T-250-84
Diamond Shamrock Technologies S.A. and Elec
trode Corporation (Plaintiffs)
v.
C. Conradty Nuernberg GmbH & Co. KG, Con-
radty GmbH & Co. Metallelektroden KG, and
Erco Industries Limited/Les Industries Erco
Limitée (Defendants)
Trial Division, Muldoon J.—Toronto, April 30;
Ottawa, May 31, 1984.
Patents — Practice — Particulars — Defendant Erco seek
ing order compelling plaintiffs to provide date of invention of
patent upon which plaintiffs intending to rely and material
facts alleged to establish invention — Motion dismissed with
out costs because of Court's cited division of opinion on issue
— Defendant not entitled, before pleading, to have from
plaintiff in patent infringement action, date of invention upon
which patent issued — Contradictory decisions of Court on
issue — Windsurfing International, Inc. v. Meriah Surf Prod
ucts Limited, not followed — Durand & Cie v. La Patrie
Publishing Co., Embee Electronic Agencies Ltd. v. Agence
Sherwood Agencies Inc. et al. and Flexi-Coil Ltd. v. Smith-
Roles Ltd., et al. applied — Better practice to heed Act,
presuming patent prima facie valid, and not to compel plaintiff
to produce particulars unless and until defendant formally
lodging defence to action and alleging prior art, or obviousness
and anticipation — Patent Act, R.S.C. 1970, c. P-4, ss.
28(1)(a), 45(8) — Federal Court Rules, C.R.C., c. 663, R.
415(1).
CASES JUDICIALLY CONSIDERED
APPLIED:
Durand & Cie v. La Patrie Publishing Co. (1951), 15
C.P.R. 86 (Ex. Ct.); Embee Electronic Agencies Ltd. v.
Agence Sherwood Agencies Inc. et al. (1979), 43 C.P.R.
(2d) 285 (F.C.T.D.); Flexi-Coil Ltd. v. Smith-Roles
Ltd., et al. (1979), 42 C.P.R. (2d) 180 (F.C.T.D.);
Corning Glass Works v. Canada Wire & Cable Limited
t/a Canstar Communications, judgment dated April 5,
1984, Federal Court, Trial Division, T-1944-81, not yet
reported.
NOT FOLLOWED:
Windsurfing International, Inc. v. Meriah Surf Products
Limited, judgment dated January 15, 1980, Federal
Court, Trial Division, T-3363-79, not reported.
DISTINGUISHED:
Union Carbide Canada Ltd. v. Trans-Canadian Feeds
Ltd. et al., [1966] Ex.C.R. 884; 32 Fox Pat. C. 145;
Asbestos Corp. Ltd. v. American Smelting & Refining
Co. (1972), 5 C.P.R. (2d) 1 (F.C.T.D.); E.I. DuPont de
Nemours & Co. et al. v. Diamond Shamrock Corp.
(1979), 46 C.P.R. (2d) 68 (F.C.T.D.); Omark Industries
Inc. et al. v. Windsor Machine Co. Ltd. (1980), 56
C.P.R. (2d) 111 (F.C.T.D.).
COUNSEL:
A. G. Creber for plaintiffs.
G. Zimmerman for defendants.
SOLICITORS:
Gowling & Henderson, Ottawa, for plaintiffs.
Sim, Hughes, Toronto, for defendants.
The following are the reasons for order ren
dered in English by
MULDOON J.: Three motions were launched as
between the parties, but only one was argued by
counsel. The plaintiffs' motion for default judg
ment was withdrawn. The defendants' counsel and
the plaintiffs' counsel agreed to the adjournment
sine die of the second motion, whereupon the
defendants' counsel sought to have the third
motion, this one on behalf of the defendant
Erco for particulars, adjourned but the plaintiffs'
counsel opposed the granting of an adjournment.
The motion was argued, hence these reasons.
Erco seeks an order:
That the plaintiff shall provide the date of invention of the
patent in suit, which the plaintiffs intend to rely upon, and the
material facts alleged to establish such date of invention.
Not surprisingly, in addition, and alternatively,
an extension of time for filing a statement of
defence, and a counterclaim, if any, is also sought
by Erco in these proceedings.
The issue to be resolved is whether the appli
cant, a defendant, is entitled before pleading to
have from the plaintiffs the date of invention of
the patent in suit, on which the plaintiffs intend to
rely, together with the material facts to establish
the date of invention. The italicized clause above,
adapted from the notice of motion begs the ques
tion and in so doing may well have provided the
seed of the issue's resolution. However, even
stripped of that clause, the issue remains to be
resolved in these terms: in this or any action for
patent infringement, is the defendant, before
pleading, entitled to have from the plaintiff the
date of the invention upon which the patent was
issued?
To the uninitiated, this question in itself may
smack of medieval metaphysics. The date of
invention might well become material, if the
defendant makes an issue of it, while actually
defending. Meanwhile, the patent is presumed to
be valid. The would-be arcane practice of patent
and other intellectual property law cases seems to
demand a veritable thicket of interlocutory pro
ceedings before the parties—or their counsel—
seem prepared to get on with their trials of the real
matters in issue. But, in the end, as Mr. Justice
Strayer recently indicated in Corning Glass Works
v. Canada Wire & Cable Limited t/a Canstar
Communications' "It appears ... to be open to the
Court to reach its own conclusion on the date of
invention ...."
There are apparently contradictory decisions of
this Court in regard to the issue in this matter.
The applicant's counsel invokes paragraph
28(1)(a) of the Patent Act [R.S.C. 1970, c. P-4],
and cites the following decisions: Union Carbide
Canada Ltd. v. Trans-Canadian Feeds Ltd. et
al., 2 Asbestos Corp. Ltd. v. American Smelting &
Refining Co., 3 E.I. DuPont de Nemours & Co. et
al. v. Diamond Shamrock Corp., 4 Omark Indus
tries Inc. et al. v. Windsor Machine Co. Ltd.,'
Windsurfing International, Inc. v. Meriah Surf
Products Limited. 6
' Judgment dated April 5, 1984, Federal Court, Trial Divi
sion, T-1944-81, not yet reported, at p. 38.
2 [1966] Ex.C.R. 884; 32 Fox Pat. C. 145.
3 (1972), 5 C.P.R. (2d) 1 (F.C.T.D.).
4 (1979), 46 C.P.R. (2d) 68 (F.C.T.D.).
' (1980), 56 C.P.R. (2d) 111 (F.C.T.D.).
6 Judgment dated January 15, 1980, Federal Court, Trial
Division, T-3363-79, not reported.
The applicant's counsel also cited a passage from
Fox's The Canadian Law and Practice Relating to
Letters Patent for Inventions,' which refers to
practice in the Exchequer Court.
The Union Carbide case is one in which the
validity of the patent was put in issue by the
statement of defence and the principles expressed
therein regarding novelty, inventive ingenuity and
prior art are expressed in a judgment after trial.
The Asbestos case is reported as a conflicts action
under subsection 45(8) of the Act. The DuPont
case is one in which the plaintiffs sought to
impeach the defendant's patent. In the Omark
case the plaintiffs, claiming infringement, sought
further and better particulars from the defendant,
and the reported decision enunciates clearly the
purpose and function of Rule 415(1).
The motion cited in the Windsurfing case
appears to be on all fours with the motion at bar,
in that the defendants, before pleading, sought
particulars from the plaintiffs as to the "date on
which the idea of the invention of the patent in suit
was conceived", and indeed, as to all steps taken
by the inventors up to the date of filing the
application for the patent. The motion succeeded
and those particulars, among others, were ordered
by Mr. Justice Mahoney. He recorded no reasons
in support of that order.
The plaintiffs' counsel relies, at this stage at
least, upon the prima facie validity of the patent,
averring that the particular date of the invention is
neither needed nor compellable before the state
ment of defence is filed. He cites these decisions:
Durand & Cie v. La Patrie Publishing Co., 8
Embee Electronic Agencies Ltd. v. Agence Sher-
wood Agencies Inc. et al., 9 Flexi-Coil Ltd. v.
Smith-Roles Ltd., et al. 10
' Fourth Ed., 1969, Carswell, Toronto, at p. 473.
8 (1951), 15 C.P.R. 86 (Ex. Ct.).
9 (1979), 43 C.P.R. (2d) 285 (F.C.T.D.).
10 (1979), 42 C.P.R. (2d) 180 (F.C.T.D.).
The Durand case is similar to the case at bar,
although that action was taken for alleged
infringement of copyright. The defendant, before
pleading, sought analogous particulars from the
plaintiff. Cameron J. is reported as follows:
Items 5 and 6 are for particulars as to whether the author
and composer are alive, and if deceased, the dates of death.
Item 7 is for particulars of the name of the country in which
the play was first produced, the date thereof and the name of
the publisher. These demands in my opinion relate to the
question of the existence of copyright in the play.
These particulars are among those which counsel for the
plaintiff submits can be ascertained upon discovery. It is not
always easy to draw the line between what ought to be fur
nished by way of particulars and what ought to be obtained by
way of discovery. Particulars are ordered primarily with a view
to having a pleading made sufficiently distinct to enable the
applicant to frame his answer thereto properly, and secondarily
to prevent a party from being taken by surprise at the trial.
Examination for discovery is made to get at the knowledge of
the adverse litigant."
And he concluded:
I think I may safely assume that in this case the defendant
will put in issue either the existence of copyright or the title of
the plaintiff thereto, or both; and therefore, in considering what
are the material facts which the plaintiff must set forth in its
claim, it is proper to take into account that the plaintiff may
intend to rely on the presumption that copyright subsists in the
play rather than setting out matters which would establish that
fact. From that point of view, it is not material to its case to
allege facts which establish the existence of copyright. While
particulars as to Items 5, 6 and 7 would doubtless be of great
assistance to the defendant in meeting the presumption as to
the existence of copyright in s. 20(3) of the Act, it must be
remembered that the burden of proof on that point (under the
circumstances I have mentioned) lies on the defendant. For that
reason I do not think that the plaintiff is required to give
particulars as to Items 5, 6 and 7. 12
In the Embee case the plaintiffs brought action
because of alleged infringements of a non-regis
tered trade name or mark, and of registered copy
rights. There, again, the defendants moved for
particulars before pleading. In his reasons, leading
to a conclusion that the defendants' request was
premature, Mr. Justice Marceau is reported thus:
" Supra, fn. 8, at p. 90.
12 Ibid., at p. 91.
The question of particulars in an action of this nature is a
difficult one although it is governed by long established princi
ples: see Fox, Canadian Law of Trade Marks and Unfair
Competition, 3rd ed. (1972), p. 415 et seq. I do not think it
necessary for me to review those principles. However, I wish to
point out that, as I understand the law in this regard, a
distinction must be made between a request for particulars
made prior to the filing of the statement of defence and one
made at a later stage of the proceedings. Before trial, after the
issues have been defined, a defendant is entitled to be informed
of any and every particular which will enable him to properly
prepare his case, so that he may not be taken by surprise at the
trial. But, before the filing of the defence, the right of a
defendant to be furnished particulars is not so broad, since it
does not have the same basis and serves a different purpose.' 3
While the case at bar, unlike the Embee case, is
concerned with alleged infringement of a patent,
the principles in regard to pleadings and particu
lars are common to many and various kinds of
cases, including those involving intellectual prop
erty in general.
The Flexi-Coil case is one in which the same
issue precisely was raised as is presented here,
combined with a deficient affidavit in support of
the defendants' motion. Such circumstances are
set out in the words of Mr. Justice Cattanach,
reported as follows:
It is represented that the particulars requested are essential
to pleading in defence to the claim, that the date of the
invention is essential to assess the relevance of the prior art
available to defendants and that the particulars of the proposals
in the specifications are essential to the defendants to support a
defence of invalidity because of obviousness and anticipation. 14
With grace, upon reflection, Cattanach J. con
cluded:
Because I am of the opinion that the supporting affidavit
does not accomplish its purpose I would dismiss the motion.
I would add that I have also reached the conclusion that the
request for particulars is premature in any event, that the
statement of claim pleads all material allegations to the plain
tiffs cause of action and the matters with respect to which the
defendants' request particulars are not as yet issues in dispute
and cannot be until a defence has been filed.
Counsel for the defendants referred me to an order that I
granted on March 2, 1978, in Matbro Ltd. et al. v. J.I. Case
Co. Inc. et al., Court file No. T-3814-77 [since reported 42
C.P.R. (2d) 121] in which the notice of motion requested
13 Supra, fn. 9, at p. 286.
10 Supra, fn. 10, at p. 181.
particulars substantially identical to the particulars presently
being sought and supported by an affidavit in substantially the
same form as the present supporting affidavit.
I do not recall if the supporting affidavit in the earlier
application was the subject of attack as to its sufficiency (it
may have been) but the present affidavit certainly was.
Upon reflection I am now convinced that I was wrong in
granting the order that I did on March 2, 1978, and I cannot
conscientiously perpetuate, in the interest of consistency, an
error which I now think I made in granting the previous
order. 15
What is to be made of the inconsistent disposi
tions generated by the Court? On the one hand, in
the dynamic sequence of events leading to the trial
of the action, it is logical at this stage to assert
that because the defendant has not yet pleaded in
defence to the claim, no averments of prior art or
invalidity founded on obviousness and anticipation
are raised in the proceedings. They might never be
raised. On the other hand, in the words of Camer-
on J., one "may safely assume that in this case the
defendant will put in issue" those very matters of
defence.
The question in issue is a simple one which
easily admits of either an affirmative or a negative
answer, but which deserves only one standard
answer. A plaintiff in a patent infringement action
ought either to be obliged to set out the whole
history of his patent including the date of inven
tion, or alternatively to be free to withhold that
fact unless and until the defendant both defends
the action and raises the matter.
The most logical and, if for that reason alone,
the better practice in all such situations is to heed
the Act, presuming the patent to be prima fade
valid, and not to compel the plaintiff to produce
such particulars unless and until the defendant
formally lodges a defence to the action and alleges
prior art or obviousness and anticipation. That is a
normal precept. The fact that this is a patent case
affords no reason to contrive an abnormal practice
for it. The proper disposition of this motion, and, it
would appear, of all such motions, is dismissal with
costs. The correct line of decision is surely that of
Messrs. Justices Cameron and Marceau, and of
Mr. Justice Cattanach in the Flexi- Coil case.
15 Ibid., at p. 182.
Therefore the motion is to be dismissed. Because
of the Court's own cited division of opinion on this
particular matter however, it seems inequitable,
this time, to award even the nominal costs which
could be taxed. With this present disposition, the
line of authorities against ordering the particulars
sought herein is growing. The next defendant, if
any, who seeks such particulars should not neces
sarily expect to benefit from a discretionary
concession as to costs.
ORDER
UPON hearing the motion of the defendant Erco
Industries Limited/Les Industries Erco Limitée,
for an order that the plaintiffs shall provide the
date of invention of the patent in suit, which the
plaintiffs intend to rely upon, and the material
facts alleged to establish such date of invention,
IT IS ORDERED that the defendant's motion be,
and it is hereby, dismissed, without costs awarded
for or against any party hereto.
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