Docket: T-374-13
Citation:
2014 FC 887
Ottawa, Ontario, September 16, 2014
PRESENT: The
Honourable Mr. Justice O'Keefe
|
Docket: T-374-13
|
|
BETWEEN:
|
|
DREXAN ENERGY SYSTEMS INC.
|
|
Applicant
|
|
And
|
|
THE COMMISSIONER OF PATENTS AND
|
|
THERMON MANUFACTURING CO.
|
|
Respondents
|
REASONS FOR JUDGMENT AND JUDGMENT
[1]
Pursuant to section 52 of the Patent Act,
RSC 1985, c P-4 [the Act], Drexan Energy Systems Inc. (the applicant or Drexan)
applies to this Court for three things: a declaration that Steve Makar and
Konrad Mech are co-inventors of the heating cable described in Canadian Patent
No. 2,724,561; an order requiring the Commissioner of Patents to vary all
entries in the records of the Patent Office to show that; and costs.
[2]
The Commissioner of Patents takes no position,
but Thermon Manufacturing Co. (the respondent or Thermon) opposes this
application.
I.
Background
[3]
In cold environments, pipes used to transport
substances can freeze unless they are equipped with heat tracing products.
Steve Makar, Konrad Mech, Wells Whitney and Umesh Sopory perceived some
deficiencies in the products that existed in 2006 and together decided to
create a new type of heating cable without those defects. They eventually
produced the invention in Canadian Patent No. 2,724,561, which the abstract
describes as follows:
A heating cable includes a bus wire structure
that includes a plurality of bus wires. An insulation layer is provided to
insulate the plurality of bus wires. A plurality of node areas exposes portions
of the bus wires from the insulation. A heating element is wrapped around the
bus wire structure in a helical manner. The heating element includes an
insulating core and one or more resistance wires wrapped around the core in a
helical manner. The heating element is electrically coupled to the nodes of the
bus wire structure at the plurality of node areas. The insulating core may be
made of a folded-over tape made of a cloth material, such as glass cloth.
Pluralities of redundant paths in between two nodes are provided to allow for
current to flow in a zone if one of the redundant paths is broken.
[4]
However, the relationship between the four men
had broken down by 2010. Dr. Whitney and Mr. Sopory were the only listed
inventors in the patent application, but Mr. Mech and Mr. Makar petitioned the
Commissioner of Patents to be added as co-inventors in October 2011. They
succeeded at first, but that decision was eventually reversed for undisclosed
reasons and the patent was issued with only Dr. Whitney and Mr. Sopory listed
as inventors.
[5]
Dr. Whitney and Mr. Sopory assigned their
proprietary rights in the patent to their corporation, WWUS, which eventually
assigned them to Thermon. Mr. Makar and Mr. Mech assigned whatever rights they
had in the patent to one of Thermon’s competitors, Drexan.
II.
Issue
[6]
The applicant does not challenge the validity of
Canadian Patent No. 2,724,561, nor does it allege any infringement. Rather,
there is only one main issue in this application:
Are
Steve Makar and/or Konrad Mech co-inventors of the heating cable described in
Canadian Patent No. 2,724,561?
III.
Applicant’s Submissions
[7]
The applicant argues that section 52 of the Act
gives this Court authority to add or remove inventors from a patent, but
acknowledges that it cannot succeed unless it proves that Mr. Makar and Mr.
Mech are probably co-inventors.
[8]
Generally, the applicant asks the Court to
accept its witnesses’ evidence and reject that of the respondent’s witnesses.
Particularly, it says that Dr. Whitney and Mr. Sopory were not credible and
reluctant to make admissions even when faced with documentary evidence that
contradicted their stories. With respect to the statements that no issue about
inventorship had been raised until Dr. Whitney’s and Mr. Sopory’s rights in the
patent were assigned to the respondent, the applicant says that is simply
untrue and that Mr. Mech had raised them earlier. It says that no adverse
inference should be drawn from that since Dr. Whitney had been assigned to deal
with the patenting issues and Mr. Makar and Mr. Mech had trusted him. Besides,
up until that point, they had still been trying to arrange a going-forward
relationship with Dr. Whitney and Mr. Sopory and the issue of inventorship
would have been moot if they could have reached a deal.
[9]
Beyond that, the applicant summarizes the law on
inventorship and submits that anyone who contributes to the inventive concept
is a co-inventor, even if others later help reduce it to the definite and
practical shape required for patentability. It argues that this test is met
when people discuss together concepts that become embodied in the invention and
it does not matter how minor the contributions of any co-inventor might be.
[10]
Here, the applicant says that Mr. Makar and Mr.
Mech both made those necessary contributions. The process began in 2006. Mr.
Makar was a passenger in a Subaru when he telephoned Dr. Whitney and sketched
out his idea for a new heating cable (the Subaru conversation). It included
features such as parallel construction, the use of a corrugated metal sheath
and electrical path redundancy. By early 2007, many of the features had already
been decided and were shown in a PowerPoint presentation to Fujikura Inc., a
corporation the team had hoped to recruit for financing purposes.
[11]
In July 2007, the four men met to discuss the
product at Dr. Whitney’s home in Glen Ellen, California (Glen Ellen meeting).
The applicant argues that this was a collaborative brainstorming session in
which Mr. Makar and Mr. Mech fully participated and even suggested some of the
concepts that ended up in the patent. Coming out of the meeting, the applicant
says that the four men had decided on the following preferred design for the
product:
(a)
a heating cable;
(b)
an insulated pair of bus wires, with notches in
the insulation to expose the bus wires at spaced locations;
(c)
a heating element having two resistance wires
counter-helically wound around a glass fiber insulating core;
(d)
the heating element wrapped around the insulated
bus wires so that the heating element wraps over the notches which then act as
electrical nodes for contact with the bus wires, with the counter-helical
winding of the resistance wires providing electrical path redundancy between
nodes;
(e)
the foregoing wrapped with mica tape or another
insulating material; and
(f)
a corrugated metal sheath surrounding all of the
foregoing.
[12]
The applicant says this was a definite and
practical shape for the invention and that the inventive concept can exist and
be contributed to before a final decision on the specific constructional
details is made. In its view, both Mr. Makar and Mr. Mech contributed to that
inventive concept.
[13]
Moreover, the applicant argues that it is
significant that neither Dr. Whitney nor Mr. Sopory denied that many of the
features found in claim 1 were proposed by Mr. Makar and Mr. Mech. Rather, they
only take issue with the claim that it was “established” by that time, and Dr.
Whitney simply says those features were known in the prior art. However, the
applicant argues that the invention does not yet need to be fixed for a person
to contribute to its conception. Moreover, even if some features had been known
in the prior art, the combination of them into a single heating cable is the
invention in this case and the applicant says that anticipation or obviousness
is not properly in issue before the Court since the validity of the patent is
unchallenged.
[14]
As for the work that Dr. Whitney and Mr. Sopory
did after the meeting, the applicant says it was mostly limited to testing and
verification. In any event, the applicant adds that they cannot lay sole claim
to that since both Mr. Makar and Mr. Mech actively participated in such
testing.
IV.
Respondent’s Submissions
[15]
The respondent agrees that the applicant bears
the burden of proof, but argues that the applicant has failed to discharge it.
It emphasizes that Dr. Whitney and Mr. Sopory both have decades of experience
in the design and manufacture of heat tracing cables, while Mr. Makar is a
career salesman and Mr. Mech is a mechanical engineer who had never designed a
heat tracing cable.
[16]
Moreover, the respondent challenges Mr. Makar’s
and Mr. Mech’s credibility throughout its submissions, saying that they were
often contradictory, evasive and argumentative when being cross-examined. It
also claims that the affidavits they filed with the Canadian Intellectual
Property Office made different statements than the ones they wrote for this
application and says this shows that they are exaggerating their involvement.
As well, it pointed out some similarities in wording between their two affidavits
and argued that they had either collaborated or that the wording was selected
by counsel. Either way, it says this raises serious doubts about whether the
affidavits accurately record their unprompted recollection.
[17]
The respondent says that Mr. Makar and Mr. Mech
made no inventive contribution and challenged the applicant’s version of each
of the events. Although Dr. Whitney recalled the Subaru conversation, this was
no eureka moment and they had many such conversations before, which Mr. Makar
himself admitted on cross-examination. Though Mr. Makar may have suggested some
features the cable would need to have, these were known features that any cable
would need in order to compete in the market. The conversation did not extend
to practical design aspects and Dr. Whitney denied Mr. Makar’s statement that
he had suggested the concept of electrical path redundancy at that time. These
were all things which would have been known to any person skilled in the art.
[18]
Similarly, the respondent says that nothing had
been settled by the time they made their presentation to Fujikura and claims
that Mr. Makar’s testimony on this point was contradictory. As for the Glen
Ellen meeting, the respondent says it was mainly about incorporation and
marketing and the most that could be said was they had agreed on the desired
attributes of the product, but never discussed its design. Dr. Whitney and Mr.
Sopory also deny that Mr. Makar made any of the specific design suggestions he
says that he made. Moreover, the respondent contends that the contemporaneous
report on the meeting prepared and circulated by Dr. Whitney corroborates his
and Mr. Sopory’s evidence.
[19]
The four men also met in San Francisco on
February 28 and 29, 2008 (San Francisco meeting) to discuss patenting and the
respondent says that a copy of the patent application was circulated and
included a cover page identifying only Dr. Whitney and Mr. Sopory as inventors.
In its view, the fact that Mr. Makar and Mr. Mech never objected shows that
they did not consider themselves inventors at the time. Also, Mr. Mech did propose
a variation at that meeting and a separate application to cover it was
prepared. It named Mr. Mech as an inventor and he signed a declaration
confirming his role. The respondent therefore argues that Mr. Mech must have
been aware that he was not named as an inventor on the other patent
applications since he did not have to do the same thing.
[20]
Indeed, the respondent later says that Mr. Makar
and Mr. Mech only began to consider themselves inventors after Drexan’s
competitor, Thermon, obtained the rights from Dr. Whitney and Mr. Sopory. The
only time before then that Mr. Mech raised the issue of inventorship was with
regard to the variant he had proposed and Dr. Whitney and Mr. Sopory ended up
withdrawing the claim for that variant from the patents for which only they
were named as inventors. As such, it argues that an adverse inference should be
drawn.
[21]
Beyond that, the respondent argues that the
applicant misconstrues the law on inventorship. It emphasizes that a mere idea
or suggestion is not invention and that it must be reduced to practice. Mr.
Makar described the meeting as four people “bandying
about ideas” at his cross-examination and the respondent says that type
of input does not rise to that level. Moreover, the respondent distinguishes
some of the cases cited by the applicant and says instead that the inventive
concept here is the combination, so there is no contribution to it by suggesting
individual elements.
[22]
The respondent also rejects the applicant’s argument
that everything Dr. Whitney and Mr. Sopory did after the Glen Ellen meeting was
just testing and verification. It took months of trial and error to create a
product with the desired features and there is no reasonable way to dismiss it
as mere verification. As for the testing Mr. Makar and Mr. Mech allegedly did,
neither said that in their affidavits. Indeed, the only mention of it was by
Mr. Sopory, who said it was limited to powering samples up and down for
potential customers or identifying testing requirements for regulatory
certification. Neither type of testing contributed to the development of the
cable.
V.
Analysis and Decision
A.
Issue - Are Steve Makar and/or Konrad Mech
co-inventors of the heating cable described in Canadian Patent No. 2,724,561?
[23]
I agree with the applicant that this Court has
the authority under section 52 of the Act to order inventors added or removed
from a patent (see Comstock Canada v Electec Ltd (1991), 45 FTR
241 at paragraph 61, 38 CPR (3d) 29 (TD)). I also agree with both parties that
to succeed, the applicant must prove that Mr. Makar and Mr. Mech are probably
co-inventors (see Weatherford Canada Ltd v Corlac Inc, 2010 FC 602 at
paragraph 238, 370 FTR 54 [Weatherford (FC)], aff’d 2011 FCA 228 at
paragraph 99, 95 CPR (4th) 101 (but also var’d on other grounds) [Weatherford
(FCA)]).
[24]
To do so, it needs to show that Mr. Makar or Mr.
Mech are in some way responsible for the inventive concept (see Apotex Inc v
Wellcome Foundation Ltd, 2002 SCC 77 at paragraph 96, [2002] 4 S.C.R. 153 [Wellcome]).
However, they do not need to be wholly responsible. As the Supreme Court said
in Wellcome at paragraph 99, “an individual who
contributes to the inventive concept may be a co-inventor without being the
prime originator”. The applicant therefore argues that this test is
satisfied so long as it shows that Mr. Makar and Mr. Mech met with Dr. Whitney
and Mr. Sopory and “discussed concepts that became
incorporated into embodiments disclosed.” (see Plasti-Fab Ltd v Canada (Attorney General), 2010 FC 172 at paragraph 15, 364 FTR 217 [Plasti-Fab]).
[25]
The respondent argues that Plasti-Fab is
not on point since inventorship was undisputed in that case. To the extent that
argument implies that the test for inventorship differs depending on whether
the application is contested, I disagree. As the Federal Court of Appeal said
in Weatherford (FCA) at paragraph 104, “an
“agreement” between the parties does not resolve the issue of inventorship. An
individual either contributes an inventive idea or does not.” Even in Plasti-Fab
at paragraph 15, the test applied was that set out in Wellcome, though
it may be easier to prove when the alleged co-inventors submit consistent
evidence about their respective roles.
[26]
Further, I agree with the applicant that even
minor contributions to the inventive concept can be sufficient to make someone
a co-inventor, so long as his or her ingenuity is applied to the original
inventive concept and not just verification (see Gerrard Wire Tying Machines
Co v Cary Manufacturing Co, 1926 CarswellNat 22 at paragraph 32, [1926] Ex
CR 170, [1926] 3 DLR 374 [Gerrard Wire]; Wellcome at paragraph
99).
[27]
However, I also agree with the respondent that
the inventive concept at issue here is in the combination of particular
elements, not in the elements themselves. As Mr. Justice Michael Phelan said in
Weatherford (FC) at paragraph 240:
While the same analytical issue arises whether
the invention is a combination patent or not, it is the combination itself
which is the novelty not the elements of it. As held in Lovell Manufacturing
Co. v. Beatty Brothers Ltd. (1962), 41 C.P.R. 18, even where certain
elements have been contributed by persons other than the inventor named, this
would not make them joint inventors of the combination.
[28]
The Federal Court of Appeal affirmed this
analysis when the case was appealed (see Weatherford (FCA) at paragraph
99).
[29]
This means that the focus has to be on whether
Mr. Makar’s and Mr. Mech’s contributions were directed not only to suggested
features (see Weatherford (FC) at paragraph 260), but to how they could
actually be combined. Put another way, if there are two competing products that
have different advantages and disadvantages, it takes no ingenuity at all to
suggest that it would be great if there could be a product that has the
advantages of both without the disadvantages of either. If there is any
inventive concept at all in combining those two products, it lies in
discovering how to make a product that has the desired attributes of both and
it is to that process that the inventive contribution must be made.
[30]
Therefore, this case largely comes down to
credibility. Mr. Makar and Mr. Mech both say that they made suggestions and
that the design for the product was conceived jointly, including:
counter-helical winding of resistance wires around an insulated core; the idea
of using ties around the heating element; the use of a corrugated metallic
sheath; a specific design configuration similar to the ultimate product and
more. Some of these are concrete claims detailed in the patent, which I will
presume to be valid for the purposes of this application (subsection 43(2) of
the Act). As such, if I believe Mr. Makar or Mr. Mech, then I would be
satisfied that they contributed to the inventive concept of the patent.
[31]
However, their evidence is expressly denied by
Dr. Whitney and Mr. Sopory, who both say that nothing had really been established
at the Glen Ellen meeting. Indeed, they say that Mr. Makar’s and Mr. Mech’s
contributions were largely limited to marketing and reporting what attributes
they would like the product to have. If that is true, then they would not have
made any inventive contribution and they are not co-inventors.
[32]
With respect to credibility, however, both
parties overstate their cases. The respondent especially makes several dubious
arguments. For instance, it claims that the similarities between the affidavits
of Mr. Makar and Mr. Mech show that they either collaborated or that the
language was selected by counsel. Indeed, Mr. Makar and Mr. Mech both candidly
disclosed that some passages were drafted by counsel in consultation with them
(see cross-examination of Mr. Makar, respondent’s record, page 302, question
528; cross-examination of Mr. Mech, respondent’s record, page 512, question
328).
[33]
However, that hardly impugns their credibility.
Lawyers commonly assist witnesses in preparing their affidavits. Often, counsel
will cull out irrelevant details or use more precise language than would the
witness if left to his or her own devices. However, that does not presumptively
give me any reason to believe that either witness was lying when they swore
that their affidavits were true. Moreover, the respondent’s witness, Mr.
Sopory, also admitted during cross-examination that he did not write at least
paragraph 8 of his affidavit (see cross-examination of Mr. Sopory, applicant’s
record, page 703). If Mr. Makar’s or Mr. Mech’s evidence must be rejected
because he may not have chosen every word he used, so too must Mr. Sopory’s. I
would rather not do that and instead reject the respondent’s argument.
[34]
The respondent also argues that some changes in
the wording between these affidavits and the affidavits filed with the Canadian
Intellectual Property Office are significant. For example, in his earlier
affidavit, Mr. Makar said that the purpose of the Glen Ellen meeting was to “discuss the design, development and marketing of the cable.”
In his present affidavit, he said it was to “discuss and
detail the design, development and marketing” of the cable. Similarly,
where he had earlier said he “put forward ideas in
relation to using multiple resistance wires”, he later said that he “put forward specific design approaches in relation to using
multiple resistance wires”.
[35]
When confronted on cross-examination about this,
Mr. Makar explained that his earlier affidavit did not purport to contain
everything that could have pertained to the matter at hand (see cross-examination
of Mr. Makar, respondent’s record, page 250, question 294), that it generally conveyed
the same information (see cross-examination of Mr. Makar, respondent’s record,
page 300, question 517) and that any changes he made were to ensure that the
newer affidavit was more complete and accurate (see cross-examination of Mr.
Makar, respondent’s record, page 302, question 524).
[36]
In my view, those explanations are valid.
Notably, none of the examples cited by the respondent were actual
inconsistencies. Generally, the changes simply made his testimony more
detailed. For instance, “specific design approaches” is a narrower term than “ideas”,
in that an idea could be a specific design approach but could also be many
other things. I consider the changes between paragraph 8 of his earlier
affidavit and paragraph 50 of his new affidavit to be of the same type (see cross-examination
of Mr. Makar, respondent’s record, page 334, questions 664 to 668). Overall, I
accept that Mr. Makar was just trying to make his testimony more specific and
complete and was not lying to bolster his claim. By themselves, therefore, I do
not view these changes as having any meaningful impact on credibility.
[37]
Moreover, I do not draw any adverse inference
against either of the applicant’s witnesses for their failure to mention their
belief that they were inventors earlier. First, I am not confident that a title
page identifying only Dr. Whitney and Mr. Sopory as inventors was circulated at
the San Francisco meeting. While that could be true, neither Mr. Makar nor Mr.
Mech recalled seeing a title page and neither the patent description nor its
title page were listed as having been handed out in Dr. Whitney’s summary of
the meeting (see affidavit of Dr. Whitney, Exhibit L). Further, if it was just
something reviewed once in person, then the title page could have been
overlooked given the trust between these men that had existed at the time (see cross-examination
of Mr. Makar, respondent’s record, pages 374 and 375, questions 857 and 860).
[38]
Of course, Mr. Mech had been named as an
inventor on one of the patents for the variant he had proposed in San Francisco and he must have noticed that the process was different that time. However,
I also accept that Mr. Mech raised concerns about inventorship before the
rights were assigned to Thermon. Although the e-mail from Mr. Mech to Dr.
Whitney on November 1, 2009 mostly dealt with Mr. Mech’s concerns about the
variant he had proposed, he also said this: “I am slowly
working through them [the patents] to identify those claims where either Makar
or I may have contributed.” The reference to Mr. Makar means that he
cannot have exclusively meant his variant and thus, Mr. Mech, at least, felt
that he had an inventorship interest beyond that.
[39]
Further, given the discussions held in the
months leading up to the assignment to Thermon, it was understandable not to
advance that issue further at the time as it could have antagonized Dr. Whitney
and Mr. Sopory and reduced the chance of a successful negotiation.
[40]
As for the respondent’s contention that Mr.
Makar’s testimony was evasive and “riddled with
inconsistencies,” (see respondent’s record, page 604, paragraph 51). I
disagree. There were a few occasions where he admitted to a lapse in memory
(see cross-examination of Mr. Makar, respondent’s record, pages 234 to 236,
questions 226 to 234), but other criticisms leveled by the respondent are
unfounded. Many rely on ambiguous language in Mr. Makar’s affidavit that he
freely clarified at the cross-examination (see eg affidavit of Mr. Makar at
paragraph 35; cross-examination of Mr. Makar, respondent’s record, pages 271 to
274, questions 376 to 384) and which I do not view as problematic.
[41]
For another example, the respondent argues that:
with respect to path redundancy, Makar retreated on cross-examination from his
assertion in his affidavit that this had been “established” going into the Glen
Ellen meeting, admitting that this feature became “unestablished” at the Glen
Ellen meeting.
[42]
Read in context, however, I would hardly
characterize this as a retreat. Though his words were arguably chosen poorly,
his description that it intentionally became unsettled or unestablished was
voluntarily given and not in response to a challenge on that point. By it, he
meant that at the Glen Ellen meeting, “we decided to
throw out for comment any possibilities, even if we realized in doing so we
would probably quickly reject most of them” (see cross-examination of
Mr. Makar, respondent’s record, pages 295 and 296, questions 491 to 493). That
is a type of creative process and I do not take it as contradicting his
affidavit.
[43]
Overall, I think Mr. Makar’s testimony largely
withstood cross-examination.
[44]
With respect to Mr. Mech, here too some of the
respondent’s criticisms are unfounded. When asked whether counsel had prepared
a sentence in his affidavit, Mr. Mech answered that he had been assisted by
counsel but could not remember if he had drafted that particular statement.
Nevertheless, he swore that it was true. The respondent said this was evasive,
but I do not see how.
[45]
As well, the respondent criticizes Mr. Mech for
not remembering if “Mr. Makar informed him that during
the Subaru telephone conversation he had that he had advised Dr. Whitney that
the design had to have electrical path redundancy.” However, that is a
specific detail about a second-hand conversation, so it is hardly surprising
that he would not remember (see cross-examination of Mr. Mech, respondent’s
record, pages 477 and 478, question 193).
[46]
That said, I agree that Mr. Mech’s
cross-examination revealed some problems. He was occasionally argumentative.
Although some of his interjections could have been legitimate attempts to
clarify the question (see eg cross-examination of Mr. Mech, respondent’s
record, page 491, question 249), many times it seemed like his interest in the
result prevented him from giving a straight answer (see eg cross-examination of
Mr. Mech, respondent’s record, pages 557 and 558, question 498). More
importantly, there were a few real contradictions in his evidence for which his
answers and explanations were very confusing (see cross-examination of Mr. Mech,
respondent’s record, pages 429 to 531, questions 392 to 396).
[47]
Moving then to the respondent’s witnesses, the
applicant’s criticism of them was not particularly convincing either. The few
contradictions it did point out were only parenthetically associated with the
litigation. For instance, the applicant’s counsel asked Dr. Whitney whether he
respected Fujikura Inc. and after he said he did, he was confronted with an
angry e-mail he wrote. When he was asked again whether he respected Fujikura
Inc., his counsel instructed him not to answer the question (see cross-examination
of Dr. Whitney, applicant’s record, pages 795 to 798). Having given no
explanation for the tone and content of the e-mail, I accept this is a
contradiction, but it has no relevance to the issues.
[48]
For some of the applicant’s other examples, I
disagree that there was any meaningful reluctance. For instance, Dr. Whitney
was confronted with an e-mail conversation between him and Mr. Makar. Mr. Makar
described something Mr. Sopory had done and asked Dr. Whitney, “Is this what you meant by Umesh playing games?” Dr.
Whitney responded “You got it! Now you understand what I
meant.” When asked about this under cross-examination, Dr. Whitney
refused to say whether his response specifically referred to Mr. Makar’s
question (see cross-examination of Dr. Whitney, applicant’s record, page 810, lines
12 and 13). Although I agree with the applicant’s interpretation of the e-mail
conversation, I do not draw any adverse inference against Dr. Whitney for
refusing to answer since he did not specifically recall to what he was
referring.
[49]
The applicant also argues that Dr. Whitney
improperly implied at paragraph 55 of his affidavit that the preferred heater
design coming out of the Glen Ellen meeting was more akin to a predecessor
cable they had worked on than the final product, but I do not consider paragraph
55 to have that implication.
[50]
Despite that, I also disagree with the
respondent that its witnesses were entirely “unshaken on
cross-examination.” For instance, Mr. Sopory testified in his affidavit
that “at the Glen Ellen meeting we did not discuss
anything more than a number of possible features that we might wish to consider
exploring.” However, the respondent has also argued that a memorandum
Dr. Whitney prepared on July 24, 2007, accurately describes a preferred heater
design coming out of the Glen Ellen meeting. When confronted with that
memorandum on cross-examination, Mr. Sopory admitted that he did not recall
discussing aspects of that preferred heater design at the Glen Ellen meeting (see
cross-examination of Mr. Sopory, applicant’s record, page 696, lines 8 to 10)
and other things in the memo he did not recall at all and was surprised to see
them (see cross-examination of Mr. Sopory, applicant’s record, page 697, lines
2 to 13). That suggests to me that either the memorandum was not accurate or
Mr. Sopory’s memory of the meeting was faulty.
[51]
Still, I ultimately am not convinced that Mr.
Makar and Mr. Mech are co-inventors for a few reasons.
[52]
First, their expertise was mostly in sales,
while the expertise of Dr. Whitney and Mr. Sopory is in research, development
and manufacturing. Although Mr. Makar and Mr. Mech both have enough experience
in the industry that I expect they could plausibly make meaningful design
contributions (and indeed, Mr. Mech did with the variant he proposed at the
meeting in San Francisco), it seems to me more likely that they would divide
the labour along the lines of their experience (see affidavit of Dr. Whitney at
paragraph 51; affidavit of Mr. Sopory at paragraph 16). Further, I do not
consider Mr. Sopory’s statement in an e-mail on March 2, 2009, to be an
admission that all four men invented the product. All he says is that they all
initiated it and “pitched in and got it to a point where
it is ready to be sold.” That is equally consistent with the
respondent’s division of labour theory as it is with the applicant’s
co-inventorship theory.
[53]
Second, Dr. Whitney provided a lot of
contemporaneous documentation showing his design work in the days leading up to
the Glen Ellen meeting. Moreover, Dr. Whitney circulated memorandums after the
Glen Ellen meeting which supports his version of what happened. Although Mr.
Makar says he probably challenged Dr. Whitney over the telephone about
perceived inaccuracies, there is no documentary evidence to support that.
[54]
The applicant argues that the e-mail from Steve
Makar to the others on February 16, 2007, supports its claim, but I disagree.
The product descriptor in that e-mail lists only the attributes of the cable,
not its design and to me it reads more like a marketing pitch than anything
else.
[55]
Third, Dr. Whitney and Mr. Sopory showed that
they were willing to credit Mr. Mech as an inventor for the variation he
proposed at the San Francisco meeting. Therefore, I expect they would have been
equally willing to do the same had Mr. Makar or Mr. Mech made any other
inventive contributions.
[56]
At least as the record stands, I would therefore
prefer the evidence of Dr. Whitney and Mr. Sopory to that of Mr. Makar and Mr.
Mech. Undoubtedly, Mr. Makar and Mr. Mech had useful input into the design of
the cable, but the applicant has not proven that it was anything more than
suggesting desired features and communicating feedback from potential
customers. Although that is certainly helpful (see cross-examination of Mr.
Sopory, applicant’s record, pages 660 and 661), it is not inventive and I would
not find that they are co-inventors.
[57]
The applicant has not proven that Mr. Makar or
Mr. Mech are probably co-inventors of the heating cable described by Canadian Patent
No. 2,724,561. As such, I would dismiss this application and award costs to the
respondent, Thermon Manufacturing Co.
Email this Content