Date: 20010309
Docket: T-2006-99
Neutral citation: 2001 FCT 169
BETWEEN:
CAMOPLAST INC.
Plaintiff/
Cross-Defendant
- and -
SOUCY INTERNATIONAL INC.
Defendant/
Cross-Plaintiff
REASONS FOR ORDER AND ORDER
BLAIS J.
[1] This is a motion in appeal from a decision by the prothonotary Richard Morneau on January 24, 2001 dismissing the motion for leave to amend the defendant's defence/counterclaim.
FACTS
[2] Let us quickly review the facts. The plaintiff sued the defendant alleging an infringement of Canadian patent No. 2,182,845. The defendant filed a counterclaim alleging that the patent was invalid.
[3] An initial series of examinations of the inventor Denis Courtemanche was held on May 11 and 15, 2000, and at that time various objections were made and were the subject of a judgment by the prothonotary Richard Morneau on November 8, 2000. The defendant filed a motion on December 15, 2000 for leave to amend its pleadings, primarily to incorporate certain new facts brought to its attention in the examination for discovery of the plaintiff's representative.
[4] On January 24, 2001 the prothonotary Richard Morneau rendered judgment on this motion, dismissing it for the reasons given in para. 12 of the defendant's written representations. That paragraph reads as follows:
[TRANSLATION]
Since the parties have already held two examination sessions in the case at bar and the amendments proposed by the applicant concern facts which it was aware of well before those examinations were held, and further it questioned Denis Courtemanche on those facts, questions which were the subject of objections and which were upheld by this Honourable Court, it is in the interests of justice for the amendments proposed by the applicant to be dismissed.
[5] According to its arguments, the defendant wished to amend its defence and counterclaim to add the following points:
[TRANSLATION]
a. Par 16.1: filing of record of U.S. patent corresponding to patent at issue in this Court;
b. Par 17, vii, ix and x: add reference to three other caterpillars, which strongly support the arguments that the patent at issue is invalid;
c. Par 18.1: an allegation that the witness participated in the research project which led to the Lecours patent application, which is already alleged in defence in paragraph 18(d);
d. Par 18.2: an allegation that the plaintiff knew that the AKTIV snowmobiles have no longer been produced since 1991-1992.
[6] The defendant maintained that the prothonotary should have allowed the motion to amend since, contrary to what he held, most of the information which was the subject of the application was not known by the defendant, except for the U.S. patent.
[7] The defendant relied on an affidavit by André Delan, an engineer with Soucy International Incorporée, dated February 2, 2001, which explained why the four amendments were necessary.
[8] First, on point (a), he considered that the filing of the U.S. patent file was necessary because in his opinion comparison of claim 1 of the patent at issue and of the corresponding U.S. patent shows that claim 1 of the patent at issue was obtained as the result of misrepresentation.
[9] On point (b), the reference to three other caterpillars, he stated under oath that he personally found these caterpillars following examinations when he was preparing replies to undertakings made in his own examination.
[10] On point (c), namely that the witness participated in the research project which led to the Lecours patent application, Mr. Deland stated that he learned this decisive fact at the examination for discovery of Mr. Courtemanche and he had absolutely no knowledge of it before that time.
[11] On the final point, that the AKTIV snowmobiles have not been produced since 1991-1992, Mr. Deland stated that he personally found this information after the examinations when he was preparing replies to undertakings made in his own examination and this point is important since the defendant wishes to show that AKTIV caterpillars existed before the patent application at issue was filed and constituted prior art.
[12] The defendant further stated that the series of questions referred to by Mr. Deland in his affidavit in Exhibit AD-4 and Exhibit AD-3 shows the point at which the defendant learned for the first time that Mr. Courtemanche and his team participated in the research project which led to the Lecours patent application preceding the patent application at issue. The defendant alleged that this series of questions was not intended to determine the validity of the Lecours patent application but to show that this patent application was prior art which invalidated the patent at issue.
[13] The defendant further suggested that the Court should allow its motion since the proposed amendments did not raise any new cause of action and caused the plaintiff no injury.
[14] Additionally, the defendant suggested it is seeking to complete its file so it can offer this Court a pleading which is complete and which can present a full and complete defence against the action brought against it.
[15] In reply to the defendant's arguments, the plaintiff noted that the motion it had challenged was based on the fact that the amendment was necessary because additional information had been obtained by the applicant at Mr. Denis Courtemanche's examination. In the submission of the plaintiff this was a misleading reason and the plaintiff maintained that all the facts alleged in the draft defence and amended counterclaim were known to the defendant before Mr. Courtemanche's examination.
[16] The plaintiff suggested that the Court should determine whether the appeal was justified on the evidence before the prothonotary at the time of his decision. Consequently, future affidavits filed by the defendant should be dismissed.
[17] Referring to Canada v. Aqua-Gem Investments Ltd., [1993] 2 F.C. 425, at 454:
I am of the opinion that such orders ought to be disturbed on appeal only where it has been made to appear that
(a) they are clearly wrong, in the sense that the exercise of discretion by the prothonotary was based upon a wrong principle or upon a misapprehension of the facts, or
(b) in making them, the prothonotary improperly exercised his discretion on a question vital to the final issue of the case.
In each of these classes of cases, the Motions Judge will not be bound by the opinion of the prothonotary; but will hear the matter de novo and exercise his or her own discretion.
[18] According to the evidence submitted to me at the hearing the order made by the prothonotary in the instant case on January 24, 2001 concerned a question which had a decisive effect on the outcome of the issues in this case, and I accordingly conclude that I can exercise my own discretion and hear the instant motion de novo.
[19] As counsel for the plaintiff very properly pointed out, when the Court decides that it must retry a case de novo in order to exercise its own discretion, it must hear the case as it stood at this time of the decision by the prothonotary; the consistent precedents on this point are clear: James River Corp. of Virginia v. Hallmark Cards Inc. et al. (1997), 72 C.P.R. (3d) 157, at 169:
. . . A motion is commenced by a notice of motion, not a notice of appeal, and is to be supported by an affidavit setting out "all the facts on which the motion is based that do not appear from the record" (Rule 319(2)). Despite this seeming ambiguity in the Federal Court Rules, I understand the procedure established thereby to be, as noted above, an appeal based on the material that was before the prothonotary. This is consistent with the decisions in Woods Canada Ltd. v. Harvey Woods Inc. (November 30, 1994), [1994] F.C.J. No. 1795 (QL) and Symbol Yachts Ltd. v. Pearson, [1996] 2 F.C. 391, 107 F.T.R. 295. In some circumstances new evidence may of course be entertained; see Federal Court Rule 1102 and the jurisprudence thereunder. Such circumstances do not, however, exist in the present case.
[My emphasis.]
Symbol Yachts et al. v. Pearson, (F.C.T.D.), [1996] 2 F.C. 391, at 398:
The present matter is an appeal from the Prothonotary's decision pursuant to subsection 336(5) of the Rules. For me to disturb the Prothonotary's order, I must be satisfied that his order was "clearly wrong" or that the order raises a question "vital to the final issue of the case". In Canada v. Aqua-Gem Investments Ltd., [1993] 2 F.C. 425, Mr. Justice MacGuigan of the Federal Court of Appeal explained as follows the applicable standard of review where appeals are taken from discretionary orders of a prothonotary.
. . .
In the present instance, there is no doubt in my mind that the Prothonotary's order raises a question vital to the final issue of the case since the effect of the Prothonotary's order is to terminate the plaintiff's action. However, I can only examine the Prothonotary's order in the light of the evidence which was before him when he made his order. Consequently, I cannot, and so advised the parties at the hearing, consider the affidavits which the plaintiffs seek to introduce into the record. I do not know why these affidavits were not filed by the plaintiffs in support of their September 22, 1995 application but, in my view, that evidence, if available, should have been placed before the Prothonotary.
This is an appeal of the Prothonotary's decision and it is now too late to present evidence which should have been made earlier. In my view, the purpose of these new affidavits is to correct the shortcomings of the evidence submitted to the Prothonotary. The facts sworn to, for example in the Beesley affidavit, are facts which could have been put before the Prothonotary but were not. The affidavit covers the time period from the initiation of the litigation in 1988 to October 30, 1995.
It was for these reasons that I informed the parties during the hearing that I would not allow the plaintiffs to introduce into the record supplementary affidavits.
[20] In the case at bar, it is the affidavit by André Delan dated February 2, 2001 and the affidavit by Marie-Josée Dupuis with the same date, February 2, 2001, which appear to provide some new evidence and supporting documentation to justify reversing the prothonotary's decision.
[21] These affidavits were not part of the motion record of the applicant when it filed its application to amend its defence. The only affidavit filed in support of the original motion was that of Marie-Josée Dupuis, dated December 15, 2000.
[22] I have come to the conclusion that in the circumstances I cannot take into account the affidavits prepared and filed after the prothonotary's decision and must consider the case as it stood at the time of the decision, on January 24, 2001.
[23] Relying on the record as it stood at the time of the hearing before the prothonotary Morneau, the defendant did not persuade the Court that the prothonotary improperly exercised his discretion or that his decision was based on a wrong principle or upon a misapprehension of the facts.
[24] The defendant will have ample time to file a new motion to amend if it wishes to submit new facts to the Court that could justify an amendment; however, I have no choice but to conclude that I have not been shown evidence that there is any justification for varying the decision of the prothonotary Morneau on January 24, 2001.
[25] For all these reasons, the motion in appeal from the order by the prothonotary Morneau on January 24, 2001 is dismissed with costs.
Pierre Blais
Judge
OTTAWA, ONTARIO
March 9, 2001
Certified true translation
Suzanne M. Gauthier, trad. a., LL.L.
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT No.: T-2006-99
STYLE OF CAUSE: CAMOPLAST INC.
v.
SOUCY INTERNATIONAL INC.
PLACE OF HEARING: MONTRÉAL, QUEBEC
DATE OF HEARING: FEBRUARY 26, 2001
REASONS FOR ORDER AND ORDER BY: BLAIS J.
DATED: MARCH 9, 2001
APPEARANCES:
JEAN CARRIÈRE FOR THE PLAINTIFF
ÉRIC OUIMET FOR THE DEFENDANT
SOLICITORS OF RECORD:
MENDELSOHN, ROSENTZVEIG, SHACTER FOR THE PLAINTIFF
MONTRÉAL, QUEBEC
BROUILLETTE, CHARPENTIER, FORTIN FOR THE DEFENDANT
MONTRÉAL, QUEBEC