Date:
20060531
Docket:
A-78-05
Citation:
2006 FCA 204
CORAM: LÉTOURNEAU
J.A.
NOËL J.A.
PELLETIER J.A.
BETWEEN:
CHARLES D.
MACLENNAN and ÉQUIPEMENT QUADCO INC.
Appellants
and
LES PRODUITS
GILBERT INC.
Respondent
REASONS FOR JUDGMENT OF THE COURT
(Delivered
from the bench at Montréal, Quebec, May 31, 2006)
NOËL J.A.
[1] This is an appeal from a decision
(2004 FC 1700) by Mr. Justice Beaudry of the Federal Court, dated December 6,
2004, dismissing the action for infringement of Canadian patent
No. 2,011,788 (patent 788) brought by the appellants.
Facts
[2] The appellants operate a company
that develops, designs, manufactures and sells forestry products, including
circular saws and replacement parts for circular saws such as discs, tooth
holders and saw teeth.
[3] It was the appellant MacLennan who
created Équipement Quadco Inc. (Quadco), whose first product marketed in this
way was the combination that is the subject matter of the invention in issue.
Quadco sells a complete disc on the periphery of which are serially bolted some
samples of the patented combination. Quadco also sells forest operators three
versions of the invention that are the subject of this appeal, as spare parts
(teeth and tooth holders) that they take with them into the forest in order to
construct or reconstruct on the spot the combinations that are damaged or destroyed.
[4] The respondent, on the other hand,
also operates a company that manufactures and sells forestry products and
machinery, including circular saws, replacement parts for circular saws such as
discs, tooth holders, saw teeth and tooth adapters. Amongst this forestry
equipment is a circular saw for a feller head that includes some tooth holders
bolted to the periphery of the disc whereas previously these tooth holders were
welded.
[5] The appellants are suing the
respondent for infringement of patent 788, the claimed invention, which is used
in circular saws for feller heads in the forest industry and more particularly
in rocky and snowy terrain.
[6] The invention covers the
combination of two essential main cogs with a set of special features: a repositionable
saw tooth and a detachable tooth holder. This combination is designed to be
attached to the periphery of the circular saw disc.
[7] The tooth is attached to the tooth
holder, while the tooth holder is designed to be bolted on the periphery of a
disc to form a circular saw. The tooth and tooth holder project beyond the
disc. The circular saw is installed on the lower part of a device used to cut
down trees, called a “tree feller”. The saw disc in question is quite large.
[8] The teeth, tooth holders and the
disc can frequently be damaged because the saw can encounter rocks, since it
cuts the tree as closely as possible to the soil,. This impact is violent,
particularly considering the speed with which the disc is turning.
[9] According to the specification for
the patent in issue, the inventor’s objective was to avoid damaging the disc by
limiting damages to the teeth and tooth holders (Patent 788, patent
specification, p. 1, lines 6 to 14). The tooth and tooth holder are replaceable
by new spare parts that the forestry operators take with them into the forest
(Patent 788, patent specification, p. 2, lines 34 to 35 and p. 3, lines 1 to
7). A forestry operator digs into his inventory of teeth and tooth holders to
reassemble one or more new combinations.
[10] The appellants filed with the trial
judge the following table, which describes the Gilbert products and the claims
for patent 788 which have allegedly been infringed (transcript, vol. 8, at
p.242):
[11] They argued, by reference to this
table, that the respondent was infringing their patent in two ways: through the
production and sale of the tooth and tooth holder that appear in combination 1,
in direct infringement of the patent; and by encouraging loggers to use the
Gilbert teeth in combination with the appellants’ tooth holders, which appear
in combinations 2 to 5 of the table (infringement by inducement).
[12] It is not necessary to reproduce the
claims that have been allegedly infringed. Suffice it to say that these claims
cover some combinations since they all begin (directly or indirectly) with the
words “A saw tooth and tooth holder combination”.
Decision under appeal
[13] The trial judge began by holding
that the Gilbert tooth holder and the cylindrical-backed Gilbert tooth
(combination 1) did not give rise to a direct infringement of claims 2, 3 and 5
of the patent. In his view, claims 3 and 5 were dependent on the second claim,
and the latter claim was not infringed since it is limited to a
“frusto-pyramidal” tooth and a tooth holder with a corresponding shape whereas
the Gilbert tooth and its tooth holder do not have that shape.
[14] The reasons of the trial judge in
this regard are as follows:
[27] … It is true that in claim 2
the words “frusto-pyramidal” or “pyramidal” are not mentioned. However, the
defendant’s expert witness maintained that the patent could not cover anything
but a tooth with a pyramidal shape. In preferring his opinion to that of Mr.
Marquis, I do not think that the Court is adding a word to claim 2, as counsel
for the plaintiff maintained, in view of the persuasive explanations provided.
In support of his arguments, Mr. Gaudreault referred to his analysis made
in connection with claim 1, the specifications, designs and very wording of
claim 2 - “small end”, “large end”, “divergent surfaces” - and the abutment
means. However, he admitted that a pyramidally shaped tooth could have more
than four sides.
[28] The abutment means of the
tooth holder are another essential element in the patent. On the one hand, Mr.
Marquis mentioned [translation]
“an abutment means against which the back and one side of the tooth rest”. Mr.
Gaudreault, for his part, thought that [translation]
“the abutment means are adapted to take a pyramidal tooth, that is, two
surfaces forming an L”. The testimony and reasoning of the defendant’s expert
witness persuaded me that his conclusions in this regard were more probative
than those of the plaintiff’s expert witness. The two surfaces forming an L are
made in such a way that they marry the shape of the pyramidal tooth. They are thus
backed on a flat surface and supported on one side on a small platform. With
the shank, and a means of fastening, this tooth holder and saw tooth
combination prevents rotation and tangential movement.
[15] The trial judge ruled as follows on
the allegation of infringement by inducement:
[38] I accept the argument put
forward by counsel for the defendant that the plaintiff is suing Gilbert in
connection with a product which does not represent a combination of a tooth
holder and teeth. In the five patent claims, the first sentence begins by “A
saw tooth and tooth holder”. In order to succeed, the plaintiff had to show
that Gilbert was manufacturing, selling, teeth and tooth holders in
combinations 2, 3, 4 and 5, which clearly is not the case. There is no Gilbert
tooth holder in these combinations. This finding suffices in itself to support
a ruling that combinations 2, 3, 4 and 5 do not infringe the patent.
Grounds of appeal
[16] The appellants are not appealing the
first part of the trial decision, that combination 1 does not result in a
direct infringement of claims 2, 3 and 5 of the patent (memorandum of
appellants, para. 48). They are asking us, however, to find by way of a
declaratory judgment that the trial judge erred in finding that claim 2 of the
Quadco patent is limited to a pyramidal or “frusto-pyramidal” shaped tooth and
a correspondingly shaped tooth holder. This interpretation, they say, is
mistaken and could be detrimental to them since it might bind them in future
litigation.
[17] Concerning the second issue
(infringement by inducement), the appellants’ counsel maintains that the trial
judge lost sight of the issue he had to rule on when he held that the
respondent had to sell the teeth in combination with the tooth holder if there
was to be infringement by inducement. Indeed, the issue was not whether the
sale of the Gilbert replacement teeth by themselves infringed the Quadco
patent. Rather, it was whether the respondent was guilty of infringement by
inducement when it invited forestry operators to combine the Gilbert
replacement teeth with the Quadco tooth holders (Rucker Co. v. Gravel’s
Vulcanizing Ltd., (1985), 7 C.P.R. (3d) 294 (F.C.T.D.), at pp. 322-23).
[18] Finally, the appellants add that
combination 2 is no longer at issue; therefore, only combinations 3, 4 and 5
are under appeal.
Decision
1. Direct infringement
[19] By seeking a declaratory judgment,
the appellants are attacking the very essence of the trial judgment and a
finding of no direct infringement in regard to combination 1. The appellants’
decision not to appeal the trial judge’s decision on this point means that the
declaratory judgment that they are seeking in this Court would be purely moot.
[20] An appellate court may in some
circumstances choose to rule on an issue even if it has become moot. In this
case, the appellants were in a position to raise the issue they wanted the
Court of Appeal to rule on by appealing the decision, but they chose not to do
so for reasons that remain unexplained, despite the fact that the Court
inquired about this from the bench.
[21] The appellants cannot expect that
the Court will exercise its discretion in their favour and agree to address an
issue that they themselves have made moot without at the very least explaining
why they did not exercise their right of appeal. In these circumstances, there
is no reason to examine the moot question underlying the request for a
declaratory judgment.
2. Infringement by inducement
[22] It is also possible to rule rapidly
on the second aspect of the appeal. The trial judge, in finding that
combinations 2 to 5 did not infringe the patent, appears to have momentarily
forgotten that he was dealing with infringement by inducement. The applicable
test in such matters is the following:
1)
That an act of infringement was
completed by the direct infringer …
2)
Completion of the act of
infringement was influenced by the acts of the inducer. Without said influence,
infringement would not otherwise take place …
3)
The influence must knowingly be
exercised by the seller, i.e., the seller knows his influence will result in
the completion of the act of infringement. (see Dableh v. Ontario Hydro,
(1996) 68 C.P.R. (3d) 129 (F.C.A.) at pp. 148-149 as well as Halford v. Seed
Hawk Inc., (2004) 31 C.P.R. (4th) 434 (F.C.T.D.) (Pelletier J.)
at pp. 559-560 and AB Hassle v. Canada (Minister of National Health and
Welfare), (2001) 16 C.P.R. (4th) 21 (F.C.T.D.) (O’Keefe J.) at p. 42; aff’d 22 C.P.R. (4th)
1 (F.C.A.) at p. 7).
When these three conditions are fulfilled, the
seller is guilty of infringement by inducement.
[23] As to the first question, the fact
that the products sold by the respondent were limited to a tooth rather than a
combination of teeth and tooth holders is unimportant. The question that the
trial judge should have asked was whether the forestry operators infringed the
patent by using the Gilbert tooth in combination with the Quadco tooth holder.
It is that combination that had to give rise to an act of infringement within
the meaning of the first issue.
[24] Before answering, the trial judge
should have asked first whether the forestry operators could, under the implied
licence resulting from the purchase of the Quadco patented combination,
“repair” the damaged components by inserting the Gilbert teeth in them without
infringing the patent: Harold G. Fox, Canadian Patent Law and Practice,
4th ed. (Toronto: Carswell, 1969) at pp.301 and 391. If not, and if
the use of the Gilbert tooth in combination with the Quadco tooth holder
infringed the patent as alleged, the trial judge had to address the second and,
if applicable, the third issue.
[25] But the trial judge did not address
any of these issues. In the circumstances, the appeal must be allowed, the
decision on infringement by inducement must be set aside and the matter
returned to the judge below for redetermination, according to the applicable
legal test and the file before him. The appellants will be entitled to their
costs.
”Marc Noël”
Certified true
translation
François Brunet,
LLB, BCL
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