Date: 19990503
Docket: T-1939-98
BETWEEN:
ELKAY MANUFACTURING COMPANY
Plaintiff
- and -
LES PRODUITS THERMO-CONCEPTS INC.
Defendant
REASONS FOR ORDER
LAFRENIÈRE P.
[1] This is an application by the plaintiff to strike references to three patents in paragraph 16 of the amended statement of defence and counterclaim. The plaintiff has also applied for an order requiring the defendant to provide particulars with respect to paragraphs 16, 17, 18, 19, 20, 21 and 22 of the amended statement of defence and counterclaim, failing which those paragraphs should be struck, and an extension of time to serve a reply and defence to counterclaim 30 days after the defendant provides the requested particulars.
[2] Counsel for the defendant advised the Court that the defendant would consent to an order striking the three patents referred to in the motion from paragraph 16 of the amended statement of defence and counterclaim. He also agreed that reference to section 27 of the Patent Act in paragraph 16 should be particularized by making reference instead to subsection 27(1)(b) and that reference to section 61 of the Patent Act should be removed. In light of the proposed amendments by the defendant, counsel for the plaintiff advised the Court that particulars were no longer required for paragraph 16 of the amended statement of defence and counterclaim.
[3] I now turn to the request by the plaintiff for particulars of paragraphs 17, 18, 19, 20, 21 and 22 of the amended statement of defence and counterclaim.
[4] This is a patent infringement action commenced by Statement of Claim dated October 13, 1998. The plaintiff is asserting infringement of certain claims of Canadian Patent 1,338,210 relating generally to liquid dispensers and to a system in which an inverted water bottle, or similar container, is supported inverted on a dispenser and water, or other potable fluid, is hygienically dispensed. The patent application which resulted in Canadian Patent 1,338,210 was filed on September 29, 1989.
[5] On January 29, 1999, the Defendant filed its Statement of Defence and Counterclaim, followed by an Amended Statement of Defence and Counterclaim on February 11, 1999.
[6] The Plaintiff requested particulars of the allegations contained in paragraphs 16, 17, 18, 19, 20, 21 and 22 of the Amended Statement of Defence and Counterclaim by way of letter dated February 16, 1999. On March 22, 1999, the defendant replied to the Plaintiff"s Demand for Particulars by providing a clarification regarding paragraph 16 and denying any further particulars of the remaining paragraphs.
[7] The Plaintiff then brought this motion seeking an order requiring the Defendant to provide particulars, as demanded in its letter dated February 16, 1999, failing which an order that the paragraphs in question be struck.
[8] At the time of the hearing, the particulars requested were:
| As to paragraph 17, full particulars of the respects in which it is alleged that claims 1, 2 and 14 of the Patent would be obvious to a person skilled in the art at the relevant date. |
| As to paragraph 18, full particulars of the respects in which it is alleged that claim 1, 2 and 14 of the Patent do not distinctively define in clear terms the purpose of the invention. |
| As to paragraph 19, full particulars of the respects in which it is alleged that the Patent claims more than what is described in the specification. |
| As to paragraph 20, full particulars of the respects in which it is alleged that the Patent claims more than what was invented. |
| As to paragraph 21, full particulars of the respects in which it is alleged that the Patent fails to correctly and full describe the invention. |
| As to paragraph 22, full particulars of the respects in which it is alleged that the Patent fails to constitute the best way of achieving the invention. |
[9] Counsel for both parties filed comprehensive written argument which I reviewed prior to the hearing. They agreed that the purpose of particulars is to enable the opposite party to know the case it has to meet. As noted by the Federal Court of Appeal in Gulf Canada Limited v. The "Mary Mackin" ©1984ª 1 F.C.R. 884 at p. 889, particulars serve:
| (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... |
Although the parties agree on the purpose of particulars, they disagree as to the extent particulars should be provided in the present patent infringement action.
[10] In determining whether the plaintiff is entitled to the particulars requested of the defendant, one must bear in mind that "particulars are very much a matter of the particular case" as stated by Moulton, L.J. in "Z" Electric Lamp Manufacturing Company Ltd. v. Marples, Leach and Co. Ld. (1909) 26 R.P.C. 762. The following comments of Marceau J (as he then was) in Embee Electronic Agencies Ltd. v. Agence Sherwood Agencies Inc., (1992) 43 C.P.R.(2d) 285 (F.C.T.D.) at pp. 286-287 set out the matters which should be considered in assessing a request for particulars:
| The question of particulars in an action of this nature is a difficult one although it is governed by long established principles: see Fox, Canadian Law of Trade Marks and Unfair Competition, 3rd ed. (1972), p. 415 et seq. I do not think it necessary for me to review those principles. However, I wish to point out that, I as understand the law in this regard, a distinction must be made between a request for particulars made prior to the filing of a statement of defence and one made at a later stage of the proceedings. Before trial, after the issues have been defined, a defendant is entitled to be informed of any and every particular which may enable him to properly prepare his case, so that he may not be taken by surprise at trial. But before the filing of the defence, the right of the defendant to be furnished particulars is not so broad , since it does not have the same basis and serves a different purpose. A defendant should not be allowed to use a request for particulars as a means to pry into the brief of his opponent with a view of finding out about the scope of the evidence that might be produced against him at trial, nor should he be allowed to use such a request as a means to go on a fishing expedition in order to discover some grounds of defence still unknown to him. At that early stage, a defendant is entitled to be furnished with all particulars which will enable him to better understand the position of the plaintiff, see the basis of the case 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. |
[11] Particulars in this case are being sought by the plaintiff prior to filing its reply to the counterclaim brought by the defendant. Since the proceedings are at an early stage, the plaintiff (defendant by counterclaim) is therefore entitled to all particulars which will allow it to reply intelligently to the counterclaim and to properly set out its grounds of defence, and no more.
Paragraph 17 of the amended statement of defence and counterclaim
[12] The plaintiff submits that it is entitled to particulars of the facts the Defendant intends to rely on to establish the relevant state of the art at paragraph 17 of the amended statement of defence and counterclaim, which reads as follows:
| The alleged invention claimed in Patent "210 was not patentable because it was obvious for a person skilled in the art or science. The publications mentioned in the previous paragraph represent in part the state of the art or science on the relevant date, as it will be presented more fully before the Court during the proceedings which must take place in this matter. |
Counsel for the plaintiff submits that the words "represent in part" and "as will be presented more full" are open-ended and leads one to believe that the list of publications is incomplete. Counsel for the defendant replies that it is not necessary to furnish particulars of an allegation of obviousness and that the state of prior art and the common general knowledge of a person skilled in the art will be put into evidence at trial by way of expert testimony.
[13] I agree with counsel for the defendant that to establish the state of the art, expert evidence will be required at trial. I also agree that the defendant need not disclose the precise mode in which the case will be defended. It is established that common general knowledge as to prior art is to be proven by the evidence of experts ©Westinghouse Electric Corp. v. Babcock & Wilcox Industries Ltd. (1987), 15 C.P.R. (3d) 447 (F.C.T.D.) at 449; Jackmoor Manufacturing Ltd. v. Waterloo Metal Stampings Ltd. (1985), 8 C.P.R. (3d) 217 (F.C.T.D.) at 275ª. The words "represent in part" in paragraph 17 suggest however that the defendant has in its possession additional publications. A complete list of the publications upon which the defendant relies at this time should be provided to allow the plaintiff to understand the defendant"s position with respect to that part of the statement of defence and counterclaim. Particulars of paragraph 17 will therefore be ordered to the extent noted above.
Paragraph 18 of the amended statement of defence and counterclaim
[14] The plaintiff submits that it is entitled to particulars of the respects in which it is alleged that claims 1, 2 and 14 of the Patent do not distinctively define in clear terms the purpose of the invention at paragraph 17 of the amended statement of defence which reads as follows:
| Each of the independent claims 1, 2 and 14 of the patent in question is void, in accordance with Section 34(2) of the Patent Act, in that each of them is ambiguous and does not distinctly define in clear terms the purpose of the alleged invention. |
Counsel for the plaintiff submitted that a pleading of ambiguity must be framed with sufficient particularity to identify the ambiguity or ambiguities upon which the defendant proposes to rely. Reference was made to the decisions of the Federal Court of Appeal in Pengo Hydra Pull of Canada Ltd. v. Leithiser (1975), 7 C.P.R. (2d) 17 and the Federal Court Trial Division in B & J Manufacturing Co, v. Canadian Pneumatic Tool Co, (Ltd.) et al., (1984), 77 C.P.R. (2d) 262 at 259 in support of this proposition. Counsel for the defendant argues in reply that the allegations in paragraph 18 raise purely legal points of interpretation and are not based on any essential fact with respect to which particulars can be given. He further submits that an order of particulars regarding such an allegation would require the defendant to disclose the legal nature of its argument at trial, which it cannot be demanded of it see ©CSI Manufacturing and Distribution Inc. v. Astroflex Inc., (1992) 45 C.P.R. (3d) 195 at 197 (F.C.T.D.) and Desrochers v. Bombardier Inc., unreported, F.C. No. T-390-98, March 19, 1999 (Proth.)ª.
[15] Paragraph 18 of the amended statement of defence and counterclaim as pleaded is not sufficiently clear to allow the plaintiff to prepare a responsive reply. I base my conclusion on the following reasoning of Walsh J. in Bror With v. Ruko of Canada (1976), 31 C.P.R. (2d) 3 at pp. 7 and 8:
| I have examined most of the extensive jurisprudence referred to by counsel for both parties. Counsel for the defendant relied heavily on the case of Parker et al. V. G.M. Gest Ltd. et al. (1951), 15 C.P.R. 76, ©1951ª O.W.N. 708, 12 Fox Pat. C. 19, in which Senior Master Marriott refused to order most of the particulars wought. This was based primarily on his conclusion that the patent in suit was not of sufficiently complicated nature to warrant the order to the extent asked for. In an annotation to this case, Fox, at p. 21 refers to a decision of North, J., in Heathfield v. Greenway (1893), 11 R.P.C. 17, in which the learned Justice stated at p. 19: |
| It is very common form to require further particulars describing the particular parts which are relied on as anticipations. If the patent referred to was a small matter of half a page, such an application would not succeed. If the application was with respect to, let me say, one of Mr. Edison"s telephone specifications, I cannot imagine that it would not succeed. It would depend a great deal on the nature of the particular specification. |
Claims 1, 2 and 14 of the patent in question (reproduced at Tab 5 of the Motion Record) are quite lengthy. The first two claims are broken down into a number of components. The plaintiff is entitled to know what specific parts of the claims are alleged to be ambiguous and thereby narrow the issues to be tried. The defendant is ordered to particularize and set out the elements of the three claims it alleges are ambiguous.
Paragraph 19 and 20 of the amended statement of defence and counterclaim
[16] The plaintiff submits that it is entitled to particulars of the respects in which it is alleged at paragraph 19 of the amended statement of defence that the patent claims more than what is described in the specification and at paragraph 20 that the patent claims more than what was invented. Paragraphs 19 and 20 read as follows:
| 19. Each of the independent claims 1, 2 and 14 of the patent in question is void in that each of them claims more than what is described in the specification. |
| 20. Each of the independent claims 1, 2 and 14 of the patent in question is void in that each of them claims more than what was allegedly invented. |
The plaintiff refers to the decision of Walsh J. in Bror With, supra at page 10 where the defendant was required to provide particulars with respect to which of the claims in the patent contained more than the plaintiff allegedly invented. Counsel for the defendant replies that overclaiming is a matter of argument for trial and not a question of fact.
[17] I agree that with counsel for the defendant that an allegation that the claims go beyond the specification raises a strictly technical challenge. Such an allegation is based on questions of interpretation of the wording of the claims, the specifications and the Patent Act. The defendant has already identified in paragraph 19 and 20 the specific claims which are alleged to overclaim. There are no additional material facts to plead since the specification and the specified claims speak for themselves, Noël J. reached the same conclusion in CSI Manufacturing, supra at p. 197:
| I will also intervene on paras. 5, 6, 7 and 8 of the particulars to the defence and counterclaim. These paragraphs raise purely technical challenges, namely, the absence of a distinct claim, invalidity of the claims for ambiguity , the lack of utility and the suggestion that the claims go beyond the specification. These paragraphs are prima facie based exclusively on the questions of interpretation of the wording of the claims, the specifications and the Patent Act, R.S.C. 1985, c. P-4, and so any order regarding these paragraphs would impose on the defendant a duty to disclose the legal nature of its argument at the trial rather than essential facts, which cannot be required of it. |
The plaintiff has sufficient particulars at this stage to prepare its reply. Consequently, no particulars will be ordered for paragraphs 19 and 20.
Paragraph 21 of the amended statement of defence and counterclaim
[18] The plaintiff submits that it is entitled to particulars of the respects in which it is alleged at paragraph 21 of the amended statement of defence that the patent fails to correctly and fully describe the invention. Paragraph 21 reads as follows:
| Patent "210 is invalid, in accordance with Section 34(1) of the Patent Act, in that the specification does not correctly and fully describe the alleged invention, and does not set forth clearly the method of constructing the alleged invention in full, clear, concise and exact terms so as to enable any person skilled in the art or science to construct the alleged invention |
Counsel for the plaintiff argues that the allegation in the above paragraph is simply a paraphrase of the words of section 34(1)(b) of the Patent Act and as such is defective (see Cremco Supply Ltd. v. Canada Pipe Co. (1998), 79 C.P.R. (3d) 84 at pp. 90 and 92). Counsel for the defendant asserts that no material facts exist and that an order of particulars would require it to disclose the legal nature of its argument.
[19] In a similar case, M & I Door Systems Ltd. v. Indoco Industrial Door Co. Ltd. (1988) 22 C.P.R. (3d) 445, Giles A.S.P. refused to order the defendant to provide particulars of an allegation that the specification failed to correctly and fully describe the invention. At page 447, he writes:
| It is apparent that the defendant is of the view that nothing is new or inventive and is alleging that the patent fails to segregate and describe anything new or any new method of making anything. The demand for particulars can be seen as demanding that the defendant ascertain what the plaintiff has invented and failed to describe. The plaintiff should know what he thinks he has invented and can readily ascertain whether in his view he has described it. Whether or not particulars can be required of a negative allegation in any case, it is quite apparent that particulars are not required in this case. |
[20] I agree with the above approach. The plaintiff is clearly in a position to determine whether its patent fails to correctly and fully describe its invention. To require further particulars from the defendant would require it to reveal its evidence, which would normally be adduce through an expert. Moreover, the plaintiff has sufficient particulars to prepare its reply. The defendant therefore is not required to provide particulars for paragraph 21.
Paragraph 22 of the amended statement of defence and counterclaim
[21] The plaintiff submits that it is entitled to particulars of the respects in which it is alleged at paragraph 22 of the amended statement of defence that the patent fails to constitute the best way of achieving the invention. Paragraph 22 reads as follows:
| Patent "210 is invalid in that the preferential achievement that is described in it does not constitute the best way of achieving the alleged invention. |
Counsel for the plaintiff argues that the allegation is merely a reiteration of subsection 34(1)(c) of the Patent Act and that, based on Cremco, supra, it is entitled to whatever facts the defendant has to support its allegation. Counsel for the defendant replies that there are no additional materials facts and that any further particulars would require it to reveal its expert evidence [see Parker v. G.M. Gest Ltd., (1951) 12 Fox Pat.C. 19 (Ont. S.C.) and Desrochers v. Bombardier Inc., unreported, F.C. No. T-390-98, March 19, 1999 (Morneau, P.)]
[22] For the reasons given for paragraph 21 above, I have determined that no further particulars are required for paragraph 22.
[23] In conclusion, the defendant is ordered to amend its amended statement of defence and counterclaim and serve and file the amended document within fifteen days of the date of this order. The defendant is further ordered to provide to the plaintiff particulars of paragraphs 17 and 18 of the amended statement of defence and counterclaim, as reflected in these reasons, within thirty days from the date of this order. The balance of the plaintiff"s application for particulars is dismissed. The plaintiff will have 30 days from the receipt of the defendant"s particulars to serve and file its reply and defence to counterclaim.
[24] The plaintiff asked for costs of the motion. As success was divided, I conclude that costs of the motion should be in the cause.
[25] An order will issue in accordance with the present reasons.
"Roger R. Lafrenière"
Prothonotary
Toronto, Ontario
May 3, 1999
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
COURT NO: T-1939-98
| STYLE OF CAUSE: ELKAY MANUFACTURING COMPANY |
Plaintiff
| - and - |
| LES PRODUITS THERMO-CONCEPTS INC. |
Defendant
DATE OF HEARING: TUESDAY, APRIL 20, 1999
PLACE OF HEARING: TORONTO, ONTARIO
REASONS FOR ORDER BY: LAFRENIÈRE P.
DATED: MONDAY, MAY 3, 1999
APPEARANCES: Mr. Dale E. Schlosse and
| Mr. Keith Bird |
For the Plaintiff
Mr. François Guay
For the Defendant
SOLICITORS OF RECORD: Lang Michener
| Barristers & Solicitors |
| BCE Place, P.O. Box 747, Suite 2500 |
| 181 Bay Street |
| Toronto, Ontario |
| M5J 2T7 |
For the Plaintiff
| Smart & Biggar |
| Barristers & Solicitors |
| 1000 de la Gauchetière St. West |
| Suite 3400 |
| Montréal, Québec |
| H3B 4W5 |
For the Defendant
FEDERAL COURT OF CANADA
Date: 19990503
Docket: T-1939-98
Between:
| ELKAY MANUFACTURING COMPANY |
Plaintiff
| - and - |
| LES PRODUITS THERMO-CONCEPTS INC. |
Defendant
REASONS FOR ORDER