Georgetown Rail Equipment Company v. Rail Radar Inc.

Georgetown Rail Equipment Company v. Rail Radar Inc.
Court (s) Database
Federal Court Decisions
Date
2018-01-31
Neutral citation
2018 FC 70
File numbers
T-896-15
Decision Content
Date: 20180131
Docket: T-896-15
Citation: 2018 FC 70
Ottawa, Ontario, January 31, 2018
PRESENT: The Honourable Mr. Justice Fothergill
BETWEEN:
GEORGETOWN RAIL EQUIPMENT COMPANY
Plaintiff
Defendant by Counterclaim
and
RAIL RADAR INC. AND TETRA TECH EBA INC.
Defendants
Plaintiffs by Counterclaim
PUBLIC JUDGMENT AND REASONS
(Confidential Judgment and Reasons issued on January 25, 2018)
Table of Contents
I. Glossary of Terms 4
II. Overview 6
III. Background 8
A. Parties 8
B. Pleadings and History of the Proceeding 8
IV. The 082 Patent 9
V. The 249 Patent 11
VI. Claims in Issue 12
VII. Issues 18
A. Validity 18
B. Infringement 18
VIII. Evidence 19
A. Fact and Expert Witnesses 19
B. Observations Regarding the Evidence 19
IX. Claims Construction 20
A. Legal Principles and Relevant Dates 20
B. Person of Ordinary Skill in the Art 21
C. Common General Knowledge of the POSITA 23
(1) Preliminary objection by Georgetown 24
(2) Analysis 26
D. Claim Terms Needing Construction 33
(1) “frame” 33
(2) “analyzing a frame of the plurality of images” 34
(3) “region of interest” 35
(4) “contour” 35
(5) “actual delta” 36
X. Validity 37
A. Legal Principles 37
B. Developments Leading to the Patents 39
C. The POSITA and Common General Knowledge 41
D. Inventive Concepts of the Patents 41
E. Differences between the Prior Art and the Inventions 45
F. Whether the Differences were Obvious or Required Invention 48
XI. Infringement 52
A. Legal Principles 52
B. Infringement by Common Design 53
C. Essential Elements 54
D. Analysis 54
(1) analyzes “a frame”, “at least one image”, and/or “a frame of the plurality of images” 54
(2) determines crosstie and tie plate contour 57
(3) uses an ROI 58
(4) compares the orientations of crosstie and tie plate contours 60
(5) determines an actual delta between the rail base and the crosstie 61
XII. Conclusion 63
I. Glossary of Terms
[1] Rail: train wheels run on two rails made of steel. Sections of rail vary in length. The ends of the sections generally abut one another. Due to expansion and contraction during different seasons, the gap between the rails may contract and expand. This gap gives rise to the characteristic “clickety-clack” sound of trains.
[2] Rail base: the rail base is the base of the rail.
[3] Rail head: the rail head is the top of the rail.
[4] Crosstie: rails are supported by cross pieces known as crossties (or ties or sleepers) that are generally perpendicular to the rails. These cross pieces are typically made of wood or concrete.
[5] Tie plate: the tie plate is a rectangular piece of steel on which the rail base sits. It rests on and is attached to the crosstie. The tie plate distributes the forces from the rail base to the area of the crosstie below the tie plate.
[6] Rail pad: when concrete crossties are used, the rail base rests on a rail pad, which rests on the top surface of the concrete crosstie. The rail pad provides a layer of protection between the rail base and the concrete crosstie surface. It is usually made of a polymer.
[7] Rail seat: in the context of concrete crossties, the rail seat is the area of the crosstie beneath the rail base.
[8] Fasteners: the tie plate is normally secured to the crosstie with fasteners, which can be spikes, or various screws, clips and clamps.
[9] Ballast: the crossties usually sit upon a bed of stones of a specific shape and size, called the ballast. The ballast supports the ties, plates/pads, rails and fasteners. It facilitates rainwater drainage, and provides a buffer against the encroachment of vegetation into the track area.
[10] Sunken tie plate: a tie plate is sunken when it has worn down the crosstie beneath it so that its lower surface is below the adjacent top surface of the crosstie. This is also referred to as plate cut.
[11] Misaligned tie plate: a misaligned tie plate usually occurs when a spike is loose or missing, thereby allowing the tie plate to rotate out of alignment with the rail.
[12] Rail seat abrasion: in the context of concrete crossties, rail seat abrasion occurs when rail vibration caused by trains wears down the rail pad and, once the rail pad is worn away, the top of the crosstie.
II. Overview
[13] Canadian Patent 2,572,082 [082 Patent], titled “System and Method for Inspecting Railroad Track”, was issued to the Plaintiff and Defendant by Counterclaim, Georgetown Rail Equipment Company [Georgetown], on January 25, 2011. The patent application was open to public inspection as of January 12, 2006. The 082 Patent relates generally to a system and method for inspecting railroad track. It uses lasers, cameras and a processor to capture and analyze images of the railroad track in order to determine the distance between crossties, and detect misaligned or sunken tie plates.
[14] Canadian Patent 2,766,249 [249 Patent], titled “Tilt Correction System and Method for Rail Seat Abrasion”, was issued to Georgetown on November 5, 2013. The patent application was open to public inspection as of December 29, 2010. The 249 Patent relates generally to a system and method for determining rail seat abrasion of a railroad track. It uses lasers, cameras and a processor to determine whether rail seat abrasion is present along the track.
[15] According to Georgetown, this case relates to systems and methods for determining the degree of wear of a wooden tie under a tie plate (the 082 Patent) and the degree of wear of a pad or a concrete crosstie under a rail (the 249 Patent). Both phenomena are hidden from view from above, because they occur underneath components that are visible from above. Both patents claim to solve this problem by comparing the height of the tie with the height of another track component: the tie plate and rail base, respectively. The 249 Patent also includes an algorithm for increasing the accuracy of the rail seat abrasion measurement by accounting for tilt.
[16] The Defendant and Plaintiff by Counterclaim, Tetra Tech EBA Inc [Tetra], has developed a system for inspecting railroad track which it calls the Three Dimensional Track Assessment System [3DTAS]. The 3DTAS is mounted on a rail car that moves along a railroad track. The system positions two lasers adjacent to the railroad track. It uses algorithms to analyze the features of a railroad track bed, including crossties, rails, rail bases, fasteners, ballast and spikes. These features are displayed on a three dimensional [3D] elevation map. Geographical location data may be identified using a Global Positioning System [GPS] receiver or an encoder. Tetra entered into an agreement to provide the 3DTAS and processing services to Canadian National Railway [CN], but ceased providing any services once this litigation was commenced.
[17] Tetra says that the 3DTAS infringes neither the 082 Patent nor the 249 Patent. Tetra has also challenged the validity of both Patents on the ground of obviousness.
[18] For the reasons that follow, I find that the 082 and 249 Patents are not invalid on the ground of obviousness. The identification of the particular problems, and the use of machine vision and specified calculations as possible solutions, required invention and were not obvious as of the relevant dates.
[19] The essential elements of the relevant 082 and 249 Patent claims are also present in the 3DTAS. Tetra’s sale of the 3DTAS to CN and its support of the system therefore infringed both Patents.
III. Background
A. Parties
[20] Georgetown is a corporation organized and existing under the laws of the State of Texas, United States of America [US]. Georgetown provides track inspection services to numerous clients across North America, including most of the major railway companies.
[21] The Defendant Rail Radar Inc [Rail Radar] is a corporation organized and existing under the laws of the Province of Alberta. Rail Radar has not participated in this proceeding in any way, and its current status is unknown. Georgetown is not seeking relief against Rail Radar.
[22] Tetra is a corporation organized and existing under the laws of the Province of Alberta. Tetra provides services in various areas of transportation engineering, including infrastructure management and data collection for owners and operators of transportation infrastructure.
B. Pleadings and History of the Proceeding
[23] Georgetown’s initial Statement of Claim was filed on May 29, 2015. Georgetown alleged infringement of approximately 55 claims of the 082 Patent and three claims of the 249 Patent, and sought an injunction, and damages or an accounting of profits.
[24] On July 15, 2015, Tetra filed its initial Statement of Defence denying liability. Georgetown filed its initial Reply on July 27, 2015.
[25] On May 26, 2016, Tetra filed its Amended Defence and Counterclaim, alleging that the 082 Patent and the 249 Patent are invalid due to obviousness.
[26] This proceeding was bifurcated by order of Prothonotary Kevin Aalto dated May 30, 2016. These reasons for judgment concern only the Liability Phase of the proceeding.
[27] On June 16, 2016, Georgetown filed its Amended Reply and Defence to Counterclaim, maintaining that the 082 Patent and the 249 Patent are valid and enforceable.
[28] On June 20, 2017, Georgetown filed a Fresh as Amended Statement of Claim, in which Georgetown no longer alleged infringement of the 082 Patent claims that relate to detecting the distance between crossties, or the breaks in a rail.
[29] Tetra filed its Re-Amended Statement of Defence on July 20, 2017.
[30] Georgetown filed its Further Amended Reply and Defence to Counterclaim on August 18, 2017.
IV. The 082 Patent
[31] The 082 Patent describes the field of invention as follows:
The present invention relates generally to a system and method for inspecting railroad track and, more particularly to a system and method for inspecting aspects of a railroad track using a laser, camera, and a processor.
[32] The “Background of the Invention” states that the majority of crossties in service are made of wood. Various other materials may be used, such as concrete, steel and composite or recycled materials, but these alternatives make up a relatively small percentage of all crossties. Over time, environmental factors may cause crossties to deteriorate until they must be replaced. Several million crossties are replaced in North America each year.
[33] The 082 Patent notes that railroad inspectors attempt to grade the condition of crossties and fastener systems on a regular basis. This grading is most often done with a visual inspection to identify crossties and fasteners that are rotten, broken, split or worn to an extent that their serviceable life is at its end. The process of visual inspection is time-consuming. In practice, inspection of the track is performed by an inspector walking along the track to inspect and record the conditions of the crossties and/or fasteners, which are spaced approximately every 20 inches along the track. According to one North American railway company, a crew of three or four inspectors can grade only between five and seven miles of track each day. The invention disclosed in the 082 Patent is intended to overcome, or at least reduce, this logistical challenge.
[34] The “Summary of the Disclosure” of the 082 Patent describes a system and method for inspecting railroad track components:
The disclosed system includes lasers, cameras, and a processor. The lasers are positioned adjacent to the track. The laser emits a beam of light across the railroad track, and the camera captures images of the railroad track having the beam of light emitted thereon. The processor formats the images so that they can be analyzed to determine various measurable aspects of the railroad track. The disclosed system can include a GPS receiver or a distance device for determining location data. The measurable aspects that can be determined by the disclosed system include but are not limited to: the spacing between crossties, the angle of ties with respect to rail, cracks and defects in surface of ties, missing tie plates, misaligned tie plates, sunken tie plates, missing fasteners, damaged fasteners, misaligned fasteners, worn or damaged insulators, rail wear, gage or rail, ballast height relative to ties, size of ballast stones, and a break or separation in the rail. The system includes one or more algorithms for determining these measurable aspects of the railroad track.
[35] The 082 Patent then provides an explanation of different aspects of the invention, followed by a detailed description of specific embodiments and accompanying drawings. The claims of the 082 Patent, which number 80 in total, follow.
V. The 249 Patent
[36] The 249 Patent describes the field of invention as follows:
The present invention relates generally to systems and methods for inspecting railroad surfaces and, more particularly to systems and methods for determining rail seat abrasion via the utilization of tilt correction algorithms.
[37] The “Background of the Invention” is initially similar to that provided in the 082 Patent. However, it goes on to explain that the construction of railroad tracks differs slightly depending on the type of tie material used. If wood ties are used, tie plates are placed on top of the ties, and rails are placed on top of the tie plates. If concrete ties are used, rails are placed on top of the ties with a thin polymer pad in between, preventing direct contact between the steel and the concrete.
[38] The 249 Patent states that normal railroad traffic causes friction between ties and rails, as well as rails and spikes, bolts, screws, or clips, and the surface under the ties. Of particular concern is friction at the point where the rail seat rests against the tie. Wear at this point, also known as rail seat abrasion, directly affects the life of the tie by causing it to loosen from the rail, despite the pads used between rails and concrete ties.
[39] According to the 249 Patent, railway companies monitor the wear of concrete ties either by direct manual measurement or through the use of electronic devices installed below individual railroad ties. However, this may be unreliable, hazardous, labour-intensive, complicated and disruptive to train traffic. The invention disclosed in the 249 Patent is intended to overcome, or at least reduce, these problems.
[40] The “Summary of the Disclosure” of the 249 Patent describes a system and method for determining rail seat abrasion that uses lasers, cameras and processors in a manner similar to the system disclosed in the 082 Patent. However, the system is adapted to determine whether rail seat abrasion is present along the track. The processor employs a mathematics-based algorithm which compensates for tilt encountered as the inspection system moves along the track.
[41] The 249 Patent then provides a detailed description of specific embodiments and accompanying drawings. The claims of the 249 Patent, which number 18 in total, follow.
VI. Claims in Issue
[42] Georgetown alleges infringement of claims 16 and 67; 37, 68 and 70; and 58, 71 and 73 of the 082 Patent. These claims pertain to a system and methods for detecting tie plate and crosstie contours:
[43] In greater detail, claim 16 describes:
A system for inspecting a railroad track bed, including the railroad track, to be mounted on a vehicle for movement along the railroad track, the system comprising:
at least one light generator positioned adjacent the railroad track for projecting a beam of light across the railroad track bed;
at least one optical receiver positioned adjacent the railroad track for receiving at least a portion of the light reflected from the railroad track bed and generating a plurality of images representative of the profile of at least a portion of the railroad track bed; and
at least one processor for analyzing the plurality of images and determining one or more physical characteristics of the said portion of the railroad track bed, the one or more physical characteristics comprising at least a geographic location of the plurality of images along the railroad track bed, wherein the processor includes an algorithm for detecting a misaligned or sunken tie plate of the railroad track bed, the algorithm comprising the steps of:
(a) analyzing a frame of the plurality of images, the frame comprising a region of interest;
(b) determining whether the region of interest contains a tie plate;
(c) if a tie plate is present, determining a crosstie contour and a tie plate contour;
(d) comparing an orientation of the crosstie contour and an orientation of the tie plate contour; and
(e) determining whether the tie plate is misaligned or sunken based upon the comparison.
[44] Claim 37 describes:
A method for inspecting railroad track bed, the railroad track bed including crossties, rails, associated fastening hardware, and ballast, the method comprising the steps of:
a) illuminating a line across the span of the railroad track bed;
b) receiving at least a portion of the light reflected from the railroad track bed;
c) generating a plurality of images representative of the profile of at least a portion of the railroad track bed;
d) analyzing the plurality of images and determining one or more physical characteristics of the said portion of the railroad track bed, the one or more physical characteristics comprising at least a geographic location of the plurality of images along the railroad track bed;
e) displaying the determined physical characteristics of the said portion of the railroad track bed; and
f) detecting a misaligned or sunken tie plate of the railroad track bed, the step of detecting comprising the steps of:
(a) analyzing a frame of the plurality of images, the frame comprising a region of interest;
(b) determining a whether the region of interest contains a tie plate;
(c) if a tie plate is present, determining a crosstie contour and a tie plate contour;
(d) comparing an orientation of the crosstie contour and an orientation of the tie plate contour; and
(e) determining whether the tie plate is misaligned or sunken based upon the comparison.
[45] Claim 58 describes:
A method of inspecting railroad track bed having a crosstie, rails, associated fastening hardware, and ballast, the method comprising the steps of:
a) traveling along the rails;
b) projecting a focused beam of light across the span of the railroad track bed;
c) capturing a plurality of images of the focused beam of light projected across a portion of railroad track bed while traveling along the rails;
d) determining one or more aspects of the portion of the railroad track bed by processing the plurality of images, the one or more aspects comprising at least a geographic location of the plurality of images along the railroad track bed;
e) outputting the determined one or more aspects of the portion of the railroad track bed; and
f) detecting a misaligned or sunken tie plate of the railroad track bed, the step of detecting comprising the steps of:
(a) analyzing a frame of the plurality of images, the frame comprising a region of interest;
(b) determining whether the region of interest contains a tie plate;
(c) if a tie plate is present, determining a crosstie contour and a tie plate contour;
(d) comparing an orientation of the crosstie contour and an orientation of the tie plate contour; and
(e) determining whether the tie plate is misaligned or sunken based upon the comparison.
[46] Claims 67, 68, 70, 71 and 73 are also in issue, but only insofar as they depend from the claims described above.
[47] Georgetown also alleges infringement of claims 7, 11 and 18 of the 249 Patent, which pertain to a system and method for detecting rail seat abrasion:
[48] In greater detail, claim 7 describes:
A method for determining rail seat abrasion of a rail road track, the method comprising the steps of:
(a) determining a height of a left rail base, right rail base, left crosstie and right crosstie, determining vertical pixel counts for each of the heights of the left rail base, right rail base, left crosstie and right crosstie and normalizing the vertical pixel counts based upon a measurement index;
(b) recording the heights of the left rail base, right rail base, left crosstie and right crosstie;
(c) determining an actual delta between the left rail base height and the left crosstie height and determining an actual delta between the right rail based height and the right crosstie height; and
(d) determining a rail seat abrasion value for the right and left rail bases.
[49] Claim 18 describes:
A system for determining rail seat abrasion of a rail road track, the system comprising:
at least one light generator positioned adjacent the rail road track, the light generator adapted to project a beam of light across the rail road track;
at least one camera positioned adjacent the rail road track for receiving at least a portion of the light reflected from the rail road track and for generating at least one image representative of a profile of at least a portion of the rail road track, and
at least one processor adapted to perform the steps comprising:
analyzing the at least one image;
determining a height of a left rail base, right rail base, left crosstie and right crosstie, determining vertical pixel counts for each of the heights of the left rail base, right rail base, left crosstie and right crosstie and normalizing the vertical pixel counts based upon a measurement index; and
determining whether rail seat abrasion is present along the rail road track.
[50] Claim 11 is also in issue, but only insofar as it depends from claim 7.
VII. Issues
[51] There are two issues raised in the Liability Phase of this proceeding: whether the 082 and 249 Patents are valid; and, if so, whether the 3DTAS infringes the asserted claims of those Patents.
A. Validity
[52] Tetra alleges that the 082 and 249 Patents are invalid because the subject matter of the claims would have been obvious on the priority dates to a person skilled in the art, based on the common general knowledge existing one year before the priority dates. The parties agree that the priority dates, which are the same as the US provisional patent application filing dates, are June 30, 2004 for the 082 Patent, and June 23, 2009 for the 249 Patent. Georgetown maintains that the 082 and 249 Patents are both valid.
B. Infringement
[53] Georgetown alleges that Tetra has infringed claims 16, 67, 37, 68, 70, 58, 71 and 73 of the 082 Patent, and claims 7, 11, and 18 of the 249 Patent. Tetra denies that the 3DTAS infringes the asserted claims of the Patents.
VIII. Evidence
A. Fact and Expert Witnesses
[54] Georgetown submitted the expert evidence of Dr. Harley Myler. Dr. Myler is a professor and Chair of the Electrical Engineering Department at Lamar University in Beaumont, Texas. He was qualified as an electrical engineer and expert in digital signal processing, in particular image processing, with a working knowledge of railways and track inspection techniques.
[55] Georgetown also called Gregory Thomas Grissom as a fact witness. Mr. Grissom has been the Chief Operating Officer of Georgetown for the past two years.
[56] Tetra submitted the expert evidence of Sébastien Parent. Mr. Parent is a physics engineer with over twenty years’ experience. He was qualified as a physics engineer and expert in machine vision integration, with first-hand experience in the field of image acquisition techniques and automated machine vision systems.
[57] Tetra also called Dr. Darel Edward Mesher as a fact witness. Dr. Mesher is an engineer and has been an employee of Tetra since approximately 1992. He was a driving force behind the development of the 3DTAS.
B. Observations Regarding the Evidence
[58] Georgetown asks this Court to disregard or discount the evidence of Dr. Mesher on the ground that he is not impartial (citing Justice Frank Collier’s decision in Xerox of Canada Ltd v IBM Canada Ltd (1977), 33 CPR (2d) 24 at 38-40 (FCTD)). Tetra asks this Court to disregard or discount the evidence of Dr. Myler on similar grounds.
[59] I agree that both of these witnesses sometimes exhibited a tendency to provide answers, particularly in cross-examination, that were intended to bolster the position of the party that called them to testify, or undermine the position of the opposing party. This observation reflects more negatively on Dr. Myler than it does on Dr. Mesher. Dr. Myler was called as an expert witness, and therefore owed the Court a professional duty of impartiality. Dr. Mesher was called as a fact witness, and frankly acknowledged his interest in the success of the 3DTAS.
[60] Despite these reservations, I am not prepared to wholly reject or discount the evidence of either Dr. Mesher or Dr. Myler. Like other witnesses who were called to testify in this phase of the proceeding, they presented impressive qualifications and provided useful information. My reasons for preferring some witnesses’ evidence over that of others are explained in the analysis that follows.
IX. Claims Construction
A. Legal Principles and Relevant Dates
[61] The first step in a patent suit is to construe the claims in order to give them meaning and determine their scope (Whirlpool Corp v Camco Inc, 2000 SCC 67 at para 43 [Whirlpool]). The relevant dates for construing the claims are the dates of publication of the patent applications: January 12, 2006 for the 082 Patent; and December 29, 2010 for the 249 Patent (Whirlpool at paras 54-55). The Court must examine the description contained in the patent to identify its “essential elements”, and may be aided by expert evidence regarding the meaning of specific terms (Whirlpool at paras 43, 45, 57).
[62] The canons of claims construction may be found in the Supreme Court of Canada’s decisions in Whirlpool at paragraphs 49 to 55 and Free World Trust v Électro Santé Inc, 2000 SCC 66 [Free World Trust] at paragraphs 44 to 54. They are the following:
(a) claims are to be read in an informed and purposive way with a mind willing to understand, viewed through the eyes of the person skilled in the art 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; and
(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 should instead be reasonable and fair to both the patentee and the public.
B. Person of Ordinary Skill in the Art
[63] In order to construe the claims in issue, the Court must define the Person of Ordinary Skill in the Art [POSITA]. This is “the person to whom the patent is said to be addressed, through whose eyes the Court is to read the patent, and who stands as the criterion for determination of obviousness” (Amgen Canada Inc v Apotex Inc, 2015 FC 1261 at para 42).
[64] Georgetown describes the POSITA for the 082 and 249 Patents as an electrical or computer engineer who has at least three years of experience working with image processing systems, or a Master’s degree, and with a working knowledge of railways and track inspection techniques.
[65] Tetra maintains that the POSITA for the 082 Patent is a person with a degree in engineering or physics with five to seven years of experience in the field of machine vision. For the 249 Patent, Tetra says that the POSITA is again a person with a degree in engineering or physics, but with less practical experience given the more restricted application of the 249 Patent, and because more became known about machine vision between the publication dates of the 082 and 249 Patents.
[66] The critical difference between the parties’ positions is the degree to which the POSITA must possess a working knowledge of railways and track inspection techniques.
[67] I prefer the articulation of the POSITA advanced on behalf of Tetra. Every claim of the 082 and 249 Patents is premised on the use of machine vision. It follows that the POSITA must understand the use of machine vision to inspect surfaces. The Patent refers to “tool boxes” and “known software packages”, both of which potentially encompass machine vision and image processing beyond the context of railways. Indeed, the 082 Patent acknowledges that the techniques may be applied in other contexts. A knowledge of railways is therefore ancillary to a knowledge of the manner in which machine vision techniques may be applied in different contexts.
C. Common General Knowledge of the POSITA
[68] The patent must be construed taking into account the “common general knowledge” shared by persons skilled in the art (Free World Trust at para 44; Whirlpool at para 53). This is the knowledge possessed by the POSITA at the relevant time, and includes what the POSITA would reasonably be expected to know (Sanofi-Synthelabo Canada Inc v Apotex Inc, 2008 SCC 61 at para 70 [Sanofi-Synthelabo]; Whirlpool at para 74). The common general knowledge of the POSITA must be established on a balance of probabilities and cannot be assumed (Uponor AB v Heatlink Group Inc, 2016 FC 320 at para 47.
[69] The assessment of the common general knowledge is governed by the principles found in Eli Lilly & Co v Apotex Inc, 2009 FC 991 at paragraph 97 and General Tire & Rubber Co v Firestone Tyre & Rubber Co, [1972] RPC 457 (UKHL) at pages 482 to 483:
(a) the common general knowledge imputed to the POSITA must 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 person, good at his or her job, who could be found in real life;
(c) individual patent specifications and their contents do not normally form part of the relevant common general knowledge, although there may be specifications which are so well known that they do form part of the common general knowledge, particularly in certain industries;
(d) regarding scientific papers generally:
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;
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;
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; and
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.
(1) Preliminary objection by Georgetown
[70] Georgetown objects to the Court’s consideration of Appendix SP-09 to Mr. Parent’s expert report (Daniel L Magnus, “Non-contact technology for track speed rail measurement: ORIAN” (Paper delivered at the Nondestructive Evaluation of Aging Railroads, 30 June 1995), 2458 SPIE 45 [Appendix SP-09]) as prior art in the obviousness analysis for the 082 and 249 Patents, and consideration of the 082 Patent as prior art in the obviousness analysis for the 249 Patent. Georgetown asserts that these documents were not specifically pled in Tetra’s Counterclaim.
[71] In response, Tetra argues that these documents were included in Mr. Parent’s expert report and were responded to by Georgetown. They therefore form a part of the record, and the Court has a wide discretion to evaluate evidence on the record. Alternatively, in the course of closing submissions, counsel for Tetra offered to amend the pleading.
[72] When a party pleads invalidity, as Tetra has done in its Statement of Defence and Counterclaim, especially where the invention is complex, it is generally accepted that the party must identify in its pleading the prior art that supports the allegation of obviousness (Throttle Control Tech Inc v Precision Drilling Corp, 2010 FC 1085 at para 13). It is possible to remedy a defect in a pleading by amendment, and it may be an error for a judge to refuse a reasonable request to amend (Janssen Inc v Abbvie Corp, 2014 FCA 242 [Janssen]).
[73] A technical approach to the question is to be avoided. In the words of the Federal Court of Appeal in Janssen (at para 3, citing Continental Bank Leasing Corp v R, [1993] TCJ No 18):
[…] I prefer to put the matter on a broader basis: whether it is more consonant with the interests of justice that the withdrawal or amendment be permitted or that it be denied. The tests mentioned in cases in other courts are of course helpful but other factors should also be emphasized, including the timeliness of the motion to amend or withdraw, the extent to which the proposed amendments would delay the expeditious trial of the matter, the extent to which a position taken originally by one party has led another party to follow a course of action in the litigation which it would be difficult or impossible to alter and whether the amendments sought will facilitate the court’s consideration of the true substance of the dispute on its merits. No single factor predominates nor is its presence or absence necessarily determinative. All must be assigned their proper weight in the context of the particular case. Ultimately, it boils down to a consideration of simple fairness, common sense and the interest that the courts have that justice be done. [Emphasis original]
[74] In this case, the prior art relied on by Tetra was disclosed in the expert report of Mr. Parent, which was delivered to Georgetown approximately four months before the commencement of trial. Georgetown was aware of all of the prior art on which Tetra intended to rely, including that which was not pleaded, and chose to respond through the expert report of Dr. Myler. Georgetown has not demonstrated any prejudice resulting from Tetra’s failure to include these documents in its Counterclaim. Furthermore, as will be seen below, the contested prior art is not central to the Court’s obviousness analysis.
[75] I therefore exercise my discretion to permit Tetra to rely on all of the prior art cited in the expert report of Mr. Parent.
(2) Analysis
[76] According to Mr. Parent, a great deal became known about the field of machine vision in the 1990s. This included the use of optical 3D sensors and 3D laser triangulation. A common technique was to use machine vision to determine the appearance of an object under normal circumstances, and then detect and measure any anomalies or other features of interest. The visual characteristics of an object or scene were understood to be critical to the design of an image acquisition system. Those characteristics included, but were not limited to, colour, type of reflectivity (diffuse or specular), size of the scene, smallest detail of interest and speed of motion. This methodology had been well established since the early 1990s (see, for example, Kevin Harding, “The Art of Lighting Science” Vision Online (28 April 2000) [Appendix SP-06]).
[77] Mr. Parent explained that, at the relevant times, many techniques existed to acquire two dimensional [2D] or 3D information from an object or scene. He observed that a 3D triangulation technique was a good and natural choice for the tasks described in the 082 and 249 Patents. The 082 Patent refers to the use of specialized 3D triangulation cameras. Mr. Parent described this as a well-known technique for 3D measurement at the time the applications for both Patents were filed.
[78] One of the prior publications cited by Mr. Parent, Liviu Bursanescu & François Blais, “Automated Pavement Distress Data Collection and Analysis: a 3-D Approach” (1997) 41574 NRC 311 [Appendix SP-07], describes a system which uses triangulation with infrared lasers and cameras; uses a beam of laser light with an angular expanse; is mounted on a vehicle; adapts the acquisition configuration (geometry) and number of devices to the need (i.e., pavement inspection); includes an optical encoder and a GPS for geographic coordinates; includes an inclinometer for road gradient and crossfall (i.e., road camber); corrects the profile for roll and pitch of the vehicle; includes a real-time processor for feature detection; includes a storing device; includes a post-processing device extracting and classifying features; and is used to inspect road surfaces and to identify defects.
[79] Mr. Parent acknowledged that Appendix SP-07 does not relate to railways. However, he maintained that machine vision techniques need not be linked to a particular field of application. Indeed, paragraph 0024 of the 082 Patent refers to the possible application of the disclosed invention to road, electrical line, piping or other network inspection.
[80] Mr. Parent also cited Denis Gingras, “Optics and Photonics Used in Road Transportation” (Paper delivered at the Opto-Contact: Workshop on Technology Transfers, Start-Up Opportunities and Strategic Alliances, 24 September 1998), 3414 SPIE 264 [Appendix SP-08]. The article describes a road inspection system that uses a laser-based triangulation system mounted on a vehicle, with an odometer and GPS for localization of the scans. Mr. Parent noted that the processing includes calibration correction due to the tilt and roll of the vehicle, which he compared to the technique employed by the 249 Patent.
[81] Mr. Parent identified a number of articles and patents directed to the context of railways, including Appendix SP-09, which concerns an optical rail profile measurement technology. The system analyzes rail wear, is mounted underneath a track inspection vehicle, uses a combination of charged coupled device cameras and laser diodes to acquire video images, employs a structured light source, performs analysis of the left and right rail profile, analyzes the images using a computer, translates each rail image into real-world X-Y coordinates, and uses an encoder to synchronize each rail measurement with a known location.
[82] Other examples of prior art adduced by Mr. Parent include:
(a) George Kantor et al, “Automatic Railway Classification using Surface and Subsurface Measurements” (Paper delivered at the Proceeding of the 3rd International Conference on Field and Service Robotics, January 2001), Robotics Institute of Carnegie Mellon University [Appendix SP-10], which describes methods for evaluating railroad health by analyzing features visible from the surface of the railway, and analyzing subsurface measurements to assess ballast health using ground-penetrating radar;
(b) “Device for Identifying Track Structures”, Japanese Patent No H06-322707 (13 May 1993) [Appendix SP-11], which describes a device that identifies rail track structures, including rail ties (sleepers) and ballast. The device is mounted on a rail car and uses a slit light source to illuminate the track, and a camera to capture the portion of the track illuminated by the light source. The resulting image is stored and processed in order to identify the position of the sleeper, ballast and/or rail joint.
(c) “Device and Method for Detecting Slippage of Rail Clamping Device and Method for Detecting Position of Rail”, Japanese Patent No 11-172606 (9 December 1997) [Appendix SP-12], which describes a system to