Federal Court Decisions

     T-726-96

OTTAWA, ONTARIO, Friday, this 7th day of February, 1997

PRESENT: The Honourable Mr. Justice Allan Lutfy

BETWEEN:

     McCONWAY & TORLEY CORPORATION,

     and MCT HOLDINGS, INC.,

     Plaintiffs,

     - and -

     MARITIME STEEL & FOUNDRIES, LIMITED,

     Defendant.

     REASONS FOR ORDER AND ORDER

LUTFY J.:

     Pursuant to Rule 415(3) of the Federal Court Rules, the plaintiffs seek particulars concerning certain allegations in the Statement of Defence and Counterclaim in this patent infringement action. The patent in suit relates to railway vehicle coupler yokes. This patent was filed in Canada on July 10, 1985 and issued on June 21, 1994 (Canadian Letters Patent No. 1,330,323). The defendant denies any infringement and counterclaims for a declaration that claims 1 through 16 of the patent are invalid.

     The principal contentious issues in this motion for particulars result from paragraphs 13 through 16 of the Statement of Defence and Counterclaim:

13.      Contrary to Section 27(1)(a) of the Patent Act, supra, what is described and claimed in the Patent was not new, the same having been known or used by others, including the inventors of the patents listed in Schedules "A" and "B", or their agents or assigns. Prior to the date of invention, if any, claimed by the Plaintiff said persons had used or disclosed the alleged invention in such a manner that it had become available to the public, contrary to Section 61(1)(a) of the Patent Act.

14.      Contrary to Section 27(1)(b) of the Patent Act, supra, what is described and claimed in the Patent was not new, the same having been described in patents and publications printed more than two years before the filing of the application therefor in Canada, as set forth in Schedule"A", and having regard to what was common general knowledge in the art at that date.

15.      What is described and claimed in the Patent was obvious as of the earliest provable date of making the alleged invention, having regard to the patents and publications set forth in Schedule "B" and the common general knowledge in the art as of that date.

16.      Contrary to Section 27(1)(c) of the Patent Act, supra, what is described and claimed in the Patent was in public use and on sale, in Canada, including by the Plaintiff McConway & Torley Corporation, for more than two years prior to the filing of the application, in Canada, for the Patent.

     The particulars sought and in dispute concerning these four paragraphs are stated as follows:

With respect to paragraph 13,

"...full and complete particulars including an itemized list of what particular aspects of each prior art device are alleged to relate to which particular aspect of the patent in issue;"

         With respect to paragraphs 14 and 15,

"(i) full and complete particulars including an itemized list of what particular aspects of each document listed in Schedules "A" and "B" are alleged to relate to which particular aspects of the patent in issue;

(ii) full and complete particulars including an itemized list of what particular aspects of the alleged "common general knowledge in the art at that date" are being relied upon in support of the defendant's allegations;

(iii) full and complete particulars including an itemized list of what particular aspects of the alleged "common general knowledge in the art at that date" being relied upon relate to which particular aspects of the patent in issue;"

With respect to paragraph 16,

"an itemized list of what particular aspects of each device used or sold by people or companies other than the plaintiffs are alleged to relate to which particular aspects of the patent in issue."

     Schedule "A" to the defendant's pleading is a list of twenty prior art references incorporating eighteen Canadian and U.S. patents issued between 1920 and 1934 and extracts from two non-patent industry publications (one extract is said to be one page and the other seventeen pages). Schedule "B" is identical to Schedule "A". The documents referred to in the Schedules have not been produced for this motion. The patent in issue and its sixteen claims are described in 32 pages.

     Counsel for the plaintiffs characterizes the litigation as complex and suggests that the eighteen prior patents relied upon by the defendant would require the review of voluminous documentation. No affidavit material was filed in this regard. In his view, there exists consistent case law in this Court over the past years requiring particulars to be produced in circumstances similar to the present case.¹

     Counsel for the defendant, in attempting to distinguish the case law referred to by his opponent, submitted that each motion for particulars must be considered in the context of the specific case. In his view, the plaintiffs introduced no evidence to establish why the particulars were necessary for the preparation of their reply or for trial. His suggestion that the patent in issue was a simple one is also unsupported by affidavit evidence. Reference was made to recent decisions where particulars were denied in similar circumstances.²

     The case law is mixed. Some decisions require particulars concerning prior art devices and matters of common general knowledge. Others do not. Some judges have commented on the necessity and the extent of affidavit evidence to support a motion for particulars. Others have distinguished between particulars for pleadings and for trial. In the end, courts have applied the basic principles concerning motions for particulars very much on a case by case basis. Where particulars have been ordered, the courts have invariably been concerned with identifying the relevant factual issues in the voluminous documentation so often encountered in patent litigation.

     None of the decisions relied upon by the plaintiffs ordered the responding party to specify how the particulars concerning prior art devices and common general knowledge relate to the specific aspects of the patent in issue. In my view, this would be beyond what is required in a pleading.

     In this case, more complete evidence by the plaintiffs and the defendant concerning the documentation with respect to the eighteen patents would have been of assistance. However, the case law cited by the plaintiffs and number of patents relied upon by the defendant strongly suggest that particulars are required in these circumstances. Accordingly, I am satisfied that the defendant should specify, in respect of paragraphs 13 through 15 of its pleading, those particular aspects relied upon with respect to the prior art devices and the factual basis concerning any common general knowledge in the art not otherwise referred to in the prior art devices. Similarly, particulars will be ordered with respect to paragraph 16.

     Where the patents referred to in the Schedules are described at some length, I expect the particulars will specify the relevant portions of the patent and not simply refer to the whole of the patent. In making this obiter comment, I have in mind the recent decision of Richard J. in Cabot Safety Intermediate Corporation v. Arkon Safety Equipment Inc., an unreported decision of January 15, 1997 under Court File No. T-2165-95.

     For the reasons mentioned during hearing of this motion, no particulars will be ordered with respect to paragraph 4 of the Statement of Defence and Counterclaim which I consider to be an appropriate denial of those allegations in paragraph 6 of the Amendment Statement of Claim not otherwise admitted. Concerning paragraph 21 of the Statement of Defence and Counterclaim, counsel for the defendant stated that the allegation referred to the definition of "invention" in section 2 of the Patent Act as it relates to subsection 27(1) of the legislation. In the circumstances, the particulars sought by the plaintiffs will not be required.

     Finally, the defendant consents to providing the particulars sought at paragraph 2(b)(i) of its Notice of Motion concerning paragraph 13 of the Statement of Defence and Counterclaim and at paragraph 2(d)(i) with respect to paragraph 16 of the Statement of Defence and Counterclaim.

     There will be no order as to costs.

                        

                         Judge

     O R D E R

     IT IS ORDERED THAT the defendant within forty-five (45) days of the date hereof, or such further period as the parties may agree, provide further and better particulars concerning the following paragraphs of its Statement of Defence and Counterclaim:

1.      With respect to paragraph 13,

(i) full and complete particulars as to whether the public disclosure alleged to have occurred prior to the date of invention is limited to the prior art devices described in the documents referred to in Schedule "A" and "B" to the Statement of Defence and Counterclaim. If other prior art devices are being relied upon by the defendant, then the defendant is to provide full and complete particulars, including when these devices were allegedly used and by whom;

(ii) the particular aspects of each prior art device relied upon by the defendant as relating to the patent in issue;

         With respect to paragraphs 14 and 15,

(i) the particular aspects of each document listed in Schedules "A" and "B" as relating to the patent in issue; and

(ii) the particulars aspects of the alleged "common general knowledge in the art at that date" being relied upon in support of the defendant's allegations.

2.      With respect to paragraph 16,

(i) full and complete particulars as to whom, if anyone other than the plaintiffs, had allegedly used or sold what is described and claimed in the patent more than two years prior to the filing of the application. If the acts of anyone other than the plaintiffs are relied upon, then the defendant is to provide the following full and complete particulars:

(ii) a list indicating who those other people or companies are, what exactly they had used or sold, when and to whom; and

(iii) the particular aspects of each device used or sold by persons other than the plaintiffs as relating to the patent in issue;

3.      The time for filing the plaintiffs' reply in Defence to Counterclaim be extended to within twenty (20) days after delivery of the afore-mentioned particulars;

4.      In every other respect, the motion is dismissed;

5.      There will be no order as to costs.

                         Allan Lutfy

                         Judge

__________________

     ¹      B & J Manufacturing Co. v. Canadian Pneumatic Tool Co. (Ltd.) (1984), 77 C.P.R. (2d) 257 (F.C.T.D.); Leithiser v. Pengo Hydra-Pull of Canada Ltd. (1974), 17 C.P.R. (2d) 110 (F.C.A.); Bror With v. Ruko of Canada Ltd. (1976), 31 C.P.R. (2d) 3 (F.C.T.D.); Mitten v. P.H. Tech Inc. (1982), 63 C.P.R. (2d) 232 (F.C.T.D.); Omark Industries Inc. v. Windsor Machine Co. Ltd. (1980), 56 C.P.R. (2d) 111; Wellcome Foundation Ltd. v. Novopharm Ltd. (1992), 44 C.P.R. (3d) 456 (F.C.T.D.); Machineries Tenco Ltée v. Weldco-Beales Manufacturing Ltd. (1996), 69 C.P.R. (3d) 78 (F.C.T.D.); Superseal Corp. v. Glaverbel-Mecaniver Canada Limitée (1976), 30 C.P.R. (2d) 97; T.J. Smith & Nephew Ltd. v. Deseret Canada Inc. (1984), 78 C.P.R. (2d) 227 (F.C.T.D.); Amerace Corp. v. Minnesota Mining & Manufacturing Corp. (1975), 20 (C.P.R.) (2d) 105 (F.C.T.C.).

     ²      Omark Industries Inc., supra; CSI Manufacturing and Distribution Inc. et al. v. Astroflex Inc. (1992), 45 C.P.R. (3d) 195 (F.C.T.D.); International Paper Co. v. E.B. Eddy Forest Products Ltd. (1986), 10 C.P.R. (3d) 286 (A.S.P.); Norac Systems International Inc. v. Massload Technologies Inc. (December 17, 1996), Court File No. T-1973-95 (F.C.T.D.).