Date: 19990602
Docket: T-1868-98
BETWEEN:
DENHARCO INC.
Plaintiff
(defendant by counterclaim)
and
FORESPRO INC.
Defendant
(plaintiff by counterclaim)
REASONS FOR ORDER
DUBÉ J:
[1] The plaintiff seeks an order that particulars be provided in respect of certain paragraphs of the defendant's defence and counterclaim and more specifically paragraphs 19, 20, 21, 22, 23, 28, 29, 30, 31 and 32. The plaintiff's action in question is a patent infringement case involving two patents which relate to forestry equipment and in particular tree delimbers.
1. The law and the jurisprudence
[2] Rule 174 of the Federal Court Rules, 1998 stipulates that 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. Rule 181 provides that a pleading shall contain particulars of every allegation and that, on motion, the Court may order a party to serve and file further and better particulars.
[3] The Federal Court of Appeal in Gulf Canada Limited v. The "Mary Mackin"1 has adopted the enumeration of the six functions of particulars as set out in the Supreme Court Practice, 1982, Vol. 1, page 318 as follows:
| (1) to inform the other side of the nature of the case they have to meet as distinguished from the mode in which that case is to be proved . . . . |
| (2) to prevent the other side from being taken by surprise at the trial . . . . |
| (3) to enable the other side to know what evidence they ought to be prepared with and to prepare for trial . . . . |
| (4) to limit the generality of the pleadings . . . . |
| (5) to limit and decide the issues to be tried, and as to which discovery is required . . . . |
| (6) to tie the hands of the party so that he cannot without leave go into any matters not included . . . . |
[4] The jurisprudence has established that it is not sufficient in a pleading to set out the legislation involved and it is not acceptable to simply plead a conclusion of law without pleading the facts upon which the allegation rests2. Where lack of novelty or obviousness are alleged, the mere reference to a list of patents or other publications is insufficient. The party pleading novelty or obviousness must specify the exact particulars of these documents which are referred to in the allegations3.
[5] Section 34 of the Patent Act4 ("the Act") stipulates what description and explanations an applicant shall include in the specification of his invention5. There are five specific requirements under subsection 34(1). Subsection 34(2) provides that the specification referred to in subsection 34(1) shall end with a claim or claims stating distinctly the combinations that the applicant regards as new. Where a defendant relies on the operation of section 34 as a ground for invalidating a patent it must provide particulars as to the portions of the claims and the descriptions which support the allegations. It is not good enough to merely allege that the plaintiff has failed to do certain things as required.
2. The allegations and particulars in issue
[6] In paragraphs 19 and 28 of his pleadings the defendant alleges that claims 1 to 5 of both patents are invalid pursuant to the aforementioned subsection 34(2) of the Act as they are ambiguous and do not state distinctly and in expressive terms the object of the invention. That pleading is not sufficient. The defendant must show in what respect the specific elements of the claim are ambiguous and provide a factual basis.
[7] In paragraphs 20 and 29 the defendant alleges that claims 1 to 5 of the patents claim more than what is described in the description but provides no particulars as to the matter alleged to be claimed but not described in the description. More specific facts are needed to allow the plaintiff to file its reply.
[8] In paragraphs 21 and 30 the defendant alleges that claims 1 to 5 of the patents claim more than what the inventor invented without providing any particulars as to exactly what was not invented by the inventor but appears in the claims. Clearly, more particulars are needed.
[9] In paragraphs 22 and 31 the defendant alleges that the patents are invalid in that they do not comply with subsection 34(1) of the Act without providing any particulars whatsoever as to where and how the description fails to correctly and fully describe the invention. The defendant must show in what respect the description fails to describe the invention.
[10] In paragraphs 23 and 32 the defendant alleges that the patents are invalid in that they do not describe the best mode for carrying out the invention but said paragraphs do not provide any particulars with respect to the manner in which the description fails to describe the best mode. More particulars are required.
3. Disposition
[11] Returning now to the broadly accepted functions of particulars as set out in the Supreme Court Practice, the defendant, in my view, may not limit his allegations to general terms, or to borrowing the language of the legislation and follow it with a bald statement that the other party has not fulfilled the requirements of the legislation. Generally, the functions of particulars is to prevent the other side from being taken by surprise and thus to inform it of the nature of the case it has to meet so as to better prepare itself for trial. The particulars also compel the parties to circumscribe their case within a limited field. At times, the Court is perplexed as to why the parties persist in holding their cards so close to their chest. Eventually, they will have to come clean, either at discovery or at the trial. So why not do it now so as to expedite the litigation and to better husband their resources as well as those of the Court?
[12] Consequently, the defendant shall provide more and better particulars in respect of paragraphs 19, 20, 21, 22, 23, 28, 29, 30, 31 and 32, within 30 days from this date.
[13] The defendant has already undertaken to provide answers in respect of paragraphs 17, 18, 26 and 27. The defendant asks for 45 days. The plaintiff wants the answers within 14 days. The Court orders production within 30 days.
[14] The plaintiff has withdrawn its demand with respect to paragraph 25(b).
OTTAWA, ONTARIO
June 2 , 1999
Judge
__________________2 Cremco Supply Ltd. v. Canada Pipe Co. (1998), 79 C.P.R. (3d) 84 (F.C.T.D.) at p. 89 and B & J Manufacturing Co. v. Canadian Pneumatic Tool Co. Ltd. (1984), 77 C.P.R. (2d) 257 (F.C.T.D.) at p. 259.
3 Machineries Tenco Ltée v. Weldco-Beales Manufacturing Ltd. (1997), 69 C.P.R. (3d) 78 (F.C.T.D.) at p. 79; Wellcome Foundation Ltd. v. Novopharm Ltd. (1992), 44 C.P.R. (3d) 456, at pp. 458-459; Mitten v. P.H. Tech Inc. (1982), 63 C.P.R. (2d) 232 (F.C.T.D.) at p. 223 and Zamboni v. Town of Preston, 61 C.P.R. 233 (Ex. Ct.) at p. 234.
5 Cremco Supply Ltd. v. Canada Pipe Co., supra, note no. 2, at p. 92; Omark Industries Inc. v. Windsor Machine Co. Ltd. (1981), 56 C.P.R. (2d) 111 (F.C.T.D.) at p. 114; Outboard Marine Corp. v. Sabre Saw Chain Ltd. (1976), 30 C.P.R. (2d) 95 (F.C.T.D.) at pp. 95-96 and CSI Manufacturing and Distribution Inc. v. Astroflex Inc. (1992), 45 C.P.R. (3d) 195 (F.C.T.D.).