Domco Industries Ltd. v. Mannington Mills Inc. and Congoleum Corp., (1990) 107 N.R. 198 (FCA)

• Judge: Iacobucci, C.J., Pratte and Desjardins, JJ.A.
• Court: Federal Court of Appeal (Canada)
• Case Date: March 28, 1990
• Jurisdiction: Canada (Federal)
• Citations: (1990), 107 N.R. 198 (FCA)

Domco Ind. Ltd. v. Mannington Mills (1990), 107 N.R. 198 (FCA)

MLB headnote and full text

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

(A.-15-89)

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

Federal Court of Appeal

Iacobucci, C.J., Pratte and Desjardins, JJ.A.

March 28, 1990.

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, in a judgment reported 24 F.T.R. 234, 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. Domco appealed.

The Federal Court of Appeal dismissed the appeal. The court stated that where delivery or possession of goods took place outside Canada, and where it was not proved that a contract for sale of infringing goods occurred in Canada, then no vending occurred in Canada under s. 46 of the Patent Act and there was no infringement. The court also agreed that Domco was not entitled to amend its statement of claim.

Patents of Invention - Topic 2925

Infringement of patent - Acts not constituting infringement - Selling goods in foreign country which are subject to Canadian patent - Domco was licensed to sell patented flooring in Canada - Mannington's flooring allegedly infringed the patent and was allegedly "offered for sale and sold in Canada" - The Federal Court of Appeal affirmed there was no patent infringement - The court stated that where delivery or possession of Mannington's flooring took place outside Canada (New Jersey), and where it was not proved that any contracts for sale of the flooring occurred in Canada, then no "vending" occurred in Canada under s. 46 of the Patent Act and there was, accordingly, no infringement.

Patents of Invention - Topic 3646

Infringement actions - Pleadings - Amendments - Domco was licensed to sell certain patented flooring in Canada - Mannington manufactured infringing floorings and sold to Canadians from its American plant - Domco initially pleaded that Mannington itself infringed that patent by offering for sale and selling the infringing flooring in Canada - Six years after examination for discovery and a day before trial, Domco sought to amend its pleading to include an allegation that Mannington infringed the patent by inducing distributors in Canada to sell the infringing flooring - The Federal Court of Appeal affirmed refusal to allow the amendment, where it created a new cause of action contrary to rule 427 and, in any event, it would not be just to allow the amendment.

Practice - Topic 2110

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

Cases Noticed:

Leesona Corporation v. Consolidated Textile Mills Limited and Consolidated Textiles Ltd., [1978] 2 S.C.R. 2; 18 N.R. 29, refd to. [para. 10].

Smith Kline & French Inter-American Corporation v. Micro Chemicals Ltd. et al., [1969] 2 Ex. C.R. 344, refd to. [para. 18, footnote 3].

Badische Anilin and Soda Fabrik v. Hickson (1906), 23 R.P.C. 433 (H.L.), refd to. [para. 18, footnote 3].

Badische Anilin and Soda Fabrik v. Johnson & Co. (1897), 14 R.P.C. 405, refd to. [para. 27, footnote 6].

Badische Anilin and Soda Fabrik v. Basle Chemical Works L.R., [1898] A.C. 220, refd to. [para. 28, footnote 7].

No-Fume Ltd. v. Frank Pitchford & Co. Ltd. (1935), 52 R.P.C. 231 (C.A.), refd to. [para. 33].

Union Asbestos & Rubber Company v. Evans Products Company (1964), 328 F. 2d 949 (7th Cir.), refd to. [para. 34, footnote 10].

S.C. Johnson & Son Inc. v. Gillette Company (1983), 571 F. Supp. 1185 (N.D. I11.), refd to. [para. 34, footnote 10].

Scaramucci v. FMC Corporation (1966), 258 F. Supp. 598 (W.D. Okla.) refd to. [para. 34, footnote 10].

Ingersoll-Rand Co. v. Rockwell International Corporation (1976), 420 F. Supp. 277 (S.C. Fla.), refd to. [para. 34, footnote 10].

Knapp Monarch Co. v. Casco Products Corp. et al. (1965), 342 F. 2d 622 (7th Cir.), refd to. [para. 34, footnote 11].

Self v. Fisher Controls Company Inc. (1977), 197 U.S.P.Q. (9th Cir.), refd to. [para. 34, footnote 11].

Letang v. Cooper, [1964] 2 All E.R. 929 (C.A.), refd to. [para. 39].

Statutes Noticed:

Federal Court Rules, rule 420, rule 424, rule 427 [para. 5].

Patent Act, R.S.C. 1970, c. P-4, sect. 46 [para. 5].

Authors and Works Noticed:

White, T.A. Blanco, Patents for Inventions (3rd Ed.), p. 83 [para. 18, footnote 3].

Counsel:

John A. Campion, C. Spring-Zimmerman and David Allsebrook, for the appellant;

Nicholas Fyfe, Q.C., and Christopher Robinson, for the respondent (Mannington Mills Inc.);

Carol Hitchman, for the respondent (Congoleum Corporation).

Solicitors of Record:

Fasken & Calvin, Toronto, Ontario, for the appellant;

Smart & Biggar, Ottawa, Ontario, for the respondent (Mannington Mills Inc.);

Ridout & Maybee, Toronto, Ontario, for the respondent (Congoleum Corporation).

This appeal was heard on February 12 and 13, 1990, before Iacobucci, C.J., Pratte and Desjardins, JJ.A., of the Federal Court of Appeal.

On March 28, 1990, Iacobucci, C.J., delivered the following judgment for the Court of Appeal.