Automated Tank Manufacturing Inc. v. Miller et al., (2012) 402 Sask.R. 23 (QB)

• Judge: Gabrielson, J.
• Court: Court of Queen's Bench of Saskatchewan (Canada)
• Case Date: July 26, 2012
• Jurisdiction: Saskatchewan
• Citations: (2012), 402 Sask.R. 23 (QB);2012 SKQB 300

Automated Tank Mfg. Inc. v. Miller (2012), 402 Sask.R. 23 (QB)

MLB headnote and full text

Temp. Cite: [2012] Sask.R. TBEd. AU.033

Automated Tank Manufacturing Inc. (plaintiff/applicant) v. Peter Miller and Larry Bertelsen (defendants/respondents)

(2012 Q.B.G. No. 722; 2012 SKQB 300)

Indexed As: Automated Tank Manufacturing Inc. v. Miller et al.

Saskatchewan Court of Queen's Bench

Judicial Centre of Saskatoon

Gabrielson, J.

July 26, 2012.

Summary:

Automated Tank Manufacturing Inc. (ATM) manufactured and sold oil field tanks in Alberta and Saskatchewan. Miller, a professional engineer, who resided in Saskatchewan, was employed by BAR Engineering Co. (BAR). BAR was providing engineering and consulting services to ATM. Bertelsen, also a resident of Saskatchewan, owned two patents concerning methodology for the fabrication of certain types of structures, including oilfield tanks. Bertelsen was a former CEO and president of ATM. Bertelsen commenced a patent infringement action against ATM in Federal Court. Subsequently ATM filed a statement of claim in Saskatchewan against Miller and Bertelsen, alleging that Miller had disclosed confidential information to Bertelsen, acquired while Miller and BAR were providing engineering and consulting services to ATM. ATM claimed that Miller and Bertelsen had conspired with each other and with intent to injure ATM by the misuse of the confidential information. The statement of claim requested injunctive relief, an accounting, profits and damages, including aggravated and punitive damages. ATM applied for interlocutory injunctive relief.

The Saskatchewan Court of Queen's Bench dismissed the application.

Injunctions - Topic 1606

Interlocutory or interim injunctions - General principles - Balance of convenience - [See Injunctions - Topic 1610 ].

Injunctions - Topic 1610

Interlocutory or interim injunctions - Circumstances when injunction will not be granted - Bertelsen sued ATM for patent infringement in Federal Court - Thereafter, ATM sued Bertelsen and Miller in Saskatchewan, alleging a conspiracy to injure through misuse of confidential information - ATM sought interlocutory injunctive relief respecting the confidential information - The Saskatchewan Court of Queen's Bench held that while there were serious issues to be tried and a meaningful risk of irreparable harm, the balance of convenience did not favour ATM - As to balance of convenience, the court opined that relief should not be granted if it was being sought solely to gain an advantage for ATM in the Federal Court action - It was also significant that ATM had requested that no undertaking as to damages be granted - See paragraphs 23 to 45.

Practice - Topic 4157

Discovery - General principles - Collateral use of discovery information (implied or deemed undertaking rule) - Bertelsen sued ATM for patent infringement in Federal Court - Thereafter, ATM sued Bertelsen and Miller in Saskatchewan, alleging a conspiracy to injure through misuse of confidential information - Miller claimed that material filed in the Federal Court action was subject to an implied undertaking and therefore could not be relied on by ATM in the Saskatchewan action - The Saskatchewan Court of Queen's Bench held that the implied undertaking rule did not extend to third parties, in this case Miller, who was not a party in the Federal Court action - See paragraphs 10 to 22.

Cases Noticed:

Doucette v. Wee Watch Day Care Systems Inc. et al., [2008] 1 S.C.R. 157; 372 N.R. 95; 252 B.C.A.C. 1; 422 W.A.C. 1; 2008 SCC 8, refd to. [para. 12].

Juman v. Doucette - see Doucette v. Wee Watch Day Care Systems Inc. et al.

Dreco Energy Services Ltd. et al. v. Wenzel et al., [2007] A.R. Uned. 758; 2007 ABQB 635, refd to. [para. 13].

Gill v. 735458 Alberta Inc. et al., [2003] A.R. Uned. 359; 15 Alta. L.R.(4th) 362; 2003 ABQB 501, refd to. [para. 13].

Sanofi-Aventis Canada Inc. et al. v. Apotex Inc., [2008] F.T.R. Uned. 248; 66 C.P.R.(4th) 391; 2008 FC 320, refd to. [para. 15].

Trends Holdings Ltd. (Bankrupt) v. Tilson et al. (2007), 296 Sask.R. 54; 2007 SKQB 115, refd to. [para. 17].

Temelini v. Canada Permanent Trust Co. et al., [2005] O.T.C. 979 (Sup. Ct. Master), refd to. [para. 19].

Ribeiro v. Bank of Nova Scotia et al., [2002] O.T.C. 689; 21 C.C.E.L.(3d) 304 (Sup. Ct.), refd to. [para. 19].

Chandler (B.E.) Co. v. Mor-Flo Industries Inc. et al. (1996), 7 O.T.C. 60; 30 O.R.(3d) 139 (Gen. Div.), refd to. [para. 19].

Dreco Energy Services Ltd. et al. v. Wenzel Downhole Tools Ltd. (2008), 429 A.R. 51; 421 W.A.C. 51; 2008 ABCA 36, refd to. [para. 19].

RJR-MacDonald Inc. et Imperial Tobacco Ltd. v. Canada (Procureur général), [1994] 1 S.C.R. 311; 164 N.R. 1; 60 Q.A.C. 241; 111 D.L.R.(4th) 385, refd to. [para. 23].

Potash Corp. of Saskatchewan Inc. v. Mosaic Potash Esterhazy Limited Partnership (2011), 377 Sask.R. 78; 528 W.A.C. 78; 341 D.L.R.(4th) 407; 2011 SKCA 120, refd to. [para. 24].

Eli Lilly & Co. et al. v. Apotex Inc. et al. (2000), 266 N.R. 339; 9 C.P.R.(4th) 439 (F.C.A.), refd to. [para. 34].

101109718 Saskatchewan Ltd. et al. v. Agrikalium Potash Corp. et al., [2011] 9 W.W.R. 732; 390 Sask.R. 1; 2011 SKQB 66, affd. [2011] 9 W.W.R. 757; 375 Sask.R. 136; 525 W.A.C. 136; 2011 SKCA 82, refd to. [para. 35].

Airport Limousine Drivers Association et al. v. Greater Toronto Airports Authority, [2005] O.T.C. 730 (Sup. Ct.), refd to. [para. 35].

SaskTel v. Sprint Canada Inc., [1997] Sask.R. Uned. 24 (Q.B.), refd to. [para. 35].

Harmony Shipping Co. SA v. Davis, [1979] 3 All E.R. 177 (C.A.), refd to. [para. 41].

Counsel:

Gregory D. Heinrichs, Q.C., for the plaintiff/applicant;

William F.J. Hood, Q.C., for the defendant/respondent, Peter Miller;

Cory J. Furman, for the defendant/respondent, Larry Bertelsen.

This application was heard by Gabrielson, J., of the Saskatchewan Court of Queen's Bench, Judicial Centre of Saskatoon, who delivered the following judgment on July 26, 2012.