Date: 20000515
Docket: A-68-99
CORAM: DÉCARY J.A.
LÉTOURNEAU J.A.
NOËL J.A.
BETWEEN:
DUPONT CANADA INC.
Appellant
(Plaintiff)
- and -
GLOPAK INC.
Respondent
(Defendant)
Heard at Montreal, Quebec on Monday, May 15, 2000
Judgment delivered from the Bench at
Montreal, Quebec on Monday, May 15, 2000
REASONS FOR JUDGMENT OF THE COURT BY: DÉCARY J.A.
Date: 20000515
Docket: A-68-99
CORAM: DÉCARY J.A.
LÉTOURNEAU J.A.
NOËL J.A.
BETWEEN:
DUPONT CANADA INC.
Appellant
(Plaintiff)
- and -
GLOPAK INC.
Respondent
(Defendant)
REASONS FOR JUDGMENT OF THE COURT
(Delivered from the Bench at Montreal (Quebec)
on Monday, May 15, 2000)
DÉCARY J.A.
[1] On November 21, 1996, the appellant ("Dupont Canada") initiated an infringement action against the respondent ("Glopak") with respect to Canadian patent No. 1,205,052 ("the patent"). Dupont Canada alleged that "the Glopak film" infringed its patent.
[2] In a statement of defence and counter-claim filed on May 1st, 1997, Glopak sought a declaration that its films number GI-8, GI-9, and GI-911 were not infringing the patent. Paragraph 24 of the Statement of Defence identifies the three types of films which had not been referred to in the Statement of Claim. In that paragraph, Glopak states that films number GI-8 and GI-9 had been discontinued, but that it was "now manufacturing and selling only film number GI-911".
[3] On May 21, 1997, Glopak moved for summary judgment seeking a declaration that its GI-911 film did not infringe the patent. The motion did not refer to the other films.
[4] The parties adduced extensive evidence on the motion for summary judgment. On April 23, 1998, Muldoon J. found, following a long analysis, that the GI-911 film did not infringe the patent. He went on, however, to dismiss Glopak"s motion on the procedural ground that the film was not on the market at the time Dupont Canada had filed its statement of claim. The GI-911 film, he concluded, could not therefore be an issue in the action. That judgment is reported at (l998), 146 F.T.R. 301.
[5] Glopak"s motion for summary judgment having been dismissed, Dupont Canada could not appeal Muldoon J."s decision as it was in its favour even though, in a clear obiter , Muldoon J. had found against it on the infringement issue.
[6] Dupont Canada then applied for leave to amend its statement of claim in order to specifically plead that Glopak"s GI-911 film infringed its patent.
[7] The motion to amend the statement of claim was dismissed by the Motions Judge for the following reasons:
| [6] Having considered the able submission of counsel for the parties, I have concluded that the amendments to the Statement of Claim proposed by the plaintiff ought not to be allowed on the basis that they do not raise a triable issue. In that regard, I note that the detailed analysis of Muldoon J. on the question of whether the GI-911 film infringes the Storms patent amply demonstrates that the proposed amendments do not raise a triable issue. In the circumstances, I have concluded that it would not be in the interests of justice to permit the same issue to be relitigated, undoubtedly requiring another judge to entertain a virtually identical motion for summary judgment. |
[8] With respect, the Motions Judge applied the wrong test to be used with respect to motions for leave to amend when she stated that the same issue ought not be relitigated and concluded that the proposed amendment did not raise a "triable issue". No one disputes that Muldoon J."s finding with respect to the non-infringement was obiter . No one disputes that in the circumstances Dupont Canada could not appeal that finding. No one disputes that the only way in which Dupont Canada could eventually exercise its right of appeal would be to obtain a final decision in the Trial Division on the issue of infringement.
[9] Since proceeding again in the Trial Division is unfortunately unavoidable, if only to give Dupont Canada its day in the Federal Court of Appeal, the most practical way to obtain this result is to do what Dupont Canada did, i.e. seek leave to amend the statement of claim. The practical effect of the Motions Judge"s order is to force Dupont Canada to file a new statement of claim in a different court file and to eventually ask that the new file be consolidated with the present one. Leave to amend would be much simpler and the interest of justice requires that this approach be followed in this case.
[10] The appeal will be allowed, the order of the Motions Judge will be set aside and the appellant"s motion for leave to amend its statement of claim will be allowed. The appellant will be entitled to its costs on the appeal.
"Robert Décary"
J.A.
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
| DOCKET: A-68-99 |
| STYLE OF CAUSE: DUPONT CANADA INC. |
Appellant
(Plaintiff)
- and -
GLOPAK INC.
Respondent
(Defendant)
DATE OF HEARING: MONDAY, MAY 15, 2000
PLACE OF HEARING: MONTREAL, QUEBEC
REASONS FOR JUDGMENT
| OF THE COURT BY: DÉCARY J.A. |
Delivered from the Bench at Montreal, Quebec on Monday, May 15, 2000
APPEARANCES: Mr. Ronald E. Dimock and
| Mr. Dino P. Clarizio |
| For the Appellant (Plaintiff) |
Mr. Nelson Landry and
| Ms. Frédérique Amrouni |
| For the Respondent (Defendant) |
| SOLICITORS OF RECORD: Dimock Stratton Clarizio |
| Barristers & Solicitors |
20 Queen Street West
Suite 3202, Box 102
Toronto, Ontario
| M5H 3R3 |
| For the Appellant (Plaintiff) |
| Ogilvy Renault |
| Barristers & Solicitors |
| 1981 McGill College Street |
| Suite 1100 |
| Montreal, Quebec |
| H3A 3C1 |
| For the Respondent (Defendant) |