Gold v. Serratus Mountain Products Ltd., 2004 FC 815

Date: 20040805

Docket: T-1406-99

Citation: 2004 FC 815

Montréal, Quebec, August 5, 2004

Present:         The Honourable Mr. Justice Blais                                 

BETWEEN:

                                                                 DANNY GOLD

                                                                                                                                              Plaintiff

                                                                           and

                                       SERRATUS MOUNTAIN PRODUCTS LTD

                                                                             &

                                        MOUNTAIN EQUIPMENT COOPERATIVE

                                                                                                                                      Defendants

                                   REASONS FOR JUDGMENT AND JUDGMENT

[1]                Mr. Danny Gold (plaintiff) sought a declaration of infringement, an injunction and damages or accounting for profits for the alleged infringement of Canadian Patent No. 1,324,357 ('357 patent) of which he is the owner.

Alleged Infringement

[2]                Patent '357 covers an invention entitled "Closure Mechanism"; it was filed May 24, 1989 and was granted to the plaintiff inventor on November 16, 1993. The patent expires November 16, 2010. A patent on the same invention was registered in the United States on May 27, 1988.

[3]                The statement of claim provided the following summary of the invention:

The '357 patent relates to a closure mechanism for open-ended containers, with particular application to gloves, handbags, knapsacks and other like articles featuring an open-ended portion of tubular opening, the diameter of which may be optimally adjusted or closed, when the article is in use. The closure mechanism of the '357 patent is characterized by the use of a stretchable cord means received by an open channel means which is disposed proximate to the perimeter or circumference of the open-ended portion or tubular opening. The stretching and releasing of the stretchable cord modifies its cross-sectional area, thereby enabling it to slide freely within the channel or be impeded or retained therein. The sliding movement (or lack thereof) of the stretchable cord within the channel means consequently reduces or enlarges the diameter and size of the open-ended portion or tubular opening, all as set forth in the disclosure and claims of the '357 patent.

[4]                The abstract and claims of the patent can be found in the appendix.

[5]                The plaintiff alleged that Serratus Mountain Products Limited (Serratus) and Mountain Equipment Cooperative (MEC) (collectively, the defendants) had been infringing his patent since at least as early as Spring 1999, by manufacturing, selling and promoting in Canada various articles that featured the plaintiff's closure mechanism under the brand names Serratus and MEC.

[6]                The plaintiff alleged that the defendant Serratus had been manufacturing and selling gloves under the Serratus brand which featured a closure mechanism characterized by the use of a stretchable cord within an open channel close to the hand opening of the glove. Stretching and releasing the cord modified its cross-sectional area, enabling it to either slide freely within the channel or be retained therein, allowing the reduction or enlargement of the diameter of the hand opening of the glove. The gloves thus appropriated and incorporated the substance of the invention described in patent '357. The plaintiff also alleged that the defendant MEC had manufactured and sold, under its own MEC brand, articles which made use of the patented closure system.

[7]                More particularly, the plaintiff alleged that the defendants had infringed each of claims 1, 2, 3, 4, 5, 6, 7, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 27, 28, 29, 30, 31, 32, 33, 34, 35 and 36 of patent '357. The various claims deal with different elements and applications of the closure mechanism.

[8]                According to the plaintiff, the impugned articles produced by Serratus and MEC incorporate a closure mechanism which comprises all the features of the invention: a closure by way of a channel means at or near the opening through which a stretchable cord is pulled and released, to increase, decrease or lock into place the desired degree of closure by the action of the stretchable cord either sliding through the openings, when it is stretched, or blocking the sliding motion when unstretched, when its cross-sectional area becomes bigger than that of the opening. According to the plaintiff, by virtue of the similarity between the invention and the defendants' closure mechanisms on their products, the defendants were infringing the patent.

Defence

[9]                The defendants acknowledged the existence of the patent and its ownership by the plaintiff. They were prepared to admit that it was valid, on a strict construction of the patent. However, they specifically denied that their products were infringing patent '357.

[10]            The defendants admitted that the '357 patent related to articles featuring an open-ended portion or tubular opening, and that it required a channel near or at the opening through which a stretchable cord extended and out of which it protruded. According to the defendants, the following attributes were essential to the invention:

1) when unstretched, the cord had a cross-sectional area which was greater than the channel end openings, thus allowing for a locking mechanism.

2) when stretched, the cord has a cross-sectional area that was smaller than the channel end openings, thus allowing for a sliding motion of the cord and change in the size of the opening.

[11]            The defendant Serratus denied that the articles it manufactured and sold had a closure mechanism which infringed patent '357. The closure system on Serratus gloves or mittens includes a stretchable cord through a channel, but whether it is stretched or not has no bearing on whether the closure or adjustment may be locked or not. Rather, the locking mechanism is a releasable spring-action cord-lock.

The fact is that the maximum cross-sectional area of the cord is significantly less than the cross-sectional area offered by the channel and there is no functioning relationship between the size of the defendant's cord and the size of end openings in the channel through which the cord extends. (Amended Statement of Defence, para. 5)

[12]            MEC makes the same argument in regards to its products - the main feature of the patented closure system, i.e., the stretchable cord which alternatively slides or locks according to whether it is stretched or not, is not part of the closure system on MEC products. MEC products also feature a spring-action cord-lock where the size of the cord relative to the opening has no bearing on the functioning of the lock.

[13]            The defendants submitted that the disclosure portion of the '357 patent included the following statement:

... prior drawstring arrangements have included use of a buckle or other separate closure member or members in connection with the drawstring to hold the drawstrings in a tightened position. Yet another object of the invention is to provide an improved closure mechanism which does not require a buckle or other additional closure member. (Amended Statement of Defence, paras. 10 and 11).

[14]            Yet the spring-action cord-lock used in Serratus products (and by extension, MEC products) is precisely a separate or additional closure member. Thus the defendants specifically denied the infringement since both the structure and the principle of operation of any closure mechanism on Serratus or MEC product made such closure mechanisms substantially different from the closure mechanism described in the '357 patent.

[15]            The defendants argued that on a strict construction of the patent, the closure mechanism they used on gloves, bags, or other tubular items was completely unrelated to the invention. If the patent was construed to cover the plastic cord-lock they used, which is never mentioned neither in the claims nor in the description of the invention, then the patent would be so wide as to be invalid, since other closure systems similarly using elastic drawcords and some locking mechanism pre-existed the American patent.

Evidence

[16]            I found the witnesses for the plaintiff more credible than the witnesses for the defendants, the latter witnesses being less well prepared. I reluctantly agreed to have Mr. Gold testify as an expert, on consent of both parties. My reluctance was not related to Mr. Gold's integrity or knowledge, but rather to the fact that as a plaintiff he is definitely an interested party. It was submitted that there are very few glove experts in North America, and Mr. Gold's in-depth knowledge of glove construction was indeed useful. Mr. Khalifa, for the plaintiff, proved by far the best witness - well prepared, very knowledgeable, with a clear and forthright testimony. On the defendants' side, I found a great deal less expertise and preparation. Terms of the art, such as channel means, were not understood.

[17]            That being said, it is important to state from the start that it is the judge, and the judge alone, who is tasked with construing the patent. This principle has been stated many times in Canadian law, but it bears repeating, since although I found the evidence of the applicants more cogent, I do not feel bound by this evidence to make my findings. More exactly, although the applicant's experts had a clearer understanding of the terms used in the patent, this is irrelevant both to the construction of the claims and to the finding of infringement or non-infringement. Several cases have made this point. In Nekoosa Packaging Corp. v. AMCA International Ltd. , [1994] F.C.J. No. 1046 (F.C.A.), the Federal Court of Appeal wrote as follows:

¶ 14       While the question of admissibility of expert evidence on ultimate issues is not before us, it is of paramount significance to appreciate that the learned Trial judge recognized that the ultimate task of construing the patent was his alone. He did not abdicate or delegate his judicial function. At page 168, he stated:

What then has been invented here? As can be seen from my earlier comments, I found many words and phrases to be vague if not ambiguous. Jurisprudence dictates that a patent must be read by one willing to understand. Here, we have the additional benefit of expert witnesses who, through affidavits, and oral and written evidence, endeavour to assist the court with the meaning of words and phrases, the state of the art, the explanation and demonstration of various diagrams and figures, but in the final analysis it is the court's responsibility to construe the patent.

[18]            Again, the principle is repeated in Canamould Extrusions Ltd. v. Driangle Inc.,

[2004] F.C.J. No. 266 (FCA):

¶ 28       The task of a trial judge is to determine, on a purposive construction of the patent, which of the elements of the claimed invention were crucial or "essential" and which ones were not. Having properly stated the principles of claim construction at paragraphs 30 through 36 of her decision, it is clear that the Trial Judge appreciated the task that was before her. She was to purposively construe the Patent through the eyes of a skilled reader as of the date of publication. Assisted by the expert evidence, the context to the claims provided by the disclosure and figures, and the purposes served by the top surface of the table under the Patent, it was open to the Trial Judge to adopt a construction of the claims that was different from that put forward by the parties (Whirlpool, supra, at para. 61).

[19]            Finally, I would cite in this regard Mobil Oil Corp. v. Hercules Canada Inc.,

[1995] F.C.J. No. 1243 (FCA), where the respondent had argued that the trial judge had erred in his interpretation of a certain phrase in the patent, which interpretation was disputed by some of the experts. The Federal Court of Appeal responded thus to argument:

¶ 15       I disagree with the respondent. The trial judge was quite conscious of the limitations to which his inquiry into the intended scope of the original patent was subject. He was sensitive to the fact that he needed objective evidence and support in the text of the patent itself. But the construction of a patent is a matter for the judge, as this Court had occasion to repeat it again forcefully in its recent judgment in Nekoosa Packaging Corp. v. United Dominion Industries Ltd. supra, and his reading must prevail to that of experts unless clearly unacceptable. In taking the phrase "which as will be described hereinafter adversely affect the adhesion of a film to a metallized coating" as more than a strict reminder of a physical phenomenon known by anyone skilled in the art, the trial judge could rightly find the support he needed in the text of the patent itself.

[20]            The judge must thus find support in the text of the patent itself, which I intend to do. First, however, I must state that for the purposes of construing the claims of the patent, I believe the most important part of the evidence was the gloves and mittens that were presented as material evidence. We will refer to these articles as "gloves", even if they may be mittens, for simplicity's sake. The important feature is the closure system, which applies indifferently to gloves or mittens.

[21]            Several examples of gloves, mittens and elastic drawstring closure mechanisms were introduced into evidence. However, I believe there are five gloves that help us understand what is at stake in the allegation of infringement. First, exhibit P2, a glove made by MEC (MEC glove), which the plaintiff is alleging infringes the patent at issue (exhibit P3, the glove made by Serratus which is also alleged to be infringing, is included in the MEC glove for the purposes of the analysis); secondly, exhibit P15A, a glove manufactured by the Rossignol company (Rossignol glove), made on the specifications of the patent; thirdly, exhibit D6, a glove marketed by the Chouinard Company (Chouinard glove) since at least 1986, before the patent was registered in the United States in 1988; fourthly, exhibit D8, a glove made by Serratus (Serratus); and fifthly, exhibit P4, a glove designed for the 1982 Everest expedition (Everest glove).

[22]            All of these gloves have in common an opening with a cuff, or channel, within which a stretchable cord is found. This cord extends out of the two openings (one opening, in the case of the Everest glove) at the end of the channel. The glove opening can be tightened by pulling on the stretchable cord. The locking mechanism (described below) on all of these gloves allows a one-handed operation, i.e., pulling on the cord is sufficient to lock the cord and thus maintain the opening in a closed position.

[23]            In the case of the MEC glove, the stretchable cord is threaded through a plastic cord-lock which squeezes the cord by means of a spring action. As the cord is pulled then released, the spring causes the plastic cord-lock to clamp down on the cord, thus maintaining the closure. Release is achieved by squeezing the cord-lock, which releases the spring and allows the cord to move freely in the cord-lock. The cord-lock is held against the glove by a plastic or fabric loop, such that the cord-lock is held directly against the openings of the channel. (There was considerable discussion as to whether the cord-lock itself was part of the channel, such that the opening would be on the exterior side of the cord-lock; this will be discussed later. The description given here is not meant to pre-empt the infringement discussion, but to give a visual idea of the closure, in layman's terms.)

[24]            The Rossignol glove, an authorized embodiment of the patent, has no cord-lock. Rather, within the channel is found an insert whose diameter is smaller than that of the cord in its unstretched state, but larger than the stretched cord diameter. Thus, by pulling on the cord, it slides freely within the insert and the glove can be tightened. When the cord is released, the diameter of the cord becomes larger than that of the insert, and the cord is locked into place.

[25]            The Chouinard glove, which both parties agreed was made prior to the filing of the American patent, features a barrel-shaped cord-lock, which is not held against the channel openings as in the case of the MEC glove. Rather, an additional unstretchable cord extending from the cord-lock is attached to the glove, approximately two inches below the channel openings. The purpose of attaching the toggle is to allow the one-handed operation of the closure system, since the unstretchable cord counteracts the pulling action, enabling the cord-lock to decrease the opening. This is the so-called "tethered system" which the plaintiff admits does not infringe the '357 patent.

[26]            The defendants introduced two additional gloves. One, the Everest glove, served to illustrate the fact that some of the features of the various gloves existed long before the patent was obtained in the U.S. This glove had been designed for the 1982 Everest expedition. It also featured an elastic drawstring through channel openings. The blocking mechanism here was simply the friction of the gathered material and the two drawstrings extending out of an opening with a somewhat smaller diameter than the two cords combined, thus causing additional friction and thereby a locking mechanism.

[27]            The other glove, the Serratus glove, had the same cord-lock as the MEC glove. However, the cord was stretchable inside the channel, and non-stretchable outside the channel. Thus, pulling on the cord had no effect on its diameter, which showed, according to the defendant, that the spring-action lock worked on an entirely different principle than the patented invention.

ISSUE

[28]            The parties had agreed during the pre-trial conference that the following questions were in issue:

a)         the interpretation of the claims of Patent '357;

b)          the determination as to whether the closure mechanisms of the defendants, and the products to which they are incorporated, fall within the scope of the claims of the patent in suit on a purposive construction of the claims, and therefore whether the defendants' activities infringe the claims of the '357 patent;

c)         the validity of the patent in suit.

[29]            In two unanimous decisions, the Supreme Court of Canada has confirmed that infringement is to be determined by construing the claims of the patent. (Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R. 1024; Whirlpool Corp. v. Camco Inc., [2000] 2 S.C.R. 1067). For this reason, I believe the first question is really the first part of the analysis to answer the second question. In addition, the defendants were willing to recognize the validity of the patent, as long as their own products were found to be non-infringing. The central issue is thus the issue of infringement; only if infringement is found will the third question need to be answered.

[30]            The issue can thus be restated more simply: Do the defendants' products infringe the claims of the '357 patent?

LEGISLATION

[31]            For the purposes of this decision, the most important provision in the Patent Act, R.S. 1985, c. P-4, is found in section 27, more specifically subsections 3 to 5, which read as follows:

ANALYSIS

[32]            The idea of patent protection goes back a long time in the common law, and its principles are already embodied in an English decision of 1653 (Clothworkers of Ipswich Case (1653), Godb. 252, 78 E.R. 147, cited in Free World) which recognized the inherent tension in the granting of a patent: on the one hand, legitimate protection of a new invention, on the other, the necessity to grant a limited monopoly, so as to not stifle commercial development. Those twin interests have been described by the jurisprudence as fairness and predictability. The inventor is entitled to the benefit of his invention, but a person skilled in the art must know what are the limits of the patent to adjust his activities accordingly.

[33]            To balance those two interests, the Patent Act provides that the invention must be described in a very precise manner, so as to notify other people skilled in the art what exactly is claimed and protected by the patent. The claims, in particular, serve the purpose of determining the scope of the patent. As stated in Free World, supra, at paragraphs 14 and 15:

Patent claims are frequently analogized to "fences" and "boundaries", giving the "fields" of the monopoly a comfortable pretence of bright line demarcation. Thus, in Minerals Separation North American Corp. v. Noranda Mines, Ltd., [1947] Ex. C.R. 306, [page 1036] Thorson P. put the matter as follows, at p. 352:

By his claims the inventor puts fences around the fields of his monopoly and warns the public against trespassing on his property. His fences must be clearly placed in order to give the necessary warning and he must not fence in any property that is not his own. The terms of a claim must be free from avoidable ambiguity or obscurity and must not be flexible; they must be clear and precise so that the public will be able to know not only where it must not trespass but also where it may safely go.

In reality, the "fences" often consist of complex layers of definitions of different elements (or "components" or "features" or "integers") of differing complexity, substitutability and ingenuity. A matrix of descriptive words and phrases defines the monopoly, warns the public and ensnares the infringer. In some instances, the precise elements of the "fence" may be crucial or "essential" to the working of the invention as claimed; in others the inventor may contemplate, and the reader skilled in the art appreciate, that variants could easily be used or substituted without making any material difference to the working of the invention. The interpretative task of the court in claims construction is to separate the one from the other, to distinguish the essential from the inessential, and to give to the "field" framed by the former the legal protection to which the holder of a valid patent is entitled.

[34]            Just as "fences" and "boundaries" ensure the predictability of the patent, fairness is achieved, so as not to deprive the inventor of the benefits of his invention, by the "purposive construction" of the claims, i.e., the claims are interpreted so as to give effect to the inventor's purpose. The Supreme Court in Whirlpool, supra, makes the following statement on purposive construction:

The key to purposive construction is therefore 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. (para. 45)

[35]            In Free World, supra, a unanimous Supreme Court affirms the primacy of the claims language; adhering to the language of the claims will ensure both fairness and predictability. The purposive construction is a combined approach, which does away with a literal approach followed by a more substantive approach, but rather seeks to determine the scope of the inventor's rights. This in turn will allow the Court to decide if infringement has occurred. In Free World, the Court quotes with approval the following passage from Mobil Oil Corp. v. Hercules Canada Inc., supra, at paragraph 39:

It is my opinion that one should not endeavour to create a distinction between a substantial and a literal infringement in a case such as this; one should construe the claims so as to determine what exactly lies within the scope of the inventor's rights. Once this has been determined, then one can consider the defendant's product to decide if it falls within the scope of the claim.

[36]            With these principles in mind, we now turn to the content of the patent and the claims; in other words, what does the patent teach?

Teaching of the patent

[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.

[39]            The claims also include an addition to the channel means, an insert means, within the channel, which provides a smaller opening cross-sectional area (claim 24). This insert means can also act as the brake on the cord, instead of the opening; incidentally, that was precisely the design of the Rossignol glove. The claims also state that the insert means can be of polyvinylchloride cotton material, having a non-slip finish (claim 25). Claim 26 is for the insert means to be sewn to the channel member, proximate both openings.

[40]            Finally, the claims provide for two possible additions to the closure mechanism: an outside handle, to prevent the free ends of the cord from withdrawing back into the channel (e.g. claim 3), and a release mechanism enabling the enlargement of the channel from a closed length to an opened length. This release mechanism is further described in the disclosures and drawings, where it is set perpendicular to the channel, close to the opening, in such a way that by pulling on it, the channel is slightly widened or the cord slightly stretched, thus releasing the cord and allowing the lengthening of the channel.

[41]            Although the claims are determinative to the scope of the patent protection, the summary of the invention is a further aid in interpreting what is the object of the patent. In the summary, the mechanism itself is described:

The invention is generally directed to a closure mechanism for an open-ended container. A channel member is coupled at or near the open end of the container for forming a channel of an open length, corresponding to the distance around the open end. The channel has a channel cross-sectional area and terminates in two closely spaced openings, each having an opening cross-sectional area. A stretchable cord member is located within the channel and extends outwardly beyond both the openings. A stretchable cord has an unstretched cross-sectional area and a stretched cross-sectional area. The unstretched cross-sectional area is larger than the stretched cross-sectional area and the opening cross-sectional area. By pulling on the portion of the stretchable cord member extending out of both openings, the stretchable cord member takes on the stretched cross-sectional area proximate the opening. As a result, the stretchable cord member freely slides in the channel. When the cord member is then released, the stretchable cord member takes on the unstretched cross-sectional area proximate the openings, thereby locking the stretchable cord member in the openings and shortening the channel member to a closed length which is less than the open length and secures the open end of the container in a closed position.

[42]            Further on, describing more particularly the closure mechanism applied to gloves, the release means is described:

When a handle release member which is coupled proximate to the openings, is pulled on, the channel means is stretched, expanding the channel from the closed distance to the open distance, thereby releasing the closure mechanism.

[43]            In explaining the advantages of the invention, the summary also states:

Yet another object of the invention is to provide an improved closure mechanism which does not require a buckle or additional closure member.

[44]            In the Detailed Description of Preferred Embodiments, the disclosures state that an additional layer can be added to further reduce the cross-sectional area within the channel region; this additional layer can be made of fabric or plastic or rubber:

In an alternate preferred embodiment shown in Fig. 3A, channel region 52a includes an additional cross-sectional area reducing layer 57. Layer 57 in a preferred embodiment is polyvinylchloride (PVC) coated cotton. ... Layer 57 can be molded rubber or plastic parts instead of a fabric or leather, in which case shockcord 54 would be threaded through layers 57.

[45]            In one of the embodiments, the reduced cross-sectional area of channel region 52a, with or without layer 57, performs the locking operation:

As a result of the reduced cross-sectional area of channel regions 52a, which is less than the unstretched cross-sectional area of shockcord 54, shockcord 54 locks in channel regions 52a, thereby maintaining channel member 51 tightly against the wearer's wrist. All that is required to accomplish this is a simple pull on the ends of shockcord 54 extending from openings 55, followed by releasing the tension on shockcord 54.

Infringement

[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.

[47]            Both the Patent Act (subsection 43(2) - presumption of validity) and the common law support maintaining the validity of patents unless strong evidence shows them to be invalid. As stated in [1981] 1 S.C.R. 504">Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd., [1981] 1 S.C.R. 504:

...as Duff C.J.C. said, giving the judgment of the Court in Western Electric Company, Incorporated, and Northern Electric Company v. Baldwin International Radio of Canada [[1934] S.C.R. 570">[1934] S.C.R. 570], at p. 574, "where the language of the specification, upon a reasonable view of it, can be so read as to afford the inventor protection for that which he has actually in good faith invented, the court, as a rule, will endeavour to give effect to that construction". Sir George Jessel spoke to like effect at a much earlier date in Hinks & Son v. Safety Lighting Company [(1876), 4 Ch. D. 607]. He said the patent should be approached "with a judicial anxiety to support a really useful invention".

[48]            In this case, the main line of defence has been to deny similarity between the invention and the closure mechanism used by Serratus and MEC. The plaintiff contends that the impugned closure mechanisms contain all the essential features of his invention; the defendants argue that the two mechanisms are fundamentally different. What needs to be determined by this Court is what are the "essential elements" of the patent, and what are the "non-essential elements". The importance of the exercise is emphasized by the principle stated by the Court in Free World, supra:

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. (para. 31)

What is essential in patent '357?

[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.

[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.

Impugned article

[51]            In the MEC glove, the spring action cord-lock holds the cord that is threaded through it, unless force is exerted to pull the cord. Pulling on the cord, with the cord-lock held down, either by the tether system (Chouinard glove) or by the loops near the channel (MEC glove) allows the wearer to decrease the length of the cord, thereby closing the tubular opening. The spring on the cord-lock makes the lock clamp down on the cord that is pulled through, once the pulling stops. At rest, the spring maintains a tension on the cord and clamps down on it. The release system is effected by squeezing the cord-lock, so that the space through which the cord is threaded is increased and the cord released.

[52]            The plaintiff had several creative arguments to try to show that:

a)         the spring-action cord-lock is actually part of the channel;

b)         the blocking system also depends on the expansion and contraction of the elastic cord;

c)         the cord-lock can be assimilated to the insert means provided for in the patent.

a)         the spring-action cord-lock is actually part of the channel

[53]            The cord-lock is held by a loop against the channel. The plaintiff tried to argue, and Mr. Khalifa asserted, that what was within the loop was part of the channel region. In reading the description of the patent and the claims, and from looking at the drawings, nowhere is it stated that there would be an independent part, outside the openings through which the cord extends from within the channel, that would serve as a blocking mechanism. The claim is simply not there. As a matter of fact, the description of the patent specifically states, "Yet another object of the invention is to provide an improved closure mechanism which does not require a buckle or other additional closure member". [my emphasis] The claims confirm the promise; the mechanism described consists only of the channel and cord, with additional inserts possibly, but always with the blocking provided by the unstretched area of the elastic cord. The inserts that may be included are within the channel, before the opening through which the cord protrudes. The plaintiff cannot simply state that an additional device is part of the channel, when nowhere does he claim the use of an additional device.

[54]            Placing the cord-lock against the channel openings is a logical progression from the tethered system. For a one-handed operation of the closure mechanism, the cord-lock device must be somehow restrained when the cord is pulled to decrease the circumference of the tubular opening. It works with the tether, but it works better if force is applied more directly, which is what happens if the cord-lock is maintained in a straight line close to the opening. The channel itself does not change and is not extended; the cord-lock is simply brought closer.

[55]            The description of the channel means in the claims contradicts the idea that it could be understood to include the cord-lock, even if the latter is held against the channel by a loop. In claims 1, 17, 33 and 36, the channel means is described as follows:

          Claim 1: "... channel means coupled at or near the end of the container for forming a channel of an opened length, corresponding to a distance around the open end of the container..."

Claim 17: "... 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 ..."

Claim 33: "... channel means coupled around the tubular member at a closure location for forming a channel of an opened length, corresponding to a distance around the tubular member at the closure location ..."

Claim 36: "... channel means coupled to a tubular member at a closure location, for forming a channel of an opened length, corresponding to a distance around the tubular member at the closure location ..."

[56]            In every instance, the length of the channel means corresponds to the distance around the opening of the container or item to be closed. In the MEC glove, the cord-lock is adjacent to the channel, but it lies outside the tubular or glove opening; thus, based on the claims themselves, it cannot be said to be part of the channel means.

b)         the blocking system also depends on the expansion and contraction of the elastic cord

[57]            As the Serratus glove shows (D8), the blocking mechanism of the spring action cord-lock has nothing to do with the elasticity of the cord threaded through it. The MEC glove uses an elastic for its even gathering effect; it is cheaper and more efficient to have the whole cord of one material. But the Serratus glove was designed for non-elastic material to be threaded through the cord-lock, with elastic cord only within the cuff. The fact is, the changing diameter of the cord matters not at all with a cord-lock, since the cord is pulled through simply by pulling, and is blocked by the clamping action of the spring. Nowhere in the claims or in the patent is a clamping action mentioned as the blocking device; again, the invention rests entirely on the unstretched cord filling the opening of the channel and blocking further movement.

c)         the cord-lock can be assimilated to the insert means provided for in the patent

[58]            The plaintiff tried to argue that since plastic or rubber had been envisaged for the insert means, the spring-action cord-lock was little different from the insert claimed in the patent. Again, the mechanism is wholly different. Whether the insert means is fabric, rubber or plastic, the fact that both it and the cord-lock are proximate the openings has nothing to do with the way the invention works and the way the cord-lock operates. The insert means offers a better resistive means to the elastic cord in its unstretched state than simply the opening. The "interference friction", as Mr. Khalifa put it, is more efficient since the constricting channel is extended by the insert. The principle remains the same: it is the effect of the elastic at rest which is the blocking mechanism, not a clamp operated by a spring.

[59]            Another difference between the two systems would seem to confirm both that the mechanisms are different, and that the cord-lock is independent from the channel. The release mechanism in the '357 patent is provided by a tab, attached to the channel, which is pulled to open the channel and stretch the cord within, thus allowing the cord to slide and the channel to lengthen.

[60]            In the MEC device, the cord-lock is squeezed, to widen the opening shut by the spring action. The difference in movement is telling. In one case, the release is exerted on the channel itself; in the other case, the release is completely independent from the channel. The release tab in patent '357 pulls on the channel itself; the release mechanism in the cord-lock has nothing to do with the channel, and would operate wherever it is on the cord, close to the channel or further away, as may occur with the tethered system.

[61]            In Eli Lilly & Co. v. O'Hara Manufacturing Ltd., [1989] F.C.J. No. 408, 26 C.P.R. (3d) 1 (F.C.A.), Justice Pratte, writing on behalf of the Court, quoted the famed House of Lords decision in Catnic Components Limited and another v. Hill & Smith Limited, [1982] R.P.C. 183 at 242 and following:

My Lord, a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. "skilled in the art"), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so-called "pith and marrow" of the claim. A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked. ... It is to be answered in the negative only when it would be apparent to any reader skilled in the art that a particular descriptive word or phrase used in a claim cannot have been intended by a patentee, who was also skilled in the art, to exclude minor variants which, to the knowledge of both him and the readers to whom the patent was addressed, could have no material effect upon the way in which the invention worked.

[62]            Justice Pratte then applied the test to the case before the Court, which concerned an alleged patent infringement of a pill-coating machine. In the claims, it was specifically stated that the patented machine comprised "an exhaust inlet flexibly biased against the exterior". The defendant-appellant O'Hara had manufactured a machine where the exhaust inlet was mounted in a fixed position. The trial judge had found infringement. The Court of Appeal stated the question thus:

If those principles are applied in this case, the question to be answered may be formulated by adapting to the facts of this case the language used by Lord Diplock at page 244: would the specification make it obvious to a reader skilled in the art that the description of the patented machine as comprising "an exhaust inlet flexibly biased against the exterior" of the drum could not have been intended to exclude machines in which the exhaust was not "flexibly biased against" the drum but was mounted in a fixed position as close as possible to the drum?

[63]            Justice Pratte then made the following statement:

It should be realized that the answer to that question depends on the interpretation that is put on the claims. That answer, therefore, must be consistent with the text of the claims. A Court must interpret the claims; it cannot redraft them. When an inventor has clearly stated in the claims that he considered a requirement as essential to his invention, a Court cannot decide otherwise for the sole reason that he was mistaken. I also wish to add that, as the Court, in interpreting the claims, is merely trying to find out what was the intention of the inventor, it cannot conclude that strict compliance with a word or phrase used in a claim is not an essential requirement of the invention 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.

[64]            Thus, in the instant case, the question of infringement could be stated in the following terms:

Would it be apparent to any reader skilled in the art that the description of the closure system as comprising " stretchable cord...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 at least proximate the openings to freely slide in the channel and then releasing the stretchable cord means causes the stretchable cord means to return to the unstretched cross-sectional area proximate the openings, thereby locking the stretchable cord means in the openings and shortening the channel to a closed length less than the open length and securing the open end of the container in a closed position" could not have been meant to exclude closure mechanisms where the locking system was not caused by the stretchable cord returning to its unstretched state?

[65]            If one seeks the one essential element of this patent, it is the elasticity of the cord within the channel as a means of closure or adjustment. If the cord is not elastic, it fails to perform what is claimed in the patent, since it cannot contract to slide through the openings or inserts and cannot expand to fill same openings or inserts to provide the locking action. We have seen that this elasticity is not at all necessary to the functioning of the closure system of the MEC glove. It would be impossible for a skilled person reading the patent to devise the spring action cord-lock mechanism from what is taught by the patent. The wording of the claim excludes a closure mechanism where the difference between stretched and unstretched area is not the essential requirement for the closure mechanism to work.

[66]            In this case, it would appear that strict compliance with the condition of elasticity is an essential requirement; it is not at all obvious, quite the contrary, that the inventor knew "that failure to comply with that requirement would have no material effect upon the way the invention worked". The invention is designed to work with a stretchable cord. In the case of the MEC glove closure mechanism, the "essential requirement" of elasticity is not applicable. The cord-lock closure simply does not work on a principle dependent on elasticity.

[67]            As in Free World, supra, as in O'Hara, supra, a fundamental difference in both the structure and the operation of the impugned article and the device contemplated in the claims excludes the impugned article from the scope of the claims.

[68]            Therefore, there is no infringement of patent '357.

[69]            There being no infringement of patent '357 on a purposive construction of the patent and claims, and since the defendants were willing to acknowledge the validity of the patent, I do not find it necessary to address the validity of the patent, which continues to be presumed valid.

[70]            I would add, however, that only a strict construction of the patent can permit its validity to be maintained. If, as the plaintiff urged, I had found that the cord-lock mechanism indeed infringed the patent, then the patent would have been so wide as to be invalid, since it would include also closure mechanisms that existed before the patent was granted, as in the case of the Chouinard glove or the Everest glove.

[71]            The plaintiff's counsel argued that the essential element of the patent is to keep a resistive means proximate the opening. In Free World, supra, the Supreme Court of Canada clearly stated that "the ingenuity of the patent lies not in the identification of a desirable result but in teaching one particular means to achieve it" (paragraph 32). If a resistive means proximate the opening is the essential element of the patent, then it is already found in the Everest glove. I agree that the patent is valid; but it is, as we stated at the beginning, defined by its claims. The claims assert more than a resistive means proximate the opening: they state the one particular means to achieve this result, i.e., the stretchable cord returning to the unstretched cross-sectional area, as a result of which the stretchable cord is locked in the opening or openings.

[72]            The plaintiff's action must fail, whatever the reading of the patent. On a narrow construction, the defendants' gloves cannot be covered by the patent, since their closure mechanism has a different structure and operational means; on a broad interpretation, which would include the defendants' gloves, it is impossible to distinguish other gloves, despite the plaintiff's attempt to exclude the Chouinard glove from such a reading by insisting on the "proximate" restrictive means. Given the clear separation between the cord-lock and the cuff opening, it is not such a leap to consider that the tethered system also provides for a locking device "proximate" the opening. In any event, the Everest glove would clearly be covered also, which would cast doubt on the entire patent.

                                                                   JUDGMENT

THIS COURT ORDERS that:

-            The action is dismissed;

-          One set of costs in favour of the defendants.

                       " Pierre Blais "                      

                                 Judge                             

APPENDIX

Canadian Patent No. 1,324,357

ABSTRACT OF THE DISCLOSURE

A closure mechanism for a tubular member, open-ended container or glove. A channel member coupled to the portion to be closed forms a channel of an opened length corresponding to a distance around the portion to be closed. The channel has a cross-sectional area and terminates with one or two closely spaced openings having an opening cross-sectional area. A stretchable cord is present within the channel and extends outward beyond at least one of the openings. The stretchable cord has an unstretched cross-sectional area and a stretched cross-sectional area. The unstretched cross-sectional area is larger than the stretched cross-sectional area and the opening cross-sectional area. By pulling on the portion of the stretchable cord extending out of the opening or openings, the stretchable cord takes on the stretched cross-sectional area at least proximate the opening or openings. As a result, the stretchable cord freely slides in the channel and when the stretchable cord is then released, the stretchable cord returns to the unstretched cross-sectional area proximate the opening or openings. As a result, the stretchable cord is locked in the opening or openings and the channel is shortened to a closed length less than the opened length. This secures the tubular portion surrounded by the closure mechanism in a closed position. A release member is utilized to lengthen the channel from its closed length to an opened length and may be operated with only one hand.

CLAIMS

WHAT IS CLAIMED IS:

1. A closure mechanism for an open-ended container, comprising:

channel means coupled at or near the end of the container for forming a channel of an opened length, corresponding to a distance around the open end of the container, 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 and extending outward beyond both openings, having an unstretched cross-sectional area and a stretched cross-sectional area, the unstretched cross-sectional area being larger than the stretched cross-sectional area and the opening cross-sectional 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 at least proximate the openings to freely slide in the channel and then releasing the stretchable cord means causes the stretchable cord means to return to the unstretched cross-sectional area proximate the openings, thereby locking the stretchable cord means in the openings and shortening the channel to a closed length less than the open length and securing the open end of the container in a closed position.

2. The closure mechanism of claim 1 wherein the stretchable cord means includes a shockcord having two free ends, the free ends of the shockcord extending beyond both openings.

3. The closure mechanism of claim 2 wherein the free ends are coupled to a handle means for preventing entry of the free end into the channel and for providing a gripping surface.

4. The closure mechanism of claim 1 wherein the channel means is formed of a crushable material adapted to gather when the channel is shortened from the open length to the closed length.

5. The closure mechanism of claim 1 wherein the channel cross-sectional area is greater than the unstretched cross-sectional area of the stretchable cord means.

6. The closure mechanism of claim 5 wherein the opening cross-sectional area is less than the unstretched cross-sectional area of the stretchable cord means.

7. The closure mechanism of claim 1 wherein the opening cross-sectional area is greater than the stretched cross-sectional area of the stretchable cord means.

8. The closure mechanism of claim 1 wherein the channel means further includes insert means coupled to the channel means within the channel for providing an opening cross-sectional area less than the channel cross-sectional area.

9. The closure mechanism of claim 8 wherein the insert means includes a polyvinylchloride coated cotton material having a non-slip finish.

10. The closure mechanism of claim 8 wherein the insert means is sewn to the channel member proximate both openings.

11. The closure mechanism of claim 1 wherein the stretchable cord means is an elastic shockcord including elastic strips surrounded by a stretchable cover.

12. The closure mechanism of claim 11 wherein the stretchable cover is formed of a woven cotton.

13. The closure mechanism of claim 1 further comprising release means for enabling enlargement of the channel from the closed length to the opened length, coupled to the container proximate the closely spaced openings.

14. The closure mechanism of claim 13 wherein the release means includes a handle member, adapted to be gripped between two fingers, coupled to the container proximate the closely spaced openings.

15. The closure mechanism of claim 13 wherein the release means includes a pliable sheet folded over a portion of the container and coupled to itself through the container.       

16. The closure mechanism of claim 13 wherein the release means includes a handle operable with one hand.

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 cross-sectional area and a stretched cross-sectional area, the unstretched cross-sectional area being larger than the stretched cross-sectional area and the opening cross-sectional 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 cross-sectional 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.

18. The closure mechanism of claim 17 wherein the stretchable cord means includes a shockcord having two free ends, the free ends of the shockcord extending beyond both openings.

19. The closure mechanism of claim 18 wherein the free ends are coupled to a handle means for preventing entry of the free end into the channel and for providing a gripping surface.

20. The closure mechanism of claim 17 wherein the channel means is formed of a crushable material adapted to gather when the channel is shortened from the open length to the closed length.

21. The closure mechanism of claim 17 wherein the channel cross-sectional area is greater than the unstretched cross-sectional area of the stretchable cord means.

22. The closure mechanism of claim 21 wherein the opening cross-sectional area is less than the unstretched cross-sectional area of the stretchable cord means.

23. The closure mechanism of claim 17 wherein the opening cross-sectional area is greater than the stretched cross-sectional area of the stretchable cord means.

24. The closure mechanism of claim 17 wherein the channel means further includes insert means coupled to the channel means within the channel for providing an opening cross-sectional area less than the channel cross-sectional area.

25. The closure mechanism of claim 24 wherein the insert means includes a polyvinylchloride coated cotton material having a non-slip finish.

26. The closure mechanism of claim 24 wherein the insert means is sewn to the channel member proximate both openings.

27. The closure mechanism of claim 17 wherein the stretchable cord means is an elastic shockcord including elastic strips surrounded by a stretchable cover.

28. The closure mechanism of claim 27 wherein the stretchable cover is formed of a woven cotton.

29. The closure mechanism of claim 17 further comprising release means for enabling enlargement of the channel from the closed length to the opened length, coupled to the container proximate the closely spaced openings.

30. The closure mechanism of claim 29 wherein the release means includes a handle member adapted to the grip between two gloved fingers, coupled to the container proximate the closely spaced openings.

31. The closure mechanism of claim 29 wherein the release means includes a pliable sheet folded over a portion of the container and coupled to itself through the container.

32. The closure mechanism of 29 wherein the release means includes a handle operable with one hand.

33. A closure mechanism for a tubular member, comprising;

channel means coupled around the tubular member at a closure location for forming a channel of an opened length, corresponding to a distance around the tubular member at the closure location, 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 and extending outward beyond both openings, having an unstretched cross-sectional area and a stretched cross-sectional area, the unstretched cross-sectional area being larger than the stretched cross-sectional area and the opening cross-sectional 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 at least proximate the openings to freely slide in the channel and then releasing the stretchable cord means causes the stretchable cord means to return to the unstretched cross-sectional area proximate the opening, thereby locking the stretchable cord means in the openings and shortening the channel to a closed length less than the open length and securing the tubular member at the closure location in a closed position.

34. The closure mechanism of claim 33 further including release means for lengthening the channel from the closed length to the opened length, coupled to the tubular member proximate the two closely spaced openings.

35. The closure mechanism of claim 34 wherein the release means includes a handle adapted to be operated by one hand.

36. A closure mechanism for a tubular member, comprising:

channel means coupled to a tubular member at a closure location, for forming a channel of an opened length, corresponding to a distance around the tubular member at the closure location, having a channel cross-sectional area and terminating with at least one opening having an opening cross-sectional area:

stretchable cord means, within the channel and extending outward beyond the at least one opening, having an unstretched cross-sectional area and a stretched cross-sectional area, the unstretched cross-sectional area being larger than the stretched cross-sectional area and the opening cross-sectional area;

whereby pulling on the portion of the stretchable cord means extending out of the at least one opening causes the stretchable cord means to take on the stretched cross-sectional area at least proximate the at least one opening to freely slide in the channel and then releasing the stretchable cord means causes the stretchable cord means to return to the unstretched cross-sectional area proximate the at least one opening, thereby locking the stretchable cord means in the at least one opening and shortening the channel to a closed length less than the opened length and securing the closure location of the tubular member in a closed position.

37. The closure mechanism of claim 36 wherein the stretchable cord means includes two ends, one of the ends being fixed to the channel means within the channel and the other end extending outwardly beyond the opening.

38. The closure mechanism of claim 36 further including release means, for lengthening the channel from the closed length to the opened length, coupled to the tubular member proximate at least one opening.

39. The closure mechanism of claim 38 wherein the release means includes a handle adapted to be operated by one hand.

                                                             FEDERAL COURT

                           NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                                         T-1406-99

STYLE OF CAUSE:                       DANNY GOLD

                                                                                                                                               Plaintiff

and

SERRATUS MOUNTAIN PRODUCTS LTD

                                                                             &

MOUNTAIN EQUIPMENT COOPERATIVE

                                                                                                                                        Defendants

PLACE OF HEARING:                    Vancouver, British Columbia

DATE OF HEARING:                      18-27 May 2004

REASONS FOR JUDGMENT AND JUDGMENT:

THE HONOURABLE MR. JUSTICE BLAIS

DATED:                                             August 5, 2004

APPEARANCES:

Mr. Jacques Léger, Q.C.

Ms. Alexandra Steetle                                                               FOR PLAINTIFF

Mr. John J.L. Hunter, Q.C.                                                        FOR DEFENDANTS

SOLICITORS OF RECORD:

Léger Robic Richard

Montréal, Quebec                                                                     FOR PLAINTIFF

Hunter Voith

Vancouver, B.C.                                                                       FOR DEFENDANTS