T-166-80
Amfac Foods Inc. and McCain Foods Ltd.
(Plaintiffs)
v.
C. M. McLean Limited (Defendant)
Trial Division, Jerome A.C.J.—Ottawa, May 13
and 20, 1980.
Practice — Application for order that Amfac Foods Inc.
deposit security for costs pursuant to s. 62 of the Patent Act —
Also, application pursuant to Rule 407 requiring plaintiffs to
provide defendant with true copies of certain documents —
Plaintiffs provided copies of documents from which informa
tion had been deleted — Applications allowed — Patent Act,
R.S.C. 1970, c. P-4, s. 62 — Federal Court Rule 407.
APPLICATIONS.
COUNSEL:
Ronald E. Dimock for plaintiffs.
Bruce E. Morgan for defendant.
SOLICITORS:
Donald F. Sim, Q.C., Toronto, for plaintiffs.
Gowling & Henderson, Ottawa, for defend
ant.
The following are the reasons for order ren
dered in English by
JEROME A.C.J.: This is an application for an
order that the plaintiff Amfac Foods Inc. deposit
security for costs and in resisting the application,
counsel for the plaintiff contended that the order
ought not to be made since the co-plaintiff
McCain Foods Ltd. has Canadian residence, but
while this may be the major factor in applications
pursuant to Rule 700 of the Federal Court Rules,
the importance of residency is clearly diminished
when the action falls, as this does, within section
62 of the Patent Act, R.S.C. 1970, c. P-4. The
situation has been clearly described by Cattanach
J. in Apotex Inc. v. Hoffman-La Roche Limited',
in the following two excerpts [at pages 590 and
587 respectively]:
I [1980] 2 F.C. 586.
The practice of compelling the deposit for costs is of ancient
origin predicated upon a plaintiff being resident out of the
jurisdiction and without property liable to be taken in execution
within the jurisdiction to secure the defendant for such costs
incurred and for which the plaintiff was liable ....
These considerations were not present in the enactment of
subsection 62(3) of the Patent Act and accordingly the legisla
tive intention must have been to deter irresponsible actions for
impeachment of patents of invention.
and
Under subsection 62(3) the plaintiff in an impeachment
action shall, before proceeding therein, give security for the
costs of the patentee in such sum as the Court may direct. I do
not think that language is susceptible of the interpretation that
the Court may direct that no costs shall be deposited.
Consistent with that reasoning, I find this a
proper case for an order for security for costs by
the plaintiff Amfac Foods Inc.
The applicant also seeks an order pursuant to
Rule 407 of the Federal Court Rules requiring the
plaintiffs to provide the defendant with true and
complete copies of the documents referred to in the
statement of claim, namely: the licence agreement
between the plaintiff, McCain Foods Ltd. and
Amfac Foods Inc., dated December 10, 1965, and
the supplementary agreement dated April 1, 1968
making McCain Foods Ltd. the exclusive licensee
under Canadian Letters Patent No. 773,884 re
ferred to in paragraph 6 of the statement of claim.
The plaintiffs contend that they have satisfied the
terms of the Rule by providing the defendant with
reproductions of documents from which have been
deleted certain information, but Rule 407(2) is
explicit and mandatory and the plaintiffs are, in
my opinion, not in a position to exercise discretion
in interpretation. Compliance with the Rule re
quires service of true copies of the documents and
continued non-compliance places the plaintiffs at
risk of an order for dismissal.
IT IS THEREFORE ORDERED that the plaintiff
Amfac Foods Inc. deposit into Court within thirty
(30) days from the date of this order, the sum of
two thousand dollars ($2,000) as security for the
defendant's costs herein.
AND IT IS FURTHER ORDERED that the plaintiffs
do, within ten (10) days from the date of this
order, provide the defendant with true and com
plete copies of the documents referred to in their
statement of claim, namely: the licence agreement
between the plaintiff, McCain Foods Ltd. and
Amfac Foods Inc., dated December 10, 1965, and
the supplementary agreement dated April 1, 1968
making McCain Foods Ltd. the exclusive licensee
under Canadian Letters Patent No. 773,884 re
ferred to in paragraph 6 of the statement of claim.
AND IT IS FURTHER ORDERED that this action
be stayed pending compliance with this order by
the plaintiffs.
AND IT IS FURTHER ORDERED that the defend
ant is to have costs of this motion in any event of
the cause.
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.