Date: 20060531
Docket: A-78-05
Citation: 2006 FCA 204
CORAM: LÉTOURNEAU J.A.
NOËL J.A.
PELLETIER J.A.
BETWEEN:
CHARLES D. MACLENNAN and ÉQUIPEMENT QUADCO INC.
Appellants
and
LES PRODUITS GILBERT INC.
Respondent
Hearing held at Montréal, Quebec, May 29 and 31, 2006.
Judgment delivered from the bench at Montréal, Quebec, May 31, 2006.
REASONS FOR JUDGMENT OF THE COURT: NOËL J.A.
Date: 20060531
Docket: A-78-05
Citation: 2006 FCA 204
CORAM: LÉTOURNEAU J.A.
NOËL J.A.
PELLETIER J.A.
BETWEEN:
CHARLES D. MACLENNAN and ÉQUIPEMENT QUADCO INC.
Appellants
and
LES PRODUITS GILBERT INC.
Respondent
REASONS FOR JUDGMENT OF THE COURT
(Delivered from the bench at Montréal, Quebec, May 31, 2006)
NOËL J.A.
[1] This is an appeal from a decision (2004 FC 1700) by Mr. Justice Beaudry of the Federal Court, dated December 6, 2004, dismissing the action for infringement of Canadian patent No. 2,011,788 (patent 788) brought by the appellants.
Facts
[2] The appellants operate a company that develops, designs, manufactures and sells forestry products, including circular saws and replacement parts for circular saws such as discs, tooth holders and saw teeth.
[3] It was the appellant MacLennan who created Équipement Quadco Inc. (Quadco), whose first product marketed in this way was the combination that is the subject matter of the invention in issue. Quadco sells a complete disc on the periphery of which are serially bolted some samples of the patented combination. Quadco also sells forest operators three versions of the invention that are the subject of this appeal, as spare parts (teeth and tooth holders) that they take with them into the forest in order to construct or reconstruct on the spot the combinations that are damaged or destroyed.
[4] The respondent, on the other hand, also operates a company that manufactures and sells forestry products and machinery, including circular saws, replacement parts for circular saws such as discs, tooth holders, saw teeth and tooth adapters. Amongst this forestry equipment is a circular saw for a feller head that includes some tooth holders bolted to the periphery of the disc whereas previously these tooth holders were welded.
[5] The appellants are suing the respondent for infringement of patent 788, the claimed invention, which is used in circular saws for feller heads in the forest industry and more particularly in rocky and snowy terrain.
[6] The invention covers the combination of two essential main cogs with a set of special features: a repositionable saw tooth and a detachable tooth holder. This combination is designed to be attached to the periphery of the circular saw disc.
[7] The tooth is attached to the tooth holder, while the tooth holder is designed to be bolted on the periphery of a disc to form a circular saw. The tooth and tooth holder project beyond the disc. The circular saw is installed on the lower part of a device used to cut down trees, called a “tree feller”. The saw disc in question is quite large.
[8] The teeth, tooth holders and the disc can frequently be damaged because the saw can encounter rocks, since it cuts the tree as closely as possible to the soil,. This impact is violent, particularly considering the speed with which the disc is turning.
[9] According to the specification for the patent in issue, the inventor’s objective was to avoid damaging the disc by limiting damages to the teeth and tooth holders (Patent 788, patent specification, p. 1, lines 6 to 14). The tooth and tooth holder are replaceable by new spare parts that the forestry operators take with them into the forest (Patent 788, patent specification, p. 2, lines 34 to 35 and p. 3, lines 1 to 7). A forestry operator digs into his inventory of teeth and tooth holders to reassemble one or more new combinations.
[10] The appellants filed with the trial judge the following table, which describes the Gilbert products and the claims for patent 788 which have allegedly been infringed (transcript, vol. 8, at p.242):
[11] They argued, by reference to this table, that the respondent was infringing their patent in two ways: through the production and sale of the tooth and tooth holder that appear in combination 1, in direct infringement of the patent; and by encouraging loggers to use the Gilbert teeth in combination with the appellants’ tooth holders, which appear in combinations 2 to 5 of the table (infringement by inducement).
[12] It is not necessary to reproduce the claims that have been allegedly infringed. Suffice it to say that these claims cover some combinations since they all begin (directly or indirectly) with the words “A saw tooth and tooth holder combination”.
Decision under appeal
[13] The trial judge began by holding that the Gilbert tooth holder and the cylindrical-backed Gilbert tooth (combination 1) did not give rise to a direct infringement of claims 2, 3 and 5 of the patent. In his view, claims 3 and 5 were dependent on the second claim, and the latter claim was not infringed since it is limited to a “frusto-pyramidal” tooth and a tooth holder with a corresponding shape whereas the Gilbert tooth and its tooth holder do not have that shape.
[14] The reasons of the trial judge in this regard are as follows:
[27] … It is true that in claim 2 the words “frusto-pyramidal” or “pyramidal” are not mentioned. However, the defendant’s expert witness maintained that the patent could not cover anything but a tooth with a pyramidal shape. In preferring his opinion to that of Mr. Marquis, I do not think that the Court is adding a word to claim 2, as counsel for the plaintiff maintained, in view of the persuasive explanations provided. In support of his arguments, Mr. Gaudreault referred to his analysis made in connection with claim 1, the specifications, designs and very wording of claim 2 - “small end”, “large end”, “divergent surfaces” - and the abutment means. However, he admitted that a pyramidally shaped tooth could have more than four sides.
[28] The abutment means of the tooth holder are another essential element in the patent. On the one hand, Mr. Marquis mentioned [translation] “an abutment means against which the back and one side of the tooth rest”. Mr. Gaudreault, for his part, thought that [translation] “the abutment means are adapted to take a pyramidal tooth, that is, two surfaces forming an L”. The testimony and reasoning of the defendant’s expert witness persuaded me that his conclusions in this regard were more probative than those of the plaintiff’s expert witness. The two surfaces forming an L are made in such a way that they marry the shape of the pyramidal tooth. They are thus backed on a flat surface and supported on one side on a small platform. With the shank, and a means of fastening, this tooth holder and saw tooth combination prevents rotation and tangential movement.
[15] The trial judge ruled as follows on the allegation of infringement by inducement:
[38] I accept the argument put forward by counsel for the defendant that the plaintiff is suing Gilbert in connection with a product which does not represent a combination of a tooth holder and teeth. In the five patent claims, the first sentence begins by “A saw tooth and tooth holder”. In order to succeed, the plaintiff had to show that Gilbert was manufacturing, selling, teeth and tooth holders in combinations 2, 3, 4 and 5, which clearly is not the case. There is no Gilbert tooth holder in these combinations. This finding suffices in itself to support a ruling that combinations 2, 3, 4 and 5 do not infringe the patent.
Grounds of appeal
[16] The appellants are not appealing the first part of the trial decision, that combination 1 does not result in a direct infringement of claims 2, 3 and 5 of the patent (memorandum of appellants, para. 48). They are asking us, however, to find by way of a declaratory judgment that the trial judge erred in finding that claim 2 of the Quadco patent is limited to a pyramidal or “frusto-pyramidal” shaped tooth and a correspondingly shaped tooth holder. This interpretation, they say, is mistaken and could be detrimental to them since it might bind them in future litigation.
[17] Concerning the second issue (infringement by inducement), the appellants’ counsel maintains that the trial judge lost sight of the issue he had to rule on when he held that the respondent had to sell the teeth in combination with the tooth holder if there was to be infringement by inducement. Indeed, the issue was not whether the sale of the Gilbert replacement teeth by themselves infringed the Quadco patent. Rather, it was whether the respondent was guilty of infringement by inducement when it invited forestry operators to combine the Gilbert replacement teeth with the Quadco tooth holders (Rucker Co. v. Gravel’s Vulcanizing Ltd., (1985), 7 C.P.R. (3d) 294 (F.C.T.D.), at pp. 322-23).
[18] Finally, the appellants add that combination 2 is no longer at issue; therefore, only combinations 3, 4 and 5 are under appeal.
Decision
1. Direct infringement
[19] By seeking a declaratory judgment, the appellants are attacking the very essence of the trial judgment and a finding of no direct infringement in regard to combination 1. The appellants’ decision not to appeal the trial judge’s decision on this point means that the declaratory judgment that they are seeking in this Court would be purely moot.
[20] An appellate court may in some circumstances choose to rule on an issue even if it has become moot. In this case, the appellants were in a position to raise the issue they wanted the Court of Appeal to rule on by appealing the decision, but they chose not to do so for reasons that remain unexplained, despite the fact that the Court inquired about this from the bench.
[21] The appellants cannot expect that the Court will exercise its discretion in their favour and agree to address an issue that they themselves have made moot without at the very least explaining why they did not exercise their right of appeal. In these circumstances, there is no reason to examine the moot question underlying the request for a declaratory judgment.
2. Infringement by inducement
[22] It is also possible to rule rapidly on the second aspect of the appeal. The trial judge, in finding that combinations 2 to 5 did not infringe the patent, appears to have momentarily forgotten that he was dealing with infringement by inducement. The applicable test in such matters is the following:
1) That an act of infringement was completed by the direct infringer …
2) Completion of the act of infringement was influenced by the acts of the inducer. Without said influence, infringement would not otherwise take place …
3) The influence must knowingly be exercised by the seller, i.e., the seller knows his influence will result in the completion of the act of infringement. (see Dableh v. Ontario Hydro, (1996) 68 C.P.R. (3d) 129 (F.C.A.) at pp. 148-149 as well as Halford v. Seed Hawk Inc., (2004) 31 C.P.R. (4th) 434 (F.C.T.D.) (Pelletier J.) at pp. 559-560 and AB Hassle v. Canada (Minister of National Health and Welfare), (2001) 16 C.P.R. (4th) 21 (F.C.T.D.) (O’Keefe J.) at p. 42; aff’d 22 C.P.R. (4th) 1 (F.C.A.) at p. 7).
When these three conditions are fulfilled, the seller is guilty of infringement by inducement.
[23] As to the first question, the fact that the products sold by the respondent were limited to a tooth rather than a combination of teeth and tooth holders is unimportant. The question that the trial judge should have asked was whether the forestry operators infringed the patent by using the Gilbert tooth in combination with the Quadco tooth holder. It is that combination that had to give rise to an act of infringement within the meaning of the first issue.
[24] Before answering, the trial judge should have asked first whether the forestry operators could, under the implied licence resulting from the purchase of the Quadco patented combination, “repair” the damaged components by inserting the Gilbert teeth in them without infringing the patent: Harold G. Fox, Canadian Patent Law and Practice, 4th ed. (Toronto: Carswell, 1969) at pp.301 and 391. If not, and if the use of the Gilbert tooth in combination with the Quadco tooth holder infringed the patent as alleged, the trial judge had to address the second and, if applicable, the third issue.
[25] But the trial judge did not address any of these issues. In the circumstances, the appeal must be allowed, the decision on infringement by inducement must be set aside and the matter returned to the judge below for redetermination, according to the applicable legal test and the file before him. The appellants will be entitled to their costs.
Certified true translation
François Brunet, LLB, BCL
FEDERAL COURT OF APPEAL
SOLICITORS OF RECORD
DOCKET: A-78-05
APPEAL FROM A JUDGMENT OF BEAUDRY J. DATED DECEMBER 6, 2004, DOCKET NO. T-2270-00
STYLE OF CAUSE: CHARLES D. MACLENNAN and ÉQUIPEMENT QUADCO INC. v. LES PRODUITS GILBERT INC.
PLACE OF HEARING: Montréal, Quebec
DATES OF HEARING: May 29 and 31, 2006
REASONS FOR JUDGMENT
OF THE COURT: LÉTOURNEAU J.A.
NOËL J.A.
PELLETIER J.A.
DELIVERED FROM
THE BENCH: NOËL J.A.
APPEARANCES:
|
François Guay Marc-André Huot
|
FOR THE APPELLANTS
|
|
FOR THE RESPONDENT
|
SOLICITORS OF RECORD:
|
Smart & Biggar Montréal, Quebec
|
FOR THE APPELLANTS
|
|
Montréal, Quebec |
FOR THE RESPONDENT
|
Date: 20060531
Docket: A-78-05
Montréal, Quebec, May 31, 2006
CORAM: LÉTOURNEAU J.A.
NOËL J.A.
PELLETIER J.A.
BETWEEN:
CHARLES D. MACLENNAN and ÉQUIPEMENT QUADCO INC.
Appellants
and
LES PRODUITS GILBERT INC.
Respondent
JUDGMENT
The appeal is allowed, the decision of Mr. Justice Beaudry concerning the infringement by inducement is set aside and the matter is returned to him for redetermination according to the applicable legal test and the file before him.
The appellants will be entitled to their costs.
”Gilles Létourneau”
J.A.
Certified true translation
François Brunet, LLB, BCL