Date: 20050926
Docket: T-1864-00
Citation: 2005 FC 1229
Ottawa, Ontario, this 26th day of September, 2005
Present: THE HONOURABLE MR. JUSTICE MOSLEY
BETWEEN:
JOHN LETOURNEAU and
LETOURNEAU LIFE RAIL LTD.
Plaintiffs
and
CLEARBROOK IRON WORKS LTD.
Defendant
REASONS FOR ORDER AND ORDER
[1] This is a motion by the defendant, Clearbrook Iron Works Ltd., for summary judgment to dismiss the patent infringement action brought by the plaintiffs, John Letourneau and Letourneau Life Rail Ltd., and to allow the defendant's counterclaim for a declaration that Canadian Letters Patent No 2,245,136 (the "'136 patent") is invalid for ambiguity and uncertainty.
[2] John Letourneau is the named inventor and owner of the patent and Letourneau Life Rail Ltd., (collectively hereafter "Letourneau") the licensee authorized to manufacture and sell the product which is the subject matter of the patent. This is a device designed for holding rope wires or cables as part of a safety fencing system for use in the construction of buildings with modular concrete slab walls, also described as concrete tilt-up wall construction.
[3] Clearbrook Iron Works Ltd. (hereafter "Clearbrook") is alleged in the plaintiffs' pleadings to manufacture, distribute and sell an infringing product.
[4] The plaintiff Letourneau Life Rail Ltd., also claims trademark infringement against the defendant for use of the registered trademark LIFE-RAIL in association with safety guard rail systems. Clearbrook denies the validity of the trademark registration. The trademark infringement claims are not part of this motion for summary judgment.
[5] Clearbrook has submitted no expert opinion evidence in support of its motion but relies on its cross-examination of Letourneau's expert and on the proposition that the invalidity of the patent is apparent as a matter of law for which no opinion evidence is required.
[6] Letourneau has tendered the affidavit of John Russell, a construction safety consultant and former site safety supervisor with more than thirty years experience in the construction industry. In response to this motion, he was asked by the plaintiffs' solicitor to read the '136 Patent and provide his opinion as to what a person of ordinary skill in the field of construction safety and fall protection would understand it to mean, particularly claims 1 and 15 which were the focus of this motion.
[7] Clearbrook submits that Mr. Russell's expertise as a construction safety consultant is limited and in any event, largely irrelevant to the issues on this motion. He is not a professional engineer and has no formal education or training in the field. His knowledge is also largely limited to the safety regime in place in British Columbia although he has consulted on projects and participated in training programs outside the province.
[8] I am satisfied that Mr. Russell has sufficient special knowledge and experience to provide expert opinion evidence on construction safety and fall protection systems and to assist the court with what a person of ordinary skill in those fields would understand from reading the patent in issue.
WHAT IS CLAIMED:
[9] The pertinent claims of the '136 Patent are numbers 1 and 15 which read as follows:
Claim 1
A railing mounting device for mounting railings to concrete slab walls comprising a stanchion and an anchor insert, said stanchion releasably mountable to said anchor insert, wherein said stanchion is elongate and extends longitudinally between opposite first and second ends, said second end having a mounting member rigidly extending therefrom for sliding snug releasably securable mating engagement in a corresponding cavity in said anchor insert, said anchor insert rigidly mountable into a concrete wall panel by anchoring means, said mounting member lying generally within a first plane containing said first and second ends, said first end laterally offset in said first plane relative to said second end so as to extend over said mounting member in said first plane a distance at least equal to the thickness of said concrete wall panel, rail mounting means mountable to said stanchion towards said first end so as to mount rails to said stanchion offset relative to said second end.
Claim 15
A railing mounting device for mounting railings to concrete slab walls comprising a stanchion and an anchor insert, said stanchion releasably mountable to said anchor insert, wherein said stanchion is elongate and extends longitudinally between opposite first and second ends, and wherein said stanchion has a first portion extending between said first end and an off-setting dogs-leg in said stanchion, and wherein said stanchion has a second portion extending between said off-setting dogs-leg and said second end, and wherein said first and second portions are substantially parallel, said second end having a mounting member rigidly extending therefrom for sliding snug releasably securable mating engagement in a corresponding cavity in said anchor insert, said anchor insert rigidly mountable into a concrete wall panel by anchoring means, said mounting member lying generally within a first plane containing said first and second ends, said off-setting dogs-leg laterally off-setting said first end in said first plane relative to said second end so as to extend said first portion over said mounting member in said first plane a distance at least equal to the thickness of said concrete wall panel, a pair of rail mounting means mounted to said stanchion spaced apart along said first portion for mounting rails to said stanchion offset relative to said second end.
[10] As I read the claims, the essential elements consist of a post incorporating an off-setting dogs-leg shape and a releasable insert. The post ("stanchion") is attached to a modular concrete wall slab by anchoring the lower end horizontally into the releasable insert, a socket precast into the outside face of the wall. The stanchion rises vertically, then bends inward diagonally, before straightening out again vertically. The inward bend and second vertical rise in the form of the "off-setting dogs-leg" results in the face of the post extending vertically over the wall in the same plane.
[11] As described in the specifications, at the top of the stanchion there is a coiled ("helical") attachment that allows for a wire rope or cable to be threaded through. A break in the fastener allows a clip for a safety harness to slide through without unhooking it from the cable. More than one set of fasteners can be put on the upper vertical part of the stanchion to provide for additional safety cables to run below and parallel to the top cable.
ISSUES:
[12] The issues on this motion are:
1. Is this an appropriate case for summary judgment?
2. Is the patent invalid for ambiguity of the disclosure?
3. Is the patent invalid for ambiguity of the claims?
ARGUMENT & ANALYSIS
1. Summary judgment
[13] Rule 216(1) provides that on a motion for summary judgment, where the court is satisfied that there is no genuine issue for trial with respect to a claim or defence, the Court shall give summary judgment accordingly. Where the only genuine issue is a question of law, Rule 216(2)(b) states that the Court may determine the question and grant summary judgment. Under 216(3), where the Court decides that there is a genuine issue with respect to a claim or a defence, it may grant summary judgment if it is able on the whole of the evidence to find the facts necessary to decide the questions of fact and law.
[14] Clearbrook submits that the defects of ambiguity and uncertainty are clear in this instance and thus, there is no genuine issue to be tried with respect to its claim of invalidity. Alternatively, if there is a genuine issue as to validity, 216(2)(b) or 216(3) apply and the Court should decide the issue and summarily dismiss the action.
[15] Clearbrook says that the issues of ambiguity and uncertainty are questions of law. There is no need to consider evidence of the activities engaged in by Letourneau or Clearbrook. There are no facts to find and no credibility issues to resolve that would make this an inappropriate case for summary judgment: Trojan Technologies Inc. v. Suntech Environmental Inc. (2004), 320 N.R. 322, 2004 FCA 140; MacNeil Estate v. Canada (Department of Indian and Northern Affairs) [2004] 3 F.C.R. 3, 2004 FCA 50.
[16] The pleadings, including a copy of the Patent, are sufficient to decide the questions. A determination at this stage that the '136 patent is invalid will save the Court and parties considerable time and resources as opposed to a full trial of all of the infringement and invalidity allegations, Clearbrook argues.
[17] Letourneau responds that this is not one of the unusual patent cases where summary judgment is appropriate. A patent may be interpreted by simply reading it, but summary judgment should only be granted in cases where the facts are clear, where all of the required evidence is before the Court and where there is no issue of credibility of witnesses. Expert evidence is necessary in this case from both sides to assist the Court in properly construing the patent and determining ambiguity, which requires an understanding of what the person skilled in the art would know.
[18] I agree with the defendant that patent construction and interpretation is a question of law and that the lack of evidence from Clearbrook, expert or otherwise, is not fatal to its motion. Clearbrook can rely on the evidence of Letourneau's expert and is not required to submit its own expert opinion evidence of what a person of skill in the art would understand from the claims in order to establish ambiguity or insufficiency: Calgon Carbon Corp.v. North Bay (City), [2005] F.C.J. No. 1048, 2005 FC 838.
[19] Letourneau, on the other hand, does not have to prove the validity of the patent on a balance of probabilities to defeat the motion but rather has an evidentiary burden to show that there are genuine issues for trial :
[P]arties responding to a motion for summary judgment do not have the same onus as they would if they were plaintiffs at trial. Parties responding to a motion for summary judgment do not have the burden of proving all of the facts in their case; rather, according to rule 215 of the Federal Court Rules, 1998 responding parties have only an evidentiary burden to put forward evidence showing that there is a genuine issue for trial.
MacNeil, supra at para. 25.
2. Ambiguity of the Disclosure
[20] Clearbrook submits that the patent is invalid because the disclosure is ambiguous for failing to fully and correctly describe the invention. There is no indication in the specifications of how to determine the size of the required offset. It is not indicated that the offset must always exceed the thickness of a concrete wall panel, as set out in the claims. The disclosure indicates only the direction of the offset. Even if the claims are sufficiently certain, which Clearbrook denies, the defects in the disclosure mean that the patent is invalid.
[21] Letourneau submits that a failure to refer to or define a term in the disclosure is not sufficient reason to invalidate a patent for ambiguity: Mentmore Manufacturing Co. v. National Merchandise Manufacturing Co., [1974] F.C.J. No. 410 at para 8, 14 C.P.R. (2d) 151 (F.C.T.D.); Corning Glass Works v. Canada Wire & Cable Ltd. (1984), 81 C.P.R (2d) 39, 2 C.I.P.R. 77 (F.C.T.D.); Steel Co. of Canada Ltd. v. Sivaco Wire and Nail Co. (1973), 11 C.P.R (2d) 153, [1973] F.C.J. No. 603 (F.C.T.D.).
[22] Letourneau contends that its expert had no difficulty in understanding the meaning of the claim, or in determining the required offset. His evidence was that the subject of the patent could be constructed after reading the patent: Risi Stone Ltd. v. Groupe Permacon Inc. (1995), 65 C.P.R (3d) 2, 101 F.T.R. 241 (F.C.T.D.) ; Apotex Inc. v. Wellcome Foundation Ltd (2000), 10 C.P.R (4th) 65 at paras. 88, 91, [2001] 1 F.C 495 (F.C.A.). A skilled reader who did not understand what precise offset was needed, without knowing the thickness of the wall, would still have known the range of offsets that would be acceptable because of the range of thicknesses employed in the construction industry: McPhar Engineering Co. of Canada v. Sharpe Instruments Ltd., [1956-60] Ex. C.R. 467 at paras. 74, 99-100, 35 C.P.R. 105.
[23] The test for ambiguity and sufficient disclosure was set out in Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents), [1989] 1 S.C.R. 1623 at 1638, 60 D.L.R. (4th) 223:
The applicant must disclose everything that is essential for the invention to function properly. To be complete, it must meet two conditions: it must describe the invention and define the way it is produced or built (Thorson P. in Minerals Separation North American Corp. v. Noranda Mines Ltd., [1947] Ex. C.R. 306, at p. 316). The applicant must define the nature of the invention and describe how it is put into operation. A failure to meet the first condition would invalidate the application for ambiguity, while a failure to meet the second invalidates it for insufficiency. The description must be such as to enable a person skilled in the art or the field of the invention to produce it using only the instructions contained in the disclosure (Pigeon J. in Burton Parsons Chemicals Inc. v. Hewlett-Packard (Canada) Ltd., [1976] 1 S.C.R. 555, at p. 563; Monsanto Co. v. Commissioner of Patents, [1979] 2 S.C.R. 1108, at p. 1113) and once the monopoly period is over, to use the invention as successfully as the inventor could at the time of his application (Minerals Separation, supra, at p. 316).
[24] The specification must be read by a mind willing to understand, not by a mind desirous of misunderstanding, and should not be defeated on a mere technicality: Whirlpool Corp. v Camco Inc. (2000), 9 C.P.R. (4th) 129 at para. 49, 2000 SCC 67 citing Lister v. Norton Brothers and Co. (1886), 3 R.P.C. 199 (Ch.D.), at 203; Apotex Inc. v. Wellcome Foundation Ltd. (1998), 79 C.P.R. (3d) 193 at para. 306, 145 F.T.R. 161 (F.C.T.D.); varied on other issues: Apotex, supra.
[25] Mr. Russell deposed that a person skilled in the art of construction safety measures would easily determine the necessary distance of the offset. Clearbrook argues that Mr. Russell reads into the patent his understanding of the requirements imposed by the provincial workmen's compensation boards that regulate workplace safety. And that understanding is largely limited to the practise in British Columbia. While his evidence was shaken on cross-examination, it was not completely undermined.
[26] I do not find that the failure to describe the distance of the offset either in specific or relative terms is such a serious deficiency in the disclosure that it is a fair or sufficient basis to grant summary judgment for the defendant in these proceedings, particularly where there is no conflicting expert opinion evidence to assist the court. There remains, in my view, a genuine issue to be tried on this question.
3. Ambiguity in the claims
[27] Clearbrook submits that the claims in the Patent are ambiguous in at least two ways. On either ground it says, the Patent is invalid.
[28] First, the claims define a device consisting of only a stanchion having an offset and an anchor insert. The features and dimensions of the required offset of the stanchion are unknown as they reference an indeterminate, unidentified wall panel. Clearbrook asserts that this is the same kind of ambiguity as was found in Apotex Inc. v. Hoffman-La Roche Ltd (1989), 24 C.P.R. (3d) 289, 23 C.I.P.R. 1 (F.C.A.) and Kirin-Amgen Inc. and others v. Hoeschst Marion Roussel Limited and others, [2004] UKHL 46, [2005] 1 All E.R. 667. A patentee who describes an invention in the body of the specification obtains no monopoly unless it is claimed in the claims themselves: Electric and Musical Industries, Ltd. v. Lissen (1938), 56 R.P.C. 23 (H.L.) at p. 39, cited in Free World Trust v. Electro Santé (2000), 9 C.P.R. (4th) 168 at para. 39, 2000 SCC 66; Whirlpool, supra at para. 52.
[29] Clearbrook concedes that a person who used a stanchion and insert might be able to tell whether use by attachment to a particular concrete wall panel infringed, if he assumed that the "wall panel" in the claims referred to that particular wall. However, this does not resolve the ambiguity of the claims. The stanchion manufacturer will not necessarily know or control how the stanchions will be used. Further, a user would appreciate that using a given stanchion with some particular walls may infringe while using them in other specific circumstances may not infringe.
[30] This ambiguity is not cured by looking at the disclosure because the disclosure does not identify the wall panel either. The disclosure reinforces the variability of the dogs-leg and indeterminacy of the offset requirement.
[31] Secondly Clearbrook argues, the expression "laterally offset" is ambiguous and cannot be defined with certainty. It is unclear whether one is to measure the offset distance using the outside, middle or inside edges of the stanchion. This affects the total distance of the offset, and potentially whether the device infringes the '316 patent, but the patent's specification, claims and disclosure do not indicate which one is to be adopted so as to determine the "lateral offset."
[32] Letourneau submits that the fact that an element is defined with reference to a variable condition extrinsic to the claimed device is not sufficient, in and of itself, to void a claim for ambiguity: Paige Innovations Inc. v. Noma Inc., [1997] F.C.J. No. 1118 at para 10, 135 F.T.R. 277 (F.C.T.D.); Stonehouse v. Batco Manufacturing Ltd., [2004] F.C.J. No. 2165 at para 172, 2004 FC 1767 (F.C.T.D.) The Paige Innovations and Stonehouse cases are closely analogous to the present case where the issue relates to a parameter (thickness) of an element which does not form part of the invention.
[33] Even if the Court were to agree with Clearbrook that the words used are ambiguous, the Court may still rely upon the assistance of a person skilled in the art to construe any term in the claim. The Court may imply meaning to a term if there is a practical impact or limitation on how the device works. Expert evidence can assist in determining what that meaning is: McPhar, supra at paras. 99-100.
[34] In this motion, there is the evidence of a person of ordinary skill in the art of construction safety and fall protection who has deposed that he understands the invention as defined in the claims, and is readily able to make and use the claimed invention. That evidence, while challenged on cross-examination, remains uncontradicted.
[35] Russell described how he would measure the offset distance, outside to outside, based
on his experience and understanding of common practices in the construction industry.
Mr. Russell's evidence was that the tilt up walls used in modular concrete panel construction are normally 6" or 8" thick although in some cases, of which he cited one example, they might be thicker. Beyond 6" or "8" the weight of the mass of concrete in each panel would limit their application. Based on his reading of the claims, a person of skill in the art of construction safety and fall protection would make the offset 12 inches. That would also conform with his understanding that the guidelines for wire rope rails required them to be positioned 12 inches from the outside face of the building.
[36] Ambiguity of a claim has often been described in terms of fences or boundaries around property, a particularly apt analogy in this instance:
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 to give the necessary warning and he must not fence in any property that is not his own. The terms of the claims 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.
Mineral Separation North American Corporation v. Noranda Mines Limited, [1947] Ex. C.R. 306 at p. 352, quoted in Free World Trust, supra at para. 14.
[37] A claim is not invalid simply because it is not a model of concision and lucidity. Very few patent claims are. Claims are drafted to be understood by people with practical knowledge and experience in the specific field of the invention: Risi Stone Ltd.supra, at 20. If a term can be interpreted using grammatical rules and common sense, it cannot be ambiguous: Mobil Oil Corp. v. Hercules Canada Inc. (1995), 63 C.P.R (3d) 473 at 484, 188 N.R. 382 (F.C.A.).
[38] The Court must give a purposive construction to a claim without being too astute or technical. If there is more than one construction that can be reasonably reached, the Court must favour the construction which upholds the patent. Where the language of the specification, upon a reasonable view of it, can be read so 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: Lubrizol Corp. v. Imperial Oil Ltd. (1992), 45 CPR (3d) 449, 98 D.L.R. (4th) 1 (F.C.A.); Western Electric Co. Inc. and Northern Electric Co. v. Baldwin International Radio of Canada Ltd., [1934] S.C.R. 570, [1934] 4 D.L.R. 129; Unilever PLC. v. Proctor & Gamble Inc., [1995] F.C.J. No. 1005 at para 23, 61 C.P.R. (3d) 499 (F.C.A.).
[39] The field of use of the invention in this case is not overly broad and does not involve an obscure science. It is limited to a fairly narrow and practical application for the safe construction of modular concrete slab wall buildings.
[40] Clearbrook's position, very ably argued, is that the person of ordinary skill would not know the limits of the claims. It may ultimately succeed on that argument at trial. But on the evidence presented on the motion, I am satisfied that Letourneau has met its burden to show that there is a genuine issue to be tried on this question and the motion must fail.
ORDER
THIS COURT ORDERS that the motion is dismissed with costs to the plaintiff.
" Richard G. Mosley "
Judge
FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-1864-00
STYLE OF CAUSE: JOHN LETOURNEAU and
LETOURNEAU LIFE RAIL LTD.
AND
CLEARBROOK IRONS WORKS LTD.
PLACE OF HEARING: Vancouver, British Columbia
DATE OF HEARING: June 16, 2005
REASONS FOR ORDER
AND ORDER BY: The Honourable Mr. Justice Mosley
DATED: September 26, 2005
APPEARANCES:
Paul Smith FOR THE PLAINTIFFS
J. Kevin Wright FOR THE DEFENDANT
SOLICITORS OF RECORD:
PAUL SMITH FOR THE PLAINTIFFS
Intellectual Property Law
Barristers & Solicitors
Vancouver, British Columbia
J. KEVIN WRIGHT FOR THE DEFENDANT
Davis & Company
Vancouver, British Columbia