T-4640-75
Lex Tex Canada Limited (Plaintiff)
v.
Cirtex Knitting Inc. (Defendant)
Trial Division, Mahoney J.—Ottawa, June 1 and
2, 1976.
Patents—Defendant seeking to strike part of statement of
claim as disclosing no reasonable cause of action—Whether
purchase from an importer and use in Canada of unpatented
product, made elsewhere, of a process and apparatus patented
in Canada is an infringement of the Canadian patent—Patent
Act, R.S.C. 1886, c. 61, s. 20; R.S.C. 1970, c. P-4, s. 46—
Federal Court Rule 419.
In an infringement action, defendant sought to strike from
the statement of claim the words "or purchasing ,from an
importer" as not disclosing a reasonable cause of action. The
question raised was whether the purchase from an importer and
use in Canada of the unpatented product, made elsewhere, of a
process and apparatus patented in Canada was itself an
infringement of the Canadian patent. Defendant's position was
that if it is so questionable that the importation and sale in
Canada by the same person of the unpatented product of a
patented process is an infringement, then clearly it is no
infringement to merely buy the product from its importer and
use it in Canada.
Held, the motion is dismissed. Whether the words sought to
be struck out disclose a reasonable cause of action is not so
clear that the matter ought to be disposed of summarily and
plaintiff be deprived of the opportunity of having that question
determined at trial.
Union Carbide Canada Ltd. v. Trans Canadian Feeds Ltd.
[1966] Ex.C.R. 884; Elmslie v. Boursier (1870) L.R. 9
Eq. 217; Von Heyden v. Neustadt (1880) 14 Ch.D. 230;
Auer Incandescent Light Manufacturing Company v.
O'Brien (1897) 5 Ex.C.R. 243; Toronto Auer Light Co.
Ltd. v. Coiling (1899) 31 O.R. 18 and F. Hoffmann-
LaRoche & Co. v. Commissioner of Patents [1955] S.C.R.
414, applied.
APPLICATION.
COUNSEL:
G. A. Macklin and B. E. Morgan for plaintiff.
N. Fyfe and J. Fantl for defendant.
SOLICITORS:
Gowling & Henderson, Ottawa, for plaintiff.
Smart & Biggar, Ottawa, for defendant.
The following are the reasons for judgment
rendered in English by
MAHONEY J.: This application raises the ques
tion of whether the purchase from an importer and
use in Canada of the unpatented product, made
elsewhere, of a process and apparatus patented in
Canada is itself an infringement of the Canadian
patent. The defendant seeks, under Rule 419, to
strike from paragraph 10 of the statement of claim
the words underlined:
10: The defendant has wrongfully and without leave, license,
permission or assent of the plaintiff, infringed the exclusive
rights of the plaintiff in Canadian patent 624,592 by importing
into Canada or purchasing from an importer and using at its
plants located in Caraquet, New Brunswick and Montreal,
Quebec, set textured yarns produced in accordance with the
methods described in claims 1, 3, 4, 15, 17 and 18 and on
apparatus as described in claims 25 to 30 inclusive and
claim 39 of patent 624,592.
The application is based on the proposition that
the words sought to be struck out do not disclose a
reasonable cause of action. The statement of claim
does not allege that the defendant induced the
importer to import the product.
The defendant relies on the dicta of Jackett P.,
as he then was, in Union Carbide Canada Ltd. v.
Trans Canadian Feeds Ltd.':
Inasmuch as the Canadian Act clearly contemplates a
monopoly for a process and a separate monopoly for a product,
and inasmuch as a monopoly under that Act operates only in
Canada, it would seem to follow that a Canadian monopoly for
a process would not be infringed by the sale or use in Canada of
a product made by the process in a foreign country.
He noted two English decisions 2 which had held
that importation and sale into England of a prod
uct made in a foreign country by a process that
was the subject matter of a monopoly in England
was an infringement of the English process
monopoly and indicated that, notwithstanding no
relevant difference between the English and
Canadian statutes, he did not find them persua
sive. The English cases had been applied in
Canada, by Burbidge J., in Auer Incandescent
' [1966] Ex.C.R. 884 at p. 888 ff.
2 Elmslie v. Boursier (1870) L.R. 9 Eq. 217 and Von Heyden
v. Neustadt (1880) 14 Ch.D. 230.
Light Manufacturing Company v. O'Brien 3 and
that decision, as well as Von Heyden v. Neustadt,
one of the English cases, and Toronto Auer Light
Co. Ltd. v. Colling 4 , which I will deal with later,
had all been the subject of the following dicta in a
judgment of the Supreme Court of Canada 5 :
There seems to be no reason to doubt the correctness of these
decisions.
The learned President concluded [at page 890]
that, notwithstanding his expressed reservations,
he should
... follow the decision rendered by Mr. Justice Burbidge in
1897 so long as its authority remains unimpaired by a decision
of the Supreme Court of Canada. In adopting this position, I do
not wish to be taken as expressing any opinion as to the course
that should be followed when a similar problem arises in this
Court at a time when this Court is differently constituted.
The defendant's position amounts to this: if it is
so questionable that the importation and sale in
Canada, by the same person, of the unpatented
product of a patented process is an infringement of
the process patent, then clearly it is no infringe
ment of that patent merely to buy the product
from its importer and use it in Canada. However,
the Hoffmann-LaRoche dicta embraced the deci
sion of an Ontario Divisional Court in the Coiling
case.
There, the factual situation appears to have
been as it is alleged to be here. Boyd C., for the
Court, said [at page 26]:
I see no reason to hold that an action does not lie against any
person purchasing and using mantles made in derogation of the
plaintiffs' patent no matter where they come from.
and then went on to hold [at page 29], with respect
to the patent under consideration:
... the process was expressly claimed but the product was
constructively included.
I find no material difference between the monopo-
3 (1897) 5 Ex.C.R. 243.
4 (1899) 31 O.R. 18.
5 F. Hoffmann-LaRoche & Co. Ltd. v. Commissioner of
Patents [1955] S.C.R. 414 at p. 416.
ly rights of a patentee under the Patent Act 6
considered in that case and that now in effect.
It is manifest that the proposition, that the
words sought to be struck do not disclose a reason
able cause of action, is not so clear that the matter
ought to be disposed of summarily and the plain
tiff deprived of the opportunity to have that ques
tion determined at a trial of the action.
The defendant sought, in the alternative, par
ticulars concerning the alleged purchase from an
importer. No affidavit supporting that application
was filed and, on the record, I can only conclude
that such particulars are far more likely already to
be in the defendant's possession that even to be
available to the plaintiff before discovery.
ORDER
The motion is dismissed with costs to the plain
tiff in any event of the cause.
6 R.S.C. 1886, c. 61, s. 20; R.S.C. 1970, c. P-4, s. 46.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.