T-324-80
Kemanord AB (Plaintiff)
v.
PPG Industries, Inc. and Oronzio De Nora
Impianti Elettrochimici S.p.A. (Defendants)
Trial Division, Mahoney J.—Ottawa, February 21
and 22, 1980.
Patents — Practice — Application to strike out statement of
claim in a patent conflict action under Rule 419, or in the
alternative for an order under Rule 415(3) for particulars —
Application dismissed — Plaintiff alleged material facts upon
which it relies — Defendant has particulars needed to plead to
statement of claim — Federal Court Rules 408, 415(3), 419,
701 — Patent Act, R.S.C. 1970, c. P-4, s. 45.
MOTION.
COUNSEL:
J. Harding for plaintiff.
G. A. Macklin for defendant PPG Industries,
Inc.
SOLICITORS:
Smart & Biggar, Ottawa, for plaintiff.
Gowling & Henderson, Ottawa, for defendant
PPG Industries, Inc.
The following are the reasons for order ren
dered in English by
MAHONEY J.: This is a patent conflict action
under section 45 of the Patent Act.' The decision
of the Commissioner of Patents, pursuant to sub
section 45(7) was rendered July 23, 1979. The
action commenced January 23, 1980. That was the
last day upon which it could have been commenced
by virtue of the time fixed and notified to the
parties under subsection 45(8). Rule 701(2)
requires that a copy of the statement of claim in a
conflict action be served "forthwith after filing",
along with a copy of the affidavit to which I shall
return, on the Deputy Attorney General of Canada
and all persons interested. Rule 701(3) requires a
defence to be filed, along with a similar affidavit,
within 30 days of service of the statement of claim.
1 R.S.C. 1970, c. P-4.
The defence and affidavit are also to be served
"forthwith after filing" on the other persons inter
ested and the Deputy Attorney General. Rule
701(7) provides expressly that the 30 days for
filing a defence "cannot be extended except by an
order of the Court".
The defendant, PPG Industries, Inc. (herein-
after "PPG"), now seeks to strike out the state
ment of claim as disclosing no reasonable cause of
action and as an abuse of the process of the Court
under Rule 419, and as being in breach of Rules
701(5) and 408 or, in the alternative, for an order
under Rule 415(3) requiring the plaintiff to pro
vide further and better particulars of the allega
tions contained in paragraphs 11 and 12 of the
statement of claim.
Paragraphs 1 to 3 identify the parties. Para
graphs 4 to 6 relate the parties to the patent
applications and the inventors named therein.
Paragraphs 7 to 10 respectively recount the notifi
cations by the Commissioner under subsection
45(2), the parties' responses thereto, the Commis
sioner's call for affidavits under subsection 45(5),
the parties' responses to that and, finally, the
Commissioner's decision pursuant to subsection
45(7). Paragraphs 11 and 12 follow:
11. The Commissioner of Patents was in error in so awarding
claims C20, C23 and C28 to the Defendant PPG in that
Karl-George Larsson, the inventor named in the Plaintiff's
application made the invention to which any of claims C20 to
C23 and C28 to C30 is directed before the inventors named in
the applications of the Defendant PPG and the Defendant
Nora.
12. The disclosure as set forth in the specification in each of
the aforesaid applications of the Defendant PPG and the
Defendant Nora does not support the invention as defined by
any of the conflict claims C20 to C23 and C28 to C30.
The prayer for relief concludes the statement of
claim.
Particulars are sought in respect of paragraphs
11 and 12. At first blush, the statement of claim
appears inadequate in particulars. For example, a
person reading it is left entirely in the dark as to
even the nature of the subject matter of the patent
application. On reflection, however, bearing in
mind the peculiar nature of a patent conflict
action, it appears that the plaintiff has in fact
alleged the material facts upon which it relies for
the determination it seeks. There is no lack of the
particulars necessary to permit PPG to plead to it.
It knows which of the claims in conflict the plain
tiff seeks to have awarded to it. It knows why.
Anything else would be in the nature of evidence.
At this stage of a proceeding, the only particu
lars to which a defendant is entitled are those
which it needs to permit it to plead to the state
ment of claim. The plaintiff has those. Its applica
tion will be dismissed with costs.
I return to the matter of the affidavit filed with
the statement of claim. The requirement of such
an affidavit, as well as that required of a defend
ant, the service on the Deputy Attorney General
and the provisions of the Rules designed to expe
dite a conflict action, at least in its early stages,
arises out of public policy considerations. The
public policy concern stems from the fact that the
17-year term of a patent runs from the date of its
issue. It is not inconceivable that an applicant,
entitled to the issue of a patent, might be interest
ed in postponing the date of issue thereby postpon
ing the term of his monopoly. As I indicated at the
hearing of this application, these considerations do
not permit the Court to overlook matters which the
parties themselves may be disposed to overlook. I
have a concern whether an affidavit filed under
Rule 701(1), which does not meet the require
ments of section 50 of the Canada Evidence Act, 2
is admissible in evidence and, if it is not, whether it
is an affidavit within the contemplation of the
Rule. It is a question that should be considered by
the Deputy Attorney General.
2 R.S.C. 1970, c. E-10.
PPG asked for an extension of time in which to
file its defence and affidavit. That request was
predicated on the assumption that it would succeed
in its demand for particulars at the very least. I
have no idea when its time for filing a defence is
presently due to expire. Assuming that it may
expire before Friday, March 7, 1980, I will extend
the time to that date without, however, intending
thereby to shorten the time if it does not expire
before then and without prejudice to its right to
apply for a further extension on grounds other
than the need for further particulars.
ORDER
The application of the defendant, PPG Indus
tries, Inc., is dismissed with costs subject to an
extension, if necessary, of the time for its compli
ance with Rule 701(3) to Friday, March 7, 1980.
A copy of the reasons and order herein are direct
ed to be served by the Registry of the Court on the
Deputy Attorney General of Canada pursuant to
Rule 309(4).
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.