532 EZCIiEQUER COURT REPORTS. [ VOL. IL 1887 J. A. WRIGHT AND W. C. HIRBAR,D...PET1TioNE11s; May O. AND THE BELL TELEPHONE COM— 7 RF PANY OF CANADA } sPONUENTS. The Patott Act (R. S. C. c. 61 s. 37 )—Construction--Importation of invention in parts. To bring an importation by the patentee within the prohibition of section 37 of The Patent Act (R.S.C. c. 61) it is necessary that it consist of, or affect, the particular invention in respect of which the patent has been granted. THIS is an application by the petitioners for a declaration that three patents for telephones hereinafter mentioned, granted to Thomas Alva Edison and now owned by the respondent company, are void, because of the importation thereof after the expiration of the twelve months from the date of the granting of such patents respectively (1). (I) REPORTER'S NOTE. — The cause it to be made for him, at a following are the provisions of reasonable price, at some mannfac-The Patent Act (R,S.C. c. 61.) tory or establishment for making governing the case. or constructing it in Canada,—and Sec. 37.—Every patent grant- that such patent shall be void if, cd, under this Act, shall be subject after the expiration of twelve and be expressed to be subject to months from the granting thereof, the condition that such patent and the patentee or his legal represen-all the rights and privileges there- tatives or his assignee for the whole by granted shall cease and deter- or a part of his interest in the pa-mine, and that the patent shall be tent imports or causes to be im-null and void at the end of two ported into Canada, the invention years from the date thereof, unless for which the patent is granted ; the patentee or his legal represen- and if' any dispute arises as to tatives, within that period, coil- whether a patent has or has not menee, and, after such commence- become null and void under the ment, continuously carry on in provisions of this section, such dis-Canada the construction or manu- pute shall be decided by the Alin-facture of the invention patented, ister or the deputy of the Minister in such manner that any person of Agriculture, whose decision in desiring to use it may obtain it, or the matter shall be final :
.A.PPENDIX No. 2. 553 Of the impeached patents, No. 8,026 was issued on 1887 the 20th of October, 1877. and Nos. 9,922 and 9,923 onTit a we the 1st May, 1879. The three patents, which, for con- THE BELT, venience, are referred to as the Edison patents, wereTELEPHoNE assi g d n e t o the Gold and Stock Teleg ~ ra ph C o m pan y on COMPaxr orCAnvAr~< ►. the 12th of November, 1880 ; by the latter company to npciKt.,n or the Canadian Telephone Company on the 14th Decem- 91.11;g' ber, 1880, and by the Canadian Telephone Company to the respondent company on the 6th of July, 1882. March 2nd, 3rd and 4th, 1887. Christie, Q.C., Archibald, Q. C. and Roaf for petitioners ; Lash, Q.C. for respondents. The HONOURABLE JOHN CARLING, Minister of Agriculture, now (May 9th, 1887) rendered his decision. The petition contained a charge of failing to manufacture, but petitioners' counsel in opening the case stated that they relied solely on the importation contrary to law, and no evidence of failure to manufacture was offered. 2. Whenever a patentee bas been not exceeding one year, beyond unable to carry on the construe- the twelve months limited by this tion or manufacture of his inven- section, during which he may in-tion within the two years herein- port or cause to be imported into before mentioned, the commission- Canada the invention for which er may, at any time not more than the patent is granted, if the paten-three months before the expiration tee or his legal representatives, or of that term, grant to the patentee assignee for the whole or any part an extension of the term of two of the patent, show cause, satisfac-years on his proving to the satis- tory to the commissioner, to war-faction of the commissioner that rant the granting of such exten-he was, for reasons beyond his sion ; but no extension shall be control, prevented from comply- granted unless application is made ing with the above condition : to the commissioner at some time 3. The commissioner may grant within three months before the to the patentee, or to his legal re- expiry of the twelve months presentatives or assignee for the aforesaid, or of any extension whole or any part of the patent, thereof. — 35 V. c. 26 s. 28 ;-38 an extension for a further term V. c. 14 s. 2 ;-45 V. c. 22 s. 1.
554 EXCHEQUER COURT REPORTS. [VOL. IT. 1887 At the conclusion of the evidence submitted by the WRI1GHTT petitioners its effect was discussed by counsel for the v respondent and petitioners, respectively, and I decided THE BELL TELEPHONE to consider the case as then presented on the under- COMPANY OF CANADA. st andnig b t hat, if I came to the conclusion that it was sufficient to justify a declaration that the impeached nrrlkrun or c;;I g, patents were void, I would afford the respondent company an opportunity of meeting such case by any evidence which they might desire to bring forward. No act of importation by any person or company other than the respondent company was complained of, but, as it appeared from the evidence that the respondent company used the patents of the Canadian Telephone Company by their license and consent, such patents would be affected by acts of importation by the respondent company while the title was yet in the Canadian Telephone Company. In other words they would be affected by any such importation after the 14th of December, 1880. There was evidence of the importation by the respondent company during the years 1880, 1881, 1882, 1883, 1884 and 1885 of Blake transmitters, carbon buttons, carbon brasses, boxwood pieces, strips for dampening springs, strips for carbon springs, german silver springs, transmitter boxes, backboards and boxes, locks, keys, screws, screw cups, normal pressure springs, gongs, castings, extension bells, batteries, zincs, braided wire, spiral cords, insulators, magneto-bells and prisms for batteries. The value of these importations in the whole amounted to many thousand dollars. For the respondents it was contended :- 1st. That the articles imported were all articles of commerce that any one could import, and that there was, therefore, no importation contrary to law : 2nd. That the articles imported were not used in the construction of the Edison inventions but of the commercial instrument made and used by the company.
APPENDIX No. 2. 555 On further consideration it appeared to me, without 1587 coming to a conclusion as to whether or not a case had w i ,; ceT been made out for avoiding the Edison patents, that it T EBELL was desirable to hear what evidence the respondent TELEPHONE COMPANY com p p an y y chose to offer, and to learn what their t p ositlbn of CANADA, was in respect to the relation between the commercial nee ,o„ instrument used by them, and the Edison patents. ''̀ li ` M ` ' The parties were notified accordingly, and the hearing of the application was resumed on the sixth instant, and continued on the seventh. The respondent company examined Mr. Lockwood, an expert, at considerable length, and from his evidence it appeared that the commercial instrument made and used by the company as a telephone does not embody, and is not an infringement of, any of the elements or claims of any one of the three Edison patents. It was clear from the evidence, and it was admitted, that the articles imported were used in the. construction or manufacture of the commercial instrument used by the company, and, therefore, if a conclusion were reached that this instrument did not embody and would not, if manufactured by any one, constitute an infringement of the elements or claims of the Edison patents, it would become unnecessary to consider the question as to whether or not the importations complained of were importations of articles of commerce, or, taking them as a whole, of the commercial instrument used by the company. Mr. Sise, the vice-president of the company, was therefore asked to state the position of the company with respect to this question, and having taken time to consider, Mr. Lash, for the company, said that the position of the company was that put forward in Mr. Lockwood's evidence, namely, that the commercial instrument which we had before us, and which was one of the telephones commonly used by the company,
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556 EXCHEQUER COURT REPORTS. I. VOL. I[. 1S87 did not embody any of the elements or claims of the we HT Edison patents, and that its manufacture or use by v. any one would not constitute an infringement of any THE BELL TELEPHONE one of the Edison patents, and that so far as the latter COMPANY OF CANADA. wire concerned, and but for other paten h t e s ld b y the Deci-ion of company, such an instrument would be free to the " M 3. . 1 1 A " . g ' P ublic. After some consideration and discussion, the counsel for the petitioners decided not further to controvert the position taken by the company with respect to the relation of the commercial instrument or telephone to the Edison patents. In view, therefore, of the statement made by the company by its counsel, and being myself of opinion that the weight of evidence compels me to that conclusion, I have decided, and do now decide, that the commercial instrument used by the respondent company as a telephone does not embody the elements or claims of any of the Edison patents, and that its use or manufacture by any one would not constitute an infringement of the Edison patents, which would therefore not be affected by the importations complained of, whatever view might be taken of the effect of such importations. For these reasons and on these grounds, I dismiss the petition, and declare that, notwithstanding anything that has been shown to me on this application, the three patents for telephones hereinbefore mentioned, granted to Thomas Alva Edison, and now owned by the respondent compan y, are not void.
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.