Date: 19980209
Docket: T-1064-97
MONTRÉAL, QUEBEC, THE 9th DAY OF FEBRUARY 1998
Present: RICHARD MORNEAU, PROTHONOTARY
Between:
GROUPE TREMCA INC.
and
JAGNA LIMITED,
Plaintiffs,
AND
TECHNO-BLOC INC.,
Defendant.
ORDER
The defendant's motion for leave to file an amended defence and counterclaim based on the draft attached to its notice of motion filed on January 27, 1998 is allowed, with the exception of paragraphs 18 and 20 of the said draft. The draft may of course be renumbered accordingly.
Richard Morneau
Prothonotary
Certified true translation
M. Iveson
Date: 19980209
Docket: T-1064-97
Between:
GROUPE TREMCA INC.
and
JAGNA LIMITED,
Plaintiffs,
AND
TECHNO-BLOC INC.,
Defendant.
REASONS FOR ORDER
RICHARD MORNEAU, PROTHONOTARY
[1] This is a motion by the defendant under Rules 402(4) and 420 of the Federal Court Rules (the Rules) for leave to file an amended defence and counterclaim (the defence).
[2] The Court's leave is required because the plaintiffs object to the inclusion of three paragraphs, numbers 18, 20 and 28.c), in the defence.
[3] In their action, the plaintiffs accuse the defendant of infringing their patent No. 1,182,295 (the patent at issue). It should be noted in passing that the application number for this patent was 408,914 and that the patent corresponds to U.S. patent No. 4,490,075.
[4] The disputed paragraphs of the defence and those required to understand them read as follows:
17. During the prosecution of U.S. patent no. 4,490,075, which corresponds to Canadian patent no. 1,182,295, German patent no. 2755833 (Famy) was cited by the examiner as relevant prior art. Such patent taught the use of a wedge key being inserted in a channel located on the top surface of a lower block and in a channel on the lower surface of an upper block to join such blocks to one another to erect straight or inclined retaining walls.
18. To overcome the Famy citation, the claims of U.S. patent no. 4,490,075 were re-drafted so as to emphasize the structural features which distinguished the invention disclosed in the Risi patent application over such prior art. Subsequent to such amendments, this patent application was allowed and issued on December 25, 1984.
19. On or about February 28, 1984, the existence of German patent no. 2755833 (Famy) was voluntarily disclosed by the Risi applicants to the Canadian Patent Office and notwithstanding such disclosure, Canadian Risi patent application No. 408,914 was allowed on May 24, 1984.
20. Notwithstanding such allowance, on or about October 11, 1984, the Risi applicants filed a request to amend the wording of the allowed claims of Canadian patent application no. 408,914 so as to make them conform with the wording of the claims of their corresponding allowed U.S. patent application. Such request was approved and patent application no. 408,914 issued on February 12, 1985. The wording of the claims of Canadian patent no. 1,182,295 corresponds to the claims of U.S. patent no. 4,490,075.
. . .
28.c) The alleged invention described and claimed in the said patent was made available to the public in Canada more than two years prior to the filing of application no. 408,914, in that the substance of the said invention was disclosed by Angelo Risi, one of the named inventors, to Beamish Construction in mid-July 1980.
Analysis
[5] The parties agree on the principles applicable to the amendment of pleadings. At page 4 of my reasons in Jagna Limited and Groupe Tremca Inc. v. Transpavé Inc., an unreported decision dated September 12, 1997, Court file No. T-786-93, I referred to these principles as follows:
In regard to the applicable principles for amending pleadings, the following passage from Canderel Ltd. v. Canada (1993), [1994] 1 F.C. 3 (C.A.), at page 10, accurately reflects the generous approach the Court should take in such matters:
. . . while it is impossible to enumerate all the factors that a judge must take into consideration in determining whether it is just, in a given case, to authorize an amendment, the general rule is that an amendment should be allowed at any stage of an action for the purpose of determining the real questions in controversy between the parties, provided, notably, that the allowance would not result in an injustice to the other party not capable of being compensated by an award of costs and that it would serve the interests of justice.
It might be added, as an aside, that, as in the case of an application to strike out a pleading, an amendment should be allowed unless the amendment is clearly and obviously doomed (see Raymond Cardinal et al. v. Her Majesty the Queen, unreported, F.C.A., January 31, 1994, file A-294-77, [Heald, Décaryand Linden JJ.A.]).
[6] In the instant case, the plaintiffs object to the inclusion of paragraphs 18 and 20 in the defence. In their opinion, it is clear that the defendant is using these paragraphs to try, by referring to amendments made during the examination of the prosecution files for the patent at issue and the corresponding U.S. patent, to attach a legal interpretation to the scope of the claims of the patent at issue.
[7] If so, it is my view that the courts have clearly prohibited such a practice and that the present situation does not fall under one of the few exceptions in which a party has been authorized to refer to a prosecution file to establish, inter alia, what prior art was before the Patent Office (see Samsonite Corp. v. Holiday Luggage (1988), 20 C.P.R. (3d) 291, and Foseco Trading A.G. v. Canadian Ferro Hot Metal Specialties, Ltd. (1991), 36 C.P.R. (3d) 35) or that misrepresentations were made (see Beloit Canada Ltd. v. Valmet Oy (1986), 8 C.P.R. (3d) 289). In P.L.G. Research Ltd. v. Jannock Steel Fabricating Co. (1991), 35 C.P.R. (3d) 346, the Court came to the following conclusion, which I still consider authoritative, at pages 349-50:
That is, I came to the conclusion in Amfac that the patentee and potential infringers are both bound by the terms of the patent as issued. Just as a patentee could not have his patent broadened by showing his intention to claim a broader invention through evidence of what transpired during the prosecution of his patent application, neither should an alleged infringer be able to resort to such evidence to show it is narrower in scope than the patent states. To do so would be to override the words of the patent as issued which, in my understanding, are to be determinative of the scope of the patent. By the same token, in my view, an alleged infringer cannot excuse acts of infringement of the words of the patent by invoking other words submitted by the patentee in prosecuting his patent application. At law he is not entitled to rely on such "representations" in place of the very words of the patent.
. . .
Taking the view that I do, that for determining the scope of an invention resort must be had only to the patent together with any expert evidence required to explain it, I am unable to accept that in Canadian law a patentee may be estopped by statements made by him in prosecuting his patent application. Nor do I understand how in law an alleged infringer can be heard to say that he was entitled to rely on representations made prior the issue of the patent in lieu of the words of the patent itself.
[8] In his argument, counsel for the defendant did not seem to deny that the purpose of paragraphs 18 and 20 is to obtain an interpretation of the patent at issue and not simply to identify prior art.
[9] He argued that the inclusion of these paragraphs should nevertheless be allowed because in his opinion they fall somewhere between a simple reference to prior art - which is allowed - and the reproduction in pleadings of statements or representations made in prosecuting a patent application for the purpose of interpreting it.
[10] Counsel insisted that paragraphs 18 and 20 do not reproduce statements or representations made to the Patent Office by a patent agent for the purpose of having the patent application approved, but simply establish that prior art was filed and that the application was amended accordingly.
[11] I do not think that the defendant's argument can stand in light of the above-quoted principle stated by the Court in P.L.G. Research. In my view, alleging what the patent agent did concerning prior art is equivalent under the circumstances to alleging what the agent may have said about these amendments.
[12] I also agree with counsel for the plaintiffs that the filing of an amendment with the Patent Office constitutes a "representation" within the meaning of P.L.G. Research.
[13] Further, the fact, as alleged, that paragraphs 18 and 20 are related to an unchallenged paragraph of the defence (paragraph 27) is in my view immaterial for saving paragraphs which otherwise clearly contravene judge-made principles.
[14] Consequently, it seems plain and obvious to me that the defendant's motion must be dismissed with respect to paragraphs 18 and 20.
[15] As for the objection to paragraph 28.c), the plaintiffs pointed out that a similar paragraph was used against them in a prior case (T-1005-89) concerning the patent at issue here. The plaintiffs submitted that because the Court did not accept this ground for objection at that time, the defendant in the case at bar should have complied with this Court's Rules relating to drafting and included sufficient particulars in paragraph 28.c) to determine that the inventor referred to in that paragraph is not being challenged on a ground identical to the one he successfully withstood in docket T-1005-89.
[16] I must admit that I find it rather difficult to accept this argument.
[17] First, the reason the Court did not accept the equivalent of paragraph 28.c) in docket T-1005-89 was quite simply that it was not convinced by the evidence adduced, not that the paragraph was imprecise for the purposes of the Rules. There is no indication here that the evidence would not be better or that paragraph 28.c) is not sufficiently precise. If the plaintiffs feel that they are entitled to further and better particulars concerning this paragraph, they must request them of the defendant in writing, and if they are still dissatisfied with the particulars obtained, they can always file a motion under Rule 415 to that effect. At this stage, there is certainly no reason to refuse to include this paragraph.
[18] An order will be issued accordingly. As the result of this motion is divided, costs will not be awarded.
Richard Morneau
Prothonotary
MONTRÉAL, QUEBEC
February 9, 1998
Certified true translation
M. Iveson
Court No. T-1064-97
BETWEEN
GROUPE TREMCA INC.
-and-
JAGNA LIMITED
Plaintiffs
- and -
TECHNO-BLOC INC.
Defendant
REASONS FOR ORDER
FEDERAL COURT OF CANADA
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT FILE NO.:
STYLE OF CAUSE:
T-1064-97
GROUPE TREMCA INC.
-and-
JAGNA LIMITED,
Plaintiffs,
AND
TECHNO-BLOC INC.,
Defendant.
PLACE OF HEARING:Montréal, Quebec
DATE OF HEARING:February 2, 1998
REASONS FOR ORDER BY RICHARD MORNEAU, PROTHONOTARY
DATE OF REASONS FOR ORDER:February 9, 1998
APPEARANCES:
Jacques Léger for the plaintiffs
Jean Carrière for the defendant
SOLICITORS OF RECORD:
Jacques Léger and
Bob Sotiriadis for the plaintiffs
Léger Robic Richard
Montréal, Quebec
Jean Carrière for the defendant
Mendelsohn Rosentzveig Shacter
Montréal, Quebec