Trubenizing Process Corp. v. John Forsyth, Ltd.

Trubenizing Process Corp. v. John Forsyth, Ltd.

The licence’s covenant to pay a fixed minimum monthly royalty was an independent and enforceable obligation despite subsequent invalidation proceedings affecting the patents; the May 1, 1939 participation agreement sufficiently assigned the royalties to plaintiff; and the February 12, 1940 solicitor’s letter constituted adequate statutory notice of assignment, entitling the assignee to sue in its own name.

Citation
[1943] SCR 422
Parties
Plaintiff/appellant: Trubenizing Process Corporation; Defendant/respondent: John Forsyth, Limited
Court
Supreme Court of Canada
Jurisdiction
Canada
Judgment Date
29 June 1943
Procedural Posture
Appeal; Contract and Patent Royalties / On Appeal From the Court of Appeal for Ontario to the Supreme Court of Canada — Final Judgment on Appeal
Outcome
Appeal allowed; judgment for appellant (plaintiff) and Court of Appeal reversed
Legal Topics
Royalties, License Agreement, Assignment of Choses in Action, Patent Disclaimer, Patent Validity, Notice of Assignment
Source Language
English
Contract Patent Licensing Property Assignment Civil Procedure Royalties License Agreement Assignment of Choses in Action +3 more

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Parties

Trubenizing Process Corporation

Plaintiff/appellant

John Forsyth, Limited

Defendant/respondent

Procedural Posture

Appeal; Contract and Patent Royalties / On Appeal From the Court of Appeal for Ontario to the Supreme Court of Canada — Final Judgment on Appeal

Legal Issues

  1. 1 Whether defendant remained liable for minimum monthly royalties after adjudications invalidating patents covered by the licence
  2. 2 Effect of a post‑grant disclaimer and subsequent judicial adjudications on licence obligations
  3. 3 Whether the participation agreement effectively assigned the royalties to plaintiff

Ratio Decidendi

The licence’s covenant to pay a fixed minimum monthly royalty was an independent and enforceable obligation despite subsequent invalidation proceedings affecting the patents; the May 1, 1939 participation agreement sufficiently assigned the royalties to plaintiff; and the February 12, 1940 solicitor’s letter constituted adequate statutory notice of assignment, entitling the assignee to sue in its own name.

Court Disposition

Appeal allowed; judgment for appellant (plaintiff) and Court of Appeal reversed

Orders

  • Judgment for appellant for the amount claimed with interest and costs
  • Court of Appeal for Ontario judgment [1942] O.R. 271 reversed