On June 12, 2017, Prothonotary Aylen of the Federal Court issued her decision in Mostar Directional Technologies Inc. v Drill-Tek Corporation et al., 2017 FC 575. Prothonotary Aylen struck the Plaintiff's claim, holding that the pleading was speculative and failed to provide sufficient material facts for the allegation of patent infringement.
In this case, the Plaintiff alleged that the Defendants infringed Canadian Patent Nos. 2,666,695, 2,544,457, 2,584,671, and 2,634,236 which relate generally to down hole drilling technologies. The Plaintiff's claim identified the Defendants' model names and listed the patent claims that were alleged to be infringed. After demanding and receiving some particulars relating to infringement, the Defendants moved to strike the Plaintiff's claim as disclosing no reasonable cause of action.
The Court began its analysis by explaining that a Plaintiff alleging patent infringement must plead facts showing that (1) the plaintiff has some defined right (e.g., owns a patent); and (2) the defendant has encroached in some way on this right (e.g., infringes the patent). Prothonotary Aylen explained that Defendants should not be forced to "undertake guesswork" to respond to a claim, and are "entitled to understand clearly and precisely the exact nature of the invention, [and] the precise manner in which, according to the plaintiff, the defendant has infringed the claims of the patent". Without knowing the "how", the Defendants are unable to know the case they need to meet and are prevented from pleading intelligently in response.
While there is no hard and fast rule against pleading bare claim language to support an allegation of infringement, the Court observed that the Plaintiff's patents claim specific and intricate methods and designs for implementing telemetry for drilling applications. The Plaintiff did not have a monopoly over all devices and methods in that field, and without providing sufficient materials facts as to "how" the Defendants infringe the claims of the asserted patents, the Court held that the Plaintiff was attempting to improperly monopolize any devices and methods that combine the specific telemetry combinations claimed.
The Court ultimately struck the Plaintiff's claim without leave to amend, but without prejudice to the Plaintiff's right to file a new action should new, non-speculative circumstances arise.
Prothonotary Aylen's decision serves as an important reminder that the specificity required in a pleading for patent infringement is not the same in all circumstances. In some cases, the wording of the claim can be used to describe exactly what the defendant has done that constitutes infringement. In others, materials facts beyond the bare claim language will be required. Each case will be assessed on its own facts, the evidence presented and the exact wording of the patent claims and the statement of claim.
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