Elkay Manufacturing Co. v. Produits ThermoConcepts Inc.
T-1939-98
Lafrenière P.
3/5/99
12 pp.
Application for particulars of certain paragraphs of amended defence and counterclaim-Plaintiff alleging infringement of certain claims of patent relating to system in which inverted water bottle supported on dispenser and water hygienically dispensed-Whether entitled to particulars depending on case-Embee Electronic Agencies Ltd. v. Agence Sherwood Agencies Inc. (1979), 42 C.P.R. (2d) 285 (F.C.T.D.) setting out matters to be considered in assessing request for particulars-When requesting particulars before trial, defendant entitled to every particular possibly enabling him to properly prepare case, so that not taken by surprise at trial-When requesting particulars before filing of defence, defendant entitled to particulars possibly enabling him to better understand position of plaintiff, see basis of case against him, appreciate facts on which founded so that may reply intelligently to statement of claim, state properly grounds of defence on which relies-As particulars herein sought prior to filing reply to counterclaim, plaintiff entitled to all particulars allowing it to reply intelligently to counterclaim and to properly set out grounds of defence-Plaintiff seeking particulars of facts defendant intending to rely on to establish state of art-Common general knowledge as to prior art to be proven by evidence of experts-Defendant need not disclose precise mode in which case will be defended-Should provide complete list of publications upon which relies at this time-Plaintiff entitled to know specific parts of claims alleged to be ambiguous, thereby narrowing issues to be tried-Defendant ordered to particularize elements of claims alleging ambiguous-Allegation claims go beyond specifications raising strictly technical challenge-Such allegation based on questions of interpretation of wording of claims, specifications, Patent Act-No additional material facts to plead since specifications, claims speak for themselves-Plaintiff clearly in position to determine whether patent fails to correctly, fully describe invention-To require further particulars from defendant would require it to reveal its evidence, normally adduced through expert-For same reason no further particulars required of allegation patent fails to constitute best way of achieving invention-Patent Act, R.S.C., 1985, c. P-4.