FILE NO. T-195-94
B E T W E E N:
VISX, INCORPORATED
Plaintiff
- and -
NIDEK CO., LTD., 707284 ONTARIO INC. c.o.b.a. INSTRUMED CANADA,
DR. HOWARD GIMBEL, and DR. DONALD JOHNSON
Defendants
REASONS FOR ORDER
WETSTON J.
By way of an appeal of the Order of the Associate Senior Prothonotary dated August 7th, 1997, the plaintiff requests that paragraphs 14, 18, 22 and 29 of the third amended Statement of Defence and Counterclaim be struck; and that leave not be granted to the defendant to amend paragraphs 18 and 22.
This is an action for infringement of three Canadian patents owned by the plaintiff, VISX, Incorporated: Patent nos. 1,243,732; 1,271,813, and 1,254,658. These patents relate to an apparatus for performing ophthalmological surgery by use of a laser to reshape the surface of a cornea. The plaintiff alleges that the defendant, Nidek Co. Ltd. ("Nidek"), has infringed the plaintiff's patents by selling a laser machine to two other defendants, who are also alleged to have infringed the plaintiff's patents by using the machines to perform laser eye surgery in Canada.
The defendant, Nidek, has raised a number of issues in its defence, including those which attack the validity of the patents. Nidek has also counterclaimed against the plaintiff for damages pursuant to the Competition Act. The plaintiff has been successful in having had some earlier paragraphs of Nidek's Statement of Defence struck, but the defendant has also been granted leave to amend certain paragraphs. The present application to strike concerns alleged admissions made by the defendant, Nidek, on its examination by the plaintiff.
I will deal first with the request concerning paragraphs 18 and 22 -- that further leave to amend should not be allowed, because the defendant had had four opportunities to put forward a reasonable defence and had failed to do so. I have considered the arguments, the authorities and the Motion Record provided to me on this Motion, and find that the appeal shall be dismissed. Leave to amend -- in accordance with the reasons of the Associate Senior Prothonotary -- shall be allowed.
The appeal with respect to paragraph 14 shall be allowed. As section 55.2(1) of the Patent Act generally operates as an exception to infringement, I am of the opinion that the provision does not apply in this circumstance. Section 55.2(1) applies to pharmaceutical patents and does not apply to a medical apparatus. This finding is in accord with the reasons of McKay J. in Apotex Inc. v.Canada (A.G.) (1996), 71 C.P.R. (3d) 166 (T.D.).
In this regard, I am of the view that the Associate Senior Prothonotary was wrong, in that he erred in his construction of the statute, and that I should exercise my jurisdiction de novo to set aside his decision with respect to that provision. Paragraph 14 of the Statement of Defence shall be struck.
The Associate Senior Prothonotary refused to strike paragraph 29(b) of the amended Statement of Defence. He stated that it is his view that the possibility of a user royalty being in contravention of the Competition Act should remain in the pleading until expert evidence of that possibility can be considered.
I have considered his reasons as well as the arguments advanced by Counsel and, in my opinion, section 61(1) of the Competition Act, and in particular subsection 61(1)(a), does not apply in these circumstances. Therefore, the appeal with respect to paragraph 29(b) is allowed, and paragraph 29 shall also be struck from the amended Statement of Defence.
Paragraph 33 and 34(c) of the amended Statement of Defence relate solely to damages flowing from allegations in paragraphs 28 and 29. As paragraphs 28 and 29 have been struck in their entirety, paragraph 33 shall be struck as well.
Costs shall be in the cause.
Howard I. Wetston
Judge
Ottawa, Ontario
October 28, 1997