Date: 20030612
Docket: T-1053-02
Citation: 2003 FCT 742
BETWEEN:
BERNARD F. DEPALMA
Plaintiff
and
BAUER NIKE HOCKEY INC.,
SPORT MASKA INC. and
I-TECH SPORT PRODUCTS, INC. /
LES PRODUITS DE SPORT I-TECH INC.
Defendants
AND BETWEEN:
SPORT MASKA INC. and
I-TECH SPORT PRODUCTS, INC./
LES PRODUITS DE SPORT I-TECH INC.
Plaintiffs by Counterclaim
and
BERNARD F. DEPALMA
Defendant to the Counterclaim
REASONS FOR ORDER AND ORDER
RICHARD MORNEAU, ESQ., PROTHONOTARY
[1] This is essentially a motion pursuant to rule 181 by the Defendant Bauer Nike Hockey Inc. (BNH) in a patent infringement action for an order directing the Plaintiff to serve further and better particulars to its Statement of Claim.
The law in respect of particulars
[2] Before making an order in respect of particulars, the Court must evaluate whether a party has enough information to be able to understand the other party's position and to prepare a responsive answer, be it 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.)
[3] In Embee Electronic Agencies Ltd. v. Agence Sherwood Agencies Inc. et al. (1979), 43 C.P.R. (2d) (F.C.T.D.), at page 287, Marceau J. stated the extent to which the defendant is entitled to be furnished with particulars of the plaintiff's case at the pleading stage:
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.
(My emphasis)
Analysis
[4] I shall begin my analysis by referring to a general objection raised by the Plaintiff. The Plaintiff stressed that BNH has failed to provide an affidavit containing any details as to why BNH was unable to instruct counsel for the purpose of replying. Consequently, according to the Plaintiff, BNH's motion for particulars must fail.
[5] I do not think that Plaintiff's objection should prevail under the present circumstances. As indicated by this Court in Covington Fabrics Corp. v. Master Fabrics Ltd. (1993), 48 C.P.R. (3d) 521, at 522:
The absence of a request and of an affidavit setting out with some particularity what particulars are required can be waived if the need for particulars is obvious from the file. That the party cannot plead without the particular might also be obvious from the file and that the party does not have the particulars might be assumed in a proper case.
(See also Omark Industries Inc. v. Windsor Machine Co. Ltd. (1980), 56 C.P.R. (2d) 111, at 112, at the bottom of the page.)
[6] Here I believe that the need for particulars is obvious from the file by reason of the content of the impugned paragraphs and the particulars provided on March 21, 2003.
[7] I am satisfied that within 30 days from the date of this Order, the Plaintiff shall provide BNH with the following particulars:
- With respect to paragraph 7 of the Statement of Claim and to the particulars provided by letter dated March 21, 2003:
a) which foreign statute or principle of law is referred to and relied on by the Plaintiff to support his allegation that, upon the dissolution of Doc-K Protective Equipment, Inc., the entire rights, title and interest in Patent no. 1,200,951 devolved to the shareholders of the corporation, including Pauline Kavanagh;
b) whether the shareholders of Doc-K Protective Equipment, Inc. referred to in the particulars provided by letter dated March 21, 2003 and the co-inventors referred to at paragraph 7 of the Statement of Claim are the same individuals.
- With respect to paragraph 15 of the Statement of Claim and to the particulars provided by letter dated March 21, 2003:
a) when the "DePalma invention" was allegedly disclosed to BNH or its predecessor;
b) the individuals to whom the "DePalma invention" was allegedly disclosed;
c) the context in which the "DePalma invention" was allegedly disclosed to BNH or its predecessor;
d) which material facts support the Plaintiff's allegation that the "DePalma invention" was disclosed "in confidence".
- With respect to paragraphs 1(b), 13 and 17 of the Statement of Claim:
a) the precise conduct that the Plaintiff alleges BNH has engaged in so as to support the Plaintiff's allegation of inducing infringement, over and beyond the allegation that the Defendant has sold infringing shoulder pads to retail stores and has advertised, solicited, provided instructions, and supported the sales of these shoulder pads.
- With respect to paragraph 11 of the Statement of Claim and the particulars provided by letter dated March 21, 2003:
a) which one or other of the claims and elements of Patent no. 1,200,951 have been allegedly infringed by each of BNH's shoulder pads referred to in Schedule "A" to the particulars provided by letter dated March 21, 2003.
[8] BNH shall serve and file its Statement of Defence on or before August 12, 2003.
[9] Costs of this motion are granted to BNH.
Richard Morneau
Prothonotary
Montreal, Quebec
June 12, 2003
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-1053-02
STYLE OF CAUSE:
BERNARD F. DEPALMA
Plaintiff
and
BAUER NIKE HOCKEY INC.,
SPORT MASKA INC. and
I-TECH SPORT PRODUCTS, INC. /
LES PRODUITS DE SPORT I-TECH INC.
Defendants
AND BETWEEN:
SPORT MASKA INC. and
I-TECH SPORT PRODUCTS, INC./
LES PRODUITS DE SPORT I-TECH INC.
Plaintiffs by Counterclaim
and
BERNARD F. DEPALMA
Defendant to the Counterclaim
PLACE OF HEARING: Montreal, Quebec
DATE OF HEARING: May 26, 2003
REASONS FOR ORDER AND ORDER:
RICHARD MORNEAU, ESQ., PROTHONOTARY
DATED: June 12, 2003
APPEARANCES:
Mr. George Murti FOR PLAINTIFF
Mr. Daniel A. Artola FOR DEFENDANT
SPORT MASKA INC.
Mr. François Guay FOR DEFENDANT
BAUER NIKE HOCKEY INC.
Mr. David P. Collier FOR DEFENDANT
Mr. George R. Locke I-TECH SPORT PRODUCTS LTD. / LES
PRODUITS DE SPORT I-TECH INC.
SOLICITORS OF RECORD:
Hitchman & Sprigings FOR PLAINTIFF
Toronto, Ontario
McCarthy Tétrault FOR DEFENDANT
Montreal, Quebec SPORT MASKA INC.
Smart & Biggar FOR DEFENDANT
Montreal, Quebec BAUER NIKE HOCKEY INC.
Ogilvy Renault FOR DEFENDANT
Montreal, Quebec I-TECH SPORT PRODUCTS LTD. / LES
PRODUITS DE SPORT I-TECH INC.
FEDERAL COURT OF CANADA
TRIAL DIVISION
Date: 20030612
Docket: T-1053-02
BETWEEN:
BERNARD F. DEPALMA
Plaintiff
and
BAUER NIKE HOCKEY INC.,
SPORT MASKA INC. and
I-TECH SPORT PRODUCTS, INC. /
LES PRODUITS DE SPORT I-TECH INC.
Defendants
AND BETWEEN:
SPORT MASKA INC. and
I-TECH SPORT PRODUCTS, INC./
LES PRODUITS DE SPORT I-TECH INC.
Plaintiffs by Counterclaim
and
BERNARD F. DEPALMA
Defendant to the Counterclaim
REASONS FOR ORDER AND ORDER