Slater Steel v.
R. Payer Co.
citation(s): (1968), 55 C.P.R. **(per Jackett, P.)
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Slater Steel v.
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copyright 1997 Donald M. Cameron, Aird & Berlis
"It is of prime importance, in order to appreciate the point that has to be decided, to keep in mind that the monopoly covered by the patents is for the combination so formed by combining rods with the transmission line, and that the plaintiffs have no patent rights in respect of the preformed armour rods as such".
At p.82-83:
"For the purpose of deciding this case, I accept the law as applied by Burbidge, J., in the Copeland-Chatterson case in 1906 as being the law under the present Canadian Patent Act. My understanding is that counsel for both parties agreed that it is the principal to be found in the last two sentences quoted above from the judgment delivered by Burbidge, J., in 1906 that must be applied for the determination of the case at bar.
The question that I have to decide is, therefore, whether the defendant in this case "knowingly", and for his own ends and benefit and to the damage of the patentee, has induced or procured another to "infringe" the plaintiffs' patent.
I leave aside for the present any consideration of precisely what Burbidge, J., meant by the phrases "for his own ends and benefit" and "to the damage of the patentee"...
What, as it seems to me, I must consider in this case is whether it has been alleged and proved that the defendants
(a) knowingly,
(b) induced or procured,
(c) another to infringe the plaintiff's patent".
"In considering whether what the power entities did (which for present purposes I shall assume was a "wrongful act") was induced or procured by the defendants, it must be borne in mind that what we are talking about is such acts by the defendants as would constitute the defendants parties to the power entities' wrongful acts. It must be clear, I think, that merely doing something that was part of the events leading up to the wrongful acts, but which could not legally be regarded as the cause or one of the causes of the wrongful acts (a sine qua non), cannot be regarded as having induced or procured the wrongful acts."
"What the defendants must be found to have induced or procured, if the plaintiffs are to succeed, is the making of the patented combination by the power entities without a licence from the patentee."
At p.88:
"There is no direct evidence as to what caused any of these very substantial corporations to decide to use the patentee's patented invention without getting a licence. (It is important to note that the plaintiffs, instead of calling evidence as to what caused the power entities to make the combination without getting a licence, are asking the Court to infer that this conduct was induced by the defendants from isolated facts somewhat remote from the fact to be decided. In the circumstances, the Court is left to decide the question on a balance of probability and, when the failure to call direct evidence is unexplained, the Court cannot be completely uninfluenced by the possibility that the omission to call such evidence was due to the probability that it would be injurious to the plaintiffs' case). I have no evidence as to whether such entities knew of the patents or not. If they did know of them and nevertheless decided to use the combination without getting a licence, I can conceive that they did it
(a) because they decided that the patents were illegal,
(b) because they were of the view that they already had an implied licence,
(c) in the case of British Columbia Hydro, because it was of the view that it did not require a licence.
"I cannot conceive that, assuming these entities knew of the existence of the patents, any one of them was induced or procured by the defendant to do something knowing it was illegal. Any one of them is a giant compared with the defendant. Judicial knowledge can be taken in this modern world that they are all well serviced by lawyers and engineers. I am prepared from my experience with such organizations to say that the balance of probability is that none of them would decide knowingly to do something that it regarded as illegal. It is even less probable that they could be "induced" or "procured" against their own judgment to do something illegal by a "one man show" such as that operated by the defendants. The other alternative is that these entities did not know of the patents in suit and were moved to "innocent" infringement by misrepresentations made to them by the defendants. Having regard to the plaintiffs' position as competitors with the defendants in supplying these entities, I find it impossible to believe, in the absence of clear evidence, that they did not, in some manner, bring the existence of their patent rights to the attention of their potential customers. No matter what hypothesis one adopts as to the facts, I find it incongruous to think of the defendants as being a party to a decision by one of these power entities to "infringe" the patents in suit. I find it most improbable that the plaintiffs failed to make their patent rights known and I find it equally improbable that the defendants could induce or procure a big power company or Government agency to embark on a course of wrongdoing. This is a case quite different from those where inducing or procuring has been found to have occurred, in all of which there has been evidence showing concrete steps designed to lead the user into deciding to use a patented invention without a licence such as an indemnity agreement (Copeland-Chatterson), or a former agent of the patentee changing his sales literature to suggest that the patent rights have come to an end (Innes v. Short and Beal)."
"For the above reasons, I find that the plaintiffs have failed to establish that the defendants have induced or procured a third party to use the patented combination without a licence from the plaintiffs."
At p.88:
"The case, therefore, in my opinion, depends upon the question whether the relation of master and servant or of principal and agent, existed between the Crown and these respondents, during the process of the manufacture of the breech-action in question, and for the purposes of that manufacture; and this questions must, in my opinion, be decided by a strict and accurate application of legal principles to this particular contract, exactly in the manner as if any private person, and not a public department, had contracted with the respondents, in the terms of the documents before us, for the supply of these arms...
Here there is no order to infringe any patents; and it cannot be inferred that this would have been intended or authorized by a private person entering into his contract, the use of patented articles or patented processes being, in the ordinary course of business, a thing which may be lawfully obtained in the proper market, just as any necessary materials might be, which the manufacturer, taking the contract, might not himself have in stock.
On the question whether the defendants have exercised such influence on British Columbia Hydro or one of the Quebec power companies that they should be regarded as parties to a decision by one of those entities to use the patented combination without getting a license, I have come to the conclusion that the plaintiffs have failed to make out a case. There is no direct evidence as to what caused any of these very substantial corporations to decide to use the patentee's patented invention without getting a license...I have no evidence as to whether such entities knew of the patents or not. If they did know of them and nevertheless decided to use the combination without getting a licence, I can conceive that they did it:
(a) because they decided that the patents were illegal,
(b) because they were of the view that they already had an implied licence,
(c) in the case of British Columbia Hydro, because it was of the view that it did not require a licence.
I cannot conceive that, assuming these entities knew of the existence of the patents, any one of them was induced or procured by the defendant to do something knowing it was illegal."
At p.90
"This is a case quite different from those where inducing or procuring has been found to have occurred, in all of which there has been evidence showing concrete steps designed to lead the user into deciding to use the patented invention without a licence such as an indemnity agreement (Copeland-Chatterson), or a former agent of the patentee changing his sales literature to suggest that the patent rights have come to an end (Innes v. Short & Beal)."
**check page #from 139 to 157:
"In short does not one who knowingly and for his own ends and benefit and to the damage of the patentee induces or procures another to infringe a patent himself infringe the patent? It seems to me on principle that it comes to that."
"... For the purpose of deciding this case, I accept the law as applied by Burbidge J. in the Copeland-Chatterson case in 1906 as being the law under the present Canadian Patent Act."
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