Quadco Equipment Inc. v. Timberjack Inc., 2002 FCT 528

Date: 20020508

Docket: T-1388-98

Neutral Citation: 2002 FCT 528

BETWEEN:

                       QUADCO EQUIPMENT INC.

                                                                                 Plaintiff

                                       - and -

                               TIMBERJACK INC.

                                                                             Defendant

                 REASONS FOR ORDER AND ORDER

HENEGHAN J.

INTRODUCTION

[1]    Quadco Equipment Inc. (the "Plaintiff") is the owner of Canadian Letters Patent 2,084,013 (the "'013 Patent") and in this action, alleges an infringement by Timberjack Inc. (the "Defendant") of the said '013 Patent. Specifically, the Plaintiff alleges that three models of saw teeth manufactured and sold by the Defendant infringe claims 1 and 5 of the '013 Patent. In its Statement of Defence, the Defendant denies any infringement and in its Counterclaim, seeks a declaration that each claim of the '013 Patent is invalid and void.

[2]    In the present motion, the Defendant seeks the entry of summary judgment dismissing the Plaintiff's claim and granting the Defendant's counterclaim.

FACTS

[3]    The Plaintiff is a corporation existing under the laws of Quebec. It holds the '013 Patent, entitled "saw tooth for circular saw", issued November 1, 1994 by the Canadian Patent Office. The patent relates to a detachable saw tooth for circular saws used in the lumber industry for felling trees.

[4]    The Defendant is a corporation existing under the laws of Ontario, and is engaged in the manufacture and sale of forest equipment. It denies any infringement of the '013 Patent and asserts that the claims in issue are not valid.

[5]    The '013 Patent lists Mr. Charles MacLennan as the inventor of the saw teeth at issue in this motion, and claims the use of straight edges on a rotatable saw tooth comprised of four v-shaped cutting surfaces. The tooth can be made of a single material or have hardened inserts affixed to it from the cutting edges.

[6]                 The Canadian filing date of the '013 Patent is November 27, 1992. A priority date from the corresponding United States Patent Application 958,790 of October 9, 1992 is claimed.

ISSUES

[7]                 Two issues arise from this application for summary judgment:

           1)         Is there any genuine issue for trial about the validity of the '013 Patent?

           2)         If the '013 Patent is valid, is there any genuine issue for trial that any of the Defendant's saw teeth infringe the '013 Patent?

DEFENDANT'S SUBMISSIONS

[8]                 The Defendant submits that for the court to determine whether there is a genuine issue for trial, it must find that there is any genuine issue of fact which requires an additional credibility assessment opportunity provided by a trial. If there are no issues of fact that require the assessment of credibility, the court should grant summary judgment. Here the Defendant relies on Guarantee Company of North America v. Gordon Capital Corp. (1999) 178 D.L.R. (4^th) 1 at 10.

[9]                 The Defendant argues that the claims of the '013 Patent that have been allegedly infringed are not valid and the Plaintiff has no cause of action against the Defendant. More particularly, the Defendant says that Mr. Charles McLennan, president of the Plaintiff and the inventor of the saw tooth, has admitted in discovery that in April 1992, he made available to the public saw teeth falling within the claim of the '013 Patent. Furthermore, Mr. McLennan has said that the Defendant advertised these teeth in a June 1992 trade news bulletin.

[10]            Consequently, the Defendant argues that there was prior disclosure of the saw teeth and the Plaintiff's claims are not valid. Alternatively, the Defendant argues that its saw teeth are different from those claimed by the Plaintiff. The Defendant altered the design of its saw teeth after the initial design referred to above. The Defendant says that its saw teeth do not have straight edges and it is an essential element of each of the claims in the '013 Patent that the cutting edges of the saw teeth be "straight". The Defendant argues that the Plaintiff admitted in discovery examination that none of the subject saw teeth produced by the Defendant have straight edges.

[11]            The Defendant had drawn the subject matter of the '013 Patent and made it public even before Mr. McLennan, president of the Plaintiff, had conceptualized the invention. The Defendant offered its saw tooth for sale at a trade show in April 1992. This fact, together with its trade brochure, constitutes disclosure of the alleged invention to the public in such a manner that the subject matter became available to the public. An article that is alleged to infringe a claim of a patent invalidates the claim if it is shown that the allegedly infringing article predates the invention claimed in the patent; see Domtar Limited v. MacMillian Blodel Packing Limited (1977), 33 C.P.R. (2d) 182 at pages 188-189.

[12]            The Defendant argues that straight edges are an essential element of each claim of the '013 Patent. None of the allegedly infringing teeth have straight edges, according to the Defendant. Relying on Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R. 1024, the Defendant submits that since the allegedly infringing article lacks the essential characteristics of straight edges, it does not infringe the Plaintiff's claims.

PLAINTIFF'S SUBMISSIONS

[13]            The Plaintiff submits that the Defendant has failed to provide satisfactory proof that there is no arguable issue for trial. The Plaintiff argues that there are still many problematic evidentiary issues which have not been resolved, particularly in relation to the argument that the claim was made public prior to the publication of the patent. It says that the affidavit evidence presented by Mr. Wildey, upon which the Defendant relies as evidence for its claim of prior access by the public, is "imprecise".

[14]            The Plaintiff also argues that the evidence that Mr. McLennan failed to establish the precise dates. In brief, the Plaintiff argues that there is insufficient reliable evidence to support the argument of the Defendant and as a consequence, all evidence should be reviewed by the court to establish the precise dates.

[15]            In response to the issue of the "straight" edge, the Plaintiff submits that upon comparison of the figures, there is a "sharp" edge with both designs of teeth and there is no obvious variation in the line. In the present case, the idea of a "straight" edge, in comparison to a "curved" edge, must be interpreted not only by the function of the patent but equally by the function of prior art. In other words, the Plaintiff argues that it is necessary to look not only at the designs in comparison with each other but also to examine whether the Defendant's saw teeth are original in relation to prior art.

[16]            In short, the Plaintiff argues that the court must hear expert evidence in order to determine whether the saw teeth bear a "straight" edge.

ANALYSIS

[17]            In this motion for summary judgment, the key question for determination is whether there is a genuine issue for trial; see Feoso Oil Ltd. v. "Sarla" (The), [1995] 3 F.C. 68, 184 N.R. 307 (C.A.); Paige Innovations Inc. v. Noma Inc. (1997), 77 C.P.R. (3d) 194, 135 F.T.R. 277 (T.D.).

[18]            In the present motion, no affidavit evidence was provided by the Plaintiff. The evidence tendered on behalf of the Defendant consists of the affidavit of Mr. Wildey together with attached exhibits, and extracts from the discovery examination of Mr. McLennan, together with exhibits. The exhibits to the discovery examination included certain answers provided by the Defendant to the Plaintiff, in the context of patent infringement litigation undertaken in the United States of America.

[19]            The first argument presented by the Defendant in support of this motion is a technical one based upon several provisions of the Patent Act, R.S.C. 1985, c. P-4, as amended. In particular, the Defendant alleges prior public disclosure of the alleged invention and relies on section 28.2(1)(b) of the Patent Act, supra and argues that the exception provided in section 28.2(1)(a) does not apply in this case.

[20]            The Defendant says that the public availability for sale of its 4-V shaped tooth at the Tifton Trade Show in April 1992, followed by publication of the trade brochure in June 1992, constitutes disclosure to the public of the Plaintiff's alleged invention prior to actual invention by the Plaintiff.

[21]            The difficulty with these allegations is the state of the evidence. The evidence submitted by the Defendant is not conclusive on the issue of prior publication. That evidence consists primarily of statements made by Mr. McLennan upon discovery and certain interrogatories prepared by the Defendant in response to the Plaintiff in the context of litigation in the United States of America.

[22]            Both the evidence on discovery and the interrogatories are similar in nature; they are answers given under oath in legal proceedings but without the benefit of cross-examination. They represent a one-sided view. In my opinion, there are questions as to the sufficiency and reliability of this evidence. Both the issues of sufficiency and reliability would be better tested following a trial in which the credibility of witnesses would be assessed by the trial judge.

[23]            The presentation of a technical argument is insufficient, in the absence of conclusive and categorical evidence, to merit the entry of summary judgment. I conclude that such evidence has not been produced by the Defendant in support of this motion.

[24]            With respect to the second ground for the motion, that is non-infringement by the Defendant, that issue turns on the characteristics of the saw tooth. According to the Defendant, the claim set out in the '013 Patent specifically and clearly referred to a saw tooth with a "straight" edge. The Defendant alleges that it has presented clear and convincing evidence that the Plaintiff has acknowledged that the Defendant's saw teeth do not have "straight" edges.

[25]            In my opinion, the condition of the edge of the saw tooth is a matter of fact. It must be established by evidence. I am not persuaded that the evidence presented to date by the Defendant meets the test of showing that there is no genuine issue for trial. The Defendant did not file any opinion evidence.

[26]            In the result, I am not satisfied that the Defendant has demonstrated that in this case, there is no genuine issue for trial.

[27]            In my opinion, the evidence presented by the Defendant is inconclusive on the issue of prior disclosure and the effect of section 28.2 of the Patent Act, supra, and concerning the physical characteristics of the tooth to show that there are not genuine issues for trial.

[28]            The motion is dismissed. The costs of this motion are reserved to the Trial Judge upon the ultimate disposition of this action.

                                                  ORDER

The motion is dismissed. The costs of this motion are reserved to the Trial Judge upon the ultimate disposition of this action.

                                                                                            "E. Heneghan"                        

                                                                                                   J. F. C. C.

OTTAWA, Ontario

May 8, 2002