Date: 20010117
Docket: T-964-97
BETWEEN:
BUDD CANADA INC. and PHILLIPS &
TEMRO INDUSTRIES LTD.
Plaintiffs
- and -
NOMA INC.
Defendant
REASONS FOR ORDER
LUTFY A.C.J.:
[1] The defendant Noma Inc. seeks, by way of partial summary judgment, the dismissal of the plaintiffs' patent infringement action concerning the defendant's New Noma Cordset.
[2] In my view, on the record before me, there are genuine issues for trial and the motion must be dismissed.
[3] In support of its motion, the defendant relies on: (a) its examination for discovery of Gary Edwards, the vice-president for business development and former manager of Product Development Engineering of the plaintiff Phillips and Temro Industries Ltd.; and (b) its cross-examination of the opinion evidence of the plaintiffs' two affiants, Peter M. Wild and A. Leonard Grove. As was its right, the defendant chose not to file its own affidavit evidence.
[4] For the purposes of this motion only, the defendant acknowledges that its New Noma Cordset conforms with all but one of the relevant elements described in claim 1 of the plaintiffs' patent. The only element in claim 1 which is in dispute in this motion is underlined:
| An electrical cord for use with an AC operated automotive accessory, comprising a multi-conductor electrical cord having an accessory end fixed to a part of substantially greater size than the cross-sectional dimension of the cord, a plug end fixed to a multiple contact electric plug also substantially greater size than the cross-sectional dimension of the cord, and a disconnectable cord coupling between the accessory and the plug ends of the cord, having mating components connected to respective partes of the cord, at least one of said components having a thin profile with at least one transverse dimension substantially less than the minimum cross-sectional dimensions of the part and the plug. |
[5] The problem that the plaintiffs' invention solves is the inability to pass a cordset plug through thin automotive grill openings. The solution is the disconnectable cord coupling with two mating components, at least one of which having a thin profile as described in the last element of claim 1.
[6] It is acknowledged that one transverse dimension (0.79 inch) of one of the New Noma Cordset's two mating components is not substantially less than the minimum cross-sectional dimension (0.78 inch) of its plug (cross-examination of Professor Wild, questions 49-62).
[7] On the basis of this transverse dimension (0.79 inch), the defendant argues that its New Noma Cordset lacks the essential element of the claim in dispute and therefore does not infringe the patent in suit.
[8] It is also understood, for the purposes of this motion, that another transverse dimension (0.328 inch) of the same mating component is substantially less than the minimum cross-sectional dimension (0.78 inch) of the plug of the New Noma Cordset (affidavit of Professor Wild, paragraphs 29-30). The difference is almost one-half inch.
[9] On the basis of this second transverse dimension (0.328 inch), the plaintiffs argue that the defendant's New Noma Cordset conforms with the essential element of claim 1 in dispute and, accordingly, infringes their patent.
[10] In my view, there is substantial evidence, from the very witnesses relied upon by the defendant, which puts into question the legal and factual basis in support of this motion for partial summary judgment.
[11] First, the defendant argues that the maximum thickness of the mating component (in this case, 0.79 inch) must be less than the opening of the automotive grill for the invention to function properly. For the defendant, it is this maximum thickness of the component which is the relevant or material transverse dimension referred to in the last element of claim 1 (cross-examination of Mr. Grove, question 178; cross-examination of Professor Wild, question 81).
[12] However, there is insufficient evidence on the record before me to conclude that the maximum thickness of the mating component is the relevant or material transverse dimension. The defendant's reliance on selected responses of the plaintiffs' affiants does not take into account all of their evidence. Claim 1 states that the component with the thin profile must have "at least one transverse dimension" substantially less than the minimum cross-sectional dimension of the plug. There is evidence that the narrower dimension of 0.328 inch, supra paragraph 8, meets this element of the claim (affidavit of Professor Wild, paragraphs 29-31). Professor Wild relies on the transverse dimension of 0.328 inch in support of his conclusion of infringement. On the assumption that the determination of the material transverse dimension is relevant to this proceeding, this is a genuine factual issue for trial.
[13] Second, the defendant also argues that the patent contemplates a coupling that passes entirely through the opening of the grill (cross-examination of Professor Wild, question 180). However, this affiant's responses must be read in context. According to Professor Wild, while the patent may contemplate that the component with the thin profile may pass through the grill entirely, the element of claim 1 in dispute does not exclude the possibility that a component can pass through the grill partially but enough to allow its coupling with the second component at or close to the grill (cross-examination of Professor Wild, questions 184-86 and 201). Professor Wild was also of the opinion that one of the mating components of the New Noma Cordset could pass partially through the opening to allow for its connection to the other component on the engine side of the grill (affidavit of Professor Wild, paragraphs 16 and 30 and question 178).
[14] In support of this second submission, the defendant also relies on language in the summary section of the patent: "The thin component of the cord coupling is designed to pass through narrow openings in a vehicle grill ...". However, this statement must be read in the context of the whole sentence which continues: "... with the thin part of the coupling threaded through the grill for connection to the other part of the coupling" [emphasis added]. These extracts are not so clear, for the purposes of this motion, to lend sufficient support to the defendant's interpretation of claim 1.
[15] Whether the thin-profiled component of the New Noma Cordset can pass partially through an automotive grill to make the connection with the other component and whether such a connection falls beyond the ambit of claim 1 present genuine issues of fact and law for trial.
[16] In summary, the defendant has sought the dismissal of the allegations in the statement of claim that its New Noma Cordset infringes the plaintiffs' patent. The defendant relies on certain responses of the plaintiffs' representative and its two affiants, particularly the latter. However, these same affiants gave other evidence, in their affidavits and on cross-examination, which are inconsistent with the responses relied upon by the defendant.
[17] In a motion for summary judgment, particularly where the moving party chooses not to file its own affidavit evidence, it is virtually inevitable that genuine factual issues will surface where some answers are relied upon without regard to other apparently conflicting statements on the record from the same witnesses. Such a situation can only be resolved through the trial process: NDT Corp. v. Abtox Inc. (1996), 71 C.P.R. (3d) 11 (F.C.T.D.) at 13.
[18] For these reasons, the defendant's motion for partial summary judgment will be dismissed with costs to plaintiffs in the cause.
"Allan Lutfy"
A.C.J.
Ottawa, Ontario
January 17, 2001
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF SOLICITORS AND SOLICITORS ON THE RECORD
COURT FILE NO.: T-964-97
STYLE OF CAUSE: BUDD CANADA INC. and PHILLIPS & TEMRO INDUSTRIES and NOMA INC.
PLACE OF HEARING: TORONTO, ONTARIO
DATE OF HEARING: DECEMBER 20, 2000
REASONS FOR ORDER OF THE ASSOCIATE CHIEF JUSTICE
DATED: JANUARY 17, 2000
APPEARANCES:
Mr. Terence J. O'Sullivan FOR PLAINTIFFS
Ms. Ronald E. Dimock FOR DEFENDANTS
SOLICITORS OF RECORD:
Lax O'Sullivan Cronk FOR PLAINTIFFS
Toronto, Ontario
Dimock Stratton Clarizio FOR DEFENDANTS
Toronto, Ontario