Tekna Plasma Systems Inc. v. AP&C Advanced Powders & Coatings Inc.

Tekna Plasma Systems Inc. v. AP&C Advanced Powders & Coatings Inc.
Court (s) Database
Federal Court Decisions
Date
2024-06-07
Neutral citation
2024 FC 871
File numbers
T-126-19
Decision Content
Date: 20240607
Docket: T-126-19
Citation: 2024 FC 871
Ottawa, Ontario, June 7, 2024
PRESENT: Mr. Justice McHaffie
BETWEEN:
TEKNA PLASMA SYSTEMS INC.
Plaintiff / Defendant by Counterclaim
and
AP&C ADVANCED POWDERS & COATINGS INC.
Defendant / Plaintiff by Counterclaim
JUDGMENT AND REASONS
TABLE OF CONTENTS
Para.
I. Overview [1]
II. Introduction
A. The Patents at Issue [17]
B. The Parties and the Action [24]
C. The Lay Witnesses [29]
D. The Expert Witnesses [33]
III. Issues Common to the ’502 and ’236 Patents
A. Principles of Patent Construction [52]
B. The Person of Ordinary Skill in the Art [60]
C. The Common General Knowledge of the Person of Ordinary Skill in the Art [62]
(1) Principles [62]
(2) Evidence regarding the common general knowledge [65]
(3) The common general knowledge [73]
D. The Disclosure of the ’502 and ’236 Patents [109]
(1) Structure of the disclosure [111]
(2) Description of the various embodiments [116]
(3) The experiments [124]
IV. Canadian Patent 3,003,502
A. Claims Construction [134]
(1) Introduction and Claim 1 [134]
(2) Defined terms [140]
(3) Other terms [156]
(4) Surface layer [204]
(5) Independent Claim 60 [303]
(6) Dependent claims [306]
B. Validity [323]
(1) Ambiguity [325]
(2) Insufficiency [369]
(3) Other argued grounds of invalidity [372]
C. Infringement [373]
(1) Principles [373]
(2) Asserted claims and areas of agreement [376]
(3) The asserted claims of the ’502 Patent are not infringed [382]
D. Conclusion [457]
V. Canadian Patent 3,051,236
A. Claims Construction [458]
(1) Introduction [458]
(2) Claims 1 to 4 [464]
(3) Other claims [505]
B. Validity [539]
(1) Ambiguity [539]
(2) Insufficiency [573]
(3) Other argued grounds of invalidity [574]
C. Infringement [597]
(1) Asserted claims and areas of agreement [597]
(2) The asserted claims are not infringed [606]
D. Conclusion [612]
VI. Conclusion [613]
VII. Disposition and Costs [616]
The scope of patent protection must not only be fair, it must be reasonably predictable. A patent is, after all, a public instrument issued under statutory authority which may result in severe financial consequences for its infringement. The scope of its prohibition should be made clear so that members of the public may know where they can go with impunity.
Free World Trust v Électro Santé Inc, 2000 SCC 66 at para 41.
I. Overview [1] The Patent Act, RSC 1985, c P-4, requires the claims of a patent to define “distinctly and in explicit terms” the subject-matter of the invention for which an exclusive privilege or property is claimed. Patent claims perform a vital public notice function. Since the monopoly granted by the claims is enforceable through various monetary and other remedies, it is important the public know what is prohibited, so it knows what it can and cannot do without infringing the patent.
[2] Although the claims must define the subject-matter distinctly and in explicit terms, they need not be perfect or a model of lucidity. They are addressed to a reader versed in the art who wants and tries to understand them in a purposive way and to give them a meaning that is fair to the inventor and the public. A lack of clarity or potential competing constructions is not alone fatal. It is therefore a rare case where the Court will conclude that the claims of a patent cannot be meaningfully understood.
[3] This case raises these important principles in the context of two patents relating to the production of reactive metal powders. These powders, made up of tiny particles of reactive metals such as titanium or titanium alloys, are particularly useful in additive manufacturing, sometimes termed “3D printing,” in which three-dimensional objects are made by depositing, joining, or solidifying a material layer by layer.
[4] AP&C Advanced Powders & Coating Inc and Tekna Plasma Systems Inc are both manufacturers of metal powders that are used in, among other things, additive manufacturing. AP&C owns the patents in question, Canadian Patent 3,003,502 [the ’502 Patent] and Canadian Patent 3,051,236 [the ’236 Patent]. AP&C alleges that Tekna’s production of titanium alloy powders infringes the patents; Tekna alleges that the patents are invalid and that, in any case, it does not infringe them.
[5] The ’502 Patent and the ’236 Patent are closely related. They share common inventors and an identical disclosure, but have different claims. Central to the claims in each patent is the concept of a depletion layer at the surface of particles of reactive metal powder. Each of the claims of the two patents includes, as an essential element, the formation of a depletion layer or a system configured to control the formation of a depletion layer. The meaning of the term depletion layer, and the ability to determine whether a powder particle has a depletion layer, is therefore central to the patents and to the disputes in this action.
[6] The term depletion layer is not one that is generally used in the field of powder manufacturing. As AP&C’s counsel aptly put it, it is not a term of art but a “term of patent,” coined by the inventors. What it means must therefore be gleaned from the patents themselves, read and construed by the skilled reader in light of their common general knowledge and in accordance with the various principles governing patent construction.
[7] Based on my review of each patent as a whole, the evidence filed, including the reports and testimony of each party’s experts, and the parties’ arguments, I conclude that with the exception of a few claims in the ’236 Patent, it is impossible for the skilled reader to know or determine whether or not a powder particle has a depletion layer within the meaning of the patents’ claims. Neither the claims nor the disclosure of the patents provide the reader with the ability to understand and assess whether a particle has a depletion layer, and thus whether a given process or system reads on the claims or not. In the words of Justice Binnie cited above, the public reading the patents simply cannot know “where they can go with impunity.”
[8] I therefore find that despite the Court’s general disinclination to find a patent claim ambiguous, all of the claims of the ’502 Patent and most of the claims of the ’236 Patent are invalid for ambiguity.
[9] In doing so, I reject AP&C’s proposed construction, in which the existence of a depletion layer in a subject particle is determined by conducting a comparison of the oxygen concentration profile of the subject particle to that of a particle made without additive gas, another element of the claims of the ’502 Patent and most claims of the ’236 Patent. AP&C argues this approach is set out by the inventors in the disclosure of the patents and provides an objective method to assess whether a particle has a depletion layer.
[10] I disagree. The disclosure of the patents does not instruct the reader to undertake the comparison AP&C proposes. Nor do the claims, which require a different comparison in the case of the ’502 Patent, and either no assessment method at all or a completely different method in the case of the ’236 Patent. AP&C effectively seeks to read its comparative method into the disclosure before then reading it into the claims. This is not a sound or justifiable approach to patent construction. Notably, the approach that AP&C proposes is not one that its own expert suggested would be understood from the claims of either patent when he first construed them.
[11] A few of the claims of the ’236 Patent set out explicitly what a depletion layer is and when a powder particle does and does not have one. These claims are not ambiguous and I reject Tekna’s utility and overbreadth arguments with respect to them. These claims are valid.
[12] AP&C does not assert that Tekna infringes any of the valid claims of the ’236 Patent. The issue of validity is therefore effectively determinative of this matter. The ambiguity of the claims also makes it difficult to assess the question of infringement in the alternative, since the very problem is that it is impossible to tell whether a process or system falls within the scope of the claims. Nonetheless, AP&C’s evidence relating to infringement is flawed. AP&C does not show that Tekna’s powders have a depletion layer by comparing them to the patents. Nor does it compare them to the AP&C powder samples that were tested in the patents, or even to samples of other Tekna powders. Rather, AP&C seeks to prove that certain of Tekna’s powders have a depletion layer by comparing them to other samples of AP&C’s products, which it purports to use as positive and negative controls.
[13] This approach is inconsistent with the principle that infringement is assessed by evaluating the impugned product, method, process, or system against the claims of the patent, and not against the patent owner’s product. Indeed, AP&C’s apparent inability to demonstrate infringement by reference to the patents and their claims without conducting a separate comparison to its own product simply highlights the ambiguity in the claims. I am also not satisfied that the fundamental assumption underlying AP&C’s infringement evidence—that the samples it used as positive controls have a depletion layer while the negative controls do not—is justified or supported on the evidence or with reference to the patents.
[14] For these and the more detailed reasons set out below, I conclude the ’502 Patent is invalid and is not infringed by Tekna. Most of the claims of the ’236 Patent are similarly invalid and none of its claims are infringed.
[15] Tekna’s action seeking declarations of invalidity and non-infringement in respect of the ’502 Patent is therefore granted. AP&C’s counterclaim seeking declarations that Tekna has infringed the ’502 Patent and the ’236 Patent is dismissed. Tekna’s “counterclaim to counterclaim” seeking declarations of invalidity in respect of the ’236 Patent is granted in part. If the parties are unable to agree on costs, they may make submissions in accordance with the schedule set out at the end of these reasons.
[16] I conclude this overview by commending counsel both for the manner in which this case proceeded to trial and for the manner in which the trial was conducted. Counsel co-operated admirably with respect to logistical and scheduling matters, including when unexpected difficulties arose in pre-trial scientific testing, requiring an adjournment of the trial. Both sides worked to ensure the matter was put before the Court on a reasonably streamlined basis, focused on the merits, although a substantial number of issues remained in dispute. The Court expresses its thanks to both teams of advocates, each of whom were excellent. I also express my regret and apologies to the parties for the length of time between the completion of trial and the issuance of this judgment.
II. Introduction A. The Patents at Issue [17] The ’502 and ’236 Patents are members of a patent family: the ’236 Patent issued from a divisional application based on another application that was in turn a divisional from the ’502 Patent. The two patents therefore share a filing date (October 27, 2016); a publication date (May 4, 2017); and a priority date based on a United States patent application (October 29, 2015). They also share identical disclosures, except for their paragraph numbering: owing to an unexplained empty paragraph at the beginning of the ’502 Patent, the paragraph numbers in the disclosure of the ’502 Patent are one higher than those of the equivalent paragraph in the ’236 Patent.
[18] The difference between the two patents lies in the particular processes and systems claimed in their respective claims. The two patents were also issued on different dates: the ’502 Patent issued on January 8, 2019; the ’236 Patent on September 22, 2020.
[19] As discussed in considerably more detail below, most of the ’502 and ’236 Patents relate to processes for manufacturing metal powders through gas atomization. In gas atomization, a metal source such as a wire is melted and subjected to a high velocity flow of gas that breaks the melted metal into liquid droplets, which then cool and solidify as solid powder particles. Some claims of the ’502 Patent relate to a spheroidization manufacturing process. In spheroidization, a similar process of heating, melting, and cooling is used to improve the sphericity of powders created by other methods, such as milling. These spheroidization claims are not asserted as infringed by AP&C, although they are covered by Tekna’s invalidity arguments. Some claims of the ’236 Patent relate to atomization systems rather than processes.
[20] When metal powders are produced through gas atomization or spheroidization, the resulting powder particles vary in size, and might range from less than 1 μm to over 100 μm. The particles of various sizes are typically separated, by sieving or other methods, into subsets with different particle size distributions, a process known as classification. Powders with different particle size distributions are beneficial for different industrial applications. Specific particle size distributions can depend on desired applications, but the parties generally referred to “fine” powders as having a particle size distribution of approximately 5 μm to 25 μm; and “medium” powders having a particle size distribution of approximately 20 μm to 53 μm.
[21] The processes and systems claimed in the two patents are said to improve the “flowability” of the resulting powders. As the word suggests, the flowability of a powder is a measure of its ability to flow, that is, to behave like a fluid. Flowability is an important attribute of metal powders used in industrial applications, including additive manufacturing.
[22] At a high level, the atomization or spheroidization processes claimed in the ’502 Patent involve using a mixture of gases in which an additive gas is present, which forms a surface layer on the metal powder comprising two layers: a first layer or depletion layer, with atoms of the metal and atoms or molecules of the additive gas, and a second layer, which is a native oxide layer. The first layer/depletion layer is claimed to be deeper and thicker than the native oxide layer, and a given particle size distribution of the resulting powder has a given flowability.
[23] The claims of the ’236 Patent similarly involve atomization processes or systems involving the formation of a depletion layer, although the claims vary as to whether they include reference to an additive gas, defined flowability parameters, and/or a native oxide layer.
B. The Parties and the Action [24] Tekna is based in Sherbrooke, Quebec. It was created in 1990 to commercialize plasma torch technology developed by professors at the University of Sherbrooke. A plasma torch is a device that uses energy to heat gases to a very high temperature at which most of the atoms in the gas become ionized, with the electrons separated from the nuclei. This ionized gas is referred to as plasma. Plasma has different properties than matter in the solid, liquid, and gaseous states. It is therefore sometimes termed the “fourth state of matter.”
[25] Tekna originally focused on the development and manufacture of plasma systems and components, including plasma torches. These systems were built for use in a variety of applications, including the synthesis of nanopowders (with particles in the range of 50–100 nm) and spheroidization. In 2009, Tekna increased its focus on the production and commercialization of metal powders, establishing production facilities in Sherbrooke and in France. Tekna was acquired by a Norwegian investment firm, Arendals Fossekompani, in 2013. After this acquisition, Tekna sought to expand its presence in the market for titanium alloy powders for use in the growing additive manufacturing industry. It began a research and development project known as the Tekna Atomization Process [TAP] project in late 2013 and began atomizing titanium alloy wire in 2014. Tekna currently has five plasma torch atomization reactors in Canada producing metal powders.
[26] AP&C and its affiliates have been manufacturing and selling plasma atomized metal powders since 2005, with a focus on titanium and titanium alloy powders. Its production facility in Boisbriand, Quebec, has been in operation since then, and it opened a second in St-Eustache in 2017. Between the two facilities, AP&C operates 15 reactors for powder production, as well as a research and development reactor. In 2014, AP&C was acquired by Arcam AB, a Swedish public company, which was in turn acquired by a division of General Electric.
[27] Tekna and AP&C are competitors in the market for metal powders produced by plasma atomization. Shortly after the ’502 Patent issued in early 2019, Tekna brought this proceeding as an impeachment and non-infringement action pursuant to section 60 of the Patent Act. AP&C counterclaimed alleging infringement of the ’502 Patent. When the ’236 Patent later issued, pleadings were amended to add allegations of infringement and invalidity of that patent. Two other patents owned by AP&C were also previously at issue in this action, but the parties resolved their disputes with respect to those patents. The parties also resolved their disputes regarding three patents owned by Tekna, which were the subject of another proceeding (Court File No T-1769-19) that was to be heard concurrently with the trial of this matter but was discontinued. As a result, only the ’502 and ’236 Patents are now at issue.
[28] This action was bifurcated on the consent of the parties. This first liability phase of the proceedings addressed issues of construction, infringement, and validity of the ’502 and ’236 Patents, as well as the availability of the prior use exemption under section 56 of the Patent Act and AP&C’s entitlement to certain remedies, if any.
C. The Lay Witnesses
[29] At trial, the Court heard evidence from four witnesses from Tekna: Dr. Richard Dolbec, Director of Emerging Technologies and IP Management; Éric Bouchard, Director of Plasma Systems Products and Senior Advisor; Jean-François Carrier, Product Line Manager for Tekna’s powder products; and Patrick Lemay, former Vice President of Human Capital and Organizational Transformation. They described Tekna’s history, business, the TAP project, and Tekna’s atomization manufacturing systems and processes, including the changes made over time to improve those processes. These included efforts to meet clients’ oxygen content specifications and flowability requirements and to address technical issues arising as changes were made to its systems.
[30] The Court also heard evidence from Dr. Frédéric Larouche, Chief Technology Officer of AP&C and one of the inventors of the ’502 and ’236 Patents. Dr. Larouche described AP&C’s business and its atomization manufacturing processes, changes made to improve those processes, and in particular the various steps and developments at AP&C that resulted in applying for and obtaining the patents.
[31] There were few significant or material controversies regarding the factual aspects of the evidence from the lay witnesses. For the most part, the evidence of these witnesses was not central to the issues that are determinative of this case, namely the construction, validity, and infringement of the ’502 and ’236 Patents. In particular, Tekna formally admitted that in at least some cases, its processes met all of the elements of the claims asserted by AP&C other than those related to the depletion layer. As a result, the evidence from Tekna’s lay witnesses was not necessary to establish those elements of the claims, although they did provide context for Tekna’s processes and their development. The evidence from Tekna’s witnesses was relevant to its argument that it did not infringe AP&C’s patents by virtue of subsection 56(1) of the Patent Act, because its processes after the claim date of the patents were the same as they were before. However, my conclusions on other issues render it unnecessary to address Tekna’s subsection 56(1) argument.
[32] Dr. Larouche’s evidence provided general context regarding the industry and the background to the claimed invention, as well as some aspects of AP&C’s infringement analysis, as discussed below. It may also have been relevant to certain validity issues; however, these were either not pursued by Tekna or not determinative given my conclusions on other issues. As an inventor, Dr. Larouche’s evidence regarding the invention or his intentions is not relevant to the construction of the patents: Free World Trust at paras 61–66; Bombardier Recreational Products Inc v Arctic Cat, Inc, 2018 FCA 172 [Bombardier (FCA)] at paras 22–23, 51.
D. The Expert Witnesses [33] Patents are addressed to a person skilled in the art or science to which they pertain, so the Court must read, understand, and assess a patent from the perspective of that person: Patent Act, ss 27(3), 28.3; Whirlpool Corp v Camco Inc, 2000 SCC 67 at paras 53–54; Free World Trust at paras 31(e), 44. This notional addressee is an individual or team who has the ordinary amount of knowledge incidental to a particular trade and is thus often termed the person of ordinary skill in the art [POSITA] or the skilled reader: Whirlpool at paras 70–71, citing Consolboard Inc v MacMillan Bloedel (Sask) Ltd, 1981 CanLII 15 (SCC), [1981] 1 SCR 504 at p 523.
[34] Prior to trial, the Court was profoundly unlearned in the art of manufacturing metal powders. The parties called five experts to assist the Court by providing their expertise in the relevant fields of endeavour. Collectively, they helped put the Court in the position of being able to perform in a knowledgeable way its task of identifying the POSITA and assessing how they would read and understand the patents: Whirlpool at para 57.
[35] Tekna called two expert witnesses. John Barnes was Tekna’s primary expert with respect to the construction, validity, and infringement of the ’502 and ’236 Patents. Mr. Barnes holds a Master of Science in Metallurgical Engineering from Purdue University and has worked in additive manufacturing and metal powder production for over 25 years. This work has included working for manufacturers and government agencies in the areas of metals technology, metal powder production, and additive manufacturing; contributions to international standards organizations on additive manufacturing technology standards; and consulting and training in these areas. He is a named inventor on a number of patents in the field of metals technology, and speaks and writes frequently in the area, including on the subject of titanium alloys and metal powders. Mr. Barnes is currently an Adjunct Professor of Materials Engineering at both Carnegie Mellon University and the Royal Melbourne Institute of Technology University.
[36] Mr. Barnes was qualified, without objection from AP&C, to give expert evidence as a materials and process engineer with an expertise in metal powder production, processing, and characterization, and additive manufacturing. Mr. Barnes authored an initial report on construction, validity and infringement, dated October 15, 2021 [Barnes First Report]; a responding report on construction issues dated February 12, 2022 [Barnes Second Report]; and a reply report, dated September 8, 2022, addressing AP&C’s expert reports on non-infringement [Barnes Third Report].
[37] Jeffrey Shallenberger gave evidence with respect to a particular analytical technique referred to in the ’502 and ’236 Patents, namely a type of Secondary Ion Mass Spectrometry [SIMS] known as Time-of-Flight Secondary Ion Mass Spectrometry [ToF-SIMS or TOF-SIMS]. Mr. Shallenberger holds a Master of Science in Materials Science & Engineering from Pennsylvania State University, and has over 30 years’ experience in materials characterization, particularly surface and interface analysis. In various roles with private and academic institutions, Mr. Shallenberger has been involved in materials testing and surface analysis, using a wide variety of analytical techniques, and has published frequently in these areas. He is currently Associate Director of the Materials Characterization Laboratory at the Millennium Science Complex at Penn State.
[38] Mr. Shallenberger was qualified, without objection from AP&C, to give expert evidence as a materials scientist with an expertise in materials characterization, including surface and interface analysis and analytical techniques, for example, SIMS, X-ray Photoelectron spectroscopy [XPS], and Auger Electron Spectroscopy. Mr. Shallenberger prepared two reports: a first report addressing the scientific principles and shortcomings of ToF-SIMS, dated October 15, 2021 [Shallenberger First Report]; and a reply report responding to AP&C’s experts on these issues and on the ToF-SIMS testing of metal powder samples, dated September 12, 2022 [Shallenberger Second Report].
[39] AP&C called three experts. Dr. Javad Mostaghimi addressed the construction, validity, and infringement of the ’502 and ’236 Patents. Dr. Mostaghimi obtained a Ph.D. in Mechanical Engineering from the University of Minnesota in 1982. After a post-doctoral fellowship and a brief position in industry, Dr. Mostaghimi has held various academic positions of increasing seniority, including the title of Distinguished Professor in Plasma Engineering at the University of Toronto. He is currently a Professor in the Department of Mechanical & Industrial Engineering at UofT, where he is also the director of the Centre for Advanced Coating Technologies. Dr. Mostaghimi’s primary research areas relate to thermal plasma, including thermal spray coatings, plasma torches, and heat transfer. He has published numerous academic and conference papers and authored or co-authored texts in the area, as well as being the named inventor on a number of patent applications.
[40] Dr. Mostaghimi was qualified, without objection from Tekna, to give expert evidence on thermal plasmas, including plasma torch design, mathematical modelling of plasmas, and heat transfers and plasma gas flows generated by such torches; and on the preparation of advanced materials, including metal powders, including the physics and chemistry of metals and gases used as part of such processes, the formation and solidification of molten droplets, and the physical and chemical characterization of metal powders. Dr. Mostaghimi authored an initial report on the construction of the ’502 and ’236 Patents, dated October 18, 2021 [Mostaghimi First Report]; and a second report, dated June 10, 2022, responding to Mr. Barnes’ First Report on construction, validity, and infringement [Mostaghimi Second Report].
[41] Dr. Joseph A. Gardella gave evidence in response to Mr. Shallenberger’s evidence regarding ToF-SIMS, and on certain validity and infringement issues. Dr. Gardella is a Distinguished Professor of Chemistry at the University of Buffalo at the State University of New York, where he has been on the faculty since shortly after earning his Ph.D. in Analytical Chemistry from the University of Pittsburgh in 1981. Dr. Gardella’s research relates generally to surface and analytical chemistry, including the molecular and macromolecular structure at surfaces and interfaces, particularly biological surfaces. His research involves a variety of surface characteristic testing methods, including SIMS and ToF-SIMS. He has published numerous academic and conference papers, including in the area of ToF-SIMS, and has authored or co-authored book chapters relating to surface analysis.
[42] Dr. Gardella was qualified, without objection from Tekna, to give expert evidence on materials science, methods for the characterization of materials and surface analysis, including analytical methods such as transmission electron microscopy, electron diffraction, energy dispersive analysis, and SIMS. Dr. Gardella prepared two reports, dated June 10, 2022, and October 3, 2022, responding to the reports of Mr. Shallenberger and Mr. Barnes as they related to ToF-SIMS and the results obtained by this testing method [Gardella First Report and Gardella Second Report].
[43] Dr. Michael J. Cima gave evidence on issues of thermochemistry and on the results of testing of samples of the parties’ metal powders. Dr. Cima is the David H. Koch Professor of Engineering and a Professor of Materials Science and Engineering at the Massachusetts Institute of Technology. Dr. Cima joined the faculty at MIT after earning his Ph.D. in chemical engineering from the University of California at Berkley in 1986. His current research involves advanced forming technologies for complex macro and micro devices, including medical devices used for drug delivery and diagnostics. He has authored or co-authored numerous scientific papers, and lectures frequently on materials science, including powder-forming technologies such as 3D printing. Dr. Cima is a co-inventor on over 90 patents, including on a patent covering MIT’s 3D printing process, which was among the first solid free-form fabrication technologies to see widespread use.
[44] Dr. Cima was qualified, without objection from Tekna, to give expert evidence on materials science, including the physics and chemistry of metals and gases, methods for the characterization of materials and surface analysis, including analytical methods such as transmission electron microscopy, electron diffraction, energy dispersive analysis, SIMS, and processes for the manufacture of materials, including metal powders. Dr. Cima’s first report, dated June 9, 2022, responded to Mr. Barnes on the issue of thermochemistry and addressed the testing of samples of Tekna and AP&C’s metal powders [Cima First Report]. He also prepared a reply report, dated October 3, 2022, responding to the Barnes Third Report and the Shallenberger Second Report [Cima Second Report].
[45] These expert reports were filed on consent and taken as read. As indicated, no objections were made to the witnesses’ qualifications as experts, although argument was directed to their relative qualifications and the weight the Court should place on their opinions.
[46] I address the substance of the experts’ evidence on the relevant issues in more detail below. However, I make a few initial observations on the experts and the evidence they presented.
[47] AP&C contends there is a “very significant chasm” between the level of expertise of its experts and those put forward by Tekna. There is no doubt that Drs. Mostaghimi, Gardella, and Cima are distinguished academics with impressive credentials who are experts in their fields. Mr. Barnes and Mr. Shallenberger, who have Masters degrees and extensive industry experience in their respective fields, also have impressive backgrounds, but do not have—and do not purport to have—the academic expertise of AP&C’s experts.
[48] Academic credentials may be relevant, and even important, in assessing the competing evidence of experts in certain cases. In other cases, practical knowledge and experience will be particularly important. Either way, as AP&C recognizes, assessing expert evidence is not simply a battle of qualifications. The Court must assess the particular evidence given by the expert, its internal consistency, its consistency with the other evidence and the patent at issue, and the extent to which the evidence draws on the expert’s qualifications and expertise. This can often put experts in a difficult position, as distinguished scientists are called to opine on matters that lie at the intersection between scientific knowledge, the legal document that is a patent, and the legal principles relevant to patent law, each of which can have their complexities.
[49] In the present case, the two primary scientific areas on which the experts’ views diverged related to (a) the extent to which the ToF-SIMS testing technique can yield “distortions” in a depth profile, the extent to which those distortions can be minimized, and thus its suitability for analyzing the chemical profile of the surface of metal powders; and (b) the application of certain principles of thermochemistry as they relate to the manufacturing conditions of metal powders by plasma atomization, including rates of cooling, crystalline formation, and diffusion. Differences of opinion on the former were expressed by Mr. Shallenberger and Dr. Gardella, while differences of opinion on the latter were expressed primarily by Mr. Barnes and Dr. Cima, and to a lesser extent Dr. Mostaghimi. Ultimately, I conclude that I need not resolve the evidence on these questions, given my conclusions on other issues. The aspects of the science relating to ToF-SIMS testing and the thermochemistry in powder production that are relevant to the construction, validity, and infringement issues I address below were largely uncontroversial.
[50] In the present case, each of the experts was helpful and seemed desirous of assisting the Court by sharing their knowledge and opinions as impartially as possible on matters relevant to their expertise. I do consider it worth highlighting at the outset that I found that in some areas, Dr. Mostaghimi strayed beyond his areas of expertise, notably in the analysis of ToF-SIMS oxygen profiles, and that his evidence was at times inconsistent or presented explanations that were difficult to understand. I have referred to these concerns in greater detail below as they relate to the issues raised. Similarly, Mr. Barnes had extensive experience and expertise in additive manufacturing, but occasionally strayed into areas where he had less expertise, including the limitations of ToF-SIMS as an analytical technique. Mr. Barnes’ evidence was nonetheless generally consistent and straightforward.
[51] The foregoing having been said, there were no flaws in the evidence of any of the experts that justified an overall rejection of their evidence. Each of the experts had greater knowledge and expertise than the Court on the relevant scientific and industrial issues, and assisted the Court in its task of considering how the POSITA would read and understand the patents. I have adopted certain of the opinions of each expert, particularly on issues of construction, while rejecting others, and have accepted their evidence on the scientific and interpretative issues where helpful, and discounted or rejected it where it seemed less helpful, inconsistent, or strained. The experts’ assistance has allowed me to reach my own conclusions on the relevant legal issues of construction, validity, and infringement.
III. Issues Common to the ’502 and ’236 Patents A. Principles of Patent Construction [52] A patent includes a disclosure that describes the invention and its operation, and one or more claims that set out the exclusive right claimed by the inventor: Patent Act, s 27(3)–(4). Patent protection rests on the concept of a “bargain” between the inventor and the public, the inventor agreeing to disclose their invention to the public in exchange for the exclusive right to exploit the invention for a limited time: Free World Trust at para 13.
[53] Since the claims define the monopoly protected by the patent, how they are interpreted or construed will determine the scope of the monopoly. As the Federal Court of Appeal recently reiterated, interpreting a patent is like interpreting a regulation: Biogen Canada Inc v Pharmascience Inc, 2022 FCA 143 at para 72, citing Whirlpool at para 49(e); Interpretation Act, RSC 1985, c I-21, s 2(1) (“enactment”; “regulation”). As with regulatory interpretation, claims construction is conducted in accordance with a series of principles and rules, designed to bring rigour, predictability, and fairness to the process: Free World Trust at para 31.
[54] The jurisprudence with respect to these principles establishes that the claims of a patent are to be construed:
a)through the eyes of a POSITA, in light of their common general knowledge [CGK], at the date of publication: Tearlab Corporation v I-Med Pharma Inc, 2019 FCA 179 at para 32; Free World Trust at paras 31(e), 51, 53;
b)adhering to the language of the claims, read and understood in the context of the patent as a whole including its disclosure and other claims, but without using the disclosure to enlarge or contract the monopoly as expressed in the claims: Biogen at paras 71–73; Tetra Tech EBA Inc v Georgetown Rail Equipment Company, 2019 FCA 203 at para 86; Tearlab at paras 31, 33; Whirlpool at paras 49(e)–(f), 52, 54; Free World Trust at paras 31(a)–(b); Viiv Healthcare Company v Gilead Sciences Canada, Inc, 2021 FCA 122 at paras 57–60;
c)in an informed and purposive way, in the sense the inventor is presumed to have intended and sympathetic to accomplishing the inventor’s purpose, with a mind willing to understand and not one desirous of misunderstanding: Tearlab at para 31; Free World Trust at paras 31(c), 44, 51; Whirlpool at para 49(c);
d)in a neutral manner, neither benevolent nor harsh, that achieves a result reasonable and fair to both patentee and public, and endeavouring to give effect to a construction that affords the inventor protection for that which they have actually in good faith invented, if the language of the claims can reasonably bear it: Whirlpool at para 49(g), citing Consolboard at pp 520–521; ABB Technology AG v Hyundai Heavy Industries Co, Ltd, 2015 FCA 181 at paras 37, 42–45;
e)with the goal of identifying the essential elements of the subject-matter as claimed, derived from an informed interpretation of the claims: Biogen at para 74; Free World Trust at paras 31(e), 51–60;
f)before considering infringement or validity, and adopting a single construction for all purposes without regard to whether the construction will affect those issues, although the Court may properly focus on determinative areas of disagreement, and need not construe elements over which there is no dispute, particularly in dependent claims: Whirlpool at paras 43, 49(a)–(b); Tearlab at para 34; Seedlings Life Science Ventures, LLC v Pfizer Canada ULC, 2021 FCA 154 [Seedlings (FCA)] at para 22; Cobalt Pharmaceuticals Company v Bayer Inc, 2015 FCA 116 at para 83; Swist v MEG Energy Corp, 2022 FCA 118 at paras 21–23, 30–31;
g)recognizing the inventor’s ability to define words used in the claims: Biogen at para 73; Whirlpool at paras 52, 54; Kramer v Lawn Furniture Inc, [1974] FCJ No 100 (FCTD) at para 16; and
h)with rebuttable presumptions that (i) different claims and/or claim elements are not redundant but have distinct and useful meanings (the presumption of claim differentiation); (ii) the same words have the same meaning within a claim and throughout the claims of a patent (the presumption of claim consistency); and (iii) conversely, different words have different meanings: Whirlpool at para 79; Ratiopharm v Canada (Health), 2007 FCA 83 at para 33; Seedlings (FCA) at paras 20–21, 32; Tetra Tech at paras 113–115; Nova Chemicals Corp v Dow Chemical Co, 2016 FCA 216 at para 82; Seedlings Life Science Ventures, LLC v Pfizer Canada ULC, 2020 FC 1 [Seedlings (FC)] at para 75, aff’d Seedlings (FCA); Wenzel Downhole Tools Ltd v National-Oilwell Canada Ltd, 2012 FCA 333 at paras 16–17, 52–54; Donald H MacOdrum, Fox on the Canadian Law of Patents, 5th ed (Toronto: Thomson Reuters Canada Limited, 2017) at §8:30.
[55] In the present case, there was no dispute regarding the essentiality of the elements of the claims, the experts and parties effectively agreeing that they are all essential: Corlac Inc v Weatherford Canada Inc, 2011 FCA 228 at para 26; Barnes First Report, para 23(g)(iii) (fn 2); Mostaghimi First Report, paras 64, 113; Barnes Second Report, paras 20, 34. Rather, the construction issues related to the interpr