Date: 19990823
Docket: T-1828-98
Ottawa, Ontario, this 23rd day of August, 1999
PRESENT: The Honourable Mr. Justice Pelletier
BETWEEN:
FERO HOLDINGS LTD.
Plaintiff
- and -
LES ENTERPRISES GIVESCO INC. and
BLOK LOK, LIMITED
Defendants
REASONS FOR ORDER and ORDER
[1] Fero Holdings Ltd (Fero) is the holder of Canadian Letters Patent No. 1,306,116 which is in relation to a type of masonry wall. Fero alleges that its patent has been infringed by Les Entreprises Givesco Inc. (Givesco) and Blok Lok Limited (Blok Lok). Blok Lok brings a motion seeking summary judgment dismissing the claim as it applies to a specific product which is described in its statement of defence as Structure A1 on the ground that it is prior art. Fero, which identified the infringing device, a type of wall tie assembly, as an "Adjustable Brick Connector manufactured and sold by the defendants" says that the infringing product is a product like structure A combined with an insulation retaining device which when attached to the Structure A product makes a system which anchors a veneer wall to a backup wall and at the same time restrains the insulation against the backup wall.
[2] Structure A is a wall tie assembly and Wedge-Lok is an insulation retaining clip. The wall tie assembly is used to tie a brick wall to a back-up structural wall. A free standing brick wall of any height is unstable given its narrow base. For that reason, such walls need to be tied back to a structural wall to stabilize them. This is done using a wall tie assembly which comes in many shapes and forms, including an L-shaped assembly in which the short leg is fastened to the structural wall and in which a slot or hole at the end of long leg holds an element which fits between the rows of brick in the veneer wall. This creates a link between the veneer wall and the back-up structural wall. An insulation retaining clip is a device which is attached to the wall tie assembly in such a way as to restrain the insulation against the back-up wall.
[3] The affidavit evidence filed by the parties suggests that this dispute arises out of a particular construction contract in which Blok Lok"s product appears to have been used in preference to Fero"s. Blok Lok says that they sold Structure A to that job but that they did not sell the Wedge-Lok fastener (insulation retaining clip) to that job. Paul Stuart, a sales agent for the plaintiff"s Ontario dealer deposes that Givesco supplied Blok Lok, Limited"s wall tie assemblies which were used on the job on the condition that a redesigned insulation clip was to be used by the contractor. There is no evidence as to which clip needed redesign. Mr. Stuart then refers to an engineering report which compares a Blok Lok product to a Fero product. He concludes that the dimensions are identical, which dimensions he says are necessary "so that the insulation retainer used by Fero can be fitted to the tie". This suggests that Fero fasteners were used for this job rather than the Wedge-Lok fastener associated with Blok Lok. The report in question refers to "corrugated/slotted block ties" for a project in Penetang. Since the project which apparently sparked this litigation was located in Kanata, the relevance of this information is not immediately obvious. If it does show anything, it tends to show that Wedge-Lok clips were not used.
[4] The affidavit evidence of John Dawe, an expert whose opinion is tendered on behalf of Fero, is that the Fero product has many novel features, the only one of which he identifies is the use of a separate nylon insulation bracket used in combination with Fero"s masonry tie for the purpose of retaining the insulation. Dr. Dawe was not aware of any such combination having been made by any vendor of masonry ties.
[5] The motion for summary judgment is based on the Gillette defence, which permits judgment to be rendered in a patent case without the necessity of interpreting the patent itself. The defence is taken from Gillette Safety Razor Company V. Anglo-American Trading Company Ltd.(1913) R.P.C. 465 (H.L.) at 480 where the following appears:
| I am, therefore, of opinion that in this case the Defendants" right to succeed can be established without an examination of the terms of the Specification of the Plaintiffs" Letters patent. I am aware that such a mode of deciding a patent case is unusual, but from the point of view of the public it is important that this method of viewing their right should not be overlooked. In practical life it is often the only safeguard to the manufacturer. It is impossible for ordinary member of the public to keep watch on all the numerous patents which are taken out and to ascertain the validity and scope of their claims. But he is entitled to feel secure if he knows that that which he is doing differs from that which has been done of old only in non-patentable variations, such as the substitution of mechanical equivalents or changes of material shape or size. The defence that "the alleged infringement was not novel at the date of the plaintiff"s Letters Patent" is a good defence in law ,a nd it would sometimes obviate the great length and and expense of Patent cases if the defendant could and would put forth his case in this form, and thus spare himself the trouble of demonstrating on which horn of the well-known dilemma the plaintiff had impaled himself, invalidity or non-infringement. |
[6] In this case, an examination of catalogue and promotional material which are exhibits to the affidavit of Mr. Burns shows that wall tie assemblies composed of an L-shaped metal plate with an opening through which is passed a tie bar were and are a common construction material in use prior to the date of Fero"s patent. A device very much like Structure A was the subject of patent in the U.S. prior to the date of Fero"s application for a patent. Clearly, a person skilled in the art would have been aware of that type of wall tie assembly at the date the patent was applied for. To that extent, a wall tie assembly of the type represented by Structure A is prior art which would either not be caught by Fero"s patent or, if caught by it, would result in a finding of invalidity.
[7] Fero"s answer to this attack on its patent is to claim that the infringing device is one which combines the wall tie assembly with an insulating retaining device so that the combination of the two infringes its" patent. Fero goes on to say that whether or not Blok Lok sold the Wedge-Lok clips is immaterial since a patent cannot be defeated by selling the offending article in components which are then assembled to form the infringing device. Windsurfing International Inc. v. Trilantic Corporation (1985) 8 C.P.R. (3d) 241 (F.C.A.)
[8] If that is Fero"s position, then it"s patent is a combination patent in which the inventiveness consists of a novel arrangement of known elements to achieve a new end. In order to infringe a combination patent, each of the elements must be infringed. Beloit Canada Ltée/Ltd v. Valmet Dominion Inc . (1997) 73 C.P.R. 321 (F.C.A.)
| The respondents defend the action partly on the basis that they did not sell the patented invention, but rather sold manufactured components for a press section for assembly and use outside Canada. Beloit's three-nip press is a combination patent where the novelty results from the idea of putting together different essential elements, all previously known, in a particular combination. The respondents argue that the mere making, using or vending of components that afterwards enter into a combination is not prohibited where the patent is limited to the combination itself. |
| It is well established that there is no infringement of a patent in selling an article that does not in itself infringe the patent even when the vendor knows that the purchaser buys the article for the purpose of using it in the infringement of the patent. However, in Valmet Oy v. Beloit Canada Ltd., Pratte J. held that there were two exceptions to this rule: |
| (a) if the vendor, alone [Windsurfing Int'l Inc. v. Trilantic Corp. (1985), 63 N.R. 218, 8 C.P.R. (3d) 241] or in association with another person [Incandescent Gas Light Co. Ltd. v. New Incandescent Mantle Co. (1898), 15 R.P.C. 81] sells all the components of the invention to a purchaser in order that they be assembled by him; and |
| (b) if the vendor, knowingly and for his own ends and benefit, induces or procures the purchaser to infringe the patent. [Slater Steel Industries Ltd. v. R. Payer Co. Ltd. et al. (1968), 55 C.P.R. 61, 38 Fox Pat. C. 139.] |
[9] The effect of this is that the sale of a wall tie assembly resembling Structure A by itself would not infringe Fero"s patent. The summary judgment application seeks the dismissal of Fero`s claim as it relates to Structure A simpliciter . Counsel concedes that such a judgment would still leave Blok Lok"s counterclaim intact and would not prevent Fero from pursuing a claim of infringement based upon the sale of Structure A and Wedge-Lok clips together.
[10] The Federal Court Rules provide that summary judgment can be awarded even if there are factual disputes providing that the judge, after taking a hard look at the evidence, determines that there is no genuine issue for trial. In addition, summary judgment can be granted for only a part of the claim, leaving the balance to be determined. The onus on a summary judgment application is on the applicant, but the respondent is well advised to "lead trump or risk losing"in the words Mr. Justice Osborne in 1061590 Ontario Limited v. Ontario Jockey Club (1995) 21 O.R. (3d) 547 (Ont C.A.) at p.557.
[11] There are difficulties with respect to a summary judgment limited to Structure A (BL314). The first is that the identification of the infringing device in Schedule A is Adjustable Brick Connector which is then described by reference to the terms of claim 1 of the Patent. There is no obvious identification of Structure A as the Adjustable Brick Connector referred to in the claim, nor could there be without a demand for particulars or some other form of discovery. Proving that Structure A does not infringe does not necessarily prove that Blok Lok"s Adjustable Brick Connector does not infringe. The matter in issue is the Adjustable Brick Connector, not Structure A. The second problem is that a partial summary judgment will not reduce the length or complexity of the litigation. Fero is still free to attempt to show infringement by the sale of Structure A (or something like it) with insulation clips, and Blok Lok"s counterclaim alleging invalidity of Fero"s patent remains outstanding. It is very unlikely that a partial summary judgment will in any way shorten these proceedings. More likely, it will create new difficulties in the litigation by creating issues of res judicata or issue estoppel where none exist now.
[12] Counsel advised that the advantage of a summary judgment was that it would allow Blok Lok to sell BL314 without fear of further litigation. Having regard to the position taken by Fero, that its patent covers the combination of wall tie assembly and insulation retainer, the sale of wall tie assemblies without insulation retainers (which is all that would be covered by a summary judgment) is not likely to be an issue.
[13] Since a partial summary judgment would not simplify or shorten the action, but on the contrary would likely complicate it, the application for summary judgment is dismissed. Costs are costs in the cause.
O R D E R
The application for summary judgment is dismissed. Costs are in the cause.
"J.D. Denis Pelletier"
Judge
__________________1 In the course of argument, counsel advised that the Defendant"s part or catalogue number for Structure A is BL314.