Tensar Technologies, Limited v. Enviro-Pro Geosynthetics Ltd.

Tensar Technologies, Limited v. Enviro-Pro Geosynthetics Ltd.
Court (s) Database
Federal Court Decisions
Date
2019-03-06
Neutral citation
2019 FC 277
File numbers
T-1930-13
Decision Content
Date: 20190306
Docket: T-1930-13
Citation: 2019 FC 277
Ottawa, Ontario, March 6, 2019
PRESENT: The Honourable Mr. Justice Manson
BETWEEN:
TENSAR TECHNOLOGIES, LIMITED AND TENSAR CORPORATION LLC AND TENSAR INTERNATIONAL CORPORATION AND NILEX INC.
Plaintiffs
and
ENVIRO-PRO GEOSYNTHETICS, LTD.
Defendant
JUDGMENT AND REASONS
Table of contents
I. The Pleadings 3
II. Summary of the Results in this Action 5
III. Background 5
A. The Parties 5
B. Technology Background 7
(1) Polymers 7
(2) History of geogrids 7
C. The ‘858 Patent 10
IV. Plaintiffs’ Fact Witnesses 14
A. Robert Briggs 14
B. Anthony Walsh 16
(1) Cross-Examination of Mr. Walsh 18
V. Plaintiffs’ Expert Witness (Dr. Alan McGown) 19
VI. Defendant’s Fact Witness (Jeff Prodahl) 20
VII. Defendant’s Expert Witness (Dr. Phillip Choi) 22
VIII. Claim Construction 23
A. Relevant Date 24
B. Person of Skill in the Art (POSITA) 24
C. Common General Knowledge 28
D. Prior Art 31
(1) Mercer ‘798 Patent 31
(2) Mercer ‘631 Patent 31
(3) Wyckoff Patent 32
E. Claim Terms Needing Construction 33
IX. The Law – Principles of Obviousness and Infringement 41
A. Obviousness 41
B. Infringement 44
X. Anticipation and the Gillette Defence 46
XI. Obviousness 47
XII. Infringement 56
A. Defendant's Evidence 58
XIII. Costs 62
I.
The Pleadings
[1] This action concerns the validity and infringement of Canadian Patent 2,491,858 [the ‘858 Patent, or the Walsh Patent], entitled “Geogrid or Mesh Structure”, which is owned by Tensar Technologies, Limited.
[2] The following dates are applicable to the ‘858 Patent:
Priority filing date (based on GB0214931.8): June 27, 2002;
Patent Cooperation Treaty [PCT] filing date: June 27, 2003;
PCT date of publication: January 8, 2004; and
Issue date: April 13, 2010.
[3] The Plaintiffs in this action are Tensar Technologies, Limited [Tensar Technologies], Tensar Corporation LLC [Tensar LLC], Tensar International Corporation [Tensar International], and Nilex Inc. [Nilex]. The Defendant is Enviro-Pro Geosynthetics Ltd. [Enviro-Pro, or the Defendant].
[4] The Plaintiffs assert that the Defendant has manufactured or had manufactured for it, offered for sale and sold in Canada geogrid products sold under the brand name TRI-GRID [the Tri-Grid Products] which infringe product claims 6 to 8 and 11 to 13 of the ‘858 Patent, and which were made according to and in infringement of method claims 18 to 31 of the ‘858 Patent.
[5] The Defendant asserts that the Tri-Grid Products do not infringe any of the claims of the ‘858 Patent, and counterclaims that the ‘858 Patent is invalid because the claims in issue in the ‘858 Patent would have been obvious at the relevant claim date to a person skilled in the art.
[6] At trial, the Plaintiffs abandoned the allegation of inducing and procuring infringement. The Defendant abandoned anticipation as a validity attack, yet maintained that the Gillette Defence still applied; this is discussed below.
[7] The following issues are left for the Court to decide:
Validity: Are any of claims 6 to 8, 11 to 13, or 18 to 31 of the ‘858 Patent obvious having regard to one or more of three prior art references:
US Patent 3,386,876 [the Wyckoff Patent];
US Patent 4,374,798 [the Mercer ‘798 Patent]; and
US Patent 5,269,631 [the Mercer ‘631 Patent].
Infringement: Are any of claims 6 to 8, 11 to 13, or 18 to 31 of the ‘858 Patent infringed by the manufacture, use and sale of the Tri-Grid Products in Canada by Enviro-Pro?
II. Summary of the Results in this Action
[8] The results in this action are:
Validity: Claims 6 to 8, 11 to 13, and 18 to 31 of the ‘858 Patent are not obvious and are valid.
Infringement: Claims 6 to 8, 11 to 13, and 18 to 31 are not infringed by the Defendant.
III. Background
A. The Parties
[9] Tensar Technologies is a corporation organized and existing under the laws of the United Kingdom.
[10] Tensar LLC is a limited liability company organized and existing under the laws of the state of Georgia, United States.
[11] Tensar International is a corporation organized and existing under the laws of the state of Georgia, United States.
[12] Tensar Technologies is the listed owner of the ‘858 Patent.
[13] Tensar LLC is licensed by Tensar Technologies to manufacture its multiaxial geogrids in the United States, and sells geogrid products in Canada in association with the trademarks TENSAR and TRIAX [the TriAx Products] through its exclusive distributor, Nilex, a corporation organized and existing under the laws of the province of Alberta.
[14] Enviro-Pro was a corporation organized and existing under the laws of the province of Alberta. Enviro-Pro is now known as Key-May Industries Ltd, as a result of an amalgamation filed on December 1, 2016. By agreement of counsel, any ruling made in this matter will apply to Key-May Industries Ltd. Hereafter, any mention of Enviro-Pro is in reference to the corporate entity once known as Enviro-Pro Geosynthetics Ltd. and now known as Key-May Industries Ltd.
[15] Enviro-Pro sells multiaxial geogrids in Canada. Enviro-Pro started distributing and offering for sale multiaxial geogrids under the trademarks TRI-GRID 140 and TRI-GRID 160 in Canada in August 2013.
[16] The Tri-Grid Products of Enviro-Pro are manufactured in China by TMP Geosynthetics [TMP].
B. Technology Background
(1) Polymers
[17] The ‘858 Patent relates to geogrids and mesh structures made of plastics materials, or polymers. The type of polymer used in the ‘858 Patent is an isotactic polypropylene. Polymers are made up of macromolecules.
[18] Polymers have two phases of morphology: the crystalline phase and the amorphous phase. Both phases are randomly oriented unless they are stretched. When a polymer is stretched, molecules tend to orient in the direction of the stretch and the polymer strength increases in the direction of the stretching.
(2) History of geogrids
[19] Beginning in the 1960s, products manufactured from synthetic polymer materials, termed geosynthetics (such as textiles, strips, straps, webbing, nets, meshes, and grids), found widespread use in the construction industry to reinforce, contain, and filter particulate matter.
[20] Early geosynthetics were made by weaving, knitting, or heat-bonding synthetic fibres together.
[21] In the late 1970s, Frank B. Mercer of Netlon Ltd. (a predecessor corporation to Tensar International) invented a process for the production of uniaxially and biaxially stretched grids possessing strands and integral crossbars (for a uniaxial grid) or integral junctions (for a biaxial grid):
Figure 10 from Expert Report of Alan McGown (Claim Construction and Infringement)
[22] Dr. Mercer termed these products “geogrids”. As depicted in the above figure, these geogrids were produced by:
punching holes into a sheet of polymer;
drawing out the sheet in one direction to form a uniaxial grid with strands or ribs and integral crossbars; and
subsequently, if desired, drawing out the sheet in a second direction to form a biaxial grid with strands or ribs connected with integral junctions.
[23] Ever since the early 1980s and up until the late 2000s, geogrids used in stabilisation structures have been essentially biaxial geogrids, consisting of two sets of perpendicular strands or ribs. A biaxial geogrid with ribs and integral junctions is depicted below:
Figure 12 from Expert Report of Alan McGown (Claim Construction and Infringement)
[24] A geogrid, as a heavier product with greater tensile stiffness (the ability to resist a force or stress) and greater junction strength, is more effective in reinforcing particulate matter than earlier woven or knitted geosynthetics.
[25] Uniaxial geogrids are intended for applications where tensile stiffness is principally required in one direction. Biaxial geogrids are intended for applications where tensile stiffness is required in at least two directions.
[26] One novel feature of these geogrids was that the stretching of the strands extended to some degree into the junctions and crotches (the curved regions where the strands meet the junction), and thereby resulted in greater stiffness, strength, and durability.
C. The ‘858 Patent
[27] The named inventor in the ‘858 Patent is Anthony Thomas Walsh, an employee of Tensar.
[28] The invention claimed in the ‘858 Patent relates to a geogrid made by stretching and biaxially orienting a plastics starting material provided with a hexagonal array of holes, and to a method of making said geogrid products.
[29] The ‘858 Patent defines “oriented” as “molecularly-oriented”. The ‘858 Patent also states that “[i]n general, when an oriented strand is referred to, the preferred direction of orientation is longitudinal of the strand.”
[30] The ‘858 Patent refers to the Mercer ‘798 Patent as disclosing “uniax and biax structures of the general type with which the present invention is concerned”, but goes on to say that such mesh structures “do not have great stability in the diagonal direction”.
[31] The ‘858 Patent also refers to the Wyckoff Patent as disclosing “a mesh structure having triangular mesh openings and formed by stretching and orienting a plastics starting material which was provided with an array of holes”.
[32] The summary of the invention is set out at pages 3 and 3a of the ‘858 Patent specification:
According to an aspect of the present invention, there is provided a geogrid made by stretching and uniaxially orienting a plastics starting material which was provided with an array of holes, the geogrid comprising transverse bars interconnected by substantially straight oriented strands…
According to another aspect of the present invention, there is provided a geogrid made by stretching and biaxially orienting a plastics starting material which was provided with an array of holes, the geogrid comprising:
a first set of substantially straight oriented strands extending at an acute angel to a first direction;
a second set of substantially straight oriented strands extending at an acute angle to the first direction and , as considered in a second direction at right angles to the first direction, alternate (angled) strands of the two sets being angled to the first direction by substantially equal and opposite angles;
further substantially straight oriented strands extending in said second direction; and
junctions each interconnecting four of the angled oriented strands and two of the further oriented strands, at substantially each junction the crotch between each pair of adjacent strands being oriented in the direction running around the crotch, whereby there is continuous orientation from the edge of one strand, around the crotch and to the edge of the adjacent strand.
[33] The ‘858 Patent goes on to describe a method of producing geogrids at pages 3a and 3b of the ‘858 Patent specification.
[34] Two independent claims, claims 6 and 18 of the ‘858 Patent, and certain claims dependent thereon, are at issue in this proceeding. Claim 6 reads:
A geogrid made by stretching and biaxially orienting a plastics starting material which was provided with an array of holes, the geogrid comprising:
a first set of substantially straight oriented strands extending at an acute angle to a first direction;
a second set of substantially straight oriented strands extending at an acute angle to the first direction and, as considered in a second direction at right angles to the first direction, alternate (angled) strands of the two sets being angled to the first direction by substantially equal and opposite angles;
further substantially straight oriented strands extending in said second direction; and
junctions each interconnecting four of the angled oriented strands and two of the further oriented strands, at substantially each junction the crotch between each pair of adjacent strands being oriented in the direction running around the crotch, whereby there is continuous orientation from the edge of one strand, around the crotch and to the edge of the adjacent strand.
[35] Claim 18 reads:
A method of making a biaxially oriented plastics material geogrid, comprising:
providing a plastics sheet starting material which has holes in an array of hexagons of substantially identical shape and size so that substantially each hole is at a corner of each of three hexagons, there being within the hexagon no holes of a size greater than or equal to the size of the first-mentioned holes;
applying a stretch in a first direction to stretch out strand-forming zones between adjacent holes on the sides of the hexagons and form oriented strands from such zones; and
applying a stretch in a second direction substantially at right angles to said first direction to stretch out strand-forming zones between adjacent holes on the sides of the hexagons and form oriented strands from the latter zones, whereby centre portions of the hexagons form junctions interconnecting the oriented strands, the stretching being applied to such an extent that the orientation of the strands extends into substantially each junction so that at substantially each junction, the crotch between each pair of adjacent strands is oriented in the direction running around the crotch, whereby there is continuous orientation from the edge of one strand, around the crotch and to the edge of the adjacent strand.
[36] The ‘858 geogrid is termed a triaxial or multiaxial (hereafter, the term multiaxial will be used) geogrid, because it has stiffness and strength in multiple directions. Figure 26 of the Expert Report of Dr. Alan McGown (Claim Construction and Infringement), below, which annotates figure 4 of the ‘858 Patent, depicts such a multiaxial geogrid:
IV. Plaintiffs’ Fact Witnesses
A. Robert Briggs
[37] Mr. Briggs is general counsel for Tensar International. Mr. Briggs testified to the corporate history of Tensar, as well as to the nature of the current Tensar corporate structure:
Tensar Limited is a passive holding company, which holds intellectual property but has no employees or existing operations;
Tensar LLC produces Tensar products in Atlanta, Georgia; and
Tensar International is an engineering, marketing, and sales entity.
[38] Mr. Briggs advised that Nilex is an Alberta corporation and the exclusive distributor of TriAx Products in most of Canada.
[39] Up until the mid-2000s, Tensar was engaged in the business of producing and selling uniaxial and biaxial geogrids. Litigation involving Tensar’s biaxial products began in the 1980s and extended into the early 2000s, as competitors attempted to sell similar products. During this time period, most of the company's research and development spending was focused on finding incremental improvements to the biaxial product, such as by increasing production efficiency or finding additional uses for the biaxial product.
[40] In or around 2008, Tensar introduced a multiaxial grid product to market, first in the United Kingdom and shortly thereafter in the United States and Canada.
[41] The TriAx Products gained rapid acceptance in the Canadian market. Since coming to market with the TriAx Products, Tensar has engaged in considerable litigation relating to alleged infringement of the TriAx Products. Much of this litigation has occurred in China, and involved TMP.
[42] On cross-examination, Mr. Briggs agreed that while Dr. McGown is not an employee of Tensar, he has been associated with Tensar for many years and has received payments from Tensar for many years.
B. Anthony Walsh
[43] Mr. Walsh is a technology manager for Tensar International, and resides in the United Kingdom. He is also the inventor of the ‘858 Patent. Mr. Walsh earned a bachelor’s degree in physics in 1981, and a master’s degree in polymer engineering in 1991.
[44] Beginning in 1981 up until 2000, Mr. Walsh worked at a material production company engaged in the production of various materials, including armament materials used to line the inside of military vehicles. Mr. Walsh testified that these lining materials were manufactured to have strength in multiple directions, in order to withstand the impact of explosive devices.
[45] In May of 2001, Mr. Walsh was hired as technology manager at Tensar in the United Kingdom. At this time, Tensar was engaged in the production of uniaxial and biaxial geogrids. He was motivated to attempt production of a multiaxial geogrid from his past experience producing armament lining materials, and questioned why Tensar continued to produce a biaxial product for an application where it was required to have strength in more than two directions.
[46] The development process of this new, multiaxial product, included:
hiring a technician;
producing between 10 and 30 different prototype geogrids;
receiving inspiration for a hexagonal hole array from nature, specifically the honeycomb pattern used by bees;
arriving at a finished product with triangular apertures;
consulting with civil engineers within Tensar, as well as many other groups within the company, to determine whether the new product was commercially viable; and
developing punch tools and other basic equipment in order to produce the new product on a large scale.
[47] Before engaging in commercial production, Tensar undertook large-scale testing of the new multiaxial product, which revealed a number of beneficial characteristics, including:
The multiaxial product did a better job than a biaxial product of enabling the aggregate to interlock and become strong;
The multiaxial product required less raw aggregate to achieve the same results; and
The multiaxial product could be produced at a greater speed, because rips in the product that occurred during the production process were more isolated and therefore less costly.
[48] Mr. Walsh produced a technical report he co-authored, entitled “Junction and Crotch Analysis of TAIAN Modern Tri-Grid Sample Obtained from Enviro-Pro in Canada” [the Tensar International Limited Report], which created a detailed thickness contour map from a sample of Enviro-Pro’s Tri-Grid Products, in an attempt to assess the level and direction of polymer orientation. This analysis was conducted using a micrometer, a standard piece of equipment for measuring thickness.
[49] Mr. Walsh stated that Tensar launched the TriAx Products in the United Kingdom in 2007.
(1) Cross-Examination of Mr. Walsh
[50] During cross-examination, Mr. Walsh stated that he was not aware of the Mercer ‘798 Patent, the Mercer ‘631 Patent [collectively, the Mercer Patents], or the Wyckoff Patent during his design process. Despite the fact that the Mercer ‘798 Patent is mentioned in the ‘858 Patent, it was not until many years later, when Tensar became involved in litigation surrounding the TriAx Products, that he became aware of the Mercer Patents. Mr. Walsh stated that he merely supplied Tensar’s patent agents with technical information, and that it was the patent agents who drafted the ‘858 Patent with reference to the Mercer ‘798 Patent and the Wyckoff Patent.
[51] Mr. Walsh also acknowledged the similarities between the hexagonal pattern of holes described in the Wyckoff Patent and the array of holes he chose to employ, but maintained that he was not aware of the Wyckoff Patent at the time he developed his new product.
[52] Mr. Walsh indicated that he had no knowledge at the time of his invention of what molecular orientation meant, nor did he appreciate at the time how the drawing of the polymer in the junction contributed to the multiaxial product.
[53] Mr. Walsh confirmed that the Tensar International Limited Report is an internal report which he prepared in his role as an employee of that company. He acknowledged that in the Tensar International Limited Report, he conducted no tests which would analyze the Tri-Grid Products at a molecular level. Rather, the tests conducted looked at the resulting molecular properties shown by the surface properties of the Tri-Grid Products.
[54] Mr. Walsh also acknowledged that there are areas of varying thickness in the junctions of the Tri-Grid Products.
V. Plaintiffs’ Expert Witness (Dr. Alan McGown)
[55] Dr. Alan McGown is an Emeritus Professor of Civil Engineering at the University of Strathclyde in Glasgow, United Kingdom, as well as the managing director of his own civil engineering consulting company, McGown Consultants Ltd. He received a PhD in 1974, and a DSc for research contributions to geotechnical engineering and geosynthetics in 1993, both from the University of Strathclyde.
[56] Dr. McGown produced two reports in relation to this matter. His first report, entitled “Expert Report of Professor Alan McGown (Claim Construction and Infringement)”, is dated June 30, 2017. His second report, entitled “Expert Report of Professor Alan McGown (Validity)”, is dated September 4, 2017.
[57] Dr. McGown has over 45 years of experience in academic research, development work, and consultancy relating to the testing, specification, design, manufacturing and methods of use of geogrids, nets, textiles and meshes which are made from synthetic materials for various uses, including in the construction industry. More specifically, Dr. McGown is qualified as an expert in the development of polymer grids with integral junctions for use in retaining walls, steep slopes, embankments, roads, railways, airfields and similar applications.
[58] Dr. McGown has consulted for Tensar in the past, and this involvement is ongoing. He stated that he is nonetheless able to act impartially and assist the Court, and that his prior involvement with Tensar has no impact on the opinions expressed in his reports. His positions on the person of ordinary skill in the art [the POSITA], common general knowledge of the POSITA, infringement, and obviousness, are discussed below.
VI. Defendant’s Fact Witness (Jeff Prodahl)
[59] Mr. Prodahl works in business development for Enviro-Pro, with responsibilities relating to sales, product procurement, and exploring potential new products for the company. Mr. Prodahl has worked for Enviro-Pro since in or around 2006.
[60] At the time Mr. Prodahl joined Enviro-Pro, the company was involved in a number of different ventures, only one of which was the sale of geosynthetics in the construction industry. In the late 2000s, the company began to focus on the sale of geogrid products, initially selling biaxial geogrid products.
[61] Sales of biaxial geogrid products were initially strong, but suffered when Tensar’s competitive TriAx Products entered the Alberta marketplace in the early 2010s.
[62] In 2012, Enviro-Pro reached out to TMP in China, which had previously manufactured and supplied them with biaxial geogrids, and inquired about producing a geogrid that could compete with the TriAx Products. In an email dated November 29, 2012, a representative of TMP proposed to Mr. Prodahl that they develop a multiaxial product by following the Wyckoff Patent, so as to avoid infringing Tensar’s products.
[63] Mr. Prodahl stated that Enviro-Pro consulted with their patent attorney at this time, and were advised that if the manufacturer used the Wyckoff method of manufacture, Enviro-Pro would avoid infringement of the Walsh Patent. Enviro-Pro then instructed TMP to produce a sample of a multiaxial product by exactly following the Wyckoff Patent.
[64] Upon receipt of a sample, Enviro-Pro consulted with Allan Parker, an engineer and consultant with experience using the TriAx product. Mr. Parker was provided with the Wyckoff Patent, but not a sample of the Enviro-Pro product. Mr. Parker provided an opinion that the TriAx product was manufactured entirely in accordance with the Wyckoff Patent. On cross-examination, Mr. Prodahl agreed that Mr. Parker did not appear to appreciate the differences between biaxial and multiaxial geogrids.
[65] Mr. Prodahl also sent the sample product to TRI/Environmental, Inc. [TRI], along with a sample of the TriAx product. However, Mr. Prodahl testified that he did not draw any conclusions from the report prepared by TRI.
[66] Enviro-Pro began selling the Tri-Grid Products in August of 2013. Shortly after sales began, Tensar initiated this action.
VII. Defendant’s Expert Witness (Dr. Phillip Choi)
[67] Dr. Phillip Choi is a Full Professor in the Department of Chemical and Materials Engineering at the University of Alberta. In 1995, he earned a PhD in Chemical Engineering from the University of Waterloo. Since that time, he has worked in polymer research and development, in both industry and academia. He has published a textbook relating to polymer science and engineering, as well as numerous book chapters, journal articles, and one United States patent, all in polymer-related topics.
[68] Dr. Choi is qualified as an expert in the field of polymer science and polymer (plastics) engineering, with considerable academic qualifications in these general fields as well as practical industry experience relating to research, development, design, testing and applications of polymer materials and products. He has been qualified as an expert to give evidence in respect of polymer science and polymer engineering, including general principles of polymer molecular structures and behaviour of molecules in polymers in relation to products made of polymers, including mesh structures.
[69] Dr. Choi produced two reports in relation to this matter. His first report, entitled “Expert Report in the matter of Tensar Technologies, Limited et al v Enviro-Pro Geosynthetics Ltd.”, is dated July 4, 2017. His second report, entitled “Rebuttal Report in the matter of Tensar Technologies, Limited et al v Enviro-Pro Geosynthetics Ltd.”, is dated August 29, 2017.
VIII. Claim Construction
[70] Claim construction is a matter for the Court alone, and should be done prior to considering issues of infringement and validity (Whirlpool Corp v Camco Inc, 2000 SCC 67 at para 43 [Whirlpool]; Pfizer Canada Inc v Canada (Minister of Health), 2005 FC 1725 at para 10, aff`d on other grounds, 2007 FCA 1). The same interpretation of the claims applies to both infringement and validity (Whirlpool, above at para 49).
[71] The Supreme Court of Canada has outlined the canons of claim construction in three decisions: Whirlpool, at paragraphs 49 to 55; Free World Trust v Électro Santé Inc, 2000 SCC 66 at paragraphs 44 to 54 [Free World Trust]; and Consolboard Inc v MacMillan Bloedel (Saskatchewan) Ltd, [1981] 1 SCR 504 (SCC) at paragraph 27 [Consolboard]. These decisions state:
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;
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
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.
A. Relevant Date
[72] The relevant date for claim construction of the '858 Patent claims is the PCT date of publication of January 8, 2004.
B. Person of Skill in the Art (POSITA)
[73] As outlined by Justice Binnie in Whirlpool, at paragraph 53:
… the patent specification is not addressed to grammarians, etymologists or to the public generally, but to skilled individuals sufficiently versed in the art to which the patent relates to enable them on a technical level to appreciate the nature and description of the invention: H. G. Fox, The Canadian Law and Practice Relating to Letters Patent for Inventions (4th ed. 1969), at p. 185. The court, writes Dr. Fox, at p. 203, must place itself
in the position of some person acquainted with the surrounding circumstances as to the state of the art and the manufacture at the time, and making itself acquainted with the technical meaning in that art or manufacture that any particular word or words may have.
[74] The POSITA has been described as:
[A] hypothetical person possessing the ordinary skill and knowledge of the particular art to which the invention relates, and a mind willing to understand a specification that is addressed to him. This hypothetical person has sometimes been equated with the “reasonable man” used as a standard in negligence cases. He is assumed to be a man who is going to try to achieve success and not one who is looking for difficulties or seeking failure.
(Free World Trust, above at para 44, quoting Harold G. Fox, The Canadian Law and Practice Relating to Letters Patent for Inventions, 4th ed. (Toronto: Carswell, 1969) at 184)
[75] Dr. McGown suggested that the POSITA would combine, through experience, two branches of engineering:
mechanical, chemical or textile engineering with a specialisation in synthetic materials or several years’ experience with synthetic textile and related materials manufacturing systems [the Production Engineer]; and
civil or military engineering with a specialisation in geotechnical or pavement engineering or 5 to 7 years’ experience with the use of synthetic textile, meshes, nets and grids in the construction industry [the Applications Engineer].
[76] The Production Engineer is principally concerned with the methods of processing the starting material and the effects of these on the properties of the final products. The Applications Engineer is principally concerned with the physical and mechanical properties of the final products, their intended functions, and their long term durability and operational efficiency in various applications.
[77] Dr. McGown stated that the POSITA would either be a Production Engineer with enough experience in industry (5 to 7 years) to have the knowledge of an Applications Engineer, or vice versa.
[78] Dr. Choi stated that the POSITA would include plastics products design engineers, production engineers who are involved in the production of plastics products, and technologists who are involved in plastics production and testing.
[79] Dr. Choi also stated in his report that usually such an individual would have a bachelor’s degree or a technologist diploma along with about five to ten years of experience in their jobs. They would have knowledge on a limited range of physical and mechanical properties of plastics, and have the technical know-how to handle plastics. However, they would only have a limited knowledge of the molecular structure-property relationships of plastics, which instead fall into the domain of polymer (plastics) research and development scientists/engineers who have master’s and doctoral degrees.
[80] Dr. Choi stated in his report that the POSITA would not have the applications-related knowledge and experience of the Applications Engineer contemplated by Dr. McGown. However, during direct examination, Dr. Choi agreed that the POSITA would have access to applications-related knowledge, such as principles of interlock and how particulate matter interacts with a geogrid, through interactions with other individuals in their workplace. On cross-examination, Dr. Choi agreed that such applications-related knowledge would be necessary to the development of a geogrid. Dr. Choi's position on the POSITA has been shown to be too limited.
[81] Having considered the evidence of both experts and the principles outlined above, I prefer, and adopt, Dr. McGown’s view of the POSITA, as given the nature of the geogrid invention of the '858 Patent, I believe the POSITA must have knowledge of the applications to which a geogrid product may be applied. Much of the disclosure in the ‘858 Patent relates to elements falling either partially or wholly within the purview of an Applications Engineer. Dr. McGown’s definition recognizes that the ‘858 Patent relates both to methods of processing synthetic polymers and to the mechanical properties of the final products and their intended uses.
[82] Having considered all of the evidence before the Court, I find that:
A POSITA, in the context of the ‘858 Patent, would combine, through experience, two branches of engineering:
mechanical, chemical or textile engineering with a specialisation in synthetic materials or several years’ experience with synthetic textile and related materials manufacturing systems, but with limited knowledge of the molecular structure-property relationships of plastics or polymers [the Production Engineer]; and
civil or military engineering with a specialisation in geotechnical or pavement engineering or 5 to 7 years’ experience with the use of synthetic textile, meshes, nets and grids in the construction industry [the Applications Engineer].
The Production Engineer is principally concerned with the methods of processing the starting material and the effects of these on the properties of the final products, here, production of polymer mesh or geogrid products, with limited knowledge of the molecular structure-property relationships of plastics or polymers. The Applications Engineer is principally concerned with the physical and mechanical properties of the final products, their intended functions, and their long term durability and operational efficiency in various applications, here, the application and use of meshes and geogrids for construction applications.
The POSITA would either be a Production Engineer with enough experience in industry (5 to 7 years) to have the knowledge of an Applications Engineer, or vice versa.
C. Common General Knowledge
[83] Common general knowledge does not amount to all information in the public domain. Rather, common general knowledge is the knowledge generally known at the relevant time by the person skilled in the field of art or science to which the patent relates (Bell Helicopter Textron Canada Limitée v Eurocopter, société par actions simplifiée, 2013 FCA 219 at paras 63-65).
[84] The assessment of common general knowledge is governed by the principles found in Eli Lilly & Co v Apotex Inc, 2009 FC 991 at paragraph 97 [Eli Lilly], aff'd 2010 FCA 240, citing General Tire & Rubber Co v Firestone Tyre & Rubber Co, [1972] RPC 457 (UKHL) at 482-483:
Common general knowledge is distinct from what in patent law is regarded as public knowledge. Public knowledge is theoretical and includes each and every patent specification published, however unlikely to be looked at and in whatever language it is written. Common general knowledge, in contrast, is derived from a common sense approach to the question of what would be known, in fact, to an appropriately skilled person that could be found in real life, who is good at his or her job.
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.
Common general knowledge does not necessarily include scientific papers, no matter how wide the circulation of the relevant journal or how widely read the paper. A disclosure in a scientific paper only becomes common general knowledge when it is generally known and accepted without question by the bulk of those engaged in the particular art.
Common general knowledge does not include what has only been written about and never, in fact, been used in a particular art.
[85] A POSITA’s common general knowledge cannot be assumed; rather, it must be proven with fact evidence on a balance of probabilities. As quoted from Simon Thorley et al., Terrell on the Law of Patents, 16th ed (London: Sweet & Maxwell, 2006) by the Court in Eli Lilly, above at paragraph 100:
Proof of common knowledge is given by witnesses competent to speak upon the matter, who, to supplement their own recollections, may refer to standard works upon the subject which were published at the time and which were known to them. In order to establish whether something is common general knowledge, the first and most important step is to look at the sources from which the skilled addressee could acquire his information.
The publication at or before the relevant date of other documents such as patent specifications may be to some extent prima facie evidence tending to show that the statements contained in them were part of the common knowledge, but is far from complete proof, as the statements may well have been discredited or forgotten or merely ignored. Evidence may, however, be given to prove that such statements did become part of the common knowledge.
[86] The parties agree that the Wyckoff Patent and the Mercer Patents formed part of the prior art and the common general knowledge as of the claim date, namely January 8, 2004 (for claim construction) and June 27, 2002 (for obviousness).
[87] Additionally, at the relevant dates, the POSITA would have had the following common general knowledge:
basic features of polymers at the molecular level;
there is some molecular orientation inherent to the stretching of a polymer when it is drawn beyond its yield point in the direction of the stretch;
“continuous” means uninterrupted;
“orientation” means molecular orientation;
the direction of orientation is relative to a reference direction;
various methods are used to make geometric polymer structures, including geogrids, by way of uniaxial or biaxial stretching; and
when a section of a starter polymer undergoes a reduction in thickness, that is an indication that stretching has occurred and that some degree of orientation is present.
D. Prior Art
(1) Mercer ‘798 Patent
[88] The Mercer ‘798 Patent, entitled “Production of Plastic Mesh Structure”, was issued on February 22, 1983. The named inventor is Frank B. Mercer.
[89] The Mercer ‘798 Patent describes a process of biaxially stretching a starting sheet punched with an array of square or rectangular holes to produce a grid with “oriented strands which are interconnected by orientated junctions which have orientated crotches between the strands...”
(2) Mercer ‘631 Patent
[90] The Mercer ‘631 Patent, entitled “Plastics Material Mesh Structures”, was issued on December 14, 1993. The named inventors include Frank B. Mercer. The Mercer ‘631 Patent relates to “a method of producing an integral biaxially-molecularly-oriented plastics material mesh structure…”
[91] Importantly, the Mercer ‘631 Patent introduces the term “continuous orientation”. In particular, at column 19, lines 42-45, the results of biaxial stretching are described as “forming an oriented junction and continuously oriented crotches connecting respective main and transverse strands”. At column 21, lines 39-42, the patent references “respective main and transverse strands being interconnected by continuously oriented crotches with the orientation in the direction running around the respective crotches”.
(3) Wyckoff Patent
[92] The Wyckoff Patent, entitled “Non-Woven Net Manufacture”, was issued on June 4, 1968. It relates to “the manufacture of reticulated structures and particularly non-woven nets and like structures from thermoplastic polymeric materials”.
[93] There are two elements of the Wyckoff Patent that are relevant. First, Figure 9 of the Wyckoff Patent, below, depicts a starter sheet punched with a hexagonal array of holes. When biaxial stretching is applied to this starter sheet, the result is a multiaxial grid with triangular apertures, depicted in Figure 10 of the Wyckoff Patent, below.
Figures 9 and 10 of the Wyckoff Patent
[94] Second, although the ribs of the multiaxial geogrid described in the Wyckoff Patent have been stretched, no stretching is applied to the junctions. This lack of stretching in the junctions is emphasized repeatedly in the patent specification, and is described in lines 14-15 o