Date: 20060308
Docket: A-516-04
Citation: 2006 FCA 98
CORAM: RICHARD C.J.
NOËL J.A.
NADON J.A.
BETWEEN:
DANNY GOLD
Appellant
and
SERRATUS MOUNTAINS PRODUCTS LTD.
and
MOUNTAIN EQUIPMENT COOPERATIVE
Respondents
REASONS FOR JUDGMENT
RICHARD C.J.
BACKGROUND
[1] This is an appeal from the judgment of Mr. Justice Blais, of the Federal Court, delivered on August 5, 2004 (2004 FC 815), dismissing the appellant's action for infringement of Canadian Patent No. 1,324,357.
[2] The appellant is a glove manufacturer who is the named inventor and owner of Canadian Patent No. 1,324,357, titled "Closure Mechanism" ('357 Patent), which was filed in Canada on May 24, 1989 on the basis of a priority filing date of May 27, 1988 (regarding the corresponding US Patent) and which was issued on November 16, 1993. The patent at issue concerns a closure device for open-ended containers, including gloves.
[3] The respondent Mountain Equipment Cooperative (MEC) is a retailer of outdoor recreational equipment including gloves and mittens for winter sports such as skiing and snowboarding. The respondent Serratus Mountain Products Ltd. (Serratus) was at all material times a manufacturer of outdoor recreational apparel including gloves and a wholly-owned subsidiary of MEC.
[4] The respondents' primary defence was that the patent, properly construed, did not extend to closure devices incorporating externally mounted spring-loaded cord-locks and that accordingly, there was no infringement.
[5] As an alternative defence, the Respondents pleaded what is known as the "Gillette Defence" arising out of the decision in Gillette Safety Razor Co. v. Anglo-American Trading Co. Ltd. (1913), 30 R.P.R. 465 (H.L.). The classic statement of the defence is as follows:
The defence that "the alleged infringement is not novel at the date of the plaintiff's Letters Patent" is a good defence in law, and it would sometimes obviate the great length and expense of Patent cases if the defendant could and would put forth his case in this form and thus spare himself the trouble of demonstrating on which horn of the well-known dilemma the plaintiff had impaled himself, invalidity or non-infringement.
The "Gillette Defence" has been raised in Canadian cases and was addressed recently by Justice Sharlow, for this Court, in Apotex Inc. v. AB Hassle, [2006] FCA 51.
[6] On that basis, the respondents argued that if the patent was to be read so widely as to encompass the respondents' closure mechanism, it would be invalid since closure mechanisms utilizing cord-locks with shock cords had been in commercial use well before the application for the appellant's patent was filed.
[7] The trial judge accepted the primary defence, and also commented that if the patent had been interpreted as to encompass the respondents' closure mechanism, the action would fail on the alternative defence.
STANDARD OF REVIEW
[8] As noted in Elders Grain Co. Ltd. v. Ralph Misener (The) (F.C.A.), [2005] 3 F.C. 367 (Elders Grain), the role of an appellate court is not to write a better judgment than the trial judge but to review the trial judge's reasons for judgment in light of the parties' arguments and relevant evidence, while considering the type of issues raised in the appeal.
[9] Questions of law must be reviewed on the standard of correctness, while all questions of fact and inferences of fact are reviewed only if it can be shown that the trial judge made a palpable and overriding error, one "that gives rise to the reasoned belief that the trial judge must have forgotten, ignored or misconceived the evidence in a way that affected his conclusion" [Van de Perre v. Edwards, [2001] 2 S.C.R. 1014 at para. 15]. A determination that involves the application of a legal test to a set of facts is a question of mixed fact and law, reviewable on a standard of palpable and overriding error, unless it is clear that the trial judge made an extricable error in principle with respect to the characterization of the legal test or its application, in which case the error may amount to an error of law (Elders Grain, supra).
[10] As stated by Justice Stone, for this Court, in Canamould Extrusions Ltd. et al. v. Driangle Inc., 30 C.P.R. (4th) 129, the construction of patent claims is a matter of law [Whilrpool Corp. v. Camco Inc., [2000] 2 S.C.R. 1067 at para. 61] and should be reviewed on a standard of correctness [Housen v. Nikolaisen, [2002] 2 S.C.R. 235 at para. 8 (Housen)]. Issues related to infringement, however, are questions of mixed fact and law [Whirlpool, supra at para. 76] and must be reviewed on the standard of palpable and overriding error [Housen, supra, at para. 31]. The burden is on the patentee to prove the infringement on a balance of probabilities and, on appeal, the standard of review is that of palpable and overriding error [Canamould Extrusions Ltd. v. Driangle Inc., [2004] F.C.J. No. 266 at para. 3 (C.A.)].
THE '357 PATENT
[11] The essence of the '357 Patent is found in Claims 1, 17, 33 and 36. The '357 Patent is a combination patent for a closure mechanism for open-ended containers, with particular application to gloves, handbags, knapsacks and other like articles featuring an open-ended portion or tubular opening.
[12] The invention uses a stretchable cord member, received in an open channel and disposed proximate to the perimeter or circumference of the open-ended tubular opening. It is the stretching and releasing of the stretchable cord which modifies its cross-sectional area, and serves to close or to adjust the opening an open-ended container or a glove.
[13] When the stretchable cord member is extended, it contracts to pass freely through the channel, enabling the cord attached to the open-ended container to shorten and to close the tubular opening to which it is attached. When the cord is released, its cross-sectional area expands and it is blocked at the location of the fixed opening, thereby securing the closure.
CONSTRUCTION OF THE PATENT
[14] The trial judge concluded that he was not bound to accept the evidence of any of the expert witnesses because the ultimate task of construing the patent was his alone.
[15] The trial judge properly recognized that the leading cases in the area of patent construction are the decisions of the Supreme Court of Canada in Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R. 1024 (Free World Trust) and Whirlpool Corp. v. Camco Inc., [2000] 2 S.C.R. 1067 (Whirlpool #2). He applied several principles from these judgments to the issue at bar:
(a) the claims are interpreted so as to give effect to the inventor's purpose;
(b) the claims language is to be given primacy;
(c) there is no infringement if an essential element of the patent is different or omitted;
(d) the ingenuity of the patent lies not in the identification of a desirable result but in teaching one particular means to achieve it; and
(e) that which is not claimed is disclaimed.
[16] The trial judge then applied these principles to the construction of the claims in the patent and particularly to Claim 17, which is the independent claim that relates to gloves. He found that:
[37] Both parties agreed that the independent claims, the core of the patent, are found in claims 1, 17, 33 and 36. Those four claims all describe a closure mechanism where a stretchable cord within a channel extends beyond either two closely spaced openings or at least one opening. In every case, the stretchable cord has a stretched cross-sectional area which is lesser than the opening, and an unstretched cross-sectional area which is larger than the opening. For the purposes of the discussion, claim 17, applicable to gloves is reproduced below:
17. A closure mechanism for a glove, comprising: channel means for forming a channel at or near a hand opening of the glove having an opened length corresponding to an opened distance around the hand opening, the channel having a channel cross-sectional area and terminating with two closely spaced openings having an opening cross-sectional area;
stretchable cord means, within the channel extending outwardly beyond both openings, having an unstretched crosssectional [sic] area and a stretched cross-sectional area, the unstretched cross-sectional area being larger than the stretched cross-sectional area and the opening crosssectional [sic] area;
whereby pulling on the portion of the stretchable cord means extending out of both openings causes the stretchable cord means to take on the stretched cross-sectional area proximate at least one opening to freely slide in the channel and then releasing the stretchable cord means causing the stretchable cord means to take on the unstretched crosssectional [sic] area proximate both openings thereby locking the stretchable cord means in the openings and shortening the channel means to a closed distance less than the opened length and securing the open end in a closed position.
[38] The principle of the invention is that the cord itself, by returning to its unstretched position, will expand and fill the opening, this providing a locking system to the decreased tubular opening. The only closure mechanism provided for is the action of the expanding stretchable cord when it returns to its unstretched state.
[17] The interpretation of the patent by the trial judge was supported by the language of the patent. The trial judge recognized that the essential element of the '357 Patent was a single closure mechanism characterized by the use of a stretchable cord and which depends upon the relationship between the cross-sectional diameter of the shock cord and the cross-sectional area of the opening of the channel.
INFRINGEMENT
[18] While the Patent Act, R.S. 1985, c. P-4, 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. This monopoly is a statutory monopoly [Schmeiser v. Monsanto Canada Inc., [2004] 1 S.C.R. 902 at paras. 34 and 35, as cited in R.T. Hughes and J.H. Woodley, Hughes and Woodley on Patents, 2nd ed. (Toronto: LexisNexis Canada Inc., 2005), Part I, c. D, § 38, para. 1] 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.), as cited in Hughes and Woodley on Patents, ibid.].
[19] The trial judge applied the correct principles for patent infringement. He stated that:
[46] 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. The defence can proceed either by denying the similarity of its product to the patented product, or by showing that the patent is invalid for obviousness or prior art.
[20] He found that:
[49] The claims all refer to a single closure mechanism, whereby the unstretched cross-sectional area of a stretchable cord being larger than the openings through which it extends, or larger than the cross-sectional area of the inserts added within the channel means, provides a blocking action once the tubular opening enclosed by the channel means has been reduced by pulling on the cord. Basically, an elastic drawstring system where closure is maintained as the elastic cord fills the space through which it slid when stretched.
[21] He concluded that:
[50] Nowhere in the claims nor in the disclosure is there a mention of another device to effect the blocking system. The system depends on the expansion of the cord once it returns to its unstretched state. I think an important principle stated at paragraph 42 in Whirlpool, supra, bears repeating at this point:
The usual rule is that what is not claimed is considered disclaimed.
[22] The trial judge rejected the appellant's arguments that (a) the spring-action cord-lock is actually part of the channel; that (b) the blocking system depends on the expansion and contraction of the elastic cord and; that (c) the cord-lock can be assimilated to the insert means provided for in the patent.
[23] He concluded that the respondents' gloves cannot be covered by the patent, since the closure mechanism on these gloves has a different structure and operational means. In reaching this conclusion of non-infringement, the trial judge made no palpable and overriding error.
[24] Given this conclusion, it is not necessary to deal with the respondents' alternative defence, known as the "Gillette Defence".
[25] Accordingly, the appeal will be dismissed with one set of costs to the respondents.
"J. Richard"
"I agree
Marc Noël J.A."
"I agree
M. Nadon J.A."
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