Date: 20020417
Docket: T-791-01
Neutral Citation: 2002 FCT 437
BETWEEN:
ERNEST LAMMLI
Plaintiff
- and -
GERALD M. COUSINS
Defendant
HANSEN J.
[1] The plaintiff brings this motion for summary judgment for a declaration pursuant to subsection 60(2) of the Patent Act, R.S.C. 1985, c. P-4 (the "Act").
[2] The defendant, Gerald M. Cousins, is the owner of Canadian Patent No. 2,227,266 for an invention entitled "Protection Device for the Lower Gear Housing of a Boat Motor". On June 6, 2000, the plaintiff, Ernest Lammli, filed Patent Application No. 2,310,859 for an invention entitled "Lower Unit Guard for an Outboard Motor".
[3] The plaintiff commenced an action pursuant to subsection 60(2) of the Act for a declaration of non-infringement of the defendant's patent. The statement of defence alleges that a device built as described in the plaintiff's patent application would infringe the defendant's patent.
[4] In support of this motion, the plaintiff filed his affidavit to which a copy of his patent application and a copy of the defendant's patent are appended. The plaintiff states in his affidavit:
3. The Defendant has refused to confirm that he accepts that my patent does not infringe his. He has threatened litigation in the past for another product that he alleged infringed his patent. He has now filed a Statement of Defence alleging that my patent infringes his.
4. I verily believe that there is no defence to this action. I further believe that no evidence will be required as this will be a matter of interpretation of the Patents themselves.
[5] The plaintiff did not file any other evidence.
[6] The defendant's affidavit sets out, in general terms, a description of his device and its purpose. He also states that there are many different manufacturers of boat motors each having a different design. Accordingly, his protection devise requires design modifications for each manufacturer while still incorporating his invention. The defendant also outlines the steps taken by his counsel to obtain samples and technical drawings for the purpose of assessing whether the devices made, used, or sold, or proposed to be made, used, or sold, by the plaintiff would constitute an infringement of his patent. The relevant correspondence with respect to this assertion is appended to the affidavit.
[7] The defendant also deposes that his counsel was provided with a sample of the plaintiff's device, however, since strict conditions were imposed, he could not take any measurements of the sample. Further, just as his device requires modifications to fit the various designs of boat motors, similarly the plaintiff's device would require modifications to fit the various designs. He states he has not seen any other samples nor has he been provided with technical drawings. In the absence of samples or technical drawings, he is of the view that an expert cannot be retained to formulate an opinion regarding infringement.
[8] He also deposes that he has been informed by his patent agent and believes that patent applications generally show the preferred embodiment as known at the time of the application. As well, products actually manufactured by applicants for patents are often not the same as those shown in the application even though they incorporate the invention claimed.
[9] Lastly, he states that he has no idea as to what specific device the plaintiff has made, used, or sold or proposes to make, use, or sell in Canada.
[10] The defendant argues that a crucial requirement of subsection 60(2) of the Act has not been met by the plaintiff. It provides:
| Where any person has reasonable cause to believe that any process used or proposed to be used or any article made, used or sold or proposed to be made, used or sold by him might be alleged by any patentee to constitute an infringement of an exclusive property or privilege granted thereby, he may bring an action in the Federal Court against the patentee for a declaration that the process or article does not or would not constitute an infringement of the exclusive property or privilege. |
Si une personne a un motif raisonnable de croire qu'un procédé employé ou dont l'emploi est projeté, ou qu'un article fabriqué, employé ou vendu ou dont sont projetés la fabrication, l'emploi ou la vente par elle, pourrait, d'après l'allégation d'un breveté, constituer une violation d'un droit de propriété ou privilège exclusif accordé de ce chef, elle peut intenter une action devant la Cour fédérale contre le breveté afin d'obtenir une déclaration que ce procédé ou cet article ne constitue pas ou ne constituerait pas une violation de ce droit de propriété ou de ce privilège exclusif. |
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[11] The defendant submits the plaintiff has failed to adduce any evidence with respect to an article made, used, or sold or proposed to be made, used or sold. Instead, the plaintiff is seeking a declaration that the invention for which an application for a patent has been made does not infringe the defendant's patent. The defendant maintains that this in not a proper question for the Court. The Court should not be asked to rule on a hypothetical set of facts. The defendant takes the position that the Court is not able to determine whether an invention infringes a patent. Instead the proper question for the Court is whether an article resulting from an invention infringes the patent.
[12] The defendant also submits that the only evidence before the Court is found in his affidavit where he states that just as his device requires modifications to fit each of the various designs of boat motors, the plaintiff's sample would also require modifications to accommodate the various boat motor designs. In the absence of the article itself or at least the technical drawings for the article the plaintiff intends to use, make, or sell, it is impossible to make any determination regarding infringement.
[13] Lastly, the defendant maintains the Court is being asked to make complex findings of fact in the absence of any expert opinions. The defendant takes the position that it is necessary for both parties to obtain expert opinions to assist the Court in reaching a finding of infringement or non-infringement. As such, a determination of the issue is premature and ought to be left for trial.
[14] The plaintiff argues that the only issue to be resolved is whether the plaintiff's invention infringes the defendant's patent. The plaintiff maintains that there are no real issues of fact and that the issue of infringement can be resolved by comparing the defendant's patent and the plaintiff's patent application.
[15] The plaintiff's position is that it is not necessary to produce the article itself nor is it necessary to produce technical drawings. The drawings contained in the application for the patent are sufficient. While the plaintiff does not take issue with the defendants general assertion that there must be evidence with respect to the article the defendant proposes to use, make or sell, the plaintiff states that if one has regard to the totality of the evidence, it is apparent that the plaintiff proposes to make, use or sell the article described in the application. The plaintiff submits the exhibits attached to the affidavit of the defendant clearly indicate that there is an article in existence, namely, the sample to which the defendant had access. Further, the plaintiff points to the following statement in his affidavit: "He [the defendant] has threatened litigation in the past for another product that he allege infringed his patent." The plaintiff states the Court should infer from this statement that he intends to produce the device described in the application for a patent.
[16] In my view, this statement does not assist the plaintiff. At best, one can only infer from it that the plaintiff intends to produce a product incorporating his invention. Other than the evidence of the existence of a sample, there is no evidence before the Court with respect to the sample itself. Further, there is no evidence linking the sample to the drawings in evidence nor is there any evidence that the sample is, in fact, the article the plaintiff proposes to make, use or sell.
[17] In the absence of the article itself or at a minimum the drawings for the article he proposes to make, use or sell, the plaintiff is asking the Court to rule in a vacuum. In my view, the plaintiff has failed to put forward the necessary evidentiary foundation for the relief being sought.
[18] For these reasons, the motion for summary judgment is dismissed with costs to the defendant in any event of the cause.
"Dolores M. Hansen"
J.F.C.C.
Edmonton, Alberta
April 17, 2002
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-791-01
STYLE OF CAUSE:Ernest Lammli v. Gerald M. Cousins
PLACE OF HEARING: Edmonton, Alberta
DATE OF HEARING: April 15, 2002
REASONS FOR Order : Hansen, J.
DATED: April 17, 2002
APPEARANCES:
Douglas B. Thompson FOR PLAINTIFF
J. Cameron Prowse
Steven Z. Raber FOR DEFENDANT
SOLICITORS OF RECORD:
Thompson Lambert LLP FOR PLAINTIFF
Fillmore Riley FOR DEFENDANT