in other words, the essential features which the defendant is alleged to have taken, (i.e. specific elements of the invention); and (b) facts that constitute an encroachment by the defendant on the plaintiff's rights, i.e. what the defendant has done that the plaintiff has the exclusive right to do.
[7] In the circumstances, the Court is entitled to assume that the Prothonotary also referred to and applied those principles. Where the parties really disagree is on how one should apply those general principles to this particular case.
[8] For the plaintiffs, and presumably for Prothonotary Aronovitch, the statement of claim as completed by the particulars ordered by Prothonotary Aronovitch and filed on April 2, 2003, was adequate in that it contains all the material facts necessary to enable the defendants to file a meaningful defence (i.e. those facts referred to in paragraph 6 above).
[9] The defendants argue that the specific particulars requested with respect to paragraphs 13 and 14 are related to the defendants' understanding of what, in the various functions of the respondents' variable speed wind turbines, is alleged to infringe Canadian Patent 2,100,672 (the '672 Patent). They are therefore material, necessary and not within their knowledge.
[10] Paragraph 13 of the statement of claim states:
The Enercon variable speed wind turbines of the type identified above come within the scope of at least claims 53 to 58 and 60 of the '672 Patent.
[11] Pursuant to the order of Prothonotary Aronovitch, the plaintiffs have now clearly indicated which wind turbine models made by the defendants come within this paragraph and have clarified that they limit their allegation to the 7 claims described in paragraph 13 of the statement of claim. The Patent contains 60 claims.
[12] The plaintiffs still seek what they simply describe as the material facts supporting the allegation of infringement with respect to each model and each claim alleged to be infringed.
[13] The use of the expression "material facts" to circumscribe the further information required by the defendants is not very helpful since the whole debate is whether or not there are additional material facts required to enable the defendants to plead. The defendants did not give any illustration of what this would encompass exactly. Clearly, the rights infringed are sufficiently described. Thus it must relate to what facts constitute an encroachment by the defendants.
[14] Paragraph 14 of the statement of claim appears to further particularize paragraph 13 in that respect. Thus, the particulars requested by the defendants in respect of this allegation may illustrate what type of details the defendants are indeed looking for.
[15] Paragraph 14 of the statement of claim states:
The Enercon variable speed wind turbines of the type identified above, in use, convert electricity generated by a variable speed turbine into fixed frequency output electricity. The variable speed turbine includes a generator and means for applying generated electricity to a power converter. The power converter includes a switched inverter which supplies the output electricity. The method for converting electricity comprises the following steps:
i) Forming a reference waveform;
ii) Rotating the reference waveform by a selected power factor angle to yield a template waveform;
iii) Using the template waveform to define desired output currents; and
iv) Controlling the switched inverter to produce output current corresponding to the desired output currents.
[16] The defendants submit that they need to know with respect to each of the allegedly infringing models:
(a) The characteristics of the reference waveform allegedly formed and how it is within the scope of the '672 patent.
(b) If a reference waveform is formed, the manner in which it is used to yield a template waveform and how this is withing the scope of the '672 patent and, in particular, the manner in which the alleged reference waveform is rotated in a manner which is within the scope of the '672 patent.
(c) If such a template waveform is yielded, the manner in which it is used to define desired output currents and how this is within the scope of the '672 patent.
(d) The manner in which the alleged switched inverter is controlled to produce output currents and how this is within the scope of the '672 patent.
[17] The Court agrees with the plaintiffs that at this stage the additional details requested with respect to paragraph 14 do not even appear to be relevant to the infringement alleged. For example, how would it be relevant and material to know the characteristic of the wave form used by the defendants when the monopoly alleged in the proceedings is not limited to a particular wave form. The affidavit evidence put forward by the defendants is completely silent in that respect and the defendants could not help the Court at the hearing.
[18] The defendants argue that there are decisions from this Court stating that one cannot simply use the language of the claims to describe the acts of the defendants and, if one does, the statement of claim does not meet the standard required by the Federal Court Rules, 1998. The Court finds that this is not a hard and fast rule. Each case must be assessed on its own facts, the evidence presented, and the exact wording of the patent and the statement of claim.
[19] There are instances where the wording of the claim is such that it can be used as a model to describe exactly what the defendant has done that constitutes an encroachment of plaintiff's right. Here, the defendants are told that each of the models identified by the plaintiffs includes a generator that applies generated electricity to a power convertor which includes a switched inverter supplying the output electricity. The plaintiffs further state how these turbines convert their electricity, referring to the main functions or steps used by the defendants. The plaintiffs will have to prove those facts at trial but the defendants are not entitled to seek details of the evidence that will be adduced in that respect through a request for particulars.
[20] The affidavit evidence filed by the defendants does not tell the Court how this factual description of the defendants' turbines will be insufficient to enable them to plead or how the statement of claim fails to inform them of the method used to encroach on the plaintiffs' right.
[21] Finally, the Court notes that there is evidence that the parties have been involved in other proceedings dealing with the '672 Patent and the defendants' wind turbines in the United Kingdom and in the United States. The defendants are also involved in opposition proceeding seeking to impeach the plaintiffs' corresponding European Patent.
[22] It also appears from paragraph 15 of the statement of claim that such litigation has been going on for quite some time. The defendant Enercon's turbine model A40 was allegedly held to infringe the U.S. Patent No. 5083039 corresponding to the '672 Patent by the United States International Trade Commission back in October 28, 1996, and these findings would have been upheld on appeal by the U.S. Court of Appeal for the Federal Circuit.
[23] In view of the foregoing, the Court is not satisfied that the Prothonotary was clearly wrong in her appreciation that the statement of claim as particularized in accordance with her order of April 1, 2003, was adequate and enabled the defendants to file an appropriate defence.
[24] The Court also adds that, had it exercised its discretion de novo, it would have done so in the same manner as did the Prothonotary.
[25] The defendants stated that, should this Court dismiss their motion, they will need only five (5) days to complete their statement of defence. The defendants shall have those five (5) days from the date of this order and the delay fixed by the Prothonotary will be prolonged accordingly.
ORDER
IT IS ORDERED that:
1. The motion is dismissed with costs. The defendants shall file their statement of defence within five days of the date of this order. The order of Prothonotary Aronovitch is amended accordingly.
"Johanne Gauthier"
Judge
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-18-03
STYLE OF CAUSE: General Electric Company et al. v. Wind Power Inc. Et al.
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: April 24, 2003
REASONS FOR ORDER: Gauthier J.
DATED: April 30, 2003
APPEARANCES:
Colin B. Ingram FOR PLAINTIFFS
Julie Desrosiers FOR DEFENDANTS
SOLICITORS OF RECORD:
Smart & Biggar FOR PLAINTIFFS
1500 - 3438 University Avenue
Toronto, ON M5G 2K8
Fasken Martineau DuMoulin LLP FOR DEFENDANTS
3400 - 800 Place Victoria
Montréal, Québec H4Z 1E9