Uponor AB v. Heatlink Group Inc.

Uponor AB v. Heatlink Group Inc.
Court (s) Database
Federal Court Decisions
Date
2016-03-16
Neutral citation
2016 FC 320
File numbers
T-496-11
Decision Content
Date: 20160316
Docket: T-496-11
Citation: 2016 FC 320
Ottawa, Ontario, March 16, 2016
PRESENT: The Honourable Mr. Justice Manson
BETWEEN:
UPONOR AB
Plaintiff
And
HEATLINK GROUP INC. AND PEXCOR MANUFACTURING COMPANY INC. AND CROSSLINK FINLAND OY AND INOEX GMBH AND INOEX LLC
Defendants
AND BETWEEN:
PEXCOR MANUFACTURING COMPANY INC. AND HEATLINK GROUP INC.
Plaintiffs by Counterclaim
And
UPONOR AB
Defendant by Counterclaim
TABLE OF CONTENTS
I. Background. 3
A. The Parties and Pleadings. 3
B. Technical and Background Information to Understanding the ‘376 Patent 6
(a) Polyethylenes & Crosslinking. 6
(b) Infrared Radiation, Equipment & Spectra. 8
II. Canadian Patent 2,232,376 (the ‘376 Patent) 8
A. Claims in Issue: 1-38 (Counterclaim relates to validity of all the Claims) 8
B. Claim Construction. 9
(a) Principles, Relevant Date. 12
(b) Claim Terms Needing Construction. 13
(i) Elimination. 14
(ii) Filtered out 14
(iii) Wavelengths corresponding to the absorption peaks of polymer material 15
(c) The Person Skilled in the Art (POSITA) 15
(d) Common General Knowledge. 16
III. Preliminary Issues. 18
A. Relevant Dates for Anticipation, Obviousness: claim date (priority documents) 18
B. Inventors’ Liability under Section 53 of the Patent Act 19
IV. Fact Witness Evidence. 21
A. Bill Gray. 21
B. David Harget 22
C. Jan Rydberg. 22
D. Michael Sjöberg. 23
E. Jan Robertson. 23
V. Expert Witness Evidence on Claim Construction and Validity. 24
A. Plaintiff’s Expert Witnesses. 24
(1) Dr. Gene Palermo. 24
(2) Dr. Robert Kimmel 27
B. Defendants’ Expert Witnesses. 35
(1) Dr. Glenn Boreman. 35
(2) Dr. John Dutcher 39
(3) Franz Seydel 42
C. Plaintiff’s Responding Reports on Validity. 45
(1) Dr. Robert Kimmel 45
(2) Dr. Mohamad Al-Sheikhly. 46
VI. Validity Analysis. 47
A. Unpatentable Subject Matter 47
B. Utility. 48
C. Insufficiency of the Disclosure. 52
D. Anticipation. 61
(1) The IR Handbook. 63
(2) Electric IR Heating. 66
(3) Polymer Processing. 66
(4) The ‘624 Patent 67
E. Obviousness. 68
VII. Expert Witness Evidence on Infringement 78
A. Plaintiff’s Expert Witnesses. 78
(1) Dr. Gene Palermo. 78
(2) Dr. Robert Kimmel 80
B. Defendants’ Expert Witnesses. 80
VIII. Infringement Analysis. 81
A. Pexcor 81
B. Heatlink. 82
C. Crosslink. 82
(1) Direct 82
(2) Indirect (Inducing) 83
D. Laches and Acquiescence. 88
E. Unclean Hands. 89
IX. Remedies. 89
JUDGMENT AND REASONS
I. Background A. The Parties and Pleadings [1] This action concerns the infringement and validity of a number of claims of Canadian Patent 2,232,376 [the ‘376 Patent].
[2] The ‘376 Patent, entitled “Method for Heating and/or Cross-Linking of Polymers and Apparatus Therefor”, relates in general terms to a uniform, fast, and contactless method of crosslinking polymers using infrared [IR] radiation, wherein the wavelengths corresponding to absorption peaks for the polymer material are eliminated in the IR radiation. The invention also relates to an apparatus used for the polymer crosslinking.
[3] The ‘376 Patent was assigned a filing date of September 20, 1996, by the Canadian Intellectual Property Office, was published on March 27, 1997, and was issued on November 19, 2002. It claims priority from three foreign applications; 9503272-8 (Sweden), filed September 20, 1985; 9600091-4 (Sweden), filed January 11, 1996; PCT/EP96/02801 (PCT), filed June 26, 1996. The ‘376 Patent continues to be in good standing.
[4] The Plaintiff in this action is a Swedish company, Uponor AB [Uponor], who is owner of the ‘376 Patent. Wirsbo Bruks AB [Wirsbo], a predecessor company to Uponor, was the first company to manufacture crosslinked polyethylene [PEX] pipes. PEX has significant product performance advantages over non-crosslinked polyethylene pipes, and is also highly marketable by virtue of it being less expensive and quicker to install than non-crosslinked polyethylene.
[5] The Defendants Pexcor Manufacturing Inc. [Pexcor] and Heatlink Group Inc. [Heatlink] are affiliated companies based in Calgary, Alberta that manufacture and sell PEX pipe. Garry Schmidt and Manfred Schmidt are the key executives for management and operations of Pexcor and Heatlink. The third Defendant, Crosslink Finland OY [Crosslink], is a Finnish company that supplies, operates, imports, services and provides support for the IR ovens used by Pexcor. Mr. Aarne Heino is the principal and sole operator of Crosslink.
[6] Uponor claims that the Defendants Pexcor, Heatlink and Crosslink have infringed certain process claims (claims 1, 2, 3, 4, 7, 8, 9, 11, 12, 13, 14, 15, 16, 17) and apparatus claims (claims 19, 22, 23, 24, 25, 26, 27, 29, 30, 32, 33, 34, 35, 36, 37, 38) of the ‘376 Patent.
[7] Between 2000 and 2012, Crosslink supplied Pexcor with six IR radiation ovens. Using the ovens, Pexcor started commercial manufacture of PEX pipe in 2003. Uponor asserts that Pexcor is unauthorized to use the patented process and apparatus in the ‘376 Patent to make PEX pipe, and thereby directly infringed the patent.
[8] Uponor asserts Heatlink is also liable for infringing the ‘376 Patent, as Heatlink markets, sells and distributes PEX pipe manufactured by Pexcor’s infringing process.
[9] Crosslink’s subcontractor attended Pexcor’s facilities in Alberta, Canada, between 2005 and 2012 to add more IR units to the crosslinking ovens. Uponor claims that Crosslink’s reconstruction of the ‘376 patented apparatus for Pexcor’s use in the ‘376 patented process renders Crosslink liable for direct infringement for having “made” the ovens in Canada.
[10] Uponor also alleges Crosslink induced infringement of the ‘376 Patent. They claim that “but-for” Crosslink’s activities, Pexcor would not have directly infringed the patent’s process and apparatus claims. Crosslink provided Pexcor with instructions, advice, services, warranties and training, which enabled Pexcor to achieve the desired crosslinking of polyethylene by using the ‘376 Patent process. Uponor claims this infringement was knowingly induced by Mr. Heino of Crosslink.
[11] The Defendants denied all allegations of infringement and counterclaimed, challenging the validity of all 50 claims of the ‘376 Patent on the basis of anticipation and obviousness, insufficiency of description and indistinct claims, lack of utility, overbreadth, unpatentable subject matter and non-entitlement to priority claims. They also alleged the ‘376 Patent is void under section 53(1) of the Patent Act, RSC 1985, c P-4, on the basis that untrue material allegations were wilfully made for the purpose of misleading during the prosecution of the ‘376 Patent.
[12] Pexcor and Heatlink also allege Uponor is guilty of laches and acquiescence in bringing the action, as Uponor knew or ought to have known that manufacture by Pexcor and sale by Heatlink commenced in 2003. Uponor formed the belief the ‘376 Patent was being infringed in 2005, yet did nothing to raise allegations of infringement until commencement of this action in January 2011.
B. Technical and Background Information to Understanding the ‘376 Patent [13] The experts provided technical and background information they considered important for understanding the ‘376 Patent in context, and which they find would have been known by a person of skill in the art [POSITA] at the relevant time.
(a) Polyethylenes & Crosslinking [14] Polyethylenes are repeating units of two carbons and four hydrogens. They have diverse applications by virtue of their good thermal insulating properties, tensile strength, and relatively low melting points. The type of polyethylene used for a given application depends on how their repeating units are arranged. High density polyethylene [HDPE] is used in pipe manufacture, and is characterized by a high number of densely-packed polyethylene chains that form crystalline structures resulting in greater stiffness, strength and superior barrier properties.
[15] Crosslinking of polyethylene causes bond formation between adjacent polymer chains, which restricts the movement of chains relative to each other, resulting in increased strength, chemical, and heat resistance as compared to un-crosslinked polyethylene.
[16] There are several ways to crosslink polyethylene. The ‘376 Patent specification states the process taught in the patent is faster and provides superior quality products than previously widely-used polyethylene crosslinking processes: the Engel method and PEXEP Process.
[17] The Engel method, developed in the early 1970’s, involves mixing polyethylene resin pellets with organic peroxides prior to heating and extrusion. The ‘376 Patent varies this method by using IR radiation as the heat source.
[18] In the PEXEP process, an extruded tube of polyethylene is heated by direct contact with heated wheels in order to initiate crosslinking. The background description of the ‘376 Patent invention states the disadvantages of the PEXEP process are reduced dimensional stability, inferior surface quality and non-uniform crosslinking throughout the entire tube wall.
(b) Infrared Radiation, Equipment & Spectra [19] IR radiation is a type of electromagnetic radiation. It is used in a wide variety of industrial equipment to heat, cure or dry products. Such equipment usually permits temperature regulation of the IR-generating source, which correlatively adjusts the desired wavelengths transmitted. IR radiation follows a characteristic distribution of wavelengths: shorter wavelengths [short-wave IR] are emitted at higher temperatures and longer wavelengths [long-wave IR] are emitted at lower temperatures.
[20] A material’s molecular structure causes it to better absorb different wavelengths of IR radiation, referred to as a material’s absorption profile. The IR spectrum for a given material, measured using IR spectroscopy, can be shown as a plot of either absorbance or transmittance versus wavelength. Polyethylene optimally absorbs IR radiation at 3.2 to 3.6 microns [µm], 6.6 to 6.8 µm (the absorption peaks).
II. Canadian Patent 2,232,376 (the ‘376 Patent) A. Claims in Issue: 1-38 (Counterclaim relates to validity of all the Claims) [21] A short description of the alleged inventive concept of the ‘376 Patent is set out in pages 4 to 5 of the specification:
The object of the present invention is to set forth a process and an apparatus making possible a fast, contactless and uniform heating of a polymer or polymer mix (which in the following will be called polymer material), inter alia for cross-linking, so that manufacture of objects made of cross-linkable polymers can be carried out at high speeds and with a good surface finish.
In accordance with the invention this is achieved in that the polymer material is irradiated with infrared radiation having wave lengths which differ from the wave lengths which are absorbed by the polymer material in question. This means that the infrared radiation penetrates through the polymer and in this way quickly heats the moulding throughout its entire thickness. In cross-linking this means that a high speed of manufacture is made possible. Since the heating is carried out by means of infrared radiation the heating can be done entirely without contact, which results in a high surface finish. In a preferred embodiment, primarily used for cross-linking after extrusion, the zone with infrared radiation is arranged in a vertical direction from the extrusion nozzle, preferably upwardly, so that the moulding after the extrusion is fed vertically upwards through the said zone. Because of the fast and uniform heating the cross-linking proceeds quickly and the extruded moulding rapidly retains a high rigidity (that is the material in the body or moulding passes from having been mainly viscous to being mainly visco-elastic). Since the cross-linking zone at the same time can be made short this results in that the risk for deformation or local thickening due to vertical yielding caused by gravitational forces will be small. Both the dimensional and the thermal stability thus will be high. To the extent peroxide for instance is used as a cross-linking agent, the agent does not have time to evaporate from the surface.
The above-mentioned objects of the invention are also achieved by means of an apparatus for heating mouldings provided with at least one zone with at least one source of infrared radiation, particularly for cross-linking of polymers which are cross-linkable by means of heat, the infrared radiation having wave lengths that mainly differ from the absorption peaks of the polymer in question.
B. Claim Construction [22] The two independent claims that are the focus of this action are claims 1 and 19:
a) Claim 1:
• Process for heating a polymer material, comprising irradiation of said polymer material with infrared radiation, wherein wave lengths corresponding to the absorption peaks for the polymer material in respect of infrared radiation, have been eliminated in the infrared radiation irradiating the polymer material.
b) Claim 19:
• Apparatus for heating polymer material, comprising at least one zone with at least one source of infrared radiation for Irradiation of the polymer material with infrared radiation in which the wave lengths corresponding to the absorption peaks of the polymer material in respect of infrared radiation have been eliminated.
[23] While claim 1 covers a process for heating a polymer material and claim 19 covers an apparatus for heating a polymer material, the essential features defining the invention claimed are the same:
a) irradiation of the polymer material with IR radiation;
b) such that the wavelengths corresponding to the absorption peaks for the polymer material in respect of the IR radiation have been eliminated.
[24] Claim 19 requires that the apparatus used have at least one zone with one source of the IR radiation.
[25] A useful diagram of an embodiment of the process covered by narrower claims is shown in Figure 1 of the ‘376 Patent (labelling added):
[26] The process, commencing at the left of the above diagram, is as follows: the peroxide (3) and polymer (2) are mixed in a hopper, and then enter the extruder. The extruded polymer pipe (4) then travels around a wheel and is directed 90° upwards through four IR zones (7, 8), it then turns 180° over and around a large wheel at the top (9), and travels vertically downwards through a further four IR zones (10, 11). The pipe is then guided by another wheel (12) to make another 90° turn and enters a water bath (13) to cool and calibrate the pipe. Additional coatings are added, the pipe travels through a second water bath and is finally coiled, cut and bundled (15).
[27] Figure 4 of the ‘376 Patent depicts the IR absorption profile of polyethylene. The large dips (labelled A and B) portray polyethylene’s main absorption peaks at 3.3 to 3.6 µm and 6.6 to 6.7 µm. It was the topic of much discussion at trial and is included herein for ease of reference:
[28] While there are multiple claim dependencies, necessitating a claim by claim analysis for purposes of determining both the validity and infringement issues, the Expert Report of Dr. Kimmel on behalf of the Plaintiff provided a useful grouping of the general types of claims:
a) Group A (claims 1, 4-7, 14, 18, 19, 24, 28, 29-32, 38, 47-50): relates to irradiating polymer material with IR radiation in which absorption peaks of the polymer material have been eliminated. Dr. Kimmel included in this group dependent claims describing additional subject matter for use in manufacturing, such as use of reflecting devices, use of inert gases such as nitrogen, and the manufacture of oriented pipe and composite pipes;
b) Group B (claims 2, 3, 26, and 37): relates to elimination using filters;
c) Group C (claims 33, 34): relates to elimination using IR lamps;
d) Group D (claim 22): involves regulating IR radiation to achieve the desired degree of crosslinking;
e) Group E (claims 8-13): relates to the use of polyethylene, organic peroxides or azo-compounds as crosslinking additives, and to specific wavelengths;
f) Group F (claims 15-17, 23, 25-27, 35): relates to the continuous extrusion of pipe, fed vertically through IR zones;
g) Group G (claims 20-21): relates to a transparent forming tool for shaping the polymer product;
h) Group H (claims 39-46): relates to processes and products to recondition pipes.
[29] The Plaintiff of course argues that all of the claims asserted are valid and infringed. However, if the Court is to find that independent claims 1 and 19 are invalid, the Plaintiff asserts that at least the claims relating to vertical orientation within the manufacturing process (some of the Group F claims above), although built up from multiple claim dependencies, are nevertheless valid and infringed.
(a) Principles, Relevant Date [30] The relevant date for construing claims is the date of publication of the ‘376 application, March 27, 1997. Construction is a question of law for the Court and should be done before considering infringement or validity; the same issues of construction apply for both validity and infringement (Pfizer Canada Inc v Canada (Minister of Health), 2005 FC 1725 at para 10, aff’d 2007 FCA 1).
[31] The parties agree that the canons of claim construction have been determined in the leading Supreme Court of Canada decisions of Whirlpool Corp v Camco Inc, 2000 SCC 67 at paras 49-55 [Whirlpool]; Free World Trust v Électro Santé Inc, 2000 SCC 66 at paras 44-54 [Free World Trust]; and Consolboard Inc v MacMillan Bloedel (Saskatchewan) Ltd, [1981] 1 SCR 504 at para 27 [Consolboard]. They are:
a) Claims are to be read in an informed and purposive way with a mind willing to understand, viewed through the eyes of a POSITA as of the date of publication having regard to the common general knowledge;
b) Adherence to the language of the claims allows them to be read in the manner the inventor is presumed to have intended and in a way that is sympathetic to accomplishing the inventor’s purpose, which promotes both fairness and predictability;
c) The whole of the specification should be considered to ascertain the nature of the invention, and the construction of claims must be neither benevolent nor harsh, but instead should be reasonable and fair to both the patentee and the public.
[32] While experts may aid the Court in construing terms or elements of the claims, that assistance is only necessary when the Court deems it helpful or useful to do so – if the meaning of terms is evident from the patent specification, the Court does not need the advice of experts.
(b) Claim Terms Needing Construction [33] While there were a number of opinions expressed by the parties’ experts on the meaning of terms used in the claims of the ‘376 Patent, as discussed below in reviewing the experts’ evidence, the terms that introduce some question as their meaning are: (i) “elimination”, as used in claims 1 and 19; (ii) “filtered out”, as used in claims 2 and 3; and (iii) wavelengths corresponding to the absorption peaks of the polymer material.
[34] There was some divergence in opinion around “polymer material” and “filters”, however, I do not find the experts’ views necessary to help the Court define or construe these terms.
(i) Elimination [35] Independent claims 1 and 19 refer to “elimination” of the wavelengths corresponding to the absorption peaks (also identified as “bands”) of polymer material.
[36] The experts all agreed that elimination does not mean complete elimination or the absence of any IR wavelengths corresponding to the absorption peaks of the polymer material being irradiated. Some absorption is necessary to sufficiently heat the polymer in order for crosslinking to occur. It is agreed that eliminated means that the IR radiation wavelengths corresponding to the absorption peaks of the polymer are substantially reduced. What constitutes a “substantial reduction” is not disclosed in the patent, is disputed, and is analyzed below.
(ii) Filtered out [37] Claims 2 and 3 refer to the wavelengths corresponding to the absorption peaks for the polymer material being “filtered out”.
[38] The specification teaches two ways of achieving elimination of the wavelengths corresponding to the absorption peaks. One way is to place filters between the IR sources and the object being irradiated, such as polyethylene pipes. Filters work by either reflecting away the undesired wavelengths, or by absorbing them before they can reach the target surface. The ‘376 Patent’s examples of possible filters are silica glass (SiO2), Pyrex or Crown glass.
[39] The other manner of eliminating wavelengths corresponding to a polymer’s absorption peaks is by using IR radiation having a wavelength substantially located at 1.2 µm.
[40] The parties’ experts disagreed on what a POSITA of the ‘376 Patent would understand when reading the specification and the use of “filtered out” in claims 2 and 3. I find that the ‘376 Patent clearly specifies that using the four types of filters disclosed should enable a POSITA to achieve the elimination of wavelengths corresponding to the absorption peaks of polymer material – which simply is not the case. I will discuss this issue further below.
(iii) Wavelengths corresponding to the absorption peaks of polymer material [41] A POSITA at the date of publication of the ‘376 Patent would understand from the specification that by referring to “absorption peaks” the inventors are concerned with the primary absorption peaks of polymers at about 3.2-3.6 µm and 6.6-6.8 µm.
[42] Defence expert, Dr. Dutcher, argued that absorption peaks at wavelengths around 1.5 to 1.7 µm are omitted from Figure 4 of the patent (see Figure 4 above), and that the alleged elimination or substantial reduction of absorption peaks in the patent is thus misleading. I disagree. The evidence shows that the primary absorption peaks for polymers are at the two wavelength ranges of 3.3-3.6 µm and 6.6-6.7 µm, as discussed more fully below, and that this would form part of the common general knowledge of a POSITA at the relevant time.
(c) The Person Skilled in the Art (POSITA) [43] The parties’ experts generally agreed on who the POSITA would be as addressee of the ‘376 Patent. In terms of education, the POSITA would require a university bachelor’s degree or a technical school diploma. In terms of work experience, the POSITA would have industrial experience in polymer processing and/or pipe manufacture.
[44] However, the experts disagreed on the extent of knowledge the POSITA would have relating to IR radiation and details of IR lamp construction. While the Plaintiff’s experts agreed that the POSITA would know fundamentals of IR radiation, Dr. Boreman on behalf of the Defendants stated that the POSITA requires a higher level of IR science and optics to be able to practice the invention upon reading the ‘376 specification.
[45] I find that the POSITA, in order to understand and be able to follow the specification and claims of the ‘376 Patent and thereby be enabled to practice the ‘376 invention, would:
a) have a university bachelor’s degree or technical degree or diploma in industrial chemistry, polymer chemistry or polymer science;
b) have knowledge of polymer processing and extrusion of polymer products;
c) know how to use IR radiation in processing polymers with 3 to 5 years industrial experience, to the extent there is a basic understanding of IR apparatus used for crosslinking polymers; and
d) know how to calculate a polymer’s IR absorption profiles at different wavelengths, through personal knowledge or by accessing relevant reference materials available at the publication date.
(d) Common General Knowledge [46] Common general knowledge is the knowledge generally known by the POSITA at the relevant time. It includes what the POSITA may reasonably be expected to know and be able to find out. One must assess what knowledge the POSITA would have obtained through a reasonably diligent search conducted using the means available at the relevant time.
[47] A POSITA’s common general knowledge cannot be assumed but must be proven with fact evidence on a balance of probabilities.
[48] In Eli Lilly & Co v Apotex Inc, 2009 FC 991 at para 97, Justice Gauthier adopted with approval the comprehensive description of common general knowledge from General Tire & Rubber Co v Firestone Tyre & Rubber Co, [1972] RPC 457 (UKHL) at 482-483:
a) The common general knowledge imputed to such an addressee must, of course, be carefully distinguished from what in patent law is regarded as public knowledge;
b) Common general knowledge is a different concept derived from a common sense approach to the practical question of what would in fact be known to an appropriately skilled addressee - the sort of man, good at his job, that could be found in real life;
c) Individual patent specifications and their contents do not normally form part of the relevant common general knowledge, though there may be exceptions.
d) Regarding scientific papers generally:
i. It is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, or in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates;
ii. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated;
iii. Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art;
iv. It is difficult to appreciate how the use of something which has in fact never been used in a particular art can ever be held to be common general knowledge in the art.
[49] I agree. In this case, based on the evidence before the Court, a POSITA would have understood the following as the common general knowledge at the relevant dates for claim construction and for consideration of validity:
a) the features of polymers at a molecular level, including knowing which polymer formulations are suitable for particular purposes (such as using HDPE for pipe manufacture) and what happens upon crosslinking of polymers;
b) the various methods used to manufacture extruded polymer products generally (not solely in relation to the pipe industry);
c) that IR radiation can be used in manufacturing of polymers;
d) that sources of IR radiation emit a distribution of wavelengths which peak in intensity in a given area depending on the temperature of the IR source, and that the peak intensity shifts towards shorter IR wavelengths as temperatures rise;
e) the characteristic distribution curve of IR radiation, which illustrates that there is less transmittance of wavelengths further from the peak of the curve;
f) that each polymer, depending on its molecular structure, will absorb certain IR wavelengths, known as the polymer’s characteristic absorption profile;
g) how to determine the characteristic absorption profile for any specific polymer;
h) that IR absorbed at the surface of a polymer would lead to localized and non-uniform heating of the polymer; and
i) to use IR radiation that would not be absorbed only at the surface, but which rather penetrates the polymer to achieve uniform heating.
III. Preliminary Issues A. Relevant Dates for Anticipation, Obviousness: claim date (priority documents) [50] The Claim Date for each claim in the PCT application which was granted as the ‘376 Patent is the relevant date for prior art references for consideration of anticipation and obviousness.
[51] The ‘376 Patent was issued in Canada following national entry of PCT Application SE 1996/001169, which was filed on September 20, 1996, in Sweden. This PCT application claimed priority from three earlier Uponor patent applications filed on the following dates:
a) 9503272-8 (Sweden), filed September 20, 1985;
b) 9600091-4 (Sweden), filed January 11, 1996;
c) PCT/EP96/02801 (PCT), filed June 26, 1996.
[52] The legal test governing priority claims to earlier filed applications is set out in section 28.1 of the Patent Act. This section states that the date of a claim in an application [the Claim Date] is the filing date of the application (defined in section 28), unless a proper request for priority to one or more earlier patent applications has been made. To qualify, the request for priority must have (i) been made within 12 months of the earlier application, and (ii) the subject matter defined by the claim in the application at the time of the national entry in Canada must have been disclosed in the earlier filed application(s).
[53] I have reviewed the subject matter of the priority applications relied upon by the Plaintiff and find that the claim for priority in respect of the claims in issue, as asserted by the Plaintiff, claims 1 to 4, 7 to 9, 11, 12, 14 to 17, 19, 22 to 27, 29, 30 and 32 to 38, is not justified. There is no disclosure of the irradiation of polymer material with IR radiation wherein the wavelengths corresponding to the absorption peaks for the polymer material have been eliminated, essential elements of independent claims 1 and 19 and all dependent claims thereon. The relevant claim date for obviousness and anticipation is therefore September 20, 1996.
[54] However, I agree with the Plaintiff that the application of a claim date of September 20, 1995, or September 20, 1996, is of no consequence, as no prior art relied upon by the Defendants fall within that window.
B. Inventors’ Liability under Section 53 of the Patent Act [55] The Defendants, Pexcor and Heatlink, have alleged that the ‘376 Patent is void, as the request for national phase entry date of March 18, 1998, contains untrue material allegations wilfully made for the purpose of misleading. In particular, that the inventors (Sjöberg, Rydberg, and Järvenkylä), the applicant (Uponor B.V.), and all other entities claiming an ownership interest in the ‘376 Patent prior to its date of issuance, knew or were reckless in not knowing that the priority applications did not disclose the subject matter defined by any of the claims of the ‘376 Patent, as issued or as pending at any time.
[56] For a patent to be void under subsection 53(1) of the Patent Act, the Court must find that there is an untrue allegation made in the petition, that it is material, and that was willfully made for the purpose of misleading:
53 (1) A patent is void if any material allegation in the petition of the applicant in respect of the patent is untrue, or if the specification and drawings contain more or less than is necessary for obtaining the end for which they purport to be made, and the omission or addition is wilfully made for the purpose of misleading.
[57] I agree with the Plaintiff that the Patent Act explicitly contemplates that the allegation must be made by the application. The inventors of the ‘376 Patent, Sjöberg, Rydberg, and Järvenkylä, were never “applicants” and as such, no duty is imposed against them (Ratiopharm Inc v Pfizer Ltd, 2009 FC 711 at para 115).
[58] In any event, the inventors were not involved in patent drafting. The evidence shows that:
a) Sjöberg testified he had no role in selecting the priority applications;
b) the Defendants dropped this allegation against Rydberg prior to his testimony; and
c) Järvenkylä may have had some input at the time, but would not have had the authority to make the final decision.
[59] For an allegation to be material it must somehow affect how the public makes use of the invention taught by the ‘376 Patent. The only effect of an improper priority claim in this case would be that the applicant would not be entitled to the benefit of the earlier claim date of September 20, 1995, and instead the claim date would be September 20, 1996. This would not and does not impact how the public would make use of the invention.
[60] As was held by Justice Thurlow in Canadian Marconi Co v Vera Prinzen Enterprises Ltd (1964), 46 CPR 97 at 141 (Ex Ct), an improper claim to convention priority based on a U.S. application was not a material allegation in the petition which renders the patent void.
[61] As well, there is no evidence before the Court to suggest that the priority dates claimed were made with any intent or purpose to mislead the Canadian public.
[62] Moreover, the Defendants should have known that the inventors were not responsible for the claims to priority in the ‘376 Patent application.
[63] This is not a case where the inventors are the applicants and responsible for preparing and filing the application for the ‘376 Patent, which might in some cases lead to potential liability for an individual inventor under section 53.
[64] To the contrary, the applicant is a sophisticated company who in the normal course employs qualified patent agents or counsel to prepare such an application. To impute liability on the inventors in this case defies logic or reasonableness. Consequences must flow in terms of costs against the Defendants on this front.
IV. Fact Witness Evidence A. Bill Gray [65] Bill Gray has been the President of Uponor North America since February 2012. In this role, he oversees sales marketing and overall performance of all North American operations. Mr. Gray is also a member of the Executive Committee of Uponor Corporation, where he makes decisions relating to the brand, technology and people strategy. Mr. Gray testified that the North American Uponor plants use the Engel method or a modification thereof for manufacturing PEX pipe. The ‘376 Patent technology is only used by the Uponor plants in Sweden and Poland. Mr. Gray also testified that Uponor AB holds the ‘376 Patent rights.
B. David Harget [66] Dr. David Harget is the VP of Standardization for the Uponor Group. He has a Bachelor’s degree in chemistry, a Master’s of Polymer Science, a PhD in Polymer Chemistry and 40 years of industry experience. In or around 2006, Mr. Harget was the VP of Technology for Uponor Group and was indirectly involved in the commercialization of the invention taught in the ‘376 Patent. He testified he reviewed disclosures of possible patentable inventions to decide whether to proceed with patents, but the ultimate patent decisions were made at an executive level. Mr. Harget wrote an article in 1992 regarding the performance characteristics of PEX pipe, which would have been read by people in the field. The article states that a major area of application of PEX is in the power cable industry, which Mr. Harget stated he learned from a review of the literature for the use of PEX at that time.
C. Jan Rydberg [67] Jan Rydberg, a named co-inventor of the ‘376 Patent, has an engineering degree and a Master’s of Science in material technology. He began working for Wirsbo in 1995 as a Development Engineer, where he reported to Michael Sjöberg as member of the High Speed PEX Project development team that developed the ‘376 Patent. His job on the team was to find equipment for trial runs that were carried out in Finland and which measured speed, efficiency and crosslinking achieved. He testified that the vertical orientation of the IR lamps was Mr. Sjöberg’s idea. Mr. Rydberg did not know the whereabouts of notes and trial reports relating to the development of the ‘376 invention. In fact, there is no evidence at all with respect to what happened to lab books, trial reports, or any other documents relating to the invention’s development.
D. Michael Sjöberg [68] Michael Sjöberg is a named co-inventor of the ‘376 Patent. He has a Master’s of Science in polymer processing and an MBA. He began working for Wirsbo as a Development Engineer in 1990, and his initial work involved developing new methods for making PEX pipes. Mr. Sjöberg was the project leader on the High Speed PEX Project that led to the ‘376 invention. He testified that during development of the ‘376 technology, he, and a team of five or six others working on trials kept daily notes and made quarterly and monthly reports, comprising approximately a meter high of lab notebooks. They were not produced in evidence and he has no idea what happened to them. He was not involved in the patent drafting and had no role in selecting the priority applications; Mr. Järvenkylä was responsible for the patent activities involving the ‘376 invention. Mr. Sjöberg left Uponor in 2001.
E. Jan Robertson [69] Jan Robertson was the sole fact witness called by the Defendants. He has held various roles at Infrarodteknik AB [IRT], a specialized short-wave IR supplier, between 1979 and 2001. IRT purchased their IR lamps from Philips, which are referenced in the IR Handbook – a document he and others at IRT referred to often in the course of their work. He testified that IRT provided monocassettes and technical support to Aarne Heino (Crosslink). He does not know what information Mr. Heino then conveyed to Pexcor in Canada.
V. Expert Witness Evidence on Claim Construction and Validity [70] All of the expert witnesses were provided with the relevant tests for claim construction for Canadian patents based on the Supreme Court of Canada decisions in Free World Trust, above, and Whirlpool, above, as instructed by counsel. They were also instructed on patent infringement and validity based on relevant patent law in Canada.
[71] The expert evidence regarding validity centered on issues of utility, breadth of claims, sufficient disclosure and anticipation and obviousness. In addressing both anticipation and obviousness the Defendants relied on the following four references:
a) United States Patent No. 4,234,624 (1980) [the ‘624 Patent];
b) The IR Handbook published by Philips (1974) [the IR Handbook];
c) Electric Infra-Red Heating for Industrial Purposes, O’Connell JR et al (1989) [Electric IR Heating];
d) Polymer Processing: Principles and Design Baird Chapter 15 – Plastic Extrusion Technology (1995) [Polymer Processing].
A. Plaintiff’s Expert Witnesses (1) Dr. Gene Palermo [72] Dr. Palermo is a polymer chemist who has worked in the plastic pipe industry for over 40 years. He obtained a BSc in Chemistry in 1969, and a PhD of Analytical Chemistry from Michigan State in 1973. His industry experience encompasses manufacturing, formulation, testing, standards, technical and regulatory approvals and marketing new plastic piping materials. He was also Technical Director of the Plastic Pipes Institute (PPI) and is currently an independent consultant in the plastics pipe industry.
[73] Dr. Palermo has been qualified as an expert in plastic pipes, including material used to make pipes, technical characteristics and standards for pipe, pipe manufacturing and IR spectroscopy for polymer pipes.
[74] In Dr. Palermo’s opinion, the invention of the ‘376 Patent relates to a process and apparatus for a “fast, contactless, and uniform heating” of a polymer or polymer mix using IR radiation with wavelengths which differ from the wavelengths that are absorbed by the polymer. The patent describes that the IR radiation zones are oriented vertically to reduce deformation due to gravitational forces.
[75] Dr. Palermo interprets the term “elimination” of wavelengths (in claims 1 and 19) corresponding to the absorption peaks as not requiring complete absence of those wavelengths, but rather a substantial reduction. He testified that the skilled person would know the wavelengths have been “eliminated” in accordance with the ‘376 Patent if the IR radiation intensity were reduced by 50%.
[76] He interprets that “filtered out” in the ‘376 Patent indicates using filters between the IR source and the object being irradiated to help