T-5368-81
Caterpillar Tractor Co. (Plaintiff)
v.
Babcock Allatt Limited (Defendant)
Trial Division, Addy J.—Ottawa, September 23
and October 1, 1982.
Practice — Stay of proceedings — Motion pursuant to Rule
419 to strike out two paragraphs of statement of defence
making positive allegations in language of statute without
indicating material facts relied upon — Plaintiff proceeded to
discovery without requesting or moving for particulars or
having filed reply or joinder of issue and obtained admission
defendant did not have facts to support allegations — Defend
ant contending that because plaintiff had taken fresh step in
action, pleadings were closed and plaintiff was precluded from
requesting particulars and, therefore, also from requiring
pleadings struck for lack thereof — Plaintiff not to be put in
position of meeting allegations unfounded in fact — Actions
not allowed to continue or defences to stand where clear no
evidence in support — Motion allowed — Patent Act, R.S.C.
1970, c. P-4, s. 36(1) — Federal Court Act, R.S.C. 1970 (2nd
Supp.), c. 10 — Federal Court Rules 408, 412, 419.
In an action for patent infringement the plaintiff brought a
motion pursuant to Rule 419 and the Court's inherent jurisdic
tion to control its own process, to strike out certain paragraphs
of the statement of defence on the ground that the assertions
contained therein were made without reference to the material
facts upon which they were based. This motion was brought
after the plaintiff had proceeded to discovery and obtained an
admission from the defendant that it did not have facts to
support the allegations. The defendant contended that because
the plaintiff had not moved for particulars, demanded them
from the defendant or filed a reply or joinder of issue before
taking a fresh step in the action by proceeding to discovery, it
was precluded from requesting the particulars and, therefore,
also from requiring that the pleadings be struck for lack
thereof.
Held, the motion is allowed. The paragraphs in question are
not mere denials of allegations but are positive assertions which
must be proven by the defendant. As regards these paragraphs,
the defendant is in the same position as the plaintiff would be
in seeking to have a patent declared null and void. Rule 408(1)
requires that every pleading contain a precise statement of the
material facts upon which the party pleading relies and Rule
412 provides that raising a question of law is not acceptable as
a substitute for a statement of material facts. Neither of the
paragraphs in question contains any material facts upon which
the allegations contained therein could be based nor does any
other part of the statement of defence elaborate on their
substance. They are merely a repetition of the substance of
certain portions of subsection 36(1) and therefore constitute a
bare statement of the law. The real issue here, however, is not
whether the pleadings contain sufficient particulars or whether
the plaintiff is entitled to have them struck because of an
inherent defect. Rather it is a question of evidence, that is,
whether the defendant should be allowed to bring the issues
pleaded to trial when, on its own admission, there are no
material facts to support the allegations. Rule 419 empowers
the Court to strike out a pleading at any stage of an action on
the grounds that it is frivolous, vexatious or may prejudice,
embarrass, or delay a fair trial or otherwise be an abuse of the
Court. If a party has no grounds for making an allegation in a
pleading there is no basis for maintaining the allegation and it
is no answer to an application to strike for a party to say that if
he had unrestricted discovery of his opponent he might then be
in a position to sustain the allegation. A court proceeding is not
a speculative exercise and actions are not to be launched or
continued nor defences allowed to stand when it is clear that
the person making the allegation, and thus having the burden
of proof, has no evidence to support it.
CASES JUDICIALLY CONSIDERED
APPLIED:
Dow Chemical Co. v. Kayson Plastics & Chemicals Ltd.
(1966), 47 C.P.R. 1 (Ex. Ct.).
REFERRED TO:
Bror With v. Ruko of Canada Ltd. (1976), 31 C.P.R.
(2d) 3 (F.C.T.D.); Superseal Corp. v. Glaverbel-
Mecaniver Canada Limitée et al. (1976), 30 C.P.R. (2d)
97 (F.C.T.D.); Dominion Sugar Co. v. Newman (1917-
18), 13 O.W.N. 38 (H.C.J.); Montreuil v. The Queen,
[1976] 1 F.C. 528 (T.D.).
COUNSEL:
John Morrissey for plaintiff.
G. James M. Shearn for defendant.
SOLICITORS:
Barrigar & Oyen, Ottawa, for plaintiff.
G. James M. Shearn, counsel to Borden &
Elliot, Toronto, for defendant.
The following are the reasons for order ren
dered in English by
ADDY J.: The plaintiff has brought the present
motion, pursuant to Rule 419 and to the Court's
inherent jurisdiction to control its process, to strike
out two paragraphs of the statement of defence,
i.e., 9(b) and 10(b). The action is one for patent
infringement against the defendant and the para
graphs of the statement of defence which are in
issue read as follows:
9. (b) The said Letters Patent fails to comply with the require
ments of Section 36(1) of the Patent Act R.S.C. (1970) C. p4,
in that the specification fails to describe fully and correctly the
invention, its operation and use as contemplated by the inventor
and fails to set forth clearly the method of making or using the
article in such full, clear, concise and exact terms as to enable
any person skilled in the art or science to which it appertains, or
with which it is most closely connected to make it or use it, and
fails to explain the principle and application thereof so as to
distinguish it from other inventions, and fails to indicate and
distinctly claim the part improvement or combination which is
the invention.
10. (b) The said Patent fails to comply with the requirements of
Section 36(1) of the Patent Act R.S.C. (1970) C. p4, in that
the specification fails to correctly and fully describe the inven
tion and its operation or use as contemplated by the inventor
and set forth clearly the method of making or using the
manufacture of [sic] such full, clear, concise and exact terms as
to enable any person skilled in the art to which it appertains, or
with which it is most closely connected to make, construct,
compound or use it, or to explain the principle thereof and fails
to particularly indicate and distinctly claim the part, improve
ment or combination which is the alleged invention.
Subsection 36(1) of the Patent Act, R.S.C.
1970, c. P-4, reads as follows:
36. (I) The applicant shall in the specification correctly and
fully describe the invention and its operation or use as contem
plated by the inventor, and set forth clearly the various steps in
a process, or the method of constructing, making, compounding
or using a machine, manufacture or composition of matter, in
such full, clear, concise and exact terms as to enable any person
skilled in the art or science to which it appertains, or with
which it is most closely connected, to make, construct, com
pound or use it; in the case of a machine he shall explain the
principle thereof and the best mode in which he has contem
plated the application of that principle; in the case of a process
he shall explain the necessary sequence, if any, of the various
steps, so as to distinguish the invention from other inventions;
he shall particularly indicate and distinctly claim the part,
improvement or combination which he claims as his invention.
It is evident that both paragraphs merely repeat,
rephrase or restate the substance of certain por-
tions of subsection 36(1). They constitute a mere
statement or partial statement of the law. No
other portion of the statement of defence touches
upon the substance of these paragraphs. Rule
408(1) provides that "Every pleading must contain
a precise statement of the material facts on which
the party pleading relies." Rule 412 provides that
raising a question of law is not acceptable as a
substitute for a statement of material facts. As to
the necessity of pleading material facts in patent
matters see Bror With v. Ruko of Canada Ltd.'
and Superseal Corp. v. Glaverbel-Mecaniver
Canada Limitée et al. 2 .
There are, therefore, no material facts men
tioned in paragraphs 9(b) and 10(b) which would
in any way support the pleading. Had particulars
been demanded by the plaintiff, it would have
undoubtedly been entitled to receive them and,
had the defendant been unable to furnish them,
the paragraphs in issue would have been struck
out.
It is most important to note that the paragraphs
which the plaintiff seeks to impugn are not mere
denials of matters alleged by the plaintiff and
which the latter must prove but, on the contrary,
constitute positive assertions which must be affir
matively proven by the defendant. The latter, in so
far as these assertions are concerned, is in the
same position as a plaintiff would be in seeking to
have a patent declared null and void.
Generally speaking, where a party pleads in full
reply and rebuttal to a pleading of the opposite
party, he is precluded from objecting to the other
party's pleading or requesting particulars for the
purpose of pleading further at a later date. (See
Dominion Sugar Co. v. Newman' and Montreuil
v. The Queen 4 .)
If a party is disentitled from obtaining particu
lars of an opponent's pleadings he is, of course,
precluded from requesting that the pleading be
struck out for lack of particulars. The plaintiff,
(1976), 31 C.P.R. (2d) 3 (F.C.T.D.).
2 (1976), 30 C.P.R. (2d) 97 (F.C.T.D.).
3 (1917-18), 13 O.W.N. 38 (H.C.J.).
4 [1976] 1 F.C. 528 (T.D.).
however, did not move for particulars nor indeed
did it address any demand for particulars to the
defendant. After receiving the statement of
defence, without filing any reply or joinder of
issue, it took a fresh step in the action and chose to
examine an officer of the defendant for discovery.
This would have the effect of closing the pleadings.
During the discovery the following questions
were asked and the following replies were given:
Q. There is a general plea in paragraph 9(b) that the patent
number 987,365 in issue fails to describe fully and cor
rectly the invention, its operation and use and otherwise
fails to comply with Section 36 of the Patent Act. Can
you give me the material facts on which the Defendant
relies in making that plea?
A. We do not have any additional information at present.
Some may be forthcoming at the examination for discov
ery of the Plaintiff. If any additional information comes
to us, we will let you know.
Q. A similar plea is made in paragraph 10(b) with respect to
Section 36. Do you make the same answer?
A. Yes.
It is clear from the above answers that the
defendant did not know of any material facts
which could support a claim that the patent was
invalid for lack of compliance with subsection
36(1).
On the hearing of the motion counsel for the
defendant argued that, as the pleadings were effec
tively closed, the plaintiff was precluded from
requesting particulars and, therefore, was prevent
ed from requiring that the pleading be struck out
for lack of particulars.
The question before the Court in this instance is
not one of deciding whether the pleading contains
sufficient particulars for the purpose of allowing
the applicant to plead thereto or of deciding
whether the latter is entitled to have it struck out
by reason of an inherent defect in the pleading
itself. The substance of the question before the
Court is really whether the defendant should be
allowed to bring the issues pleaded to trial when,
on its own admission, there are no material facts to
support the allegations. Therefore, it is no longer
essentially a question of the sufficiency of a plead
ing but rather a question of evidence, since the
defendant, in effect, admits that it has no evidence
to support the allegations.
Rule 419 specifically provides that the Court
may "at any stage of an action order any pleading
or anything in any pleading to be struck out" on,
among other grounds, the grounds that it is frivol
ous or vexatious or may prejudice or embarrass a
fair trial or may otherwise constitute an abuse of
the Court. If a party has no grounds for making an
allegation in a pleading, then, there is no basis for
maintaining the allegation. It is not an answer to
an application to strike out, for the party to say
that, if he had unrestricted discovery of his oppo
nent, he might then be in a position to sustain the
allegation. Jackett P. (as he then was) in the case
of Dow Chemical Co. v. Kayson Plastics &
Chemicals Ltd. 5 answered the question very clear
ly and, in my opinion, quite correctly when he
stated at pages 4 and 5 of the report:
Generally speaking, I think it is correct to say that an action
under our judicial system is a device to settle disputes where the
plaintiff asserts certain facts which the defendant denies, or
where the plaintiff asserts that on undisputed facts the law
entitles him to relief that the defendant says the law does not
entitle him to, or where there is some combination of such
disputes between the plaintiff and the defendant. The assump
tion is that, at the time that the proceedings are instituted, the
plaintiff has grounds on which his professional advisors are of
the view that he can assert certain facts.
If, however, the plaintiff has no ground for asserting that the
defendant had done any particular act that, according to him,
constituted an infringement of his rights, I should have thought
that he has no basis for institution of proceedings for such an
infringement.
It is no answer, as the defendant has stated, that
since he has not yet examined for discovery he
might well discover the facts which would support
the pleadings. As Jackett P. stated in the Dow
Chemical case, supra, at page 6:
It would be no answer to an application to strike out in such a
case for the plaintiff to say that, if he is allowed to have
unrestricted discovery of the defendant, he may then be in a
position to plead a cause of action.
I cannot recall, and 1 have not been referred to, any type of
case outside the realm of industrial property litigation where
there has been a tendency to endeavour to turn an action for
damages into a general "Royal Commission" type of inquiry as
5 (1966), 47 C.P.R. 1 (Ex. Ct.).
to what infringements of the plaintiff's property rights the
defendant has been committing.
Although the application in the Dow Chemical
case was one for particulars, the principles enu
merated therein are, in my view, of general
application and quite relevant to the present issue.
A court proceeding is not a speculative exercise
and actions are not to be launched or continued,
nor are defences to be allowed to stand, where it is
clear that the person making the allegation has no
evidence to support it and where the onus of proof
rests on that person. It has, in my view, been fully
established that the allegations in paragraphs 9(b)
and 10(b) are frivolous and vexatious and may
prejudice or embarrass a fair trial and constitute
an abuse of the Court. There is no real dispute on
these issues and the plaintiff should not be put in
the position of meeting allegations which have no
foundation in fact. The paragraphs will be struck
out. The result would have been the same if full
particulars had, in fact, been given originally and
then, on discovery, there had been an admission
that the facts alleged were fictitious. It happens
too frequently and especially in patent and other
industrial property cases, that in attacking the
validity of a patent or title to a trade mark or
copyright, all text book grounds of attack are
automatically inserted regardless of whether or not
they are relevant or whether there is any possibili
ty of any evidence existing to support them.
One can understand, especially in the case of a
defendant when the matter is quite complicated
and involves considerable investigation and study,
that what might be termed a holding defence,
encompassing grounds of defence and of coun
terattack as to which evidence might not be readily
available, would be issued at the outset, in order to
ensure that all eventualities are covered. But there
can be no justification for maintaining any allega
tions once it is clear that there is no possible
chance of establishing them.
In so far as the defendant in this case is con
cerned, should it turn out at a later stage of the
proceedings that there appear to be grounds for
supporting the allegations, then, a motion might
possibly be made to amend the pleadings at that
stage and reinstate them with the necessary sup
porting particulars.
The motion will, therefore, be granted with
costs.
ORDER
Motion granted with costs.
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