Lapierre v. Les Équipements d'Érabliere C.D.L. Inc., 2004 FC 552

                                                                                                                                 Date: 20040408

                                                                                                                            Docket: T-2371-00

                                                                                                                       Citation: 2004 FC 552

Ottawa, Ontario, this 8^th day of April, 2004

PRESENT:     THE HONOURABLE MR. JUSTICE BLANCHARD

BETWEEN:

                                                        DONALD LAPIERRE and

                                            LES ÉQUIPEMENTS LAPIERRE INC.,

                                                                                                                                             Plaintiffs

                                                                            et

                                  LES ÉQUIPEMENTS D'ÉRABLIÈRE C.D.L. INC.,

                                                                                                                                           Defendant

                                    REASONS FOR JUDGMENT AND JUDGMENT

[1]                This is an action for patent infringement brought under section 20 of the Federal Courts Act, R.S.C. 1985, c. F-7, and subsection 54(2) of the Patent Act, R.S.C. 1985, c. P-4, (the Act). Donald Lapierre and Les Équipements Lapierre Inc. (the plaintiffs) allege that the defendant infringed Canadian patent no. 1,274,781 (Patent '781) by manufacturing and selling maple sap concentrators having the characteristics described in claim 1 of Patent '781. Les Équipements d'érablière C.D.L. Inc. (the defendant) filed a defence, on February 6, 2001, denying that it had infringed Patent '781. However, the validity of the patent is not disputed.

[2]                By order dated March 12, 2001, Prothonotary Morneau referred all questions relating to the quantum of the damages suffered by the plaintiffs or relating to the assessment of the profits made by the defendant, as the case may be. The only issue is therefore whether the defendant's product, as hereinafter described, infringes Patent '781.

Reference material

[3]                The patent at issue in this case concerns a device used to concentrate maple sap by reverse osmosis. In making maple syrup, sap must be concentrated 25 to 30 fold. Maple producers traditionally concentrated maple syrup through evaporation by boiling the liquid at atmospheric pressure. This method proved to be costly and, in the late 1960's, new methods of sap concentration were developed. The principle of reverse osmosis was applied to effectively remove 75% of the water to concentrate maple sap to standard density syrup. As a result, the boiling time was dramatically reduced which improved the quality of the final product with significant cost savings.

[4]                It is useful to understand how the process of reverse osmosis works. Osmosis involves the passage of water from a less concentrated to a more concentrated solution through a semi permeable membrane due to the greater osmotic pressure of the more concentrated solution. Reverse osmosis occurs when a pressure greater than the osmotic pressure of the concentrated solution is applied to the concentrated solution side of the membrane. As a result, water transport is reversed, i.e. water flows from the more concentrated solution to the less concentrated solution and as a result concentration increases. This process is termed "reverse osmosis".

Facts

[5]                On October 2, 1990, the Patent Office granted Patent '781, entitled    Apparatus for Reverse Osmosis Using Fluid Recirculation, to Donald Lapierre, as inventor and owner. Mr. Lapierre granted an oral, non-exclusive licence, free of charge, to the plaintiff company for the purposes of manufacturing, selling and distributing the maple sap concentrator described in claim 1 of Patent '781 (the Lapierre concentrator).

[6]                The defendant is a distribution company for products marketed to maple syrup producers. The defendant was incorporated in 1991 by Donald Lapierre, Christian Chabot and a third person. Jean-Marie Chabot testified that Mr. Lapierre is no longer involved with the defendant.

[7]                Jean-Marie Chabot, Christian Chabot's brother, is a mechanical engineer and maple syrup producer. Since 1981-82, Jean-Marie Chabot has used a reverse osmosis machine to concentrate maple sap. He operated a 6000-tap sugar bush until 1986-87, when he purchased a Lapierre concentrator. As part of an expansion of the family sugar bush, he purchased three more Lapierre concentrators.

[8]                Martin Chabot is the defendant's operations manager and is responsible for product development. He had been involved in managing the family sugar bush for ten years, when, he said, his father, Jean-Marie Chabot, suggested that he develop a more effective maple sap concentrator. He therefore agreed to work for the defendant and he was put in charge of the project of developing "La Fendeuse". The development phase lasted approximately six months, starting in January 2000.

[9]                With his son's help, Jean-Marie Chabot developed a prototype concentrator with circulation that was the reverse of the system used in the Lapierre concentrator. That prototype was the forerunner of La Fendeuse. The objective was to develop a device for concentrating the maple sap faster and combatting the problem of its viscosity at low temperatures.

[10]            Since then, the defendant has been manufacturing, distributing and selling a maple sap concentrator called "La Fendeuse" in Canada. It admits that it sold such a maple sap concentrator, with a capacity of 600 gallons per hour, to a person in the province of Quebec, Canada, in the spring of 2001. The defendant also admits that before manufacturing the La Fendeuse maple sap concentrator, it sold, among other things, Lapierre concentrators.

[11]            La Fendeuse is a reverse osmosis maple sap concentrator with a centrifugal pump circulation mechanism and membrane. La Fendeuse has a pressurized casing that contains an axial discharge pump, designed to drive the liquid directly through the end of the membrane closest to the pump. The liquid circulates by following the space between the membrane module and the inside surface of the casing, but in the opposite direction to the Lapierre concentrator.

[12]            The plaintiffs allege that the defendant infringed Patent '781 by manufacturing and selling maple sap concentrators with the characteristics described in claim 1 of Patent '781.

Issue

[13]            Does La Fendeuse infringe claim 1 of Patent '781?

Relevant Statutory Provisions

[14]            The relevant provisions of the Patent Act are as follows:

The '781 Patent

[15]            The invention in Patent '781 is described in claim 1 as follows:

[16]            For the purpose of these reasons, I worked with the text of the '781 Patent as presented in English. A French translation is provided.

[17]            The '781 Patent describes a device with various components assembled in a manner to achieve the concentration of maple sap by reverse osmosis. It is not disputed that maple sap was already being concentrated by reverse osmosis prior to the development of Patent '781. The patent does not purport to invent reverse osmosis.

[18]            The dispute between the parties regarding the construction of the claim relates to whether the following two elements of the claim are essential, namely (1) the centrifugal pump with a 360 degree radial discharge and (2) the direction of the flow of fluid in the circulation path within the pressure vessel.

Position of the Plaintiffs

[19]            The plaintiffs submit that the specification in Patent '781 clearly states that the essence of the invention is the use of the passage between the membrane and the inside wall of the casing as a circulation channel, using a centrifugal pump located at one end of the casing. In the plaintiffs' submission, these are the only two essential characteristics of the invention. The plaintiffs submit that the direction in which the liquid circulates inside the casing is not an essential element of the invention claimed.

[20]            The plaintiffs also submit that La Fendeuse performs the same function in the same way, to obtain the same result, as the patented invention. The plaintiffs point out that the device manufactured by the defendant differs from the patented device solely in that the fluid is directed first through the membrane and is then recirculated in the space located between the membrane and the inside wall of the device's casing.

[21]            The plaintiffs submit that despite the defendant's modification of the pump housing (without perforations) in order to redirect the fluid on the axis and directly into the membrane, the defendant has copied the invention claimed in Patent '781. Consequently, the plaintiffs allege that the defendant is infringing Patent '781.

[22]            The plaintiffs rely on the testimony of Professor Rémi Ernest Lebrun, a professor of chemical engineering at the Université du Québec à Trois-Rivières since 1991. Professor Lebrun undertook various research projects relating to filtration, and more specifically in the field of reverse osmosis, and has carried out a number of projects involving the pre-concentration of maple sap in both the "laboratory" and in an "industrial setting".

[23]            Professor Lebrun stated that in 1998 he took part in a research project on the effect of tangential flow in the pre-concentration of maple sap for the purpose of making syrup. At that time, he became familiar with the methods and techniques available on the market, and stated that he had examined the system developed by the plaintiffs.

[24]            Based on the documents provided, Prof. Lebrun analyzed Patent '781 and compared it to the system used in La Fendeuse. In his opinion, the device claimed in claim 1 of Patent '781 and La Fendeuse are in fact structurally identical, with only the direction in which the fluid circulates inside the La Fendeuse casing being reversed. Professor Lebrun observed that the housing containing the La Fendeuse impeller was designed to drive the liquid first into the membrane, rather than to the sides, and opined that, despite that variation, La Fendeuse performed the same function, in the same way, and with the same mechanical elements, to obtain the same result as the patented device.

[25]               In Professor Lebrun's opinion, it is obvious that the inventor intended to include this variant in the monopoly. Professor Lebrun based his assertion on that part of the disclosure statement which deals with the "essence of the invention", that is, the use of the space between the membrane and the casing to recirculate the liquid. The text in question at page 9 of the patent reads as follows:

The essence of the present invention is to utilize the space between the membrane and the pressure vessel as the circulation path and to effect circulation by the pump located at the one end of the said vessel. The flow is effected by a conventional centrifugal pump driven by a power source, preferably a motor, which is usually electric.

In Professor Lebrun's view, the mechanical modification found in La Fendeuse does not alter its operation in any way. He affirms that in La Fendeuse, the defendant copied "the essence of the invention" as described in the above text of the disclosure statement of the patent.

[26]            Professor Lebrun added that to have included the variant in the language of the patent [translation] "would have diminished its clarity and that of its drawings and would not have offered any advantage".

Position of the Defendant

[27]            The defendant submits that the words chosen by the inventor in claim 1 of Patent '781 are clear and unambiguous, and that there is no indication in the patent that a pump with a discharge other than radial could be used, or that the liquid could just as well circulate in the reverse direction if the configuration of the pump were varied.

[28]            The defendant submits that the maple sap concentrator infringes neither the letter nor the substance of the invention claimed in Patent '781, for the following reasons:

            (a)         its pumping mechanism does not consist of a formed housing nor circumferential perforations;

(b)         its pumping mechanism produces an axial discharge and not a 360 degree radial discharge;

(c)         the liquid entering the casing is directed axially by the pumping mechanism directly through the extremity of the membrane closest to the pump, which puts the membrane under positive pressure coming from the pump, thereby creating greater turbulence in the membrane, which in turn operates to slow clogging of the membrane;

(d)         the precise route followed by the liquid inside the casing is the opposite of the route claimed by Patent '781.

The defendant therefore submits that its product is a variant of the patented invention that does not include all the essential elements of the invention claimed in Patent '781.

[29]            The defendant relies on the evidence given by its expert, Luis Inarejo. Mr. Inarejo is a mechanical engineer who has been working in the design and manufacturing of reverse osmosis equipment since 1985 and was familiar with the '781 Patent as early as 1990. Mr. Inarejo evaluated La Fendeuse against the system described in the '781 Patent. Upon review of the specification of the '781 Patent, he opined that both the precise circulation path described at the end of the claim and the 360 degree radial discharge pump described in the patent are essential elements of Claim 1 of the '781 Patent. Mr. Inarejo further stated that the circulation path described at the end of Claim 1 can only be achieved by a pump providing a 360 degree radial discharge. According to Mr. Inarejo, La Fendeuse has a pump that is both different from what is described in Claim 1 of the '781 Patent and more efficient. He argues that the axial discharge pump in La Fendeuse provides for greater pressure directly into the membrane thereby preventing it from clogging as quickly. In turn, this provides a more efficient system requiring less down time for cleaning. He admits on cross-examination, however, that the different pumps have no actual effect on the reverse osmosis process per se. Mr. Inarejo concluded that a person skilled in the art in 1990 would have understood, from reading the last paragraph of Claim 1, that the liquid could only follow the circulation path described and that the different components listed in Claim 1a) to f) must be arranged in such a way to conform with the specific circulation path. In addition, Mr. Inarejo concluded that a person skilled in the art in 1990 would have gathered, from reading Claim 1b) of the '781 Patent, that only a pump providing a 360 degree radial discharge can be used for this invention, thereby excluding the pump used in La Fendeuse.

The Law of Claim Construction

[30]            The Act does not define infringement. The courts have held that infringement is any act which interferes with the full enjoyment of the monopoly rights of the patentee (Monsanto Canada Inc. v. Schmeiser, [2000] F.C.J. No. 436, on line: QL, MacKay J., at paragraph 115; Visx Inc. v. Nidek Co., [1999] F.C.J. No. 1971, on line: QL, Dubé J., at paragraph 107). Infringement in a particular case is therefore a function of the extent of the statutory monopoly held by the patentee. Accordingly, to determine whether there has been infringement, the scope of the statutory monopoly granted must be determined (Schmeiser v. Monsanto Canada Inc., [2002] F.C.J. No. 1209 (F.C.A.) on line: QL, at paragraphs 32 and 33). On this point, I would cite what was said by Dubé J. in Visx, supra, at paragraph 107:

... [T]he first task in the approach to a question of infringement is to construe the claim. The burden is on the patentee to prove on the balance of probabilities that infringement has occurred. In considerating infringement, the Court must bear in mind the language in which a patentee has cast his claim. It has been referred to as a "fence" within which the patentee claims protection from trespassers and outside of which others are free to roam.

[31]            When the Court construes the claim in the patent, it must take a purposive approach, based on the following propositions, as stated by Binnie J. in Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R. 1024. At paragraph 31 of his reasons, he wrote:

...

(a)            The Patent Act promotes adherence to the language of the claim.

(b)            Adherence to the language of the claims in turn promotes both fairness and predictability.

(c)            The claim language must, however, be read in an informed and purposive way.

(d)            The language of the claims thus construed defines the monopoly. There is no recourse to such vague notions as the "spirit of the invention" to expand it further.

(e)            The claims language will, on a purposive construction, show that some elements of the claimed invention are essential while others are non-essential. The identification of elements as essential or non-essential is made:

(i)             on the basis of the common knowledge of the worker skilled in the art to which the patent relates;

(ii)            as of the date the patent is published;

(iii)           having regard to whether or not it was obvious to the skilled reader at the time the patent was published that a variant of a particular element would not make a difference to the way in which the invention works; or

(iv)           according to the intent of the inventor, expressed or inferred from the claims, that a particular element is essential irrespective of its practical effect;

(v)            without, however, resort to extrinsic evidence of the inventor's intention.

(f)             There is no infringement if an essential element is different or omitted. There may still be infringement, however, if non-essential elements are substituted or omitted.

[32]            As Binnie J. wrote, the patent system is designed to advance research and development and to encourage broader economic activity. The patentee, competitors, potential infringers and the general public are entitled to clear and precise rules to define the scope of the monopoly granted. Those are essentially the reasons why the Supreme Court has affirmed the primacy of the language of the claims. A "purposive" construction of the claims ensures that both the patentee and the public are treated fairly. Predictability is assured by the fact that the claims are binding on the patentee; fairness results from the informed and purposive construction of the claims.

[33]            The Supreme Court therefore provided for determining the essential and non-essential elements of an invention, which are ascertained from the claims language, as follows:

                                (i)             On the basis of the common knowledge of the worker skilled in the art to which the patent relates.

(ii)            What constitutes an "essential" element is to be interpreted in light of the knowledge of the art at the date of the publication of the patent specification.

(iii)           Regard is to be had to whether it was obvious at the time the patent was published that substitution of a different variant would make a difference to the way in which the invention works.

[34]               In Free World Trust, supra, Binnie J. considered the following three concise questions, stated by Hoffman J. in Improver Corp. v. Remington (Consumer Products Ltd.), [1990] F.S.R. 181, for determining whether an element is non-essential, and therefore substitutable:

(i)             Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no: --

(ii)            Would this (i.e.: that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art? If no, the variant is outside the claim. If yes: --

(iii)           Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If yes, the variant is outside the claim.

[35]            Lastly, the patentee has the burden of proving the known and obvious substitutability of a variant in the scope of the claim at the date of publication of the patent. Binnie J. concurred with that statement when he wrote, at paragraph 57 of Free World Trust, supra:

... In my view, Catnic, supra, and O'Hara, supra, were correct to put the onus on the patentee to establish known and obvious substitutability at the date of publication of the patent. If the patentee fails to discharge that onus, the descriptive word or expression in the claim is to be considered essential unless the context of the claims language otherwise dictates.

[36]            My task is therefore 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. This determination is to be based on the above principles of claims construction. The claim must also be construed through the eyes of a skilled reader as of the date of publication of the patent in the context of the disclosure statement and drawings.

What are the essential elements?

[37]            In this proceeding, certain elements are not in dispute. A centrifugal pump contained within the pressure vessel and the circulation path of the "aqueous solution" as described in the Patent, are essential elements of the invention. These essential elements are found in both the device described in Patent '781, the concentrateur Lapierre and La Fendeuse. The dispute arises as to whether the "360 degree radial discharge" centrifugal pump and the "direction of the flow" of the "aqueous solution" within the pressure vessel are essential elements of the invention. Should these elements be found to be essential, then there is no infringement of the '781 Patent since these elements are not found in La Fendeuse.

[38]            As a preliminary matter, counsel for the defendant contends that the flow of the fluid is simply a consequence of the operation of the centrifugal pump within the pressure vessel and therefore argues that there is but one element to contend with. It is evident that the direction of the flow of the liquid along the circulation path within the pressure vessel is entirely a function of how the liquid is discharged from the pump. If discharged radially, as provided for in the '781 Patent, then the liquid will follow the circulation path in the direction specifically described in Claim 1 of the '781 Patent, because the liquid is driven in that direction by that pump. If discharged axially, as in La Fendeuse, then the direction of the flow of the liquid will necessarily be reversed, because of the direction in which the fluid is discharged from that pump and the way that pump is configured in the pressure vessel. This is a question of pure physics. Given the configuration of the various elements in the claim of the '781 Patent, if the centrifugal pump with a radial discharge is determined to be an essential element, it then follows that the direction of the flow of the fluid within the pressure vessel, which is a physical consequence of that pump's discharge, will also be an essential element of the invention.

[39]            I will therefore construe Claim 1 of the '781 Patent, in accordance with the law of claim construction set out earlier in these reasons, with the view of determining whether the "360 degree radial discharge" centrifugal pump and the resulting direction of the flow of the aqueous solution within the pressure vessel are essential elements of the invention.

Does the variant significantly influence the operation of the invention?

[40]            The plaintiffs have the burden of proving that the two elements in question, which are not found in La Fendeuse, are non-essentials. To that end, the plaintiffs rely on the evidence given by their expert, Professor Lebrun, who stated in his report that it seemed obvious to him that [translation] "the inventor intended to include this variant in the monopoly". However, Professor Lebrun did not explain that assertion further. He simply affirmed that La Fendeuse [translation] "performed the same function, in the same way and with the same mechanical elements, to obtain the same result" as the device claimed in claim 1 of Patent '781, and that [translation] "... only the direction in which the liquid circulates has been reversed". Professor Lebrun did not support his assertion with any precise fact relating to the state of the art in 1990. He based his opinion essentially on the essence of the invention as described in the disclosure statement, and did not concern himself with the text of the last 12 lines of claim 1 of Patent '781 which deal specifically with the direction of circulation. That approach conflicts with the primacy of the language of the claims, as affirmed by the Supreme Court in Free World Trust, supra, in which Binnie J. wrote: "There is no recourse to such vague notions as the 'spirit of the invention' to expand it further." In addition, Professor Lebrun admitted on cross-examination that the requirement of a radial discharge pump and a precise direction of circulation were apparent from the claim. He acknowledged that the two pumps have different structures and that La Fendeuse is equipped with a pump that, [translation] "on the whole", had an axial discharge. On the other hand, he explained in his report that this difference had no impact on the operation of La Fendeuse. He concluded that [translation] "... there is no demonstrated advantage in the performance of the device, there is no energy advantage, given the losses in the additional diffuser" required to redirect the liquid in an axial direction. He saw no impact on the operation of La Fendeuse, even though it was equipped with an axial discharge pump, and does not seem to have placed any importance on the particular direction of the liquid in the device. Moreover, in reply, Professor Lebrun described the kind of tests that would, in his opinion, be necessary in order to demonstrate that there were functional advantages unique to the system used in La Fendeuse. He admitted that he had not conducted any such tests.

[41]            To summarize with respect to Professor Lebrun's testimony, I am of the view that there are two factors that undermine the probative value of his opinion: the fact that he failed to expressly address a certain passage of the text in claim 1 of Patent '781 and the fact that he based his opinion on the essence of the invention as described in the specification without having regard to the language of the claims.

[42]            The defendant relies on the testimony of Jean-Marie Chabot and Martin Chabot to show that compared to the patented device, La Fendeuse, can operate for a longer period before requiring thorough cleaning and provides generally for greater flow particularly when the sap is near freezing point.

[43]            Jean-Marie Chabot testified that he had observed that La Fendeuse had a number of significant operational advantages over the device described in Patent '781. He observed: (1) better flow early in the season when the sap is cold; (2) greater flow at all times; and (3) capacity to operate longer before having to be rinsed, having observed that La Fendeuse could operate for a full day without needing rinsing and that washing at the end of the day was all that was necessary. He also observed that the plaintiff's device operated for only approximately five hours before having to be rinsed. He testified that rinsing necessitates halting sugar bush operations.

[44]            Based on his experience in the family sugar bush, Jean-Marie Chabot asserted the importance of concentrating and boiling the sap as quickly as possible to prevent bacteria from developing in the maple sap. Since it is not possible to stop the natural flow of maple sap, lower flow from the concentrator reduces the flow of concentrated sap to the evaporator thereby allowing bacteria to develop. According to Jean-Marie Chabot, slower flow not only affects the quality of the syrup, and consequently the sale price, but also increases the hours of work and as a result the operating costs of the sugar bush.

[45]            The plaintiffs question the reliability of the tests carried out by Jean-Marie Chabot and, particularly, his son Martin. It is argued that the tests were not conducted scientifically, and raise the possibility of erroneous results and findings. I reject these arguments. While the tests were not conducted by scientists, and notwithstanding the concerns raised by the plaintiffs, I accept the testimony of Jean-Marie Chabot and his son Martin. Their observations do not fall within the realm of a special expertise. In my view, their observations and conclusions reflect the everyday experiences of individuals who have worked for several years in the operation of a sugar bush. In addition, I find their testimony to be credible. Moreover, the defendant's expert, Mr. Inarejo, who examined La Fendeuse, opined that that system offered certain advantages over the patented system. In his opinion, driving the liquid directly into the membrane increases turbulence, and this results in both better general performance and less frequent washing.

[46]            The Plaintiffs have also filed the expert report of Mr. Maurice Sydor, an engineer with experience in design and construction of nanofiltration membrane systems. Mr. Sydor's evidence is that the pump used in the patented system is more efficient than the pump used in La Fendeuse. He explains that a centrifugal pump that discharges fluid radially is more efficient than a centrifugal pump that discharges fluid axially, since in the latter case the fluid must be redirected by the pump housing to permit an axial discharge. Mr. Sydor affirms that there is always an energy loss when liquid is redirected. He also affirms that the loss of energy is a function of the velocity of the fluid. The greater the velocity, the greater the energy loss when fluid is redirected, and according to Mr. Sydor, the velocity is at its highest when fluid leaves the impeller of the pump. On cross-examination Mr. Sydor did acknowledge that the fluid is redirected twice in the patented system, with a loss of energy each time, while in La Fendeuse, the fluid is only redirected once, within the pump housing. Given Mr. Sydor testimony with respect to energy loss when fluid is redirected, I have difficulty accepting his conclusion that the patented system is necessarily more efficient than La Fendeuse.

[47]            The defendants argue that the pumping mechanism used in La Fendeuse is more efficient because it discharges fluid with greater pressure directly into the membrane, creating greater turbulence and thereby slowing the clogging effect of the membrane. This position is supported by the expert evidence of Mr. Inarejo. The plaintiffs do not dispute the view expressed by Mr. Inarejo that greater pressure creates greater turbulence which in turn slows clogging of the membrane. Therefore, in determining which system is more efficient it would be useful to know which system provides for greater fluid velocity, or pressure, at the point fluid enters the membrane?

[48]            The evidence does not conclusively establish that the loss of energy caused by the fluid being redirected within the pump housing in La Fendeuse is offset by the loss of energy in the patented system as a result of the fluid being redirected twice and having to travel the length of the pressure vessel before entering the membrane.

[49]            There is, however, uncontradicted evidence from Mr. Sydor, the plaintiffs' expert, that the velocity of the fluid is at its highest when it leaves the outer edge of the pump's impeller. It therefore can reasonably be inferred, that the further the fluid travels from this point and the more often it is redirected before it enters the membrane, the greater the loss of energy. I am satisfied, in this respect, that the greater loss of energy occurs in the patented system based on the following rationale.

[50]            The fluid in La Fendeuse is redirected only once within the pump housing and then directly into the membrane without having to first engage in the circulation path. In the patented system, however, the fluid is redirected twice, resulting in a loss of energy each time. The fluid must then proceed along the circulation path, the entire length of the pressure vessel, before entering the membrane. Therefore, even if I were satisfied that the pump per se, used in the patented system is more efficient, that is to say, has more velocity at the moment the fluid leaves the pump housing, I nevertheless find, on a balance of probabilities, that the velocity of the fluid, at the point it enters the membrane, is greater in La Fendeuse than in the patented system. I accept the expert evidence of Mr. Inajero that greater pressure in the membrane creates greater turbulence thereby slowing the clogging of the membrane. I further accept his conclusion that this provides a more efficient system than the patented system since such a system requires less down time for cleaning than the patented system. This conclusion is confirmed by the observations related in the evidence of Jean-Marie and Martin Chabot reviewed earlier in these reasons which I found to be credible.

[51]            In addition, the patentee offered no persuasive evidence that the performance of the variant was essentially the same. It must be noted that the burden on proof on this point was still on the patentee. In my opinion, the plaintiffs have not met the burden of proving that there were no effects in terms of the operation of the variant.

[52]            I find, from the evidence as a whole, on a balance of probabilities, that the variant has a material effect on the way the invention described in Patent '781 works.

Would it have been obvious, at the date of publication of the patent, to an expert in the field, that the variant had no material effect on the way the invention works?

[53]            On the evidence, I will answer in the negative to the second question put by Judge Hoffman in Improver Corp., supra, that is to say, whether it would have been obvious to a person skilled in the art, at the date of publication of the patent, that the variant had no material effect on the way the invention works. In this respect, I prefer the expert testimony of Mr. Inarejo to that of Professor Lebrun. Professor Lebrun offered no opinion relating to a person skilled in the art at the date of publication of Patent '781.

[54]            Mr. Inarejo, a person skilled in the art, was familiar with the variant at the date of publication of Patent '781, in 1990. He testified that the variant was more efficient than the patented system. For the reasons already set out, I accept his opinion. Consequently, I am of the view that a person skilled in the art, at the date of publication of Patent '781 in 1990, would have concluded that the variant had a material effect on the way the invention works.

Would a person skilled in the art, reading the relevant portions of the text of claim 1 of Patent '781, have thought that strict compliance with the meaning of the words chosen was what the inventor wanted?

[55]            Although the answers given to the last two questions are sufficient to dispose of the issue, I will nevertheless consider the third question proposed by Judge Hoffman in Improver Corp., supra, in order to determine whether an element is substitutable and as a consequence non-essential. Judge Hoffman formulated the third question as follows: "Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention?"

[56]            The plaintiffs' experts expressed no opinion on this question. Professor Lebrun admitted, on cross-examination, that he had not considered the last 12 lines of claim 1 of Patent '781, which specifically address the direction of circulation flow inside the casing.

[57]            In 1990, the defendant's expert, Mr. Inarejo, worked with the patented device. He affirms that claim 1 of Patent '781 indicates that the inventor intended to limit his monopoly to a precise direction of the flow of liquid within the casing. In his opinion, there is nothing in the disclosure statement to suggest that the inventor intended that the direction of the flow of the liquid within the casing be anything other than the one specifically claimed. Mr. Inarejo also stated that the words chosen by the inventor in claim 1 of Patent '781 are very explicit and describe a radial discharge pump. He concluded that a person skilled in the art could only have concluded that in order to manufacture the invention claimed in Patent '781, it was necessary to use a radial discharge pump and to provide that the direction of the flow of the liquid within the casing conform to that described in the claim.

[58]            In this case, the wording of claim 1 of the patent is clear and explicit. I am of the opinion that the inventor, at the date of publication of the patent, intended to claim a pump that discharges liquid radially at 360 degrees and in a particular direction of circulation within the casing. In this respect, I agree with the opinion stated by the expert, Mr. Inarejo. Indeed, several passages of the disclosure statement refer to the pump and the direction of the flow, and therefore corroborate that opinion. The following passages from the disclosure statement implicitly refer to a pump of a specific configuration and a specific direction of the flow inside the casing:

page 2: "The objective of this invention is to encase the reverse osmosis or ultra-filtration membrane with an active circulation channel and a 'special' pump mechanism to provide the aqueous solution with a continuous path within its primary container commonly referred to as the pressure vessel."

page 9: "The bottom of the base is perforated to permit the pumped aqueous solution to be radially directed outwards from the center of the pump impeller."

page 9: The inside surface of this end plate is shown to be formed as a demi-torus. This shape improves flow characteristics. A restraint mechanism (17) is provided to maintain pressure on the membrane module (13) to ensure that the module rests tightly against the impeller housing (9), in order that no fluid short-circuits the normal flow path."

page 10:            The basic description of the operation of the system can be best described by following the liquid path for a typical separation (or purification) procedure. As in the conventional system, the liquid enters the pressure vessel (6) under pressure through the entry port (3). Initially the fluid fills the cavity (40) and then at a particular pressure, the circulation pump is engaged. At this point the liquid moves upwards along the side wall (52) between the membrane and the inside surface of the pressure vessel to the top of the pressure vessel area. It now is drawn down through the membrane (13) itself, where part of the liquid is permitted to pass through the membrane (13) and thereby becomes two streams."

page 11:            "...which allow upward passage and therefore recirculation of fluid from the upward flow (52) outside the membrane (13) into the downward flow (53) inside the membrane (13)."

page 12:            "The arrows (52) indicate the circulation flow outside the membrane, while arrows (53) show the circulation flow inside the membrane."

                                                                                                                                      (My emphasis)

[59]            In this case, the inventor expressly chose to describe precisely the effect of components described in claim 1 of the patent. He described a centrifugal pump that discharges the liquid in a particular manner and the precise direction of the flow of the liquid within the casing. Since it is the inventor who authors the claims, he cannot be heard to complain that he was mistaken or that the claims are overly restrictive (O'Hara Manufacturing Ltd. v. Eli Lilly & Co. (1989), 26 C.P.R. (3d) 1, 7 (F.C.A., Pratte J.)).

[60]            I cannot alter the specific and clear terms of the claim without extending the monopoly obtained by the inventor at the date of publication of Patent '781. That which the inventor failed to claim belongs to the public.

[61]            I therefore find from the evidence, on a balance of probabilities, that a person skilled in the art, at the date of publication of Patent '781, would nonetheless have concluded, on reading the language of the claim, that the patentee believed that strict compliance with the meaning of the words chosen was an essential requirement of the invention. Accordingly, I answer in the affirmative the third question proposed by Judge Hoffman in Improver Corp., supra.

Conclusion

[62]            I find that the two elements which are the subject of this infringement action, namely (1) the circumferentially perforated centrifugal pump so constructed as to provide 360 degree radial discharge and (2) the precise direction of circulation flow in the casing, are essential elements of the invention described in Patent '781. Since those elements are not present in the variant, there can be no infringement. Accordingly, La Fendeuse does not infringe Patent '781.

[63]            Because there is no infringement, the infringement action is dismissed with costs.

                                                                   JUDGMENT

THE COURT ORDERS:

1.         The infringement action is dismissed with costs.

                                                                                                                        "Edmond P. Blanchard"          

                                                                                                                                                   Judge                   

Certified true tranlation

Suzanne M. Gauthier, trad. a., LL.L.

                                                             FEDERAL COURT

                                                      SOLICITORS OF RECORD

DOCKET:                               T-2371-00

STYLE OF CAUSE: Donald Lapierre et al. v. Les Équipements d'érablière C.D.L. Inc.

PLACE OF HEARING:                     Montréal (Québec)

DATE OF HEARING:                       October 20-23, 2003

REASONS FOR JUDGMENT:       Blanchard J.

DATE OF REASONS:                       April 8, 2004

APPEARANCES:

François Grenier and                                                     FOR THE PLAINTIFFS

Alain Dusseault

Julie Desrosiers                                                  FOR THE DEFENDANT

and Jean Philip Mikus

SOLICITORS OF RECORD:

Léger Robic Richard, s.e.n.c.                                         FOR THE PLAINTIFFS

55 St-Jacques Street

Montréal, Quebec H2Y 3X3

Fasken Martineau DuMoulin s.r.l.                                  FOR THE DEFENDANT

3400 Place Victoria, Suite 300

Montréal, Quebec H4Z 1E9

FEDERAL COURT

                                    Docket:    T-2371-00

BETWEEN:

                    DONALD LAPIERRE and

         LES ÉQUIPEMENTS LAPIERRE INC.

Plaintiffs

                                     - and -

           LES ÉQUIPEMENTS D'ÉRABLIÈRE

                                C.D.L. INC.

                                                                  Defendant

                REASONS FOR JUDGMENT

                          AND JUDGMENT