Domco Industries Ltd. v. Mannington Mills Inc. and Congoleum Corp., (1988) 24 F.T.R. 234 (TD)

• Judge: Strayer, J.
• Court: Federal Court (Canada)
• Case Date: December 19, 1988
• Jurisdiction: Canada (Federal)
• Citations: (1988), 24 F.T.R. 234 (TD)

Domco Ind. Ltd. v. Mannington Mills (1988), 24 F.T.R. 234 (TD)

MLB headnote and full text

Domco Industries Limited (plaintiff) v. Mannington Mills Inc. and Congoleum Corporation

(T-2319-80)

Indexed As: Domco Industries Ltd. v. Mannington Mills Inc. and Congoleum Corp.

Federal Court of Canada

Trial Division

Strayer, J.

December 19, 1988.

Summary:

Domco Industries commenced an action against Mannington Mills for patent infringement. Congoleum Corp. was successor in title to the original patentee and was joined as a party under s. 57(2) of the Patent Act which required that the patentee be a party to infringement proceedings. Domco had a licence from Congoleum to make, use and sell in Canada floor coverings covered by the patent. In paragraph 9 of its statement of claim, Domco alleged that Mannington offered for sale and sold infringing floor coverings in Canada which were manufactured in the United States. Mannington in its statement of defence responded that the sales were completed in the United States, rather than Canada. The day before trial, Domco applied to amend paragraph 9 to plead that Mannington committed patent infringement by inducing or procuring infringing activities by Canadian floor covering distributors. Mannington objected to the amendment.

The Federal Court of Canada, Trial Division, refused Domco's application to amend its statement of claim. The court dismissed Domco's action on the basis of the original statement of claim, because Mannington did not offer for sale or sell the infringing goods in Canada, and even if it did, Mannington's activities did not constitute infringement of the patent per se.

Patents of Invention - Topic 2925

Infringement of patent - Acts not constituting infringement - Selling goods in foreign country which are subject to Canadian patent - The plaintiff was licensed to sell certain patented floor coverings in Canada - The defendant manufactured infringing floor coverings in the United States and sold the coverings to Canadians from its plant in the United States - The plaintiff initially alleged patent infringement, because the defendant offered for sale and sold floor coverings in Canada - The Federal Court of Canada, Trial Division, held that the defendant's activities did not amount to "offering for sale" in Canada where the sales took place in the United States, and if the activities were "offering for sale" in Canada, the activities did not per se constitute infringement in Canada - The court therefore dismissed the plaintiff's infringement action. Patents of

Patents of Invention - Topic 3646

Infringement actions - Pleadings - Amendments - The plaintiff was licensed to sell certain patented floor coverings in Canada - The defendant manufactured infringing floor coverings and sold the coverings to Canadians from its plant in the United States - The plaintiff initially pleaded that the defendant itself infringed the patent by offering for sale and selling the infringing coverings in Canada - Six years after examination for discovery and a day before trial, the plaintiff sought to amend its pleading to include an allegation that the defendant infringed the patent by inducing distributors in Canada to sell the infringing coverings - The Federal Court of Canada, Trial Division, refused to allow the amendment where it created a new cause of action in a manner contrary to Federal Court Rule 427, and in any event, it would not be just to allow the amendment within the criteria of rule 424.

Practice - Topic 2110

Pleadings - Amendment - Adding a new cause of action - [See Patents of Invention - Topic 3646 above].

Cases Noticed:

Dole Refrigerating Products Ltd. v. Canadian Ice Machine Co. et al. (1957), 17 Fox's Pat. C. 125 (Ex. Ct.), refd to. [para. 8, footnote 1].

Badische Anilin and Soda Fabrik v. Johnson & Co. (1897), 14 R.P.C. 405, refd to. [para. 9, footnote 2].

No-Fume Ltd. v. Frank Pittchford & Co. Ltd. (1935), 52 R.P.C. 231, refd to. [para. 9, footnote 3].

Letang v. Cooper, [1964] 2 All E.R. 929 (C.A.), refd to. [para. 12, foot note 4].

Leesona Corporation v. Consolidated Textile Mills Limited et al., [1978] 2 S.C.R. 2; 18 N.R. 29, refd to. [para. 14, footnote 5].

Statutes Noticed:

Federal Court Rules, rule 424 [paras. 10, 11, 14]; rule 427 [paras. 10, 11, 13, 14].

Patent Act, R.S.C. 1970, c. P-4, sect. 46 [para. 9].

Authors and Works Noticed:

Oxford English Dictionary [para. 9].

Counsel:

R.E. Dimock and S.M. Lane, for the plaintiff;

N.H. Fyfe, Q.C., and J.C. Robinson, for the defendant Mannington Mills;

C. Hitchman, for the defendant Congoleum Corp.

Solicitors of Record:

Sim, Hughes, Dimock, Toronto, Ontario, for the plaintiff;

Smart & Biggar, Ottawa, Ontario, for the defendant Mannington Mills;

Ridout & Maybee, Toronto, Ontario, for the defendant Congoleum Corp.

This case was heard in Toronto, Ontario, on December 1 and 2, 1988, before Strayer, J., of the Federal Court of Canada, Trial Division, who delivered the following decision on December 19, 1988: