Date: 20120611
Docket: A-455-11
Citation: 2012 FCA 174
CORAM: BLAIS
C.J.
LÉTOURNEAU
J.A.
PELLETIER
J.A.
BETWEEN:
HOLLICK SOLAR SYSTEMS LIMITED
and CONSERVAL ENGINEERING INC.
Appellants
and
MATRIX ENERGY INC.
Respondent
REASONS FOR JUDGMENT
LÉTOURNEAU J.A.
[1]
Hollick
Solar Systems Limited and Conserval Engineering Inc., the appellants, appeal
from a judgment of Scott J. of the Federal Court (judge) that denied the
appellants’ claim that Matrix Energy Inc., the respondent, infringed its
Canadian Patent No. 1,326,619 (the ‘619’ patent) by selling a solar air system
known as the MatrixAir system (Matrix system).
[2]
The appeal
raises the following issue:
Did the judge make a
reviewable error in concluding that the Matrix system does not infringe the
appellants’ ‘619’ patent?
[3]
Subsumed
in this ground of appeal are the allegations that the judge erred in:
a) his
interpretation and construction of claim 10 of the ‘619’ patent when he ruled
that the placement of the air inlet at the top of the panel of the appellants’
SolarWall solar air heating system was an essential element of the invention;
b) coming
to the conclusion that the variant in the Matrix system had a material effect
on the way the appellants’ invention described in claim 10 of the ‘619’ patent
works;
c) wrongfully
discarding the testimony of the appellants’ expert; and
d) failing
to address the appellants’ subsidiary argument that the respondent Matrix
system as offered for sale and sold does in fact infringe the ‘619’ patent
because the air intake in the Matrix system is not really located at the bottom
and, in fact, on some systems the intake is located at the top.
[4]
For
reasons which follow, I am of the view that this appeal should be dismissed.
The facts giving rise to the litigation
[5]
Hollick
Solar Systems Limited (Hollick) and Conserval Engineering Inc. (Conserval) are
associated companies. Conserval delivered renewable energy solutions for 30
years, such as solar air heating systems. It does not manufacture such systems.
Rather, it purchases key components from suppliers and resells them.
[6]
Matrix is
a corporation which offers a range of solar systems since 1985. From 1991 until
March 2007, it distributed solar air heating systems designed by Conserval. As
a result of a disagreement between the parties, Matrix Distributorship
Agreement with Conserval expired and it began quoting and selling a solar air
heating system known as the MatrixAir system.
[7]
The Matrix
system is in fact the appellants’ system with the following variant. Instead of
having an inlet at the top of the air collection space as described in the
appellants’ ‘619’ patent and embodied in claims 1 and 10 of said invention, the
Matrix system’s inlet is located at or near the bottom of the air collection
space.
Analysis of the judge’s decision and the
contentions of the parties
[8]
It is not
necessary to address the subsidiary argument of the appellants in view of the
conclusion I have reached on the main issue.
[9]
It is
obvious from the judge’s reasons and the parties’ respective memorandum of
facts and law on appeal that the sole issue in these proceedings was whether
the location of the air intake mentioned in claims 1 and 10 of the ‘619’ patent
was an essential element of the invention, thereby limiting its scope.
[10]
At
paragraphs 2 and 35 of his reasons for judgment, the judge writes:
[2] Initially the
defendant disputed the validity of the patent. Subsequently, it amended its
pleading and took the position that the MatrixAir system is a variant outside
the scope of the ‘619’ patent, as a result the patent cannot be infringed. The
defendant filed an amended statement of defence and counterclaim on January 11,
2008.
[35] The plaintiffs allege
that the present case concerns one sole issue that is whether the limitation
“at the top” found in claims 1 and 10 is essential or not. A finding that said
limitation is not essential according to plaintiffs means that it can be
omitted and consequently all MatrixAir systems offered for sale and sold by
defendant have infringed Canadian Patent 619.
[11]
At
paragraph 7 of their memorandum of facts and law on appeal, the appellants
assert that:
The main question at issue is
to determine whether the limitation “at the top” is not an essential element of
claim 10 such that the MatrixAir system would infringe that claim.
[12]
Then the
appellants go on to reassert their alternative contention previously mentioned
in paragraph d) which is conditional on a finding that the limitation is an
essential element of claim 10.
[13]
That the
respondent understood the sole issue to be the essential character of the “at
the top” limitation in claim 10 permeates throughout its memorandum of fact and
law.
[14]
The judge
made a passing reference to the approach defined by the Supreme Court to claim
interpretation in Free World Trust v. Electro Santé Inc., [2000] 2
S.C.R. 1024: see paragraph 51 of his reasons for judgment. He then proceeded to
decide the sole issue before him. He looked at the Free World Trust case
for further guidance: ibidem at paragraph 54. He followed the teachings
of the Supreme Court in determining if the impugned limitation of claim 10 is
an essential element of the invention.
[15]
It was not
in dispute that the Matrix system had a variant of the appellants’ SolarWall
air heating system. The question to be answered then was: does the variant have
a material effect upon the way the invention works?
[16]
In
answering this question, the judge considered the expert evidence provided by
both the appellants and the respondent. He discarded the evidence of the
appellants’ expert on a number of issues, but provided justifications each time
he did so. While it is true that he seems to have misunderstood the appellants’
expert evidence (see paragraph 58 of his reasons for judgment) on the issue of
whether efficiency is the criterion to be used in assessing the effect of the
variant, he applied the proper test to the issue. At paragraph 59, he wrote:
The criterion is not whether
the variant improves the performance of the invention but rather does it have a
significant effect on how the device functions, be it positive or negative.
[17]
The judge
accepted the testimony of the respondent’s expert to the effect that the
variant has a material effect on the way the invention works: see paragraphs
64, 72, 73 and 74 of his reasons for judgment. We are in effect asked to
second-guess the judge on his appreciation of expert evidence on factual issues
and issues of credibility, and then substitute our own appreciation. We are at
great disadvantage in this respect and, according to the standard of review
applicable, we cannot engage in such an exercise unless the judge made errors
of law or overriding and palpable errors on questions of fact or mixed law and
fact: see Housen v. Nikolaisen, [2002] 2 S.C.R. 235. On the record
before us, I cannot find any error of the kind which would have a material
impact on the decision under appeal and justify our intervention.
[18]
For these
reasons, notwithstanding the able submissions of counsel for the appellants, I
would dismiss the appeal with costs.
“Gilles
Létourneau”
“I
agree
Pierre
Blais C.J.”
“I
agree
J.D.
Denis Pelletier J.A.”
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