276 EXCHEQUER COURT REPORTS. VOL. XXI. 1022 BETWEEN: February 21 . THE DETROIT FUSE AND MANU-} PLAINTIFF; FACTURING COMPANY vs. METROPOLITAN ENGINEERING EFENDANT. COMPANY OF CANADA, LTD . , D Patent for • invention—The Patent Act, sec. 24—Surrender of Patent Re-issue—Effect of surrender on:judgment based on original patent— Contempt of Court—Practice. A judgment had been obtained in this court by consent declaring Canadian Letters-patent No. 160043, valid as between the above mentidned parties, and that the defendant had infringed certain claims thereof. The usual injunction against further infringement was also granted. Subsequently plaintiff obtained a re-issue of the patent, alleged to contain everything that the original did and something more. More than 6 years after judgment, plaintiff moved to commit the President and Mana ger of defendant company for contempt of court in disobeying the terms of the judgment. Held: 1. That as the judgment had not been served upon the officers against whom the contempt proceedings were taken, the application must be dismissed. 2. Applications for Court process involving the liberty of the subject are tak en strictissimi juris, and all conditions or requirements antecedent to the right to obtain such process must be strictly fulfilled and satisfied. 3. A judgment for infringement of a patent for invention that has been subsequently surrendered and a re-issue obtained, is inoperative and cannot be enforced by process of contempt after the surrender of the original patent. MOTION on behalf of plaintiff for an order to commit the president and the manager of the defendant for contempt of Court in disobeying a judgment pronounced in this case on the 9th October, 1915.
Vot. XXI. EXCHEQUER COURT REPORTS. 277 February 18th, 1922. , 1922 a HE DETROIT Motion now heard before the Honourable Mr. FUSE AND MANU - Justice Audette at Ottawa. FACTURIND COMPANY V. METROPOLITAN George F. Henderson, K.C., for plaintiff; - ENGINEERING COMPANY OF CANADA, R. C. H. Cassels, K.C., for defendant. LTD. Reasons for Judgment. The facts and questions of law involved are stated Audette J. in the reasons for judgment. AUDETTE, J. now, this 21st February, 1922, delivered judgment. This is a motion made on behalf of the plaintiff for an order that the President and Manager of the defendant Company be committed to jail, by reason of their contempt of the judgment pronounced herein • o n. the 9th day of October, 1915. Applications of this nature which involve the freedom and the liberty of the subjects of the Crown, are matters strietissimi juris, requiring the utmost strictness in procedure and which the Court will be jealous to observe and maintain. A preliminary step in all such proceedings is the • proof by affidavit of the service of the judgment relied upon and which is alleged to have been held in contempt. See Oswald, Contempt of Court, 210 et seq.; and casés therein cited. There is no Evidence of such service. Upon that ground and that ground alone the application must be dismissed. My 'decision in the matter needs go no further. However, I was asked by Counsel for the respective parties to pass upon the other questions raised in this
278 EXCHEQUER COURT REPORTS. VOL. 1922 argument. To exhaust all these questions would THE DETROIT carry me too far afield, but with reluctance, I will, POEM AND MANII- however, accede to the desire of both parties, and RAMMING COMPANY express an opinion upon the question of the re-issue V. METROPOLITAN of the Patent,—a question of interest and moment ENGINEERING COMPANY to the parties,--with the view of avoiding further costs OF CANADA, LTD' and multiplying litigation. (Dudgeon v. Thomson (1). Reasons for Judgment. The judgment a quo is one obtained by consent Audette J. whereby it was, inter alia, held that the Canadian Letters Patents of Invention No. 160,043 were good, valid and subsisting as between the parties herein, and that the defendant infringed claims 7, 8, 10, 11, 12, 14 and 15 thereof and finally granting the usual injunction. However, since the pronouncing of this judgment, which does not appear to have been served upon the defendant, the plaintiff has sought and obtained a re-issue of the above mentioned patent. Section 24 of The Patent Act, dealing with re-issue, reads as follows, viz :— "24. Whenever any patent is deemed defective or inoperative by reason of insufficient description or specification, or by reason of the patentee claiming more than he had a right to claim as new, but at the same time it appears that the error arose from inadvertence, accident or mistake without any fraudulent or deceptive intention, the Commissioner may, upon the surrender of such patent and' the payment of the further fee hereinafter provided, cause a new patent, in accordance with an amended description and specification made by such patentee, to be issued to him for the same invention, for any part or for the whole of the then unexpired residue of the term for which the original patent was, or might have been, granted. (1) [1877] L.R. 3 A.C. 34.
VoL. XXI. EXCHEQUER COURT REPORTS. "2. _ In the event of the death of the original patentee or of his having assigned the patent, a like right1.I3EUED shall vest in his assignee or his legal representatives. "3. Such new patent, and the amended description and specification, shall have the same effect in law, METa on the trial of any action thereafter commenced for COnx any cause subsequently accruing, as if. the same had L. been originally filed in such corrected form before ty the issue of the original patent. "4. The Commissioner may entertain separate applications, and cause patents to be issued for distinct and separate parts of the invention patented, upon payment of the fee for a . re-issue of such re-issued patents." From the perusal of that section it will be seen that Patent No. 160,043, mentioned in the said judgment has _been surrendered' and that a new has been issued with a description and . specification materially , amended and changed. The language is different, the distribution of the claims is different and there is something added thereto. Counsel for the plaintiff in answer to questions by the Court stated, in analysing the new patent, that it contained everything that was in the original patent and a little more; that the re-issue embodied the claims or clauses of the original patent, but numbered and distributed in a different way, not word for word the same, but covering everything. Giving effect to what appears to be the plain language of the statute, the new, the re-issued patent would seem to have taken the place of the original one which from the issue of a new patent disappears and is replaced by the re-issue. The original patent being extinguished from the date of the ment that was obtained by consent upon the original 279 1922 DE TROIT F AND MANv-+AG TURIN C i COMPANY E o N ro ax L rr I t; T El A uN N a O P F A CA N NA Y DA , a m gt` Audette J. patent, . re-issue, the judg
280 EXCHEQUER COURT REPORTS. VOL. XXI . 9122 could only be said to be an accessory to such patent. THE DETROIT FUSE AND If the original patent is the principal,—the objective MANE.- FACTURING of the judgment— the judgment, being only an acces- COMPANY V. sory thereto, must disappear and be extinguished METROPOLITAN when the patent goes and must thereby become ENGINEERING COMPANY OF CANADA, inoperative, therefore a committment for want of LTD. observance of the same could not at this stage issue. R Ju e d as g o m n e s n fo t. r The general similarity of the patent law between Audette J. the Canadian and the American Statutes,—as stated by Patterson, J. in Hunter v. Carrick (1), will be a justification to seek support upon that ground from the American authorities. In re Allen v. Culp (2) it was held that "when a patent is thus surrendered (for a re-issue) there can be no doubt that it continues to be a valid patent until it is re-issued, when it becomes inoperative." See also Walker on Patent, 3rd Ed. 214 et seq. The same principle obtains in England. "It is a complete answer", says .Frost, Patent Law, 2nd Ed. p. 597, "to a motion for committal for breach of a perpetual injunction restraining infringement of a patent to show that since the injunction was granted, the . specification has been amended and so the injunction has become inoperative." See also Dudgeon v. Thomson (3). The motion is dismissed with costs. Judgment accordingly. (1) [1884] 10 O.A.R. 449, at p. 468; (2) (1897] 166 U.S. 501, at p. 505; (3) [1877) L.R. 3 A.C. 34.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.