T-167-80
Baxter Travenol Laboratories of Canada, Limited,
Travenol Laboratories, Inc., and Baxter Travenol
Laboratories, Inc. (Plaintiffs)
v.
Cutter Ltd. (Defendant)
Trial Division, Mahoney J.—Toronto, August 20;
Ottawa, August 25, 1980.
Practice — Patent infringement action — Application for
order under Rule 480 that all questions as to extent of
infringement and damages flowing or profits arising therefrom
be, after trial, subject of reference — Purpose of Rule 480 is to
minimize expense of action — Acts of infringement alleged are
sales of the device to a single purchaser — Sales contract is to
be fully carried out in 1980 — Reference not ordered because
the most economical manner of conducting the action is to
require the plaintiffs to prove their entire case during trial —
Federal Court Rules 466, 480.
Brouwer Turf Equipment Ltd. v. A and M Sod Supply
Ltd. [1977] 1 F.C. 51, applied.
APPLICATION.
COUNSEL:
Donald F. Sim, Q.C. for plaintiffs.
James D. Kokonis, Q.C. for defendant.
SOLICITORS:
Donald F. Sim, Q. C., Toronto, for plaintiffs.
Smart & Biggar, Ottawa, for defendant.
The following are the reasons for order ren
dered in English by
MAHONEY J.: This is an action for patent
infringement. When this motion was presented in
Toronto last Wednesday, I was given to under
stand that examinations for discovery were to
resume today, Monday. Accordingly, I dismissed
the plaintiffs' application, under Rule 480,' that
all questions as to the extent of infringement and
damages flowing or profits arising therefrom be
subject of a reference after the trial. It is seldom
that such an order is not made, usually, if not
invariably, on consent, and I indicated that I
would give reasons for the refusal. I should add
that in refusing the order, I did so without preju
dice to the right of either party to reapply or,
perhaps unnecessarily, the Court to make such
order on its own motion, following completion of
discovery. By Rule 466, an order under Rule 480
precludes discovery on the issues of fact subject of
the reference.
As was pointed out in Brouwer Turf Equipment
Limited v. A and M Sod Supply Limited, 2 the sole
purpose of an order under Rule 480 is to minimize
the expense of the action. It may well be that the
order will be made in almost all infringement
actions. This, however, is somewhat unusual as
such actions go.
The only acts of infringement alleged by the
plaintiffs are sales of the alleged infringing device
to a single purchaser commencing January 2,
1980. The contract under which the sales are being
made is to be fully carried out during 1980. The
parties are operating under a schedule that will
bring the action to trial in mid-November. Calcu
lation of the plaintiffs' damages and the defend
ant's profits from such sales ought to be straight
forward matters. This is a case in which, on the
Rule 480. (1) Any party desiring to proceed to trial without
adducing evidence upon any issue of fact including, without
limiting the generality thereof,
(a) any question as to the extent of the infringement of any
right,
(b) any question as to the damages flowing from any
infringement of any right, and
(c) any question as to the profits arising from any infringe
ment of any right,
shall, at least 10 days before the day fixed for the commence
ment of trial, apply for an order that such issue of fact be,
after trial, the subject of a reference under Rules 500 et seq.
if it then appears that such issue requires to be decided.
(2) An Order of the kind contemplated by paragraph (1)
may be made at any time before or during trial and may be
made by the Court of its own motion.
2 [1977] 1 F.C. 51 at page 54.
material presently before me, it seems clear that
the most economical manner of conducting the
action is to require the plaintiffs to follow the
conventional course of proving their entire case
with the risk that, if liability is not found, costs of
quantifying damages and profits will have been
thrown away, rather than to run the risk of a
second trial if liability is proved. I see no present
reason, bearing on the conduct of the action as a
whole, for ordering a reference.
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.