Date: 19990319
Docket: T-390-98
MONTRÉAL, QUEBEC, MARCH 19, 1999
| BEFORE: RICHARD MORNEAU, PROTHONOTARY |
Between:
PIERRE DESROCHERS
and
NOVATECH FABRICATION INC.
and
KIMPEX ACTION INC.,
Plaintiffs,
Cross-defendants.
AND
BOMBARDIER INC.,
Defendant,
Cross-plaintiff.
ORDER
The defendant and cross-plaintiff ("the defendant") will furnish the plaintiffs and cross-defendants ("the plaintiffs") with the following particulars within 30 days of this order:
| In respect of paragraph 15 of its defence and cross-demand, which specifications of Canadian patent No. 2,147,946 the defendant refers to when it states [TRANSLATION] ". . . that it is not the features described and claimed in patent 946 which reduce or eliminate the problem raised". |
The plaintiffs" motion is otherwise dismissed.
Costs to follow.
| Richard Morneau Prothonotary |
Certified true translation
Bernard Olivier, LL. B.
Date: 19990319
Docket: T-390-98
Between:
PIERRE DESROCHERS
and
NOVATECH FABRICATION INC.
and
KIMPEX ACTION INC.,
Plaintiffs,
Cross-defendants.
AND
BOMBARDIER INC.,
Defendant,
Cross-plaintiff.
REASONS FOR ORDER
RICHARD MORNEAU, PROTHONOTARY:
[1] The case at bar concerns a motion by the plaintiffs and cross-defendants ("the plaintiffs") under Rules 174 and 181(2) of the Federal Court Rules (1998) ("the Rules") asking the Court to order the defendant and cross-plaintiff ("the defendant") to supply further and more specific particulars on certain paragraphs of the defendant's amended defence and cross-demand ("the defence").
Rules of law on particulars
[2] The standards which pleadings must meet regarding particulars are set out in Rules 174 and 181(2) of the Rules. They read as follows:
| 174. Every pleading shall contain a concise statement of the material facts on which the party relies, but shall not include evidence by which those facts are to be proved. |
| 181. (2) On motion, the Court may order a party to serve and file further and better particulars of any allegation in its pleading. |
[My emphasis]
[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 10, Rouleau J. 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 appears to be the subject of certain restrictions. In short, before making an order on such a matter the Court must consider whether a party has sufficient information to understand the opposing party"s argument and prepare a sufficient response, whether a defence or a reply. (See Astra Aktiebolag v. Inflazyme Pharmaceuticals Inc. (1995), 61 C.P.R. (3d) 178 (F.C.T.D.), at 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 287, Marceau J.A. explained the extent to which the defendant is entitled at the stage of pleadings to obtain particulars on the plaintiffs' evidence. I consider that the following comments by Marceau J.A. may be applied with the necessary modifications to the request for particulars made by the plaintiffs in respect of 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. |
[Not underlined in original]
[6] It will be noted that Rule 174, cited above, refers to the fact that a pleading must contain a statement of the "material facts". Section 181(2) of the Rules, the subsection that deals specifically with the motion under review, mentions the possibility of filing "further and better particulars of any allegation". Section 181(2) does not necessarily limit this Court to allowing further particulars only if it is persuaded that those particulars are in the nature of "material facts". In my opinion, the Court may order pursuant to s. 181(2) that one party shall provide another with particulars that will allow the party seeking the particulars to have a sufficient understanding of the opposing party"s position and in turn prepare an adequate and intelligent response. (See Glaxo Canada and Embee, supra.) That is the purpose of the exercise. In turn there is no basis under s. 181(2) for unduly requiring a party to disclose the legal nature of its argument. Each case must be considered on its own merits.
Analysis
[7] The Court must now review the paragraphs of the defence to which the plaintiffs' motion applies and see whether, in terms of the particulars sought, it should help the plaintiffs provide their reply to the defence.
[8] Paragraph 15 of the defence is the first of the paragraphs mentioned in the motion. It reads:
| [TRANSLATION] |
| 15. The alleged invention claimed in patent 946 was not patentable under s. 2 of the Patent Act because it did not have the feature of usefulness, in that it is not the features described and claimed in patent 946 which reduce or eliminate the problem raised. |
[9] In their motion the plaintiffs sought to determine the following particulars:
[TRANSLATION]
| (a) what are the material facts supporting the statement that the invention is not useful; |
| (b) what specifications of Canadian patent No. 2,147,946 (hereinafter "patent 946") the defendant refers to when it states ". . . that it is not the features described and claimed in patent 946 which reduce or eliminate the problem raised". |
[10] On paragraph (a), I accept counsel for the defendant"s statement that there are no material facts within the meaning of Rule 174 supporting the allegation and that the latter is only a point of technical and legal argument. It will be for the plaintiffs to ensure at the hearing that the defendant is held to this statement.
[11] Paragraph (b), namely the specifications of the patent, I think, entails a clarification of the text, namely that of the patent, which the plaintiffs should be granted. I do not think that in the circumstances of the case at bar this clarification is one which will really compromise the legal or technical argument to be submitted by the defendant.
[12] Paragraph 16 of the defence contains the next paragraph covered by the plaintiffs' motion. That paragraph reads as follows:
[TRANSLATION]
| 16. Each of claims 1, 5 and 8 of the patent in question is void pursuant to s. 27(4) of the Patent Act, in that each of them is ambiguous and does not define the subject-matter of the alleged invention distinctly and in explicit terms. |
[13] For this paragraph the plaintiffs would like the defendant to clarify:
[TRANSLATION]
| (a) for each of the independent claims 1, 5 and 8 of patent 946, what are the facts on the basis of which the defendant states that the claim is ambiguous; |
| (b) for each of the independent claims 1, 5, and 8 of patent 946, what are the facts on the basis of which the defendant states that the claim does not define the subject-matter of the invention . . . |
[14] As worded, these requests, if they were to be answered, would certainly involve the defendant in an argument. For this reason, they must be denied. At the hearing counsel for the plaintiffs indicated that the real purpose behind the requests was to determine whether the defendant intended to argue that each of claims 1, 5 and 8 was ambiguous in general or whether the statement should be specifically applied to one or more terms in each of the claims. Counsel for the plaintiffs herself stated that the claims at issue are straightforward and I think that the plaintiffs can quite readily respond to the defence without any further particulars.
[15] Paragraph 18 is also the subject of a request for particulars. That paragraph reads as follows:
[TRADUCTION]
| 18. Patent 946 is invalid pursuant to s. 27(3) of the Patent Act in that the specification does not describe exactly and fully the alleged invention and it does not clearly state the mode of manufacture of the alleged invention in full, clear, concise and exact terms enabling any person skilled in the art or science to manufacture the alleged invention. |
[16] The plaintiffs seek particulars in the following terms:
[TRANSLATION]
| (a) what are the facts on the basis of which the defendant states that the specification of patent 946 does not describe the invention exactly; |
| (b) what are the facts on the basis of which the defendant states that the specification of patent 946 does not describe the invention fully; |
| (c) what are the facts on the basis of which the defendant states that the specification of patent 946 does not clearly set out the mode of manufacture of the invention; |
| (d) what terms in the specification of patent 946 are not full, clear, concise and exact . . . |
[17] As worded, I consider that these requests would require the defendant to become involved in a technical argument which is properly part of the function to be performed by an expert witness for the defendant. These requests will therefore not have to be met.
[18] The last paragraph covered by the plaintiffs is paragraph 19 of the defence. It reads:
[TRANSLATION]
| 19. Patent 946 is invalid in that the best mode described therein is not the best way of manufacturing the alleged invention. |
[19] In this connection the following particulars are sought:
[TRANSLATION]
| (a) what are the material facts on the basis of which the defendant states that the best mode described in patent 946 is not the best way of manufacturing the invention . . . |
[20] For the same reasons given in respect of the requests made on paragraph 18 of the defence, these particulars will not have to be met.
[21] An order will be made accordingly.
| Richard Morneau Prothonotary |
MONTRÉAL, QUEBEC
March 19, 1999
Certified true translation
Bernard Olivier, LL. B.
FEDERAL COURT OF CANADA
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT FILE No.: T-390-98
STYLE OF CAUSE: PIERRE DESROCHERS and
NOVATECH FABRICATION INC. and
KIMPEX ACTION INC.,
Plaintiffs,
Cross-defendants,
AND
BOMBARDIER INC.,
Defendant,
Cross-plaintiff.
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: March 15, 1999
REASONS FOR ORDER BY: RICHARD MORNEAU, PROTHONOTARY
DATE OF REASONS FOR ORDER: March 19, 1999
APPEARANCES:
| Sylvie Lequin for the plaintiffs and cross-defendants |
| François Guay for the defendant and cross-plaintiff |
SOLICITORS OF RECORD:
Bélanger Sauvé for the plaintiffs and cross-defendants
Sylvie Lequin
Montréal, Quebec
Smart & Biggar for the defendant and cross-plaintiff
François Guay
Montréal, Quebec