Court File No. T-421-97
IN THE FEDERAL COURT OF CANADA
(TRIAL DIVISION)
B E T W E E N:
FAULDING (CANADA) INC.
Plaintiff
- and -
PHARMACIA S.P.A.
Defendant
These are proceedings in the above matter, at the Federal Court of Canada, Trial Division, before Mr. Justice Francis Muldoon, Courtroom No. 7, 9th Floor, University Avenue, Toronto, Ontario, on Monday,
June 15, 1998.
APPEARANCES:
MS. S. BEAUBIEN (For the Plaintiff
MR. G. GAIKIS, Esq. (For the Defendant
COURT REGISTRAR: Stuart Ziegler
--------------------
Nethercut & Company Limited,
Official Reporters,
180 Dundas Street West,
Suite 2304,
Toronto, Ontario
M5G 1Z8
(416) 593-4802
REASONS FOR DECISION
The Court will now give its consideration of this matter, a matter before the Court as an appeal from Prothonotary Giles's decision, in which the Defendant's motion to strike two paragraphs from the Statement of Claim was dismissed.
The Prothonotary's order seems to show a certain asymmetry in that, as counsel suggests, he appears to have taken note of only one of the two items which were before him. He says, at the end of his Order:
| "It is hereby ordered that having decided that there is no evidence that those elements of the invention not specifically mentioned in the prior art, but necessary to show anticipation, are not implied by the elements mentioned, it is not plain and obvious and the Plaintiff has no evidence to support the allegation of anticipation." |
There's a triple negative there.
| "Paragraph 3 of the Notice of Motion, seeking to strike paragraphs in the Statement of Claim was dismissed. The remainder of the Motion was adjourned." |
Well, the court has great respect for Prothonotary Gilles indeed. And yet, the court must be bound by the split decision of a large panel of the Court of Appeal, in the Aqua Gem case, which has been mentioned, and was recently upheld by Mr. Justice Richard in a case called Scott Steel Limited v The Ship, Alarissa, commonly known as the Edmonton Queen.
On page 19 of his Reasons, he held in that case:
| "The Prothonotary did not exercise his discretion in an unreasonable manner. However, in the circumstances of this case, the parties are entitled to the discretion of a judge. As stated in the Aqua Gem case, a judge, on an appeal from a prothonotary, ought to exercise his or her own discretion de novo where a discretionary order of the prothonotary raises a question vital to the final issue of the case. That is not to say that the prothonotary's discretion should never be respected, provided that it is subject to an overriding discretion by a judge where the question involved is vital to the final issue of the case. In this circumstance, the parties are entitled to the discretion of a judge and not that of a prothonotary." |
The court heard from counsel for the plaintiff that it was in these circumstances that one has to regard an overriding discretion by the court.
She indicated that this was vital to a final issue of the case, the prothonotary's discretion, that there was an issue there. I should have thought that it was not a vital issue in the determination of the action, but the plaintiff's own counsel thinks that it is. So, the Court has to exercise its own discretion, a judge's discretion.
One reads with interest the cases of Nabisco (1985) 5 C.P.R. (3D) 417, where Mr. Justice Urie, at page 418, wrote that in that case, the motion judge's decision ought to be upheld -- and in a case very similar to the present one.
At Tab 5 of the plaintiff's book of authorities, one finds Control Data v Senstar (1988) 28 C.P.R. (3D) 421, a decision of Mr. Justice McNair, is reported at page 426 as finding a significant delay in the bringing of the motion to strike, and dismissing it largely on that account.
In the case of AT & T Technologies Inc. v. Mitel Corp. (1989) 26 C.P.R. (3d) 238, Madam Justice Reed indicates, at page 265, on the question of validity: An invention which is known or used can succeed when you can show that the third party made it public by means of publishing a paper. The key factor will be the testimony of persons called for the third party. Here the plaintiff's counsel suggests persons from Rhône-Poulenc.
We've heard as well about a case of Mr. Justice Dubé, Services et Produits Hospitaliers v. W. Laframboise (1985) 6 C.P.R. (3d) 238. In that case, Justice Dubé, at page 247, spoke of the prior art being essentially similar, so counsel reasoned the matter turns on the extent of similarity.
There is indeed a stringent test for striking out. It is based on Rule 221.2 (a).
In the matter at Bar, although this judge does not claim to have any knowledge of chemistry or pharmaceutical companies, the illustrations given by Mr. Gaikis are telling, in terms of the pH balance and the differences shown there, and in terms of the absence of elements pleaded.
The Court is inclined, therefore, to allow the application to strike out the offending paragraphs, but with these conditions.
First of all, the condition is that the plaintiff will once again be entitled to amend those paragraphs, if the plaintiff can. But, if the plaintiff cannot, the jig is up; you might as well understand that. But the plaintiff will be entitled to amend for those struck-out paragraphs, and the plaintiff will pay costs of the motion, which the court hereby assesses as a lump sum of $950. That will be paid before the plaintiff may proceed with another step in the matter.
The Court imagines that this displeases both of you, but that seems to be the fair resolution of this matter.