Supreme Court of Canada
National Electric Products Corporation v. Industrial Electric Products Ltd., [1940] S.C.R. 406
Date: 1940-05-21
National Electric Products Corporation (Plaintiff) Appellant;
and
Industrial Electric Products, Limited (Defendant) Respondent.
1939: Nov. 13, 14; 1940: May 21.
Present: Duff C.J. and Crocket, Davis, Kerwin and Hudson JJ.
ON APPEAL FROM THE EXCHEQUER COURT OF CANADA
Patent—Validity—Infringement.
An appeal from the judgment of Maclean J., [1939] Ex. C.R. 282, dismissing; plaintiff's action for alleged infringement of its patent for an invention relating to armoured electric cables, was dismissed.
An essential element in the alleged invention was a clearance space, to be made by unwinding one or more coils of the fibrous material covering the insulated conductor or conductors, to receive a protecting bushing within the end portion of the cut-off metallic outer sheath of the cable. Defendant manufactured and sold armoured cables, and sold, for the purpose of preparing a piece of the cable for installation, bags of bushings purchased from a United States company which made them under a United States patent, which bushings were to be inserted over the fibrous material (paper) covering the insulated conductors.
Per the Chief Justice, Crocket, Davis and Hudson JJ.: Defendant did not infringe plaintiff's patent. Defendant's cable did not infringe, as every element in it was old and well known at the date of the patent and there was no invention in the combination found in that cable; and there could be no invention in merely inserting one of the bushings soldi by defendant for the purpose of preparing a piece of the cable for installation; the use of a bushing in electrical installations for purposes the same or closely analogous to that for which the patented invention employed it was well known long before that invention; the bushings sold by defendant could be readily inserted over the fibrous material (paper) covering the insulated conductors in defendant's armoured cables; and in the article produced by so inserting the bushing there could be no infringement of plaintiff's patent, since the clearance space, an essential feature of plaintiff's patented invention, was left out.
Per Kerwin J.: Plaintiff's patent was invalid for want of invention.
APPEAL by the plaintiff from the judgment of Maclean J., President of the Exchequer Court of Canada, dismissing the plaintiff's action for a declaration of infringement of patent, and for an injunction, damages, etc. The patent had been granted to plaintiff, as the assignee of 0. A. Frederickson, the applicant, for an invention
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relating to armoured electric cables. Maclean J. held that there was no subject-matter in the patent sued upon.
O. M. Biggar K.C. and M. B. Gordon for the appellant.
E. G. Gowling and G. F. Henderson for the respondent.
The judgment of the Chief Justice and Crocket, Davis and Hudson JJ. was delivered by
The Chief Justice.—In the appellant's factum it is stated:
* * * in fact it is of the essence of Frederickson's invention that the paper should be capable of being readily unwound to expose the conductors, and that it should be adapted to be withdrawn from under the end of the armor for a short distance.
Indeed, the specification is very explicit on the point that the dominant purpose of having a paper "adapted to be withdrawn from the end of the armor" is to provide a clearance for the insertion of the bushing.
At page 113 of the Case it is said:
Before the bushing 18 may be inserted in the armored sheath it is necessary to provide a clearance space for the bushing, but this is readily done by drawing several coils of the fibrous material 15 out of the space between the covered conductors 12 and metal sheath 14 as will be apparent from Fig. 2, whereupon the expansion bushing may be readily inserted to its final position in which it is shown in Fig. 5.
At page 114 it is said:
In the armored cables employed heretofore it has been customary to provide a braided or woven jacket over the two or more covered insulated conductors and then apply the armored covering directly over the braided or woven jacket in relatively snug engagement with the bracket. There is therefore not sufficient room between the metal covering and outer jacket of the armored cables constructed heretofore to receive a bushing 18, and it is practically impossible to remove a sufficient amount of the braided or woven jacket from the interior of the armored covering to form a sufficient clearance space to receive the bushing 18.
At page 111, it is said:
Inasmuch as the insulating fibrous webbing is laid spirally about the conductor or conductors, it is readily unwound from the exposed portion or ends of the conductors when the metallic sheath has been cut, and such removal is readily accomplished by an unwinding action which may be extended down into the metallic sheath itself, thereby providing sufficient space for the ready insertion of the interior bushing or sleeve, as hereinbefore referred to. By this construction it will be evident at once that the sharp edges and burrs at the end of the cut off armored or metallic sheath are prevented from injuring the insulation on the conductor or conductors.
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In the preferred form of the invention in the respects above noted the bushing is formed of insulating material such as fibre, bakelite or the like, so that even should injury occur to the insulation of the conductor or conductors, the bushing will itself insulate the conductors from the metallic outer sheath.
Figure 5 of the drawings shows the bushing 18 and the clearance space adverted to in the first of the passages quoted. It is clear from all this, moreover, that this clearance space is an integral element in the combination and also that, as the patentee conceives it, it is an essential element in his invention.
The respondents manufacture and sell armoured cable which has two insulated wires side by side with a spirally wound paper cover. The whole is contained in a spirally wound metallic sheath. They also sell bags of insulating bushings which are purchased from the American Metal Moulding Co., a United States Corporation. That company makes these bushings under United States patent No. 1,793,697.
It is too clear for discussion, I think, that the cable of the respondents does not infringe the appellants' patent. Every element in the cable was old and well known at the date of the patent and there is no invention in the combination found in that cable.
I agree with the learned trial judge that there would be no invention in merely inserting one of the fibre bushings sold by the respondents for the purpose of preparing a piece of this cable for installation; but what seems to be contended on behalf of the appellants is that you have something more than the mere addition of the fibrous bushing. You have the clearance made by the removal of part of the paper covering.
Now, it cannot, I think, be seriously disputed that these fibrous bushings can be readily inserted over the paper covering. I do not think the suggestion need be taken too seriously that loose ends of paper which might be left might create a fire risk. Any competent workman would quickly remove these ends and it is not open to argument, I think, that in the article produced by so inserting the bushings you would have no infringement of the appellants' patent; since the clearance space, an essential feature, as the patentee plainly declares it to be, and as the argument insists it is, is left out.
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I find it, very difficult to accede to the contention which the appellants' argument seems to involve that you have invention if you pull out some of the paper and leave a clearance space and then insert the bushing; while you have no invention if you insert the bushing over the paper without making a clearance.
To put the thing more simply, it is very clear, in my opinion, that the respondents' cable in itself does not involve invention. At the date of the appellants' patent, you could not have obtained a patent for it because there would have been nothing new in it in the patent sense. I think also it is clear that you do not reach the level of invention by adding the element of the fibre ferrule, whether you insert the ferrule over the paper covering or after you have made a clearance space by taking away some of the paper covering.
The use of a bushing in electrical installations for purposes the same or closely analogous to that for which Frederickson employed it was well known long before 1927. There was ample evidence to justify the finding of the learned trial judge that each of the elements of the supposed combination was old and that they performed the same function in Frederickson's cable as in the old use.
As to infringement, it cannot be disputed that if a purchaser follows the directions as to the manner in which the bushings are to be used there is no infringement. There is no ground for holding that this direction is colourable or that it is given in the expectation that it will be disregarded. In these circumstances I think the proper conclusion of fact is that the appellants' invention has not been taken.
There is no evidence of agency or of partnership and on the facts one could not properly find, to borrow the language of Vaughan Williams L.J. in Dunlop Pneumatic Tyre Co., Ltd., v. David Moseley & Sons, Ltd., any relation between the parties of " principals in the first degree" or of "aider and abettor."
I must not be supposed to give any adherence to the argument that the existence of this latter relationship would be sufficient. The existence of any one of these
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relationships is, of course, in every case a question of fact which must be determined upon the evidence in the particular case.
The appeal should be dismissed with costs.
Kerwin J.—I agree with the learned President of the Exchequer Court that there was no invention in Frederickson. Being of that opinion, I do not enter into the question as to whether, if there had been subject-matter, the respondents infringed.
I would dismiss the appeal with costs.
Appeal dismissed with costs
Solicitors for the appellant: Smart & Biggar.
Solicitors for the respondent: Singer & Kert.
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