Date : 19990907
Docket : T-1051-95
OTTAWA, ONTARIO, TUESDAY, THIS 7TH DAY OF SEPTEMBER, 1999
BEFORE: THE HONOURABLE MADAME JUSTICE McGILLIS
BETWEEN:
BEMALUX INC.
Plaintiff
- and -
BENTOFIX TECHNOLOGIES, INC.
Defendant
ORDER
UPON motion on behalf of Amcol International Corporation, American Colloid Company, Colloid Environmental Technologies Company and Amcol Holdings Canada Ltd. (hereinafter collectively referred to as the "Amcol Companies") for:
- . An Order pursuant to Rule 109 granting the Amcol companies leave to intervene and respond to the motion of the defendant, Bentofix Technologies, Inc. ("Bentofix") to amend its pleading in Federal Court File no. T-1051-95;
- . An Order dismissing the defendant"s motion seeking leave to amend its pleadings;
- . Costs of this motion.
AND UPON being satisfied that the proposed intervenors did not have a different perspective on the issues raised in the motion, given the arguments advanced by counsel for the plaintiff;
IT IS ORDERED THAT the motion for intervention is dismissed. No order as to costs.
| D. McGillis |
| Judge |
| OTTAWA |
- .
Date : 19990907
Docket : T-1051-95
OTTAWA, ONTARIO, TUESDAY, THIS 7TH DAY OF SEPTEMBER, 1999
BEFORE: THE HONOURABLE MADAME JUSTICE McGILLIS
BETWEEN:
BEMALUX INC.
Plaintiff
- and -
BENTOFIX TECHNOLOGIES, INC.
Defendant
ORDER
The motion is granted in part. The proposed amendments to paragraph 22(c)(iii) and paragraph 22(d) and paragraph 14 of schedule "A" of the Amended Statement of Defence and Counterclaim are permitted on consent. In all other respects, the motion is dismissed. Costs of the motion are awarded to the plaintiff in the amount of $1,000.00.
| D. McGillis |
| Judge |
| OTTAWA |
- .
Date : 19990907
Docket : T-1051-95
BETWEEN:
BEMALUX INC.
Plaintiff
- and -
BENTOFIX TECHNOLOGIES, INC.
Defendant
REASONS FOR ORDER
[Delivered from the Bench at Ottawa, Ontario
on Tuesday, September 7, 1999]
McGILLIS, J.
[1] The defendant Bentofix Technologies Inc. has brought a motion to amend the Statement of Defence and Counterclaim.
[2] This action for infringement of Canadian patent no. 1,143,957 (" 957 patent") was commenced by a Statement of Claim filed by the plaintiff in May 1995. The defendant filed a Statement of Defence and Counterclaim in October 1995, denying infringement and alleging invalidity of the plaintiff"s patent. The pleadings were closed in February 1996. Affidavits of documents were exchanged and examinations for discovery were held in early February 1999. There are outstanding matters related to the examinations for discovery, and the plaintiff also intends to bring a motion requiring the defendant to produce a sample of its product. Although I have not outlined all of the procedural history of the proceeding, I have nevertheless considered it in its entirety in arriving at my decision.
[3] During the course of the hearing, counsel for the plaintiff consented to the proposed amendments in paragraph 22(c)(iii), paragraph 22 and paragraph 14 of Schedule "A" to the Amended Statement of Defence and Counterclaim. In all other respects, the motion was contested.
[4] In the proposed amendment in paragraph 22(e) of the Amended Statement of Defence and Counterclaim, the defendant has stated that the plaintiff disclosed to the Canadian patent examiner the prior art documents identified by the examiner in the U.S. Patent and Trademarks Office. However, the defendant has alleged that the plaintiff concealed known prior art from the U.S. examiner, thereby avoiding its disclosure in Canada. In opposing the proposed amendment to paragraph 22(e), counsel for the plaintiff submitted that the alleged wrongful activity in the United States is irrelevant to the question of the validity of the Canadian patent. In support of his submission, he relied on Beloit Canada Ltd. et al v. Valmet OY (1986), 8 C.P.R. (3d) 289 (F.C.A.) as authority for the proposition that allegations concerning a patent application in another country are not material in Canadian proceedings. Counsel for the defendant cited no authority to support the proposed amendment. In the circumstances, I am satisfied that the plaintiff"s alleged conduct on the patent application in the United States is not material. As a result, the amendment should not be permitted on the basis that is irrelevant, frivolous and vexatious.
[5] In the proposed amendment in paragraph 23 of the Amended Statement of Defence and Counterclaim, the defendant has alleged that the plaintiff is not entitled to damages or any other relief for the manufacture, sale or use of the invention described in the 957 patent due to a "1990 exclusive licence" to a third party of all rights under the patent for the Western Canada region. However, by letter dated September 3, 1999, an answer previously given by the plaintiff"s representative on examination for discovery, indicating that the licence was exclusive, was corrected, under Rule 245(1) of the Federal Court Rules, 1998 , to read that the licence was non-exclusive in nature. In the circumstances, the proposed amendment is refused, with leave to the defendant to make a further amendment, if any examination conducted under Rule 245(2) reveals pertinent information concerning the nature of the licence.
[6] In the proposed amendments in paragraphs 26 to 47 of the Amended Statement of Defence and Counterclaim, the defendant has alleged infringement of another patent, Canadian patent No. 1,310,569 (" 569 patent"), by the plaintiff (defendant by counterclaim) and four new parties. The four new parties are not otherwise involved in the current action. The defendant has also sought to add as a plaintiff by counterclaim the owner of the 569 patent.
[7] During the course of argument, counsel for the defendant conceded, on the basis of the decision in Visx, Inc. v. Summit Technology Inc. et al (1997), 72 C.P.R. (3d) 520 (F.C.T.D.), that the owner of the 569 patent could not be added as a plaintiff in the counterclaim, since it is not a defendant in the present action. Given the admission made by counsel for the defendant, that amendment is therefore refused.
[8] With respect to the other proposed amendments pertaining to the counterclaim, I have not been persuaded, on the basis of the evidence before me, that the defendant should be permitted to institute a separate and distinct patent infringement action against four new parties in the counterclaim in the present proceeding. Such a fundamental procedural change at this late stage in the proceeding can only serve to delay further the prosecution of the present action in which examinations for discovery have been substantially completed. Furthermore, the limited evidence before me does not establish that it would be more convenient and efficient to have the issues raised in the counterclaim concerning the alleged infringement by several new parties of the 569 patent tried together with the alleged infringement of the 957 patent. In the circumstances, I have concluded that the defendant ought to institute a separate action for infringement of the 569 patent.
[9] The motion is granted in part. The proposed amendments to paragraph 22(c)(iii) and paragraph 22(d) and paragraph 14 of schedule "A" of the Amended Statement of Defence and Counterclaim are permitted on consent. In all other respects, the motion is dismissed. Costs of the motion are awarded to the plaintiff in the amount of $1,000.00.
| D. McGillis |
| Judge |
OTTAWA
September 7, 1999