T-1760-95
BETWEEN: CONSTANTINOS J. JOANNOU,
Plaintiff,
AND: ENGINEERING DYNAMICS LTD.
Defendant.
REASONS FOR DECISION and DECISION
DENAULT J.
The plaintiff has appealed from a decision of the prothonotary allowing the defendant's motion and dismissing his action for infringement of Canadian patents 1,175,754 and 1,291,520, of which he is the holder.
We should first recount some of the events that led to the decision a quo, in order to understand what it means. The parties are engaged in a dispute to determine not who is the author of the inventions - the defendant does not deny that it is the plaintiff - but who is the owner.
In an initial case brought before this Court (T-2910-93), Engineering Dynamics sought to have itself declared to be the owner of four patents registered in the name of the inventor, Constantinos Joannou. In a decision dated October 17, 1996, the prothonotary allowed the motion by the defendant Joannou to have the action by Engineering Dynamics Ltd. dismissed on the ground that this Court had no jurisdiction. The prothonotary, who believed that in order for the plaintiff to succeed in having himself declared to be the owner of the patents he would first have to have the contracts between the parties set aside, something that is within the jurisdiction of a provincial court, dismissed the action by Engineering Dynamics Ltd.,1 which then applied to the Ontario Court, General Division (97-CV-311-CM) to have itself declared to be the owner of the patents registered in the Patent Office in the name of the plaintiff herein, Joannou.
In the meantime, the plaintiff Joannou brought the instant action for infringement of two of those patents. The defendant first filed a defence on September 15, 1995, denying infringement, and counter-claimed to have itself declared to be the owner of the two patents in issue. A motion by the defendant to have that action stayed pending the end of the proceedings in file no. T-2910-93 was dismissed on April 30, 1996. In February 1997, Engineering Dynamics Ltd. applied for dismissal of the action by the plaintiff Joannou on the same grounds as the plaintiff Joannou had argued to have the action in file no. T-2910-93 dismissed: that this Court had no jurisdiction.
Applying the same reasoning as had led him to dismiss the action by Engineering Dynamics Ltd., the prothonotary also dismissed the action by the plaintiff herein, on the ground that the scenario between the parties was the same, although they had reversed roles.2 It is this decision that the plaintiff has appealed. I believe that he is correct.
While the prothonotary was correct to decline the jurisdiction of this Court in the action brought by Engineering Dynamics Ltd., the same is not true in the instant case, in that, to all appearances, this case involves an action for patent infringement. Since the defendant has chosen, in its defence, to deny the infringement, the parties will have to debate the issue in the court of competent jurisdiction, in this instance the Trial Division of this Court, under section 20 of the Federal Court Act and section 54 of the Patent Act.3 In addition, the plaintiff alleges in his action that he is the registered owner and holder and owner of the patents that are the subject-matter of the case. Accordingly, unless the patent registry is amended to change the name of the owner of these patents, by evidence to the contrary, they are valid and avail the grantee4 who, for the term of the patents, has the exclusive right of making the invention and selling it to others to be used.5
Moreover, in procedural terms, the defendant's motion to dismiss the plaintiff's action under Rule 419(1)(a) should not have been allowed by the prothonotary. First, the facts alleged at this stage must be assumed to be true: accordingly, it should have been presumed that the plaintiff was the owner of the patents and enjoyed the protection of the Patent Act. Second, it should have been determined whether the plaintiff's statement of claim disclosed any reasonable cause of action, primarily by examining the allegations in the statement of claim, and not the arguments raised in defence with the aim of causing this Court to lose jurisdiction.
With respect, I believe that the prothonotary erred in law and in his assessment of the facts.
For these reasons, the appeal is allowed with costs and the defendant's motion to dismiss the plaintiff's action is dismissed.
D E C I S I O N
The appeal from the decision of Richard Morneau, the prothonotary, dated March 12, 1997, by which he allowed the motion to dismiss the defendant's [plaintiff's?] action and ordered that the plaintiff's statement of claim be struck out, is allowed with costs.
OTTAWA, June 30, 1997
PIERRE DENAULT
Judge
Certified true translation
C. Delon, LL.L.
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT FILE NO: T-1760-95
STYLE OF CAUSE: CONSTANTINOS J. JOANNOU
v. ENGINEERING DYNAMICS LTD.
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: April 7, 1997
REASONS FOR DECISION AND DECISION OF THE HONOURABLE MR. JUSTICE DENAULT
DATED June 30, 1997
APPEARANCES:
Bob H. Sotiriadis FOR THE PLAINTIFF
Mitchell B. Charness FOR THE DEFENDANT
SOLICITORS OF RECORD:
Jacques A. Léger/Bob Sotiriadis FOR THE PLAINTIFF
Léger Robic Richard
Montréal, Quebec
Marcus T. Gallie/Mitchell B. Charness FOR THE DEFENDANT
Kent & Edgar
Ottawa, Ontario
__________________
1 The plaintiff appealed that decision, but withdrew his appeal on January 28, 1997.
2 The prothonotary stated: "Apart from the fact that the parties are acting here in a different capacity, the rest of the scenario is, mutatis mutandis, the same."
3 R.S.C. 1985, c. P-4, as amended by S.C. 1987, c. 41.