MacLennan et al. v. Produits Gilbert Inc.What You Need To Know From A Client’s Perspective

by James Ramsbottom

In January of 2008, the Canadian Federal Court of Appeal gave its decision in MacLennan et al. v. Produits Gilbert Inc. relating to inducing infringement. For our clients benefit, we provide a brief summary of the relevant points of the case relating the topic of inducing infringement.

On Inducing Infringement

The court held that it is not necessary that there be direct contact between the end-user and a supplying party for induced infringement to occur. Directing an end-user as to the availability of the elements necessary to make or use a claimed combination is enough for a party to be liable for inducing infringement.

Case Commentary

The case MacLennan et al. v. Produits Gilbert Inc. in the Federal Court was appealed to the Federal Court of Appeals. In the appellate case, MacLennan et al. v. Produits Gilbert Inc. 2008 F.C.A. 2008, the appellants asked the court to set aside the trial judgment and to find, based on the evidence at trial, that the Produits Gilbert Inc. was guilty of infringement by inducement.

Briefly, the claimed invention, Canadian Patent Number: 2,011,788, issued to MacLennan et al. relates to circular saws for feller heads in the forest industry. The invention covers two pieces: a repositionable saw tooth and a detachable tooth holder. This combination is designed to be attached to the periphery of a circular saw disc. The claims all start with the words “a saw tooth and tooth holder combination”, and thus the claims do not cover an individual tooth as such. The claims of the invention are therefore drawn specifically to the combination of the elements.

Due the nature of the area where the invention would be used, the teeth of the saw often come into contact with rocks and other hard debris. Therefore, the saw teeth are thus susceptible to breakage. To overcome this problem the teeth are designed to be individually replaceable.

Quadco Equipment Inc. was authorized to sell the invention of the Canadian Patent Number 2,011,788 and operates in the same market as Produits Gilbert Inc. Produits Gilbert Inc. manufactures replicas of the Quadco Equipment Inc. teeth with the same configuration and the same dimensions as the Quadco Equipment Inc. teeth. As such, these teeth can only be installed on Quadco Equipment Inc. tooth holders.

The Federal Court trial Judge applied a test of contributory infringement stated in Dableh v. Ontario Hydro. The three factor test was paraphrased by the Court as:

  1. there must be an act of infringement by the direct infringer;
  2. this act must be influenced by the seller to the point where, without this influence, infringement by the buyer would not otherwise take place;
  3. the influence must be knowingly exercised by the seller, i.e., the seller knows that this influence will result in the completion of the act of infringement.1

The trial judge concluded that Produits Gilbert Inc. was merely offering to repair a patented article, which in Canada does not amount to Infringement. This is a well accepted principle of Canadian Patent Law as decided in Rucker Co. v. Gavel’s Vulcanizing Ltd.2 Also, the sale of non-infringing parts for use in an infringing machine does not, in itself, amount to a case of infringement as noted in Beloit Canada Ltd. v. Valmet Oy (1995).3

However, the Federal Court of Appeal noted, from arguments made, that Produits Gilbert Inc. provided a price list to its clients which identified that their replacement saw teeth, which were identical to those in the patented combination, would work as a replacement part in the tooth holder supplied by Quadco Equipment Inc. The Court of Appeal held that the price list supplied by Produits Gilbert Inc. did in fact constitute inducing infringement and that it was not necessary that the inducer have direct contact with consumers. Thus, it was found that Produits Gilbert Inc., through its influence, caused the infringement of the Canadian Patent Number 2,011,788; under which Quadco Equipment Inc. was claiming. The Court of Appeal also concluded that Produits Gilbert Inc. knew that, without this influence, there would have been no infringement.

[1] Dableh v. Ontario Hydro (1996), 68 C.P.R. (3rd) 129 at pp. 148 and 149 (F.C.A.)

[2] Rucker Co. v. Gavel’s Vulcanizing Ltd. (1986), 7 C.P.R. (3d), 6 C.I.P.R. 137 (F.C.T.D.)

[3] Beloit Canada Ltd. v. Valmet Oy (1995), 61 C.P.R. (3d) 271 at p. 281