Date: 20070530
Docket: T-2108-03
Citation: 2007 FC 574
Ottawa, Ontario, May 30, 2007
PRESENT: The Honourable Madam Justice Tremblay-Lamer
BETWEEN:
M.K.
Plastics Corporation
Plaintiff
and
Plasticair Inc.
Defendant
REASONS FOR JUDGMENT AND JUDGMENT
INTRODUCTION
This is a patent infringement action
commenced by M.K. Plastics Corporation (the plaintiff) against Plasticair
Inc. (the defendant), whereby the plaintiff claims an injunction and damages or
accounting of profits, as it may elect, against the defendant, as well as
punitive damages for deliberate infringement.
[1]
A
counterclaim has been brought by the defendant against the plaintiff for trade
libel, unfair trade practices and inducing breach of contract. The defendant claims
damages as well as a declaration that the patent in issue is invalid, and seeks
an order directing the Commissioner of Patents (the Commissioner) to impeach
the patent.
BACKGROUND
[2]
Both
parties are Canadian companies that manufacture and sell a range of industrial
and commercial fans and blowers.
[3]
In
the early 1990’s, Minel Kupferberg developed an apparatus intended to discharge
exhausted fumes under the trademark “Axijet”. He filed an application for patent entitled
“Ventilateur d’Extraction/Exhaust Fan Apparatus” on January 13, 1995, claiming
priority from a U.S. application filed on
November 15, 1994 (08/340,894). Mr. Kupferberg is named as its inventor. The
patent specification was published on May 16, 1996.
[4]
On
April 20 1999, the Commissioner granted Mr. Kupferberg a patent for the apparatus
under serial number 2,140,163 (the “163 patent”). The latter licensed all
the rights under the ‘163 patent to the plaintiff, who has been manufacturing
and selling the Axijet since 1995, and has marketed it in Canada, the United States,
Europe and Asia.
[5]
The
plaintiff alleges that the Axijet significantly increases the primary
discharge of exhausted fumes in comparison with regular blowers and stacks, by
discharging fumes at high velocity and drawing in greater amounts of outside
air to further dilute the exhaust fumes. The resulting plume is equal in height
or greater than that achieved in higher conventional discharge stacks, and
produces greater dilution by drawing in more outside air. This is useful as
noxious fumes must be exhausted at a sufficient height above the rooftop of a
building to avoid being re-ingested into the same or adjoining buildings.
[6]
In
March 2001, Mr. Kupferberg and the plaintiff became aware that a corporation,
Engineered Products, based in Puerto Rico had installed a blower similar to the
Axijet in San German, Puerto Rico. Swabey Ogilvy Renaud, patent agents,
wrote to the company on behalf of the plaintiff to advise that the blower
infringed the US Patent corresponding to the Canadian ‘163 patent.
[7]
Swabey
Ogilvy Renaud received two letters of response on behalf of the defendant in
April 2001, to the effect that the defendant is a Canadian manufacturer of fan
equipment and supplied equipment to Engineered Products. It acknowledged its awareness
of the ‘163 patent and noted that while its device was similar to that patent,
it would not have infringed due to significant differences between the two.
[8]
The
defendant manufactures and sells its exhaust fan apparatus under the registered
trademark name “Skyplume”, either as an integral unit with a centrifugal fan,
or as individual components that may be used with either a
centrifugal or axial fan.
[9]
Until
April 2003, Mr. Kupferberg licensed all the rights under the ‘163 patent to the
plaintiff. In April 2003, he assigned all his rights, titles and interests in
the Axijet and the ‘163 patent to the plaintiff.
[10]
Further
to the Bifurcation Order issued by this Court on July 4, 2005, the present
decision is limited to determining the plaintiff’s entitlement to the claimed
remedies, as well as deciding liability with regards to the defendant’s
counterclaim. The quantum of any applicable remedies will be determined on a
separate reference pursuant to Rule 107 of the Federal
Courts Rules, 1998, SOR/98-106.
[11]
While
there are five claims in the
‘163 patent,
both parties agree that only claims 1 and 2 are at issue in the present action.
[12]
The
first claim reads as follows:
“An exhaust fan apparatus
comprising a housing having an upper portion and a lower portion, wherein the
lower portion included a centrifugal fan scroll casing, the scroll casing
having parallel side walls, a shaft, a first axis normal to the side
wall and mounting an impeller for rotation therewithin, motor means for driving
the shaft, an inlet port provided axially of the first axis on a side wall of
the casing, a discharge port extending from the scroll, a first tubular portion
communicating with the fan discharge port and a second tubular portion
extending upwardly from the first tubular portion, the second tubular portion
being bifurcated to provide at least two passageways having generally parallel
axes normal to the first axis, and wherein the axes of the passageways lie in a
plane which is parallel to the first axis.”
[13]
The
second claim of the
‘163 patent reads
as follows:
“An exhaust fan apparatus as
defined in claim 1, wherein the second tubular portion includes a pair of
spaced-apart outlet ports corresponding to the two passageways, and a ring
surrounds the second tubular portion at a level corresponding to the outlet
ports to form an annulus therewith, whereby ambient air is induced through the
annulus to mix with gases exhausting from the passageways.”
[14]
The
crux of the dispute between the parties with regard to claim construction centres
on four elements: “the first tubular diffuser portion” (the diffuser);
“the second tubular portion being bifurcated to provide at least two
passageways” (the bifurcation of the nozzle, or the bifurcated nozzle; notably
whether this refers to a physical separation in the nozzle, or alternately, a
bifurcation of the resulting airflow), “wherein the axes of the passageways lie
in a plane which is parallel to the first axis” (the orientation) and finally,
“a ring surrounds the second tubular portion at a level corresponding to the outlet
ports to form an annulus therewith, whereby ambient air is induced through the
annulus”(the windband).
ISSUES
[15]
The
following issues are raised in this proceeding:
1.
What
construction ought to be given to claims 1 and 2 of the ‘163 patent, and has the
defendant infringed them?
2.
Is
the ‘163
patent valid?
3.
Has
the plaintiff committed unfair trade practices or trade libel?
ANALYSIS
CONSTRUCTION OF THE
PATENT
Principles
[16]
The
first step in analyzing validity and infringement issues in a patent suit is to construe
the claims of the patent.
[17]
The
principles to be applied by the Court in construing patent claims were
reiterated by the Supreme Court in Whirlpool Corp. v. Camco
Inc., [2000] 2 S.C.R. 1067, 2000 SCC 67 and the concurrently released Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R.
1024, 2000 SCC 66. In essence, claims are to be read in an informed and
purposive way to achieve fairness and predictability and to define the limits
of the monopoly.
[18]
The
relevant date for conducting the construction analysis is the date the patent was published (Whirlpool,
above, at para. 55); the
‘163 patent was
published on May 16, 1996.
[19]
A
patent is notionally addressed to a person skilled in the art or science of the
subject-matter, and is to be read as such a person would have read it when it
first became public. This hypothetical person possesses the ordinary skill and
knowledge of the particular art to which the invention relates, and a mind
willing to understand a specification addressed to him or her; this is a person
attempting to achieve success, and not one looking for difficulties or seeking
failure (Free World Trust, above, at para. 44).
[20]
The
key to purposive construction is the identification by the Court, with the
assistance of the skilled reader, of the particular words or phrases in the
claims that describe what the inventor considered to be the "essential
elements" of his invention (Whirlpool, above, at para. 45).
[21]
In
Free World, Justice Binnie defined an element as being essential if it
is required for the device to work as contemplated and claimed by the inventor.
It is non-essential if it may be substituted or omitted without having a
material effect on either the structure or operation of the invention described
in the claims (Free World, above, at para. 20).
[22]
A
determination of the essential elements must relate to the inventiveness
of the invention, and be more than a mere summary of the main elements of a
device. In other words, what produces a useful result in a novel and inventive
manner and without which the device ceases to be inventive (Norac Systems
International Inc. v. Prairie Systems and Equipment Ltd. (2002), 19 C.P.R.
(4th) 360, 2002 FCT
337 at para. 16 (F.C.T.D.)).
[23]
An
element may be found to be essential or non-essential on the basis of the
intent of the inventor as expressed or inferred from the language of the claims
(irrespective of its practical effect), and on the basis of evidence as to
whether it would have been obvious to a skilled worker at the time the patent was published
that a variant of a particular element would, or would not, make a difference
to the way in which the invention works (Free World
at paras. 31 and 55).
[24]
Justice
Binnie specifically endorsed the following propositions in Free World,
above, at paragraph 31:
(…)
(a) The Patent Act promotes
adherence to the language of the claims.
(b) Adherence to the language of the claims in turn promotes
both fairness and predictability.
(c) The claim language must, however, be read in an informed
and purposive way.
(d) The language of the claims thus construed defines the
monopoly. There is no recourse to such vague notions as the "spirit of the
invention" to expand it further.
(e) The claims language will, on a purposive construction,
show that some elements of the claimed invention are essential while others are
non-essential. The identification of elements as essential or non-essential is
made:
(i) on the basis of the common knowledge of the worker
skilled in the art to which the patent relates;
(ii) as of the date the patent is published;
(iii) having regard to whether or not it was obvious to the
skilled reader at the time the patent was published that a variant of a
particular element would not make a difference to the way in which the
invention works; or
(iv) according to the intent of the inventor, expressed or
inferred from the claims, that a particular element is essential irrespective
of its practical effect;
(v) without, however, resort to extrinsic evidence of the
inventor's intention.
(f) There is no infringement if an essential element is
different or omitted. There may still be infringement, however, if
non-essential elements are substituted or omitted.
[25]
Thus,
claims must be read in context. The question is therefore what, at the date the
patent was issued, a
person skilled in the art at issue would have understood from a reading of the
claims, together with any definitional assistance from the rest of the
specification (Whirlpool, above, at para. 54).
[26]
Expert
evidence is admissible at trial to determine what the common knowledge was at
the time of the patent. Expert
evidence may also be presented as to the meaning of words used in the claims (Airseal Controls Inc. v. M & I Heat Transfer Products Ltd. (1997), 77 C.P.R. (3d) 126 at
127 (F.C.A.)).
[27]
The
role of the expert is not to interpret the patent claims but to put the trial judge in the position
of being able to do so in a knowledgeable way (Whirlpool, above, at para.
57; Unilever PLC v. Procter & Gamble Inc. (1995), 61 C.P.R. (3d) 499 at
506-07 (F.C.A.)). The
construction of the claims is a matter of law for the judge, and the expert
will only assist the Court in this task (Mobil Oil Corp. v. Hercules Canada
Inc., [1995] 63 C.P.R. (3d) 473 (F.C.A.)).
The Experts
[28]
The
plaintiff
tendered the opinion of Mr. Wagdi Habashi, Professor of Mechanical Engineering
at McGill University in Montreal, and Director of the Computational
Fluid Dynamics Laboratory there. Professor Habashi is the author of some 240
scientific papers, and is the Editor-in-Chief of the International Journal
of Computational Fluid Dynamics, and is also a member of the Ordre des
ingénieurs du Québec, as well as being a fellow of the Canadian Academy of
Engineering and the American Society of Mechanical Engineers. He holds a
Master’s degree in Mechanical Engineering and a doctorate in Aerospace
Engineering.
[29]
In
addition to these affiliations and qualifications, Mr. Habashi has maintained
strong connections to industry, and has acted as a consultant to a number of
important industrial actors such as Pratt & Whitney Canada and Bombardier over the
last 30 years, as well as being involved in his own consulting business. He has
experience in wind engineering, including the effects of wind and pollutants
around buildings.
[30]
The
defendant relied on the expert evidence of Mr. Peter Willings, chief engineer
at H.H. Angus & Associates Ltd., a firm of consulting engineers with which
he has been involved for over 40 years. He received his engineering degree in
1958, has been involved with building services design for office buildings,
hospitals, universities, and industrial developments for a considerable period
of time. He has supervised staff specialists dealing with heating and cooling
plants, heating ventilation and air conditioning systems, and has significant
experience in the selection and application of exhaust fan systems. He
currently oversees H.H. Angus’ engineering practice, specifically with regard
to mechanical and electrical systems. He is a member of the Association of
Professional Engineers of Ontario, as well as the American Society of Heating,
Refrigeration and Air Conditioning Engineers.
Other
Witnesses
[31]
Mr.
Kupferberg is the president and controlling shareholder of the plaintiff
company. He has been a mechanical engineer since 1956, and has considerable
experience in the field of designing exhaust fan apparatus, having devoted much
of his career to this end.
[32]
He
asserted at trial that the main feature of the ‘163 patent is not
the nozzle alone, but rather the combination of the centrifugal fan, a shaft, a
motor and the nozzle with the windband. This opinion is also reflected in Mr.
Habashi’s report.
[33]
In
essence, Mr. Kupferberg testified that the design for his exhaust fan invention
was inspired by a device produced by a company called Strobic Air based
on the so-called “Andrews patent”, which he sought to improve upon. His
design was tailored not to infringe this patent, while still remaining similar
enough to capitalize on the market held by Strobic Air. According to his
testimony, the plaintiff’s sales increased from roughly two million dollars
annually in 1993 to approximately eleven million dollars in 2003, due mainly to
sales related to the Axijet. Sales of the Axijet currently represent
three-quarters (75%) of the plaintiff’s revenues, which have dropped to six
million dollars; Mr. Kupferberg attributes this decline to the competition
presented by the defendant’s Skyplume.
[34]
In
his testimony Mr. Kupferberg generally stated that the “diffuser” mentioned in the ‘163 patent has no
functional significance and only acts as a transition, that the “bifurcation”
of the nozzle refers to multiple air flow passageways rather than a physical
division in the nozzle and that the windband has a convergent shape, necessary
to achieve its functional purpose of mixing air with exhaust. He also added
that an axial fan would significantly underperform in comparison with a
centrifugal fan.
[35]
The
defendant relied upon the testimony of Paul Sixsmith, the President of the
defendant company, who has worked as a salesperson in the field of exhaust fan
apparatus. He does not have a technical education in relation to this field,
and has minimal experience in the design of such apparatus. He is named
as the secondary inventor of the Skyplume for his “contribution
of ideas”, while Alan Hill, a mechanical engineer who worked for the
defendant but did not testify at trial, was identified as the primary inventor.
[36]
Mr.
Sixsmith testified that the defendant’s device is sold in component parts,
usually the Skyplume nozzle alone, or as an integrated unit, including a
centrifugal fan, a nozzle and Venturi windband. The nozzle could also be
used with an axial fan. He also testified that there were two versions of the Skyplume
nozzle, a two-lobe and four-lobe design, which he respectively referred to as
Generation 1 and Generation 2.
[37]
He
testified about the defendant’s catalogues and brochures relating to its
exhaust-related products through the 1990’s, including the Skyplume.
He admitted the defendant’s salespersons would know whether the client planned
to use its product with a centrifugal or axial fan. He added that sometimes it
would also provide a transition duct, also referred to as a “diffuser”, for
placement between the fan and the stack. Mr. Sixsmith testified that the Skyplume
represented roughly fifty percent of the defendant’s sales on average in recent
years.
Claim 1:
i) Bifurcation
[38]
The
plaintiff submits that the physical division inside the nozzle is not
essential; it is not described as such in claim 1, and it has no material
effect on the structure or operation of the ‘163 patent. Specifically, it submits
that the description of the nozzle as “being bifurcated” refers to the
resulting bifurcation of the airflow as it emerges from the nozzle. In its
view, this would be understood by the skilled reader, interpreting the terms of
the claim through the lens of mechanical engineering and fluid dynamics
principles.
[39]
The
defendant submits that a reasonable interpretation of claim 1 is that the
“bifurcation” in relation to an apparatus is physical.
[40]
Mr.
Kupferberg admitted at trial that he derived his invention from the Strobic
Air’s model (based on the United States Patent No. 4,806,076, known as the
“Andrews patent”) of a nozzle used with an axial fan and coupled with a Venturi
wind band. Noting the deficiencies in the Strobic device, he found many of them
could be overcome by using a centrifugal, rather than an axial, fan.
Although he experimented with a wide variety of designs, he decided to choose
the Strobic nozzle disclosed in the Andrews patent.
[41]
Mr. Habashi
testified that the bifurcation referred to in the ‘163 patent relates to the air flow,
and was not intended to describe a physical separation within the nozzle
itself. In essence, he found that there was no functional difference between a
physically bifurcated nozzle and one that bifurcated the resulting air flow. As
an engineer, where a nozzle divides air flow, it can be considered to be
“bifurcated”, whether or not there are physical walls.
[42]
He
asserted that there is little difference among convergent nozzles; irrespective
of design variance they are almost equally efficient in their acceleration of
the flow (though they may differ in aesthetics and overall frictional effects).
He noted that this would have been known in May 1996. In his opinion, the walls make
no difference to the efficiency of the nozzle. While the Andrews Patent calls
for a physical division into separate passageways, this is relevant to velocity
efficiency due to the use of an axial fan. Such a separation is unnecessary
when used with a centrifugal fan, where the physical separation is irrelevant. Thus,
the physical separation would be the result of aesthetic rather than technical
choices, and would have been known to the skilled reader in May 1996.
[43]
However,
in cross-examination Mr. Habashi admitted there was a difference in velocity aspects
of the two nozzles. He agreed that the velocity profile obtained
from two passageways separated by walls is different from that of a single
passageway without walls, though the ultimate discharge is the same in terms of
their cubic feet per minute output. He added that the nozzle is not the main
feature of the
‘163 patent,
but rather that it is the apparatus viewed as a whole.
[44]
In
cross-examination, Mr. Kupferberg stated that in testing the physically
bifurcated design, he found that ambient air comes up in between the two passageways
due to a separation between them. He also revealed that, in his view, if the passageways
were not separated, there would not have been air coming up between them. He
had designed numerous nozzles, and had decided against a nozzle where the two
passageways would be connected.
Assessment of the
Evidence
[45]
The
plaintiff argues that there was no evidence from a person skilled in the art
that a physical separation is required to achieve the desired air flow
bifurcation, and that its presence has no material effect on the structure or
operation of the device. It submits that this interpretation is also
consistent with the particular wording of the claim, as “bifurcated” meaning
“two-forked” is not compatible with the expression “at least two passageways”,
which clearly refers to the possibility of more than two passageways.
[46]
The
defendant submits that much of Mr. Habashi’s evidence is irrelevant to the claim
construction of the
‘163 patent:
he improperly compared the plaintiff’s Axijet product with the
defendant’s Skyplume product; he read a patent about the Skyplume;
he tested the Skyplume nozzle to produce his report; and he discussed
with Mr. Kupferberg about the latter’s intended meaning of claims in
the ‘163
patent.
All of these factors are extraneous to the claim construction process of
the Court.
[47]
I
agree with the defendant that these considerations are indeed outside of the
scope of appropriate claim construction evidence, and accordingly will not be
taken into consideration for this purpose. Nevertheless, as stated above,
expert evidence is meant to assist the Court in drawing its own conclusions with
regard to claim construction, and aspects of Mr. Habashi’s evidence remain
useful in facilitating the Court’s understanding of the terms used in the
claims.
[48]
At
trial, I found Mr. Habashi to be very knowledgeable and experienced in the
field of fluid dynamics and mechanical engineering. Overall, I was impressed
with the quality of his experience and knowledge, and found that he explained relevant
terms and principles in a clear, succinct and accessible manner. I also found his
report to be effectively presented and organized; it facilitated the Court’s
understanding of the subject matter and devices at issue.
[49]
While
I recognize and appreciate his efforts, I did not find the evidence of Mr.
Willings to be very helpful. At trial, Mr. Willings had some difficulty
remembering which expert’s affidavit was the final version, and overall I found
that his testimony was not clear. Further, he was hesitant in responding to
many important questions in cross-examination. Similarly, the report he
prepared was not very useful to the Court for the purposes of the present
proceedings. In my opinion, Mr. Willings did not demonstrate a high degree of
knowledge with regard to the state of the prior art relevant to the subject
matter at issue, and neither did he convey a theoretical and practical
understanding of the two devices in question to the Court.
[50]
In
summary, I recognize that Mr. Habashi has significantly greater expertise than
Mr. Willings with respect to the subject matter of the present action. He also
demonstrated a better grasp of the devices at issue on both a theoretical and
functional level, necessary to assist the Court to come to its own conclusions
with regard to the patents and devices at issue.
[51]
Overall,
I found Mr. Kupferberg to be very knowledgeable of the relevant industry and
its developments in the period relating to the present proceeding, and I found
his testimony to be credible and reliable in terms of the state of the prior
art. I prefer his evidence over that of Mr. Willings with regard to the state
of the prior art at the time relevant to the present decision. Further, Mr.
Kupferberg’s evidence was credibly confirmed by Mr. Habashi.
[52]
I
find it significant that Mr. Kupferberg admitted that his nozzle design was
based on the Strobic model, which contained a physical bifurcation. His
variation on the prior art by virtue of its combination with a centrifugal fan
is relevant to the present analysis, as it informs the Court’s interpretation
of the essential elements of the claims. Where the inventor has admittedly
adopted specific features from the prior art, such as the nozzle in question, these
can be understood to be replicated as essential features of the patent unless
specifically differentiated in the wording of the claims.
[53]
Furthermore,
and irrespective of the functional variance between the nozzle described in the ‘163 patent and
that used in the Skyplume, I find that the wording of the patent, viewed
objectively, strongly suggests that the patentee intended to claim a physically
bifurcated nozzle.
[54]
As
clearly articulated by Justice Binnie in Free World, above, at paragraph
51, an inventor is bound by the words he or she chooses to use in patent
claims:
The words chosen by the inventor will be
read in the sense the inventor is presumed to have intended, and in a way that
is sympathetic to accomplishment of the inventor's purpose expressed or
implicit in the text of the claims. However, if the inventor has misspoken or
otherwise created an unnecessary or troublesome limitation in the claims, it is
a self-inflicted wound. The public is entitled to rely on the words used
provided the words used are interpreted fairly and knowledgeably.
[55]
At
paragraph 59 of Free World, above, Justice Binnie draws on the Federal
Court of Appeal’s decision in Eli Lilly & Co.v. O'Hara Manufacturing Ltd. (1989), 26
C.P.R. (3d) 1, to reiterate that the patentee
(…) must be taken to have attached
significance to the words chosen (at p. 7):
... unless it be obvious that the inventor knew that a
failure to comply with that requirement would have no material effect upon the
way the invention worked.
[56]
I
agree with Justice Roger Hughes who concluded in Pfizer v. Canada (Minister of
Health),
2005 FC 1725, [2005] F.C.J. No. 2155 (QL) at paragraph 39 that:
These words do not mean that
the Court is to embark upon a subjective examination of what was in the mind of
the inventor, rather, the Court is to embark upon an objective exercise as to
what a skilled reader would have understood the inventor to mean.
[57]
Firstly,
the patent at issue describes an apparatus, not a process. Consequently,
in my view, a plain reading of claim 1 in relation to an apparatus denotes two
distinct, physically separated passageways. Even if I accepted the plaintiff’s
view that the inventor used the word “bifurcated” when he intended to use “divided”,
as suggested by the associated words of “at least two passageways”, I
would nevertheless conclude that the patent would not reasonably be interpreted
as describing a single physical passage with multiple airflow “passageways”. I
am satisfied that the use of the term “passageway” read in its context does not
suggest air flow paths, but rather denotes physical structures.
[58]
Secondly,
reading claims 1 and 2 together, it becomes apparent that the patent in fact
describes a bifurcation into two passageways. This is not only in
accordance with the plain meaning of the term “bifurcation” as a division into
two branches or forks, but is clearly supported by the use of the terms “a pair
of spaced-apart outlet ports corresponding to the two passageways” in claim
2. Any ambiguity attributable to the use of “at least two passageways”
in claim 1 is resolved, in my view, by the wording of claim 2.
[59]
Furthermore,
the term “bifurcated” was used in the industry at the relevant time, describing
a fan nozzle with physically separated passageways. Mr. Kupferberg testified
that his nozzle design, which included the physical bifurcation, was based on
the pre-existing Andrews patent with such a physical division. With this in
mind, the informed, purposive construction of the claim is that it
referred to a physically bifurcated nozzle.
[60]
In
my view, a person skilled in art of fluid mechanics, mechanical engineering and
fan exhaust systems would have reasonably understood that the claims at issue
described an apparatus with a particular design, and in my view, that design
included a physical configuration creating two physical passageways.
ii) Diffuser
[61]
The
plaintiff submits that the diffuser is not an essential element of Patent ‘163,
as it has no material effect on its structure or operation. The defendant
points to the fact that Patent ‘163 is differentiated from the Andrews Patent
in part by reason of its better diffuser efficiency, and therefore clearly has functional
significance to the patent, and is an essential feature.
Evidence
[62]
There
was conflicting evidence on whether the “diffuser” in Patent ‘163 served
any functional purpose other than connecting the lower and upper portions of
the apparatus.
[63]
Mr.
Habashi testified that the diffuser acts as a transition and has little effect
on anything, as there is very little difference in area between the exit from
the fan and the entrance of the nozzle. However, he admitted in
cross-examination that the diffuser described in the ‘163 patent has a diameter at the
bottom that is smaller than the diameter at the top, and that such a divergent
shape means that exiting gases diffuse outwardly. Further, it has the effect of
evening out the velocity profile, redirecting the air/exhaust flow and
increasing its pressure, before it is accelerated in the convergent nozzle.
[64]
Mr.
Kupferberg testified that a functionally significant diffuser was not taught by
the prior art, and even though the dictionary definition implied that it would
“diffuse” the air, it was not to be technically understood in such a manner.
The “diffuser” acts merely as a transition between the fan and the nozzle
stack, connecting a round and rectangular duct, and is not essential or
necessary. It was principally an aesthetic, not a functional, feature. In the
prior art, the diameter and motor size of the radial fan is limited, and as a
result the diffuser efficiency is limited due to the limited space at the
periphery of the radial fan. However, he admitted in cross-examination that the
patent itself distinguishes the ‘163 patent from the prior art by virtue of increased
diffuser efficiency in combination with the orientation.
Assessment of the
Evidence
[65]
I
am satisfied that a plain and purposive reading of the patent shows that the
diffuser has a functional impact on the way in which the device operates, and
is an essential feature.
[66]
The
‘163 patent differentiates its subject matter from the Andrews patent by reason
of its better diffuser efficiency: “[t]he diffuser efficiency [in
Andrews] is also limited due to the limited space at the periphery of the
radial fan”. It also attributes functional significance to the diffuser
as part of the invention: “[t]he diffuser of the centrifugal fan is more
efficient with fluid flow directed to the axes of the passageways”. There is no
embodiment of the invention which does not include a diffuser.
[67]
Furthermore,
despite his direct testimony that it has little effect, I find that overall Mr.
Habashi’s evidence is that the divergent design of the diffuser has an impact
on the way in which the apparatus operates. Essentially, his substantive
evidence shows that even though the effect on overall performance may be
minimal, there is nevertheless a difference on the functioning of the device
due to the presence and configuration of the diffuser. An ordinary skilled
reader, in May 1996, would have understood that the patentee intended for the
diffuser to be an essential feature of the invention claimed.
[68]
I
have no difficulty concluding that the diffuser was intended to be, and is, an
essential, integral feature of claim 1.
iii) Orientation
[69]
The
plaintiff submits that the orientation of the passageways is not an essential
element of the claim, as it is irrelevant to functioning or efficiency, when
viewed in terms of mechanical engineering and fluid dynamics principles. The
defendant submits that such an orientation is not only specifically claimed,
but is given functional significance in terms of increasing efficiency in
combination with the diffuser; it is essential.
Evidence
[70]
In
his examination-in-chief, Mr. Habashi testified that the orientation has no
effect on the functioning of the device, as “a nozzle is a nozzle”,
irrespective of its orientation. He asserted that as an engineer, he knew on
its face that the orientation would make no difference to the functioning of the
device, as it is simply the product of aesthetic manufacturing choices. Whether
oriented perpendicularly or in parallel, or any other orientation for that
matter, the behaviour of the air flow would be the same. This would have been clear
to any person skilled in the art in May 1996.
[71]
Both
Mr. Habashi and Mr. Kupferberg testified that tests were conducted in order to
determine the functional impact, if any, of a change in the orientation. Mr.
Habashi’s report also dealt with this issue. The conclusion of the testimonial
and report evidence was that there was no significant functional difference
where the orientation was changed.
[72]
When
directed to the
‘163 patent
in cross-examination, Mr. Kupferberg conceded that the patent
read that the disclosed orientation “permits even distribution of the air flow
into the diffuser” and that the diffuser is more efficient with the flow
directed to the axes of the passageways.
Assessment of the
Evidence
[73]
The
wording of the claim suggests that, at the time the patent was published,
the orientation was conceived to be functionally relevant and a distinguishing
feature of the invention:
“The present
invention permits a more flexible and efficient construction compared to prior
art. For instance, the diffuser of the centrifugal fan is more efficient with
fluid flow directed to the axes of the passageways."
[74]
Furthermore,
no alternative orientation is disclosed or claimed in the patent.
[75]
While
I accept Mr. Habashi’s evidence, substantiated on the basis of tests he
performed on a Skyplume nozzle, that the orientation in fact has
no material effect on the functioning of the device, this evidence is not
relevant to the claim construction process. Only his explanation of the terms
used in the ‘163 patent is admissible for determining elements of the claims. Moreover,
the evidence presented does not establish that a person skilled in the art in
May 1996 would have objectively understood that the orientation was not
intended by the patentee to be an essential element of his invention. On the
contrary, I am satisfied that the evidence demonstrates that a fair and
purposive reading of claim 1 clearly expresses that the patentee intended it to
be an essential element; thus, he remains bound by the wording of that claim,
even if it may be a “self-inflicted wound” in the words of Justice Binnie (Free
World, above, at paras. 31, 51).
Claim 2
[76]
As
discussed above in the “bifurcation” section of claim 1, I conclude that “a
pair of spaced-apart ports corresponding to the two passageways” is an
essential to the invention claimed in the ‘163 patent; it is therefore an
essential element of claim 2.
[77]
The
plaintiff argues that claim 2 describes an exhaust fan apparatus as described
in claim 1, where a “windband” is mounted on top of the upper portion (i.e.,
the nozzle). An essential element in its view is a ring that surrounds the
nozzle at a level corresponding to the port outlets; it is submitted that the
reference to “whereby ambient air is induced through the annulus to mix with
gases exhausting from the passageways” implies that the ring has a conical
shape, and would be understood as such by the skilled reader. The defendant
submits that such a shape is not claimed in claim 2, even though it is an
essential feature.
[78]
Mr.
Habashi, in the examination-in-chief at trial, stated that the function
of the wind band is to accept the exhaust accelerated in the nozzle, at which
point the pressure goes down, creates a vacuum, and that vacuum acts as a
suction for outside air and entrains it to mix with the contaminated air,
ejecting a more diluted mixture at very high speed.
[79]
Both
he and Mr. Kupferberg admitted that a conical shape is required to achieve the
so-called Venturi effect that draws in ambient air and dilutes exiting fumes.
The latter stated that this shape functionally distinguishes the ‘163 patent’s windband
from the “rain cap” or “wind guard” disclosed in the prior art, and
fundamentally agreed in cross-examination that this feature made a functional
difference to the operation of the device. Both agreed that a person skilled in
the art in May 1996 would evidently understand that the shape of the ring is
convergent in light of the reference to inducing outside air.
Assessment of the
Evidence
[80]
Based
on the testimony of Mr. Kupferberg and Mr. Habashi it is clear that the
induction of air into the exhaust stream through the windband is an essential
part of the
‘163 patent,
and was intended to have a functional impact.
[81]
There
was clear uncontradicted evidence that it would have been obvious to the
skilled at the time the
‘163 patent was
published that the reference to the induction of ambient air in relation to the
windband would necessarily denote that the ring had a convergent shape; the Venturi
principle that governs the applicable fluid dynamics has been known for
centuries and any skilled reader interpreting the claim would have understood
that such a shape was implied. I am satisfied that this convergent shape was
indeed claimed in claim 2.
CONCLUSION ON CLAIM CONSTRUCTION
[82]
After
considering the evidence, I am satisfied that the following disputed elements
of claim 1 are essential:
·
A first
tubular diffuser portion communicating with the fan discharge port;
·
A
second tubular portion extending upwardly from the first tubular portion;
·
The second
tubular portion being bifurcated to provide two passageways having
generally parallel axes generally normal to the first axis of the shaft; and
·
Wherein
the axes of the passageways lie in a plane which is parallel to the first
axis.
[83]
I
find that the following disputed elements of claim 2 are essential:
·
the
second tubular portion includes a pair of spaced-apart outlet ports
corresponding to the two passageways; and
·
A
ring surrounds the second tubular portion at a level corresponding to the
outlet ports to form an annulus therewith;
·
Whereby
ambient air is induced through the annulus to mix with gases
exhausting from the passageways.
INFRINGEMENT
Principles
[84]
While
the Patent Act, R.S. 1985, c. P-4 (the Act), does
not define infringement, it is established in law that an infringement is any
act which interferes with the full enjoyment of a monopoly granted to its
patentee.
[85]
This
monopoly is a statutory monopoly (Monsanto Canada Inc v. Schmeiser.,
[2004] 1
S.C.R. 902 at paras. 34 and 35, and is the exclusive right,
privilege and liberty of making, constructing, using, vending and importing the
invention (Wellcome Foundation Ltd. v. Apotex Inc.
(No. 1), [1990]
F.C.J. No. 530, [1990] 3
F.C. 528 (T.D.)).
[86]
As
stated above, the first step is to construe the claims of the patent relating
to the invention. Once the claims have been properly construed, the task of
determining whether a claim has been infringed is "essentially one of
fact" (Consolboard Inc. v. MacMillan Bloedel
(Saskatchewan) Ltd.), [1981] 1 S.C.R. 504), as confirmed by the Supreme
Court in Monsanto, above, adding that infringement will be clear on the facts once
the claim has been construed.
[87]
In
an action for patent infringement, the plaintiff must establish, on the
construction of the patent and its claims, that infringement has occurred. In
other words, it must be clear that the defendant has made use of his invention.
[88]
A
party that takes the substance of an invention, or reproduces all of the
essential elements of a patent is guilty of infringement. It does not
matter if the party omits a non-essential element or substitutes an equivalent
for it.
According to Free World, above, at paragraph 68, to determine
whether infringement has
occurred, the question for the Court to answer is whether "the accused
device takes all of the essential elements of the invention"
[emphasis added].
ANALYSIS
[89]
The
plaintiff alleges that the defendant has infringed the ‘163 patent as its Skyplume
apparatus reproduces and comprises all of its essential elements described in
claims 1 & 2. It alleges that the only difference is cosmetic; in the ‘163
patent the axes of the passageway are parallel to the shaft axis while those of
the Skyplume have axes that are perpendicular to it, and though
the Skyplume nozzle is not physically separated as that the ‘163 patent, it
is essentially bifurcated through its flow symmetry.
[90]
According
to the plaintiff, these changes are not functionally significant, as the same
performance is achieved whether it is oriented at 90 degrees to the fan axis or
is parallel to it, and indeed it was admitted by the defendant’s President that
the device is designed to be used with both orientations.
[91]
The
plaintiff also submits that the apparent differences between the nozzles are
immaterial, as the flow symmetry produces the same effect as the physical
bifurcation.
The variance does
not affect the velocity of the air flow and has no material effect on how the
device works. Therefore, the plaintiff states that the manufacture and sale of
the Skyplume is an infringement of, or alternately an inducement to
infringe, claims 1 and 2 of the ‘163 patent.
[92]
Mr.
Habashi’s evidence at trial was that both the Skyplume and the ‘163
patent contain “diffusing sections”, when the Skyplume is sold as an
integrated exhaust fan system. He particularly explained in his testimony that
the nozzle cannot be placed directly on a centrifugal fan, and hence the need
for a transitional portion.
[93]
Mr.
Habashi also testified
that in Patent ‘163 the orientation is parallel to the fan, while it is at a 90
degree angle in the Skyplume, but irrespective of the orientation, the
air flow performance was essentially the same. His testimony, supported by his
report, was that the tests performed on the Skyplume nozzle,
compared with early tests on the plaintiff’s nozzle, confirmed that there was
only a very insignificant difference between them. In his opinion, expressed
both at trial and in his report, there was no functional significance to
changing the orientation in such a device.
[94]
Mr.
Kupferberg’s evidence at trial was that there would be virtually no difference
between the performance associated with the two orientations, but if anything,
the Skyplume’s would be slightly less efficient.
[95]
Mr.
Habashi repeatedly reiterated in his testimony that there is no real difference
between convergent nozzles, and thus that a new convergent nozzle design should
not constitute a new device. In his testimony, though the nozzles at issue
looked physically different they would probably perform at the same efficiency
and are “essentially identical”, though he admitted that he had not
specifically performed tests to confirm this assertion.
[96]
Overall,
in his testimony Mr. Habashi asserted that even if there are differences
between the parties’ devices, they are “technically equivalent in substance on
all the components”.
[97]
In
reference to the defendant’s promotional marketing material, Mr, Kupferberg
testified that it depicted the defendant’s product as an integrated unit, including
a centrifugal and with what would appear to be all of the other essential
features of the ‘163 patent.
[98]
Paul
Sixsmith testified that the Skyplume, when sold as an integrated unit,
contained a transition to connect the round outlet of the fan with the square
inlet of the stack. These transitions, sometimes referred to as “diffusers”,
would vary according to the relative sizes of the fans and stacks required by
the end user. In cross-examination, he testified that while the stack would often
sit directly on a centrifugal fan, sometimes the bottom of the transition would
be larger than the top, while other times it was the reverse, depending
on the clients’ equipment.
[99]
As
stated above, I conclude that the parties’ nozzles are differentiated by the
physical separation contained within the nozzle of plaintiff’s apparatus. In
light of the construction given to claim 1, it is apparent that the defendant’s
nozzle does not possess the physical bifurcation claimed in Patent ‘163.
[100] Further, the
evidence is inconclusive in establishing that the Skyplume contains a
diffuser. Mr. Sixsmith explained that all their devices have outlets where air
comes out and this could be defined as a diffuser. However, in
cross-examination, Mr. Kupferberg said that a transition of that type is not a
diffuser that is as referred to in the patent at issue.
[101] With regard
to the orientation, the Skyplume is not sold with axes of the passageways
in a plane parallel to the first axis as admitted by the plaintiff in its Statement
of Claim at paragraph 37, it is used with axes perpendicular to the first axes.
Having found that it is clear that the Skyplume has a different
configuration that the one presented in the patent, I conclude that the
defendant has not infringed the patent at issue.
VALIDITY
[102] As mentioned
above, in its Defence and Counterclaim, the defendant alleges that the ‘163 patent is invalid.
[103] Pursuant to
subsection 43(2) of the Act, an issued
Canadian patent is presumed to
be valid during its full term of 20 years from the date of filing, in the
absence of evidence to the contrary. The underlying rationale for this
presumption is that the Commissioner is authorized to issue patents solely for inventions, defined in section 2 of the Act as 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".
[104] Thus the
assumption is that the state of the knowledge and prior art respecting the
subject matter has been studied by persons employed by the Commissioner who are
skilled in the relevant field. A person who challenges the novelty and
inventiveness of the patent
bears the onus of establishing its invalidity (Free World
Trust et al. v. Électro Santé Inc., [1997] R.J.Q. 2907, 81 C.P.R. (3d) 456 (Que.
C.A.), aff'd in Free World, above).
[105] The party
attacking a patent
must prove its invalidity on a balance of probabilities, failing which, the
presumption prevails (Diversified Products Corp. v. Tye-Sil
Corp. (1991), 35
C.P.R. (3d) 350 (F.C.A.).
Obviousness
[106] Where the
validity of a patent is
challenged on the basis of anticipation and obviousness, obviousness should be
considered first (Beloit Canada Ltd. v. Valmet Oy, (1986) 8
C.P.R. (3d) 289 at 294, 64 N.R.
287 (F.C.A.)). With obviousness, or lack of inventive ingenuity, the
invention need not be disclosed in one single patent or piece of prior art, as is the case for
anticipation.
[107] The question of
obviousness is whether the available knowledge on the claim date would lead directly
to the invention. Justice James Hugessen in Beloit, above, established the
frequently cited test for obviousness as follows:
The test for obviousness is not to ask
what competent inventors did or would have done to solve the problem. Inventors
are by definition inventive. The classical touchstone for obviousness is the
technician skilled in the art but having no scintilla of inventiveness or
imagination; a paragon of deduction and dexterity, wholly devoid of intuition;
a triumph of the left hemisphere over the right. The question to be asked is
whether this mythical creature (the man in the Clapham omnibus of patent law) would, in the light of
the state of the art and of common general knowledge as at the claimed date of
invention, have come directly and without difficulty to the solution taught by
the patent. It is a very
difficult test to satisfy.
[108] In considering
evidence relating to the obviousness of an invention, it is helpful to refer to
another oft-quoted passage from Beloit, above:
Every invention is obvious after it has
been made, and to no one more so than an expert in the field. Where the expert
has been hired for the purpose of testifying, his infallible hindsight is even
more suspect. It is so easy, once the teaching of a patent is known, to say, "I could have done that";
before the assertion can be given any weight, one must have a satisfactory
answer to the question, "Why didn't you?"
[109] Evidence of
commercial success supports the conclusion that the combination of known
elements was not obvious (Windsurfing International Inc. et
al. v. Triatlantic Corporation (1984), 8 C.P.R. (3d) 241 at 260, 63 N.R.
218 (F.C.A.), cited with approval by this Court in several cases, including most
recently in Eli Lilly Canada Inc. v. Apotex Inc., 2007 FC 455, [2007]
F.C.J. No. 617 (QL) at para. 352).
[110] Mr. Willings
testified that it would have been obvious to a person skilled in the art that
the combination of the centrifugal fan with the Andrews patent would create a
higher velocity exhausting air flow.
[111] Mr.
Kupferberg testified that at the time the patent was claimed there were a
number of engineers and designers from numerous companies working on
capturing part of the exhaust fan market dominated by Strobic Air and its use
of the Andrews patent, but none had made the combination with the centrifugal
fan. It took one year of work by Mr. Kupferberg and two other engineers to
create the invention. None of the engineers working with Mr. Kupferberg came to
the solution described in the ‘163 patent before November 1994, although
they were specifically seeking such a solution.
[112] Mr.
Kupferberg also testified to the significant commercial success of the Axijet,
especially in the initial years of its introduction into the market, though
this waned after the introduction of the defendant’s Skyplume.
[113] Mr. Habashi
stated in examination-in-chief that the use of such a fan distinguished the
‘163 patent from the prior art that used an axial fan, and indeed described it
as a “game-changer” in the industry. In his view, as in the case of many
technical innovations, it combined existing technologies that had not
previously been effectively combined.
[114] I prefer the
evidence of Mr. Habashi and Mr. Kupferberg over that of Mr. Willings with
regard to whether the combination of the prior art was obvious at the time the ‘163
patent
was
claimed. I also accept Mr. Kupferberg’s evidence regarding the commercial
success of the Axijet.
[115] As stated by
Justice Binnie in Free World, above, at paragraph 25, “[i]t takes little ingenuity to assemble a dossier of prior art
with the benefit of 20-20 hindsight.” Though it may seem evident now
to have combined the prior art with a centrifugal fan, there is no evidence
which shows that the so-called “mythical creature” referred to by Justice
Huguessen in Beloit, above, would have come directly and without difficulty
to the invention before the relevant claim date of the ‘163 patent. This is
further substantiated by the commercial success of the Axijet; had such
a profitable combination of the prior art been obvious, others would have surely
seized the opportunity before the claim date of patent. Thus, the
evidence does not support the conclusion that ‘163 patent was obvious at the
time it was claimed in 1994.
Anticipation
[116] Section 28.2 of
the Act requires that the subject matter of a claim must not have been
disclosed prior to the claim date in such a manner that it became available to
the public in Canada or elsewhere. It
also requires that the anticipation test must be evaluated with respect to the
claims, not the disclosure portion. The relevant date is the claim date, i.e.,
November 15, 1994.
[117] Prior disclosure
of the claimed invention can be in the form of a prior publication, oral
disclosure, sale, or use, provided the invention is made available to the
public, but must be contained entirely in one single patent or piece of
prior art to have been “anticipated”. As cited with approval by the Supreme
Court of Canada in Free World Trust, above, at paragraph 26 and
originally described by Justice Hugessen in Beloit, above, at 297:
...anticipation must be found in a
specific patent or other
published document; it is not enough to pick bits and pieces from a variety of
prior publications and to meld them together so as to come up with the claimed
invention. One must, in effect, be able to look at a prior, single publication
and find in it all the information which, for practical purposes, is needed to
produce the claimed invention without the exercise of any inventive skill. The
prior publication must contain so clear a direction that a skilled person
reading and following it would in every case and without possibility of error
be led to the claimed invention. Where, as here, the invention consists of a
combination of several known elements, any publication which does not teach the
combination of all the elements claimed cannot possibly be anticipatory.
[118] For a prior
public use to anticipate an invention, it must amount to enabling disclosure,
that is, the disclosure has to be such as to enable the public to make or
obtain the invention (Baker Petrolite Corp. v. Canwell Enviro Industries
Ltd. (2002), 17
C.P.R. (4th) 478, 2002 FCA
158 at para. 42, drawing upon Merrell Dow Pharmaceuticals v. H.N.
Norton & Co., [1996] R.P.C. 76 (H.L.)).
[119] In the
present case, the defendant referred the Court to a number of prior patents and
devices, but there was no evidence of a single, prior disclosure indicating all
of the essential elements of the ‘163 patent. Thus, I am not
satisfied that the defendant has established that the patent at issue was
anticipated.
Ambiguity
[120] The defendant
submits that as claim 2 does not mention the converging shape of the ring
forming the windband, an essential element, the claim is overly broad and
therefore invalid.
[121] I agree that
a claim that omits an essential element of the invention is invalid by reason
of its over breadth; it is well-established that the claims are invalid if
they are broader than the disclosures (per Justice Arbour in Dissent in Monsanto,
above, at para.124, citing Irving Pulp & Paper Ltd. v. Amfac
Foods Inc. et al. (1984), 80 C.P.R. (2d) 59 at 80 (F.C.T.D.), citing a
long list of authority).
[122] Further,
section 27(4) of the Act states that patent claims must define distinctly and
in explicit terms the
subject-matter of the invention for which an exclusive privilege or property is
claimed. The Court must determine if the language of the claim would be clear
to a person skilled in the art. If the language is obscure or ambiguous, the
Court will declare the patent invalid.
[123] A failure to
define a term in the disclosure is not sufficient reason to invalidate a patent
for ambiguity (Corning Glass Works v. Canada Wire &
Cable Ltd. (1984), 81 C.P.R. (2d) 39, 2 C.I.P.R. 77 (F.C.T.D)). The
proper test is whether everything is disclosed that would require the invention
to function properly with or without a non-essential element (Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents),
[1989] 1 S.C.R. 1623 at 1638; Risi Stone Ltd. v. Groupe
Permacon Inc. (1995),
101 F.T.R. 241, 65 C.P.R
(3d) 2 (F.C.T.D.)). Finally, as concluded by Justice Hughes after
reviewing the jurisprudence in relation to ambiguity in Pfizer, above,
at paragraph 53: “In short, ambiguity is truly a last
resort, rarely, if ever, to be used.”
[124] For the
reasons discussed above in relation to the claim construction of claim 2, I
find that the reference to the induction of ambient air in relation to the
annulus unambiguously suggested that the ring would have a convergent shape. A
skilled reader at the relevant time would have clearly understood the reference
as a disclosure of such a shape, and appreciated that it was an essential
element of the invention. Consequently, claim 2 is neither ambiguous nor overly
broad.
UNFAIR TRADE
PRACTICE
[125] The defendant
counterclaims against the plaintiff under section 7(a) of the Trade-marks
Act for having made false and misleading statements tending to discredit
the defendant’s business, wares and services.
[126] The plaintiff
wrote to the distributors of the defendant’s products, notifying of potential patent
infringement of the ‘163 patent. The plaintiff wrote these letters before
commencing an action for patent infringement, and prior to sending a “cease and
desist” letter to the defendant. The defendant alleges that it has suffered
damage as a result of the plaintiff’s acts.
[127] The defendant
submits that section 7(a) of the Trade-marks Act creates a statutory
cause of action allowing for damages where a person is damaged by false or
misleading statements by a competitor, irrespective of whether the statements
were known to be false at the time, or were made maliciously.
[128] The plaintiff
submits that as the ‘163 patent was duly registered, the patent is presumed
valid and the patentee is entitled to act on that basis (M & I Door
Systems Ltd. v. Indoco Industrial Door Co., [1989] 25 C.P.R. (3d) 477
(F.C.T.D.)).
[129] It further
submits that the tone of all of the letters was informative rather than
threatening legal recourse against the recipients. Further, one letter is
addressed to a person in Puerto Rico. Another letter is
addressed to the to the defendant’s sales agent in Kansas, while a
third one is addressed to the plaintiff’s own sales agent; none of these were
the defendant’s clients or prospective clients.
[130] The plaintiff
submits that the first two letters were sent to parties outside of Canada, and
therefore that the Trade-marks Act is inapplicable as the alleged
contravening acts occurred extra-jurisdictionally. It also argues that there is
no proof of a prejudice caused to the defendant, and as such the statements are
not actionable.
[131] I agree with
the plaintiff that the first two letters sent to parties in Kansas and Puerto Rico are outside
the scope of the Trade-marks Act and therefore do not provide grounds to
support the cause of action alleged by the defendant in its counterclaim. I
also find that the defendant has not established that the letter sent to the
plaintiff’s sales agents caused it prejudice.
[132] Consequently,
I conclude that the defendant has not established the grounds necessary to make
out its claim.
CONCLUSION
[133] The evidence
does not support the conclusion that the defendant’s Skyplume apparatus
does contains all of the essential elements of the‘163 patent. As
discussed above, it does not contain the physical bifurcation in the nozzle,
nor does it have a comparable diffuser. Further, though the evidence clearly
shows that the orientation variant has no functional impact on the performance
of the device in comparison with the patent, I am persuaded that the patentee
intended that the orientation be an essential feature of his invention, as clearly
demonstrated by the wording of claim 1. Consequently, he is bound by the
wording of his patent claims; the orientation in the Skyplume
differentiates it from the ‘163 patent.
[134] Considering that
it is sufficient that any essential element be different, the Skyplume
device does not infringe claim 1 of the ‘163 patent.
[135] However, I am
equally convinced that the ‘163 patent is valid. Though it may seem clear in
hindsight that it would be obvious to have combined the prior art of the
Andrews patent with the greater performance of a centrifugal fan, as embodied
in the patent at issue, there was no evidence that showed that this had in fact
been done. In my opinion, the patent was validly issued, in recognition of its
novelty, ingenuity and utility. Consequently, the defendant’s counterclaim in
this regard is dismissed.
Costs
[136] Pursuant to
Rule 400(1) the Federal Court Rules, the Court has full discretion over
the amount and allocation of costs; the Court may consider any matter it
considers relevant (rule 400(3)(o)).
[137] Rule
400(3)(a) requires the Court to properly take into consideration the end result
of the proceedings in exercising this discretion, and to do so “judicially” (Illinois
Tool Works Inc. v. Cobra Anchors Co., 2003 FCA 358, [2003] F.C.J. No. 1477
(QL) at para. 11).
[138] In Illinois, above, the relevant
facts were essentially the same as the present matter: The
defendant was sued for patent infringement by the plaintiff. In response to the
action, there were two defense components: first, that there was no
infringement of the plaintiffs' patent and, second, that the plaintiffs' patent
was invalid. The defense did not have to be accepted in its entirety for the
lawsuit to be dismissed, as either one would suffice. The trial judge found
that the defendant’s products did not infringe the plaintiffs' patent, and the
plaintiffs' action was dismissed.
[139] The Federal
Court of Appeal in Illinois, above, essentially
concluded that where a claim and counterclaim are both dismissed, costs should
not necessarily “cancel each other out”, thereby dividing success
between the parties. Rather, in that case, the defendant was entitled to costs
as the winning party. I find this to be the case here as well. Costs will be
awarded to the defendant.
JUDGMENT
[140] The action
and counterclaim are dismissed with costs to the defendant.
“Danièle Tremblay-Lamer”
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