T-3815-76
Polaroid Corporation (Plaintiff)
v.
Eastman Kodak Company and Kodak Canada Ltd.
(Defendants)
Trial Division, Mahoney J.—Ottawa, January 11,
12 and 17, 1977.
Patents — Practice — Action for patent infringement —
Motion to set aside order for service ex juris of statement of
claim — Whether plaintiffs obligation under Rule 307 to
establish good cause of action discharged Federal Court
Rules 307 and 700(2).
C.A.P.A.C. v. International Good Music Inc. [1963]
S.C.R. 136 and American Cyanamid Co. v. Ethicon Inc.
(1976) 22 C.P.R. (2nd) 75, followed. Vitkovice Horni a
Hutni Tezirstvo v. Korner [1951] A.C. 869, referred to.
MOTION.
COUNSEL:
Joan Clark, Q.C., and Malcolm E. McLeod
for plaintiff.
G. Alex Macklin for defendants.
SOLICITORS:
Ogilvy, Cope, Porteous, Montgomery,
Renault, Clarke & Kirkpatrick, Montreal,
for plaintiff.
Gowling & Henderson, Ottawa, for
defendants.
The following are the reasons for order ren
dered in English by
MAHONEY J.: This is an action for patent
infringement involving instant processing cameras
and film. The defendant, Eastman Kodak Com
pany, hereinafter called "Eastman Kodak", has
entered a conditional appearance and now seeks to
set aside the order for service ex juris of the
statement of claim which was made upon the
plaintiff's ex parte application.
Under Rule 307, the application for an order for
service ex juris must be "supported by affidavit or
other evidence showing that ... the plaintiff has a
good cause of action". In American Cyanamid Co.
v. Ethicon Inc.', my brother Addy held that the
effect of this Rule is the same as that of other
Rules which he considered, including the English
Rules dealt with by the House of Lords in Vitko-
vice Horni a Hutni Tezirstvo v. Korner 2 , which
established the test approved by the Supreme
Court of Canada in C.A.P.A.C. v. International
Good Music Inc. 3 What the plaintiff must estab
lish here is that it has "a good arguable case"
against Eastman Kodak which this Court has the
jurisdiction to try.
The plaintiff has produced evidence of actions
by and on behalf of Eastman Kodak in and direct
ed particularly at Canada which might well be
held, on a trial, to be acts of infringement of a
Canadian patent provided the goods in issue do, in
fact, infringe the patents in issue. It is argued
forcefully, on behalf of Eastman Kodak, that the
plaintiff has produced no evidence of such
infringement. Certainly, the affidavits filed on
behalf of the plaintiff do not refer specifically to
and adopt the allegations of fact in paragraphs
11, 12 and 13 of the statement of claim, which
assert, in some considerable numbers, the features
of the defendants' goods said to infringe the speci
fied claims in the plaintiff's patents. To have done
that would, as Addy J. observed in the American
Cyanamid case, have been redundant.
However, to an affidavit 4 filed in opposition to
this motion, there are exhibited copies of numerous
publications which, on their face, purport to have
emanated from Eastman Kodak. It appears from
an inspection of some of these publications 5 , that
there is some support for the allegations in para
graphs 11, 12 and 13 that the defendants' goods
incorporate elements and, in the case of the film,
processes described and claimed in particular pat
ents. The patents are themselves before me by
I (1976) 22 C.P.R. (2nd) 75.
z [19511 A.C. 869.
[1963] S.C.R. 136.
4 Document No. 32.
5 E.g. Exhibits D and E: press releases entitled respectively
"How Kodak Instant Film Works" and "How Kodak Instant
Cameras Work".
virtue of the plaintiff's compliance with Rule
700(2) and I am entitled to take their claims into
account, and obliged to assuming them valid,
regardless of any deposition or absence of deposi
tion with respect to them.
While a court ought not lightly exercise its
discretion to require a non-resident to appear
before it, at this stage of any action a plaintiff's
obligation to establish "a good arguable case" falls
well short of a full dress rehearsal of that case. I
find support for this view in the following passage
from the decision of Martland J., for the Supreme
Court of Canada, in the C.A.P.A.C. case, at page
143:
I have not formed, and would not, at this stage of the
proceedings, wish to express an opinion as to whether or not,
assuming as established the allegations contained in the state
ment of claim, the appellant has a good cause of action against
the respondents, but I am satisfied that, on the basis of those
allegations and the other material which was before the learned
President, the appellant has got "a good arguable case".
The motion will be dismissed with costs.
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