Date: 20041019
Docket: T-491-04
Citation: 2004 FC 1447
BETWEEN:
LES INSTALLATIONS SPORTIVES DEFARGO INC.
Plaintiff
and
FIELDTURF INC.
Defendant
REASONS FOR ORDER
PROTHONOTARY MORNEAU
[1] This is a motion by the defendant Fieldturf Inc. pursuant to paragraphs 221(1)(a), (b) and (f) of the Federal Court Rules, 1998, (the Rules) to strike the plaintiff's statement of claim essentially on the grounds (according to the defendant's written submissions, not its notice of motion) that the statement of claim asks the Court to decide in a vacuum, that any judgment rendered would serve no practical purpose, or finally, that this Court and the Quebec Superior Court already have before them infringement actions relating to the plaintiff's products.
[2] Alternatively, the defendant is asking that proceedings be stayed in the action at bar pursuant to subsection 50(1) of the Federal Courts Act, R.S.C. 1985, c. F-7, as amended.
BACKGROUND
[3] The parties both work in the field of the selling and installation of synthetic lawns for, among other things, soccer, football and baseball fields.
[4] It appeared that the products of the two parties, their synthetic lawns, each have a space between rows of lawn ribbons, a ribbon height and an infill height made of a particular material. One of the defendant's managers, John Gilman, described his product as follows in the affidavit submitted in support of the motion at bar:
The synthetic turf surface developed by defendant Fieldturf Inc. is essentially comprised of a backing member from which parallel rows of artificial blades of grass project upwardly (the carpet) and one or many layers of particulate material (the infill) interspersed among and supporting the blades of grass in a relatively upright position.
[5] The defendant's product appeared to be covered in one way or another by three Canadian patents.
[6] The plaintiff has installed its product inter alia at Concordia University in Montréal.
[7] On or about March 6, 2004, the defendant sent the plaintiff a copy of a possible action against the plaintiff in the Quebec Superior Court for an alleged infringement of the defendant's patents, with respect to the installation of the plaintiff's synthetic lawn at Concordia University.
[8] Faced with this threat of legal action, the plaintiff brought the action at bar. The purpose of this action is to have the Court declare that the AstroPlay®Plus and AstroPlay®N brand synthetic lawns sold and installed by the plaintiff do not infringe the defendant's patents.
[9] The evidence further was that the threat of legal action mentioned above in paragraph [7] was not an isolated act and that the defendant regularly maintained that the plaintiff's lawns were an infringement.
[10] The specifications for the plaintiff's synthetic lawns are set out as follows in paragraph 4 of its statement of claim:
[TRANSLATION]
The plaintiff sells various types of synthetic lawn surfaces, including the following models:
(a) AstroPlay®Plus model, in which the space between the rows of synthetic lawn ribbons is 3/8 of an inch, with a ribbon height of 55 millimetres and a rubber infill height of approximately 44 millimetres;
(b) AstroPlay®N model, in which the space between the rows of synthetic lawn ribbons is 3/4 of an inch, with a ribbon height of 61 or 64 millimetres and a rubber infill height of approximately 52 millimetres.
ANALYSIS
[11] The plaintiff brought its action pursuant to subsection 60(2) of the Patent Act, R.S.C. 1985, c. P-4, as amended (the Act).
[12] That subsection essentially gives a person the right to bring an action in this Court for a declaration of non-infringement against a patent holder when the latter alleges infringement of its patent(s).
[13] Subsection 60(2) reads as follows:
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Declaration as to infringement
(2) Where any person has reasonable cause to believe that any process used or proposed to be used or any article made, used or sold or proposed to be made, used or sold by him might be alleged by any patentee to constitute an infringement of an exclusive property or privilege granted thereby, he may bring an action in the Federal Court against the patentee for a declaration that the process or article does not or would not constitute an infringement of the exclusive property or privilege.
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Déclaration relative à la violation
(2) Si une personne a un motif raisonnable de croire qu'un procédé employé ou dont l'emploi est projeté, ou qu'un article fabriqué, employé ou vendu ou dont sont projetés la fabrication, l'emploi ou la vente par elle, pourrait, d'après l'allégation d'un breveté, constituer une violation d'un droit de propriété ou privilège exclusif accordé de ce chef, elle peut intenter une action devant la Cour fédérale contre le breveté afin d'obtenir une déclaration que ce procédé ou cet article ne constitue pas ou ne constituerait pas une violation de ce droit de propriété ou de ce privilège exclusif.
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[14] In the plaintiff's submission, the threats of legal action by the defendant for infringement of its patents provide a basis for use by the plaintiff of a declaratory action pursuant to subsection 60(2) of the Act. That condition for the applicability of subsection 60(2) of the Act is not itself at issue here.
[15] However, in the defendant's submission the plaintiff's action relates to theoretical products, since a synthetic lawn only really becomes a lawn when it is finally installed by, inter alia, the adding of the infill material on the spot. The defendant set out its argument at paragraphs 43 to 48 of its written submissions as follows:
43. Plaintiff in this case is using Section 60(2) of the Patent Act to have a declaration of non-infringement with respect to a product that is called AstroPlay®N and another that is called AstroPlay®Plus.
44. Defendant respectfully submits that this recourse is groundless and improper because it is asking this Honourable Court to decide in a vacuum, without a comprehensive set of facts to form the basis of the declaration sought. Plaintiff's action refers to theoretical products and therefore any judgement to be rendered in the present case will have no purpose whatsoever.
45. As appears from John Gilman's Affidavit, it is the nature of an artificial turf system to be custom made on site. An installer, such as plaintiff in this case, will purchase the base material (the carpet) and the particulate material (the infill) from one or many suppliers and will create the field on site by laying the carpet and interspersing a specific infill, on location, to a certain depth.
46. The depth of the infill is an important feature of any artificial turf system. It influences the many qualities, including the shock absorption qualities of the field and its playability. Fieldturf's patent 2,218,314 established for the first time the relationship between the gauge, the length of the ribbons and the thickness of the infill, such that the length of the ribbons is at least twice the gauge and the infill has a thickness of substantially 2/3 the length of the ribbons.
47. The infill composition also change from one field to another; typically from an all-rubber composition to a mix of sand and rubber or from a single homogeneous layer to a field with discrete layers of different composition (e.g. rubber or sand).
48. In other words, an artificial turf system does not become a product (or an "article" to use the term of section 60(2) of the Patent Act), until it is fully installed because a key component, the infill, is missing as long as the installation is not completed.
[16] In support of its argument the defendant referred the Court to Kirin-Amgen Inc. v. Hoffman-Laroche Ltd (2000), 11 C.P.R. (4th) 78, in which the Federal Court of Appeal denied the appellant a declaration of non-infringement based simply on a general allegation by the appellant that a product which it possessed or might possess would not infringe a patent claim then at issue. The Court said the following at 91:
In any event, the appellant is seeking by requested declaration relief in a vacuum, such that would save from infringement any product that the appellant merely claims to have the same or lower molecular weight than human urinary EPO. The respondents accept that theoretically a product having such a weight on the side by side comparison required by the STS-PAGE test would not infringe Claim 1. Obviously, however, the Court is not in a position in the present case to declare that any product that the appellant may now or hereafter possess, other than the one in issue, would not infringe Claim 1 merely on a broad assertion that a product having the same or a lower molecular weight than human urinary EPO cannot infringe that Claim. That a specific product did not infringe Claim 1 is something that would have to be either agreed to by the respondents or determined by a Court in the context of an infringement action.
(Emphasis added.)
[17] It should be recalled that in Kirin the Federal Court of Appeal was dealing with a purely theoretical product and ultimately would truly have had to make a ruling in a factual vacuum, which would have served no practical purpose.
[18] However, I think the plaintiff's situation here is different and is specific enough to allow the relief sought in subsection 60(2) of the Act.
[19] In its statement of claim and in the evidence that emerged from the examinations on affidavit held in connection with the motion at bar, the plaintiff established that it has laid and will possibly lay synthetic lawns in accordance with very specific characteristics.
[20] It is true, as the defendant stated in its written submissions, that:
Even if the relief sought is granted, for each specific field, there will always remain an argument as to the specific characteristics of the carpet and the infill (depth and composition) at a specific location.
[21] However, all the parties will have to do, in one specific case or another, whether the case has to do with past or future installations, is to establish evidence on the spot regarding the specific characteristics of the site, and if there is still disagreement between them, to resort promptly to the procedure of a summary judgment to compare an actual situation with the outcome of the decision on the merits of the plaintiff's statement in the case at bar. In this sense, the plaintiff's present statement of claim appreciably and sufficiently moves the argument forward.
[22] If it must be repeated, subsection 60(2) of the Act, supra paragraph [13], refers to an article made "or proposed to be made". If one were to accept the defendant's reasoning, this option of relying on subsection 60(2) in the case of an article the manufacture of which is proposed would be virtually non-existent and it would be necessary to wait in every case until the article was actually made in order to use subsection 60(2).
[23] Further, one of the defendant's patents, namely '484, concerns a synthetic lawn in which the infill material consists of different layers of elastic granules (rubber) and a mixture of elastic and hard granules (rubber and sand). As the plaintiff's statement of claim indicates that this party's lawns contain infill material consisting only of rubber, and this fact appears to have been admitted by the defendant's representative, the Court should be in a position to make a conclusion regarding the non-infringement of patent '484.
[24] Accordingly, for the foregoing reasons there is clearly no basis for striking the plaintiff's statement of claim or staying the latter on the grounds that the action is taking place in a factual vacuum or would serve no practical purpose.
[25] In its motion the defendant mentioned two cases in this Court and one case in the Quebec Superior Court in which the defendant's patents were set up against lawns already installed by the plaintiff. The defendant accordingly argued that in the course of these specific cases already underway, the questions raised by the plaintiff's statement of claim in the case at bar will certainly be dealt with. Accordingly, in order to avoid contradictory judgments and for the sake of judicial economy, the defendant asked that the plaintiff's statement of claim be struck or its action stayed.
[26] I do not think these are the appropriate remedies. If the action at bar contains aspects similar to other cases, a possible use of Rule 105 could then be considered.
[27] For all the foregoing reasons, the defendant's motion will be dismissed with costs in the cause. Finally, as agreed at the end of the hearing, conclusions A and B contained in the plaintiff's statement of claim will henceforth read as follows:
[TRANSLATION]
A. Declare that none of the claims in Canadian patents 2,095,158, 2,218,314 and 2,247,484 covers the products;
B. Declare that the plaintiff is not infringing Canadian patents 2,095,158, 2,218,314 and 2,247,484 by using, distributing, selling or otherwise disposing of the products . . .
[28] An order will be made accordingly.
"Richard Morneau"
Prothonotary
Montréal, Quebec
October 19, 2004
Certified true translation
Jacques Deschênes, LLB
FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-491-04
STYLE OF CAUSE: LES INSTALLATIONS SPORTIVES DEFARGO INC.
Plaintiff
and
FIELDTURF INC.
Defendant
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: September 30, 2004
REASONS FOR ORDER BY: Richard Morneau, Prothonotary
DATED: October 19, 2004
APPEARANCES:
Pascale Lauzon FOR THE PLAINTIFF
Éric Ouimet FOR THE PLAINTIFF
François Demers FOR THE DEFENDANT
SOLICITORS OF RECORD:
Brouillette, Charpentier, Fortin FOR THE PLAINTIFF
Montréal, Quebec
Spiegel, Sohmer FOR THE DEFENDANT
Montréal, Quebec
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