Date: 19980507
Docket: T-309-95
OTTAWA, ONTARIO, THE 7TH DAY OF MAY, 1998
| Present: THE HONOURABLE MR. JUSTICE RICHARD |
Between:
AVANT-GARDE ENGINEERING (1994) INC.
Plaintiff
- and -
GESTION DE BREVETS FRACO LIMITÉE
Defendant
- and -
LES PRODUITS DE FORME FRACO LIMITÉE
Defendant
- and -
ANDRÉ ST-GERMAIN
Defendant
- and -
COMMISSIONER OF PATENTS
Mis en cause
ORDER
IN VIEW OF the application by counsel for the plaintiff;
It is hereby ordered that the style of cause be amended to strike out the name of the defendant, André St-Germain.
Certified true translation
Christiane Delon
Date: 19980507
Docket: T-309-95
OTTAWA, ONTARIO, THE 7TH DAY OF MAY, 1998
| Present: THE HONOURABLE MR. JUSTICE RICHARD |
Between:
AVANT-GARDE ENGINEERING (1994) INC.
Plaintiff
- and -
GESTION DE BREVETS FRACO LIMITÉE
Defendant
- and -
LES PRODUITS DE FORME FRACO LIMITÉE
Defendant
- and -
COMMISSIONER OF PATENTS
Mis en cause
ORDER
IN VIEW OF the patent infringement proceeding, which seeks the following:
| |
(a) A declaration that Canadian Letters Patent no. 1,304,109 and the claims thereof are valid and subsisting and the property of Plaintiff and that Defendants have infringed claims 1, 2, 13, 15 thereof; |
|
| |
(b) An interlocutory and permanent injunction restraining the Defendants, their directors, officers, shareholders, employees, agents, all those in privy with or under the control of the Defendants as well as any persons having cognizance of such order, from directly or indirectly infringing Canadian Letters patent no. 1,304,109; |
|
| |
(c) Delivery up or destruction of all components and apparatus in possession or control of the Defendants, which would offend in any manner such Orders, as shall be made pursuant to the claims of the Plaintiff herein; |
|
| |
(d) Damages for infringement or an accounting of profits of the Defendants, as Plaintiff may elect after an inquiry is made as to the respective amounts thereof; |
|
| |
(e) Pre-judgment and post-judgment interest on all sums found by this Honourable Court to be payable to Plaintiff herein at a rate at least as great as one percent (1%) over prevailing bank interest rates; |
|
| |
(f) An order to strike application for Canadian Patent no. 2,099,958; |
|
| |
(g) Costs of this action, including costs of expertise; |
|
| |
(h) Such further and other relief as Plaintiff may be entitled to and that to this Honourable Court may seem just. |
|
| |
1. Canadian patent 1,304,109 belonging to the plaintiff and claims 1, 2, 13 and 15 are valid; |
| |
2. The defendants have infringed claims 1, 2 and 13 of Canadian patent 1,304,109; |
| |
3. The defendants, its [sic] officers, directors, shareholders, employees, agents, licensees and any other persons having knowledge of this order to forthwith cease and desist from any manufacture, use, sale or marketing directly or indirectly of the hydraulic scaffoldings constituting an infringement of the plaintiff"s rights in Canadian patent 1,304,109; |
| |
3.[sic ] The destruction of all the hydraulic ram systems of all the devices in the possession or under the control of the defendants following the expiration of the period for requesting leave to appeal; |
| |
4. An accounting of the defendants" profits following an inquiry by a prothonotary or by a judge appointed by the associate chief justice; |
| |
5. The costs of this action, including the expert costs, to be fixed by a taxing officer, are awarded to the plaintiff and defendant on the cross-demand; and |
| |
6. The defendant"s cross-demand is dismissed with costs. |
Certified true translation
Christiane Delon
Date: 19980507
Docket: T-309-95
Between:
AVANT-GARDE ENGINEERING (1994) INC.
Plaintiff
- and -
GESTION DE BREVETS FRACO LIMITÉE
Defendant
- and -
LES PRODUITS DE FORME FRACO LIMITÉE
Defendant
- and -
COMMISSIONER OF PATENTS
Mis en cause
REASONS FOR JUDGMENT
RICHARD J. :
BACKGROUND
[1] This is a patent infringement proceeding. The statement of claim filed by Avant-Garde Engineering (1994) Inc. (Avant-Garde), dated January 25, 1995, seeks the following:
Plaintiff therefore claims:
| |
(a) A declaration that Canadian Letters Patent no. 1,304,109 and the claims thereof are valid and subsisting and the property of Plaintiff and that Defendants have infringed claims 1, 2, 13, 15 thereof; |
|
| |
(b) An interlocutory and permanent injunction restraining the Defendants, their directors, officers, shareholders, employees, agents, all those in privy with or under the control of the Defendants as well as any persons having cognizance of such order, from directly or indirectly infringing Canadian Letters patent no. 1,304,109; |
|
| |
(c) Delivery up or destruction of all components and apparatus in possession or control of the Defendants, which would offend in any manner such Orders, as shall be made pursuant to the claims of the Plaintiff herein; |
|
| |
(d) Damages for infringement or an accounting of profits of the Defendants, as Plaintiff may elect after an inquiry is made as to the respective amounts thereof; |
|
| |
(e) Pre-judgment and post-judgment interest on all sums found by this Honourable Court to be payable to Plaintiff herein at a rate at least as great as one percent (1%) over prevailing bank interest rates; |
|
| |
(f) An order to strike application for Canadian Patent no. 2,099,958; |
|
| |
(g) Costs of this action, including costs of expertise; |
|
| |
(h) Such further and other relief as Plaintiff may be entitled to and that to this Honourable Court may seem just. |
|
[2] In their defence and cross-demand, the defendants deny the patent infringement and allege that patent 1,304,109 is invalid.
[3] More specifically, the defendants state the following:
| |
The patent at issue and each of claims 1, 2, 13 and 15 are void and of no effect for the following reasons: |
|
| |
(a) the mobile platform described in the patent was not invented by the person whose name appears on the full title page of the patent at issue. The same applies to each of claims 1, 2, 13 and 15; |
|
| |
(b) the patent at issue does not describe any invention. None of claims 1, 2, 13 and 15 describes an invention; |
|
| |
(c) each of claims 1, 2, 13 and 15 of the patent at issue covers a juxtaposition of elements and not a combination of elements; |
|
| |
(d) the matter defined in these claims had been described in each of the following patents or publications, which had been published more than two years prior to the filing in Canada of the patent application that resulted in the patent at issue: |
|
| |
II French patents published under the following numbers: |
|
| |
- A full-page advertisement by the Italian company Safi entitled "SAFI PONTEGGI AUTOSOLLEVANTI-PIATTAFORMA AUTOSOLLEVANTI MODELLO ZENITH"; |
|
| |
- An advertising brochure of the Swedish company Malmquist entitled "MALMQUIST HIGH CLIMBERS"; |
|
| |
- A page from the Hek corporation"s catalogue concerning the MS 3000 mobile platform; |
|
| |
- An advertising brochure of the Italian company Ponteggi Dalmine s.p.a. entitled "APPARE-CCHIATURE ELETTROMEC-CANICHE DI SOLLEVAMENTO-NUOVE DIMENSIONI DELL"ESPERIENZA"; |
|
| |
- An advertising brochure entitled "MORGIEN-TOWER SCAFFOLDING"; |
|
| |
- Advertising flyers of the Italian company Safie entitled: |
|
| |
(i) "SAFIPONTEGGI AUTOSOLLEVANTI-MODELLO ZENITH"; |
|
| |
(ii) "PONTEGGIO MODELLO ZENITH", and |
|
| |
(iii) "SAFI PONTEGGI AUTOSOLLEVANTI-PONTEGGIO MODELLO JOLLY"; |
|
| |
- An advertising flyer of the Italian company Piat, entitled "NUOVA PIAT SRL-PONTEGGIO ELETTRICO MOD. 506/2500"; |
|
| |
- An advertising flyer of the Italian company VAE s.r.l. entitled "VAE NENETA ATTREZZATURE EDILI"; |
|
| |
(e) the matter defined in the patent at issue is not patentable on the ground that it was obvious in relation to human knowledge of the state of the art at the time when the supposed invention was made by the person whose name appears on the patent at issue. The same thing applies to the matter defined in each of claims 1, 2, 13 and 15, which are void.... |
|
| |
(f) the patent at issue is void for non-compliance with section 34 of the Patent Act, R.S.C. 1985, c. P-4, in that, for example, the patentee did not particularly indicate and distinctly claim the part, improvement or combination he claims as his invention, and the claims do not define distinctly and in explicit terms the things or combinations that the plaintiff-defendant by cross-demand considers novel and in which it claims an exclusive privilege or property; |
|
| |
(g) each of claims 1, 2, 13 and 15 of the patent at issue is void in that each such claim is ambiguous; |
|
| |
(h) claims 1, 2, 13 and 15 of the patent at issue are void in that they are broader than the specifications and consequently each such claim encompasses more matter than what may be lawfully protected under the Patent Act; |
|
| |
(i) each of claims 1, 2, 13 and 15 of the patent at issue is void for lack of utility. |
|
[4] The defendants ask that this Court:
| |
A. ALLOW the defendants" defence; |
|
| |
B. DISMISS the plaintiff"s action; |
|
| |
The whole with full costs, including expert witness costs. |
|
| |
A. ALLOW the cross-demand by the defendants, plaintiffs by cross-demand; |
|
| |
B. DECLARE claims 1, 2, 13 and 15 of the patent at issue void and of no effect; |
|
| |
C. ISSUE an order for a permanent injunction enjoining the plaintiff, defendant on the cross-demand, AVANT-GARDE ENGINEERING (1994) INC., both by itself and through its officers, directors, shareholders, agents or other representatives, and Jean Robillard, to forthwith cease making any false or misleading representation whatsoever concerning the activities or products of the defendants, plaintiffs by cross-demand GESTION DE BREVETS FRACO LTÉE and LES PRODUITS FRACO LTÉE, including the fact that these products or activities might constitute an infringement of any patent whatsoever belonging to AVANT-GARDE ENGINEERING (1994) INC. or to Jean Robillard. |
|
| |
The whole with full costs, including expert witness costs. |
|
[5] The action against André St-Germain, which appeared in their initial application, and the application to strike the application for Canadian patent 2,099,958 were abandoned by the plaintiff at trial.
[6] The plaintiff has elected to seek compensation through an accounting of the defendants" profits.
FACTS
[7] The facts leading up to this proceeding are described by Mr. Jean G. Robillard, representing the plaintiff.
[8] The hydraulic scaffolding that is the subject of patent 1,304,109 was invented by Jean St-Germain at the request and with the participation of his brother André St-Germain. Jean St-Germain, with his brother"s support, approached a patent agent to have the hydraulic scaffolding patented.
[9] On November 3, 1989, while the Canadian patent application was still pending, Jean St-Germain sold all of his rights and interests in the Canadian patent that was to be issued to Les Échafaudages Hydro-Mobile Inc. (Hydro-Mobile).1
[10] From 1987 to April 1991, André St-Germain was the majority shareholder, director and president of Hydro-Mobile. On April 24, 1991, he resigned his duties as a director and president of Hydro-Mobile and sold his shares to Jean St-Germain, who immediately resold them to Diane Sarazin and Jean Robillard, thereby assigning all of these rights and interests in patent 1,304,109.
[11] In the fall of 1991,2 Hydro-Mobile in turn assigned and sold all of its rights and interests in the Canadian patent to Avant-Garde Engineering Inc.3
[12] On June 23, 1992, the Canadian patent entitled "Hydraulic Scaffolding" was issued under number 1,304,109 in the name of Avant-Garde Engineering Inc., as is apparent on the copy of the patent.
[13] Notwithstanding the sale of his rights and interests in the patent, André St-Germain indicated an intention to use a hydraulic scaffolding raising system. Following a discussion with Jean Robillard, André St-Germain abandoned this project in order to pursue the creation of a raising system using blocks and pulleys, or cables and hand winches.4
[14] Around December 1993, Jean Robillard learned of a possible infringement by Les Produits de forme Fraco Limitée (Fraco). This company had manufactured, installed and leased out hydraulic scaffoldings in the Guy Favreau Complex in Montréal.5
[15] On December 12, 1994, Avant-Garde Engineering (1994) Inc. purchased all the rights belonging to Avant-Garde Engineering Inc. Avant-Garde now handles the marketing of the hydraulic scaffoldings designed according to the characteristics described in the specifications of patent 1,304,109.
[16] The record indicates that the defendant Gestion de Brevets Fraco Ltée is inactive. It is simply the patentee of the patents that are issued for the inventions produced by André St-Germain and it collects royalties from Fraco and another company by the name of 3100-1241 Québec Inc.
[17] The other defendant, Fraco, is concerned with arranging the manufacture of the scaffoldings at issue and promoting and selling them.
[18] The company 3100-1241 Québec Inc., which is carrying on business under the corporate name "Les Échafaudages Fraco", has been incorporated since the end of 1993 and handles the leasing of the scaffoldings manufactured by or on behalf of Fraco. It is a wholly-owned subsidiary of Fraco.
[19] The activities of Fraco or 3100-1241 Québec Inc. are not limited to Canada.
INTERPRETATION OF THE PATENT
[20] We shall begin with an interpretation of patent 1,304,109.
[21] The patent discloses the following:
| |
The invention relates to scaffolding and, more particularly, to scaffolding arranged to be erected along a building wall for use by workmen in installing a lining on the wall, such as brickwork. |
|
| |
Conventional scaffolding of the above-noted type usually consists of detachable frame elements arranged to be handled by one or two men and to be connected one on top of the other as the men work their way upward along the erected scaffolding elements. . . . |
|
| |
There has been recently introduced on the market a scaffolding arrangement composed of a pair of posts made of modular sections, each of which must be erected to the desired height by expensive means such as a crane with a long boom. . . . |
|
| |
The general object of the invention is to provide scaffolding more particularly adapted to be mounted adjacent to a building wall, which obviates the above-noted disadvantages in that it has posts and a work platform capable of supporting a heavy load, including sufficient wall lining material, and in that power means raise the platform up the posts which are formed of modular elements capable of being installed by a workman on the platform as the latter is being raised. |
|
| |
Another object of the present invention is to provide scaffolding of the character described, having means enabling the workman on the platform to install braces for the posts and tierods from the posts to the building wall to stabilize the posts as the platform is being raised and to permit installation of the scaffolding at a distance from the building wall sufficient to clear balconies and the like which may protrude from the building wall. |
|
| |
Another object of the present invention resides in a novel means to raise and lower the platform and its load along the posts. |
|
| |
Another object of the present invention resides in the provision of platform extensions which can be secured to the work platform itself to extend adjacent to the building wall, despite the uneven contour of said wall. |
|
| |
Another object of the present invention is to provide scaffolding of the character described, which can be very quickly installed and which enables much faster wall lining than when using previously-known scaffolding structures. |
|
| |
The scaffolding of the invention basically comprises a base, a pair of spaced posts secured to and upstanding from the base, each post formed of modular post sections, fastener means to releasably, successively secure said post sections one on top of the other, said posts forming substantially equally-spaced step means; a work platform surrounding the posts and capable of being raised and lowered along said posts, a pair of anchoring members pivotally carried by the work platform adjacent to each post and alternatively and successively engageable with the step means to suspend the work platform from the posts at different levels; at least one anchoring member of said pair being a power-actuated member extendible and retractable along said post relative to the work platform through a stroke at least equal to the vertical spacing between adjacent step means, said platform raisable and lowerable by said extendible members, biasing means associated with said members to cause automatic engagement of the same with said step means as said platform is raised or lowered, the members of the pairs alternately engaging the step means to suspend the platform as the latter is raised or lowered by the extendible members of the pairs, the post sections arranged to be secured or removed by a workman on said platform onto or from each topmost secured post section when the platform is at a general level of said topmost post section. . . . |
|
| |
Preferably, a hydraulic supply circuit is connected to said hydraulic rams; and lever means are provided for controlling said hydraulic supply circuit, the said hydraulic supply circuit and said lever means being mounted on said platform and accessible to a worker on said platform. . . . |
|
[22] 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. The anchoring members are extendable by means of a hydraulic supply circuit connected to a double-acting hydraulic ram pivoted to one end of the platform.
[23] The following drawings illustrate the embodiment of the invention. These vertical sections of a post and work platform show the various elements for raising and lowering the platform along the post and the successive positions taken by these elements.
[24] Figure seven shows the means to suspend the platform from each post and to raise or lower the platform along the posts.
[insert Figure 7]
[25] Figure eight shows the platform raised along the post. The guide bar slides along the next highest transverse bar or step, so as to clear the same during raising of the platform.
[insert Figure 8]
[26] Figure nine shows the upper hook, which can be released by pulling the guide bar outwards when clearing the step.
[insert Figure 9]
ANALYSIS OF CLAIMS
[27] Claim 1 of patent 1,304,109 reads as follows:
| |
A scaffolding comprising a base, a pair of spaced posts secured to and upstanding from said base, each post formed of modular post sections, fastener means to releasably and successively secure said post sections on top of one another, said posts defining more or less equally spaced step means, a work platform surrounding said posts and capable of being raised and lowered relative to said posts, a pair of anchoring members pivotally carried by said platform adjacent each post and alternately and successively engageable with said step means to suspend said work platform from said posts at different levels, at least one anchoring member of said pair being a power-actuated member extendible and retractable along said posts relative to said work platform through a stroke at least equal to the vertical spacing between adjacent step means, said platform raisable and lowerable by said extendible members, biasing means associated with said anchoring members to cause automatic engagement of said anchoring members with said step means as said platform is raised or lowered, and the other member of said pairs alternatively engaging said step means to suspend said platform as the latter is raised or lowered by the extendible members of said pairs, said post sections arranged to be secured or removed by a workman on said platform onto or from the topmost secured post sections when said platform is at general level of said topmost secured post sections. |
|
[28] The following drawings illustrate claim 1 of the invention.
[29] Figure two is an end elevation with the work platform practically at ground level.
[insert Figure 2]
[30] Figure three is a side elevation of the scaffolding.
[insert Figure 3]
[31] Figure ten is a vertical section of a post and work platform showing the various elements for raising and lowering the platform along the post. When the platform is not operating, it is safely suspended.
[insert Figure 10]
[32] Claim 2 reads as follows:
| |
A scaffolding as defined in claim 1, wherein each post section includes a lattice framework of quadrangular cross-section forming longitudinal corner members interconnected by transverse bars which constitute said step means; and wherein said extendible member includes a double-acting hydraulic ram pivoted at one end to said platform and having a piston rod extended from its outer end and forming at its outer end a transverse bar-engaging part. |
|
[33] The following drawings illustrate the embodiment of the invention. These vertical sections of a post and work platform show the various elements for raising and lowering the platform along the post and the successive positions taken by these elements.
[34] Figure seven shows the means to suspend the platform from each post and to raise or lower the platform along the posts.
[insert Figure 7]
[35] Figure eight shows the platform raised along the post. The guide bar slides along the next highest transverse bar or step, so as to clear the same during raising of the platform.
[insert Figure 8]
[36] Figure nine shows the upper hook, which can be released by pulling the guide bar outwards when clearing the step.
[insert Figure 9]
[37] Claim 13 reads as follows:
| |
A swing stage as defined in claim 2, further including a hydraulic supply circuit connected to said hydraulic rams; lever means for controlling said hydraulic supply circuit, and said lever means mounted on said platform and accessible to a worker on said platform. |
|
[38] Figure nine, above, shows the upper hook, which may be released by pulling the guide bar outwards when clearing the step.
[39] Figure 11 shows a vertical section of a post and work platform showing the various elements for raising and lowering the platform along the post . The platform is lowered two steps at a time. To clear the upper hook from an intervening step, after slightly raising the platform so that the hook clears the step, and after pulling on the guide bar, a plate is temporarily suspended from the said steps so that the hook will engage the step. During this lowering operation, the lever is operated to cause clearance of the lowermost hook. The two lowermost hooks may be interconnected from one post to the other, so that a single-operating arm or lever will operate both lower hooks.
[insert Figure 11]
[40] Claim 15 reads as follows:
| |
A scaffolding as defined in claim 2, wherein said work platform includes an underframe rigid therewith and further including guide rollers carried in vertically-spaced pairs by said work platform and said underframe and in rolling contact with said corner members to stabilize said work platform relative to said posts. |
|
[41] Figure five is a vertical section through one post and through the working platform. Figure six is a plan section taken along line 6-6 of figure five. The work platform is guided along the post by means of two sets of flanged guide rollers engaging the angle members at the four corners of each post, one set at the level of the work platform and the other set of flanged rollers carried by the underframe vertically below the first set of rollers so as to better stabilize the platform transversally.
[insert Figure 6]
[42] I conclude that the essential peculiarity of patent 1,304,109 is the hydraulic ram raising system. This is a swing stage that allows the work platform to be raised or lowered through the automatic engagement of anchoring members. The anchoring members are extendable by means of a hydraulic supply circuit connected to a double-acting hydraulic ram pivoted to one end of the platform.
[43] The invention consists of posts, equally-spaced step means, a work platform capable of being raised or lowered, and a pair of extendible anchoring members. The extendible member includes a double-acting hydraulic ram with an extended piston rod and a transverse bar-engaging part. The lever means mounted on the work platform are accessible to a worker. The platform is stabilized by guide rollers.
LEGAL PRINCIPLES
Presumption of validity
[44] The defendants allege that patent 1,304,109 is invalid and the plaintiff alleges that patent 1,304,109 was valid at its date of issue, is in force and is still valid.
[45] The applicable legal principles were enumerated by Décary J.A. in the Federal Court of Appeal decision in Diversified Products.6
[46] Under subsection 43(2) of the Patent Act,7 an issued patent is prima facie presumed to be valid. The presumption of validity applies unless the party challenging the patent successfully persuades the court of its invalidity.8
| |
. . . [T]he most accurate description of the presumption is that of Pratte, J. (as he then was), in the case of Rubbermaid9. . . : |
|
| |
It is clear, however, that this section "deals only with the incidence of proof, not with the standard of proof. It shows on whom the burden lies to satisfy the court, and not the degree of proof which he must attain": Blyth v. Blyth , [1966] 1 All E.R. 524, at 535, per Lord Denning. Moreover, once the party attacking the patent has introduced evidence, the court, in considering this evidence and in determining whether it establishes the invalidity of the patent, must not take the presumption into account. It cannot be said that the presumption created by s. 47, is, as a rule, either easy or difficult to overcome; in some cases, the circumstances may be such that the presumption will be easily rebutted, while, in other cases the same result may be very difficult or even impossible to obtain. |
|
Obviousness
[47] Décary J.A. wrote that there is no specific section in the Patent Act relating to the requirement for inventiveness or inventive ingenuity, but it has been held and is no longer questioned that by use of the words "invention" and "inventor" throughout the Act, inventiveness or inventive ingenuity is required to obtain a valid patent. It is well established that a mere "scintilla of invention" is sufficient to support the validity of a patent. The courts have chosen to define "lack of inventiveness" rather than "inventiveness" and have called it "obviousness". Inventiveness can co-exist with easiness and simplicity.
[48] In Diversified Products,10 Décary J.A. examined various factors in order to ascertain inventiveness, including the following:
| (a) the device is novel and superior to what was available until then; |
| (b) it was since used widely and in preference to alternative devices; |
| (c) competitors as well as experts in the field had never thought of the combination; |
| (d) amazement accompanied its first publication: and |
[49] While none of these factors, taken in isolation, is necessarily determinative on the issue of obviousness, it is possible to examine their cumulative effect.
Infringement
[50] Section 42 of the Patent Act reads:
42. Every patent granted under this Act shall contain the title or name of the invention, with a reference to the specification, and shall, subject to this Act, grant to the patentee and the patentee's legal representatives for the term of the patent, from the granting of the patent, the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used, subject to adjudication in respect thereof before any court of competent jurisdiction.
[51] If equipment is manufactured, used or sold without the authorization of the patentee, or a method is implemented without the authorization of the patentee being listed in any of the claims of the patent"s specifications, the patent is considered to be infringed. Thus, if the various structural characteristics of a piece of equipment are used or marketed without the authorization of the patentee, in at least one of the patent"s claims, such manufacture, sale or marketing constitutes an act of infringement that may be grounds for legal proceedings.
[52] The courts usually expand their assessment of the infringement to cover the technical equivalents. Thus, if some item in patented equipment is not completely eliminated but simply substituted through some technical equivalent that is obvious to any specialist in the relevant field, it will still be considered an infringement. Furthermore, if some items that are not absolutely necessary are eliminated or others are added, it will still be considered an infringement. In such cases, there will not be any literal infringement but an infringement in substance of the claimed invention.
ANALYSIS
Validity of the patent
Evidence
[53] On the issue of invalidity, Fraco relies on the evidence of Mr. Franceshinis and Mr. Lespérance.
Mr. Franceshinis
[54] Mr. Carlos Franceshinis has, since 1992, been a businessman and one of the major shareholders of Les Produits de forme Fraco Limitée. He holds the position of company vice-president and also acts as a technical representative.
[55] From 1963 to 1967, Mr. Franceshinis was a university student in electro-technical engineering at the Polytechnical School in Turin. During his studies he specialized in marble work, marble- and cement-based products and the construction of marble installation machinery. Mr. Franceshinis established a company for the importation and sale of floor and wall covering materials in Belgium; worked in Kinshasa, Zaire, where he established a factory to manufacture marble- and cement-based products; and managed a marble and cement plant in Italy. In 1981, he founded Franceshinis Limitée, a company specializing in the importation of products and equipment for construction sites, such as self-supporting cranes, all-terrain excavators, mortar mixers and concrete pumps. Over the last nine years, construction site scaffolding systems have become one of his main business concerns. Franceshinis Limitée has approached potential Canadian clients to introduce them to mobile scaffoldings manufactured in Europe.
[56] Mr. Franceshinis testified concerning a dozen or so cranes with an electric cog-rail lifting system and two French patents, Richier 1,465,517 and Potain 2,355,764.
[57] Mr. Franceshinis testified that the Haeck, Malmquist, Ready, Delmine, Pieri, Morgen, Zenith and Nuovo-Piat cranes are electric cog-rail or cable lifting systems. He also concluded that the Richier and Potain patents are tower crane systems, and not scaffoldings.
| |
Q. Tab 24, exhibit D-34. [Can you comment on what this is and where this document originates?] |
|
| |
A. A patent for a tower lifting process, using tower cranes, and here too the hydraulic system is used, still the system with hydraulic pistons that have long been used for lifting things. |
|
Mr. Lespérance
[58] Mr. Lespérance is an engineer registered as a patent agent in Canada since 1956, and in the United States since 1958. He was trained as a patent agent with Robic and Bastien from 1948 to 1958. In 1958 he went into business for himself.
[59] Mr. Lespérance is acquainted with patent 1,304,109, as he personally prepared and filed the patent application acting at the time on instructions from Jean St-Germain, the inventor. His signature appears at the bottom of the drawings that are part of patent 1,304,109.
[60] Mr. Lespérance also testified that the Richier and Potain patents are not scaffoldings but rather tower crane systems.
| |
Q. But am I to understand that this is not a scaffolding system? |
|
| |
A. It is not a scaffolding system, but it is... |
|
| |
Q. So Potain is not a scaffolding system? |
|
| |
A. No, no, it is a tower crane system, like you see everywhere. But the system for raising the inside tower is a hydraulic ram system as in the Avant-Garde patent. |
|
| |
Q. I understand that this, too [Richier] is not a scaffolding system but rather... |
|
| |
A. It is still a tower crane, but the hydraulic system that has been used for a long time in tower cranes was mounted on the scaffolding in the Avant-Garde patent. And if you read claim 7, the first claim, everything connected with the raising system, that can be read on the Potain and Richier system. |
|
[61] Mr. Lespérance noted that the rams of the Richier and Potain patents push, in contrast to those in patent 1,304,109, which pull.
Conclusion
[62] Since the essential peculiarity of patent 1,304,109 is the hydraulic ram raising system; since it is a scaffolding that allows the work platform to be raised or lowered through the automatic engagement of anchoring members; since the anchoring members are extendible through a hydraulic supply circuit connected to a double-acting ram pivoted at one end to the platform; since the invention consists of posts, equidistant step means, a raisable and lowerable work platform, and a pair of extendible anchoring members; since the extendible member includes a double-acting hydraulic ram with an extended piston rod and a transverse bar-engaging part; since the lever means mounted on the work platform are accessible to a worker; and since the platform is stabilized by guide rollers; I conclude that the subject of patent 1,304,109, the swing stage hydraulic ram raising system has some unanticipated and valid properties not possessed by tower cranes with an electric cog rail raising system or the tower crane raising systems in the Richier and Potain patents. The invention contemplated by patent 1,304,109 was not disclosed in the Richier and Potain patents.
[63] Furthermore, none of the U.S. or French patents, and none of the publications listed by the defendants in their statement of defence and cross-demand, dated April 27, 1995, independently discloses or proposes the scaffolding as described in patent 1,304,109 or in the patent claims.
[64] I further find that the evidence submitted in the context of this application establishes that the hydraulic scaffolding has been a commercial success and that it has been widely used, especially because it allows the work platform to be raised and lowered.11
[65] The allegation of invalidity of the plaintiff [sic], on the issue of obviousness, is dismissed. In particular:
| (a) although André St-Germain states that he designed the scaffolding, the record establishes that his brother Jean St-Germain is the inventor and that the plaintiff is the owner of the patent; |
| (b) none of claims 1, 2, 13 and 15 of the patent at issue covers a juxtaposition of elements but each covers a combination of elements; |
| (c) the matter defined in these claims was not described in any of the patents or publications listed by the defendants in their statement of defence and cross demand, dated April 27, 1995, which were published more than two years prior to the filing in Canada of the patent application that resulted in the patent at issue; |
| (d) the matter defined in the patent at issue is patentable since it was not obvious in relation to the known state of the art at the time when the invention was made by the person whose name appears on patent 1,304,109. The subject matter defined in each of claims 1, 2, 13 and 15 is likewise patentable and these claims are valid; |
| (e) patent 1,304,109 is valid and in compliance with section 34 of the Patent Act, in that, for example, the patentee particularly indicated and distinctly claimed the part, improvement or combination he claims as his invention, the claims define distinctly and in explicit terms the things or combinations that the plaintiff, defendant on the cross demand considers to be novel and in which it claims an exclusive privilege or property; |
| (f) each of claims 1, 2, 13 and 15 of patent 1,304,109 is valid in that each such claim is unambiguous; |
| (g) claims 1, 2, 13 and 15 of the patent at issue are not void in that they are not broader than the specification and accordingly none of them encompasses more material than what may be lawfully protected under the Patent Act; and |
| (h) none of claims 1, 2, 13 and 15 of patent 1,304,109 is void for lack of utility. |
Infringement
Evidence of plaintiff
[66] Avant-Garde alleges that claim 1 of patent 1,304,109 appears word for word on the Fraco scaffoldings.
[67] All of the structural items recited in the claim are found in the Fraco scaffolding: a base, some posts secured to and upstanding from the base, each post composed of sections using fasteners, a platform sliding over the posts, some bars defining equally-spaced horizontal levels, some pivoting rods and some hydraulic rams with hooks.
[68] The three minor differences do not alter the basic principle of the claim and the invention in patent 1,304,109. In the first place, in the Fraco scaffolding, it is gravity and a spring balance that enable the pivoting tierods and hooks secured to the guide rail to permanently engage the bars forming the steps. Secondly, although the Fraco scaffolding has one, two or three posts, a person with experience in the trade could easily, and solely on the basis of his expertise in this field, design a smaller platform using a single post, or a much larger platform using three or more posts. Thirdly, in the Fraco scaffolding, the posts that are also in sections are about ten feet long and can be handled by a single worker on the platform. It is obvious that any specialist in the field could use long sections supported by a crane or some other similar means, whether or not mounted on a platform, without modifying or altering the substance of this claim.
[69] Avant-Garde alleges that the structure of the post sections in its scaffolding is identical to the one that can be observed on the Fraco scaffolding. In the Fraco scaffolding, there is at least one double-acting hydraulic ram with an identical structure and operation to those described in claim 2 of patent 1,304,109.
[70] Avant-Garde alleges that the particulars of the supply circuit as described in claim 13 of patent 1,304,109 are identical to those of the supply circuit in the Fraco scaffolding.
[71] Avant-Garde alleges an infringement of claim 15. However, no evidence was presented by the witnesses. Avant-Garde argues that if some item in a patented device is not completely eliminated but is simply substituted by a technical equivalent that is obvious to any specialist in the field to which the invention pertains, the court should conclude that there is still an infringement. If some items that are not absolutely necessary are eliminated, or others are added, the court should likewise find that there is an infringement. In such a case, there is not a literal infringement of the claimed invention, but an infringement in substance.
Evidence of defendants
[72] Fraco alleges that the hydraulic platform raising system of the Fraco scaffolding is not designed for the same uses as the hydraulic platform raising system of the Hydro-Mobile scaffolding. Since the work platform is fully detachable, it is not connected to the rest of the system.
[73] Fraco alleges that none of claims 1, 2, 13 and 15 of patent 1,304,109 correspond to the Fraco scaffolding. The proposed contrivance in the patent is not a scaffolding but a specially constructed platform, while the Fraco scaffolding is of modern modular design and extremely versatile.
[74] Fraco alleges the products are complementary, not competitive with each other. The Fraco scaffolding is more versatile and adaptable than the patented product. Fraco is able to respond to calls for tender for which Avant-Garde is ineligible, since its scaffolding is less versatile and incapable of being used in such jobs.
[75] Given the protection afforded by patent 1,304,109 and all the other patents prior to its filing, Fraco alleges that the patent"s claims should be construed literally and not according to the doctrine of mechanical equivalents. The general idea of a motorised scaffolding, Fraco argues, was known before patent 1,304,109 was filed. Furthermore, the hydraulic ram raising system operated on the same principle as the raising system in patent 1,304,109 and was known for analogous applications.
[76] Any broad interpretation of claims 1, 2, 13 and 15 of the patent would make the claims of prior patents subject to challenge for validity.
[77] In Canadian law, the monopoly granted by a patent is defined solely in the claims. Fraco alleges that the court"s role is to interpret the claims in accordance with certain rules of construction, including the following:
| (a) The claims are addressed to persons specialized in the field to which the invention pertains. The court must therefore take into account the knowledge possessed by a specialist at the time the patent was issued. |
| (b) The claims constitute an integral part of the patent and must therefore be read in the context of the patent and not as if they were a distinct document. However, although the text of the specifications may be referred to in order to understand the meaning of the words and expressions appearing in the patent claims, it is unnecessary to do so when the words are clear and unambiguous. The specifications cannot be used to alter the meaning of the claims. |
| (c) Finally, the court should interpret the claims of a patent with an open mind, seeking to understand. |
[78] Having determined the meaning of the claims, the court should then consider the defendants" product and compare it to what is defined in each of the claims. Where the defendants" product replicates each and every one of the elements referred to in the claim, there is an infringement of the claim. An infringement of only one claim of the patent suffices.
[79] Where the court finds an infringement, even where there is no perfect correspondence between the defendants" product and what is stated in a claim, there is a substantive infringement. This theory does not apply, however, where the differences between the claim and the defendants" product are significant. If there are significant differences, there is no infringement.
Evidence
[80] In the case at bar, the plaintiff"s evidence is based on the affidavits and testimony of Mr. Allard and Mr. Robillard.
Mr. Allard
[81] Avant-Garde presented expert evidence by Mr. Louis Allard, a mechanical engineer who has been a member of the Corporation des ingénieurs de la province de Québec since 1971. As an engineer and the president of Louis-L. Allard & Associé Inc., he has been providing mechanical design services for materials handling equipment for more than ten years. He also held the position of director of engineering for ten years for the Équifab Inc. group, and for six years for Rader Canada Inc. These two firms designed and manufactured materials handling equipment for aluminum smelters, quarries, mines, harbour facilities, sawmills and paper mills.
[82] Following a comparative study between the lifting and deployment mechanisms of the plaintiff"s scaffoldings and the equivalence described and illustrated in Fraco"s Canadian patent application 2,099,953, he states that from the mechanical standpoint, the two machines appear identical in regard to the fundamentals.
| |
Q. Now, for the presentation of this report, the preparation of this report [Expert report of Mr. Louis R. Allard dated October 30, 1997], Mr. Allard, what steps did you take? |
|
| |
A. I went to Avant-Garde Engineering, to their shop in l"Assomption, on September eighteenth (18). I received some documents at that point, the three (3) patent copies and the application for Canadian patent 1,304,109, which is the Avant-Garde Engineering patent, and patents 5,368,125 and patent application 2,099,958. |
|
| |
Q. Now, the other two (2) patents refer to what, Mr. Allard? |
|
| |
A. The other two (2) patents also relate to scaffolding systems. |
|
| |
Q. What I am presenting to the Court is a notebook containing the three (3) patents: patent 1,304,109, the U.S. patent 5,368,125 of Fraco and the Canadian patent application 2,099,958. |
|
| |
Q. Mr. Allard, we were at these documents. Have you examined the different patents? |
|
| |
A. I examined document 1,304,109 on the spot because there was a Hydro-Mobile scaffolding on the spot. So, I was able . . . after reading the document, I verified the different points to satisfy myself that I clearly understood how the mechanism operated. |
|
| |
Q. Now, as an expert, Mr. Allard, could you explain to the Court what is covered by these patents? |
|
| |
A. In fact, in these patents, these three (3) patents describe scaffoldings. . . . |
|
[83] Mr. Allard"s affidavit reads as follows:
| |
6. I have read the following documents, patents and applications in my office: |
|
| |
- Platform raising system in scaffoldig [sic] U.S. Patent # 5,368,125 Nov. 29, 199412 |
|
| |
- Platform raising system in scaffoldig [sic] Canadian application |
|
| |
7. The descriptions and illustrations explain and detail, in the patents, the principles and methods applied to meet the following needs are [sic] identical and are part of the claims in each of the three documents: |
|
| |
7-a The vertical stability of the towers by wind bracings and anchorings secured to an adjacent wall; |
|
| |
7-b The vertical displacement of the platform assisted by hydraulic rams, pivoting hooks and equidistant rungs secured to the towers; |
|
| |
7-c The locking of the work platform to the towers by sets of latches; |
|
| |
7-d The manual disengagement of the latches using levers to allow the platform to descend; |
|
| |
7-e The assistance of an hydraulic power unit driven by an internal combustion engine to power the rams. |
|
| |
8. Following my reading and observations of Avant-Garde"s Hydro-Mobile, I indicated the following similarities between these documents and the claims in patent # 1,304,109, since in both cases it involved: |
|
| |
8-a A freestanding platform hanging by hooks and latches hinged to equidistant rungs secured to stationary towers; |
|
| |
8-b The towers are horizontally destabilized by an adjacent wall using anchorings and wind bracings; |
|
| |
8-c The reciprocal vertical displacement of the platform in relation to the tower using double-acting rams secured: |
|
| |
- On the one hand to the platform by a pivot at the cylindrical end of the ram; |
|
| |
- On the other hand, to the rungs of the tower by hinged hooks retained at the end of the ramrod; |
|
| |
8-d The guide rollers secured to the platform allow the reciprocal vertical movement and stability of the platform in relation to the towers; |
|
| |
8-e The set of latches, the opening of which is guided by the rungs ascending from the platform. The closing of the latches against the rungs is assisted by springs; |
|
| |
8-f The need to release the set of latches manually through a system of levers, to allow the descent of the platform; |
|
| |
8-g The platform is kept in working position by the latches; |
|
| |
8-h The hydraulic power unit including a pump driven by an internal combustion engine; |
|
| |
8-i The pump drives the double-acting rams with hydraulic fluid to move the platform up and down; |
|
| |
8-j The power unit is mounted on the mobile part of the scaffold. |
|
Mr. Robillard
[84] Mr. Jean G. Robillard is a businessman, and the duly authorized representative of the plaintiff company.
[85] In his affidavit, Mr. Robillard stated that the Fraco scaffolds copy and infringe in several respects the scaffolds protected by patent 1,304,109.
[86] In the course of his testimony, Mr. Robillard stated that Jean St-Germain is the inventor of the scaffolding.
[87] In his testimony, Mr. Robillard disclosed the following:
| |
Q. And the specific aspect of this patent? |
|
| |
A. The specific aspect of this patent is the reciprocating hydraulic raising system. |
|
| |
Q. Which is composed of what? |
|
| |
A. Mainly, you have a hydraulic power supply system, which is the power unit which . . . in our case, it is propelled by a gasoline engine. Then, you"re talking about hydraulic cylinders that are secured on the one hand to the platform and on the other, the head furnished with a hook is fastened in the tower so that when the cylinder is closed up the platform is raised. |
|
| |
So the whole system is carried on the platform, moves in front of the platform. It is an extremely simple system, somewhat similar to a movement you might make in a gymnasium on parallel bars: by hanging onto one of the bars with your arms and bringing your arms tightly together, you can raise yourself up, and if you think you can touch your chin for a fraction of a moment, by re-extending your arms you would go and find a new bar. |
|
| |
So, that"s how simple the Hydro-Mobile reciprocating hydraulic system is. And it"s a system that is extremely simple to make but is extremely reliable. |
|
| |
Q. Are you able to tell the Court whether this system existed on some scaffolds prior to yours? |
|
| |
A. This system did not exist on any scaffolds before Hydro-Mobile came along. |
|
| |
Q. You said you have had an opportunity to see the defendants" machines. On what occasions? |
|
| |
A. During visits in several regions in Canada and especially in the United States, I have been able to see and to observe, from as close up as I am today to the Court, the Fraco machines, from a few feet away, and to examine each of their facets. |
|
[88] Mr. Robillard was of the opinion that all of the major components of the Hydro-Mobile raising system, with all of these specific elements, could be found on the Fraco scaffolding. Here is what he said on this:
| |
Q. Would you take the following photograph? Now, can you describe the photograph to the Court? |
|
| |
A. Now, these are three (3) photos that were taken in Ville Saint-Michel on the Fraco systems that had been dismantled and [were] ready to be transferred to a new site. Now, what you see here on photo number 6, you can see quite clearly a hydraulic control lever with some hoses. |
|
| |
Q. Where are they located? |
|
| |
A. They are located in a triangular part of the ear. In the centre, you see on each side there is a part in the form of a triangle that looks a little like a danger signal that is put on the road. Now there is a triangular part inside which you can make out a hydraulic control valve. Obviously, for someone who is not used to it, he"s going to say: well yes, you will use the expression it is "hoses" and a lever. In fact, the hydraulic components have certain characteristics that make them easy to identify. That"s the first point. We can already make out the presence of the hydraulic control. |
|
| |
Q. Do you have a date connected to that? |
|
| |
A. Those are photos that were taken at the end of... September, October ninety-two (1992). |
|
| |
A. At Ville Saint-Michel, on Gouin Boulevard. Saint-Michel street stops at Gouin boulevard. |
|
| |
Exhibits number P-6, P-7 and P-8: Photos of the Fraco systems taken in the fall of 1992 in Ville Saint-Michel. |
|
| |
Now, the second photo, you see much better . . . |
|
| |
A. P-7, you can see the control mechanism much more clearly, that is, the valve. You also see... toward the centre of the photo, you see a spring which is to all intents and purposes plated like chrome, which in fact is coated with zinc; so, that is the spring balance which forces the application of the tower hook. |
|
| |
Because in the case of the Fraco scaffolding, like the case of the Mobile scaffolding, as the system goes up, there is a form on the hook that forces it to deviate to clear the passage of the bar. |
|
| |
So what we"re looking at here is the tension mechanism which is used to keep the hook in contract with the tower. And of course we see the control system again. On the left, in the middle of the page, we see the cylinder. This is the first time that we see the cylinder. And right in the centre of the photo, we also see the cylinder. In fact, on some photos you could even read the model, the cylinder model that was used. |
|
| |
On photo number 8, you can clearly see in the middle of each of the three systems that are lying on the trailer, you clearly see the cylinder, which pivots at the end of the cylinder and which is now in contact with the tower. So there you find all the major components of the Hydro-Mobile raising system. |
|
| |
Q. The raising system, you are referring to the Avant-Garde raising system? |
|
| |
A. Avant-Garde"s, the Hydro-Mobile scaffolding, which is the trade mark of the Avant-Garde Engineering product. |
|
| |
Now, the following photo is somewhat less important. It is photo 9: you see here the retention bars, which replace what I described earlier as being the chin that would be used to re-extend the arms to retain the hoisted platform during a cylinder extension cycle. |
|
| |
Q. You observed that between the towers there was a platform? |
|
| |
Q. Is that the correct term? |
|
| |
A. Yes, we say platform in French or English. These platforms are of different lengths, different widths. And in both cases, the width of the platforms may be increased by pulling on the ledgers " in English, we use the word "out-rigger". And this enables the platform to hug the edge of the building. That is, since there are ledgers at, let"s say, every four feet, by bringing out ledgers of different lengths you can adhere to the form of the building if there is a projection, if there is a balcony, if there is an inside window or an elevator side or a stairway side. |
|
| |
So, you manage, even by having a form that is more or less linear, even if the line is curved, to go and get different dimensions with some ledgers. |
|
| |
The platform rests on towers. It extends lengthwise and it usually extends in front with some ledgers that allow you to hug the form. And the two (2) platforms allow you to work behind, that is, you can work both sides of the platform in both cases. |
|
| |
Q. So, you have the towers, you have a platform. And what is the other element that is important? |
|
| |
A. The element that becomes important at that point is get that platform to ascend. Now, the substance of the Hydro-Mobile invention was to combine with that platform that you want to raise up vertically, to combine an energy system that is simple, reliable and autonomous. And that is the hydraulic system. |
|
| |
Q. I am going to take the notebook. |
|
| |
" In the list of exhibits that was filed under P-3, My Lord, the big notebook, at the final tab, contains the Canadian patent of Avant-Garde Engineering. " |
|
| |
Q. Could you explain to the Court or describe to the Court the raising system to which you are referring? |
|
| |
A. Well, on figure 7 in the patent, we see a cross-section of the raising system of the tower and the platform. Now, the platform is item number 46 " you see the small 46 in the middle on the right " well, that is the platform and we"re only looking at one part, one part of the structure. |
|
| |
The part immediately below, which you could find under number 88, is what is called the ear. The ear is the entire main structure, which is the location where the raising system is placed. It is like a cage, if you want, which has some fairly strong moorings to allow some ... where efforts may be concentrated to help apply the entire platform load at that location and to get the platform carried by the cylinder. |
|
| |
Now, the cylinder is number 106. The cylinder is hooked to the ear of the platform at point 110. Now, there is a pivot that is placed there to connect the cylinder to the actual structure of the ear. |
|
| |
You see the cylinder rod, which is number 112, which is deployed upwards; and end 118 of hook number 116 at the upper right is hooked into a rung of the tower. |
|
| |
So, once the hook which is hooked into the rung of the tower, as I explained earlier in the gymnasium parallel bars, by closing up the cylinder which is attached to the tower, which is resting on the ground, closes and you see that the platform which is attached to the bottom of the cylinder will rise; and at that point there are two (2) hooking systems: hook number 84... in fact there are two (2) number 84 hooks, one above and one below, which support the platform during another cycle. |
|
| |
Q. That is what you see in figure 8, what you have just explained, when the platform moves? |
|
| |
A. Yes. In fact, in figure 8, you see that is the stage at which there is actually a compression. So, the compression of the cylinder begins to raise the platform and you see hook 84 in both cases which, with the release member which is a ramped part that is either part of the hook or welded to it, releases the hook to allow the passage outside the rungs. |
|
| |
So, each time the hook will systematically and temporarily withdraw and each time will come to rest again on the machine and engage in the rung. The lower hook is simply a safety feature which avoids having to block the machine with external means during the work, as the law requires. |
|
| |
Q. So, the hydraulic system, if I understood, is for raising the platform? |
|
| |
Q. And when you add some things to the tower... (interrupted) |
|
| |
A. When you add some things to the tower... (interrupted) |
|
| |
Q. ...you do that in what way? |
|
| |
A. In the case of Hydro-Mobile, most often you will take two (2) persons and you will put the tower on... the tower section extends about ten (10), twelve (12) inches beyond the platform, so it is easy for the worker to place them above. In some cases, like the big sites such as at Grondines, or at Texas Instruments, we were assembling four (4) lengths of tower on the ground, we raised [them] with a crane, we placed [them] on the top part. But the placement mechanism, it"s optional. If you say that... (interrupted) |
|
| |
Q. It"s only for an explanation. |
|
| |
Q. I wanted to satisfy myself that I clearly understand how it is assembled, that"s all. |
|
| |
A. Right. As you advance or install towers as needed, but in some cases, as we saw, you move the towers completely installed on the platform to be able to go from a point A to a point B when the work is completed, you simply move the whole system with the towers and you come and install it on the side. |
|
| |
Q. Taking figure 2, Mr. Robillard, will you explain to the Court what you meant earlier by the outriggers? |
|
| |
A. Taking figure 2, you see that the worker who is placed on the lower outrigger, which is number 54... in fact number 52, excuse me, at the mason"s height, where he is working, you can extend the outriggers; the standard is to extend them five (5) feet, but they go up to eight (8) feet or more. The outriggers enable the worker to get close to his work. Because it is prohibited to leave a space greater than thirty (30) inches between the work surface and the place where the worker is supported. Now, on the outrigger, you place some thick planks " why wood, and not steel like the platform: because you can put the planks in the desired number and width to accommodate the width of the platform. |
|
| |
And just above, you see once again at point 52: there are some upper outriggers which are used to get close to the raw material, so as to avoid the worker being obliged to go and get his material if the lower outrigger is extended too far. |
|
| |
Q. And what is the means of access for the worker to the platform? |
|
| |
A. The difference in height between the two (2) platforms is no more than two (2) feet, according to law. |
|
| |
Q. How does he access the platform? |
|
| |
A. Ah, there are several means of access: through the building if he is going to go out through the windows, by staircases that are installed completely beside it, by a system of ladders that is applied to the tower and that can be climbed. |
|
| |
Q. Is it your testimony to the Court that the raising system you have just described is found in the Fraco machine? |
|
| |
A. In all of its specific elements. |
|
[89] In the case at bar, the defendants" evidence is based on the affidavits and testimony of Mr. Rainville, Mr. Franceshinis, Mr. Lespérance and Mr. André St-Germain.
Mr. Rainville
[90] Mr. Armand Rainville is a businessman, a shareholder and the president of Maçonnerie Rainville Inc. He is also the president of two affiliated companies: Rainville & Frères Inc. and Briques Atout Inc. Maçonnerie Rainville Inc. and Briques Atout Inc. are shareholders of Les Produits de formes Fraco Limitée. Mr. Rainville has been a director of Fraco since 1986 and its president since 1993. His employment with Rainville & Frères Inc. goes back to 1971, and he has worked as a labourer, bricklayer and stonemason.
[91] Mr. Rainville is of the opinion that the products are complementary, not competitive with each other, since the Fraco scaffolding is more versatile and adaptable than the patented product. Fraco is able to respond to calls for tender for which Avant-Garde is ineligible, since its scaffolding is less versatile and incapable of being used in such jobs.
Mr. Franceshinis
[92] Mr. Franceshinis is of the opinion that patent 1,304,109 has at least four essential items. First, posts composed of light sections manipulated from the work platform. Second, a general geometric design that includes a supporting base, two posts secured to the base and a work platform supported by the posts. Third, the work platform surrounds the two posts. Fourth, the platform hoisting system uses two hydraulic rams mounted on a platform close to the posts used to suspend the platform from the bars of the posts, and some latches pivoted on the platform close to the posts.
[93] Furthermore, for operations above two or three storeys, stabilizing bars must be provided between the posts and the wall connections.
Mr. Lespérance
[94] Given the protection afforded by patent 1,304,109 and all the other patents prior to its filing, Mr. Lespérance is of the opinion that the claims in patent 1,304,109 should be interpreted literally instead of according to the doctrine of mechanical equivalents. The general idea of a motorized scaffolding was known prior to the filing of patent 1,304,109. Furthermore, the hydraulic ram raising system operated on the same principle as the raising system in patent 1,304,109 and was known for its analogous applications.
[95] Claim 1 in patent 1,304,109 does not define the Fraco scaffolding since it does not have a pair of spaced posts secured to one base. Each post has its own base. Moreover, the work platform in the patent 1,304,109 specifications completely surrounds the posts, while the platform of the Fraco scaffolding surrounds only one, two or three sides of a post. Since the platform of patent 1,304,109 surrounds the posts, the post sections must be secured as the platform rises, because it is necessary to attach the posts to the building. This procedure is not absolutely necessary in the Fraco scaffolding, which allows the installation of a complete post and its attachment to the building. Finally, the anchoring members in patent 1,304,109 are supported by the platform, while in the Fraco scaffolding the anchoring members are supported by the outer sleeve.
[96] Claim 2 of patent 1,304,109 specifies that the double-acting hydraulic ram has an extended piston rod forming at its outer end a transverse bar-engaging part. The hooks on the Fraco scaffolding are pivoted to outer sleeves, and the piston rod of each hydraulic ram does not form a transverse bar-engaging hook part at its outer end.
[97] Claim 13 of patent 1,304,109 is not identical to the Fraco scaffolding since the latter does not have any lever means for controlling the hydraulic supply circuit.
[98] Claim 15 of the patent is not infringed since the platform of the Fraco scaffolding does not have an underframe and guide rollers carried in vertically-spaced pairs by the work platform and by the underframe and in rolling contact with the corner members to stabilize the work platform.
[99] However, on cross-examination, Mr. Lespérance disclosed the following:
| |
Q. I would like to go now to exhibit 26, D-26. You described, you said that this was the detail...? |
|
| |
A. Of the main part of the Fraco machine, it is the ear. This is the part that ensures the stability of the platforms which are attached, either as a cantilever or as a bridge, and which therefore transmit the loads to the tower very slowly; it is there to support the system as a whole. |
|
| |
Q. In this photograph or this drawing, which is filed as exhibit D-26, can you see the raising system? |
|
| |
A. There is the raising system with some hooks and some hydraulic rams. |
|
| |
Q. I am going to read you something: |
|
| |
"A double-acting hydraulic ram...at one end to said platform. There is a piston rod..." |
|
| |
Can you indicate the piston rod? |
|
| |
Q. "...forming at its outer end a transverse bar-engaging part." |
|
| |
Can you indicate this to us as well? |
|
| |
A. Can you repeat to me, please? |
|
| |
Q. "Forming at its outer end a transverse bar-engaging part." |
|
| |
A. Which should be the hook. |
|
| |
"The said ram is piloted [sic " pivoted (Trans.)?] at its lower end and extends upwardly therefrom, and the said piston rod being upwardly inclined toward the said post." |
|
| |
Q. Do you know, sir, that I have just read to you page 5 of patent 1,304,109? |
|
| |
A. Yes. Only, there is a big difference in that... |
|
[100] Mr. André St-Germain is the incorporator of Les Produits de formes Fraco Limitée. He worked as an apprentice bricklayer for five years before becoming a foreman. At the age of 27, he began working for himself as a masonry contractor under the corporate name of André St-Germain. This company did masonry work for bungalows and warehouses.
[101] Mr. St-Germain"s affidavit states:
| |
27. When I designed this scaffolding [the Fraco scaffolding], I started completely from zero. My purpose was to produce a multi-function scaffolding that could be used by a number of building trades and in a number of situations, so that the person using this scaffolding did not have to concern himself with its installation. Moreover, I wanted a system which, once installed, could be freely mounted and taken down without having to modify the structure on site. I also had in mind the European market, which necessitates a product that can be used in a relatively constrained space with possibly several work platforms. In short, I designed the product that I had long been suggesting when I was with Hydro-Mobile, and which the board of directors had always opposed. |
|
| |
41. Having myself designed the Hydro-Mobile patented system now belonging to the plaintiff and having used it on several occasions, I am in a position to be aware of its major disadvantages, which are the following (for ease of understanding I will refer to the figures in Canadian patent 1,304,109): |
|
| |
(a) instability resulting from lateral loads. If you place an excessive load on one side, the platform may lift up on the opposite side and pull away from the column, with a resulting risk of collapse. This is due to the fact that the column sections are added above as needed and sometimes the platform is very close to the end of the columns; |
|
| |
(b) the Hydro-Mobile scaffolding has an extensive supporting base (about 130 square feet); should the soil soften owing to frost, an excessive load, rain, etc. the supporting base loses its horizontal level and the whole structure may be unbalanced; |
|
| |
(c) it is necessary to remove the wall connections (links that attach the posts to the wall, see figure 1, number 76 of the patent) in order to bring the platform down, since it surrounds the columns (see figure 4 of the patent), a laborious and unnecessary operation which for all practical purposes prevents the lowering of the platform once the two columns are fully mounted. This greatly reduces the usefulness of this product; |
|
| |
(d) each column of the Hydro-Mobile product is modular and the column sections are only held to each other by pins. This leaves a lot of play in the joints. Accordingly, the columns are not very stable...; |
|
| |
(e) the Hydro-Mobile columns are not attached to the wall above the platform, hence the instability of the final section of each column (see figure 1 of the patent); |
|
| |
(f) the Hydro-Mobile platform, at least at the time, could not rise beyond 300 feet (30 stories) in height; |
|
| |
(g) should the Hydro-Mobile raising system disengage during the descent and the safety system not restrain the platform, it might crash or fall (in reference to figure 9 of the patent; the safety system 90 might not restrain the platform since its extension 98 may "bounce" against the columns and never "stick" if the person who is responsible does not follow the instructions carefully). I myself have witnessed such an incident. |
|
| |
42. On the other hand, the Fraco scaffolding has a number of advantages compared with the Hydro-Mobile product, the main ones being: |
|
| |
(a) the Fraco system is installed by specialized workers using a crane and the tower is erected in advance over its entire length, and not in sections. Consequently, the labourers in the other building trades do not have to attend to the installation of the scaffoldings, or remove and replace the wall connections, braces, etc. ... |
|
| |
(b) once installed, the work platform of the Fraco scaffolding may be raised and lowered as often as desired, without having to remove the wall connections; |
|
| |
(c) two men are needed to erect each column section on the Hydro-Mobile scaffoldings, since each section weighs about 150 pounds. With the Fraco system, this labour is not required once the platform is installed, since the tower is installed in advance with a crane, thus saving labour and therefore money; |
|
| |
(d) the rigid base of the Fraco system tower has a reduced footprint of about 18 square feet and can even be reduced to 2 square feet if the soil"s compression resistance so allows (as on rock), compared with the four levelling pads of 4 square feet each for the Hydro-Mobile product...; |
|
| |
(e) the Fraco system (at least at the time) could ascend up to about 510 feet (50 storeys), compared to 300 feet for Hydro-Mobile; |
|
| |
(f) the Fraco system can get within 1.5 feet of the wall, while the Hydro-Mobile product requires 5 feet; |
|
| |
(g) the extensions or outriggers on the Fraco system can be added on both sides, since there is only one tower, while with the Hydro-Mobile product this can be done on only one side of each column; |
|
| |
(h) the Fraco system can be mounted in an elevator shaft, while the base of the Hydro-Mobile product is too wide; |
|
| |
(i) as for transportation, we note that one trailer can carry only a single 24-foot Hydro-Mobile platform, while it can carry three Fraco units including the towers...; |
|
| |
(j) finally, in regard to storage, given the elimination of the chocks (parts that mutually stabilize the columns) and the braces for 50% of the columns (the Fraco system has only one tower, compared with the two columns on the Hydro-Mobile product), and given that they lie only on a footing of about eighteen (18) square feet at most, the Fraco scaffoldings take up less storage space.... Furthermore, with the Fraco system, there are no parts lying about on the worksite once the tower is installed (with Hydro-Mobile, it is necessary to keep in reserve column sections, chocks, braces, etc. for installation as the platform rises); and |
|
| |
(k) the Fraco system can include a second work platform, which is located under the first, which cannot be done with the Hydro-Mobile product. |
|
| |
43. In short, the Fraco system is much more highly developed than the Hydro-Mobile system and much closer to what exists today in Europe. |
|
[102] However, on cross-examination, Mr. St-Germain stated:
| |
Q. As to the photos D-43 and D-44 that you have produced, Mr. St-Germain, can you tell the Court what raising system you used to begin with, please? |
|
| |
A. It is a system with some cylinders. |
|
| |
Q. Some rams and some hooks? |
|
| |
A. Yes, as we were saying this morning. |
|
| |
Q. And on the photos D-10 and D-11, the project... |
|
| |
Q. Yes, Bécancour-Petressa, can you indicate to the Court where the three-pointed tethers we have been talking about since yesterday are? |
|
| |
A. They are among the..., you see some here, you see some there. And there, there is another one higher up " you don"t see it, because it is too high up " and you see it very clearly in two places, here on the right. |
|
| |
Q. And do you also see very clearly the hydraulic raising system? |
|
| |
A. The raising system, you don"t see it. |
|
| |
Q. No? That"s because there is a hook here after the... |
|
| |
A. The raising system is inside the ear. |
|
| |
Q. O.K. But it is indeed a hydraulic system that was used to get this machine to hoist? |
|
| |
A. Well, the hydraulic system, it is below, but the cylinders are above. |
|
| |
Q. All right, I have no further questions. |
|
CONCLUSION
[103] I find that all of the structural elements recited in claims 1, 2, and 13 of patent 1,304,109 are found in the Fraco scaffolding: a base, some posts secured to and upstanding from the base, each post composed of sections using fasteners, a platform sliding over the posts, some bars defining equally-spaced horizontal levels, some pivoting rods and some hydraulic rams with hooks.
[104] I agree with the plaintiff that the three minor differences do not alter the basic principle of the claim and the invention in patent 1,304,109. In the first place, in the Fraco scaffolding, it is gravity and a spring balance that enable the pivoting tierods and hooks secured to the guide rail to permanently engage the bars forming the steps. Secondly, although the Fraco scaffolding has one, two or three posts, a person with experience in the trade could easily, and solely on the basis of his expertise in this field, design a smaller platform using a single post, or a much larger platform using three or more posts. Thirdly, in the Fraco scaffolding, the posts that are also in sections are about ten feet long and can be handled by a single worker on the platform. It is obvious that any specialist in the field could use long sections supported by a crane or some other similar means, whether or not mounted on a platform, without modifying or altering the substance of this claim.
[105] Both products are hydraulic scaffoldings. Consequently, they have the same functions. The number of posts, the variable bases, the way in which the work platform surrounds the posts, and the minor differences in the platform hoisting system have no effect on how the scaffold functions. The purpose of the hydraulic scaffolding is the lowering and raising of the work platform using a hydraulic ram raising system.
[106] Using a purposive rather than literal interpretation of the patent claims,13 the hydraulic ram raising system, which allows the work platform to be raised or lowered through the automatic engagement of anchoring members, is the same in both scaffoldings.
[107] Using an interpretation of the claims that seeks to comprehend the true nature of the invention, claim 1 describes the structural elements of the scaffolding, which are also found in the Fraco scaffolding. The three minor differences do not alter the basic principle of the claim and the invention in patent 1,304,109. It is obvious that any specialist in the field could make these modifications without thereby modifying or altering the substance of the claim.
[108] Claim 2 describes a raising system with at least one double-action hydraulic ram. Its structure and operation is the same as the structure and operation that can be observed in the Fraco scaffolding.
[109] The particulars of the supply circuit described in claim 13 are the same as those of the supply circuit in the Fraco scaffolding.
[110] Each of the variants of the Fraco scaffolding concerns unessential features of the claims and has no effect on the way in which the claim functions.
[111] The patentee did not want to exclude any variants from the scope of the claimed invention. The relative requirements were not designed by the patentee as limitations essential to the invention. The variations used were well known to persons versed in the art, and they are consequently obvious variants.
[112] There is no merit to the defendants" allegation that the Fraco scaffolding does not infringe patent 1,304,109. The record establishes that patent 1,304,109 has been infringed.
[113] The defendants" scaffoldings infringe claims 1, 2 and 13 of patent 1,304,109.
[114] Accordingly, the application for a permanent injunction is allowed.
[115] The request for the destruction of all the hydraulic ram raising systems of all the devices in the possession or under the control of the defendants is allowed, although this order shall be deferred until the expiration of the period for requesting leave to appeal.14
[116] The plaintiff elected to request an accounting for profits. This calculation shall be made following an inquiry by a prothonotary or by a judge appointed by the associate chief justice.
[117] The costs of this action, including the expert costs, to be fixed by a taxing officer, are awarded to the plaintiff and defendant on the cross-demand.
[118] It follows that the defendants" cross-demand is dismissed with costs.
Ottawa, Ontario
May 7, 1998
Certified true translation
Christiane Delon
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
| STYLE: AVANT-GARDE ENGINEERING (1994) INC. v. GESTION DE BREVETS FRACO LIMITÉE ET AL. |
| PLACE OF HEARING: MONTRÉAL |
| DATE OF HEARING: NOVEMBER 24, 25 AND 26, 1998 |
REASONS FOR JUDGMENT OF RICHARD J.
APPEARANCES:
ARMAND, ELBAZ, JULIE PARENT
| AND MARIE-CLAUDE BLONDEAU FOR THE PLAINTIFF |
| RÉGINALD GAGNON FOR THE DEFENDANTS |
SOLICITORS OF RECORD:
DUBÉ, ELBAZ
| MONTRÉAL, QUEBEC FOR THE PLAINTIFF |
BERNARD, ROY, GAGNON
LONGUEIL, QUEBEC FOR THE DEFENDANTS
__________________
1 The patent application was also filed with the Commissioner of Patents and Trademarks in the United States. This patent, entitled Scaffolding, was issued March 7, 1989.
2 The deed of sale is dated October 31, 1991, and the deed of assignment is dated December 4, 1991.
3 Hydro-Mobile is also the name of the hydraulic scaffolding produced and sold by Avant-Garde under patent 1,304,109.
4 A hand winch or pulley is a cargo hoist, a drum on which a steel cable or chain is wound. The cargo hoist or drum is activated by a gear box that reduces the effort. Thus the main pulley is turned by a steel cable or chain which is continuous over the steel cable or pulling line. These systems may be powered by variable sources such as electricity or a hydraulic or steam system. Patent 1,304,109 uses neither a block and tackle system nor a cable and hand winch system.
5 On February 4, 1993, after Fraco had marketed a hydraulic scaffolding, the predecessor of the plaintiff Avant-Garde Engineering Inc. and a related company by the name of Les Échafaudages Hydro-Mobile Inc. brought an action against Fraco seeking a permanent injunction for infringement of patent 1,304,109. This action has never subsequently been pursued.
6 Tye-Sil Corp. v. Diversified Products Corp. (1991), 35 C.P.R. (3d) 350; 125 N.R. 218 (F.C.A.).
7 R.S.C. 1985, c. P-4.
8 Supra note 6.
9 Rubbermaid (Canada) Ltd. v. Tucker Plastic Products Ltd. (1972), 8 C.P.R. 2(d) 6 at p. 14 (F.C.T.D.).
10 Supra note 6.
11 Diversified Products, supra note 6.
12 U.S. patent 5,368,125 is identical to Canadian patent 1,304,109.
13 See Free World Trust et al. v. Électro Santé Inc. (October 27, 1997), Québec 200-09-000642-931 (C.A.).
14 Diversified Products Corp. v. Tye-Sil Corp., [1988] 2 F.C. 223 (C.A.).