T-2019-85
Avant Incorporated, National Business Systems
Inc. and National Business Systems Inc. (Plain-
tiffs)
v.
The Queen in right of Ontario (Defendant)
INDEXED AS: AVANT INC. V. R.
Trial Division, Collier J.—Toronto, November 4,
1985; Ottawa, Feburary 6, 1986.
Federal Court jurisdiction — Trial Division — Motion to
strike patent infringement action against provincial Crown —
Plaintiff contending s. 5 of Proceedings Against the Crown
Act, subjecting Crown to liability in tort as if 'person",
bringing provincial Crown within ambit of s. 57 of Patent Act
— S. 57 imposing liability on any "person" — Motion allowed
— Court not having jurisdiction over provincial Crown —
Liability to suit confined to courts of Ontario — Legislative
provision required permitting suits based on s. 5 against
Ontario in Federal Court — Proceedings Against the Crown
Act, R.S.O. 1980, c. 393, s. 5 — Patent Act, R.S.C. 1970, c.
P-4, ss. 56 (as am. by R.S.C. 1970 (2nd Supp.), c. 10, s. 65), 57
— Federal Court Act, R.S.C. 1970 (2nd Supp.), c. 10, s. 20.
Crown — Prerogatives — Motion to strike patent infringe
ment action against provincial Crown allowed — Provincial
legislation removing common law provincial Crown immunity
from tort liability but not clothing Federal Court with juris
diction — Proceedings Against the Crown Act, R.S.O. 1980, c.
393, s. 5.
Patents — S. 57 of Patent Act (imposing liability on any
"person"), together with s. 5 of Proceedings Against the Crown
Act, not giving Federal Court jurisdiction in action for patent
infringement against provincial Crown — Patent Act, R.S.C.
1970, c. P-4, s. 57 — Proceedings Against the Crown Act,
R.S.O. 1980, c. 393, s. 5.
CASES JUDICIALLY CONSIDERED
APPLIED:
Union Oil Co. of Canada Ltd. v. R. in right of Canada et
al., [1976] 2 S.C.R. v; (1977), 72 D.L.R. (3d) 82; affg.
[1976] 1 F.C. 74; (1977), 72 D.L.R. (3d) 81 (C.A.); affg.
[1974] 2 F.C. 452 (T.D.).
COUNSEL:
J. Macera for plaintiffs.
J. Polika, Q.C. and D. Dukelow for
defendant.
SOLICITORS:
Macera & Jarzyna, Ottawa, for plaintiffs.
Deputy Attorney General of Ontario,
Toronto, for defendant.
The following are the reasons for order ren
dered in English by
COLLIER J.: This action is for patent infringe
ment against the defendant, the Queen in right of
Ontario.
The present motion is by the defendant to strike
out the action, on the grounds this Court has no
jurisdiction over the Ontario provincial Crown.
For the purposes of this motion, the facts are as
set out in the statement of claim.
The first plaintiff is the owner of a patent. The
other plaintiffs are licensees. The patent relates to
a card envelope utilized in the production of lami
nated data cards, capable of being laminated to
gether. Further details are unnecessary. A com
pany, not a party to the action in this Court,
Polaroid Corporation, is said to be threatening to
sell to the defendant laminated data cards alleged
to infringe the patent. The impugned cards are to
be used by the defendant in the manufacture, sale,
and issue of driver's licences (a new licence,
including a photograph of the holder). The acts of
the defendant are alleged to infringe various
claims of the patent. The usual injunctive relief is
claimed, as well as damages, or an accounting of
profits.
There is no doubt this Court has concurrent
jurisdiction, with the courts of the provinces, to
hear actions for patent infringement: see the Fed
eral Court Act, R.S.C. 1970 (2nd Supp.), c. 10, s.
20, and the Patent Act, R.S.C. 1970, c. P-4, s. 56
(as am. by R.S.C. 1970 (2nd Supp.), c. 10, s. 65).
Section 57 of the Patent Act imposes liability on
"Any person who infringes a patent...." The
generally accepted view seems to be that infringe
ment of a patent is a tort.
The essential issue between the parties, on this
motion, is the application of the Proceedings
Against the Crown Act, R.S.O. 1980, c. 393. Sec
tion 5 provides:
5.—(1) Except as otherwise provided in this Act, and not
withstanding section 11 of the Interpretation Act, the Crown is
subject to all liabilities in tort to which, if it were a person of
full age and capacity, it would be subject,
(a) in respect of a tort committed by any of its servants or
agents;
(b) in respect of a breach of the duties that a person owes to
his servants or agents by reason of being their employer;
(c) in respect of any breach of the duties attaching to the
ownership, occupation, possession or control of property;
and
(d) under any statute, or under any regulation or by-law
made or passed under the authority of any statute.
(2) No proceedings shall be brought against the Crown
under clause (1)(a) in respect of an act or omission of a servant
or agent of the Crown unless proceedings in tort in respect of
such act or omission may be brought against that servant or
agent or his personal representative.
"Crown" means Her Majesty the Queen in right
of Ontario.
The plaintiffs contend the subjection of the
Crown to liability in tort, as if it were a "person",
brings it within the ambit of section 57 of the
Patent Act; this Court has jurisdiction to hear
infringement actions against persons.
For the defendant, it is said the Ontario legisla
tion is insufficient to give this Court jurisdiction
over the provincial Crown. Union Oil Co. of
Canada Ltd. v. The Queen, [1974] 2 F.C. 452
(T.D.); affd [1976] 1 F.C. 74; (1977), 72 D.L.R.
(3d) 81 (C.A.); appeal dismissed by the Supreme
Court of Canada [1976] 2 S.C.R. v; (1977), 72
D.L.R. (3d), at page 82, was referred to. Certain
other cases were also cited.
In the Union Oil case, there was, at that time,
no provincial legislation comparable to the Ontario
legislation relied on here. I set out the decision of
the Federal Court of Appeal [at pages 75-76 F.C.;
at pages 81-82 D.L.R.] as well as the note of the
judgment given by the Supreme Court of Canada
[at page 82 D.L.R.]:
The following are the reasons for judgment of the Court
delivered orally in English by
THURLow J.: We have decided not to call on counsel for the
respondents. At the same time our taking this course should not
be interpreted as reflecting any disrespect for the very able and
comprehensive argument addressed to us by Mr. Dickerson.
We do not necessarily adopt the reasons of the learned Trial
Judge and in particular we do not adopt his view that fraud or
deceit are necessary to a claim founded on subsection 70(1) of
the Excise Tax Act. But we are not persuaded that he erred in
striking out the claim against the Crown in right of the
Province of British Columbia.
The jurisdiction of the Federal Court is entirely statutory
and, accepting that it lies within the powers of the Parliament
of Canada, when legislating in a field within its competence, to
give the Federal Court jurisdiction to implead the Crown in
right of a province, we do not think any of the statutory
provisions to which we were referred, or any others of which we
are aware, authorize the Court to entertain a proceeding at the
suit of a subject against the Crown in right of a province.
The provisions of the Federal Court Act conferring jurisdic
tion on the Court by reference to subject matter are, without
doubt, broadly expressed but we think that section 16 of the
Interpretation Act, though somewhat reworded since the judg
ment of the Privy Council in In re Silver Brothers Limited
[1932] A.C. 514, and the interpretation put upon that provi
sion, as it then was, by that judgment, coupled with the specific
definition and references in the Federal Court Act to the
Crown in right of Canada are sufficient to show that the
traditional immunity of the Crown in right of the provinces
from suit in its courts was not intended to be abrogated by the
general descriptions of subject matter of jurisdiction in the
Federal Court Act.
It should not be taken that we are not sympathetic to the
unfortunate position in which the appellant finds itself but we
are of the opinion that the Court is without jurisdiction to
entertain the claim against the Crown in right of the Province
of British Columbia and that the appeal accordingly fails and
must be dismissed.
* * â–
NOTE: An appeal from the above decision to the Supreme
Court of Canada was dismissed (Laskin, C.J.C., Martland,
Judson, Ritchie, Spence, Pigeon, Dickson, Beetz and de Grand -
pré, JJ.) December 9, 1976. The following judgment was
delivered orally for the Court by
LASKIN, c.j.c.: We do not need to hear the respondents or
the intervenor. We are all of the opinion that the appellant has
failed to show any ground of jurisdiction in the Federal Court
over the Crown in right of British Columbia in this case. It is
unnecessary therefore to deal with the question of that Crown's
immunity. The appeal accordingly fails and will be dismissed
with costs to the Crown in right of British Columbia. There will
be no order as to costs in favour of the Crown in right of
Canada or of the intervenor, the Attorney-General of Ontario.
I find the question before me a difficult one.
Hogg, Constitutional Law of Canada, 2nd ed.
(Toronto: Carswell, 1985), at pages 221-223 and
pages 227-240 deals with the effect of the Ontario
legislation, and similar provisions found in statutes
in the other provinces. But there is, understand
ably, no discussion of, say, jurisdiction of courts of
one province over the Crown in the right of
another province, or of the jurisdiction of this
Court over a provincial Crown.
I have concluded the Ontario legislation, with
out more, does not clothe this Court with jurisdic
tion to hear this action against this particular
defendant. The statute removes the former
common law provincial Crown immunity from lia
bility in tort, and imposes liability, in certain cases,
as if the Crown were an ordinary person. The
legislation permits the Ontario Crown to be sued
in those situations. But, in my view, the liability to
suit is confined to the courts of the Province of
Ontario. For the provincial Crown to be sued in
this Court, there must, as I see it, be some legisla
tive provision permitting suits, based on section 5,
to be brought against Ontario in the Federal
Court.
The motion to enter a conditional appearance is
allowed, as well as the motion to strike out the
action. Costs will be against the plaintiffs.
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.