[2] The plaintiff, David Yinkai Chao, is the owner of Canadian Patent No 2,235,798 ("patent 798"), entitled "eyeglass device having auxiliary frame". In his Statement of Claim, he alleges that the defendants have, individually or collectively, infringed claims 1 to 5 of patent 798. Specifically, paragraphs 11 and 13 of the Amended Statement of Claim read as follows:
11. The Defendants, individually or collectively, are presently making, manufacturing, using, importing, distributing, offering for sale and/or selling in Canada, clip-on glasses which embodie [sic] the elements of the structure described and claimed in the claims of the patent.
[...]
13. The Defendants, individually or collectively, have made, manufactured, used, imported, distributed, offered for sale and/or sold clip-on glasses which incorporate the teachings of claims 1 to 5 of the Patent without the permission or consent of the Plaintiff;
[3] The defendants Everjoy and Wong, in seeking the dismissal of the plaintiff's Statement of Claim, argue that they have not "used, made or sold clip-on products in Canada", nor have they induced a third party to "make, use or sell clip-on products in Canada". Paragraphs 9 and 10 of their Statement of Defence read as follows:
9. Defendant WONG has not made, constructed, used or sold clip-ons in Canada. Defendant WONG has absolutely no lien de droit with the Plaintiff;
10. Defendant SUPERCLIP CANADA INC. has imported for sale in Canada and has sold in Canada clip-ons under the trade-mark SUPERCLIP. The present action is in respect of the SUPERCLIP product. This product was imported by SUPERCLIP CANADA INC. from Defendant EVERJOY ASIA LTD. Defendant EVERJOY ASIA LTD. is domiciled and resides in Hong Kong. Defendant EVERJOY ASIA LTD. has not made, constructed, used, sold or otherwise dealt in the SUPERCLIP product in Canada. Defendant EVERYJOY [sic] ASIA LTD. has always shipped SUPERCLIP products to co-Defendant SUPERCLIP CANADA INC. FOB Hong Kong. This Court is without jurisdiction as to EVERJOY ASIA LTD.
[4] In the remaining paragraphs of their Statement of Defence, these defendants allege that, in any event, their product does not infringe patent 798.
[5] In Granville Shipping Co. v. Pegasus Line Ltd. S.A., [1996] 2 F.C. 853, Madam Justice Tremblay-Lamer sets forth as follows, at pages 859 and 860, the applicable test for determination of a summary judgment application:
[8] I have considered all of the case law pertaining to summary judgment and I summarize the general principles accordingly:
1. the purpose of the provisions is to allow the Court to summarily dispense with cases which ought not to proceed to trial because there is no genuine issue to be tried (Old Fish Market Restaurants Ltd. v. 1000357 Ontario Inc. et al.);
2. there is no determinative test (Feoso Oil Ltd. v. Sarla (The)) but Stone J.A. seems to have adopted the reasons of Henry J. in Pizza Pizza Ltd. v. Gillespie. It is not whether a party cannot possibly succeed at trial, it is whether the case is so doubtful that it does not deserve consideration by the trier of fact at a future trial;
3. each case should be interpreted in reference to its own contextual framework (Blyth and Feaso)
4. provincial practice rules (especially rule 20 of the Ontario Rules of Civil Procedure, [R.R.O. 1990, Reg. 194]) can aid in interpretation (Feaso and Collie);
5. this Court may determine questions of fact and law on the motion for summary judgment if this can be done on the material before the Court (this is broader that Rule 20 of the Ontario Rules of Civil Procedure) (Patrick);
6. on the whole of the evidence, summary judgment cannot be granted if the necessary facts cannot be found or if it would be unjust to do so (Pallman and Sears);
7. in the case of a serious issue with respect to credibility, the case should go to trial because the parties should be cross-examined before the trial judge (Forde and Sears). The mere existence of apparent conflict in the evidence does not preclude summary judgment; the court should take a "hard look" at the merits and decide if there are issues of credibility to be resolved (Stokes). [Footnotes omitted]
The above test was recently reaffirmed by the Federal Court of Appeal in ITV Technologies Inc. v. WIC Television Ltd. (2001), 11 CPR (4th) 174.
[6] As Madam Justice Tremblay-Lamer correctly states in Granville Shipping, supra, the purpose of a motion for summary judgment is to allow the court to do away with cases where there is no genuine issue to be tried. Thus, where a party cannot possibly succeed at trial, or where the case is so doubtful that it does not deserve the court's time, it should be struck. Where there are issues of credibility, the case should proceed to trial, where proper cross-examinations can take place. However, the existence of apparent conflicts in the evidence is not a bar to summary judgement: the court must, in all cases, take a "hard look" at the merits and decide if there are credibility issues to be decided.
[7] For the reasons that follow, I am of the view that this case should proceed to trial. There is evidence supporting the plaintiff's position that the defendants Everjoy and Wong may have infringed patent 798. Edmund Wong, the president and a director of Everjoy, whose Affidavit, sworn May 24, 2001, was filed by the defendants in support of their motion, was examined on his Affidavit on October 1, 2001. At pages 57 and 58 of the transcript of that examination, Mr. Wong testified that samples of the clip-ons, which are said by the plaintiff to be infringing of patent 798, were sent to the defendant Superclip Canada Inc. ("Superclip") in Montreal. Later on in his evidence, at pages 77 and 78, Mr. Wong conceded that he might personally have brought the samples to Montreal during one of his trips.
[8] In his Affidavit, at paragraph 18 thereof, Mr. Wong states that prior to selling the clip-ons, which are sold in Canada under the trademark SUPERCLIP, to the defendant Superclip, the product had never been sold in Canada by Everjoy or by himself. However, during his examination, he modified that statement and said that prior to selling the product to the defendant Superclip, it had been sold to a Montreal company called Aspects. These matters, and more particularly the bringing of samples to Canada by the defendant Wong, are, in my view, sufficient to justify a trial. However, there are other matters which, in my view, also militate in favour of a trial.
[9] Mr. Wong testified that since approximately 1998, he has owned approximately 25% of the defendant Everjoy. Prior to 1998, he owned about 33% of that company. However, in a licence and manufacturing agreement entered into on November 15, 1999 by defendants Superclip and Everjoy, Mr. Wong is described as the sole stockholder of defendant Everjoy, which is itself described as the manufacturer of a clip-on eyeglass accessory referred to generally by the manufacturer as "SUPERCLIP".
[10] During his cross-examination, Mr. Wong explained that Everjoy was a Hong Kong company which sold goods all over the world. He explained that Everjoy did not, in fact, manufacture the clip-ons, but that they were manufactured by a Chinese company owned by Everjoy. The Chinese company, called Wing Hang, manufactures the product and defendant Everjoy sells it. Once the goods are ready, they are sent to Everjoy in Hong Kong, and then are shipped to the clients, wherever they may be.
[11] Mr. Wong stated in his Affidavit that Everjoy's shipments to Canada were on F.O.B. Hong Kong terms, and he testified to that effect. As a result, the defendants Everjoy and Wong argue that title passed to Superclip upon shipment from Hong Kong. At this stage, I am not prepared to accept that shipments to Superclip were, in fact, made on true F.O.B. terms. I must say that upon a very careful review of Mr. Wong's evidence, both written and oral, I do not find his evidence persuasive. Because this matter will be proceeding to trial, I say no more on this count.
[12] Furthermore, I note that paragraphs 5.1, 5.2, 5.3, 5.4, 5.5 and 5.6 of the licence and manufacturing agreement of November 15, 1999, except for their headings, have been deleted. Of particular interest are paragraphs 5.1 - Applicable Terms, 5.3 - Payment Terms, and 5.4 - Shipment Terms. Why these paragraphs have been deleted, I do not know, and I fail to understand why that would be required. In his Affidavit, at paragraph 4 thereof, Mr. Wong makes a bald statement that these paragraphs "have no bearing on the present case ...". I cannot agree, since there can be no doubt that the payment and shipment terms are crucial in determining whether the product was sold and shipped to defendant Superclip on true F.O.B. terms. Consequently, I am not prepared to find that title to the allegedly infringing product passed to defendant Superclip in Hong Kong. Thus, in my view, there is a triable issue as to whether the defendants Everjoy and Wong were the owners of the product when it entered Canada.
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