Date: 20080129
Docket: A-396-06
Citation: 2008 FCA 35
CORAM: NOËL
J.A.
NADON
J.A.
PELLETIER
J.A.
BETWEEN:
CHARLES D. MACLENNAN and
QUADCO
EQUIPMENT INC.
Appellants
and
LES PRODUITS
GILBERT INC.
Respondent
REASONS FOR JUDGMENT
NOËL J.A.
[1]
This is an
appeal from a decision by Mr. Justice Beaudry of the Federal Court who found
that there had been no direct infringement by the users of the patented article
sold by Quadco Equipment Inc. (“Quadco”) and that therefore the respondent, Les
Produits Gilbert Inc. (“Produits Gilbert” or “the respondent”), could not be
guilty of infringement by inducement.
[2]
According
to the appellants, the trial judge lost sight of the very essence of the
patented invention when he determined that there had been no direct
infringement. Since all the elements of infringement by inducement are present,
the appellants are asking us to set aside the trial judgment and to find, based
on the evidence at trial, that the respondent is guilty of infringement by
inducement.
RELEVANT FACTS
[3]
The
inventor, Charles D. MacLennan, and Quadco (the “appellants”) are suing the
respondent for contributory infringement of Canadian patent No. 2,011,788 (the
“Quadco patent”).
[4]
The
claimed invention is used in circular saws for feller
heads in the forest industry, particularly in rocky and snowy terrain like that
found in northern Quebec. The invention covers two pieces: a repositionable
saw tooth and a detachable tooth holder. This combination is designed to be
attached to the periphery of the circular saw disc. The claims all start with the words “a
saw tooth and tooth holder combination”, and thus the claims do not cover the
tooth as such.
[5]
To avoid
losses and maximize the harvest, forestry operators must cut the trees as close
as possible to the ground. Since logging is often done in rocky and snowy
terrain, the saw can come into contact with rocks, and the teeth, teeth holder
and disc are frequently damaged.
[6]
The
removable tooth is attached to the tooth holder and the tooth holder is
attached to the periphery of the disc using the specific method described in
the Quadco patent; when the tooth and the tooth holder come into contact with a
rock, they break and shear from the disc, leaving the disc undamaged. The
usefulness of the patent is based on the fact that the tooth and tooth holder
can easily be replaced by new parts that are much less expensive than the disc.
Forestry operators bring enough replacement parts with them into the forest to
ensure uninterrupted logging.
[7]
Produits
Gilbert manufactures replicas of the Quadco teeth with the same configuration
and the same dimensions; these teeth can only be installed on Quadco tooth
holders. Produits Gilbert distributes a price list indicating the series number
of the original Quadco tooth that its teeth are designed to replace. This is an
example (appeal book, vol. 2, exhibit P-121):
[8]
Quadco and
Produits Gilbert operate in the same market. They sell their products to
forestry operators mainly through distributors and manufacturers of feller
heads. The appellants chose not to sue the forestry operators who, according to
their own theory, are guilty of direct infringement of their patent when they
use the Gilbert tooth as a replacement. The appellants are pursuing the
respondent exclusively which, they say, encourages forestry operators to
infringe their patent by inviting them to use the Gilbert tooth.
[9]
In a first
decision dated December 6, 2004 (2004 FC 1700), Beaudry J. found that Produits
Gilbert was not guilty of infringement by inducement. That decision was
appealed.
[10]
In a
judgment dated May 31, 2006 (2006 FCA 204), our Court allowed the appellants’
appeal in part and set aside the first decision of Beaudry J. with respect to
the issue of infringement by inducement on the ground that he had not applied
the correct test. The matter was returned to him for redetermination in
accordance with the applicable legal test.
[11]
By
judgment dated September 1, 2006 (2006 FC 1038), Beaudry J. found that the
appellants had failed to demonstrate the existence of the first element
required to establish that Produits Gilbert was guilty of infringement by
inducement, that is, direct infringement by the forestry operators who used the
Gilbert tooth.
[12]
That is
the decision under appeal.
FEDERAL COURT DECISION
[13]
In a short judgment, Beaudry J. noted at the
outset that a three-pronged test must be applied to establish contributory
infringement. First, there must be an act of infringement by the direct
infringer. Second, this act must be influenced by the seller to the point
where, without this influence, infringement by the buyer would not otherwise
take place. Last, the influence must be knowingly exercised by the seller,
i.e., the seller knows that this influence will result in the completion of the
act of infringement (see Dableh v. Ontario Hydro (1996), 68 C.P.R. (3rd) 129 at pp. 148 and 149
(F.C.A.) as well as Halford v. Seed Hawk Inc. (2004), 31 C.P.R. (4th)
434 at pp. 559 and 560 (F.C.T.D.); and AB Hassle v. Canada (Minister of National Health
and Welfare) (2001), 16 C.P.R. (4th) 21 at p. 42
(F.C.T.D.); aff. (2002), 22 C.P.R. (4th) 1 at para. 17
(F.C.A.) (“AB Hassle”)).
[14]
Beaudry
J. ended his analysis at the first factor. In his view, the appellants failed
to prove direct infringement since, by replacing Quadco teeth with Gilbert
teeth, the forestry operators were simply repairing the patented combination.
It is well established that the purchaser of a patented article may repair the
components without infringing the patent. This right is based on the fact that
the patent holder is presumed to permit this type of activity (Harold G. Fox, Canadian
Patent Law and Practice, 4th ed., Toronto, Carswell, 1969 at p.
301).
[15]
According
to this theory, a component of a patented article may be replaced without
infringing the patent as long as the replacement has become necessary as a
result of ordinary use (idem, at p. 391). In this case, Beaudry J.
determined that it became necessary for the forestry operators to replace the
teeth as a result of the normal wear and tear of the patented combination and,
accordingly, the forestry operators were permitted to replace them without
regard to their source (Reasons, at paras. 13, 14 and 15).
POSITION OF THE PARTIES
[16]
The
appellants are not disputing the premise that forestry operators may repair the
patented combination where the fault results from normal wear and tear.
However, they contend that that was not the question before Beaudry J. He
should have considered whether, given the nature of the patented invention, the
combination of a replacement Gilbert tooth with a Quadco tooth holder
constituted a repair.
[17]
The very
essence of the patented invention is based on the fact that the tooth and the
tooth holder detach from the disc during normal use, thus saving the disc.
According to the appellants, every time that forestry operators replace the
teeth, they are completely remaking the patented invention. The theory of implied licence to repair does not apply in
this context.
[18]
According
to the appellants, Beaudry J. did not take into account the nature of the
patented invention when he determined that replacing the teeth amounted to a
simple repair under this theory. If he had considered the nature of the
patented invention, he could only have concluded that the forestry operators
were guilty of infringement every time they replaced a Quadco tooth with a
Gilbert tooth. Since all the elements of infringement by inducement are
present, the appellants ask us to find the respondent guilty of infringement by
inducement.
[19]
For its
part, the respondent maintains that Beaudry J. simply determined the repair
issue based on the evidence before him and that nothing in the record warrants
the intervention of the Court of Appeal on this specific issue (respondent’s
memorandum, at paras. 26 and 27).
[20]
In any
event, the evidence failed to establish the other elements of infringement by
inducement. The respondent points out that Canadian law differs from American
and British law on this issue. In Canada, the mere fact of selling a
replacement part, even if its only use is working the patented invention, is
not sufficient in itself to establish infringement by inducement. The
respondent relies mainly on the decision of President Jackett in Slater Steel Industries Ltd. et al. v. R. Payer Co. Ltd. et
al. (1968), 55 C.P.R. 61 (Ex. Ct.) (Slater
Steel).
[translation]
Normally, it must be
demonstrated that the replacement or the repair constitutes in itself the whole
invention, i.e., this invention covered by a claim, that there was a
type of conspiracy between a number of people who contributed various
components of a combination or that the supplier of the article has exerted
real influence and control over those who had already purchased the other
components of the combination. That is not the case here and, in short, this is
a simple case of selling replacement parts.
[Underlining
in the original]
ANALYSIS AND DECISION
[22]
As the
Supreme Court explained in Whirlpool Corp. v. Camco Inc., [2000] 2
S.C.R. 1067 at para. 43, “The first step in a patent
suit is therefore to construe the claims”. In this case, the patent claims cover
various combinations of saw teeth and tooth holder at the periphery of the
disc. The very essence of the invention is that by attaching the removable
teeth to the tooth holder and attaching the tooth holder to the periphery of
the disc, the tooth and the tooth holder can separate from the disc more easily
in case of a violent impact, thus preserving the disc. The description of the
invention leaves no doubt on this point:
An advantage
of the present construction is that the teeth and holders are mounted on the
exterior of the disc. In the event that a tooth or several teeth should strike
an immovable object, individual teeth and holders may be sheared from the disc
or otherwise damaged, without transmitting damaging loads to the saw disc, and
thus the remainder of the circular saw remains usable. The damaged teeth and
holders can be replaced.
[23]
With
respect, the trial judge misunderstood the nature of the patented invention and
failed to consider the claims when he determined that replacing the Quadco
tooth with the Gilbert tooth constituted a simple repair. Since the very
essence of the patent is that the tooth is attached to the tooth holder in such
a way that it can separate from it in the course of normal wear and tear before
the disc is damaged, it is clear that forestry operators remake the patented
invention every time they use a Gilbert tooth to replace a Quadco tooth.
Accordingly, Beaudry J. was incorrect when he concluded that there had been no
direct infringement on the ground that the forestry operators were repairing
the patented article.
[24]
The matter
could be returned to him again for a more thorough analysis, but counsel for
both parties insisted that the Court of Appeal dispose of the dispute even if
this requires that we address certain aspects of the evidence that the trial
judge did not consider and that we make findings of fact.
[25]
Approaching
the dispute as it was presented to the trial judge, the evidence must first
establish direct infringement. On that issue, the only combinations that
Beaudry J. had to rule on were combinations 3, 4 and 5, according to the
nomenclature used in the trial record (the combinations in question are
illustrated at paragraph 2 of the decision under appeal). In his reasons,
Beaudry J. stated that the teeth sold by Produits Gilbert have different
characteristics than the teeth sold by the appellants (Reasons, at para. 16).
According to the evidence, the Gilbert teeth that are the subject of
combinations 3, 4 and 5 are completely identical to the Quadco teeth. Having
said that, Beaudry J. was probably referring to another combination
(combination 2), which was no longer at issue when the Court of Appeal returned
the case (see the Court of Appeal decision at para. 18).
[26]
With
respect to combination 3 (variant No. 1 of the invention), Produits Gilbert
conceded at trial that it comprised all the elements of claims 1, 4 and 5 of
the Quadco patent (trial transcript, vol. 2, at pp. 260 to 264; appeal book,
vol. 6, tab P-169, at pp. 1957 to 1959, at para. 85). Accordingly, direct
infringement of claims 1, 4 and 5 by the users when carrying out this
combination is established.
[27]
With
respect to combination 4 (variant No. 2 of the invention), Produits Gilbert
admitted at trial that it comprises all the elements of claims 2, 4 and 5 of
the Quadco patent apart from the fact that the shank attached to the tooth used
in that combination must be fixed to the tooth and not attached to it by a bolt
as the combination indicates (trial transcript, vol. 2, at pp. 265 to 270;
appeal book, vol. 6, tab P-169, at pp. 1960 to 1962, at para. 87).
[28]
However,
the word “fixed” does not appear anywhere in the claim in question, and it was
admitted that the bolt constitutes a means of attachment (see, respectively,
the trial transcript, vol. 5, at pp. 206, 213 and 214 and vol. 4, at p.
11). That is what apparently led Beaudry J. to conclude in his first decision
(2004 FC 1700 at para. 16) that the shank did not have to be permanently
attached to the tooth. Accordingly, there is direct infringement by users of
claims 2, 4 and 5 when they put this combination into effect.
[29]
For the
same reasons , this finding applies to combination 5 (variant No. 3 of the
invention) (trial transcript, vol. 2, at p. 281; appeal book, vol. 6, tab
P-169, at pp. 1963 to 1965, at para. 89). There is also evidence of a breach of
claim 3, which specifically provides that the shank is in the form of a bolt;
that is the case in combination 5.
[30]
Thus, on
the evidence before the trial judge and taking into account the findings that
he made, there was direct infringement of the Quadco patent by the users when
they combined the Gilbert tooth with the Quadco tooth holder in the manner
envisaged by combinations 3, 4 and 5. We will now turn our attention to the two
other elements of infringement by inducement.
[31]
It is
useful to note, as a preliminary matter, that the American and British law on
this issue differs from Canadian law. In both those jurisdictions, the
legislation provides – since 1952 and 1978, respectively – that supplying
an essential element intended to be incorporated in a combination or a patented
process, when this element has no other purpose and the infringer knows that it
will be used for the purpose of infringement, constitutes infringement, without
requiring further evidence.
[32]
The
relevant provisions of the American and British statutes read as follows:
Section 271(c)
of the Code of the Laws of the United States of America, 35 U.S.C. §
271 (1952)
§ 271.
Infringement of patent
(c) Whoever
offers to sell or sells within the United States or imports into the United
States a component of a patented machine, manufacture, combination or
composition, or a material or apparatus for use in practicing a patented
process, constituting a material part of the invention, knowing the same to be
especially made or especially adapted for use in an infringement of such
patent, and not a staple article or commodity of commerce suitable for
substantial noninfringing use, shall be liable as a contributory infringer.
Patent Act
1977 (R.-U.), 1977, c.37
Meaning of
infringement
60.-(2) Subject
to the following provisions of this section, a person (other than the
proprietor of the patent) also infringes a patent for an invention if, while
the patent is in force and without the consent of the proprietor, he supplies
or offers to supply in the United Kingdom a person other than a licensee or
other person entitled to work the invention with any of the means, relating to
an essential element of the invention, for putting the invention into effect
when he knows, or it is obvious to a reasonable person in the circumstances,
that those means are suitable for putting, and are intended to put, the
invention into effect in the United Kingdom.
[33]
In Canada,
the courts have consistently held that selling a component intended to be
incorporated in a patented combination (or process) without anything further,
does not constitute an inducement to infringement, even where this component
cannot be used for any other purpose; Copeland-Chatterson Company Limited v.
Hatton (1906), 10 Ex. C.R. 224, aff. 1906, 37 S.C.R. 651 (“Copeland-Chatterson”)
was the first Canadian decision on this issue, and it adopted the British
jurisprudence that was the source of this rule; in Slater Steel, supra,
there is a complete history of the evolution of the jurisprudence until 1964;
François Grenier’s article “Contributory and/or Induced Patent
Infringement” (1987) 4 C.I.P.R. 26 provides an overview of the decisions
rendered until the date it was published; among the more recent decisions, the
following should be noted: Valmet Oy et al. v. Beloit Canada Ltd.,
(1988) 20 C.P.R. (3d) 1 (F.C.A.) at p. 15; Permacon Quebec Inc. et al. v.
Les Enterprises Arsenault & Freres Inc. et al., (1987) 19 C.P.R. (3d)
378 (F.C.) at pp. 384 and 385; AB Hassle et al. v. Minister of National
Health and Welfare et al., (2002) 22 C.P.R. (4th) 1 (F.C.A.) at para. 18).
[34]
This rule,
which may seem questionable at first glance, is explained by the fact that in
all the decisions that have applied it, only a combination (or process) was
protected by the patent in question; the constituent parts (in particular, the
tooth, in the case before us) were not. At the very least, it would be
incongruous if the sale of an article, which in itself is not protected and
which is therefore legal, becomes illegal without any other action being taken
by the seller. That explains why the courts have traditionally refused to
recognize that infringement by inducement can be founded on the mere
characteristics of the article sold.
[35]
Thus, in Innes
v. Short and Beal (1898), 15 R.P.C. 449 (“Innes”) (cited at page 74
of Slater Steel, supra), a case involving the use of metallic zinc (a
non-patented component) in an anticorrosive process (patented), the Court
refused to make a finding of infringement by inducement on the basis that (at
p. 451):
It would be
nonsense to say that a person is to be restrained from perfectly legitimate trade,
namely, selling an article of commerce because he happens to know … that the
buyer intends to put it to some improper use.
.
. .
There is no
reasons whatever why [the seller] should not sell powdered zinc, and he will
not be in the wrong, though he may know or expect that the people who buy it
from him are going to use it in such a way as will amount to an infringement of
Mr. Innes’ patent rights. But he must not ask the people to use it in that way,
and he must not ask the people to use it in that way in order to induce them to
buy his powdered zinc from him.
[36]
In Townsend
v. Haworth (1875), 12 Ch.D. 831 (“Townsend”), the issue was whether
a patent claiming the particular use of a chemical compound to protect cloth
from mildew meant that the person who sold the compound, without making any
suggestion as to its use, was guilty of infringement by inducement. The
following excerpt from the decision of Jessel, M.R. is cited in Slater
Steel, supra, at page 71:
The chief of
those chemical substances are substances which are perfectly well known, and
most of them are common substances; they are all old chemical compounds, and
there is no claim in the patent at all except for the peculiar use of these
chemical compounds for the purpose of preserving the cloth from mildew. No
Judge has ever said that the seller of an ordinary ingredient does a wrong if
the purchaser coming to him says, “I want your compound, because I want to
preserve my cloth from mildew. I wish to try the question with the patentee”.
No one would doubt that that sale would be perfectly legal.
…
You cannot
make out the proposition that any person selling any article, either organic or
inorganic, either produced by nature or produced by art, which could in any way
be used in the making of a patented article can be sued as an infringer,
because he knows that the purchaser intends to make use of it for that purpose.
‘What is every person prohibited from doing? He is prohibited from making,
using, or vending the prohibited articles, and that, of course, includes in the
case of machinery the product, if I may say so, of the machinery which is the
subject of the patent. It is that which is [protected] by the patent. But has
any one ever dreamt before this case that that extends to the component articles
which enter into the patent? So far from that being the law, it has been
decided that in cases of what they call combination patents it is only the
combinations claimed that may not be used; the other elementary combinations
may be used. No doubt there has been a good deal of litigation as to what were
the combination claims, that is, whether in claiming the entire combination you
claim the subsidiary combinations or not … But you cannot even complain of the
use of subsidiary combinations unless they are within the purview of your
claim. The line of cases seems to me to show conclusively that the mere making,
using, or vending of the elements, if I may say so, which afterwards enter into
the combination is not prohibited by the patent’.
[37]
In the
same vein, Vaughan Williams, L.J., in the famous case Dunlop Pneumatic Tyre
Co. v. David Mosely & Sons Ltd. (1904), 15 R.P.C. 974 (Dunlop)
stated the following regarding the sale of one of the constituent parts of a
combination patent (Slater Steel, supra, at p. 76):
It is quite
plain that what the Plaintiffs allege here is that there has been an
infringement by one or other of these Defendants, and that infringement has
been constituted by the sale of these covers which are constituent parts of one
or other of the methods patented in the combination Patents known as the Welch
Patent, and the Bartlett Patent. I am of opinion that the sale of these
covers cannot be said to amount to or be evidence proving an infringement of
one or other of these Letters Patent. In truth, and in fact, veil it how you
like, the Plaintiffs do not complain of any infringement of this Patent in
which they say that the Defendants, one or other of them have taken part as
actors. All that they complain of is the sale of these covers, which sale, it
is said, must have been known to be a sale to a person intending to commit an
infringement of one or other of these Patents.
In my
judgment the authorities show conclusively that on those facts there would be
no infringement by the Defendants of these Letters Patent.
(see also Sykes
v. Haworth (1879), 12 Ch.D. 826, at p. 833).
[38]
As stated
above, British law was followed in Canada beginning in 1906 (see Copeland-Chatterson,
supra). Thus, in Canada, where the Patent Act has remained
unchanged, the sale of a constituent part of a patented combination, even if
this part cannot be used for anything other than infringing the invention, is
not sufficient to establish the element of inducement. Apart from the existence
of direct infringement, the evidence must establish that the influence of the
alleged inducer constitutes a sine qua non of the direct infringement,
and this influence must be exercised knowingly, i.e., in circumstances where
the alleged inducer knew that his or her influence would result in the act of
infringement (AB Hassle, supra, at par. 17).
[39]
In the
case before us, the evidence indicates that the Gilbert teeth have no other use
other than working the patented invention, which is not sufficient in itself to
establish infringement by inducement. However, there is also evidence that
Produits Gilbert gave its clients a price list that identified by number the
Quadco teeth that corresponded to the Gilbert teeth and that were intended to
be replaced by the Gilbert teeth.
[40]
While, for
the reasons given above, it is true that the sale of a component of a patented
combination, even if the component has no use other than working the patented
combination, is not sufficient to establish infringement by inducement, this
state of affairs becomes inculpatory when the seller indicates to its clients
the use that should be made of the component. We are no longer talking here
about the mere fact that the seller knows or ought to know, by the type of
article sold, that it will be used to infringe a patented combination (see Innes,
supra, Townsend, supra and Dunlop, supra). The seller is
making its clients aware of the fact that its product is intended to work the
patented invention, which is the only reason they are buying it.
[41]
As
evidenced by its price list, Produits Gilbert believed it was necessary to
indicate the intended use of its teeth in order to sell them. The fact that
forestry operators were then able to assemble the combinations without any
further explanation, alleviates nothing (examination on discovery of Gilbert’s
representative, read in at trial, appeal book, vol. 6, at pp. 1893, 1894).
[42]
In these
circumstances, I must find that Produits Gilbert, through its influence, caused
the infringement of the Quadco patent. I also must conclude that Produits
Gilbert knew that, without this influence, there would have been no
infringement.
[43]
With
respect to the behaviour targeted by exercising this influence, it is not
necessary for Produits Gilbert to have had direct contact with the forestry
operators. As Addy J. stated in Procter & Gamble Co. v. Bristol-Myers
Canada Ltd. (1978), 39 C.P.R. (2nd), at p. 167:
Where the
defendant has induced or procured an infringement, I do not feel that it is at
all necessary in such cases for the supplier to have had any personal contact
with the infringing consumer, to even know his or her identity or to have sold
the article directly to that person. It is sufficient in such cases, if it is
also established, that the article in fact has been sold by the defendant for
the purpose of putting it on the market for sale to the ultimate infringer,
regardless of whether the final sale is made by an agent of the defendant or by
independent distributors or retailers.
[44]
According
to counsel for Produits Gilbert, a finding that there was infringement by
inducement on the ground that Produits Gilbert ostensibly invited its clients
to buy its products for the purpose of working the patented invention, is
directly contrary to the decision of President Jackett of the Exchequer Court
in Slater Steel, supra. This significant decision, given the reputation
of its writer and the meticulous analysis that he conducted, warrants closer
examination.
[45]
The facts
underlying President Jackett’s decision are, at first glance, very similar to
ours. That case, like ours, involved a patented combination used by
hydro-electric companies; one of the components was pre-formed metal rods. The
defendants had admitted at trial that these rods had been sold (at p. 67):
. . . knowing
that they were intended for use, and would be used, by British Columbia Hydro
Authority in the construction of hydro transmission cables that constituted the
said inventions or either of them and could be used by Hydro so as to infringe
the patents in suit.
[46]
It was
also established that the rods could only be used to work the patented
combination and that the defendants distributed a catalogue to the users (B.C.
Hydro and other hydro companies) containing directions for working the patented
combination.
[47]
Despite
this evidence, President Jackett refused to find the sellers of the pre-formed
metal rods guilty of infringement by inducement. However, I must note that this
decision is easily distinguished when regard is had to President Jackett’s
reason for dismissing the lawsuit.
[48]
Indeed,
the reasons show that President Jackett, relying on his own experience in the
business world (it is well known that he was the head of the legal department
at Canadian Pacific for several years after being the Deputy Minister of
Justice and before becoming President of the Exchequer Court), determined that
it was inconceivable that major companies like B.C. Hydro could have been
influenced to commit wrongful acts by mere sellers of pre-formed rods (at pp.
89 and 90):
I cannot
conceive that, assuming these entities knew of the existence of the patents,
any one of them was induced or procured by the defendant to do something
knowing it was illegal. Any one of them is a giant compared with the defendant.
Judicial knowledge can be taken in this modern world that they are all well
serviced by lawyers and engineers. I am prepared from my experience with such
organizations to say that the balance of probability is that none of them would
decide knowingly to do something that it regarded as illegal. It is even less
probable that they could be “induced” or “procured” against their own judgment
to do something illegal by a “one man show” such as that operated by the
defendants. The other alternative is that these entities did not know of the
patents in suit and were moved to “innocent” infringement by misrepresentations
made to them by the defendants. Having regard to the plaintiffs’ position as
competitors with the defendants in supplying these entities, I find it
impossible to believe, in the absence of clear evidence, that they did not, in
some manner, bring the existence of their patent rights to the attention of
their potential customers. No matter what hypothesis one adopts as to the
facts, I find it incongruous to think of the defendants as being a party to a
decision by one of these power entities to “infringe” the patents in suit. I
find it most improbable that the plaintiffs failed to make their patent rights
known and I find it equally improbable that the defendants could induce or
procure a big power company or Government agency to embark on a course of
wrongdoing.
[49]
But for
this conclusion, which is totally particular to that case, I have difficulty in
seeing how President Jackett could have done anything other than conclude that
infringement by inducement had been established in accordance with the state of
the law that he described. Incidentally, this is not the first time that this
decision has been distinguished in light of its particular context (see Windsurfing
International Inc. et al. v. Trilantic Corporation (Now Bic Sports Inc.)
(1985), 8 C.P.R. (3rd) 241 at p. 267).
[50]
For these
reasons, I would allow the appeal, set aside the trial judgment and, rendering
the judgment that should have been rendered, I would allow the infringement
action with respect to infringement by inducement of claims 1, 4 and 5 of the
Quadco patent vis-à-vis the tooth/tooth holder 3 combination (as this
combination is defined in the trial record); infringement by inducement of
claims 2, 4 and 5 of the Quadco patent vis-à-vis the tooth/tooth holder 4
combination (as this combination is defined in the trial record); infringement
by inducement of claims 2, 3, 4 and 5 of the Quadco patent vis-à-vis the
tooth/tooth holder 5 combination (as this combination is defined in the trial
record), and I would refer the issue of the determination of damages suffered
by the appellants and the profits earned by the respondent for the purpose of
making an inquiry and report under section 153 of the Rules, with costs in
favour of the appellants, both at trial and on appeal.
“Marc Noël”
“I
concur.
M. Nadon, J.A.”
“I
concur.
J.D. Denis Pelletier, J.A.”
Mary
Jo Egan, LLB
Email this Content