Date: 20100120
Dockets: A-270-09
A-271-09
Citation: 2010 FCA 21
CORAM: NADON
J.A.
EVANS
J.A.
TRUDEL
J.A.
BETWEEN:
STERLING LUMBER COMPANY
Appellant
and
RONALD HARRISON and
CAROLINA MAT CO. INC.
Respondents
AND
BETWEEN:
SWAMP MATS INC.
Appellant
and
RONALD HARRISON and
CAROLINA MAT CO. INC.
Respondents
REASONS FOR JUDGMENT OF THE
COURT
(Delivered from the Bench at Toronto, Ontario, on January 20,
2010)
EVANS J.A.
[1]
This is an
appeal by Sterling Lumber Company (“Sterling Lumber”) from an order of the
Federal Court, dated June 17, 2009, in which Justice Campbell dismissed its
motion for summary judgment against the respondents, Roland Harrison and
Caroline Mat Co. Inc. There is also an appeal (Court File No. A-271-09) by
Swamp Mats Inc. against an identical order with respect to the same
respondents. The appeals were heard together and these reasons apply to both.
[2]
The motion
arises from a patent infringement action by the respondents who have brought an
action against Sterling Lumber for infringing Canadian Patent No. 2,462,302
(“the 302 Patent”) which relates to a bolted three ply temporary wooden road
mat, which is used to provide a surface for heavy vehicles in the absence of a
permanent road. Sterling Lumber’s motion alleges that the patent is invalid on
several grounds, including anticipation based on a sale of the mats by Mr
Harrison, the inventor and owner of the patent, more than a year before the
filing date of the 302 Patent, March 29, 2004.
[3]
The
Motions Judge dismissed the motion on the ground that the construction of claim
14 of the 302 Patent was a serious issue for trial and that he was “unable to
make the critical factual finding of the meaning of the words, ‘an array of
vertically aligned intersecting surfaces’ from the perspective of a person
skilled in the art.” Consequently, he held, he was unable to determine the
issue of anticipation.
[4]
The
Motions Judge’s order commenced with the words, “As expressed in the transcript
of the Summary Judgment Motion.” This suggests that the Judge gave additional
reasons for his order. However, we do not know what other reasons, if any, the
Judge gave orally because only a few pages of the transcript from the
cross-examination are included in the appeal book. In an order dated August 25,
2009, Sexton J.A. ordered that the entire transcript of the hearing of the
motion not be included in the appeal book.
[5]
The bases
of Sterling Lumber’s appeal are that Mr Harrison admitted in cross-examination
on his affidavit that he had put in stock and sold some of the mats described
in claim 14 before 2003, and that a purchaser could have made a mat simply by
examining it.
[6]
The
plaintiffs say, however, that Mr Harrison’s answers with respect to the sale of
the mats are not admissions and are insufficiently clear to establish that the
Motions Judge erred in dismissing the motion for summary judgment. In
particular, counsel submits, it is unclear whether Mr Harrison meant that the
mats were put into stock before 2003, sold before 2003, or both. Evidence was
also required, he said, on whether a sale of a mat would have enabled the
purchaser to make the mat, because Mr Harrison had stated in paragraph 8 of his
affidavit that he had kept its design confidential.
[7]
Since we
do not know whether, or how, Justice Campbell dealt with this issue, counsel
agreed that we must decide it de novo. In our view, Mr Harrison’s answer
to the question put to him when he was cross-examined on his affidavit was clear:
prior to 2003 he had sold manually made wooden road mats as described in claim
14. At any rate, his answer was sufficiently clear as to require his counsel to
ask a clarifying question, and he did not.
[8]
Further,
the principle that parties to a motion for summary judgment must put their best
foot forward precludes the respondents from saying that other evidence may be
adduced at trial that contradicts Mr Harrison’s statement against interest and
under oath that he had sold the mats in question before 2003.
[9]
The only
issue remaining, in our opinion, is whether the prior sales of the mats
constituted an “enabling disclosure” of claim 14. The prior sale of a product
will normally make information available as to its contents and method of
manufacture: Baker Petrolite Corp. v. Canwell Enviro-Industries Ltd.,
2002 FCA 158 at para. 42. In the absence of evidence to the contrary, we agree
that any purchaser of a mat would have known how to make it simply by examining
it.
[10]
Counsel
for the respondents says that Mr Harrison should also have been asked on
cross-examination if the sales were unrestricted, especially since in paragraph
8 of his affidavit he had stated: “Each of my designs and machine constructions
have been with complete confidentiality to ensure patentability.” We do not
agree.
[11]
When
paragraph 8 is read together with paragraph 7 of the affidavit, the reference
to confidentiality seems to be limited to the designs and construction of the
machines which enabled Mr Harrison to manufacture the mats in an economically
viable manner. The machines are the subject of other claims in the 302 Patent
and are not in issue in this proceeding.
[12]
Given our
reading of the affidavit, the fact that sales of products are not normally
subject to confidentiality restrictions, and that it was within Mr Harrison’s
knowledge whether he had imposed a duty on the purchasers to keep the
information confidential, we are all of the view that it was for counsel for
the respondents to ask a clarifying question or, possibly, to have sought to
file an additional affidavit. Since he did neither, we have concluded on the
evidence before us that the sales constituted enabling disclosures.
[13]
Accordingly,
we find that the respondents’ case is so doubtful as not to deserve
consideration by a trier of fact: see AMR Technology Inc. v. Novopharm
Limited, 2008 FC 970 at paras. 6-8.
[14]
For these
reasons, the appeal will be allowed with one set of costs in this Court and
below, the order of the Federal Court, dated June 17, 2009, set aside, the appellant’s
motion for summary judgment allowed, and the respondents’ action against the
appellant for the infringement of claim 14 of the 302 Patent dismissed with one
set of costs.
"John
M. Evans"
FEDERAL COURT OF APPEAL
NAMES OF COUNSEL AND SOLICITORS
OF RECORD
DOCKETS: A-270-09
(AN
APPEAL FROM THE FEDERAL COURT, FROM THE ORDER OF CAMPBELL J. DATED JUNE 17, 2009, IN FEDERAL
COURT FILE NO. T-2058-05)
STYLE OF CAUSE: STERLING
LUMBER COMPANY v. RONALD HARRISON AND CAROLINA MAT CO. INC
PLACE OF HEARING: TORONTO,
ONTARIO
DATE OF HEARING: JANUARY 20, 2010
REASONS FOR JUDGMENT
OF THE COURT BY: (NADON,
EVANS & TRUDEL JJ.A.)
DELIVERED FROM THE BENCH BY: EVANS J.A.
APPEARANCES:
|
Arthur B. Renaud
Christopher
D. Heer
|
FOR
THE APPELLANT
|
|
Kenneth D. Hanna
Mala
Joshi
|
FOR
THE RESPONDENT
|
SOLICITORS
OF RECORD:
|
Bennett Jones LLP
Toronto, Ontario
|
FOR THE APPELLANT
|
|
Ridout & Maybee LLP
Toronto,
Ontario
|
FOR THE RESPONDENT
|
FEDERAL COURT OF APPEAL
NAMES OF COUNSEL AND
SOLICITORS OF RECORD
DOCKET: A-271-09
(AN
APPEAL FROM THE FEDERAL COURT, FROM THE ORDER OF CAMPBELL J. DATED JUNE 17, 2009, IN FEDERAL
COURT FILE NO. T-2099-05)
STYLE OF CAUSE: SWAMP
MATS INC. v.
RONALD HARRISON AND CAROLINA
MAT CO. INC.
PLACE OF HEARING: TORONTO, ONTARIO
DATE OF HEARING: JANUARY
20, 2010
REASONS FOR JUDGMENT
OF THE COURT BY: (NADON,
EVANS & TRUDEL JJ.A.)
DELIVERED FROM THE BENCH BY: EVANS
J.A.
APPEARANCES:
|
Arthur
B. Renaud
Christopher
D. Heer
|
FOR
THE APPELLANT
|
|
Kenneth
D. Hanna
Mala
Joshi
|
FOR
THE RESPONDENT
|
SOLICITORS
OF RECORD:
|
Bennett
Jones LLP
Toronto, Ontario
|
FOR THE APPELLANT
|
|
Ridout
& Maybee LLP
Toronto,
Ontario
|
FOR THE RESPONDENT
|
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