Pleading Amendments Alleging Prior Public Disclosure Refused Where Defendants Lack Material Facts

In 2015, Specialized Desanders sued Dynacorp Fabricators (now Enercorp Sand Solutions) and Progress Energy Canada for infringement of Canadian Patent No, 2,407,544 generally related to a vessel used to remove particulate matter, particularly sand, from a fluid stream coming out of a gas well. The Defendants denied infringement and counterclaimed seeking to impeach the validity of the 544 Patent as well as two other patents owned by the patentee.

During the first round of discovery, the Defendants became aware that the Plaintiff had hired a fabricator to build a test desander unit and that this unit had been used at a wellsite more than one year before the filing date of the patent, contrary to paragraph 28.2(1)(a) of the Patent Act. The Defendants interviewed the owner of the wellsite and determined that he had records, including drawings and a Manufacturers Data Report relating to the test unit. The wellsite owner, on the advice of counsel, was not prepared to