Glaston Services Ltd. Oy v. Horizon Glass & Mirrors Ltd. et al., 2010 FC 1191

• Judge: Mandamin, J.
• Court: Federal Court (Canada)
• Case Date: March 23, 2010
• Jurisdiction: Canada (Federal)
• Citations: 2010 FC 1191;(2010), 378 F.T.R. 228 (FC)

Glaston Services Ltd. v. Horizon Glass (2010), 378 F.T.R. 228 (FC)

MLB headnote and full text

Temp. Cite: [2010] F.T.R. TBEd. DE.013

Glaston Services Ltd. Oy (plaintiff) v. Horizon Glass & Mirrors Ltd. and Shanghai Northglass Technology & Industry Co., Ltd. (defendants)

(T-1108-07; 2010 FC 1191)

Indexed As: Glaston Services Ltd. Oy v. Horizon Glass & Mirrors Ltd. et al.

Federal Court

Mandamin, J.

November 26, 2010.

Summary:

Glaston Services Ltd. Oy, sued Horizon Glass & Mirror Ltd. and Shanghai Northglass Technology & Industry Co., Ltd. for infringement of two of its glass treatment patents (the '257 and the '628 patents). Shanghai Northglass was a Chinese company which manufactured and supplied glass processing machinery. Glaston claimed Shanghai Northglass had infringed and induced Horizon Glass to infringe the patents by selling, installing and commissioning an infringing glass bending and tempering production line at Horizon Glass's premises in Toronto. Horizon Glass made an assignment in bankruptcy. Neither Horizon Glass nor Shanghai Northglass filed a statement of defence. On the return of Glaston's motion for default judgment, an interlocutory injunction was granted and a one day trial was ordered. The issue of damages was to be determined by way of reference to a Prothonotary on a finding of liability at trial.

The Federal Court made a declaration against Shanghai Northglass for infringement of both patents, and a declaration against Horizon Glass for the infringement of the claims of the '257 patent (the amended Statement of Claim, which added the '628 patent to the initial claim, was not served on Horizon Glass). The court granted an injunction, prohibiting Shanghai Northglass from selling infringing equipment into Canada. Damages were to be determined with consideration to the finding that Shanghai Northglass was liable for infringement and inducement to infringe. Costs were awarded to Glaston at the high-end of column IV, with an allowance for first and second counsel at trial.

Evidence - Topic 7000

Opinion evidence - Expert evidence - General - [See Patents of Invention - Topic 1034 ].

Patents of Invention - Topic 1034

The specification and claims - Construction of a patent - Evidence (incl. extrinsic evidence) - The plaintiff sought judgment against the two defendants for infringement of two of its glass treatment patents - The action was undefended - The Federal Court was assisted in describing the patents by the expert evidence of the plaintiff's expert, as set out in his affidavit and his testimony - "[A]dmission of expert evidence depends on the relevance, necessity in assisting the trier of fact, the absence of an exclusionary rule and the proper qualifications of the expert" - During trial, the court accepted the plaintiff's expert generally as an expert in mechanical engineering and more specifically on glass bending and tempering technology - The court considered his expertise relevant and of assistance to help the court understand the purpose, construction and history of the patents and to construe the claims at issue - See paragraphs 38 to 43.

Patents of Invention - Topic 1503

Grounds of invalidity - General - Presumption of validity - The plaintiff sought judgment against the two defendants for infringement of two of its glass treatment patents - The action was undefended - The plaintiff provided evidence that it was the owner of the patents - The Federal Court concluded that the two patents were valid - Since the defendants were silent with respect to the validity of the patents, the plaintiff benefited from a presumption of validity of its patents pursuant to s. 43(2) of the Patent Act, namely, that "After the patent is issued, it shall, in the absence of any evidence to the contrary, be valid and avail the patentee and the legal representatives of the patentee for the term mentioned in section 44 or 45, whichever is applicable" - See paragraphs 67 and 68.

Patents of Invention - Topic 2889

Infringement of patent - Acts constituting an infringement - Importation of product made using process patented in Canada (infringement by importation) - The plaintiff sought judgment against the two defendants ("Horizon Glass" and "Shanghai Northglass") for infringement of two of its glass treatment patents ('257 and '628 patents describing a method and apparatus for bending and tempering glass sheets) - Shanghai Northglass was a Chinese company which manufactured (in China) and supplied glass processing machinery - Glaston claimed Shanghai Northglass had infringed and induced Horizon Glass to infringe the patents by selling, installing and commissioning an infringing glass bending and tempering production line at Horizon Glass's premises in Toronto - The Federal Court found that the machinery was an infringing device and that infringement did occur in Canada - It was an infringement for Shanghai Northglass to install and commission the machinery at Horizon's premises - Horizon Glass also directly infringed the '257 patent by possessing the machinery - The evidence of the plaintiff's expert that the machinery at the premises was used to make bent, tempered glass supported that conclusion - Also, possession, at least in commercial circumstances, raised a rebuttable presumption of "use" - That presumption had not been rebutted - See paragraphs 79 to 82, 85 and 86.

Patents of Invention - Topic 2889

Infringement of patent - Acts constituting an infringement - Importation of product made using process patented in Canada (infringement by importation) - The plaintiff sought judgment against the two defendants ("Horizon Glass" and "Shanghai Northglass") for infringement of two of its glass treatment patents ( '257 and '628 patents describing a method and apparatus for bending and tempering glass sheets) - Shanghai Northglass was a Chinese company which manufactured (in China) and supplied glass processing machinery - It was admitted that Shanghai Northglass performed acceptance tests of the machinery at the Horizon premises in Canada (the admitted fact) - The plaintiff submitted that Shanghai Northglass was liable for infringement for using the machinery at Horizon's premises - The Federal Court held that Shanghai Northglass committed an infringing use in Canada, therefore infringing the patents - The logical inference from the admitted fact was that Shanghai Northglass itself operated the machinery to produce bent and tempered glass in Canada and, thereby, used an apparatus covered by the claims of both patents, and practised the methods covered by the claims of the '257 patent - See paragraphs 83 and 84.

Patents of Invention - Topic 2890

Infringement of patent - Acts constituting an infringement - Inducing infringement - The plaintiff sought judgment against the two defendants ("Horizon Glass" and "Shanghai Northglass") for infringement of two of its glass treatment patents - The plaintiff claimed that Shanghai Northglass, a Chinese company, had infringed and induced Horizon Glass to infringe two of its glass treatment patents by selling, installing and commissioning an infringing glass bending and tempering production line at Horizon Glass's premises in Toronto - It was admitted that Shanghai Northglass knew of the patents before selling the glass processing machinery to Horizon Glass and commissioning the machinery at the Horizon facility - The Federal Court concluded that Shanghai Northglass had the requisite knowledge about the patents and was therefore liable for inducing Horizon Glass to infringe on the patents - The act of infringement by Horizon Glass was using the machinery - Shanghai Northglass had to have known and intended that its influence would result in Horizon infringing the patents - See paragraphs 88 to 94.

Patents of Invention - Topic 3103

Infringement of patent - Remedies - Injunctive relief - The plaintiff sought judgment against the two defendants ("Horizon Glass" and "Shanghai Northglass") for infringement of two of its glass treatment patents - The Federal Court found that Shanghai Northglass, a Chinese company, was liable for infringement and inducement of Horizon Glass to infringe - Section 57(1)(a) of the Patent Act provided for injunctive relief - An injunction was necessary to protect the plaintiff's rights in the event that Shanghai Northglass again sold infringing equipment into Canada, and the court so ordered - See paragraphs 101 and 102.

Words and Phrases

Use - The Federal Court discussed the word "use" within the meaning of s. 42 of the Patent Act, R.S.C. 1985, c. P-4 - See paragraphs 83 and 84.

Cases Noticed:

Vuitton (Louis) Malletier, S.A. et al. v. Yang et al., [2007] F.T.R. Uned. 803; 2007 FC 1179, refd to. [para. 36].

R. v. Mohan, [1994] 2 S.C.R. 9; 166 N.R. 245; 71 O.A.C. 241; 29 C.R.(4th) 243, refd to. [para. 39].

Bristol-Myers Squibb Canada Co. et al. v. Apotex Inc. et al. (2009), 342 F.T.R. 161; 2009 FC 137, refd to. [para. 45].

Canamould Extrusions Ltd. et al. v. Driangle Inc. (2003), 229 F.T.R. 104; 2003 FCT 244, affd. (2004), 317 N.R. 91; 2004 FCA 63, refd to. [para. 46].

Monsanto Canada Inc. et al. v. Schmeiser et al. (2002), 293 N.R. 340; 21 C.P.R.(4th) 1 (F.C.A.), refd to. [para. 71].

Monsanto Canada Inc. et al. v. Schmeiser et al., [2004] 1 S.C.R. 902; 320 N.R. 201; 2004 SCC 34, refd to. [para. 83].

MacLennan et al. v. Gilbert Tech Inc. (2008), 389 N.R. 165; 67 C.P.R.(4th) 161; 2008 FCA 35, refd to. [para. 88].

Windsurfing International Inc. v. Bic Sports Inc. (1985), 63 N.R. 218; 8 C.P.R.(3d) 241 (F.C.A.), refd to. [para. 89].

Baker Petrolite Corp. et al. v. Canwell Enviro-Industries Ltd. et al., [2002] 2 F.C. 3; 210 F.T.R. 161; 2001 FCT 889, revd. (2002), 299 N.R. 247; 17 C.P.R.(4th) 478; 2002 FCA 481, refd to. [para. 89].

Statutes Noticed:

Patent Act, R.S.C. 1985, c. P-4, sect. 42 [para. 70]; sect. 43(2) [para. 67]; sect. 57(1)(a) [para. 101].

Counsel:

Adam Bobker and Joshua W. Spicer, for the plaintiff;

None disclosed for the defendants.

Solicitors of Record:

Bereskin & Parr, Toronto, Ontario, for the plaintiff.

This action was heard at Toronto, Ontario, on March 23, 2010, before Mandamin, J., of the Federal Court, who delivered the following reasons for judgment and judgment, dated November 26, 2010.