Federal Court Decisions

     T-2479-96

BETWEEN:

     PAIGE INNOVATIONS INC.

     Plaintiff

     Defendant by Counterclaim

     - and -

     NOMA INC.

     Defendant

     Plaintiff by Counterclaim

     REASONS FOR ORDER

ROULEAU, J.

     This is an application by the defendant for summary judgment dismissing the plaintiff's claim of patent infringement.

     The plaintiff is the owner of Canadian Letters Patent No. 1,238,958. The patent relates to an electrical attachment plug in the form of a flat insulating plug which allows an electrical cord to lie flat against a wall or a floor in which an electrical outlet is situated. The plug allows furniture or other objects to be set extremely close to the wall or floor due to the plug's lack of protrusion, resulting in minimal obstruction to the placement or movement of furniture.

     The defendant has manufactured and offered for sale an extension cord called the Noma THIN PLUG.

     The plaintiff commenced its action in this Court by way of Statement of Claim alleging that the defendant's Noma THIN PLUG infringes its patent. The defendant now seeks an order for summary judgment dismissing the plaintiff's action on the grounds that its Noma THIN PLUG does not fall within the scope of the plaintiff's patent and, in particular, does not fall within the scope of the language used in Claim 1 or any of the other patent claims.

     After having carefully considered the evidence and the submissions of the parties, I am satisfied that the application for summary judgment should be allowed.

     Rules 432.1, 432.2 and 432.3 of the Federal Court Rules provide as follows:

432.1 (1) A plaintiff may, after the defendant has filed a defence, or earlier with leave of the Court, and at any time prior to the fixing of the time and date for trial, make a motion to a judge, with supporting affidavit material or other evidence, for summary judgment on all or part of the claim in the statement of claim.

(2) A defendant may, after filing and serving a defence and at any time prior to the fixing of the time and date for trial, make a motion to a judge, with supporting affidavit material or other evidence, for summary judgment dismissing all or part of the claim in the statement of claim.

432.2 (1) In response to affidavit material or other evidence supporting a motion for summary judgment, a responding party may not rest on the mere allegations or denials of the party's pleadings, but must set out, in affidavit material or other evidence, specific facts showing that there is a genuine issue for trial.

(2) An affidavit for use on a motion for summary judgment may be made on information and belief as provided in subsection 332(1), but on the hearing of the motion, an adverse inference may be drawn, if appropriate, from the failure of a party to provide the evidence of persons having personal knowledge of material facts.

432.3 (1) Where a judge is satisfied that there is no genuine issue for trial with respect to a claim or defence, the judge shall grant summary judgment accordingly.

(2) Where a judge is satisfied that the only genuine issue is the amount to which the moving party is entitled, the judge may order a trial of that issue or grant summary judgment with a reference to determine the amount.

(3) Where a judge is satisfied that the only genuine issue is a question of law, the judge may determine the question and grant summary judgment accordingly.

(4) Where a judge decides that there is a genuine issue with respect to a claim or defence, the judge may nevertheless grant summary judgment in favour of any party, either upon an issue or generally, unless

(a) the judge is unable on the whole of the evidence to find the facts necessary to decide the questions of fact or law; or

(b) the judge considers that it would be unjust to decide the issues on the motion for summary judgment.

(5) Where a motion for summary judgment is dismissed, either in whole or in part, a judge may order the action, or the issues in the action not disposed of by summary judgment, to proceed to trial in the usual way, but upon the request of any party, a judge may order an expedited trial under rule 327.1.

     The purpose of these provisions is to allow the Court to summarily dispense with those cases which it considers ought not to proceed to trial because there is no genuine issue raised in the pleadings. It is a determination to be made on the particular circumstances of each case and on the law and the facts submitted in support of the claim or defence. The jurisprudence has established that the test for granting summary judgment is not whether a party cannot possibly succeed at trial, but whether the case is so doubtful that it does not deserve consideration by the trier of fact at a future trial.

     Here, there is no dispute between the expert witnesses with respect to the invention claimed in the plaintiff's patent nor is the wording used in the claims unclear or ambiguous. The relevant claims read as follows:

1. A device for the attachment of an electrical appliance cord to an electrical outlet comprising a flat insulating plug of the same approximate thickness as the electrical cord, in which plug are embedded the bases of at least two electrical contact prongs, said bases being affixed within the plug to the conductor wires within the electrical cord and in which plug there is a pivoting tab whose end can be swung away from the main body of the plug to facilitate grasping for disengaging the plug from the outlet.

14. The device as claimed in Claim 1 above, in which the conductor prongs are formed as part of, but bent ninety degrees to, conductor plates within the plug.

15. The device as claimed in Claim 1 above, in which the conductor prongs are formed as part of, but bent ninety degrees to, conductor plates within the plug.

     The patent therefore generally describes a plug having a flat lower surface, a flat upper surface and peripheral side edges. The upper and lower surfaces are separated by a distance, namely the plug thickness. A cord of the same thickness as the plug enters the plug through a side edge so that the upper and lower surfaces of the cord are coplanar with the upper and lower surfaces of the plug respectively. The plug has the advantage that the cord lies flat against the wall and furniture can be placed a mere cord thickness away from the wall.

     In my view, a skilled person would understand the phrase "having the same approximate thickness" in Claim 1 of the patent, to mean that the thickness of the plug will be almost exactly the same as the thickness of the electrical cord and that any difference in thickness would be that due to ordinary dimensional tolerances in the manufacture of the two parts.

     However, on the defendant's Noma THIN PLUG, the plug is very much thicker than the electrical cord and is substantially thicker than the plug described in the plaintiff's patent. The reason the Noma THIN PLUG is not the same thickness as the cord is that it makes use of prong anchoring, which is substantially different from the plaintiff's patent, and which requires the defendant's plug to be necessarily thicker than the cord. The cord on the defendant's plug would not lie flat against an outlet or wall in which the plug was inserted at the juncture of the cord and plug, as it would on the plaintiff's plug. Nor could furniture be placed a mere cord thickness away from the outlet if the defendant's plug were used, as it could were the plaintiff's plug used.

     Furthermore, the connection of the electrical wires to the prongs in the Noma THIN PLUG does not employ bases, anchor plates or conductor plates of the type described in the plaintiff's patent. The conductor wires of the THIN PLUG are simply clamped into a very small tab on the end of the prong.

     For these reasons, it is my view that the Noma THIN PLUG does not fall within the scope of the plaintiff's patent and, in particular does not fall within the scope of the language used in Claim 1 or any of the other patent claims. The defendant's application for summary judgment dismissing the plaintiff's claim is therefore granted. Costs for the main action as well as costs for this motion to the successful defendant.

JUDGE

OTTAWA, Ontario

August 29, 1997