Digests

Westaim Corp. v. Royal Canadian Mint

T-453-98

2002 FCT 1217, Hansen J.

22/11/02

58 pp.

Patent infringement action by Westaim Corporation alleging claims 2, 4 and 6 of patent No. 1198073 (073 patent) infringed by Royal Canadian Mint (RCM) at coin blank manufacturing operation in Winnipeg, Manitoba--RCM denying allegations and seeking declarations of non-infringement and invalidity of patent 073--073 patent, process for producing coin blanks, issued December 17, 1985 to Sherritt Gordon Mines Limited (Sherritt)--In 1970, Sherritt's Director of Coinage Marketing challenging employees, to develop new coinage product having all properties of nickel but cheaper--Employees' subsequent work resulted in development of Sherritt's nickel-bonded-steel (NBS) coinage product for which a number of US, Canadian and U.K. patents issued--Employees' work on solution to problem of formation of blisters on surface of plated core during post-plate anneal resulted in patent at issue in proceedings--073 patent relating to production of coin blanks suitable for minting into coins--Only claims 2, 4 and 6 of patent at issue--As 073 patent issued before October 1, 1989, provisions of Patent Act apply to proceeding--Westaim submits comparison of RCM process and claims 2, 4 and 6 of 073 patent clearly demonstrating RCM has used every step of each of relevant claims in process--RCM maintaining process not infringing any of claims at issue--Central issue on infringement whether two or three electroplated layers used by RCM in process within scope of any of claims 2, 4, or 6--RCM alleging 073 patent invalid because claimed invention anticipated, obvious at date invention made, lacks utility, broader than any inventions made by inventors, broader than any invention disclosed in patent, claim ambiguous and because patent's specification insufficient to enable skilled person to practice claimed invention--As stated in Whirlpool Corp. v. Camco Inc., [2000] 2 S.C.R. 1067, before considering issues of infringe-ment and validity, relevant claims of patent at issue must be construed--Court's task to identify how patentee has used various terms in claims and to determine meaning of terms in claims--Understanding of meaning of terms derived from context of patent specification as whole with assistance of person skilled in art relating to patent--Informed and knowledgeable reading of claims will enable Court to identify particular words or phrases in claims describing elements inventor considered essential elements of invention--In present case, reading of 073 patent making clear 073 patent addressed to person or team knowledgeable in minting metallurgy and electroplating--Key difference between parties' positions regarding construction of claims at issue arising from meaning of words "placing the container into an electroplating bath, electroplating a metallic cladding onto the cores while moving the container angularly about a horizontal axis, until a plating thickness of at least about 0.01 mm has been deposited"--Court's task in construing claims to identify essential and non-essential elements of claims--In Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R. 1024, Binnie J.'s reasons examined--Evidence not establishing on a purposive construction electroplating details found in language at issue not intended to be essential elements of claims--No clear language inventors did not intend first plated layer to have a minimum thickness of 0.01 mm--Nothing in language of claims indicating inventors did not clearly intend first layer 0.01 mm as a non-essential element--Regarding obviousness to skilled worker at date of publication of patent that cladding having multiple layers could be substituted for cladding having single layer without affecting working of invention-- Cladding consisting of multiple metallic layers would obtain substantially same result as cladding consisting of a single metallic layer--Cladding consisting of one or multiple layers would not make material functional difference to claimed process--Regarding validity of patent, Act, s. 45 providing patent presumed valid in absence of evidence to contrary-- Onus on party challenging validity of patent to prove alleged invalidity on balance of probabilities--In Beloit Canada Ltd./Ltée v. Valmet Oy (1986), 8 C.P.R. (3d) 289 (F.C.A.), Hugessen J.A. stated, regarding challenge to validity of patent on basis of anticipation and obviousness, issue of obviousness should be considered first--Relevant date to assess obviousness date of invention, presumed to be filing date of application for patent--Plaintiff failed to prove claimed date of invention--On evidence March 1981 earliest possible date of invention--Whether sequence of steps in process disclosed in 073 patent new--Patent 803, published January 9, 1980, as one of Westaim's NBS patents--Court found 803 patent rendering claimed invention in 073 patent obvious--Patent 803 providing relevant information regarding process--Only question left regarding whether skilled person reading 803 patent, in absence of any direction in patent annealing step may occur before electroplating step, would be led directly and without difficulty to conclude annealing step must be carried out before electroplating--Skilled person reading 803 patent and equipped with common general knowledge would have been led directly and without difficulty to process claimed in 073 patent--Therefore, patent invalid--Patent infringement action dismissed--Patent Act, R.S.C., 1985, c. P-4, s. 45 (as am. by S.C. 1993, c. 15, s. 42).