T-1875-95
B E T W E E N:
VISX, INCORPORATED
Plaintiff
- and -
SUMMIT TECHNOLOGY INCORPORATED,
Dr. YAIR KARAS, Dr. MICHEL BRUNET, Dr. MARVIN KWITKO
Dr. HOWARD GIMBEL, Dr. GERALD SCAIFE, Dr. PATRICIA TEAL,
Dr. JOSEPH WEINSTOCK and Dr. FOUAD TAYFOUR
Defendants
REASONS FOR ORDER
GILES, A.S.P.:
On September 11th, 1996, I gave leave to file a counterclaim, which added a plaintiff by counterclaim and claimed relief for infringement of a patent alleged to anticipate the invention for which the patent in the main issue was granted. At the request of counsel I agree to give short reasons for my decision. These are my reasons.
Dealing first with the apparent lack of an applicable Rule of our Court, neither counsel seemed to be concerned being apparently agreed that a counterclaim would be possible, but disagreeing as of the appropriateness of adding the subject matter of this counterclaim to this action.
There is not a patently applicable Rule in Federal Court Rules, nor could I find a rule in the Ontario or English Rules, nor any decided cases in which a plaintiff by counterclaim had been added.
I noted that had the defendant company been the sole owner of the patent, it could have made the proposed counterclaim as of right (it would in such a case be open to the plaintiff/defendant by counterclaim to move under Rule 1718(3) to have the counterclaim tried separately). However, because the defendant is not the sole owner of the patent it is sought to enforce by counterclaim, the plaintiff has applied to add the co-owner as a plaintiff by counterclaim. I note that had the existing plaintiff sought to enforce the patent, and his co-plaintiff had not agreed, he could have moved the Court under Rule 1719 to add the co-owner as a defendant by counterclaim. It seemed to me illogical that if the defendant could have forced his co-owner into the action as a defendant the co-owner should not be permitted to voluntarily join the action. This is particularly so, where the additional party's claim is the same as that of the original corporate defendant. I therefore concluded that in this case, a plaintiff by counterclaim could be added.
Having so decided, it becomes necessary to determine, whether leave should be given in this case because of the addition of an patent infringement action by the counterclaim.
I note that the proposed plaintiffs by counterclaim could commence a new action with respect to infringement of their patent, which could proceed independently of this action. The plaintiff would be a principal party in both actions and therefore would save no time or expense overall by having the action and proposed counterclaim tried separately. Much, but not all of the evidence will be in common and it appears that the two patents can not both be valid. The disclosure of both patents would be at issue in this action, whether or not the counterclaim is permitted. It is my view that the saving in time by allowing the counterclaim over requiring separate actions will probably be considerable and that the extension in time for this case alone will be justified by the overall saving. This view of justification is reinforced by the possibility that conflicting decisions might result if the matters were tried separately. I note that in R. v. Central Tobacco Mgf (1980) Ltd. etc. [1985] 1 CTC 357, Mr. Justice Walsh, in refusing to order a counterclaim tried separately, relied on the fact that the same or a similar issue might arise, and that there might be some danger of conflicting judgments, and that to hear the issue separately would require duplication of some of the evidence. In this case, many of the same issues will arise, and much of the evidence would be duplicated. I therefore concluded, that leave should be given to file the counterclaim, eventhough, an additional plaintiff by counterclaim would thereby be added.
I note that counsel stated that both plaintiffs by counter-claim would be represented by the same counsel, I would not have otherwise given leave. Plaintiffs must be represented by the same counsel.
I stated also, that my order would not be effective until the consent of the party to be added had been filed, because a person can only be added as a plaintiff if that person consents.
"Peter A.K. Giles"
A.S.P.
Toronto, Ontario
September 12, 1996
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
COURT NO: T-1875-95
STYLE OF CAUSE: VISX, INCORPORATED
- and -
SUMMIT TECHNOLOGY
INCORPORATED, ET AL.
DATE OF HEARING: SEPTEMBER 11, 1996
PLACE OF HEARING: TORONTO, ONTARIO
REASONS FOR ORDER BY: GILES, A.S.P.
DATED: SEPTEMBER 12, 1996
APPEARANCES:
Mr. Gregory A. Piasetzki
Mr. Avi Zimmerman
For the Plaintiff
Mr. Dan Hitchcock
For the Defendants
SOLICITORS OF RECORD:
PIASETZKI & NENNIGER
120 Adelaide Street West
Suite 2308
Toronto, Ontario
M5H 1T1
For the Plaintiff
RICHES, McKENZIE & HERBERT
Suite 2900,
2 Bloor Street East
Toronto, Ontario
M4W 3J5
For the Defendants
FEDERAL COURT OF CANADA
Court No.: T-1875-95
Between:
VISX, INCORPORATED
Plaintiff
- and -
SUMMIT TECHNOLOGY
INCORPORATED, ET AL.
Defendants
REASONS FOR ORDER