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 Re-Affirming
Inducement to Infringe in Canada
Scott Miller
Canadian law pertaining to patent infringement
by inducement remains consistent and controversial; consistent
in that a line of jurisprudence dating back almost 100 years
has persistently re-affirmed the Canadian test for inducement
of patent infringement; controversial in that the Canadian
legal test, unlike the U.S. and U.K. positions, may have made
it more difficult for a patent owner to convince a Canadian
court of a finding of inducing infringement.
In 2008, the Federal Court of Appeal’s decision in Charles
D. MacLennan and Quadco Equipment Inc. (“Quadco”)
v. Les Produits Gilbert Inc. (“Gilbert”) re-affirmed
the three-part test in Canada:
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; and
3. The influence must be knowingly exercised by the
seller.
The Federal Court of Appeal recognized that while in the U.S.
and U.K., the supply of an essential element intended to be
incorporated in a patented combination
(or process), when this element has no other purpose and the
infringer knows that it will be used for the purpose of
infringement, constitutes infringement, the Canadian
test requires something further.
In Quadco, the claimed invention covers two pieces, a
repositionable saw tooth and a detachable tooth holder,
designed to be attached to the periphery of a circular saw
disc. The removable tooth is attached to the tooth holder and
the tooth holder is attached to the periphery of the disc
using the method described in the Quadco patent. The tooth and
the tooth holder can be easily replaced by new inexpensive
parts. Gilbert manufactures replicas of the Quadco teeth
which can only be installed on Quadco tooth holders. Gilbert
distributes a price list indicating the item number of the
original Quadco tooth that its teeth are designed to replace.
The court held that since the very essence of the Quadco
patent is that the teeth are attached to the tooth holder in
such a way that they can separate from the tooth holder in the
course of normal wear and tear before the disc is damaged,
circular saw operators remake the patented invention every
time they use a Gilbert tooth to replace a Quadco tooth.
Therefore, the first part of the test was met.
Although the teeth manufactured and sold by Gilbert have no
use other than working the patented invention, the court
acknowledged that this was not sufficient in and of itself to
establish infringement by inducement
in Canada. However, Gilbert gave its clients a price list
that identified the Quadco teeth that corresponded to the
Gilbert replacement teeth; Gilbert was knowingly influencing
the end user purchaser to infringe the patent claims thereby
satisfying the second and third parts for inducement of
infringement.
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