Rejected allegations on insufficiency: The importance of clarity, specificity, and timeliness in amending pleadings
ProSlide Technology Inc. v WhiteWater West Industries Ltd. is an appeal of an Associate Judge’s Order denying WhiteWater’s motion to amend its Statement of Defence and Counterclaim to include allegations that the patents in suit insufficiently disclosed the claimed inventions (the Sufficiency Amendments).
The Associate Judge found the Sufficiency Amendments were abusive, lacked a reasonable prospect of success, and had not been brought in a timely manner. Since sufficiency relates to disclosure in a patent, WhiteWater should have identified this allegation at the commencement of the underlying action. WhiteWater appealed the Associate Judge’s decision.
Justice Manson dismissed the appeal on various grounds. He found that WhiteWater was seeking to broaden the scope of sufficient disclosure beyond what the law supports and noted that sufficient disclosure should (1) pertain to the invention as disclosed and claimed by the patent; and (2) enable the skilled person to make or use that invention. The Associate Judge was right to say that a patentee need not disclose all preferred embodiments, potential commercial products, or other information not relevant to the invention as claimed. Therefore, the facts omitted from the patent description, as pleaded in the Sufficiency Amendments, did not result in disclosure being insufficient in this case.
Justice Manson held that the Sufficiency Amendments had no reasonable prospect of success. Although the inventor preferred a particular embodiment, that embodiment need not be disclosed to enable a person of ordinary skill in the art to make and use the invention as claimed. Justice Manson distinguished the Supreme Court’s decision in Sildenafil, where the patent claimed many chemical compounds for the treatment of erectile dysfunction but did not disclose one of the especially preferred compounds. In the present case, the “downhill geometry with no tilt” embodiment was one of many embodiments disclosed in the asserted patents.
Justice Manson held that the Associate Judge did not err in deciding that the Sufficiency Amendments were inadequately particularized. WhiteWater alleged that all representations of the technology made to the Canadian government were essential for the manufacture and operation of the claimed subject matter, despite being unaware of the nature of those representations. It was therefore open to the Associate Judge to find the Sufficiency Amendments were bald allegations that did not permit ProSlide to plead in response.
Justice Manson acknowledged that open-ended pleadings are permitted if they are connected to the material facts of the case. Instead of identifying a common set of essential elements that the patents failed to disclose, the Sufficiency Amendments alleged that certain documents unknown to WhiteWater may exist. There was no nexus between these open-ended allegations and the material facts.
Justice Manson agreed that the Associate Judge had erred in assessing timeliness from the date of the Statement of Claim but found that the amendments remained untimely even if assessed from the appropriate date of December 2022, when the information driving the Sufficiency Amendments came to WhiteWater’s attention; WhiteWater had many opportunities to amend its claim before August 2023 when it brought its motion. The amendments would also risk delaying trial if allowed at this stage.
WhiteWater sought leave to reapply to amend its pleading. Justice Manson denied this request, noting that appeals are not de novo hearings and the proposed amendments would amount to novel arguments on appeal. Granting WhiteWater a second attempt would conflict with the finality and certainty that the Court seeks to bring to interlocutory disputes.
Justice Manson therefore dismissed WhiteWater’s appeal and request to “reapply” to further amend its Statement of Defence. A copy of the decision can be found here.