Martinray Industries Ltd. et al. v. Fabricants National Dagendor Manufacturing Ltd. et al., (1991) 49 F.T.R. 81 (TD)

• Judge: Denault, J.
• Court: Federal Court (Canada)
• Case Date: December 11, 1991
• Jurisdiction: Canada (Federal)
• Citations: (1991), 49 F.T.R. 81 (TD)

Martinray Ind. Ltd. v. Fabricants Nat. (1991), 49 F.T.R. 81 (TD)

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[French language version follows English language version]

[La version française vient à la suite de la version anglaise]

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Martinray Industries Ltd. et Dynamic Closures Ltd. (demanderesses) v. Les Fabricants National Dagendor Manufacturing Ltd. et 163,955 Canada Inc. (défenderesses)

(T-662-87)

Indexed As: Martinray Industries Ltd. et al. v. Fabricants National Dagendor Manufacturing Ltd. et al.

Federal Court of Canada

Trial Division

Denault, J.

December 11, 1991.

Summary:

The plaintiffs sued the defendants for patent infringement. The defendants denied in­fringement and counterclaimed for a dec­lar­ation that certain claims of the patent were invalid.

The Federal Court of Canada, Trial Divi­sion, allowed the defendants' counterclaim and declared the claims invalid. The court dismissed the plaintiffs' infringement action.

Patents of Invention - Topic 1006

The specification and claims - Interpreta­tion of - The Federal Court of Canada, Trial Division, reviewed the rules of inter­pretation of patents - See paragraphs 34, 35, 68, 69.

Patents of Invention - Topic 1130

The specification and claims - The des­cription - Claims for more than what was invented - The plaintiffs owned a patent for a sectional folding closure which al­legedly involved a new method of joining together folding closure sections of folding doors - The defendants argued that the patent was invalid because the claims were broader than the invention described - The Federal Court of Canada, Trial Division, agreed with this argument and declared certain of the claims invalid - See para­graphs 68 to 74.

Patents of Invention - Topic 1582

Grounds of invalidity - Lack of "inventive ingenuity" (obviousness) - Test for obvi­ousness - The Federal Court of Canada, Trial Division, referred to the test for obviousness - See paragraph 66.

Patents of Invention - Topic 1589

Grounds of invalidity - Lack of "inventive ingenuity" (obviousness) - Particular pat­ents - Sectional folding closure for folding doors - The plaintiffs owned a patent for a sectional folding closure which allegedly involved a new method of joining together folding closure sections of folding doors - The new method was to solve some of the difficulties experienced in installing such doors - The defendants argued that the patent was void for obviousness - The Federal Court of Canada, Trial Division, agreed that the patent was void for obvi­ousness - See paragraphs 64 to 67.

Patents of Invention - Topic 1675

Grounds of invalidity - Lack of novelty - Particular patents - Sectional folding closure for folding doors - The plaintiffs owned a patent for a sectional folding closure which allegedly involved a new method of joining together folding closure sections of folding doors - The new method was to solve some of the diffi­culties experienced in installing such doors - The defendants argued that the patent was invalid for lack of novelty - The Federal Court of Canada, Trial Division, rejected this argument - See paragraphs 42 to 46.

Patents of Invention - Topic 1803

Grounds of invalidity - Prior knowledge and use - Particular patents - Sectional folding closure for folding doors - The plaintiffs owned a patent for a sectional folding closure which allegedly involved a new method of joining together folding closure sections of folding doors - The new method was to solve some of the difficulties experienced in installing such doors - The defendants argued that the patent was invalid because the invention was used by the public prior to the date of the patent application (Patent Act, s. 27(1)(c)) and because of prior use and knowledge before the date of the invention (s. 27(1)(a)) - The Federal Court of Canada, Trial Division, held that the patent was invalid on these grounds - See para­graphs 47 to 63.

Patents of Invention - Topic 2926

Infringement of patent - Acts not consti­tuting an infringement - Of particular patents - Sectional folding closure for folding doors - The plaintiffs owned a patent for a sectional folding closure which allegedly involved a new method of join­ing together folding closure sections of folding doors - The new method was to solve some of the difficulties experienced in installing such doors - The plaintiffs sued the defendants, manufacturers and distributors of folding doors, for patent infringement - The Federal Court of Canada, Trial Division, interpreted the claims, and held that the defendants infringed two of the claims - The in­fringement action was dismissed, however, because the claims were held invalid - See paragraphs 1 to 38.

Cases Noticed:

Catnic Components Ltd. v. Hill & Smith Ltd., [1982] R.P.C. 183 (H.L.), refd to. [para. 34].

Eli Lilly & Co. and Thomas Engineering Ltd. v. Novopharm Ltd. (1989), 99 N.R. 60; 26 C.P.R.(3d) 1 (F.C.A.), refd to. [para. 35].

Eli Lilly & Co. v. O'Hara Manufacturing Ltd. - see Eli Lilly & Co. and Thomas Engineering Ltd. v. Novopharm Ltd.

Energy Absorption Systems Inc. v. Bois­sonneault (Y.) & Fils Inc. et al. (1990), 33 F.T.R. 96; 30 C.P.R.(3d) 420 (F.C.T.D.), refd to. [para. 39].

Lovell Manufacturing Co. v. Bratt Bros. Ltd. (1962), 41 C.P.R. 18, refd to. [para. 39].

Ernest Scragg & Sons Ltd. v. Leesona Corp. (1964), 45 C.P.R. 1, refd to. [para. 39].

Diversified Products Corp. and Brown Fitzpatrick Lloyd Patent Ltd. v. Tye-Sil Corp. (1991), 125 N.R. 218 (F.C.A.), refd to. [paras. 39, 66].

Rubbermaid (Canada) Ltd. v. Tucker Plas­tic Products Ltd. (1972), 8 C.P.R.(2d) 6 (F.C.T.D.), refd to. [para. 39].

Beloit Canada Ltd. v. Valmet Oy (1986), 64 N.R. 287; 8 C.P.R.(3d) 289 (F.C.A.), refd to. [paras. 49, 65].

Elias v. Gravesend Tinplate Company (1890), 7 R.P.C. 455 (H.C.J.), refd to. [para. 60].

Samuel Parks & Co. v. Cocker Bros. (1949), 46 R.P.C. 241, refd to. [para. 66].

Amfac Foods Inc. et al. v. Irving Pulp & Paper Ltd. (1986), 72 N.R. 290; 12 C.P.R.(3d) 193 (F.C.A.), refd to. [para. 68].

Proctor & Gamble Co. v. Beecham Canada Ltd. and Calgon Interamerican Corp. (1982), 40 N.R. 313; 61 C.P.R.(2d) 1 (F.C.A.), refd to. [para. 69].

B.V.D. v. Celanese, [1937] S.C.R. 221, refd to. [para. 70].

Riello Canada Inc. v. Lambert (1986), 3 F.T.R. 23; 9 C.P.R.(3d) 324 (F.C.T.D.), refd to. [para. 70].

Statutes Noticed:

Patent Act, R.S.C. 1970, c. P-4, sect. 47 [para. 39].

Patent Act, R.S.C. 1985, c. P-4, sect. 2 [para. 42]; sect. 27(1)(a) [paras. 47, 55]; sect. 27(1)(b) [para. 47]; sect. 27(1)(c) [paras. 47, 51]; sect. 34 [para. 1]; sect. 44 [para. 8]; sect. 58 [para. 50]; sect. 61(1)(a) [para. 55].

Authors and Works Noticed:

Hughes and Woodly on Patents, p. 413 [paras. 37, 74].

Counsel:

François Grenier, for the plaintiffs;

Sophie Picard and François Guay, for the defendants.

Solicitors of Record:

Léger, Robic & Richard, Montreal, Que­bec, for the plaintiffs;

Smart & Biggar, Montreal, Quebec, for the defendants.

This case was heard in Montreal, Quebec, on June 3-6, 1991, before Denault, J., of the Federal Court of Canada, Trial Division, who delivered the following decision on December 11, 1991.