A-1393-84
Northern Telecom Limited (Appellant) (Defen-
dant)
v.
Reliable Electric Company and Reliable Com
munications & Power Products Ltd. (Respon-
dents) (Plaintiffs)
Court of Appeal, Thurlow C.J., Heald and Stone
JJ.—Ottawa, January 28 and 30, 1986.
Patents — Practice — Appeal from refusal to order par
ticulars — Statement of claim alleging infringement of claims
of patent, or alternatively that defendant took substance of
invention as described in specification and claimed thereby
infringing patent — Appeal allowed — Alternative claim
referring to something different - Appellant entitled to con
cise description of what wording embraced, and wherein "sub-
stance" varying from text of claims — `Substance" of inven
tion material question of fact — Trial Judge following
McMaster, Nitschke and Larimer et al. v. Tamglass O.Y. et al.
(1981), 55 C.P.R. (2d) 69 (F.C.T.D.) and Ermanco Inc. et al. v.
Rexnord Canada Ltd. (1982), 67 C.P.R. (2d) 176 (F.C.T.D.) —
McMaster distinguished and not agreed with — Ermanco
decision, based on McMaster, not followed.
CASES JUDICIALLY CONSIDERED
APPLIED:
McPhar Engineering Co. of Canada Ltd., The v. Sharpe
Instruments Ltd. et al., [1956-60] Ex.C.R. 467.
DISTINGUISHED:
McMaster, Nitschke and Larimer et al. v. Tamglass
O.Y. et al. (1981), 55 C.P.R. (2d) 69 (F.C.T.D.).
NOT FOLLOWED:
Ermanco Inc. et al. v. Rexnord Canada Ltd. (1982), 67
C.P.R. (2d) 176 (F.C.T.D.).
COUNSEL:
Joan Clark, Q.C. and C. Ross Carson for
appellant (defendant).
T. Gary O'Neill for respondents (plaintiffs).
SOLICITORS:
Ogilvy, Renault, Montreal, for appellant
(defendant).
Gowling & Henderson, Ottawa, for respon
dents (plaintiffs).
The following are the reasons for judgment
rendered in English by
THURLOW C.J.: This appeal is from an order of
the Trial Division which refused the appellant's
application for an order that the respondents give
particulars of what is referred to in paragraph 10
of the amended statement of claim as "the sub
stance of the invention as described in the specifi
cation and as claimed in claims 1, 2, 7, and 8" of
Canadian patent number 1,029,084.
The patent is entitled "Line Protector for a
Communication Circuit". Its specification states
that the invention relates to line protectors of the
type that are located between central office switch
ing equipment and inside switching equipment and
that they serve to protect the inside equipment
from damage as a result of over voltage and over
current on the outside lines.
The statement of claim, in paragraph 6, asserts
that by reason of the grant of the patent the
respondents have the sole and exclusive right to
make, construct, use and vend to others to be used,
line protectors which are then described in terms
corresponding to those in claims 1, 2, 7 and 8 of
the patent. In paragraph 7 it is alleged that the
appellant has without the consent or authority of
the respondents made and sold in Canada line
protectors as described in paragraph 6. The line
protectors in question are identified by eight par
ticular model numbers. Paragraph 8 alleges that
these line protectors have in whole or in part the
several embodiments of the invention defined in
claims 1, 2, 7 and 8 of the patent. Paragraphs 9
and 10 go on to say:
9. By reason of the acts of the defendant set out in paragraph 7
the Defendant, NORTHERN, has infringed the rights of the
Plaintiffs in and to Canadian Letters Patent No. 1,029,084.
Specifically the Defendant, NORTHERN, has infringed claims 1,
2, 7 and 8 of Canadian Letters Patent No. 1,029,084.
10. In the alternative the Defendant, NORTHERN, has taken the
substance of the invention as described in the specification and
as claimed in claims 1, 2, 7 and 8 of Canadian Letters Patent
No. 1,029,084 and thereby has infringed the rights of the
Plaintiffs under claims 1, 2, 7 and 8 of Canadian Letters Patent
No. 1,029,084.
On the face of this pleading, I should have
thought it perfectly plain that paragraph 10, which
is pleaded as an alternative, in referring to the
substance of the invention as described in the
specification and as claimed in the claims in suit
purports to refer to something different from what
is asserted in paragraph 9 and that the appellant
would be entitled at once to a concise description
of what the wording "the substance of the inven
tion as described in the specification and as
claimed in claims 1, 2, 7 and 8" embraced and
wherein that "substance" varies from the text of
the claims. A plaintiff must describe with par
ticularity to the person he sues the right to which
he claims to be entitled and which he alleges that
the defendant has violated. That principle of
pleading applies in a patent infringement action
just as it does in an action for the violation of any
other kind of right.
A defendant is not required to answer anything
but what is asserted against him. He is entitled to
be told what right is asserted which he is alleged to
have violated and he cannot be required to search
for it by a vague assertion coupled with an indica
tion as to where he may search for it.
What the "substance" of the invention is is
obviously material as it is the taking of it of which
the respondents complain. It is also a question of
fact, not one of law. See McPhar Engineering Co.
of Canada Ltd., The v. Sharpe Instruments Ltd. et
al.' per Thorson P.:
And since there is infringement if the substance of the inven
tion is taken it becomes necessary to ascertain what the sub
stance of the invention is and that question is one of fact.
On the other hand if what is referred to in
paragraph 10 is nothing that is not included in
what is asserted in paragraph 9, the assertion of
1 [1956-60] Ex.C.R. 467, at p. 537.
paragraph 10 is not an alternative as it is said to
be and the paragraph is redundant and embarrass
ing to the appellant. I do not think it can be
regarded as harmless or that its supposed harm
lessness is a reason for not striking it out. So long
as it remains in the statement of claim it repre
sents an assertion which the appellant must deal
with and seek a way to defend, an exercise that
may well involve inquiries and expense that may
turn out to have been needless or useless or both.
In refusing the appellant's application, the
learned Trial Judge referred to and followed rea
soning expressed in two other judgments of the
Trial Division, that of Marceau J. in McMaster,
Nitschke and Larimer et al. v. Tamglass O.Y. et
al. 2 and that of Walsh J. in Ermanco Inc. et al. v.
Rexnord Canada Ltd. 3
The report of the McMaster case does not indi
cate that there was in the statement of claim any
paragraph even roughly comparable to
paragraph 10 of the statement of claim under
consideration and in any event the application
before Marceau J. was not one for particulars of or
otherwise relating to such a paragraph. At pages
70-71, after setting out a number of paragraphs of
the statement of claim, including paragraphs 9, 11
and 12, the learned Judge said, with respect to
these three paragraphs [at pages 70-711:
In my view, the plaintiffs' cause of action is validly and
sufficiently revealed by those paragraphs which give the essen
tial features of the system at issue and the pith and substance
of the invention claimed in the patent and said to have been
infringed. The allegations contained in those paragraphs are far
from being of the type condemned by the well-known judg
ments of the Exchequer Court in Dow Chemical Co. v. Kayson
Plastics & Chemicals Ltd. (1966), 47 C.P.R. 1, 33 Fox Pat. C.
167, [1967] 1 Ex. C.R. 71; and Union Carbide Canada Ltd. v.
Canadian Industries Ltd. (1969), 60 C.P.R. 223, [1969] 2 Ex.
C.R. 422. As I read them, they point unequivocally to what it is
essentially that is asserted and that the defendants have violat
ed: I do not believe anything more was needed. To require the
plaintiffs to further particularize those paragraphs would
induce them to set out at length large portions of the claims of
the patent, which would be completely useless, or else compel
them to put a construction on those claims, which of course
would be improper. In my view, the defendants do not need the
particulars sought to enable them to understand the position of
plaintiffs, see the basis of the case made against them and
2 (1981), 55 C.P.R. (2d) 69 (F.C.T.D.).
3 (1982), 67 C.P.R. (2d) 176 (F.C.T.D.).
appreciate the facts on which it is founded. They are not
entitled before filing their defence to those particulars.
[Emphasis added.]
In view of the conclusion of the learned Judge
that the paragraphs referred to gave the essential
features of the system at issue and the pith and
substance of the invention claimed in the patent, I
do not find the judgment useful as a guide in
resolving the present appeal. But I think I should
say that, with respect, I do not understand and I
do not agree with the view that to require a
plaintiff to put a construction on his claims at the
initial stage of a proceeding to enforce his patent
rights would be improper. It is undoubtedly the
function of the court at trial to construe the claims
in the light of the evidence as to the prior art and
determine what they cover, but that is at a differ
ent stage and is an entirely different matter from
requiring a patentee to describe a right that he
asserts even if to do so requires him to put on his
claims a construction which he considers they bear
and which he will be urging the court to adopt.
The situation in the Ermanco case was much
closer to that in this case as there what was sought
was an order for particulars of an allegation that
"in the alternative the defendant has taken the
substance of the invention as described in the
specification and as claimed in said claims 1
through 7". In determining the application before
him for particulars of the alternative assertion,
Walsh J. appears to have regarded the opinion of
Marceau J. in the McMaster case, and in particu
lar the view with respect to which I have expressed
disagreement, as leading to the conclusion that the
order should be refused.
The learned Trial Judge said at page 180:
I conclude that on the facts of the present case the particu
lars already given with respect to the alleged textual infringe
ment of the specific claims of plaintiffs' patent are all that are
required or can be given to support the alternative contention
that defendant has taken the substance of the invention, which
is a question of fact for the court to determine by consideration
of the patent claims assisted by whatever expert or other
evidence may be before the court at the hearing, and that it
would be improper to require plaintiffs, by furnishing further
particulars, to give their own interpretation of what constitutes
the substance of the invention.
I am, with respect, unable to agree with that
view or that the conclusion so reached should be
followed.
I would allow the appeal, set aside the order of
the Trial Division and in its place order that
paragraph 10 of the amended statement of claim
be struck out unless the plaintiffs within 30 days
deliver and file particulars of what is relied on as
being the substance of the invention as described
in the specification and as claimed in claims 1, 2, 7
and 8 of Canadian Letters Patent No. 1,029,084
and stating concisely the respects in which the
substance of the invention as so described and
claimed varies from what is set out in the said
claims.
The appellant should have its costs of the appeal
and of the motion in the Trial Division.
HEALD J.: I agree.
STONE J.: I agree.
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.