Digests

Almecon Industries Ltd. v. Anchortek Ltd.

T-992-92

2001 FCT 1404, Gibson J.

19/12/01

66 pp.

Action for declaration of validity and infringement of Almecon patent for type of seismic bore hole plug, issued on April 7, 1987; counterclaim for declaration of invalidity-- Data collected from signals recorded from detonation of explosive charges in holes used to locate oil, gas deposits-- Common to insert seismic bore hole plug before blast to prevent energy escaping upward instead of through formation of interest ("tamping"), and to support soil or other fill used to close hole--King Plug, introduced in 1984, embodiment of Almecon patent--Modified in 1985--Plaintiff alleging Anchortek's Energy Plug infringing claims 1, 5 of Almecon patent--Anchortek selling Energy Plugs to three co-defendants and to Austin Powder Co. Ltd.--Plaintiff sued Austin Powder Co. Ltd. in separate action--Based solely on allegation Energy Plug infringing Almecon patent, Austin Powder agreeing to settlement provision requiring it to purchase 70% of its plugs from Almecon--Almecon patent subject of litigation between plaintiff, Nutron Manufacturing Ltd.--Decision of Trial Division reported at (1996), 65 C.P.R. (3d) 417 and of Court of Appeal at (1997), 209 N.R. 387--Wetston J. concluding person skilled in art to which Almecon patent relates is experienced seismic crew technician--Found patent not anticipated by prior art patents or prior art industry--Holding defendant not meeting burden of demonstrating, on balance of probabilities, that patent invalid; as Almecon patent teaching inventive step, valid-- Upheld on appeal--Conclusion as to person skilled in art adopted herein--Subject to one reservation, Wetston J.'s construction of claims 1, 5 of patent adopted--(1) Issued, subsisting Canadian patent presumed valid--Claims 1, 5 relating to "tamping and topping plug"--Defendants submitting its Energy Plug not "tamping" plug but "venting" plug, in that forward end not closed or "substantially closed" so as to deflect energy of explosion down bore hole, but permitting proportion of energy to pass through plug into topping, thence to "vent" into atmosphere without related blowout--If claim 1 or 5 construed to encompass "venting plug" then claim invalid as broader that invention actually made--Disclosure of patent notes "basically only required that the [front] end be substantially closed"--Further, contemplates reduction of "blast leakage" and "substantially" confining force of blast "to the hole and so to the surrounding formations"--Based on totality of evidence regarding "venting" and somewhat open fronted plugs, term "substantially closed" as appears in specification of Almecon patent neither stray phrase nor gloss--Phrase relied upon by Wetston J. in construction of claims 1, 5--Claims 1, 5 not invalid for being broader either than invention made by named inventors or than invention actually disclosed--(2) Patent Act, s. 2 defining "invention" as "any new and useful . . . machine" --Invention must be useful as specified and for purpose stated in specification and claims, under ordinary working conditions: Fox, Harold G. Canadian Law and Practice Relating to Letters Patent for Inventions, 4th ed. (Toronto: Carswell, 1969)--Usefulness in modified form no answer: Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd. (1978), 39 C.P.R. (2d) 191 (F.C.T.D.)--Defendants urged embodiment of invention simply "did not work"--On evidence, original King Plug embodiment of Almecon patent well received in industry and was commercial success-- Subsequent modifications, variations to design to improve performance in specific conditions cannot, of themselves, make out case that invention, as embodied in original design, lacked utility--Defendant's argument claims 1, 5 invalid as encompassing embodiment that is inoperative or lacks utility, rejected--Party attacking patent must satisfy Court, on balance of probabilities, that patent invalid--Given conflicting evidence regarding commercial use of original Queen Plug, defendants failed to discharge onus on them with regard to allegation claims 1, 5 encompass embodiment that is inoperative, will not function--At date of application for Almecon patent, Patent Act, s. 34(1)(c) providing applicant should, in specification of invention of machine, explain principle of machine and describe "best mode" in which contemplates application of principle--Inventors must disclose "best mode" known to them at date of filing of application for patent--Between date of filing of application and date of filing of supplementary disclosure, significant field experience gained with respect to embodiments of invention--Not unreasonable to assume field experience gave rise to supplementary disclosure as well as to improvements to embodiments of invention implementing uses in field--No evidence inventors failed to disclose "best mode" known to them on date application filed--Defendants failed to discharge onus of demonstrating, on balance of probabilities, invalidity of Almecon patent--(3) In construction of claims 1, 5 Wetston J. commenting on test for infringement that if variant of aspect of claim has no material effect on way invention works, presumption patent infringed, and patentee intended variant fall within scope of claim--Since then Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R. 1024 enunciating six propositions addressing issue of how best to resolve tension between "literal", "substantive" infringement--In light of those propositions and comparing most relevant embodiment of Almecon patent, "essential" elements of invention defined, compared to Energy Plug--No essential element different or omitted--Energy Plug infringing Almecon patent--(4) Therefore plaintiff not making false, misleading statement to Austin Powder Ltd. consisting of allegation Energy Plug infringing Almecon patent-- Regardless, statement on face of statement of claim cannot stand as basis for claiming plaintiff made false, misleading statement within ambit of Trade-marks Act, s. 7(a)--Claim for damages for false, misleading statements dismissed-- Declaration patent valid, plaintiff's interest therein infringed through manufacture, sale, resale of Almecon's Energy Plug--As to interlocutory issues, plaintiff not allowed to introduce read-ins from examinations for discovery to support inference regarding infringement from form of plug defendants adopted after apparent Wetston J.'s decision would stand--Drawing such inference would discourage efforts to mitigate potential damages--Not making economic sense to put defendants in position of having to continue to face possibility of mounting damages to avoid compromising belief not infringing--Read-ins of opinion (versus expert) evidence related to how Energy Plug operates as seismic bore hole plug allowed, but issue of weight to be accorded reserved-- Questions pertaining to plugs other than what inventor involved in designing, allowed for limited purpose of determining his perception, by reference to prior art plugs, of what problem was that inventors trying to solve--Objection to paragraphs of plaintiff's witness statement on grounds constituted improper rebuttal/reply as constituted attempt to split case in chief, overruled--Not unreasonable for plaintiff not to raise issue of venting versus tamping on own initiative --Defendants on notice that if they chose to raise issue, there was expert statement on plaintiff's behalf on same issue, and not illogical to presume would be introduced as reply-- Additional elements of examinations for discovery proposed on behalf of defendants allowed to put what proposed to introduce into context, whether by way of explanation, amplification, contradiction, qualification--Patent Act, R.S.C., 1985, c. P-4, ss. 2, 34(1)(c)--Trade-marks Act, R.S.C., 1985, c. T-13, s. 7(a).