Date: 20000627
Docket: T-385-00
MONTREAL, QUEBEC, THIS 27th DAY OF JUNE 2000
PRESENT: RICHARD MORNEAU, ESQ., PROTHONOTARY
BETWEEN:
CABOT SAFETY INTERMEDIATE CORPORATION,
AEARO COMPANY and AEARO CANADA LIMITED
Plaintiffs
AND
MINNESOTA MINING AND MANUFACTURING COMPANY
and 3M CANADA COMPANY
Defendants
ORDER
It is ordered that the Defendants, within fifteen (15) days of the date hereof, or such further period as the parties may agree, file and serve the following particulars, failing which the paragraphs ordered to be particularized herein could be struck out upon a further application by the Plaintiffs:
| 1. With respect to paragraph 9 of the Amended Statement of Defence, the Defendants are ordered to either admit the allegations contained in each of the subparagraphs of paragraph 34 of the Statement of Claim or state the material facts upon which they rely to deny the allegation. |
| 2. As to paragraph 12 of the Amended Statement of Defence, the Defendants shall identify what portion of the term "generally hemispherical" is ambiguous and why. |
It is further ordered that the time for the Plaintiffs to file and serve their Reply to the Amended Statement of Defence and Defence to the Counterclaim is extended to thirty (30) days after the Defendants comply with the present order.
Plaintiffs' motion is otherwise dismissed. Costs in the cause.
Richard Morneau
Prothonotary
Date: 20000627
Docket: T-385-00
Between:
CABOT SAFETY INTERMEDIATE CORPORATION,
AEARO COMPANY and AEARO CANADA LIMITED
Plaintiffs
AND
MINNESOTA MINING AND MANUFACTURING COMPANY
and 3M CANADA COMPANY
Defendants
REASONS FOR ORDER
RICHARD MORNEAU, ESQ., PROTHONOTARY:
[1] This is a motion on behalf of the Plaintiffs in a patent infringement action for an order obliging the Defendants to furnish further and better particulars in respect of paragraphs 9 and 12 of its Amended Statement of Defence (the defence). The Plaintiffs also request the striking out of paragraph 13 of the defence.
[2] Paragraphs 9 to 13 of the defence read as follows:
| 9. The allegations made in paragraph 34 of the Statement of Claim, are each denied, in particular and without prejudice to the general denial, it is denied that the flange elements have a "generally hemispherical shape" as defined in the patent. The earplugs of the Defendants have three flanges that extend from a central stalk, the distal flange is hemispherical, the other two flanges are conical with rounded tips and an upward curvature where they meet the central stalk. This design results in a significant noise reduction over the hemispherical flanged earplugs of the Plaintiff Aearo. |
| 10. The patent at issue here defines "generally hemispherical" at page 5, lines 17 to 22 as: |
| By "generally hemispherical" it is meant that the flange element defines no less than about 45o and no more than about 55o of a chordally sectioned hollow spherical body whose external surface is, at essentially all points, thereon, substantially equidistant from its single geometric centre. |
| The only figure in the patent depicts these flanges to have a constant radius. The dimensions expressed in the patent are expressed down to the one-thousandth of an inch (0.001"). Thus, all flanges to a degree or precision of 0.001" are to be the same distance from the geometric centre. |
| 11. Further, having regard to prior art known to the Plaintiffs, namely Canadian Patent No. 578,485 (Henderson), the patent at issue here in order to be valid must distinguish over the Henderson patent by reason of the "generally hemispherical" flanges as so described failing which the patent at issue lacks novelty or is obvious, or both and is, therefore, invalid. |
| 11A. Further, United States Patent Re 28,560 (Fling) reissued September 30, 1975 depicts in Figure 1 an earplug having three hemispherical flanges, the rearmost of which is larger in diameter than the others; this earplug is described in the patent at column 2, lines 23 to 40 as "a type well known in the art", wherefore the patent at issue lacks novelty or in the alternative is obvious, or both, and is, therefore, invalid. |
| 12. Therefore, either the Defendants' earplugs do not infringe the patent at issue or, the patent at issue is invalid as not being patentable over the Henderson Patent or the Fling patent, or both, which had been issued more than two years before the application was filed for the patent at issue or, the words "generally hemispherical" contained in the patent at issue are vague and ambiguous hence the patent at issue is invalid. |
| 13. As to costs, the Plaintiffs Cabot Safety Intermediate and Aearo Company have instituted proceedings against the Defendant 3M in the United States District Court for the Southern District of Indiana, Indianapolis Division, Case No. IP99-0937-C D\F in respect of a United States Patent No. 4,867,149 that is the equivalent of the Canadian patent at issue here. The aforementioned United States Court has ruled that Cabot was not likely to establish that such earplugs infringe United States Patent and, in particular, that they are not likely to establish that they have "generally hemispherical" flanges as described in said patent. The institution of this action in Canada is an abuse of the Court process wherefore the Defendants are entitled to solicitor-client costs throughout. |
Rules of law on particulars
[3] The standards which pleadings must meet regarding particulars are set out in Rules 174 and 181(2) of the Federal Court Rules, 1998 (the Rules). They read as follows:
| 174. Every pleading shall contain a concise statement of the material facts on which the party relies, but shall not include evidence by which those facts are to be proved. |
| 181. (2) On motion, the Court may order a party to serve and file further and better particulars of any allegation in its pleading. |
[4] In Glaxo Canada Inc. v. Department of National Health and Welfare of the Government of Canada et al. (1987), 15 C.P.R. (3d) 1 (F.C.T.D.) at 10, Rouleau J. made the following comment on the requirement applicable to particulars:
| Proper pleadings define with precision and clarity the question in dispute between the litigants. Both parties are entitled to fair notice of the case which they are bound to meet so that they may procure evidence relevant to the issues |
| disclosed by the pleadings ... |
[5] However, any request for particulars also appears to be the subject of certain restrictions. In short, before making an order on such a matter the Court must consider whether a party has sufficient information to understand the opposing party's argument and prepare a sufficient response, whether a defence or a reply. (See Astra Aktiebolag v. Inflazyme Pharmaceuticals Inc. (1995), 61 C.P.R. (3d) 178 (F.C.T.D.), at 184.)
[6] In Embee Electronic Agencies Ltd. v. Agence Sherwood Agencies Inc. et al. (1979), 43 C.P.R. (2d) 285 (F.C.T.D.), at 287, Marceau J.A. explained the extent to which the defendant is entitled at the stage of pleadings to obtain particulars on the plaintiffs' evidence. I consider that the following comments by Marceau J.A. may be applied with the necessary modifications to the request for particulars made by the Plaintiffs in respect of the defence:
| At that early stage, a defendant is entitled to be furnished all particulars which will enable him to better understand the position of the plaintiff, see the basis of the case made 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. |
| [Not underlined in original] |
Analysis
[7] Paragraph 9 of the defence denies only that the flange elements have a generally hemispherical shape. Paragraph 34 of the Statement of Claim is divided into 17 numbered subparagraphs. These subparagraphs allege characteristics of the Defendants' earplugs which read on the claims of Canadian Patent No. 1,261,278. The Defendants rely on a mere denial of these subparagraphs. The Rules of this Court require a party to state the basis for such a denial. Furthermore, a party is required to admit those allegations which are not disputed.
[8] Therefore, based on my decision in Cabot Safety Intermediate Corp. v. Arkon Safety Equipment Inc. (1996), 114 F.T.R. 260, (1996), 68 C.P.R. (3d) 490, which involved a situation similar to the one at bar, with respect to paragraph 9 of the defence, the Defendants will be ordered to either admit the allegations contained in each of the subparagraphs of paragraph 34 of the Statement of Claim or state the material facts upon which they rely to deny the allegation. I do not agree with the Plaintiffs that by doing so, the Plaintiffs will provide an interpretation of the claims found in the patent in suit. The plaintiffs have responded so far to paragraph 34 and its subparagraphs; they deny each and every paragraph. Therefore, they understood these paragraphs and felt comfortable to provide an answer to them. Now they are only required to elaborate on their answer.
[9] As for paragraph 12 of the defence, the Plaintiffs' request is as follows:
| With respect to the allegation in paragraph 12 of the Statement of Defence that "the patent at issue is invalid as not being patentable over the Henderson patent", the Defendants will provide the following particulars failing which the paragraph will be struck: |
| (a) The Defendants will state distinctively and in explicit terms the basis upon which they assert that Canadian Patent No. 1,261,278 is invalid by virtue of the Henderson patent. |
| (b) The Defendants will identify those elements of the Henderson patent which they allege render Canadian Patent No. 1,261,278 invalid. |
| (c) With respect to the term "generally hemispherical" the Defendants shall explain in what manner this term is vague and ambiguous. |
[10] As to the requests found in subparagraphs (a) and (b) above, I am satisfied that no further particulars are required. The patents at issue in this case are few, straightforward and not lengthy. I am of the view that paragraphs 11 to 12 of the defence, as they now read, are sufficient to allow the Plaintiffs to understand the Defendants' position with respect to that part of the Statement of Claim and to prepare a responsive reply in accordance with the Embee test, supra.
[11] With respect to subparagraph (c) above, the situation is different. Because the patent in suit defines the term "generally hemispherical" and because the Defendants have denied infringement in paragraph 9 of the defence by stating: "It is denied that the flange elements have a 'generally hemispherical shape' as defined in the patent", the Defendants will be ordered to identify what portion of the definition is ambiguous and why.
[12] As to paragraph 13 of the defence, I am not entirely satisfied that the decision of the United States District Court, Southern District of Indiana, Indianapolis Division in Cause No. IP-99-0937-C-D/F can be seen as not being relevant to the proceedings herein generally and specifically with respect to costs. Moreover, I am fairly convinced that the Plaintiff will suffer no real prejudice from its remaining in the defence (see Teitelbaum J. in Copperhead Brewing Co. Ltd. v. John Labatt Ltd. et al. (1995), 61 C.P.R. (3d) 317, at 322). The Plaintiffs in their written representations identify the prejudice brought by paragraph 13 as follows:
| 53. Paragraph 13 gives a misleading and incomplete picture of the state of the U.S. proceedings. The ruling in question was interlocutory and does not constitute a final disposition of any matter in issue. Furthermore, the ruling has been appealed. |
| 54. As the U.S. proceeding is ongoing, its status will constantly change as new steps are taken and fresh rulings are made by the American Court. The static reference contained in paragraph 13 cannot account for the evolution of the U.S. proceedings. |
| 55. Finally, and most importantly, the reference to pending U.S. litigation contaminates the case before this Court. A judge of the Federal Court of Canada must decide the issue of infringement based on the evidence in this case and on the basis of Canadian law. The inclusion of this allegation is a transparent attempt by the Defendants to improperly influence this Court. |
[13] I am satisfied that the judge at the merits will know the appropriate weight paragraph 13 must receive under the circumstances and that he will not allow his thinking to be contaminated. Therefore, I shall not order the striking out of this paragraph.
[14] As success is divided, costs shall be in the cause.
Richard Morneau
Prothonotary
MONTREAL, QUEBEC
June 27, 2000
FEDERAL COURT OF CANADA
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT NO.:
STYLE OF CAUSE:
T-385-00
CABOT SAFETY INTERMEDIATE CORPORATION, AEARO COMPANY and AEARO CANADA LIMITED
Plaintiffs
AND
MINNESOTA MINING AND MANUFACTURING COMPANY and 3M CANADA COMPANY
Defendants
PLACE OF HEARING:Montreal, Quebec
DATE OF HEARING:June 21, 2000
REASONS FOR ORDER BY RICHARD MORNEAU, ESQ., PROTHONOTARY
DATE OF REASONS FOR ORDER:June 27, 2000
APPEARANCES:
| Mr. Brian Daley Mr. George Locke |
for the Plaintiffs |
| Mr. Roger T. Hughes Mr. Stephen M. Lane Ms. Elizabeth Velentina |
for the Defendants |
SOLICITORS OF RECORD:
| Ogilvy Renault Montreal, Quebec |
for the Plaintiffs |
| Sim, Hughes, Ashton & McKay Toronto, Ontario |
for the Defendants |