T-1760-95
MONTREAL, QUEBEC, THIS 21st DAY OF MARCH 1997
PRESENT: RICHARD MORNEAU, ESQ., PROTHONOTARY
BETWEEN:
CONSTANTINOS J. JOANNOU
Plaintiff
(Defendant by Counterclaim)
AND
ENGINEERING DYNAMICS LTD.
Defendant
(Plaintiff by Counterclaim)
ORDER
The plaintiff's statement of claim is struck out for want of jurisdiction ratione materiae of this Court.
Costs to the defendant.
Richard Morneau
Prothonotary
T-1760-95
BETWEEN:
CONSTANTINOS J. JOANNOU
Plaintiff
(Defendant by Counterclaim)
AND
ENGINEERING DYNAMICS LTD.
Defendant
(Plaintiff by Counterclaim)
REASONS FOR ORDER
RICHARD MORNEAU, ESQ.,
PROTHONOTARY:
This is a motion by the defendant (plaintiff by counterclaim), Engineering Dynamics Ltd. (hereinafter Dynamics), for an order pursuant to rules 401 and 419(1)(a) of the Federal Court Rules dismissing the within action of the plaintiff (hereinafter Joannou) on the ground that this Court lacks the jurisdiction ratione materiae to decide the true nature of the dispute raised by Joannou in his statement of claim.
As an alternative remedy, Dynamics requests an order pursuant to section 50 of the Federal Court Act, R.S.C. 1985, c. F-7, as amended, directing that the proceedings in this matter be stayed pending the disposition of an action for a declaration of ownership of, inter alia, the patents-in-suit commenced by Dynamics in Ontario Court (General Division) No. 97-CV-311-CM.
Background
On December 10, 1993, Dynamics commenced an action against Joannou under Federal Court File No. T-2910-93. The relief claimed therein was for, inter alia, a declaration of ownership of the patents-in-suit.
On October 17, 1996, pursuant to a motion presented by Joannou therein, I ordered the striking out of Dynamics' statement of claim for want of jurisdiction of this Court since, as I observed in my reasons, I was of the view that before Dynamics could be declared owner of the patents-in-suit, it had to obtain a declaration of invalidity of two contracts and that such a remedy was not within the jurisdiction of this Court but within that of a provincial Court.
One of those contracts, namely a contract dated July 28, 1987 (produced herein as Exhibit B to the affidavit of a R.M. Walker), is brought into play by Dynamics as a ground of defence against the allegations of infringement found in Joannou's statement of claim. In paragraphs 5 and 9 of its statement of defence, Dynamics takes the position that by virtue of the said contract, it has a license to work the subject matter of one of the patents-in-suit, namely Canadian Patent 1,175,754, and is the owner, by assignment, of the other patent-in-suit, namely Canadian Patent 1,291,520.
Analysis
As a first remedy in his present statement of claim, Joannou claims an injunction restraining Dynamics from infringing his rights as patentee and owner of patents 1,175,754 and 1,291,520.
As Dynamics relies, and has relied at all relevant times, on a contract which recognizes it as a licensee and assignee of the patents-in-suit, I believe that this contract must first be invalidated if Joannou is to obtain a remedy which would follow a recognition of infringement by Dynamics of his rights in the patents-in-suit.
I am at a loss to see why the reasoning followed in my decision dated October 17, 1996 should not be adapted to the dynamic brought forward here by Dynamics. Apart from the fact that the parties are acting here in a different capacity, the rest of the scenario is, mutatis mutandis, the same.
Joannou must therefore seek the invalidation of the contract dated July 28, 1987 in the Ontario Court (General Division) as our Court lacks jurisdiction for such purpose. One must bear in mind here that the Ontario Court has jurisdiction, by virtue of section 54 of the Patents Act, R.S.C. 1985, c. T-10, to deal also with the remedies presently sought by Joannou once it will have ruled on the possible invalidity of the aforementioned contract.
The Court must accordingly allow this application by Dynamics regarding a lack of jurisdiction of this Court and thus strike out Joannou's statement of claim. Given this conclusion, there is no need to consider the stay requested as an alternative.
I accept Dynamics' position that it saw the relevancy of presenting the motion at bar only after appreciating fully the impact of my decision dated October 17, 1996. Consequently, I do not consider that this application was made belatedly. Thus, Dynamics should be granted its costs on this motion.
An order will issue in accordance with the present reasons.
Richard Morneau
Prothonotary
Montreal, Quebec
March 21, 1997
T-1760-95
CONSTANTINOS J. JOANNOU
Plaintiff
ENGINEERING DYNAMICS LTD.
Defendant
REASONS FOR ORDER
FEDERAL COURT OF CANADA
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT NO.:
STYLE OF CAUSE:
T-1760-95
CONSTANTINOS J. JOANNOU
Plaintiff
AND
ENGINEERING DYNAMICS LTD.
Defendant
PLACE OF HEARING:Ottawa, Ontario
DATE OF HEARING:March 6, 1997
REASONS FOR ORDER BY:Richard Morneau, Esq.,
Prothonotary
DATE OF REASONS FOR ORDER:March 21, 1997
APPEARANCES:
Me Bob H. Sotiriadis for the Plaintiff
Mr. Mitchell B. Charness for the Defendant
SOLICITORS OF RECORD:
Me Jacques A. Léger/Me Bob H. Sotiriadis for the Plaintiff
Léger Robic Richard
Montreal, Quebec
Mr. Marcus T. Gallie/Mr. Mitchell B. Charness for the Defendant
Kent & Edgar
Ottawa, Ontario