Date: 20070510
Docket: T-1377-04
Citation: 2007 FC 502
Ottawa, Ontario, May 10, 2007
PRESENT: The Honourable Mr. Justice Kelen
BETWEEN:
RACHALEX
HOLDINGS INC. and TYRONE NAGTHALL
Plaintiffs
and
W & M WIRE & METAL
PRODUCTS LTD. and
921410 ONTARIO LTD. cob THE DISPLAY BANK
Defendants
REASONS FOR ORDER AND ORDER
[1]
This is a motion by
the plaintiffs for summary judgment in an action for patent infringement with respect
to Canadian Patent No. 1,275,282 (the 282 patent) for a modular display fixture
that can be used to display clothing or merchandise in a retail store.
Facts
[2]
The plaintiff Tyrone Nagthall is the patentee
and registered owner of the 282 patent, which was granted on November 16, 1990
following an application filed by Mr. Nagthall on June 6, 1989.
[3]
The plaintiff Rachalex Holdings Inc. (Rachalex)
carries on business as Vogue Display. It is the exclusive licensee of all
rights under the 282 patent and claims under the patentee pursuant to section
55 of the Patent Act, R.S.C 1985, c. P-4 (the Act).
[4]
The defendants manufacture and sell display
fixtures that have all the elements of at least Claims 1 and 10 of the 282
patent. The defendants claim that they did not copy from the plaintiffs’
product and that the 282 patent is invalid. The defendants’ allege invalidity
based on the following grounds:
1.
the invention is disclosed in a prior
publication;
2.
another inventor made the invention
first; and
3.
certain claims in the 282 patent are invalid
because the terms used therein are unclear or uncertain.
Defendants’ evidence
[5]
The defendants’ evidence alleges the following:
1.
The “X-Cell system”, which has been manufactured
by Redhawk Industries Inc. (Redhawk) since 1981, is similar to or identical to
the plaintiffs’ system. The system was sold throughout the United States by Redhawk and was produced
and introduced into Canada in 1987 in the Wolco and Randy
River stores.
2.
The waterfall concept on which the plaintiffs
base the 282 patent has been in existence in Canada since the 1950s. Kember Store Metals Limited and others have
manufactured and sold the system in Canada.
3.
According to Claude Robolin, the President of
Redhawk, the X-Cell system was invented by Michele Mathiew of Deco Metaux in France during the 1970s. Mr. Robolin was
given permission from Mr. Mathiew to produce the system in the United States.
4.
The plaintiffs’ system copies the X-Cell system.
5.
The X-Cell system was advertised in the Visual
Merchandising and Store Design Magazine at page 182 in October 1989.
6.
The plaintiffs’ system has been manufactured in Canada by other companies including Concord
Metal Canada and Nu Look without any complaints or action by the plaintiffs.
7.
The X-Cell system was displayed in Europe at the
Euroshop in Germany and at Visual Merchandising shows in various cities in the United States before the plaintiffs
manufactured and filed their patent application.
8.
United States Patent No. 3,450,270, which was
issued in 1969, discloses the features in item 10 of the 282 patent.
Plaintiffs’ evidence
[6]
The plaintiffs’ evidence alleges the following:
1.
The Display Bank store at 30 Ordnance Road in Toronto sold on July 29, 2005 a “wall
track”, “outrigger track” and a bracket for use on either track. The Display
Bank refers to these and other components of this kind of display fixture as
their “track system”.
2.
The Display Bank provides drawings and
information about its “track system” on its website at www.thedisplaybank.ca.
3.
A skilled person would regard the defendants’
outrigger track as having all of the elements of Claim 1 of the 282 patent.
4.
A skilled person would regard the defendants’
wall track and bracket as having all of the elements of Claim 10 of the 282
patent.
5.
A skilled person would regard the track
waterfall and track floor rack shown on the Display Bank’s website as having
all of the elements of Claim 10 of the 282 patent.
Issue
[7]
The issue before the Court is whether the
defendants’ allegations raise a genuine issue for trial.
The test for granting summary
judgment
[8]
In Spenco Medical
Corp. v. Emu Polishes Inc., 2004 FC 963, I set out
the test for granting summary judgment as follows:
¶6 Summary
judgment is governed by Rules 213 to 219 of the [Federal Courts Rules,
SOR/1998-106], in particular, Rule 216 provides in part:
216. (1) Where on a motion
for summary judgment the Court is satisfied that there is no genuine issue for
trial with respect to a claim or defence, the Court shall grant summary
judgment accordingly.
(2) Where on a motion for summary judgment the Court is
satisfied that the only genuine issue is […]
(b) a question of law, the Court may determine the
question and grant summary judgment accordingly.
(3) Where on a motion for summary judgment the Court
decides that there is a genuine issue with respect to a claim or defence, the
Court may nevertheless grant summary judgment in favour of any party, either on
an issue or generally, if the Court is able on the whole of the evidence to
find the facts necessary to decide the questions of fact and law.
* * *
216. (1) Lorsque, par suite d’une requête en
jugement sommaire, la Cour est convaincue qu’il n’existe pas de véritable
question litigieuse quant à une déclaration ou à une défense, elle rend un
jugement sommaire en conséquence.
(2) Lorsque, par suite
d’une requête en jugement sommaire, la Cour est convaincue que la seule véritable
question litigieuse est : […]
b) un point
de droit, elle peut statuer sur celui-ci et rendre un jugement sommaire en
conséquence.
(3) Lorsque, par suite
d’une requête en jugement sommaire, la Cour conclut qu’il existe une véritable
question litigieuse à l’égard d’une déclaration ou d’une défense, elle peut
néanmoins rendre un jugement sommaire en faveur d’une partie, soit sur une
question particulière, soit de façon générale, si elle parvient à partir de
l’ensemble de la preuve à dégager les faits nécessaires pour trancher les
questions de fait et de droit.
¶7 The
Court is not to grant summary judgment where it is shown that there is a
genuine issue for trial. However, Rule 216(3) specifically permits this Court
to grant summary judgment even where there is a genuine issue for trial so long
as the Court "is able on the whole of the evidence to find the facts
necessary to decide the questions of fact and law." The Federal Court of
Appeal has recently reviewed the principles involved in granting summary
judgment in MacNeil Estate v. Canada (Indian and Northern Affairs
Department) (2004), 316 N.R. 349 (F.C.A.) and in Trojan Technologies,
Inc. v. Suntec Environmental Inc. 2004 FCA 140, [2004] F.C.J. No. 636
(F.C.A.)(QL).
¶8 In
MacNeil Estate, supra, the Federal Court of Appeal quotes the
oft-stated principles enunciated by Tremblay-Lamer J. in Granville Shipping
Co. v. Pegasus Lines Ltd., [1996] 2 F.C. 853 (T.D.) with approval, and
clarifies the role of a motions judge generally, and specifically with respect
to the application of Rule 216(3). The Court provides the following relevant
guidance in MacNeil Estate:
1. where an issue of credibility
arises from evidence presented, the case should not be decided on summary
judgment under rule 216(3) but rather should go to trial because the parties
should be cross-examined before the trial judge (see paragraph 32 of MacNeil
Estate);
2. under rule 216(3), motions
judges can only make findings of fact or law provided the relevant evidence is
available on the record and does not involve a "serious" question of
fact or law which turns on the drawing of inferences (see paragraph 33 of MacNeil
Estate);
3. Rule 216(3) permits a judge
on a motion for summary judgment, after finding that a "genuine
issue" exists, to conduct a trial on the affidavit evidence with a view to
determining the issues in the action. However, this is not always possible,
particularly where there are conflicts in the evidence, where the case turns on
the drawing of inferences or where serious issues of credibility are raised
(see paragraph 46 of MacNeil Estate);
4. Parties responding to a
motion for summary judgment do not have the burden of proving all of the facts
in their case; rather … responding parties have only an evidentiary burden to
put forward evidence showing that there is a genuine issue for trial … (see
paragraph 25 of MacNeil Estate).
Relevant legislation and rules
[9]
The relevant provisions of the Act, as it read before October 1, 1989,
are as follows:
|
2. ...
"invention" means any new and useful art, process,
machine, manufacture or composition of matter, or any new and useful
improvement in any art, process, machine, manufacture or composition of
matter;
[…]
27. (1) Subject to this section, any inventor or legal representative
of an inventor of an invention that was
(a) not known or used by any other person before he invented
it,
(b) not described in any patent or in any publication
printed in Canada or in any other country more than two years before
presentation of the petition hereunder mentioned, and
(c) not in public use or on sale in Canada for more than two
years prior to his application in Canada,
may, on presentation to the Commissioner of a petition setting out the
facts, in this Act termed the filing of the application, and on compliance
with all other requirements of this Act, obtain a patent granting to him an
exclusive property in the invention.
[…]
34. (1) An applicant shall in the specification of his invention
(a) correctly and fully describe the invention and its
operation or use as contemplated by the inventor;
(b) set out clearly the various steps in a process, or the
method of constructing, making, compounding or using a machine, manufacture
or composition of matter, in such full, clear, concise and exact terms as to
enable any person skilled in the art or science to which it appertains, or
with which it is most closely connected, to make, construct, compound or use
it;
...
(d) in the case of a process, explain the necessary
sequence, if any, of the various steps, so as to distinguish the invention
from other inventions; and
(e) particularly indicate and distinctly claim the part,
improvement or combination that he claims as his invention.
[…]
45. Every patent granted under this Act shall be issued under the
signature of the Commissioner and the seal of the Patent Office, shall bear
on its face the date on which it is granted and issued and shall thereafter,
in the absence of any evidence to the contrary, be valid and avail the
grantee and his legal representatives for the term mentioned therein.
[…]
61. (1) No patent or claim in a patent shall be declared invalid or void
on the ground that, before the invention therein defined was made by the
inventor by whom the patent was applied for, it had already been known or
used by some other person, unless it is established that
(a) that other person had, before the date of the
application for the patent, disclosed or used the invention in such manner
that it had become available to the public.
|
2. ...
"invention" Toute réalisation, tout procédé,
toute machine, fabrication ou composition de matières, ainsi que tout
perfectionnement de l'un d'eux, présentant le caractère de la nouveauté et de
l'utilité.
[…]
27. (1) Sous réserve des autres dispositions du présent
article, l'auteur de toute invention ou le représentant légal de l'auteur
d'une invention peut, sur présentation au commissaire d'une pétition exposant
les faits, appelée dans la présente loi le "dépôt de la demande",
et en se conformant à toutes les autres prescriptions de la présente loi,
obtenir un brevet qui lui accorde l'exclusive propriété d'une invention qui
n'était pas :
a) connue ou utilisée par une autre
personne avant que lui-même l'ait faite;
b) décrite dans un brevet ou dans une
publication imprimée au Canada ou dans tout autre pays plus de deux ans avant
la présentation de la pétition ci-après mentionnée;
c) en usage public ou en vente au Canada
plus de deux ans avant le dépôt de sa demande au Canada.
[…]
34. (1) Dans le mémoire descriptif, le demandeur :
a) décrit d'une façon exacte et complète
l'invention et son application ou exploitation, telles que les a conçues
l'inventeur;
b) expose clairement les diverses phases
d'un procédé, ou le mode de construction, de confection, de composition ou d'utilisation
d'une machine, d'un objet manufacturé ou d'un composé de matières, dans des
termes complets, clairs, concis et exacts qui permettent à toute personne
versée dans l'art ou la science dont relève l'invention, ou dans l'art ou la
science qui s'en rapproche le plus, de confectionner, construire, composer ou
utiliser l'objet de l'invention;
...
d) s'il s'agit d'un procédé, explique la
suite nécessaire, le cas échéant, des diverses phases du procédé, de façon à
distinguer l'invention d'autres inventions;
e) indique particulièrement et revendique
distinctement la partie, le perfectionnement ou la combinaison qu'il réclame
comme son invention.
[…]
45. Tout brevet accordé en vertu de la présente loi est
délivré sous la signature du commissaire et le sceau du Bureau des brevets.
Le brevet porte à sa face la date à laquelle il a été accordé et délivré, et
il est par la suite, sauf preuve contraire, valide et acquis au titulaire et
à ses représentants légaux pour la période y mentionnée.
[…]
61. (1) Aucun brevet ou aucune revendication dans un
brevet ne peut être déclaré invalide ou nul pour la raison que l'invention
qui y est décrite était déjà connue ou exploitée par une autre personne avant
d'être faite par l'inventeur qui en a demandé le brevet, à moins qu'il ne
soit établi que, selon le cas :
a) cette autre personne avait, avant la
date de la demande du brevet, divulgué ou exploité l'invention de telle
manière qu'elle était devenue accessible au public;
|
[10]
Also relevant to this motion is Rule 75 of the Federal
Courts Rules, which provides:
|
75. (1) Subject to
subsection (2) and rule 76, the Court may, on motion, at any time, allow a
party to amend a document, on such terms as will protect the rights of all
parties.
(2) No amendment shall be
allowed under subsection (1) during or after a hearing unless
(a) the purpose is to make the document accord with the
issues at the hearing;
(b) a new hearing is ordered; or
(c) the other parties are given an opportunity for any
preparation necessary to meet any new or amended allegations.
|
75. (1) Sous réserve du paragraphe (2) et de la règle
76, la Cour peut à tout moment, sur requête, autoriser une partie à modifier
un document, aux conditions qui permettent de protéger les droits de toutes
les parties.
(2) L’autorisation
visée au paragraphe (1) ne peut être accordée pendant ou après une audience
que si, selon le cas :
a) l’objet de la modification est de faire
concorder le document avec les questions en litige à l’audience;
b) une nouvelle audience est ordonnée;
c) les autres parties se voient accorder
l’occasion de prendre les mesures préparatoires nécessaires pour donner suite
aux prétentions nouvelles ou révisées.
|
Analysis
Whether there is a genuine issue for trial
[11]
Under Rule 216(1) of
the Federal Court Rules, I must first determine, on a motion for summary
judgment, whether the defence presents no genuine issue for trial or that the
issue is so doubtful that it deserves no further consideration.
[12]
Applying the four principles or
guidelines from the McNeil Estate case which I set out in paragraph 8 above
and after reviewing the affidavit evidence and the transcripts of
cross-examination on affidavits, I conclude that the
defendants raise the following genuine issues for trial:
1.
Was the invention described in the 282 patent already
disclosed to the public (i.e., was the invention anticipated?)
2. Did someone other than Mr. Nagthall invent the subject matter of the
282 patent before Mr. Nagthall did?
I also conclude that partial summary judgment
ought to be granted on the issues of infringement and invalidity based on
ambiguity.
Infringement
[13]
While the defendants have pleaded that they have
not infringed the plaintiffs’ patent, they have put forward no evidence on this
motion to contradict the plaintiffs’ expert evidence indicating that the system
sold by the defendants infringe claims 1 and 10 of the 282 patent. Nevertheless,
in order to find infringement, the Court must construe the patent and determine
based on the evidence available whether a skilled person would regard the
defendants’ products have all of the elements of claims 1 and 10 of the 282
patent: see Whirlpool Corp. v. Camco Inc., [2000] 2 S.C.R. 1067 at 1089.
[14]
As described in the 282 patent, the plaintiffs’
invention relates to display fixtures having standards to which brackets may be
attached. The “background of the invention” reads as follows:
Display
fixtures are commonly installed in retail stores and like establishments to
provide a storage location for merchandise and for the display of merchandise.
Typical display fixtures comprise one or more vertical standards with a variety
of hooked brackets and so forth which hang from the vertical standards. One
particular prior device is a wall shelving system which has rectangular
channels or tubes with a series of slots through which hooked brackets can be
hung. A disadvantage of this known device is that there tends to be a
considerable amount of pivotal sway of the bracket within the slot.
A
further disadvantage with the prior display fixtures having rectangular
channels with a series of slots through them is that the hooks which are hung
from these slots bear against the face of the standard containing the slots.
With this arrangement, placing a substantial load on the hooked bracket tends
to deform the face of the bracket supporting the hook.
[15]
Claim 1 of the 282 patent describes the
following embodiment of the invention:
A
standard for supporting at least one bracket of a display fixture, said bracket
having a recess therein, said standard comprising:
a plurality of pairs
of elongate sides having opposed generally flat parallel faces, at least one
side of said pairs of sides being joined along an edge to the nearest side of
the pair of sides adjacent to it; and
support elements
extending between said faces and supported by said sides;
in use, one of said
support elements being received in said recess in said bracket and said opposed
faces forming restraining surfaces acting against said bracket to limit pivotal
movement of said bracket about an axis generally perpendicular to said support
elements.
[16]
The plaintiffs provided an affidavit prepared by
Duncan Newman, a mechanical and product design engineer. Mr. Newman was
retained by the plaintiffs’ counsel to provide an opinion on the qualifications
of a skilled reader of the 282 patent and to inspect the defendants’ items and
relate their technical features to the 282 patent. In Mr. Newman’s opinion, a
skilled person would consider:
1.
the defendants’ track waterfall to be a bracket
having a recess therein;
2.
the defendants’ outrigger track as:
i.
a standard for supporting at least one bracket
of a display fixture;
ii.
having a plurality of pairs of elongate sides
having opposed generally flat parallel faces;
iii.
having at least one side of the pairs of
elongate sides joined along an edge to the nearest side of the pair of sides
adjacent to it;
iv.
having support elements extending between
opposed generally flat parallel faces of the elongate sides, supported by the
sides; and
v.
in use, one of the support elements being
received in the recess of the bracket and the opposed faces form restraining
surfaces acting against the bracket to limit pivotal movement of the bracket
about an axis generally perpendicular to the support elements.
Mr. Newman therefore concluded that a skilled
person would regard the defendants’ outrigger track as having all of the
elements of claim 1.
[17]
Mr. Newman also provided an opinion with respect
to claim 10 of the 282 patent, which describes the following embodiment of the
invention:
A
display fixture comprising:
at least one bracket
having a recess therein; and
at least one standard
having –
at least two discrete
modular members in parallel spaced relationship, defining at least one pair of
opposing parallel flat faces adapted to receive, and slightly wider apart than,
the portion of said bracket wherein is said recess,
means for holding said
members generally upright,
a plurality of
elements extending between said opposing faces, said elements being of a
dimension to be received in said recess of said bracket;
in use, said bracket
being removably supported on said standard with said portion of said bracket
having said recess being closely received between said pair of opposing faces,
and said recess receiving one of said elements.
[18]
In Mr. Newman’s opinion, a skilled person would
regard the defendants’ track waterfall and wall standard as:
1.
a display fixture comprising:
i.
one bracket having a recess in it;
ii.
one standard having:
1. at least two discrete modular members in parallel spaced
relationship that define at least one pair of opposing parallel flat faces, and
with these opposing faces adapted to receive, and slightly wider apart than,
the recess portion of the bracket;
2. means for holding the members generally upright;
3. a plurality of elements extending between the opposing faces, and
these elements are of a dimension to be received in the recess portion of the
bracket; and
iii.
when in use,
1. the bracket is removable;
2. the bracket is being supported by receiving within its recess one of
the elements that extent between the opposing parallel faces; and
3. the portion of the bracket having the recess is being closely
received between the pair of opposing parallel faces.
Mr. Newman therefore concluded that a skilled
person would regard the defendants’ wall standard and track waterfall as having
all of the elements of claim 10. Based on diagrams provided on the Display Bank
website, Mr. Newman also concluded that a skilled person would regard the track
waterfall and track floor rack shown on the website as having all of the
elements of claim 10.
[19]
Faced with no opposing evidence, I am persuaded
that based on a purposive construction of the 282 patent and the expert opinion
provided by Mr. Newman, the defendants have infringed claims 1 and 10 of the
282 patent. Summary judgment on the issue of infringement will issue
accordingly.
Defendants’ allegations of invalidity
1. Anticipation
[20]
An invention is anticipated, i.e. not novel, if
its essential features are disclosed in a piece of prior art: Diversified
Products Corp. v. Tye-Sil Corp. (1991) 35 C.P.R. (3d) 350 at 361 (F.C.A.).
[21]
Under paragraph 27(1)(b) of the Patent Act
as it read before October 1, 1989, a publication will invalidate a patent claim
if it was published in Canada or in any other country more than two years
before the filing date of the application in Canada. If, as the defendants allege, the invention described in the 282
patent was disclosed in a prior publication, the 282 patent is invalid.
[22]
Moreover, paragraph 27(1)(a) of the Patent
Act as it read before October 1, 1989 provides that if the invention was
known or used by any other person before the plaintiffs applied for the patent,
the plaintiffs are not entitled to file an application for the patent. An
important issue for trial is whether the subject of the patent was known or
used by any other person before the plaintiff invented it. Paragraph 61(1)(a)
provides that a patent would be declared invalid if the invention for which the
patent was granted had already been known or used by some other person, or that
other person had disclosed or used the invention in such a manner that it had
become available to the public. The defendants have adduced evidence purporting
to establish that a system known as the X-Cell system was in use and available
to the public before the plaintiffs obtained the 282 patent. If the expert
evidence establishes that the X-Cell system has the same essential elements as
the subject of the patent in this case, then it does not matter whether the
publication was less than two years before the application for the plaintiffs’
patent. I am satisfied that the issue of invalidity based on anticipation is a
contentious question of fact and law that ought to be considered by the trial
judge. Accordingly, the plaintiffs are not entitled to partial summary judgment
on this issue.
[23]
The date of the X-Cell publication was a
contentious issue, since the brochure itself is undated. In any event, the
brochure for the X-Cell system may not ultimately be considered by the trial
judge as publication of the invention because it does not describe the
invention in words; it only shows a pictorial representation of the system. In
any event and as stated above, the publication may be an irrelevant issue
because, pursuant to paragraph 21(1)(a) of the Patent Act, the evidence
may prove that the invention was known or used by another person before the
plaintiffs applied for the 282 patent.
[24]
At the hearing of this motion, the Court was
referred by the defendants to affidavit evidence about a US 1969 patent which appears to describe
the plaintiffs’ invention. The plaintiffs objected to this evidence on the
ground that the US patent was
not disclosed in the defence or in the defendants’ three replies to the
plaintiffs’ demands for particulars. Accordingly, I cannot consider this 1969
US patent on this motion for summary judgment.
2. Prior Inventor
[25]
Subsection 27(1) of the Act provides that a
patent may only issue to the inventor of an invention or the inventor’s legal
representative. If, as the defendants allege, Mr. Nagthall was not the inventor,
the 282 patent is similarly invalid.
[26]
The conflict in the evidence is that the
plaintiff Tyrone Nagthall says he invented the display standard and bracket
system. Philip S. David deposed that the owners of Redhawk Industries
represented themselves as the inventors. The defendants’ witness Paul Pacheco
deposed in his affidavit that the standard bracket system existed in the United States in Canada since 1983. He also deposed that the system was invented by Michele
Mathiew in France in the 1970s.
This was on the basis of information provided by Claude Robolin, the President
of Redhawk Industries. Mr. Pacheco was not cross-examined on his affidavit. The
plaintiffs argued that some of this evidence is contradictory double hearsay
evidence, but affidavit evidence on information and belief is admissible
evidence on a motion for summary judgment. The objections raised by the
plaintiffs in this regard underscore the need for a proper assessment of the
credibility and weight of the defendants’ evidence. These
evidentiary issues need viva voce testimony. While contradictory
double hearsay evidence may not be given the same weight as direct evidence,
the assignment of such weight is properly left to the trial judge.
4. Ambiguity
[27]
It will be the job of the trial judge to construe the
patent and in particular claims 1 and 10. The plaintiffs have demonstrated that
the words in these claims alleged to be ambiguous are not so. While I have had
difficulty understanding the patent, the patent is supposed to be understood by
an expert, i.e. a person well skilled in the art. We have the affidavit expert evidence
of Mr. Newman who explains the elements of the patent. The defendants did not
produce any expert evidence stating that the language of the patent claims is
ambiguous or unclear. The defendants’ allegation is based only on submissions from
counsel. Accordingly, I am prepared to grant the plaintiffs partial summary
judgment with respect to the issue of ambiguity.
3. Obviousness
[28]
The defendants also argued that the invention
described in the 282 patent was obvious. The defendants did not plead
obviousness in their defence, and I did not and cannot consider this argument
for the purposes of the motion for summary judgment. However, I consider that
obviousness would have been an important issue in this case if it had been
pleaded.
Pleadings
[29]
As noted above, I have not considered the
evidence concerning the 1969 US
patent as it pertains to the issue of anticipation or any evidence concerning
the issue of obviousness. The US patent was not pleaded as prior art, and obviousness was not
pleaded as a basis for invalidity. Since the case is proceeding to trial, the
defendants have rights under the Federal Courts Rules to obtain
amendments to the pleadings with leave. Under Rule 75, the Court may allow a
party to amend its statement of defence on terms that protect the rights of all
parties. Generally, the Court will allow the amendment that serves the interest
of justice and does not result in an injustice that is not compensable. Whether
the defendants would be entitled to amend their statement of defence and their
replies to the demands for particulars so as to refer to the 1969 US patent and the pleading of obviousness
is an issue for another judge at another hearing. At this stage, I am not
satisfied that the plaintiffs should be granted partial summary judgment on
these two issues because these issues and the evidence to be considered in
their determination are intertwined with the genuine issues for trial: who is
the real inventor of this standard and bracket display system, and was the
invention anticipated by the prior art.
Conclusion
[30]
For the reasons above, the Court will grant the
motion in part and grant summary judgment in favour of the plaintiffs on the
following issues:
1.
the defendants have infringed claims 1 and 10 of
the 282 patent; and
2.
the 282 patent is not invalid on the basis of
ambiguity.
As the defendants’ allegations of invalidity on
the basis of anticipation and prior inventorship raise genuine issues for
trial, the plaintiffs are not entitled to summary judgment on these issues.
[31]
In light of the divided success, each party will
bear its own costs of this motion.
ORDER
THIS COURT ORDERS that:
1.
This motion for
summary judgment is granted in part;
2.
The plaintiffs are
granted summary judgment in this action on the following issues:
i.
the defendants have infringed claims 1 and 10 of
Canadian Patent No. 1,275,282; and
ii.
Canadian Patent No.
1,275,282 is not invalid on the basis of
ambiguity.
3.
The defendants are entitled to proceed on the
following invalidity issues:
i.
Was the invention described in the Canadian Patent No. 1,275,282 already disclosed to the
public (i.e., was the invention anticipated?)
ii.
Did someone other than Mr. Nagthall invent the
subject matter of Canadian Patent No. 1,275,282 before
Mr. Nagthall did?
4.
Each party will bear its own costs of this
motion.
“Michael
A. Kelen”
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