Docket No.: A-332-98
OTTAWA, ONTARIO, THE 29th DAY OF SEPTEMBER 1998
CORAM: THE HONOURABLE MADAME JUSTICE DESJARDINS
THE HONOURABLE MR. JUSTICE LÉTOURNEAU
THE HONOURABLE MR. JUSTICE NOËL
AVANT-GARDE ENGINEERING (1994) INC.
Respondent
- and -
GESTION DE BREVETS FRACO LIMITÉE
LES PRODUITS FRACO LIMITÉE
Appellants
- and -
COMMISSIONER OF PATENTS
Third Party
JUDGMENT
The appeal is allowed with costs both before this Court and at first instance, including costs of expertise incurred at first instance by the appellants, and the judgment of the Trial Division dated May 7, 1998, is set aside. When the time limit to appeal the instant judgment has expired, the appellants may recover the amounts they paid into the Registry of the Court, in accordance with the stay of execution of the judgment of first instance, which was granted during the appeal.
Alice Desjardins
J.A.
Certified true translation
M. Iveson
Date: 19980929
Docket: A-332-98
CORAM: DESJARDINS J.A.
LÉTOURNEAU J.A.
NOËL J.A.
GESTION DE BREVETS FRACO LIMITÉE
and
LES PRODUITS FRACO LIMITÉE
Appellants
AND:
AVANT-GARDE ENGINEERING (1994) INC.
Respondent
- and -
COMMISSIONER OF PATENTS
Third Party
Hearing held at Ottawa, Ontario on Tuesday, September 29, 1998
Judgment delivered from the bench at Ottawa, Ontario on Tuesday, September 29, 1998
REASONS FOR JUDGMENT OF THE COURT BY: LÉTOURNEAU J.A.
Date: 19980929
Docket: A-332-98
CORAM: DESJARDINS J.A.
LÉTOURNEAU J.A.
NOËL J.A.
GESTION DE BREVETS FRACO LIMITÉE and
LES PRODUITS FRACO LIMITÉE
Appellants
AND:
AVANT-GARDE ENGINEERING (1994) INC.
Respondent
- and -
COMMISSIONER OF PATENTS
Third Party
REASONS FOR JUDGMENT OF THE COURT
(Delivered from the bench at Ottawa, Ontario
on Tuesday, September 29, 1998)
LÉTOURNEAU J.A.
[1] We are of the view that this appeal must be allowed.
[2] The Trial Judge clearly misread and misinterpreted patent no. 1,304,109, which the respondent alleges was infringed by the appellants, when he concluded at page 11 of his decision that "the essential peculiarity of this scaffolding is the hydraulic ram raising system, which allows the work platform to be raised or lowered through the automatic engagement of anchoring members".
[3] First, he attributed the essence of the invention claimed to the use of a hydraulic ram raising system, while in the philosophy of the inventor himself, the object of the invention was to produce scaffolding which is more adaptable, more functional and less costly to operate than conventional scaffolding. For example, one of the essential characteristics of the invention is that the two posts supporting the platform would be made of modular elements capable of being installed by a single worker, while conventional scaffolding requires a crane with a long boom to install the posts and to raise them. It is clear from a reading of the claims of patent no. 1,304,109, the field of the invention and the state of the technique to which the inventor refers, that the invention relates to a scaffolding structure comprised of several essential components including, but not limited to, the hydraulic ram raising system.
[4] Second, in his assessment of the allegation of patent infringement, the Trial Judge failed to take into account some essential elements of the patent which identified and specified its parameters, no doubt because he misunderstood the patent at issue. In so doing, for all intents and purposes, he rewrote the patent, giving it a much wider and more general application which goes far beyond the intention expressed by the inventor.
[5] For example, the judge mistakenly concluded that there were only three minor differences between the mechanism of patent no. 1,304,109 and the one used by the appellants. These differences are, however, both more numerous and, far from being minor, relate to the very essence or substance of the patent.
[6] In this regard, we have already mentioned that an essential element of the object of the invention as well as the patent is the fact that the two posts can be erected by a single worker, while the system used by the appellants requires the use of a crane, because of the weight of the sections of these posts (see pages 3,4,5,6 and 9 of the patent). It should also be emphasized that patent no. 1,304,109 includes levelling stages as essential elements of the scaffolding, which are required to permit braces to be installed diagonally between the two posts as well as tie rods from these posts to the wall (see pages 4,7,8, 11 and 22 of the patent). The appellant"s mechanism does not include or require such stages.
[7] Furthermore, for security reasons, the invention at issue includes the requirement that crossbars be installed between the posts to strengthen them. This is also one of the purposes of the levelling stages. The mechanism of the appellants does not, however, require the use of crossbars because only one post is used. There again, the Trial Judge was mistaken when he concluded that this characteristic of the appellant"s mechanism, namely the use of one post rather than two, did not constitute an important or essential difference. On the contrary, the use of only one post makes several of the essential elements of patent no. 1,304,109 unnecessary, in addition to contributing a significant operational improvement. The appellant"s device can in fact be used in deep areas which, because of their narrowness, could not accommodate the introduction and installation of the two equidistant posts which are required for the system described in the patent.
[8] Finally, we could enumerate other fundamental characteristics of the appellant"s system which differ in a substantial way from the claims of the patent. We believe those mentioned previously suffice to illustrate that the judge erred, except to add that he also confused patent no. 1,304,109 with the appellant"s system when he concluded at page 33 of his decision that the operation of the appellant"s system involved the principle of gravity and the use of pivoting shafts. The appellant"s system does not use these elements, which are once again, however, essential elements of patent no. 1,304,109.
[9] In conclusion, the Trial Judge ignored some essential elements in interpreting patent no. 1,304,109 and mistakenly concluded that there was an infringement by the appellants, who properly challenge his error in law (O"Hara Manufacturing Ltd. v. Eli Lilly & Co., (1989) 26 C.P.R. (3d) 1).
[10] For these reasons, we are of the view that the appeal must be allowed with costs both before this Court and at first instance, including costs of expertise incurred at first instance by the appellants, and the judgment of the Trial Division dated May 7, 1998, must be set aside. When the time limit to appeal the instant judgment has expired, the appellants may recover the amounts they paid into the Registry of the Court, in accordance with the stay of execution of the judgment of first instance, which was granted during the appeal.
Gilles Létourneau
J.A.
Certified true translation
M. Iveson
FEDERAL COURT OF APPEAL
NAMES OF COUNSEL AND SOLICITORS OR RECORD
COURT FILE NO.: A-332-98
APPEAL FROM A JUDGMENT OF THE TRIAL DIVISION DATED MAY 7, 1998, FILE NO. T-309-95
| STYLE OF CAUSE: Avant-Garde Engineering (1994) Inc. v. Gestion de brevets Fraco Limitée, et al. |
PLACE OF HEARING: Ottawa, Ontario
| DATE OF HEARING: September 29, 1998 |
REASONS FOR JUDGMENT OF THE COURT BY:
The Honourable Madame Justice Desjardins
The Honourable Mr. Justice Létourneau
The Honourable Mr. Justice Noël
DELIVERED FROM THE BENCH BY: The Honourable Mr. Justice Létourneau
DATED: September 29, 1998
APPEARANCES:
| Réginald Gagnon for the appellants |
Nathalie Hamel
Armand J. Elbaz for the respondent
Julie Parent
SOLICITORS OF RECORD:
Brassard Roy Gagnon
Longueuil, Quebec for the appellants
Dubé, Elbaz
| Montréal, Quebec for the respondent |
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