Canada: Another Reminder To Plead The Materials Facts Of Patent Infringement: Canadian National Railway Co V BNSF Railway Co

Last Updated: July 3 2018
Article by Joshua W. Spicer and Michael Burgess

In Canadian National Railway Co v BNSF Railway Co1, Justice Locke reaffirmed the importance of pleading material facts to support allegations of patent infringement. As the case shows, repeating the language of the claims is insufficient if the pleading does not answer the main factual questions of who did what, where, when, and how. To withstand a motion to strike, facts providing a reasonable basis to conclude there has been infringement of all elements of the asserted claims should be pleaded, based on the actual acts of infringement and not solely the words of the patent claims.

The Federal Courts have repeatedly emphasized the need to plead material facts in order to frame the issues relevant to the case and to allow it to move forward in an efficient manner. In Mancuso v Canada (National Health and Welfare)2, the Federal Court of Appeal explained that pleading particular material facts is "fundamental to the trial process"3 because doing so provides notice and defines the issues. A proper pleading ensures that "the Court and opposing parties cannot be left to speculate as to how the facts might be variously arranged to support various causes of action."

Bald allegations are at the other end of the spectrum and on their own do not establish a cause of action. The dividing line between material facts and bald allegations is not, however, always readily apparent. In Mancuso, Justice Rennie made the following observations:

"There is no bright line between material facts and bald allegations, nor between pleadings of material facts and the prohibition on pleading of evidence. They are points on a continuum, and it is the responsibility of a motions judge, looking at the pleadings as a whole, to ensure that the pleadings define the issues with sufficient precision to make the pre-trial and trial proceedings both manageable and fair.

What constitutes a material fact is determined in light of the cause of action and the damages sought to be recovered. The plaintiff must plead, in summary form but with sufficient detail, the constituent elements of each cause of action or legal ground raised. The pleading must tell the defendant who, when, where, how and what gave rise to its liability.4"

One distinction that bears reference in the context of patent infringement is that statements based on information received from a party about things that actually happened and statements that describe a process or product tend towards the material fact end of the spectrum. Those conjured by counsel using only patent claim language or statements from case law are more susceptible to classification as a bald allegation.

To sustain a cause of action for patent infringement, a pleading must meet the well-known Dow Chemical5 test. That is, a plaintiff must plead "(a) facts from which it follows that the plaintiff has the exclusive right to do certain things, and (b) facts that constitute an encroachment by the defendant on that right."6 In CN Railway, Justice Locke explained that only the first of these may be established by alleging ownership in a patent and identifying the claims at issue.7 The second requires more: a plaintiff must plead facts that, if true, would establish that the defendant has encroached the exclusive rights.

Three patents were at issue in CN Railway. The defendants sought to strike the claim in its entirety, but the Federal Court upheld the pleading in relation to some claims for two patents because the pleading provided "a reasonable basis for understanding CN's infringement allegations in respect of all of the elements thereof."8 The Court struck the allegations based on the other claims, including all of those in the third patent. The bar supporting the surviving claims was fairly low. CN had included annotated screen shots in the statement of claim from the defendant's website identifying the online tools in issue. To the extent the annotations mapped onto an asserted claim, the pleading of that claim withstood the motion to strike:

"Despite the fact that CN offers little detail in its Amended Statement of Claim concerning its patent infringement allegations other than boxes and arrows added to a few screenshots, it is my view that there is sufficient detail to establish a reasonable cause of action that is not lacking any reasonable prospect of success, at least for some of the claims in issue. In addition, BNSF has not convinced me that it is unable to respond intelligently to these infringement allegations.9"

Justice Locke, however, struck the allegations of infringement based upon claims for which there was no pleaded basis for infringement beyond the assertion of the claim language. Claims having elements that could not be construed to cover anything the defendant was alleged to be doing were disallowed.10

Also worth mentioning, CN Railway follows Prothonotary Aylen's 2017 decision in Mostar Directional Technologies Inc v Drill-Tek Corp in which she struck the entirety of the claim before her for want of material facts.11 The Court emphasized the necessity of pleading facts to establish who, what, where, when, and how the alleged infringement took place. In that case, Mostar alleged that four of its patents relating to oil well directional drilling technology were infringed. In its claim, Mostar identified individual products that allegedly infringed individual claims. It did not, however, plead any facts to support how those products infringed the claims. Prothonotary Aylen stated: "If a statement of claim contains bare assertions without material facts upon which to base those assertions, then it discloses no cause of action and is liable to be struck."12 This was a fatal flaw in the pleading before her, which led to the conclusion that Mostar was speculating about its claim and waiting for discovery to learn how the allegedly infringing products worked.13

Pleadings sufficient to understand how a claim is infringed are crucial for the defendant to know the case it has to meet. "It is not for the Defendant to undertake guesswork in order to respond".14 Pleading material facts facilitates an efficient route to trial. Where both parties understand the allegations, interlocutory steps such as discovery and expert reports may focus on the central dispute and avoid the make-believe.

Although CN Railway and Mostar are recent examples of these principles, the importance of pleading material facts in patent infringement actions is not new. As Justice Addy long ago stated in Caterpillar Tractor: "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."15 As recent authority shows, these observations are equally as applicable to proceedings before the court today.


1 2018 FC 614 [CN Railway]

2 2015 FCA 227 [Mancuso].

3 Mancuso, supra note 2 at ¶16.

4 Ibid, at ¶18-19.

5 Dow Chemical Co v Kayson Plastics & Chemicals Ltd (1966), 47 CPR 1 (Ex Ct) [Dow Chemical].

6[6] Ibid, at 11. See also CN Railway, supra note 1 at ¶12; Mostar, infra, note 12 at ¶24.

7 CN Railway, supra note 1 at ¶12.

8 Ibid, at ¶45.

9 Ibid, at ¶44.

10 Ibid, at ¶50-53.

11 2017 FC 575 [Mostar].

12 Ibid at ¶16.

13 Ibid at ¶43-44.

14 Ibid at ¶35-36.

15 Caterpillar Tractor Co v Babcock Allatt Ltd (1982), 67 CPR (2d) 135 at 139 (FCTD), aff'd 72 CPR (2d) 286 (FCA) [Caterpillar Tractor].

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Joshua W. Spicer
Michael Burgess
Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions