Date: 20030703
Docket: T-1811-01
Citation: 2003 FC 825
BETWEEN:
TROJAN TECHNOLOGIES, INC.
Plaintiff
and
SUNTEC ENVIRONMENTAL INC.
Defendant
INTRODUCTION
[1] These reasons follow the hearing of a motion for summary judgment filed in amended form on the 20th of December, 2002 by the plaintiff, Trojan Technologies, Inc. ("Trojan"). By its motion, Trojan seeks the following relief:
1. A declaration that:
a. the Defendant has infringed claims 36,40,42,46,47,61,64 and 65 of Canadian Letters Patent No. 1,327,877;
b. claims 36, 40, 42, 46, 47, 61, 64 and 65 of Canadian Letters Patent No. 1,327,877 are valid and subsisting;
2. a declaration that the Defendant has induced or contributed to third parties infringing claims 36, 40, 42, 46, 47, 61, 64 and 65 of Canadian Letters Patent No. 1,327,877;
3. An injunction restraining the Defendants, their officers, directors, employees, shareholders, agents and all those over whom they exercise control from
a. infringing Canadian Letters Patent 1,327,877; and
b. from manufacturing, importing, exporting, selling or offering for sale in Canada or from Canada, any Suntec Environmental LPX200 and LPX500 Ultraviolet Disinfection System and, equivalent and related products;
4. An Order for:
a. delivery up to the Plaintiff of all Suntec Environmental LPX200 and PX500 Ultraviolet Disinfection Systems and, components, equivalents and products, as well as any apparatus, documents or other things within the possession, power or control of the Defendant and which may offend the injunction sought herein;
b. damages in excess of $50,000.00 or an accounting of profits as the Plaintiff may, after due inquiry, elect;
c. pre-and post-judgment interest on such damages or profits from the date they arose to the date of payment;
d. the Plaintiff's costs of this motion; and
e. Such further and other relief as this Court may deem just.
The relief sought by Trojan on its summary judgment motion is identical to that sought in its Statement of Claim with the exception that claim 38 of Canadian Letters Patent No. 1,327,877 has been dropped from the list of claims in respect of which declarations are sought.
[2] By Order dated the 22nd of April, 2002, granted on consent, this Court ordered that:
1. All issues concerning any question as to the extent of infringement of any right, any question as to the damages flowing from any infringement of any right, and any question as to the profits arising from the infringement of any right (collectively the "deferred issues") shall be determined separately after trial of the other issues, if it then appears such issues require to be decided.
2. The parties may proceed to trial without oral and documentary discovery upon the deferred issues set out in paragraph 1 of this Order.
The Order further provided that there would be no costs of the motion. The motion for summary judgment proceeded on the same basis of bifurcation of the issues relating to determination of any damages or profits arising from infringement.
THE PARTIES
[3] Trojan is a corporation incorporated under the laws of Ontario with its principal place of business at 3020 Gore Road, London, Ontario. It carries on the business of research and development, manufacture, sale, installation, servicing and the provision of consulting services for systems relating to the treatment of water, for example, municipal waste water, municipal drinking water, recycled water and contaminated ground water. Its water treatment systems utilize ultraviolet radiation. Trojan is identified as the owner of Canadian Letters Patent 1,327,877 (the "patent in suit") which issued on the 22nd of March, 1994 for an invention of Jan Maarschalkerweerd and entitled "Fluid Purification Device".
[4] The Defendant Suntec Environmental Inc. ("Suntec") is a corporation incorporated under the laws of Canada with its principal place of business at 106 Rayette Road, Unit #1, Concorde, Ontario. Suntec, which carries on the business in Canada of manufacture, sale, installation and servicing of water disinfection systems and devices that use ultraviolet light, also carries on business through affiliates or related companies in the United States and Japan.
THE PATENT IN SUIT
[5] As earlier noted, Trojan is indicated on the face of the patent in suit to be its owner. The application for the patent in suit was filed the 16th of August, 1989 and claims a priority date of the 13th of September, 1988 based upon the filing on that date of the equivalent United States patent application. It asserts sixty-five (65) claims. The Abstract Of Disclosure for the patent in suit is in the following terms:
A fluid purification device including an inverted U-shape frame whose legs support a plurality of lamp assemblies each including an ultraviolet lamp received in a protective sleeve. One of the legs is hollow and receives lead wires connected to the lamps through openings spaced along the leg. The protective sleeves at one of their ends are resiliently mounted to the hollow leg at the openings, and seals are provided to prevent fluid from entering into the hollow leg and protective sleeve. The other ends of the protective sleeves are closed and held in receptacles in the other frame leg which is formed by two plates fixed to each other. "O" rings provided along the other leg receive the protective sleeves to provide flexible seats. An electrical ballast controlling voltage and amperage at the lamps may be incorporated in the frame.
The patent in suit is described, in general terms, in Trojan's Statement of Claim, by the following paragraphs:
The Patent relates to the treatment of fluids, including water in the form of municipal wastewater, municipal drinking water, recycled water and contaminated ground water, as well as other forms. One of the most popular treatments is the disinfection of municipal wastewater. Wastewater (or effluent) typically is used water. It may include substances such as human waste, food scraps, oils, soaps, chemicals, and microorganisms such as bacteria, viruses, moulds and algae. Wastewater originates from sinks, showers, bathtubs, toilets, washing machines, dishwashers and a wide variety of business and industrial processes. It also may include stormwater (rainfall) runoff.
Before municipal wastewater can be discharged into a body of water such as a lake, river or ocean it is common to treat the wastewater. One of the paramount purposes of treatment is to disinfect the wastewater in order to reduce or eliminate the high concentration of waterborne disease-carrying organisms present. In the past, this treatment was achieved through chlorination, which has come under scrutiny due to regulatory and safety concerns.
The Patent relates to and claims a device and system for treating and disinfecting fluids including, but not limited to, wastewater, using ultraviolet light.
The Patent, in general terms, relates to an apparatus and system for treatment of wastewater by ultraviolet radiation. Typically, such systems are gravity fed fluid treatment systems.
More will be said about the patent in suit later in these reasons.
THE ISSUES
[6] The issues arising on this motion for summary judgment are the following: first, general principles governing motions for summary judgment; secondly, whether Trojan is the owner of the patent in suit and whether such patent, and particularly claims 36, 40, 42, 46, 47, 61, 64 and 65 thereof are valid; and thirdly, whether Suntec has infringed the patent in suit, and more particularly the claims thereof just listed.
ANALYSIS
a) Summary Judgment Principles
[7] The principles governing the determination of a motion for summary judgment under the rules of this Court were essentially not in dispute before me. They were, I am satisfied, admirably summarized by my colleague Justice Russell in Apotex Inc. v. Canada[1], where he wrote at paragraphs 9 and 10 of his reasons:
There is no material disagreement between the parties as to the general principles applicable in a motion for summary judgment under rules 213 - 219 of the Federal Court Rules, 1998. As enunciated in cases such as Granville Shipping Co. v. Pegasus Lines Ltd. S.A. et al. (1996), 111 F.T.R. 189, I am required to find that the claims in question present no genuine issue for trial or that the issue is so doubtful that it deserves no further consideration. Also, each case must be interpreted in its own context and if the necessary facts cannot be found, or if there are serious issues of credibility, the matter should go to trial.
The burden lies with the moving party to establish that there is no genuine issue to be tried, but both parties must "put their best foot forward" to enable the motions judge to decide whether or not there is a genuine issue for trial, and the judge is required to take "a hard look" at the merits and, if possible, make findings of fact and law if the materials allow this. F. Bon Langsdorff Licensing Limited v. S. F. Concrete Technology Inc. (1999), 165 F.T.R. 74.
I adopt the foregoing paragraphs as my own.
b) Construction of the Patent in Suit
[8] The first responsibility of a court charged with determining issues of validity and infringement of a patent is to construe the claims of the patent. In Free World Trust v. Électro Santé Inc.[2], Justice Binnie for the Supreme Court, at page 1052, endorsed the following statement from the Federal Court of Appeal in Mobil Oil Corp. v. Hercules Canada Inc.[3]:
It is my opinion that one should not endeavour to create a distinction between a substantial and a literal infringement in a case such as this; one should construe the claims so as to determine what exactly lies within the scope of the inventor's rights. Once this has been determined, then one can consider the defendant's product to decide if it falls within the scope of the claim.
[9] The claims of a patent as well as its disclosure, are directed to the skilled worker and must be construed by a mind willing to understand, not desirous of misunderstanding. A patent should be given a purposive construction rather than a purely literal one derived from applying meticulous analysis to it.[4]
[10] In Whirlpool Corp. v. Camco Inc.[5], Justice Binnie, at page 1095, endorsed the following statement of Justice Dickson in Consolboard Inc. v. MacMillan Bloedel (Sask) Ltd.[6]:
We must look to the whole of the disclosure and the claims to ascertain the nature of the invention and methods of its performance, ... being neither benevolent nor harsh, but rather seeking a construction which is reasonable and fair to both patentee and public. [citation omitted]
[11] That being said, it cannot be disputed that recourse to the disclosure of a patent to aid in the interpretation of its claims, while permissible to assist in understanding terms used in the claims, is unnecessary where the words of the claims are plain and unambiguous and is improper to vary the scope or ambit of the claims.[7]
[12] A court should not be quick to find ambiguity that will invalidate a patent, and should refuse to do so where a claim can, with some effort, be construed in a meaningful way.[8]
[13] The relevant date for construing a patent such as the patent here in suit is the date of its issuance[9]. Finally once again in Whirlpool Corp. v. Camco Inc., supra, Justice Binnie wrote in paragraph 45 at page 1091:
The key to purposive construction is therefore the identification by the court, with the assistance of the skilled reader, of the particular words or phrases in the claims that describe what the inventor considered to be the "essential" elements of his invention.
[14] Against the foregoing general principles, I turn then to the interpretation of claims 36 and 42 of the patent in suit, those claims being, as counsel for Trojan urged, independent claims on which each of the other claims relied on by Trojan are dependent. Claims 36 and 42 are quoted here:
36. A fluid purification device adapted to be placed in a fluid to be purified, the device comprising in combination, a frame including a pair of opposed legs laterally spaced from each other, a water purification lamp extending between and supported by said legs, said lamp having one end located towards one of said legs and an opposite end located towards the other leg, an electrical lead wire connected to said lamp, and a ballast incorporated in said frame and including means connected to said lead wire for controlling said lamp.
...
42. A fluid purification device comprising:
at least one purification lamp assembly including an elongate purification lamp and a protective sleeve surrounding the purification lamp, the protective sleeve having a closed end and an open end;
a first leg including mounting means for receiving the open end of the protective sleeve;
a second leg including support means to receive the closed end of the protective sleeve; and
sealing means to inhibit ingress of the fluid to the area between said purification lamp and said protective sleeve through said open end. [emphasis added]
For ease of reference, the four (4) drawings attached to the patent in suit, together with paragraphs from the specification that describe relevant aspects of the drawings, are reproduced as a Schedule to these reasons.
[15] Before me, counsel for Trojan and Suntec expressed agreement that there was no difference between the parties in the interpretation of claims 36 and 42 of the patent in suit except with respect to the highlighted phrases "an electrical lead wire" and "a ballast incorporated in said frame" in claim 36 and the highlighted word "including" in claim 42. Counsel for Suntec urged that, on a construction of claims 36 and 42 which is reasonable and fair to both Trojan and Suntec, and more particularly on such a construction of the phrases and word in question in the context of those claims, the preferred embodiment of the invention as disclosed in the materials at Schedule A simply is not within the scope of the claims and therefore any reproduction of the preferred embodiment by Suntec would not amount to infringement of claims 36 and 42.
[16] In the affidavit of Dr. Victor Moreland, Trojan's expert, sworn the 20th of December, 2001, he attested:
It is well known in the industry that Trojan invented and holds a patent on the invention of a ballast incorporated in the frame of the fluid purification device. That invention (and other inventive aspects of the fluid purification device) is the subject matter of the '877, patent which is the patent in suit. In predecessor systems, the ballast was located remote from the fluid purification device, usually at the control panel. The advantage of incorporating the ballast in the frame is to eliminate unwanted effects such as interference and resistance changes associated with remotely located ballasts. The invention was incorporated into the Trojan UV3000 which is commercially a very successful fluid purification device. No supplier, other than Suntec, of which I am aware, has incorporated the ballast into the frame.
Claims 36 and 40 call for "... an electrical lead wire connected to said lamp". The lead wire in the patent simply connects the ballast to the lamp and is not an essential element of the fluid purification device. It would have been obvious to a person skilled in the art at the date of issue of this patent, March 22, 1994, that any form of electrical connection, such as a connector, bus, bar or the like, electrically connecting the ballast to the lamp, could be used and would not have a material effect on the way the invention worked. A connector, bus, bar or the like each provides the same function, i.e. an electrical connection between the ballast and the lamp, in the same way, i.e. through an electricity conducting member to achieve the same result, i.e. providing electrical power to the lamp so that it emits UV radiation.
Except with respect to one other aspect of the claim language that is not relevant for the purposes of these reasons, Dr. Moreland further attests "The balance of the claim language is easily understood."
[17] In the affidavit of Karl Scheible, Suntec's expert, sworn the 25th of September, 2002, Mr. Scheible attests in part as follows:
I have read the affidavit of Victor Moreland sworn December 20, 2001. I disagree with Dr. Moreland's conclusion in paragraph 15 of his affidavit where he states that "a ballast incorporated in said frame" means that the ballast is part of the frame structure that supports the lamp. The plain meaning of the words in claim 36 do not support this interpretation.
...
A person skilled in the art would understand the words "electrical lead wire" to mean the use of common electrical conducting wire to carry electrical power to the lamp from the ballast.
This plain meaning of electrical lead wire is supported by a reading of the patent as a whole.
[18] Neither Dr. Moreland nor Mr. Scheible was significantly shaken in his expert views on cross-examination.
[19] Counsel for Suntec urged that to the extent there is a difference of opinion evidenced by the foregoing extracts from the affidavits of Mr. Scheible and Dr. Moreland, this Court should prefer the evidence of Mr. Scheible on the basis of his greater experience in the industry and on the basis of the acknowledgement by Dr. Moreland during his cross-examination that Mr. Scheible "...is one of the leading figures in [the relevant] industry".[10] Further, counsel urged, the claims construction "exercise" undertaken by Dr. Moreland was not independently conducted. In the alternative, counsel urged that, given the conflict in the expert evidence, the Court should refuse to grant summary judgment and allow this action to go to trial where the trier of fact would have the opportunity to observe the experts under cross-examination.
[20] With great respect, I reach a different conclusion. Neither of the phrases "an electrical lead wire" and "a ballast incorporated in said frame" and certainly not the word "including" raises an issue of "rocket science". Rather, each is to a significant extent a question of semantics. Against the well established guidance on claims construction that is reflected in part earlier in these reasons, and in particular the guidance endorsed by the Supreme Court of Canada that a court should look at the whole of the disclosure and the claims to ascertain the nature of the invention and method of its performance, being neither benevolent nor harsh but rather seeking a construction which is reasonable and fair to both patentee and public, I reach the following conclusions: first, the expression an "electrical lead wire" should not be read restrictively as Mr. Scheible would have us do, as meaning only the use of a common electrical conducting wire to carry electrical power to a lamp from a ballast. Rather, I construe the expression to mean any combination of such a common electrical conducting wire and other conductive means that would achieve the same result or either such a wire alone or other conductive means alone; secondly, I construe "a ballast incorporated in said frame" to include a ballast incorporated "with" a frame by any means of attachment; and thirdly, I construe the word "including" in claim 42 according to its ordinary meaning derived from the word "include" which, according to the Canadian Oxford Dictionary, 1998[11] has, among others, the following meaning:
Treat or regard as part of the whole.
[21] On the basis of the foregoing, I find that the preferred embodiment of the patent in suit falls entirely within claim 36 and 42 of the patent in suit and thus within the scope of claims dependent on claims 36 and 42.
c) Validity
[22] While Suntec has not asserted a counterclaim for a declaration of invalidity of the patent in suit, it has asserted invalidity as a defence. The basis of Suntec's assertion of invalidity is three fold: first, on the basis of anticipation, and this, in argument before me, with respect to claim 36 of the patent in suit only; secondly, on the basis that the invention as particularly disclosed by both claims 36 and 42 is obvious based on prior art; and thirdly, with respect claim 42 only, on the basis that the inventor identified in the patent in suit is not the true inventor.
[23] Both for the purposes of assessing obviousness and inventorship, the date of invention is relevant. I will thus turn first to an assessment of the date of invention.
i) Date of Invention
[24] In its Statement of Claim, Trojan asserts no earlier date of invention then the priority date based on the filing of the equivalent patent in the United States Patent Office, that is to say, the 13th of September, 1988. Subsequent to the filing by Trojan of its motion for summary judgment, Trojan asserted through affidavit evidence and correspondence earlier dates of invention going back to as early as the 20th of January, 1987, the date of a meeting of the Board of Directors of Trojan.
[25] In Lubrizol Corp v. Imperial Oil Ltd.[12], Justice Mahoney, for the Court, wrote at page 462:
There is no requirement in law that the claims of the patent have been formulated before the invention can be found to have been made. What is required, if the inventor wishes to rely on an invention date earlier than the priority date accorded the patent by statute, is that he prove that date, on a balance of probabilities, by cogent evidence.
Later on the same page, Justice Mahoney quotes with approval the following passage from Christiani & Nielsen v. Rice[13]:
The holding here, therefore, [in extensive passages from a decision of the Privy Council in The Canadian General Electric Company, Limited. v. Fada Radio, Limited [1930] A.C. 97] is that by the date of discovery of the invention is meant the date at which the inventor can prove he has first formulated, either in writing or verbally, a description which affords the means of making that which is invented.
[26] The evidence put forward on behalf of Trojan to prove a date of invention earlier than the priority date for the patent in suit was the affidavit evidence of the named inventor, Jan Maarschalkerweerd and of Henry J. Vander Laan who attests what he was President and Chief Executive Officer of Trojan and its predecessor companies in the period April, 1976 to September, 2001, and the cross-examination of those affiants on their affidavits. Such evidence is, I am satisfied, far from "cogent" evidence and falls far short of proving a date of invention any earlier than the 24th of August, 1988, the date of a drawing produced by Jan Maarschalkerweerd and marked as Exhibit 10 to the transcript of his cross-examination on the 13th of November, 2002 on his affidavit sworn the 29th of October, 2002.
[27] While the evidence of a date of invention of the 24th of August, 1998 might be considered to be "cogent" evidence, I am satisfied that, on the totality of the evidence before me, nothing turns on an invention date of the 24th of August, 1988 as contrasted with the priority date in respect of the patent in suit, that is to say, the 13th of September, 1988. In the result, I choose to determine that Trojan has failed to establish, on the material before the Court, on a balance of probabilities and by cogent evidence, a date of invention earlier than the priority date accorded the patent in suit.
ii) General Principles
[28] In Whirlpool Corp. v. Camco Inc.[14], Justice Binnie wrote at page 1084:
As the patents in suit were issued prior to October 1, 1989, the provisions of the former Patent Act apply.
While the patent here in suit was not issued prior to the 1st of October, 1989, the relevant application was filed prior to that date and the priority date claimed on the basis of filing in the United States is the 13th of September, 1988. It was not in dispute before me that the provisions of the former Patent Act[15] apply for the purposes of this litigation. I agree. In Merck Frosst Canada Inc. et al v. Canada (Minister of National Health and Welfare) et al[16], Justice Rothstein, then of the Federal Court Trial Division, wrote at Note 5:
Matters arising on or after October 1, 1989 in respect of a patent issued on or after that date on the basis of an application filed before that date are to be dealt with in accordance with the provisions of the Patent Act as they read immediately before October 1, 1989.
The following general principles are drawn with reference to provisions of the former Patent Act.
[29] Section 45 of former Patent Act created a statutory presumption in favour of validity of a patent such as the patent here in suit. Once again in Whirlpool Corp v. Camco Inc.[17], Justice Binnie wrote at page 1111:
Section 45 of the Patent Act creates a presumption of validity. The burden was on the appellants [here Suntec] to prove on a balance of probabilities, that the patent was invalid.
[30] The test for anticipation is difficult to meet. In Free World Trust v. Électro Santé Inc.[18], Justice Binnie wrote at page 1040:
Anticipation by publication is a difficult defence to establish because courts recognize that it is all too easy after an invention has been disclosed to find its antecedents in bits and pieces of earlier learning. It takes little ingenuity to assemble a dossier of prior art with the benefit of 20-20 hindsight.
Justice Binnie went on to cite the following passage from Beloit Canada Ltd. v. Valmet OY[19] at page 1041 of his reasons:
One must, in effect, be able to look at a prior, single publication and find in it all the information which, for practical purposes, is needed to produce the claimed invention without the exercise of any inventive skill. The prior publication must contain so clear a direction that a skilled person reading and following it would in every case and without possibility of error be led to the claimed invention. [emphasis added]
[31] The distinction between anticipation, or lack of novelty, and obviousness was succinctly described by Justice Malone in Apotex Inc. v. Wellcome Foundation Ltd.[20] at pages 85-6, in the following terms:
The words "obviousness" and "novelty" have been described by this Court in the following manner:
.. . obviousness is an attack on a patent based on its lack of inventiveness. The attacker says, in effect, "Any fool could have done that." Anticipation, or lack of novelty, on the other hand, in effect assumes that there has been an invention but asserts that it has been disclosed to the public prior to the application for the patent. The charge is: "Your invention, though clever, was already known."
Obviousness
The test for obviousness is whether the notional technician, devoid of inventiveness, but skilled in the art would, in light of the state of the art and of common general knowledge at the date of the invention, have come directly and without difficulty to the solution taught by the patent. This is a difficult onus to discharge. [citations omitted]
[32] With respect to obviousness, the following passage from Beloit Canada Ltd. v. Valmet OY[21], at page 295, provides very helpful guidance:
Every invention is obvious after it has been made, and to no one more so than an expert in the field. Where the expert has been hired for the purpose of testifying, his infallible hindsight is even more suspect. It is so easy, once the teaching of a patent is known, to say, "I could have done that"; before the assertion can be given any weight, one must have a satisfactory answer to the question, "Why didn't you?"
Put another way, Justice Rouleau, in Cabot Corp. et al. v. 318602 Ontario Ltd. et al.[22] provided the following guidance at page 147:
In considering the expert evidence offered with respect to the obviousness of this patent, I have kept in mind the difficulty in relying on an ex post facto analysis of inventiveness. I am also aware that the seeming simplicity of an invention does not necessarily mean that it was an obvious one.
[33] Finally at the level of principle, I turn briefly to the question of "inventorship". In Goldfarb v. W.L. Gore & Associates, Inc.[23], Justice Lemieux wrote at pages 154-5:
I take from the Privy Council's decision in Canadian General Electric Co. v. Fada Radio, Ltd., ... the following proposition that a true inventor is a person who demonstrates inventive ingenuity. Lord Warrington of Clyffe quoted the trial judge, Maclean J., as follows:
"There must be a substantial exercise of the inventive power or inventive genius, though it may in cases be very slight . . . if the invention requires independent thought, ingenuity and skill, producing in a distinctive form a more efficient result, converting a comparatively defective apparatus into a useful and efficient one, rejecting what is bad and useless in former attempts and retaining what is useful, and uniting them all into an apparatus which, taken as a whole, is novel, there is subject matter. A new combination of well known devices, and the application thereof to a new and useful purpose, may require invention to produce it . . ."
Justice Strayer's decision in Mahurkar v. Vas-Cath of Canada Ltd. ..., is authority for the proposition that a person's skill and knowledge are relevant in determining whether that person is the true inventor, particularly with respect to inventions of a complex and technical nature. I take from Justice Teitelbaum's decision in Procter & Gamble Co. v. Kimberly-Clark of Canada Ltd. ..., the proposition that a person presenting a problem for solution is not an act of invention. There must be evidence that the inventor had a significant role in solving the problem. ... [citations omitted]
[34] Against the foregoing, I turn then to an analysis of the evidence before the Court with respect to each of the bases asserted on behalf of Suntec in support of its defence of invalidity.
iii) Anticipation
[35] As earlier noted, Suntec, in argument, raised the issue of anticipation only in relation to claim 36 and the claims dependent on it.
[36] Suntec's expert, Mr. Scheible, in his affidavit sworn the 25th of September, 2002, defines the concept of a person skilled in the art to which the patent in suit speaks in the following terms:
... a "person skilled in the art" as it relates to the '877 Patent in the period from August 1987 to March 1994, in my opinion would be one who has a technical competence in understanding the mechanical, process and general electrical fabrication and design features of environmental treatment devices, and specifically ultraviolet radiation devices used for the treatment of fluids; has at least a bachelor's degree in engineering or science, and has more than 2 to 3 years direct experience in the application, evaluation and/or design of UV devices as they may be applied to water or other fluid treatment. An important attribute of this "person skilled in the art" is direct knowledge and applications experience prior to and during the said period between 1987 and 1994.
[37] In support of the attack on claim 36 and related dependent claims in the patent in suit on the basis of anticipation, Suntec relies on only one reference, that being United States Patent 2,413,740, issued the 7th of January, 1947 and entitled "Ultraviolet Sterilizer" (the "Glatthar Patent"). Mr. Scheible attests:
The Glatthar Patent describes a device which reads entirely on claim 36 of the '877 Patent. This is apparent from the illustrations in Figures 1 and 3, when compared to Figure 1 of the '877 patent, and to the descriptions provided within the text of both patents.
Mr. Scheible then goes on to compare the elements from claim 36 of the patent in suit to what he describes as "the relevant passages from the Glatthar Patent". Based upon that comparison he concludes:
Having regard to the above, I conclude that each and every element of claim 36 of the '877 Patent is found in the Glatthar Patent. As such, claim 36 is invalid.
[38] Trojan filed no expert evidence in response to Mr. Scheible's evidence regarding the Glatthar Patent but rather relied on the cross-examination of Mr. Scheible and of its own expert witness, Dr. Victor Moreland.
[39] The disclosure of the Glatthar Patent commences with the following sentence:
The invention relates to ultraviolet sterilizers or germicidal devices for use in the purification of a confined air or gas current. [emphasis added]
In the cross-examination of Dr. Moreland, in response to a question as to whether the ballast forming a part of the Glatthar invention could be put under water, Dr. Moreland responded:
I wouldn't want to let water in anywhere near any of that.[24]
[40] By contrast, the invention of the patent in suit is unquestionably directed to the treatment of wastewater. While claim 36 speaks of a fluid purification device adapted to be placed in a fluid to be purified, and the term fluid is interpreted by Mr. Scheible to include both liquids and gasses, a reading of the totality of the claim makes it clear that the word "fluid" in claim 36 relates only to a liquid and, more particularly, water. The claim specifically references "a water purification lamp" as an element of the invention.
[41] Mr. Scheible acknowledged this distinction. During the course of his cross-examination, the following exchange took place:
Q. ... Do you have claim 36 in front of your [sic] of the patent? Can you tell me what in your view was the inventor's purpose and intent as to the use of the invention that is claim 36?
A. In this particular claim this is one of the instances where we mention water purification.
Q. And in your view would that claim be restricted then to the use of water or the fluid would be water in that case?
A. Well, it talks about both things. They use a water fluid purification and they use a water purification lamp.
Q. But consistent with water going over the lamp, from what I understand, you would agree with me that fluid is being used as water? Would you agree with that?
A. Yes.[25]
[42] Against the foregoing, I conclude that the evidence before me is sufficient to allow me to conclude that the Glatthar Patent does not contain so clear a direction that a skilled person reading and following that patent "...would in every case and without possibility of error..." be led to the invention claimed in claim 36 of the patent in suit.
iv) Obviousness
[43] In paragraph 11 of his expert affidavit, Mr. Scheible attests as follows:
The '877 Patent [the patent in suit] appears to be based on modifications made to the fluid purification device described in U.S. patent 4,482,809 ("the Maarschalkerweerd Patent") ... . These modifications were already disclosed in earlier patents and actual installations of other UV fluid purification technologies. In particular, the modifications can be seen in the Glatthar Patent, the Heraeus brochure ... and an installation by Ultraviolet Purification Systems, Inc. At Lebannon, MO (the "Lebannon Installation") ... . The modifications to the Maarschalkerweerd Patent would have been obvious to a person skilled in the art as of September 13, 1988 and at least as early as January 1988. As such, I conclude that claims 36, 38, 40, 42, 46, 47, 61, 64 and 65 of the [patent in suit] are invalid. [cross-references omitted]
[44] Counsel for Suntec urged that the conclusion reached by Mr. Scheible in the above-quoted paragraph was not challenged on cross-examination.
[45] By contrast, counsel for Trojan took the Court through each of the four (4) references identified by Mr. Scheible in support of his conclusion. He pointed out that the Glatthar Patent was the only one of the four (4) references to deal with a ballast, a central component identified in claim 36 of the patent in suit and therefore in related dependent claims 38 and 40. Given the different environments to which the Glatthar Patent and the patent in suit are directed, I am satisfied on the evidence before the Court that a person skilled in the art relevant to the patent in suit would not consider the Glatthar Patent in an examination into the obviousness of claim 36 and dependent claims 38 and 40.
[46] I reach the same conclusion with regard to the citation of the Glatthar Parent in the relation to claim 42 and dependent claims 46, 47, 61, 64 and 65.
[47] I attach no weight whatsoever to the Heraeus brochure cited by Mr. Scheible as evidence of obviousness in respect of claim 40 and dependent claims in that the brochure is undated and no evidence of the date of its publication was before the Court.[26]
[48] Further, on the evidence before the Court, I am satisfied that Mr. Scheible's expression of the view that the patent in suit "...appears to be based on modifications made to the fluid purification device described in U.S. patent 4,484,809" undervalues those modifications. I return to a quotation from the reasons of my colleague Justice Rouleau in Cabot Corp. et al. v. 318602 Ontario Ltd. et al.[27] that appears earlier in these reasons and that I repeat here for ease of reference:
In considering the expert evidence offered with respect to the obviousness of this patent, I have kept in mind the difficulty in relying on an ex post facto analysis of inventiveness. I am also aware that the seeming simplicity of an invention does not necessarily mean that it was an obvious one.
I am satisfied that the foregoing is particularly apt in respect of Mr. Scheible's reliance on U.S. Patent 4,482,809 to indicate that claim 42 and claims dependent on it are obvious.
[49] Finally, I turn to the evidence before the Court of an installation by Ultraviolet Purification Systems, Inc. at Lebannon, Missouri. The earliest date on any document before the Court in relation to the Lebannon Installation is the 12th of January, 1988. There was no evidence before the Court as to when the Lebannon Installation was installed. Perhaps more importantly, there was no evidence before the Court that the bid-related documents regarding the Lebannon Installation were at any time public documents. Such evidence as there was before the Court would indicate that they were more likely understood to be of a confidential nature. The only non-bid related document before the Court was an operation and maintenance manual dated the 29th of July, 1988. But once again, the evidence failed to show that that document was in any sense complete as of that date. To the contrary, such evidence as there was would tend to indicate that the manual was not finalized on that date and that some elements of it were likely dated much later, and very significantly, after the priority date with respect to the patent in suit. Finally, there was no evidence before the Court that a person skilled in the art would, at any relevant time, have known about or had access to the Lebannon Installation documents. Based upon the weaknesses in the evidence on behalf of Suntec in relation to the Lebannon Installation document, I determine those documents to be an entirely unsatisfactory reference in relation to the obviousness of claim 42 and related dependent claims.
[50] In conclusion on the issue of obviousness, based upon the evidence before the Court that is relied upon by Suntec and, in particular, by Mr. Scheible to support the position that the claims at issue of the patent in suit are obvious, I conclude that Suntec has failed to discharge the onus on it in this regard. More particularly, I am satisfied that Suntec has failed to discharge the onus on it to establish that the notional technician, void of inventiveness, but skilled in the relevant art, would, in light of the state of the art and of common general knowledge at the date of the invention disclosed by the patent in suit, have come directly and without difficulty to the solution taught by the patent.
v) Inventorship
[51] Counsel for Suntec relied entirely on the Lebannon Installation documents to support his submission that Mr. Maarschalkerweerd was not the inventor of the invention disclosed in the patent in suit, given its priority date, but rather Ultraviolet Purification Systems, Inc. was the inventor. Based upon the weaknesses in the evidence before the Court regarding the Lebannon Installation documents, bearing in mind that on a motion for summary judgment such as this, each party is required to put its best foot forward, and assuming that Suntec has done precisely that and that therefore any evidence that it might present at trial in relation to the Lebannon Installation documents would be no better than that now before the Court, I conclude that Suntec has failed to establish that the inventor of the invention disclosed by the patent in suit is other than Jan Maarschalkerweerd.
d) Infringement
[52] Once again in Whirlpool Corp. v. Camco Inc., Justice Binnie adopted the following words of Lord Diplock in Catnic Components Ltd. v. Hill and Smith Ltd.[28] where he states at pages 242-43:
My Lords, a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. "skilled in the art"), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so-called "pith and marrow" of the claim. A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked. [Emphasis in original]
It is against the foregoing that I now turn to an examination of the evidence that is before the Court regarding alleged infringement.
[53] In its Statement of Claim, Trojan makes the following generalized allegations regarding the activities in Canada of Suntec:
19. The Defendant manufactures, offers for sale and sells or causes the manufacture, offers for sale, and sale of an ultraviolet water disinfection systems [sic] named the Suntec Environmental LPX200 and LPX500 Ultraviolet Disinfection Systems ("Suntec System"). The Suntec System is comprised of one or more disinfection modules or devices or lamp racks that contain lamp assemblies ("Suntec Device"). The Suntec System and Suntec Device are manufactured at Concord, Ontario.
20. The Suntec System is designed to reduce the fecal coliform count to the required level by exposing wastewater to ultraviolet light. The system operates in an open channel under gravity flow conditions and typically is comprised of one or more Suntec Devices.
21. Since at least December, 2000, the Defendant has manufactured and continues to manufacture in Canada the Suntec System and Suntec Device. Since at least December, 2000, the Defendant has offered for sale and continues to offer for sale, at least, in Canada and the United States, the Suntec System and the Suntec Device. The Defendant has sold or given away (possibly exclusive of shipping and/or handling charges) such systems and devices to customers in Canada and the United States. The Defendant is offering its system and device for sale through the tender process in most cases. The Plaintiff is unaware of all the sales and installations of the Defendant in Canada and the United States but will obtain such information from the discovery process.
[54] In support of the foregoing allegations, Trojan filed the affidavit of Allan Gates sworn the 20th of December, 2001. Mr. Gates describes himself as a Mechanical Engineering Technician. He attests that, at the time he swore his affidavit, he was employed by Trojan as a Municipal Systems Designer. He attests that he had been employed by Trojan in various capacities from March, 1995.
[55] Mr. Gates attests to the activities in Canada of Trojan at paragraphs 42 to 45 of his affidavit which read as follows:
42. One of Trojan Technologies' competitors, and a relative newcomer to the municipal wastewater disinfection market, is Suntec Environmental Inc. (Suntec). Suntec has a place of business at 106 Rayette Road, Unit #1, Concord, Ontario. Suntec has recently entered the market with devices and systems called the LPX200 and LPX500. These devices and systems are well described in literature on the Suntec website. Attached as Exhibit 4 to this my affidavit is a copy of the materials on the Suntec website relating to the LPX200 and LPX500 devices and systems. Suntec manufactures its devices and system components at its Rayette Road facility.
43. On March 9, 2001 I went to the Deseronto Wastwater treatment Plant at 1 Water Street, in Deseronto, Ontario, A0K 1X0. I understood that Suntec had manufactured and provided a wastewater disinfection system to that municipality. On arriving I spoke to the operator in charge and told him that I was from Trojan Technologies and would like to view the Suntec device and system. The operator allowed me to tour the installation and I saw the Suntec device being a module having a frame supporting UV radiation lamp assemblies including a lamp and a sleeve over the lamp. The installation consisted of devices as described above in a channel in which the fluid to be treated, in this case wastewater, flowed past the lamps. As the system was in operation the operator allowed me to photograph the spare device or module that would be used to replace a device or module that was not functioning properly or was removed for maintenance. Attached as Exhibit 1 to this my affidavit are copies of the photographs that I took at the installation that day. Two of the photographs show the spare module and its structure, particularly the ballast incorporated in the frame. The other two photographs are of the control and power unit which is located above the wastewater treatment channel. The devices are in the channel through which the wastewater flows and below the corrugated steel cover through which the power lines descend. It has been recognized in the industry that the ballast incorporated into the frame of the device is Trojan Technologies proprietary technology. For this reason, no competitor, until now, has attempted to incorporate the ballast into the frame.
44. Attached as Exhibit 2 to this my affidavit is a list of installations that Suntec has manufactured Suntec devices and system components for and has sold, given away or sold at minor cost to the municipality in question. This list was compiled by Trojan Technologies' employees at my direction and under my supervision. In each case the devices and systems were of the LPX200 line.
45. Attached as Exhibit 3 to this affidavit is a copy of Suntec's proposal for the City of London, Ontario, Vauxhall Pollution Control Plant installation that was forwarded to all contractors bidding on the job. One of the contractor's [sic] forwarded it to Trojan Technologies, at our request, and I believe that it is a true copy of the original proposal. The proposal sets our specifications, components and drawing for the LPX200 devices and systems being put forward by Suntec for this project. [emphasis added]
[56] While Mr. Gates was cross-examined on his affidavit from which the foregoing paragraphs are extracted, the cross-examination as to those paragraphs and the related exhibits did not significantly add to or detract from the substance of those paragraphs. However, the cross-examination did disclose that the affiant had little knowledge of some of the entries on the summary of Suntec's sales activity.
[57] That the substance of the above quoted paragraphs from Mr. Gates' affidavit was not heavily challenged on his cross-examination is at least in part explainable on the basis of paragraphs 7 to 10, with the last sentence of paragraph 10 deleted, of Suntec's Amended Statement of Defence filed the 19th of December, 2002:
7. As to paragraph 19 of the Claim, it is admitted that Suntec manufactures, offers for sale and sells an ultraviolet water disinfection system names Suntec Environmental LPX200. The LPX200 is comprised of one or more disinfection modules or lamp rack assemblies. The LPX200 is manufactured at Concord, Ontario. Suntec denies that the LPX200 infringes any valid claim of the patent. Suntec denies that it has manufactured or sold a device known as an LPX500.
8. Paragraph 20 of the Claim is admitted as it applied to the LPX200.
9. As to paragraph 21 of the Claim, the LPX200 has been manufactured in Canada, and has been offered for sale and sold in Canada since November 2000. Suntec has not given away any water disinfection systems in either Canada or the United States.
10. As to paragraph 22 of the Claim, the LPX200 is a fluid purification device having a frame which includes a pair of opposed legs. A plurality of ballasts are attached onto one of the legs. An ultraviolet water purification lamp is attached to the ballast on one side and supported by the leg at the other. As such, the lamp does not extend between and is not supported by the legs. The ultraviolet water purification lamp plugs into the ballast; no electrical lead wire is connected to the lamp. Unlike the device described in the patent, a single ballast is not incorporated in the frame, rather multiple ballasts are attached to one of the legs. As such, the LPX200 does not infringe Claim 36 of the patent. ... [emphasis added]
[58] From the foregoing, I extract the following: first, Suntec admits that it manufactures, offers for sale and sells an ultraviolet water disinfection system named the Suntec Environmental LPX200. It denies that it manufactures and sells any such device known as the LPX500. Suntec has manufactured in Canada and has offered for sale and sold in Canada the LPX200 since November, 2000. The LPX200 is a fluid purification device that has a frame which includes a pair of opposed legs. It does not have a single ballast attached to or incorporated in the frame but rather has a "plurality of ballasts" attached to one of the legs. Ultraviolet purification lamps are attached to the ballasts, apparently one purification lamp per ballast. The lamps "plug into" the ballasts, and thus there is no "electrical lead wire". Suntec acknowledges that one leg supports the lamps.
[59] Dr. Victor Moreland, an expert retained on behalf of Trojan to provide evidence in this matter and whose evidence is in part referred to earlier in these reasons, in his expert affidavit sworn the 20th of December, 2001, attests that he was asked to review the patent in suit and to provide his opinion as to whether the Suntec LPX200 and/or LPX500 devices and/or systems infringed one or more claims of the patent in suit. Dr. Moreland's opinion in this regard is set out at paragraphs 14 to 21 of his affidavit. Those paragraphs reads as follows:
14. With regard to claims 36, 40, 42, 46, 47, 61, 64, and 65, a person skilled in the art would construe the word "purification" to be used interchangeably with "disinfection". A "fluid" as set out in the claims would be interpreted by a person skilled in the art as a liquid. Wastewater would be fluid under the patent.
15. Further a person skilled in the art, interpreting claims 36 and 40 would understand that any and all structure supporting the lamp is part of the frame. The words "...a ballast incorporated in said frame...", to a person skilled in the art interpreting those words in the claim mean that the ballast is part of the frame structure that supports the lamp. The claim does not limit where the lamp is incorporated in the frame.
16. In claims 36 and 40 the limitation "... a water purification lamp extending between and supported by said legs ...", to a person skilled in the art, would mean that the full length of the lamp is between the two legs and that the legs support the lamp directly or indirectly. It is not necessary that the lamp attach to, touch or connect directly to a leg or legs so long as the legs are an integral part of the support for the lamp. The test whether the legs support the lamp is, if the legs are removed will gravity cause the lamp to fall. The insertion of a structural spacer, or a ballast between the leg and the lamp does not mean, to a person skilled in the art reading the patent with a mind willing to understand, that the legs no longer support the lamp. If the leg supporting the spacer or ballast is removed, the lamp is no longer supported and will fall under gravity.
17. Claims 36 and 40 call for a ballast to be incorporated in the frame. The Suntec device may have more than one ballast incorporated in the frame. This claim element is met whether there is one or more than one ballast incorporated in the frame.
18. It is well known in the industry that Trojan invented and holds a patent on the invention of a ballast incorporated in the frame of the fluid purification device. That invention (and other inventive aspects of the fluid purification device) is the subject matter of the '877, patent which is the patent in suit. In predecessor systems, the ballast was located remote from the fluid purification device, usually at the control panel. The advantage of incorporating the ballast in the frame is to eliminate unwanted effects such as interference and resistance changes associated with remotely located ballasts. The invention was incorporated into the Trojan UV3000 which is commercially a very successful fluid purification device. No supplier, other than Suntec, of which I am aware, has incorporated the ballast into the frame.
19. Claims 36 and 40 call for "... an electrical lead wire connected to said lamp". The lead wire in the patent simply connects the ballast to the lamp and is not an essential element of the fluid purification device. It would have been obvious to a person skilled in the art at the date of issue of this patent, March 22, 1994, that any form of electrical connection, such as a connector, bus, bar or the like, electrically connecting the ballast to the lamp, could be used and would not have a material effect on the way the invention worked. A connector, bus, bar or the like each provides the same function, i.e. an electrical connection between the ballast and the lamp, in the same way, i.e. through an electricity conducting member to achieve the same result, i.e. providing electrical power to the lamp so that it emits UV radiation.
20. A person skilled in the art would understand that the wording "...sealing means to inhibit ingress of the fluid to the area between said purification lamp and said protective sleeve through said open end ..." in claims 42, 46, 47, 61, 64 and 65 would include anything that would inhibit fluid from entering the space between the purification lamp and the protective sleeve at the open end of the protective sleeve. As can be seen from the preferred embodiment shown in Fig. 3 of the '877 patent and the description from line 30, page 5 to line 6, page 6 a resilient "O" ring would be one of the sealing means that would fall within the claim language.
21. The balance of the claim language is easily understood.
[60] At paragraph 22 of his affidavit, Dr. Moreland concludes that the "Suntec device" which, by reference to the total context of his affidavit, I conclude includes both the Suntec LPX200 and LPX500, infringes claims 36, 40, 42, 46 and 47, all of which, he attests, relate to a device for fluid disinfection/purification.
[61] By contrast, Mr. Karl Scheible, Suntec's expert, in his affidavit sworn the 25th of September, 2002 attests at paragraph 9 that, as one skilled in the art, it is his opinion that the Suntec LPX200 device does not infringe any of claims 36,38,40,42, 46, and other claims of the patent in suit because the construction of the Suntec LPX200 device is inherently different from the device described in the patent in suit.
[62] Mr. Scheible attests to the rationale for his conclusion at paragraphs 27 to 36 of his affidavit. Those paragraphs reads as follows:
27. In my opinion, the Suntec device does not infringe claim 36 of the '877 Patent because the construction of the Suntec LPX200 system is inherently different from the device described in the '877 Patent.
28. In respect of claim 36, the ballast in the Suntec device is not incorporated in the frame as set out in the '877 Patent, rather it is located on the frame. The '877 Patent describes a ballast which is in the top part of the frame and above water. The ballast on the Suntec device is on the frame and under water. There is nothing in the specification of the '877 Patent that teaches an under water ballast.
29. Placement of the ballast on the frame, and under water is not a minor variant. Indeed, Suntec's under water ballast represents a significant improvement over the prior art. Devices available prior to the LPX200 included ballasts that were larger, and could not be placed in the water channel because their size would not allow sufficient water to pass through under normal gravity flow conditions at a treatment facility. Another reason ballasts were kept above water was an intuitive reluctance to place high voltage electrical equipment under water. Although ballasts are a necessary component for the lamps used in UV wastewater treatment, they have always been above water.
30. Suntec was the first company in the industry to incorporate an under water ballast. The unique nature of the submerged ballast is confirmed by the recent award of a United States patent (No. 6,193,939, February 27, 2001 - Tab G) for an apparatus for ultraviolet light treatment of fluids. This patent incorporates the use of immersed ballasts in several of its claims. I am informed by Elliott Whitby, the Research Director for Suntec Environmental Inc., and do believe, that the named inventor Henry Kozlowski, is a part owner of Suntec Environmental Inc.
31. Claim 36 also requires an "electrical lead wire connected to said lamp". In the Suntec device, the lamp plugs directly into the ballast, and there is no electrical lead wire.
32. Since I conclude that claim 36 is not infringed, then neither are dependent claims 38 and 40.
33. Claim 42 includes the phrase "a first leg including mounting means for receiving the open end of the protective sleeve". These words are not ambiguous, and they mean what they say.
34. The first leg of the Suntec device does not have mounting means for receiving the open end of the protective sleeve. In the Suntec device, the ballast is attached to the first leg, and the lamp and protective sleeve are in turn attached to the ballast. It would not be a reasonable reading of the '877 Patent to conclude that the ballast is part of the leg. As such, I conclude that the Suntec device does not infringe claim 42 of the '877 Patent.
35. I disagree with the conclusion reached by Dr. Moreland in paragraph 24 of his affidavit. The language of claim 42 is plain and unambiguous. Claim 42 teaches a first leg including mounting means for receiving the open end of the protective sleeve. In the Suntec device, the ballast receives the sleeve. The ballast is not part of the leg. For the reasons set out in paragraphs 29 and 30 above, placement of the ballast under water is a significant advancement over the prior art.
36. Since I conclude that claim 42 is not infringed, then neither are dependent claims 46, 47, 61, 64 and 65. [emphasis in original]
[63] Both Dr. Moreland and Mr. Scheible were cross-examined on their affidavits just referred to and the transcripts of their cross-examinations were before the Court. Not surprisingly, neither was significantly shaken in his opinion regarding infringement.
[64] I return to the words of Lord Diplock in Catnic Components Ltd. v. Hill and Smith Ltd.[29]. The issue on infringement is, on a "purposive construction rather than a purely literal one", whether the "pith and marrow" of the patent in suit, and more particularly claims 36 and 42 thereof, have been taken in the design and construction of the Suntec LPX200, I am satisfied that the evidence before the Court does not establish the LPX500 system has been manufactured, offered for sale or sold in Canada.
[65] This question was further elaborated on by Justice Binnie in Free World Trust v. Electro Santé Inc.[30] where, at pages 1056-7 he wrote:
It would be unfair to allow a patent monopoly to be breached with impunity by a copycat device that simply switched bells and whistles, to escape the literal claims of the patent. Thus the elements of the invention are identified as either essential elements (where substitution of another element or omission takes the device outside the monopoly), or non-essential elements (where substitution or omission is not necessarily fatal to an allegation of infringement). For an element to be considered non-essential and thus substitutable, it must be shown either (i) that on a purposive construction of the words of the claim it was clearly not intended to be essential, or (ii) that at the date of publication of the patent, the skilled addressees would have appreciated that a particular element could be substituted without affecting the working of the invention, i.e., had the skilled worker at that time been told of both the element specified in the claim and the variant and "asked whether the variant would obviously work in the same way", the answer would be yes: Improver Corp. v. Remington, ... . In this context, I think "work in the same way" should be taken for our purposes as meaning that the variant (or component) would perform substantially the same function in substantially the same way to obtain substantially the same result. In Improver Corp. v. Remington, Hoffmann J. attempted to reduce the essence of the Catnic analysis to a series of concise questions, ... :
(i) Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no: --
(ii) Would this (i.e.: that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art? If no, the variant is outside the claim. If yes: --
iii) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If yes, the variant is outside the claim.
The three questions are not exhaustive but they encapsulate the heart of Lord Diplock's analysis, and have been endorsed in subsequent English cases.
In AT & T Technologies, ... , Reed J. derived a series of interpretive principles from Catnic, supra, O'Hara, supra, and other cases. Her third principle is as follows:
(3) if a variant of an aspect of a claim has no material effect on the way the invention works there is a presumption that the patent is infringed and that the patentee intended that that variant falls within the scope of the claim... . [Emphasis added.]
[66] To paraphrase my own words in Baker Petrolite Corp. v. Canwell Enviro-Industries Ltd.[31], Suntec simply cannot escape a finding of infringement, assuming the evidence to be sufficient to support such a finding on this motion for summary judgment, by incorporating a minor or inconsequential variant within its LPX200 system.
[67] I turn then to a brief analysis of the expert evidence on infringement of claims 36 and 42 of the patent in suit against the construction of that patent provided earlier in these reasons.
[68] I am satisfied that none of the variants relied on by Suntec in relation to its LPX200 device, with the possible exception of the submersed ballast or ballasts: that is, the "attachment" of the ballast or multiple ballasts to the frame of the device or system, as contrasted with the incorporation "in" the frame of a single ballast; the direct connection of the water purification lamp or lamps to the ballast or ballasts which is or are in turn attached to the frame, as opposed to the use of an electrical lead wire or wires connected to the water purification lamps which wires are in turn interconnected to the ballast through the frame; and the means of suspension of the water purification lamp or lamps, lead to a conclusion that the answer to the first question quoted earlier from Free World Trust, as derived from the "Catnic Analysis"[32] is other than "no". None of those variants has a material effect on the way in which the invention works. I thus turn to the second question drawn from the analysis, that being, whether any of the three (3) variants mentioned in this paragraph were obvious at the date of publication of the patent to a reader skilled in the art. I conclude that the answer to this question is "yes" in relation to each of the three (3) variants. I turn then, finally, to the third "Catnic Analysis" question, whether the reader skilled in the art nevertheless would have understood from the language of the claims that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention. I conclude that the answer to this question is "no". In the result, I am satisfied that none of the three (3) variants, or indeed all of them taken together, is sufficient to take the Suntec LPX200 outside the claims of the patent in suit.
[69] I turn then to Suntec's reliance on submersible ballasts, a feature clearly not inherent in the claims, taken together with the drawings, of the patent in suit. I conclude that an essential feature of the patent in suit is the relocation of the ballast to a location proximate to the fluid purification devices, that is to say, the ultraviolet lamps. The location of the ballast above the waste water, as opposed to submerged in the waste water, is not of itself, or taken in conjunction with the other variants, sufficient to take the Suntec device outside the claims of the patent in suit that are under consideration. It is not a variant that has a material effect upon the way the invention works. It is a variant that would have been obvious at the date of publication of the patent in suit. Finally, a reader skilled in the art would not have interpreted the language of the claims at issue as indicating that the patentee intended strict compliance with the indication in the claims and in the associated drawings that the ballast is above the waste water and not submerged in it.
[70] In short, I conclude that the variances comprised in the Suntec system or device would have been obvious at the date of publication of the patent in suit to a reader skilled in the art and that the reader skilled in the art would not have understood from the language of claims 36 and 42 that the patentee intended that strict compliance with the elements of claims 36 and 42 that are contrasted with the variances were essential requirements of the invention.
CONCLUSIONS
[71] Against the summary judgment principles summarized earlier in these reasons, I am satisfied that the claims made by Trojan in this action, against the evidence that was before me, present no genuine issue for trial and that the outcome with respect to those issues is not deserving of further consideration at a full-blown trial. The necessary facts can be found and there is no serious issue of credibility. While I find the affidavit evidence of both experts to be credible and trustworthy, I prefer the evidence of Trojan's expert on each of the critical issues and I am satisfied that having the evidence of the experts presented at trial where a trial judge would have an opportunity to observe their demeanour and their reactions under cross-examination would not in all likelihood affect the end result in any significant manner. I am satisfied that both parties, through counsel have "put their best foot forward". Trojan has met the burden on it to establish that there is no genuine issue for trial. I am satisfied that I am fully in a position on the basis of the material before the Court and the arguments presented by counsel to make the findings of fact and of law necessary to fully dispose of this action.
[72] I determine that the patent in suit, and more particularly claims 36 and 42 and claims dependent on those claims are valid. I determine that the priority date claimed in respect of the patent in suit is the earliest date that may be relied on by Trojan, that the patent in suit is not void by reason of anticipation or obviousness and that Mr. Jan Maarschalkerweerd is properly identified as the inventor of the invention disclosed by the patent in suit. Finally, I conclude that the patent in suit and more particularly claim 36 and claims 38 and 40 which are dependent thereon, and claim 42 and claims 46, 47, 61, 64 and 65 which are dependent thereon, have been infringed by Suntec.
RELIEF
[73] The reliefs sought are set out in the introduction to these reasons. They are repeated here for ease of reference:
1. A declaration that:
a. the Defendant has infringed claims 36,40,42,46,47,61,64 and 65 of Canadian Letters Patent No. 1,327,877;
b. claims 36, 40, 42, 46, 47, 61, 64 and 65 of Canadian Letters Patent No. 1,327,877 are valid and subsisting;
2. a declaration that the Defendant has induced or contributed to third parties infringing claims 36, 40, 42, 46, 47, 61, 64 and 65 of Canadian Letters Patent No. 1,327,877;
3. An injunction restraining the Defendants, their officers, directors, employees, shareholders, agents and all those over whom they exercise control from
a. infringing Canadian Letters Patent 1,327,877; and
b. from manufacturing, importing, exporting, selling or offering for sale in Canada or from Canada, any Suntec Environmental LPX200 and LPX500 Ultraviolet Disinfection System and, equivalent and related products;
4. An Order for:
a. delivery up to the Plaintiff of all Suntec Environmental LPX200 and LPX500 Ultraviolet Disinfection Systems and, components, equivalents and products, as well as any apparatus, documents or other things within the possession, power or control of the Defendant and which may offend the injunction sought herein;
b. damages in excess of $50,000.00 or an accounting of profits as the Plaintiff may, after due inquiry, elect;
c. pre-and post-judgment interest on such damages or profits from the date they arose to the date of payment;
d. the Plaintiff's costs of this motion; and
e. Such further and other relief as this Court may deem just.
[74] Declarations will go as requested in paragraphs 1 and 2 of the claim for relief. An injunction will go as requested in paragraph 3 of the claim for relief except that there will be no reference to Suntec's LPX500 Ultraviolet Disinfection System since there was no evidence before me with regard to that system and, more particularly, that it had been manufactured, imported into Canada, exported from Canada or sold or offered for sale in Canada or from Canada.
[75] An order will also go for delivery up to the Plaintiff of all Suntec Environmental LPX200 Ultraviolet Disinfection Systems and components equivalents and products, as well as any apparatus, documents or other things directly related to such Systems within the possession, power or control of Suntec and which may offend the injunction that will be issued.
[76] As noted in paragraph [2] of these reasons, all issues concerning any questions as to the extent of infringement of any right, any question as to the damages flowing from any infringement of any right, and any question as to the profits arising from the infringement of any right were, by order of this Court, deferred for separate determination after trial of the issues dealt with by these reasons and a related order and judgment. Thus, the issues referred in paragraph 4 b) will not be dealt with by my order. Since pre and post judgment interest is directly related to the issue of damages or profits, that issue as well will not be dealt with by my judgment.
[77] Both Trojan and Suntec seek costs. Counsel for Suntec requested an opportunity to make representations following the release of reasons[33]. With great respect to counsel, in the exercise of my discretion, I am satisfied that costs, on the ordinary scale, should follow the event. My order will so provide.
[78] No further or other relief will be provided.
____________________________
J.F.C.C.
Ottawa, Ontario
July 3, 2003
SCHEDULE
A preferred embodiment of the present invention will now be described, by way of example only, with reference to the attached drawings in which:
Fig. 1 is a side elevational view of a fluid purification device 20 constituting a preferred embodiment of the present invention;
Fig. 2 is an enlarged, fragmental, cross-sectional view of an end portion of the device where a lamp assembly is mounted in the frame of the device;
Fig. 3 is a view generally similar to Fig. 2 but taken at an opposite end portion of the device; and
Fig. 4 is an end elevational view of the device.
Referring to the drawings, there is shown a fluid purification device constituting a preferred embodiment of the invention. The device is a module to be used with other similar or identical modules for purifying fluids such as waste water with ultraviolet rays according to purification principles which are well-known and need not be described here. Referring to Fig. 1, the device in its preferred form, includes an inverted U-shape frame including opposite legs interconnected at the top by a cross piece 20 which includes a ballast 2 connected to a power cord 4 by a strain relief 1. Ballast 2 controls the voltage and amperage through ultraviolet lamps 14 mounted to and between the frame legs as will be described below. To initially energize the lamps 14, high voltage on the order of 600 volts at the ballast is required but once the lamps are energized, a lower voltage, for example, 180 volts at the ballast is sufficient and this variation of the voltage is provided by the ballast. Ballast 2 also functions to limit the amperage through the lamps.
The frame leg on the left as shown in Fig. 1 includes upper and lower hollow tubular sections 3 and 7 joined, such as by butt welding, to each other in axial alignment, with the lower end of section 7 being closed. The frame leg shown on the right in Fig. 1 is also formed in two joined sections including an upper section 22 which may be integral with cross piece 20 and a lower section 16 formed by two plates 16a and 16b which may preferably - be two longitudinally split plate sections. The latter are welded together at flat web portions 26 and are formed with registering semi-cylindrical recesses 28 to form cylindrical receptacles 30 extending transversely between the webs for receiving the lamp assemblies as will be described below. Mounted to and between intermediate portions of the frame legs is an inverted generally U shaped channel 6 having collars 32 fixed thereto with set screws 34 for securing channel 6 in desired position. Channel 6 serves to reinforce the frame and also as a barrier to the ultraviolet light.
Lower leg section 7 has a plurality of openings 35 formed along its length at spaced locations. The lamp assemblies are mounted at one of their ends to leg section 7 in alignment with openings 35 respectively. In the preferred embodiment, cylindrical mounting flanges or flares 36 are fixed to or formed with the leg section 7 about the openings 35, and fixed about each of the mounting flanges 36, such as by welding, is a cylindrical mounting sleeve 8. The lamp assemblies, generally designated 40 in Fig. 1, are mounted at their opposite ends in mounting sleeves 8 and receptacles 30 respectively.
Each lamp assembly 40 includes an elongated ultraviolet lamp 14 and an elongated protective quartz sleeve 15. surrounding the lamp 14 to fully enclose the same. In the preferred embodiment, the right end of the protective sleeve 15, as shown in Fig. 1, extends beyond the adjacent end of lamp 14 and is closed at 15a (see Fig. 3). The left end of protective sleeve 15 extends beyond the adjacent end of lamp 14 and is formed with an opening in alignment with the longitudinal axis of protective sleeve 15. The left end of the protective sleeve 15 is mounted coaxially within the mounting sleeve 8 (shown in Fig. 2) while the right end is mounted in receptacle 30 (shown in Fig. 3). In order to prevent breakage of the protective sleeve at its right end portion, in the preferred embodiment a plurality of flexible and resilient seats, preferably "O" rings 17, are provided in the split leg section to surround the receptacles 30 and receive the protective sleeves respectively as shown in Fig.3.
In the preferred embodiment shown, each lamp 14 has, on the left end thereof as shown, a molded connector 13 having contact pins (not shown) received in sockets formed in the end of the lamp. Lead wires 11, provided for driving the lamps, respectively extend from the connectors 13 through openings 35 and vertically within the hollow passages of leg sections 3 and 7. Preferably, all of the lead wires 11 for driving all of the lamps 14 of each module are located in the left-hand leg sections 3 and 7 from which they are connected to the ballast 2.
In order to seal the space between the mounting sleeve 8 and the protective sleeve 15, and annular seal, preferably an "O" ring 9, is mounted about each protective sleeve 15 adjacent the end of the mounting sleeve 8. A nut 10 is threaded onto mounting sleeve 8 and has an internal shoulder to engage the "O" ring 9. Advancement of nut 10 along mounting sleeve 8 will deform the "O" ring radially inwardly to establish a fluid tight seal about the protective sleeve 8. "O" rings 9 also help to provide a resilient mount for the lamp assemblies.
In the even[t] that protective sleeve 15 is damaged, each of the openings 35 is sealed closed by a closure or plug 12 made of a suitable material to prevent entry of fluid through openings 35 and into the hollow leg section 7. In the preferred embodiment shown in Fig. 2, closure 12 includes a first sealing segment 12a having a generally cylindrical shape and butted against the flanges 36 surrounding openings 35 with the peripheral surface of the sealing segment 12a continuously in sealing engagement with the inside surface of the mounting sleeve 8 as shown in Fig 2. For additional protection, closure 12 is formed with another sealing segment 12b axially spaced inwardly of segment 12a and formed by opposed frusto-conical portions defining a thin circular sealing lip in continuous sealing engagement with the inside surface of the protective sleeve 15; it being understood that the diameter of sealing segment 12b is less than that of segment 12a. Closure 12 also provides flexible and resilient cushion mount for the end of the protective sleeve 15 which abuts against the sealing segment 12a while being received on sealing segment 12b as shown in Fig. 2. It will thus be seen that should the protective sleeve 15 break allowing fluid to pass "O" ring 9, the fluid will be prevented from passing sealing segments 12a or 12b to enter the leg 7.
In the preferred embodiment shown, the closures 12 are molded about a respective lead wire 11 which extends inwardly from the closure 12 to the connector 13. However, in other embodiments not shown, the connector 13 may be integrally formed or located within the closure 12 itself which may be an electrical receptacle. Additionally, other types of electrical connections to the lamps 14 may be made at or in the closure 12.
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-1811-01
STYLE OF CAUSE: TROJAN TECHNOLOGIES INC. v.
SUNTEC ENVIRONMENTAL TECHNOLOGIES INC.
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: February 17, 2003
REASONS FOR : THE HONOURABLE MR. JUSTICE GIBSON
APPEARANCES:
Mr. Gary O'Neill
Mr. Christopher Van Barr FOR PLAINTIFF
Mr. Stephen M. Lane
Mr. Trent Horne FOR DEFENDANT
SOLICITORS OF RECORD:
GOWLING LAFLEUR HENDERSON FOR PLAINTIFF
Barrister & Solicitors
1600-160 Elgin Street
Ottawa, Ontario, K1P 1C3
SIMS, HUGHES, ASHTON & McKAY LLP
Barristers & Solicitors
330 University Avenue,
6th Floor
Toronto, Ontario, M5G 1R7 FOR DEFENDANT
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-1811-01
STYLE OF CAUSE: TROJAN TECHNOLOGIES INC. v.
SUNTEC ENVIRONMENTAL TECHNOLOGIES INC.
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: February 17, 2003
REASONS FOR : THE HONOURABLE MR. JUSTICE GIBSON
DATED: July 3, 2003
APPEARANCES:
Mr. Gary O'Neill
Mr. Christopher Van Barr FOR PLAINTIFF
Mr. Stephen M. Lane
Mr. Trent Horne FOR DEFENDANT
SOLICITORS OF RECORD:
GOWLING LAFLEUR HENDERSON FOR PLAINTIFF
Barrister & Solicitors
1600-160 Elgin Street
Ottawa, Ontario, K1P 1C3
SIMS, HUGHES, ASHTON & McKAY LLP
Barristers & Solicitors
330 University Avenue,
6th Floor
Toronto, Ontario, M5G 1R7 FOR DEFENDANT
[1] [2003] F.C.J. No. 593 (Q.L.), (F.C.T.D.), not cited before me; appeal filed April 17, 2003, Court File: A-188-03.
[2] [2000] 2 S.C.R. 1024.
[3] (1995), 63 C.P.R. (3d) 473, at p. 489.
[4] Free World Trust, supra, note 2, at page 1050.
[5] [2000] 2 S.C.R. 1067.
[6] [1981] 1 S.C.R. 504.
[7] See: Dableh v. Ontario Hydro (1996), 68 C.P. R. (3d) 129 at 144 (F.C.A.).
[8] Lubrizol Corp. et al. v. Imperial Oil Ltd. (1990), 33 C.P.R. (3d) 1 at 26 (F.C.T.D.); aff'd in part (1992), 45 C.P.R. (3d) 449 (F.C.A.).
[9] Whirlpool Corp. v. Camco Inc., supra at p. 1101.
[10] Joint Book of Evidence, Volume 2, Tab F, page 246, question 71.
[11] K. Barber; Toronto: Oxford University Press, 1998.
[12] (1992), 45 C.P.R. (3d) 449 (F.C.A.).
[13] [1930] S.C.R. 443 at 456; aff'd, [1931] A.C. 770 (P.C.).
[14] Supra, note 5.
[15] R.S.C. 1985, c. P-4.
[16] [1998] F.C.J. No. 286 (Q.L.), (T.D.), not cited before me.
[17] Supra, note 5.
[18] Supra, note 2.
[19] (1986), 8 C.P.R. (3d) 289 (F.C.A.).
[20] (2000), 10 C.P.R. (4th) 65 (F.C.A.); aff'd 2002 S.C.C. 77.
[21] Supra, note 19.
[22] (1988), 20 C.P.R. (3d) 132 (F.C.T.D.).
[23] (2001), 11 C.P.R. (4th) 129 (F.C.T.D.); aff'd (2002), 23 C.P.R. (4th) 1. (See attached sheet)
[24] Joint Book of Evidence, Volume 2, Tab F, page 314, response to question 327.
[25] Joint Book of Evidence, Volume 5, Tab N, page 819, questions 7 to 9.
[26] The Heraeus brochure appears in the Joint Book of Evidence, Volume 4, Tab E.
[27] Supra, note 22.
[28] [1982] R.P.C. 183 (H.L.).
[29] Supra, note 28.
[30] Supra, note 2.
[31] [2002] 2 F.C. 3 (F.C.T.D.) at paragraph 133; rev'd on other grounds (2001). 17 C.P.R. (4th) 478.
[32] See the quotation in paragraph [65] of these reasons.
[33] Transcript, page 271.