Date: 20060227

Docket: T-92-06

Citation: 2006 FC 257

BETWEEN:

RICHARDS PACKAGING INC.

Applicant

and

ATTORNEY GENERAL OF CANADA

Respondent

REASONS FOR ORDER

RICHARD MORNEAU, ESQ, PROTHONOTARY

[1]                This is a motion by Distrimedic Inc. (Distrimedic) under rules 104(1)(b) and 303(1)(a) of the Federal Courts Rules (the Rules) for an order to be added as respondent or, in the alternative, as an intervener under rule 109, to an application for judicial review brought by the Applicant herein, Richards Packaging Inc. (Applicant Richards or Richards) against a December 20, 2005 decision of the Commissioner of Patents. Said decision refused to register a purported disclaimer sent to him by the Applicant Richards on or around November 8, 2005 with respect to Applicant Richards' patent No. 2,207,045 entitled "Kit and Process for the Manufacture of a Set of Individual Pill Containers".

[2]                Actually, the sole respondent named by the Applicant Richards to its judicial review application (the Application) is the Attorney General of Canada.

[3]                Counsel for the Attorney General of Canada informed the Court at the hearing of the motion at bar that the Attorney General of Canada does support Distrimedic's motion.

Background

[4]                In order to fully appreciate Distrimedic's desire and interest to be added as a respondent to the Application, the following sequence of events and facts must be borne in mind.

[5]                On or around September 26, 2005, Distrimedic filed a statement of claim (Court File T-1591-05) against, inter alia, the Applicant Richards in which, pursuant to subsection 60(2) of the Patent Act, R.S.C. 1985, c. P-4, as amended, Distrimedic seeks a declaration that its Distrimedic product does not infringe Applicant Richards' patent No. 2,207,045, the patent in suit.

[6]                On or around November 8, 2005 (therefore before Richards filed its statement of defence in File No. T-1591-05), Richards sent to the Commissioner of Patents a purported Disclaimer under subsection 48(2) of the Patent Act with respect to the patent in suit in File T-1591-05.

[7]                Section 48 of the Patent Act, supra, reads in its relevant part as follows:

[8]                On or around December 1, 2005, Richards filed a statement of defence and counterclaim in File T-1591-05 alleging, inter alia, that the Distrimedic product does infringe the patent in suit.

[9]                However, by a decision dated December 20, 2005 the Commissioner of Patents indicated to counsel for Richards that its purported disclaimer could not be considered a disclaimer as such and that, therefore, the purported disclaimer was refused, and the correction it sought, inter alia, to independent claim 15 of the patent in suit had not been entered by its Office.

[10]            The December 20, 2005 decision of the Commissioner reads, in its relevant part, as follows:

Correspondence, requesting that a disclaimer for Patent #2,207,045 be recorded, was received in the Patent Office on November 8, 2005 in the name of Richards Packaging inc.

Subsection 49(2) (sic) of the Patent Act sets out that the disclaimer must be filed in the prescribed form.

In submitted Form 2, the patentee has completed part 3(2) which is selected when the patentee wishes to disclaim only a portion of a claim. In this instance, Part 3(2) of the form disclaims the entirety of claims 15 to 21 with the exception of what is alleged to be subject matter of narrower scope. However, after reviewing the alleged disclaimer, this does not appear to be the case.

Amended independent claim 15, part (c), is more specific than the claim in the original patent, but the inclusion of the expression "engaging means," following part (d), renders the whole claim broader than originally allowed. The original claim recited "at least one hole" and "at least one other hole being sized and positioned to correspond to and be engaged by said protuberance." The expression "engagement means" can include subject matter other than a hole, for example, a depression or a recess.

Consequently, the amendment of claim 15 would result in claiming more than what is currently protected in the claims of the patent. Therefore, Form 2 cannot be considered a disclaimer and is refused.

For the reasons above, the requested correction has not been entered.

[11]            As a result of said decision, on or around January 18, 2006, the Applicant Richards filed the Application. The Application seeks the issuance of a writ of mandamus against the Commissioner requiring him to register the disclaimer. The Application seeks also a declaration that the disclaimer was filed and effective as of its filing date of November 8, 2005.

Analysis

[12]            Rules104 and 303(1)(a) of the Rules read as follows:

[13]            By prescribing that a person who ought to have been joined as a party may be added as a party by the Court, rule 104(1)(b) really brings our attention forward to rule 303(1)(a) where a mandatory duty is imposed on an applicant in a judicial review application to name as respondent every person directly affected by the order sought in the application. In other words, a person who will be directly affected by the outcome of the decision to be rendered on an application shall be named as a respondent.

[14]            Said outcome in the Application herein shall ultimately be to bring the Applicant Richards' disclaimer to be, or not, accepted and entered by the Commissioner.

[15]            The possible acceptance of the disclaimer cannot but directly affect the rights of Distrimedic since it relied on the wording of the patent in suit as it existed prior to the sending of the disclaimer to undertake its action against Richards. Conversely, it appears that the latter relied on what it submitted in its disclaimer to sustain its approach in its counterclaim where infringement is claimed against Distrimedic.

[16]            In that regard, the case at bar is to be distinguished from attempts based solely on the precedent value of a case.

[17]            The fact that Distrimedic might in its defence to the counterclaim attack the disclaimer, if and when accepted, is no bar to its participation as a party respondent in the Application.

[18]            The Application is still in its infancy and the issues in the Application have yet to be joined. They may turn out to be broader than submitted by the Applicant Richards who sustains that the Application will involve primarily submissions on whether the Commissioner committed errors of law and did not properly execute his duty under the Patent Act towards Richards. On that point, Applicant Richards' position appears to be that the Commissioner lacks the statutory mandate to examine and rule upon the legal validity of a disclaimer.

[19]            As to the presence already of the Attorney General of Canada as respondent to the Application, I fully agree with the following representations of Distrimedic as to the insufficiency of said presence in the circumstances of the case:

30.            La défenderesse Attorney General of Canada n'a pas les mêmes intérêts que la requérante Distrimedic Inc. dans la demande de contrôle judiciaire et on ne peut donc dire qu'elle pourra convenablement représenter les intérêts de Distrimedic Inc. ou qu'elle formulera les arguments applicables à la situation de Distrimedic Inc., surtout en ce qui a trait à la date de prise en effet de la renonciation si elle est jugée valide, ce que Distrimedic Inc. conteste.

31.            Comme l'explique le juge Dubé dans Commissaire à l'information, il ne faut pas présumer que la défenderesse Attorney General of Canada protégera les intérêts de Distrimedic Inc. dans la demande de contrôle judiciaire :

Pour le moment, il suffit de décider si NAV CANADA est directement touchée par l'ordonnance recherchée dans la demande, et, à mon avis, c'est le cas : par conséquent, elle est autorisée à comparaître à titre de défenderesse. On ne peut présumer que le Bureau de la sécurité des transports protégera les intérêts de NAV CANADA.

·          Canada (Commissaire à l'information) c. Bureau canadien d'enquête sur les accidents de transports et de la sécurité des transports, [2001] A.C.F. No. 978; 13 C.P.R. (4^e) 308 (C.F.), confirmé [2002] A.C.F. No. 199 (C.A.F.) aux paras. 16.

(Emphasis in Distrimedic's representations.)

[20]            In my view and based on the jurisprudence of this Court on granting party status (see Nu-Pharm Inc. v. Attorney General of Canada et al. (2001), 14 C.P.R. (4^th) 280, at 286 and following, and, as considered therein, Apotex Inc. v. Canada (Attorney General) (1993), 48 C.P.R. (3d) 54, at 57-78), I do consider that Distrimedic has a direct and legitimate interest in the outcome of the Application. I am therefore exercising my discretion to add Distrimedic as a respondent party in the Application.

[21]            Having granted party status to Distrimedic, it is not necessary to address the issue pursuant to rule 109.

"Richard Morneau"

                                                             FEDERAL COURT

                                                      SOLICITORS OF RECORD

DOCKET:

STYLEOF CAUSE:

T-92-06

RICHARDS PACKAGING INC.

and

ATTORNEY GENERAL OF CANADA

PLACE OF HEARING:                              MONTRÉAL, QUEBEC

DATE OF HEARING:                                FEBRUARY 20, 2006

REASONS FOR ORDER:                        RICHARD MORNEAU, ESQ., PROTHONOTARY

DATE OF REASONS FOR ORDER:       FEBRUARY 27, 2006

APPEARANCES:

Mr. Dale E. Schlosser		FOR THE APPLICANT
Mr. André Lespérance		FOR THE RESPONDENT

Mr. George R. Locke Mr. Louis Gratton		FOR DISTRIMEDIC INC.

SOLICITORS OF RECORD:

Lang Michener LLP Toronto, Ontario		FOR THE APPLICANT
John H. Sims, Q.C. Deputy Attorney General		FOR THE RESPONDENT

Ogilvy Renault Montréal, Quebec

FOR DISTRIMEDIC INC.