Supreme Court of Canada
Marconi Wireless Telegraph Company v. Canadian Car and Foundry Co., (1920) 61 S.C.R. 78
Date: 1920-06-21
The Marconi Wireless Telegraph Company of Canada (Plaintiff) Appellant;
and
The Canadian Car and Foundry Company (Defendants) Respondent.
1920: May 27; 1920: June 21.
Present: Idington, Duff, Anglin, Brodeur and Mignault JJ.
On Appeal from the Exchequer Court of Canada.
Patent—Installation of invention—Foreign vessel—Infringement—"Patent Act," R.S.C. (1906), c. 69, ss. 30 and 53.
The respondent, having a contract from the French Republic to construct twelve vessels at Fort William for use during the late war, agreed, by a supplementary contract, when the vessels were 95% completed, to install on each of the ships a wireless apparatus which the respondent claims to be an infringement of its patent. These apparatus were bought by the French Republic in New York and shipped to itself at Fort William. The respondent did nothing else than allow its men, under the direction of a naval officer of the French Republic, to install these apparatus on the vessels.
Held, Anglin J. dissenting, that the respondent did not "construct or put in practice" the invention of the appellant within the meaning of section 30 of the "Patent Act,"
Per Mignault J.—The terms of section 53 of the "Patent Act," cover not only the case of a foreign ship visiting a Canadian port, but also the case of a foreign ship built in Canada. Anglin J. contra.
Judgment of the Exchequer Court (19 Ex. C. R. 311) affirmed, Anglin J. dissenting, and Duff J. taking no part in the judgment owing to absence.
APPEAL from the judgment of the Exchequer Court of Canada, dismissing an action for damages by infringement of the plaintiff's patent.
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The material facts of the case and the questions in issue are fully stated in the above head-note and in the judgments now reported.
Eug. Lafleur K.C. and Colville Sinclair for the appellant.
Arnold Wainwright K.C. for the respondent.
Idington J.—The appellant claims that because respondent having a contract from the French Republic during the late war to construct a dozen vessels at Fort William for use in that war, by a supplementary contract thereto, agreed to provide in each of said structures a space so framed and fitted as to receive a device or machine serviceable for wireless telegraphy, and permitted, and possibly assisted in removing them from the warehouse in which each of such devices or machinery was deposited, to each of the said vessels and placing it therein, there was such a breach of the "Patent Act" under and by virtue of which the assignors of the appellant had obtained a patent for such device that appellant is entitled to recover damages herein.
The "Patent Act," by section 30, provides as follows:—
30. Every person who, without the consent in writing of the patentee makes, constructs or puts in practice any invention for which a patent has been obtained under this Act or any previous Act, or who procures such invention from any person not authorized by the patentee or his legal representatives to make or use it, and who uses it, shall be liable to the patentee or his representatives in an action for damages for so doing, and the judgment shall be enforced, and the damages and costs that are adjudged shall be recoverable, in like manner as in other cases in the court in which the action is brought.
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The respondent according to the evidence adduced herein certainly did not "make or construct" the devices or machines in question herein for they had been bought in New York, already made, and shipped by the French Republic to Fort William and all the respondent had to do with them was suffering its men under the direction of an officer of the French Republic to place them as he directed in the compartment built in each vessel, designed to receive some unspecified sort of wireless device.
The vessels were each so far finished that only five per cent of the work to be done, under the original contract, remained to be executed when this placing of each of the said devices or machines took place.
It is argued that inasmuch as the title to the property in and of the vessels remained in the respondent, therefore the title in and to each of these devices in question supplied by the French Republic became vested in the respondent.
I cannot accept such a proposition as tenable under all the facts and circumstances in evidence.
A perusal of the entire evidence here leaves me rather unenlightened as to the exact nature of the device or machine, but I infer that it was something portable and a piece of property belonging to the French Republic independently of the property in the vessel.
The respondent's relation to the article in question which I have designated a "device or machine" was analogous to that of the custom's agent in question in the case of Nobel's Explosives Co. v. Jones. Scott & Co., whom the Court of Appeal refused to hold liable for damages.
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I am, therefore, not able to hold that the respondent in any way "put in practice" the invention in question.
It is not necessary, therefore, for me to pass any opinion upon the effect of section 53 of the "Patent Act."
As I suspected during the argument the cases cited in support of appellant's contentions rest for the most part upon the right to an injunction which it is frankly admitted could not now be granted.
None of those cases cited maintain any such pretentions as set up herein.
They might support a claim to an injunction had that been applied for during the course of construction.
But this case is reduced, notwithstanding what is set up in the affidavit upon which leave to appeal was granted herein, to a bare right of claim for damages arising from an alleged tort.
And to found that I find no evidence and hence I conclude this appeal should be dismissed with costs.
Duff J. took no part in the judgment owing to absence.
Angltn J. (dissenting).—The novelty and utility of the plaintiff's patent, No. 74799, was prima facie established, if not by its production. (Electric Fire Proofing Co. v. Electric Fire Proofing Co. of Canada; Fisher & Smart on Patents, p. 215; Fletcher Moulton on Letters Patent, p. 188, note (c), by the evidence of the witnesses Cann and Morse. The record contains nothing that rebuts the primâ facie case thus made in this respect.
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Infringement is, I think, sufficiently established, as to the apparatus installed on the SS. Navarrine by the uncontradicted testimony of the witness Cann. By the 4th paragraph of its statement of defence the defendant admitted having installed wireless apparatus on 12 small war vessels being constructed by it for the French navy at Fort William, Ontario. The evidence sufficiently shews that the "Navarrine" was one of these vessels and there is no suggestion anywhere in the record that the apparatus installed on her differed in any respect from that placed on the other eleven ships. Indeed, Mr. Canfield, the defendant's superintendent, expressly stated that all the ships had the same installation although he admitted on cross-examination that he had not made personal investigation to ascertain that fact. He added that the vessels were all delivered by the defendant at Fort William. Mr. Atwood, assistant to the president of the defendant company, never heard of any difference in the apparatus installed on the several vessels and Mr. Lloyd McCoy, the General Master Mechanic who looked after the installation for the defendant, called as a witness on its behalf, is not asked whether there was any such difference. The apparatus was all obtained by the French Government from Emil J. Simon at New York and shipped to its representative at Fort William. I think it primâ facie appears therefore that the apparatus on the twelve vessels was identical.
The only substantial defences are (a) that, if there were such user by the defendant of the apparatus purchased from Simon as would otherwise be an infringement of the plaintiffs' patent, it was upon foreign vessels and therefore fell within the protection of s. 53 of the "Patent Act," R.S.C., c. 69;
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(b) that there was in fact no such use made of the apparatus by the defendant as would constitute a violation of the exclusive right of the plaintiffs under s. 21 of the "Patent Act;"
(c) that the plaintiffs are at most entitled to nominal damages, any infringement by the defendant having been innocent.
(a) Sec. 53 of the "Patent Act" was meant to cover the case of a foreign ship visiting a Canadian port and having on board some article the use of which in Canada would amount to an infringement of a Canadian patent, such as was the subject of litigation in Caldwell v. Vanvlissengen. The section was not meant to, and does not, cover the installation in Canada on a visiting foreign ship, and a fortiori not on a ship built here for foreign owners, of a device the use of which is otherwise in violation of the exclusive right conferred by s. 21. The case of Vavasseur v. Krupp, cited by the learned Assistant Judge of the Exchequer Court is clearly distinguishable. The French Republic is not a party to this action and no relief is sought against it nor is interference with its property asked. Moreover, under the terms of the agreement between the defendant company and the French Government the property in the vessels had not passed to the latter but was still vested in the former when it did the work of installing the Simon apparatus. They were therefore not foreign ships at that time.
(b) There was, in my opinion, user by the defendant of the infringing apparatus in violation of the plaintiffs' rights under s. 21. The installation was, and was intended as, a step towards the effective use of it and, in the absence of any evidence warranting such an
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inference, it cannot be assumed that there was to be no user of the wireless equipment until after the vessels should have left Canadian territorial waters. If such an intention would, if proven, have afforded a defence, the burden of establishing it satisfactorily was on the defendant. The French Government could not authorize the use in Canada of such apparatus. While it is not itself subject to answer in the courts of Canada for its acts or those of its agents, its Canadian contractors enjoy no such immunity. They are properly sued (Denley v. Blore, cited in Frost on Patents, vol. 1, p. 395 and Edmonds on Patents, p. 364) and are answerable for whatever damages were occasioned to the plaintiffs by the infringement of their rights which they aided, or helped to bring about. The principle of such cases as British Motor Syndicate v. Taylor & Son, and Upmann v. Elkan, applies.
(c) Innocence of intention is immaterial in considering the question of infringement; Stead v. Anderson. In the absence of a Canadian statutory provision corresponding to s. 33 of the "Patents and Designs Act," 1907, (Imp.) 7 Ed. VII., c. 29, the fact that the defendant was an innocent infringer does not entitle it to relief from liability for the damages sustained by the plaintiffs—(Nobels Explosive Co. v. Jones, Scott &. Co.; Boyd v. Tootal Co.—the measure of which is the loss actually suffered by them as a direct and natural consequence of its acts, Boyd v. Tootal Co.. This is not the case of an innocent defendant submitting and offering restitution as in Nunn v. D'Albuquerque. The defendant here contests the plaintiffs' right. Proctor v. Bayley.
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The appeal should be allowed and judgment entered declaring that there has been an infringement by the defendant company of the plaintiff's patent No. 74799 and referring this action to the Registrar of the Exchequer Court to inquire into and ascertain the amount of the plaintiffs' damages. The plaintiffs are entitled to their costs both of the action and of the appeal.
Brodeur J.—The mere fact that the respondent furnished certain labour and material in connection with the installation of wireless apparatus on mine sweepers which it was building for the French Government would not render it liable in damages. These wireless apparatus never were the property of the respondent, but belonged to the French authorities, had been bought by the latter in New York and had been shipped in to Canada at Fort William, where the ships were being built. There is no evidence that these apparatus were used or put in practice by the respondent before they delivered those ships. Terrell, 5th ed. p. 312. As far as the respondent company is concerned, there was no infringement of the patent claimed by the appellant.
The appeal should be dismissed with costs.
Mignault J.—On one ground I think this appeal should be dismissed, that furnished by sec. 53 of the "Patent Act" (R.S.C., ch. 69) which says:—
No patent shall extend to prevent the use of any invention in any foreign ship or vessel, if such invention is not so used for the manufacture of any goods to be vended within or exported from Canada.
This section, which has been in our statutes since at least 1872 (35 Vict., ch. 26, sect. 47), was apparently suggested by a provision of the English Act, now
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section 48 of 7 Edward VII., ch. 29, but is in somewhat wider terms. It is contended that it was meant to cover the case, not of a foreign ship built in Canada, for a foreign ship can undoubtedly be built here, but of a foreign ship visiting a Canadian port and having on board an article patented in Canada, and the use of which here would amount to an infringement of a Canadian patent. This, no doubt, may be the usual case, but there is no such limitation in section 53, which, in general terms, permits the use of any invention in any foreign ship or vessel, the only restriction being that the invention is not to be used for the manufacture of any goods to be vended within or exported from Canada.
It is further argued that the English Act was amended after the decision of Vice Chancellor Turner in Caldwell v. Vanvlissengen, which was the case of a visiting ship. The appellant also refers us to the Hansard Debates when the English Act was amended, as shewing the intention of Parliament in adopting this amendment. I am quite clear that we cannot look at these debates (Beal, Cardinal rules of Legal Interpretation, 2nd. ed., p. 288). And even granting that this amendment was made in view of the decision in Caldwell v. Vanvlissengen, this should not, in my opinion, make us hesitate to give effect to the clear and unambiguous language of our statute.
The only "use" here relied on was the installation by the respondent of the wireless device. If the vessels in question were foreign vessels, no patent could extend to prevent the use of any invention therein, and when these vessels were on the way to the sea, it does not seem to me that the use by the foreign crew of this device could have been enjoined.
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The learned trial judge found that these vessels were foreign vessels. It is true that the respondent had a lien thereon, which lien went so far as to stipulate that property in the ships would not pass to the French Government until the price was fully paid, and it had been paid when the Navarine was inspected in the Montreal harbour. I think however that this clause was inserted in the contract for the protection of the respondent, and of course could have been waived by it. The vessels were constructed for the French Government as a part of its navy. The wireless apparatus was purchased by that Government in New York and was consigned to it at Fort William. All the respondent did was to instal it, being paid merely the actual cost of installation. Under these circumstances, I do not think the respondent should be treated as an infringer of the appellant's patent.
I would dismiss the appeal with costs.
Appeal dismissed with costs.
Solicitors for the appellant:
Greenshields, Greenshields, Langeudoc & Parkins.
Solicitors for the respondent:
Davidson, Wainwright, Alexander & Elder.
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