T-521-80
Kuhlman Corporation (Plaintiff)
v.
P. J. Wallbank Manufacturing Co. Limited
(Defendant)
Trial Division, Cattanach J.—Ottawa, April 1 and
10, 1980.
Practice — Motion to strike pleadings — Defendant moves
to strike out portions of statement of claim relative to allega
tion of infringement of plaintiffs patents for process and
apparatus used to manufacture spring assemblies, on the
ground that there have been no allegations of material facts
from which it would follow that the patents had been infringed
— Plaintiff moves for an order to inspect the method and
machines used by defendant in the manufacturing process —
Based on the fact that defendant's spring assembly is identical
to that of plaintiff, plaintiff alleges that defendant is infring
ing its process and apparatus patents — Whether the com
mencement of the proceedings is justified based on a high
probability that defendant infringed patent and whether par
ticulars are sufficiently pleaded — Plaintiffs motion is
allowed, and defendant's motion is denied.
Champion Packaging Corp. v. Triumph Packaging Corp.
[1977] 1 F.C. 191, distinguished. The Germ Milling Com
pany (Limited) v. Robinson (1884) R.P.C. 217, referred
to. Dow Chemical Co. v. Kayson Plastics & Chemicals
Ltd. [1967] 1 Ex.C.R. 71, referred to. Edler v. Victoria
Press Mfg. Co. (1910) 27 R.P.C. 114, referred to.
MOTIONS.
COUNSEL:
G. A. Macklin and B. Morgan for plaintiff.
W. C. Kent for defendant.
SOLICITORS:
Gowling & Henderson, Ottawa, for plaintiff.
Burke-Robertson, Chadwick & Ritchie,
Ottawa, for defendant.
The following are the reasons for judgment
rendered in English by
CATTANACH J.: The defendant moves to strike
out paragraphs 3, 4, 5, 6, 7, 9, 11, 12, 13, 14 and
16 and paragraphs (a) and (b) of the prayer for
relief of the statement of claim.
The plaintiff is the owner of three patents, one
with respect to spring assemblies for use in auto
matic transmissions of automobiles, patent
1,009,599, the second for the process, a method of
manufacturing such spring assembly, patent
1,012,339 and the third for the apparatus to do so,
patent 1,009,443.
The defendant moves to strike out those para
graphs of the statement of claim with respect to
the process patent 1,012,339, and the apparatus
patent 1,009,443 on the ground that there have
been no allegations of material facts from which it
would follow that the claims in the process and
apparatus patents have been infringed.
Paragraph 12 of the statement of claim reads:
Particulars of the claims of the aforementioned Canadian
Patents and of the corresponding elements of the Defendant's
spring assemblies, machine and method for manufacturing
spring assemblies, insofar as they are known to the Plaintiff,
are set forth in Schedule "A" hereto, and are hereby incorpo
rated and adopted as part of this Statement of Claim. The
Plaintiff is unable to give full particulars of the Defendant's
machine for and method of manufacturing the said spring
assemblies in the absence of an inspection of the Defendant's
plant premises.
The particulars given with respect to the pro
cess, patent 1,012,339, after outlining the steps of
the methods in the plaintiff's process patent on the
left hand side of page 1 of the Schedule "A" state
on the right hand side under the heading "Defend-
ant's Method":
See description of defendant's spring assembly as described in
respect of Canadian patent 1,009,599. (the product patent, and
see pages 18 and 19 of the Schedule "A") From an examina
tion of said spring assembly, it is believed the defendant uses
the method of manufacturing recited in claims 1 to 13 of patent
1,012,339.
With respect to the apparatus patent 1,012,339,
the same form is adopted at page 6 of Schedule
"A" where the particulars under the heading
"Defendant's Machine" read:
See description of defendant's spring assembly as described in
respect of Canadian patent 1,009,599. From an examination of
said spring assembly, it is believed the defendant uses the
apparatus recited in claims 14 to 27 of patent 1,012,339.
Prior to the filing of the defendant's notice of
motion to strike the statement of claim dated
March 27, 1980, the plaintiff had filed a notice of
motion dated February 5, 1980, for an order to
inspect the method and machines used by the
defendant in the manufacture of spring assemblies
and in the interval counsel for the defendant had
an opportunity to cross-examine the affiant of the
supporting affidavit to that motion.
In paragraph 12 of the statement of claim the
plaintiff candidly concedes that it is unable to give
full particulars of the defendant's process and
apparatus without an inspection but the particu
lars within the plaintiffs knowledge are given in
the Schedule.
The defendant's spring assembly and that of the
plaintiff, which I saw and was able to compare, are
identical. That was obvious even to me without
expertise and without the aid of expert testimony.
Predicated upon an examination of the defend
ant's spring assembly the plaintiff states in
Schedule "A" as quoted above "it is believed" that
the defendant uses the method of plaintiff's pro
cess patent 1,012,339 and the apparatus described
in the plaintiff's patent.
The use of the words "it is believed" was an
unhappy choice because it was these words that led
Heald J. in Champion Packaging Corp. v. Tri
umph Packaging Corp.' to say at page 192:
. the words "is believed" are used, the effect of which is to
remove this pleading from the category of "a precise statement
of the material facts" as required by Rule 408(1).
In that case it was an irrelevant paragraph of
the statement of claim in which these words
appeared and which paragraph was accordingly
struck but an irrelevant plea does not permit dis
covery to take place in respect of irrelevant subject
matter.
In the present instance the sparse particulars
given are not irrelevant.
If the plaintiff had no ground for asserting in
the statement of claim that the defendant has done
a particular act that constituted an infringement of
the plaintiff's patents then there would be no basis
for instituting proceedings for infringement.
' [ 1977] 1 F.C. 191.
However, it is an entirely different matter when
at the time of instituting the action the plaintiff
has asserted that the defendant has done certain
things although the plaintiff is not in a position to
say how the defendant did such things. This is
entirely within the knowledge of the defendant.
This, in my view, is what the plaintiff has done.
In effect what the plaintiff is saying is "I believe
the defendant is infringing my process and
apparatus patents". If he gave no grounds for that
belief then that amounts to a mere suspicion and
would not support a cause of action. However, the
plaintiff expresses a reason for that belief. It is
based upon an examination of the defendant's
spring assembly.
As I have said I have seen both the plaintiffs
and the defendant's assemblies and they are
identical.
Prior to the defendant's motion to strike the
plaintiff had moved for inspection supported by an
affidavit of Donald O. Dulude, the President of the
plaintiff Company, and a joint inventor of the
three patents in suit. In that affidavit he swears
that he has personally inspected several of the
defendant's spring assemblies and confirms that
they are virtually indistinguishable from the plain
tiffs product. As a consequence of these examina
tions he swears that it is highly probable that the
defendant not only copied the plaintiffs spring
assembly but also the method and apparatus (both
the subject of patents) used by the plaintiff to
manufacture the assemblies.
The defendant cross-examined on that affidavit.
In essence that cross-examination confirms the
deponent's allegations that it is highly probable
that the defendant used the plaintiffs methods and
apparatus to achieve the spring assembly it did.
The witness could not "conclude" in absolute
terms but did say that it was "highly probable"
and much more than a possibility.
In effect I would construe the scant particulars
given and subsequent evidence as being tan
tamount to stating that from the very nature of the
spring assembly produced by the defendant it is
highly probable that it was done by the plaintiff's
process and apparatus and highly improbable that
it could have been done otherwise.
These are circumstances which justify the com
mencement of the proceedings and are adequately
pleaded in the statement of claim.
The plaintiff acknowledges the sparseness of its
particulars of infringement in paragraph 12 and
alleges the necessity of an inspection for which the
plaintiff moved prior to the defendant's motion to
strike the plaintiff's statement of claim.
Having concluded that the plaintiff, in its plead-
ings and evidence, is alleging in effect that it was
highly improbable for the defendant to have used a
process other than the plaintiffs it follows that the
circumstances are analogous to the circumstances
recited by Kay J. in The Germ Milling Company
(Limited) v. Robinson 2 at page 219:
If he had said "The nature of the flour they produce is such
that it could not have been done by any other process," and
satisfied the Court of that, that would be one thing, and it
would come very nearly to the well-known case before Lord
Eldon, in which inspection was granted
In Dow Chemical Co. v. Kayson Plastics &
Chemicals Ltd.' Jackett P. (as he then was) said
at page 75:
There may also be circumstances in which the plaintiffs knowl
edge is sufficient to warrant commencing proceedings but it is
appropriate to give him an order for inspection of the subject
matter of the action under Rule 148A [now Federal Court Rule
471] before he is required to settle his Particulars of Breaches.
Compare Edler v. Victoria Press Manufacturing Company
[(1910) 27 R.P.C. 114].
In Edler v. Victoria Press Manufacturing Com
pany [(1910) 27 R.P.C. 114] Warrington J. said
at pages 116 and 117:
The Plaintiff has reason to believe—it is not a mere question of
fishing, of that I am satisfied—and I am satisfied that he has
bona fide reason to believe that this machine is an infringement
of the Patent of which he is licensee. In delivering his State
ment of Claim, the Plaintiff has to deliver with it, not merely a
general statement that it is an infringement but Particulars of
the alleged Breaches, and he will have to state in what respects
it is an infringement. The information which the Plaintiff has is
quite insufficient to enable him to give any such Particulars.
2 (1884) R.P.C. 217.
3 [1967] 1 Ex.C.R. 71.
The only way in which he can obtain the means of giving such
Particulars would be by means of ocular inspection of the thing
itself. It seems to me that this is a case in which, so far as that
point is concerned, I ought to order inspection of this machine,
notwithstanding that the Statement of Claim has not been
delivered.
In my view, in this instance the plaintiff has
made out a prima fade case of infringement, but
not necessarily an absolute case of infringement,
and inspection is the only means by which the
plaintiff can ascertain if actual infringement is
being committed.
I am not oblivious of the fact that inspection is
not to be granted as a matter of right, and is
discretionary to enable a case to be properly tried
and when granted it must be confined to the
subject-matter of the suit, in this instance, the
process and apparatus used by the defendant to
produce the spring assemblies it does and no
further.
For the foregoing reasons the defendant's
motion to strike the plaintiff's statement of claim
is denied and the plaintiff's request for an order to
inspect is granted.
The costs of the defendant's motion to strike the
statement of claim shall be costs to the plaintiff in
any event in the cause.
The costs of the plaintiff's motion to inspect
shall be costs in the cause.
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.