Date: 20051230

Docket: T-432-05

Citation: 2005 FC 1743

Montréal, Quebec, the 30^th day of December 2005

PRESENT: RICHARD MORNEAU, PROTHONOTARY

 

BETWEEN:

IPL INC.

Plaintiff

(defendant by counterclaim)

and

 

HOFMANN PLASTICS CANADA INC.

Defendant

(plaintiff by counterclaim)

 

 

REASONS FOR ORDER AND ORDER

 

[1]               This is a motion by the plaintiff and defendant by counterclaim (the plaintiff) in an action for infringement of a patent filed pursuant to Rule 181 of the Federal Courts Rules (the Rules) for the defendant and plaintiff by counterclaim (the defendant) to provide further particulars in respect of four paragraphs of its defence and counterclaim (the defence).

 

Rules of law on particulars

 

[2]               The requirements applicable to pleadings with respect to particulars are set out in rules 174 and 181(2) of the Rules.  They read as follows:

 

 

[3]               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 page 10, Mr. Justice Rouleau 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.

 

[4]               However, any request for particulars also seems to be subject to certain limitations.  In a word, before making an order in such a matter, the Court must consider whether a party has sufficient information to understand the opposing party’s case and prepare an adequate response, whether that be a defence or reply.  (See Astra Aktiebolag v. Inflazyme Pharmaceuticals Inc. (1995), 61 C.P.R. (3d) 178 (F.C.T.D.), at page 184.)

[5]               In Embee Electronic Agencies Ltd. v. Agence Sherwood Agencies Inc. et al. (1979), 43 C.P.R. (2d) 285 (F.C.T.D.), at page 287, Mr. Justice Marceau explained the extent to which a defendant is entitled at the stage of the pleadings to have particulars about the plaintiff’s evidence.  I am of the view that the following observations by Mr. Justice Marceau may be applied mutatis mutandis to the request for particulars made by the plaintiff concerning 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.

 

[Emphasis added.]

 

Analysis

 

[6]               The defendant emphasized from the outset that a strict approach should be taken to this motion by the plaintiff since the latter did not really support it by an affidavit setting out why it was not able to give instructions to its counsel in relation to its reply.

 

[7]               Although the point of the defendant is well taken, the absence of affidavit is not necessarily fatal in every case.  As the Court indicated in Covington Fabrics Corp. v. Master Fabrics Ltd. (1993), 48 C.P.R. (3d) 521, at page 522:

The absence of a request and of an affidavit setting out with some particularity what particulars are required can be waived if the need for particulars is obvious from the file.  That the party cannot plead without the particular might also be obvious from the file and that the party does not have the particulars might be assumed in a proper case.

 

(See also Omark Industries Inc. v. Windsor Machine Co. Ltd. (1980), 56 C.P.R. (2d) 111, at page 112, at the bottom of the page.)

 

[8]               In the case at bar, I am of the view that the need to obtain the particulars sought is apparent from the record.

 

[9]               As to paragraph 6 of the defence, the plaintiff complained that the defendant did not disclose the substantive facts on which it relied in denying that there was an infringement of the patent at issue.  In other words, as to paragraph 6 of the defence, the plaintiff essentially wanted to know what elements described in the patent are not incorporated in the defendant’s products.

 

[10]           Paragraph 6 of the defence reads as follows:

6.  Hofmann Plastics denies that any of the products made, distributed and sold by it in Canada infringe any of the claims of the ‘225 Patent.  In particular, the Hofmann Plastics products do not have the essential elements of any of the claims of the ‘225 Patent, as set out in those claims and as described above.

 

 

[11]           Paragraph 6 should, however, not be read in isolation, and in this regard said paragraph refers indirectly to paragraph 5 of the defence, and I would think that subparagraphs (a) to (c) thereof, in the absence of an affidavit by the plaintiff to the contrary, identify a sufficient number of elements to enable the plaintiff to respond intelligently to the defence.  Paragraph 5 of the defence reads:

5.  The ‘225 Patent claims a specific tamper-evident container and closure combination with specific essential elements including at least:

 

(a)        The claimed container must consist of a body having a bottom wall and side walls joined with rounded corners;

 

(b)        the claimed container must display a continuous peripheral flange including a horizontal portion projecting outwardly from the side walls and rounded corners, said flange being integrally connected to the side walls and rounded corners; and

 

(c)        there must be gap means in the connection of the continuous and integrally-connected flange at at least one corner of the claimed container to weaken and render breakable the corner connection.

 

[12]           Therefore, paragraph 6 of the defence does not call for further particulars.

 

[13]           The plaintiff also took issue with paragraph 9 of the defence, which reads:

9.        In addition, the 225 Patent is invalid for obviousness in light of the prior art references cited in the proceeding paragraph and the common general knowledge of persons skilled in the art.

 

 

 

[14]           The prior art references to which the defendant refers in paragraph 9 of its defence are five in number and are listed without particulars at paragraph 8 of the defence.

 

[15]           In its written submissions in opposition to this motion, the defendant argued that the number of prior art references is thus rather small and the patents in question are short and straightforward.  However, I am not willing to dispense the defendant from having to give further particulars in relation to said paragraph 9.  On the contrary, I agree with the plaintiff’s request for particulars and I consider that prima facie the following comments from Machineries Tenco Ltée v. Weldco-Beales Manufacturing Ltd. (1996), 69 C.P.R. (3d) 78, at pages 79‑80, should also be followed even though the defendant argued that the patents here are, in all respects, straightforward and not numerous:

Defendant’s counsel also contended that the invention reflected in each of the patents relied on in paragraph 17 of the statement of defence is a simple one and, therefore, no further particularization was required to allow the Plaintiffs to plead intelligently.  I was referred in that regard to the case of Parker et al. v. G. M. Gest Ltd. et al. (1951), 15 C.P.R. 76, in which Senior Master Marriott refused to order most of the particulars sought on the basis that the patent in suit was not of a sufficiently complicated nature to warrant particularization.

 

However, as Walsh J. ruled in Bror With, supra, I am not prepared here to conclude that the inventions relied upon by the Defendant in paragraph 17 of its statement of defence are “... so simple that the judgment in the Parker case should be followed” (at 8).  In addition, I am of the opinion that the situation at bar should be governed by the following comments of Jerome A.C.J. in the case of T.J. Smith & Nephew Ltd. et al. v. Deseret Canada Inc. et al. (1984), 78 C.P.R. (2d) 227, at 228:

 

The defendants contend that since the invention is not complex and since the number of patents is not great, the pleading is sufficient and that the plaintiffs are not placed under an unreasonable burden.  I have recently canvassed the jurisprudence on the issue of sufficiency of pleadings in the cases of FMC Corp. et al. v. Canadian Pneumatic Tool Co. (Ltd.) et al.; B & J Mfg. Co. v. Canadian Pneumatic Tool Co. (Ltd.) et al. and for the reasons set out there, I must reject the defendants’ contention.

 

 

[16]           Therefore, within 30 days of the date of these reasons for order and order, the defendant shall provide to the plaintiff with respect to paragraph 9 of the defence the following particulars:

What elements of each of the prior art references in paragraph 8 Hofmann relies on in arguing that Patent 225 is obvious to a person skilled in the art of the invention described in the said patent.

 

[17]           Finally, the plaintiff took issue with paragraphs 10 and 11 of the defence, which read:

10.     The 225 Patent is also invalid for covetous claiming as the patentee has disclosed and described one closure and container combination having specific attributes, but has claimed so as to include closure and container combinations that are not disclosed or described anywhere in the specification of the 225 Patent.

 

11.     Further, to the extent that there is an invention disclosed in the 225 Patent, which is denied, the claims of the 225 Patent are broader than any invention actually made or disclosed and, therefore, are invalid.

 

 

 

[18]           These paragraphs in the defence thus refer, without listing them, to elements in the patent which apparently are not listed in the specification.

 

[19]           As to those paragraphs, the defendant submitted that they constitute technical challenges to the validity of the patent which are based on an interpretation of the claims.

 

[20]           I do not share the defendant’s viewpoint at all.

 

[21]           In the case at bar, it is important to bear in mind that, in terms of pleadings, the defendant is in the position of a plaintiff when the adequacy of its allegations is to be assessed.  As Mr. Justice Addy said in Caterpillar Tractor Co. v. Babcock Allatt Ltd. (1982), 67 C.P.R. (2d) 135, at page 137, the defendant’s assertions:

 

. . . are not mere denials of matters alleged by the plaintiff and which the latter must prove but, on the contrary, constitute positive assertions which must be affirmatively proven by the defendant.  The latter, in so far as these assertions are concerned, is in the same position as a plaintiff would be in seeking to have a patent declared null and void.

 

(See also on this point Bror With v. Ruko of Canada Ltd. (1976), 31 C.P.R. (2d) 3, at page 5.)

 

[22]           In B & J Mfg. Co. v. Canadian Pneumatic Tool Co. (1984), 77 C.P.R. (2d) 257, the Court dealt with a request for particulars regarding a defence and counterclaim in a patent infringement action.  In examining the request, Associate Chief Justice Jerome noted the following , at page 259:

The remaining issues raise questions which have given this court considerable difficulty in the past.  They touch several defences commonly raised in infringement cases by way of attack upon the validity of the patent in suit:

 

(1)    prior use;

(2)    prior publication;

(3)    common general knowledge;

(4)    lack of distinction;

(5)    failure to disclose the distinctive features of the invention in clear terms;

(6)    the patent claims more than the invention; and

(7)    the invention is inoperative.

 

The defendants have followed the customary practice of pleading the defences in language as close as possible to the statute or jurisprudence, as the case may be.  I am frankly somewhat puzzled at the constant reluctance of counsel to make a more direct connection between these general defences and the particular issues in suit and, as a matter of principle and good practice, it seems well established that they ought to be required to do so.  I base that conclusion upon the reasoning of four learned members of this court as follows.

 

[23]           The four judges cited by Associate Chief Justice Jerome were Mr. Justice Jackett in Leithiser et al. v. Pengo Hydra‑Pull of Canada Ltd. (1974), 17 C.P.R. (2d) 110, at pages 115 and 116; Mr. Justice Walsh in Bror With, supra; Mr. Justice Marceau in Mitten et al. v. P. H. Tech Inc. (1982), 63 C.P.R. (2d) 232, at page 233; and Mr. Justice Mahoney in Omark Industries Inc., supra, at pages 113 and 114.

 

[24]           Therefore, based on these general comments, the defendant is hereby ordered, within 30 days of the date of these reasons for order and order, to provide the plaintiff further particulars with respect to paragraphs 10 and 11 of the defence:

What elements claimed in Patent 225 are not described in the specification.

 

[25]           In addition, the plaintiff shall file and serve its reply and defence to the counterclaim within 20 days of receipt of the further particulars here ordered.

 

[26]           Costs in the cause.

 

 

“Richard Morneau”

 

 

 

 

 

 

 

 

Certified true translation

François Brunet, LLB, BCL

FEDERAL COURT

 

SOLICITORS OF RECORD

 

 

 

DOCKET:                                          T-432-05

 

STYLE OF CAUSE:                          IPL INC. v. HOFMANN PLASTICS CANADA INC.

 

PLACE OF HEARING:                    Montréal, Quebec

 

DATE OF HEARING:                      December 5, 2005

 

REASONS FOR ORDER

AND ORDER BY:                            Richard Morneau, Prothonotary

 

DATED:                                             December 30, 2005

 

 

APPEARANCES:

 

Alain Y. Dussault	FOR THE PLAINTIFF (DEFENDANT BY COUNTERCLAIM)
Andy Radhakant	FOR THE DEFENDANT (PLAINTIFF BY COUNTERCLAIM)

 

SOLICITORS OF RECORD:

 

FASKEN, MARTINEAU, DuMOULIN Montréal, Quebec	FOR THE PLAINTIFF (DEFENDANT BY COUNTERCLAIM)
HEENAN, BLAIKIE LLP Toronto, Ontario	FOR THE DEFENDANT (PLAINTIFF BY COUNTERCLAIM)