Camso Inc. v. Soucy International Inc.

Camso Inc. v. Soucy International Inc.
Court (s) Database
Federal Court Decisions
Date
2019-03-01
Neutral citation
2019 FC 255
File numbers
T-2338-14
Decision Content
Date: 20190301
Docket: T-2338-14
Citation: 2019 FC 255
Ottawa, Ontario, March 1, 2019
PRESENT: The Honourable Mr. Justice Locke
BETWEEN:
CAMSO INC.
Plaintiff/ Defendant by Counterclaim
and
SOUCY INTERNATIONAL INC. and KIMPEX INC.
Defendants/ Plaintiffs by Counterclaim
JUDGMENT AND REASONS
Table of Contents
I. Patents in Suit 4
II. Parties 9
A. Camso Inc. 10
B. Soucy International Inc. 10
C. Kimpex Inc. 11
III. Issues in Dispute 11
IV. Witnesses 12
A. Fact Witnesses 12
(1) Camso’s Fact Witnesses 12
(a) Bernard Jean 12
(b) Denis Boivin 13
(c) Denis Courtemanche 13
(d) Julien Michaud 14
(e) Jérémie Zuchoski 14
(2) The Defendants’ Fact Witnesses 15
(a) Charles Shaw 15
(b) Yves St-Pierre 16
(c) France Bégin 16
B. Expert Witnesses 17
(1) Camso’s Expert Mark Kittel 17
(2) The Defendants’ Expert Pierre Pellerin 18
(3) The Defendants’ Expert Jean-Yves Leblanc 21
V. Claims in Issue 22
A. The 294 Patent 24
B. The 562 Patent 30
C. The 509 Patent 37
VI. Legal Principles 45
A. Claim Construction 45
B. Patent Validity 50
(1) Anticipation 50
(2) Obviousness 52
C. Infringement 56
VII. Analysis 57
A. Person Skilled in the Art 57
B. Common General Knowledge 58
C. Construction of Claims 70
(1) Disputed Claim Elements 71
(a) Driving wheel, drive wheel 71
(b) Rod used for direction 81
(c) Load bearing section, intermediate section, ground-contacting area 82
(d) Stiffening rods, stiffening members, stiffening inserts 84
(e) ATV 86
(2) Claim Construction of the 294 Patent 88
(a) Independent Claims 88
(b) Claim Groups 294:2, 294:3 and 294:4 90
(c) Claim Group 294:20 90
(d) Claim Groups 294:22 and 294:23 91
(e) Claim Group 294:63 92
(f) Claim Groups 294:66, 294:67 and 294:68 93
(g) Claim Groups 294:91, 294:92 and 294:94 94
(h) Claim Groups 294:95 and 294:96 95
(3) Claim Construction of the 562 Patent 95
(a) Independent Claims 95
(b) Claim Groups 562:2 and 562:3 97
(c) Claim Group 562:8 97
(d) Claim Groups 562:9, 562:10 and 562:11 98
(e) Claim Group 562:12 98
(f) Claim Group 562:14 98
(g) Claim Group 562:15 99
(h) Claim Group 562:16 100
(i) Claim Groups 562:17 and 562:18 100
(j) Claim Group 562:22 101
(k) Claim Group 562:23 101
(l) Claim Group 562:25 101
(m) Claim Groups 562:26 and 562:27 102
(n) Claim Group 562:28 102
(o) Claim Group 562:29 103
(p) Claim Group 562:48 103
(q) Claim Group 562:110 103
(4) Claim Construction of the 509 Patent 104
(a) Independent Claims 104
(b) Claim Groups 509:2, 509:3 and 509:4 106
(c) Claim Group 509:5 106
(d) Claim Groups 509:7 and 509:8 106
(e) Claim Groups 509:10 and 509:11 107
(f) Claim Groups 509:12 and 509:13 107
(g) Claim Group 509:15 107
(h) Claim Group 509:17 107
(i) Claim Group 509:18 108
(j) Claim Groups 509:20 and 509:21 108
(k) Claim Groups 509:22, 509:23, 509:24, 509:25 and 509:26 109
(l) Claim Group 509:27 110
(m) Claim Group 509:30 110
(n) Claim Groups 509:112, 509:113, 509:114 and 509:132 110
(o) Claim Group 509:133 111
D. Anticipation and Obviousness 112
(1) Relevant Prior Art 112
(a) SCI’s Sno-Traxx, Sno-Quad and Quad-Traxx 112
(b) Brazier Patent 118
(2) Analysis of Anticipation Allegations 121
(a) Brazier Patent 121
(b) SCI’s Kits 122
(c) Tatou 126
(d) Conclusions on Anticipation 132
(3) Analysis of Obviousness Allegations 133
(a) Person Skilled in the Art 133
(b) Common General Knowledge 133
(c) Inventive Concept 134
(d) Differences between State of the Art and Inventive Concept 137
(e) Obviousness to the Person Skilled in the Art 147
(f) Conclusions on Obviousness 153
E. Overbreadth and Insufficiency 154
F. Section 53 of the Patent Act/Fraud on the Patent Office 154
G. Infringement 155
H. Remedies 157
VIII.Conclusions 157
[1]
This is a patent infringement action concerning a family of three patents regarding track assemblies to be installed on All-Terrain Vehicles (ATVs) to facilitate their operation on snow and other unstable or uneven surfaces.
I. Patents in Suit
[2] The patents in suit are Canadian Patent Nos. 2,388,294 (the 294 Patent), 2,825,509 (the 509 Patent), and 2,822,562 (the 562 Patent). All three patents claim priority from the same Canadian Patent Application No. 2,372,949, which was filed on February 25, 2002. The 294 Patent was filed a few months later on May 30, 2002, and published on August 25, 2003. The other patents in suit are based on divisional applications of the 294 Patent and therefore are deemed to have the same filing date and publication date as the 294 Patent. The 294 Patent issued on October 1, 2013. The 509 Patent issued on November 25, 2014. The 562 Patent issued on May 26, 2015. All three patents are set to expire on May 30, 2022.
[3] All three patents in suit have the same title (“Track Assembly for an All-Terrain Vehicle”) and essentially the same disclosure. As is typical, this disclosure begins with sections entitled “Field of the Invention,” “Background of the Invention,” and “Objects of the Invention.” Because they are brief, I reproduce these sections from the 294 Patent here in their entirety:
FIELD OF THE INVENTION
[0001] The present invention relates to all-terrain vehicles. More specifically, the present invention is concerned with track assemblies for an all-terrain vehicle.
BACKGROUND OF THE INVENTION
[0002] Traditionally, two types of all-terrain vehicles are proposed either the wheel type or the tracked type.
[0003] Generally, a wheeled vehicle is more maneuverable than a tracked vehicle, but is not as efficient on uneven or soft terrain such as, for example snow.
[0004] Tracked all-terrain vehicles have been proposed, which require complicated track assemblies comprising a track frame to maintain the tension of the endless track belt and prevent it from loosening. Furthermore, such vehicles have generally a large contact area with the ground, which results in a decreased maneuverability and an increased impact on the often soft terrain.
[0005] Therefore, there is still room for improvements toward an all-terrain vehicle provided with track assemblies, which is maneuverable and effective upon a variety of unstable or uneven surfaces, while designed to maintain tension upon the endless track belts to keep them in their due course and prevent accidental loosening, and at the same time reducing the damages inflicted to the terrain.
OBJECTS OF THE INVENTION
[0006] An object of the present invention is therefore to provide improved track assemblies for an all-terrain vehicle.
[4] The three patents in suit also include a similar “Description of the Embodiment” section which describes the contemplated track assembly with reference to 11 figures.
[5] The main aim of the disclosure is to describe a relatively simple track assembly that maximizes efficient operation of an ATV on uneven or soft terrain, like snow, and minimizes the loss of maneuverability (particularly in relation to difficulty steering), and impact on soft terrain that is typically associated with track assemblies. The solution proposed in the disclosure is based on reducing the size of the track belt’s contact area with the ground, both longitudinally (along the length of the track) and transversally (across its width), at least when that ground is flat and hard. This gives the contact area with the ground (also called the contact patch) a profile closer to that of a tire.
[6] Longitudinally, the contact patch is reduced by arranging the assembly so that the bottom run of the track belt is slightly curved longitudinally so that it rises from the ground ahead of and behind the area of ground contact which bears the weight of the assembly and the ATV. Figure 1 from the patents, reproduced here, demonstrates this slight longitudinal curve:
Figure 1
[7] Transversally, two complementary solutions are proposed to reduce the contact patch. First, the transverse stiffening rods that have been typically provided in track belts (both for strength and to ensure a wide area of contact for better flotation on soft terrain) are removed. Without stiffening rods, the track belt is more flexible transversally so that its edges can be out of contact with flat, hard ground when there is sufficient tension in the belt. The disclosure describes means for adjusting tension in the track belt. Omitting stiffening rods also permits the track to conform to the surface of uneven ground, such as a depression. This may improve traction.
[8] The second solution proposed to reduce the contact patch transversally concerns the outwardly-projecting traction projections which are disposed about the track belt. The disclosure describes these traction projections as having a convex profile (higher in the middle and lower on the edges). This facilitates the edges of the track being out of contact with flat, hard ground. Figures 4 and 10, shown here, provide cross-sections of the patented track assembly with this convex profile of the traction projections, respectively, with and without stiffening rods (item 71 in Figure 4) in the track belt:
Figure 4
Figure 10
[9] As shown in Figure 1 above, a track assembly is disposed at each corner of the ATV in place of a conventional wheel and tire. The assembly comprises:
a track belt,
a drive wheel for imparting motion to the track belt,
a pair of idlers forward and to the rear of the drive wheel for maintaining shape in the track belt, and
a frame for maintaining proper spacing between the drive wheel and the idlers.
[10] The track belt has the outwardly-projecting traction projections disposed at regular intervals longitudinally, and corresponding inner lugs. The traction projections are designed to sink into soft ground, and to support the weight of the ATV when it is on hard ground. The inner lugs comprise drive lugs, which are engaged by the drive wheel to impart movement, and guide lugs which work with the idlers to prevent dislodgment of the track belt from the assembly.
[11] The disclosure also describes a system to prevent the assembly from rotating about the axis of the drive wheel when the drive wheel rotates. It employs a rod connecting the assembly to the fixed part of the ATV, and a rubber damping element which permits only limited movement between the assembly and the body. Without this feature, the assembly would be able to rotate and could come into contact with the body of the ATV, causing damage.
[12] The claims of the patents in suit are many. The 294, 562 and 509 Patents, as issued, comprise 357, 146 and 178 claims, respectively. Many of the claims of the 294 Patent were later cancelled in a re-examination by the Patent Office, leaving 152 confirmed. The number of claims alleged to be infringed in each of the 294, 562 and 509 Patents is 70, 76 and 100, respectively. These almost 250 claims are discussed in greater detail below.
II. Parties
[13] The plaintiff (Camso Inc.) and the defendants (Soucy International Inc. and Kimpex Inc.) are direct competitors in the field of endless track belts for ATVs and other vehicles. Together, they account for 90-95% of sales worldwide of such products.
A. Camso Inc.
[14] The plaintiff was incorporated as Camoplast Inc. in 1982 as a spin-off of divisions of Bombardier Inc. related to rubber (in French, “caoutchouc”), apparel (in French, “mode”) and plastic (in French, “plastique”). In 2010, the plaintiff changed its name to Camoplast Solideal Inc. It was renamed Camso Inc. on July 3, 2015. The plaintiff is referred to hereinafter as Camso.
[15] In 2006, Camso made important acquisitions relating to A&D Boivin Design Inc. (A&D Boivin) and Tatou Inc., two of its then competitors. A&D Boivin was the original applicant of the patents in suit. Camso acquired assets of A&D Boivin related to its ATV track conversion system business, including the original application of the patents in suit. This acquisition included products identified as Traxion+ and Giant. Later, Camso acquired all outstanding shares of Tatou Inc., which had developed several ATV track systems bearing the same name (Tatou). These products are discussed in greater detail below.
B. Soucy International Inc.
[16] The defendant Soucy International Inc. (Soucy) was incorporated in 1973 as Les distributions Quimpex ltée by its owner and President Gilles Soucy to develop, design and manufacture tracks and other parts for powersport vehicles, primarily snowmobiles. The company was renamed Quimpex ltée in 1986, and was given its current name in 1995.
[17] Soucy manufactures endless track belts and other products for a wide range of applications, including snowmobiles, ATVs, industrial vehicles, military vehicles, snow blowers, and agricultural vehicles. Soucy’s track belts range in weight from 1 kg to 1000 kg, and are installed on vehicles and products ranging from a few dozen pounds to 50 tons. Among Soucy’s products are the track assemblies in issue in the present case.
C. Kimpex Inc.
[18] The defendant Kimpex Inc. (Kimpex) is the result of a merger in 2000 of a company controlled by Mr. Soucy and another company that Mr. Soucy had reacquired after selling it to investors in 1993. That other company had been incorporated as Gilles Soucy Inc. by Mr. Soucy in 1973.
[19] Kimpex distributes parts, accessories and apparel for the powersports industry (ATVs, snowmobiles, motorcycles, marine), some of which are manufactured by Soucy, including the ATV track assemblies at issue in the present case.
III. Issues in Dispute
[20] Camso alleges infringement of many of the claims of the 294, 562 and 509 Patents. The defendants deny infringement of most of the asserted claims. They admit that claims 1, 2, 3, 9, 10, 11, 12, 43, 49, 50, 51, 52 and 101 of the 562 Patent are infringed if they are valid. The defendants argue that these claims are invalid, and further that all of the claims in issue are invalid if they are construed so as to find infringement. The grounds of invalidity asserted by the defendants are anticipation, obviousness, overbreadth, insufficiency, and section 53 of the Patent Act, RSC 1985, c P-4.
[21] The infringement and validity issues turn largely on the construction given to various terms used in the claims, as well as on the expected knowledge of a person skilled in the relevant art at the relevant time.
IV. Witnesses
[22] Camso introduced five fact witnesses and one expert witness. The defendants introduced three fact witnesses and two expert witnesses. The testimony of these witnesses is summarized in this section.
A. Fact Witnesses
[23] I found all of the fact witnesses to be generally credible and reliable, though the passage of decades since some of the events in question has limited some witnesses’ ability to recall details.
(1) Camso’s Fact Witnesses
(a) Bernard Jean
[24] Mr. Jean is a co-inventor of the Tatou ATV track system and is currently employed by Camso as a technical advisor. In the mid-1990s, Mr. Jean, with Denis Boisvert, began exploring and developing the mechanism for the Tatou system. Mr. Jean joined Camso as part of its acquisition of Tatou Inc. in 2006.
[25] Mr. Jean discussed various aspects of the Tatou system, including the thought process behind it, the track system’s mechanical functions, and the differences between each version in its evolution.
(b) Denis Boivin
[26] Mr. Boivin is a named co-inventor of the patents at issue. He has a degree in mechanical engineering and was a registered engineer until a few years ago. He worked at Bombardier Recreational Products (BRP) for a number of years. In 1993, he started working on snowmobile suspensions in his free time. In 1995, he formed A&D Boivin with his brother, Alain Boivin. Through A&D Boivin, the brothers developed and patented different snowmobile and ATV mechanisms, including Traxion+ (which embodies the design of the patents in suit). In 2000, Mr. Boivin left BRP to dedicate himself full-time to A&D Boivin.
[27] Mr. Boivin discussed the circumstances surrounding the patented invention and the mechanisms involved in the invention.
(c) Denis Courtemanche
[28] Mr. Courtemanche is a retired Camso employee and a named co-inventor of the patents in suit. He began his career in 1962 at the age of 17 with BRP as a machinist, manufacturing different elements of snowmobile tracks. He moved to Camso when it was spun off from BRP. By 1986, Mr. Courtemanche was Production Manager. Shortly thereafter, he became the manager of the Camso research centre with a focus on snowmobile and power sport vehicle tracks. He retired in 2014.
[29] Mr. Courtemanche discussed the evolution of snowmobile tracks from 1962 to the early 2000s. He also spoke of the events that occurred at Camso in the 1990s involving Charles Shaw (a fact witness for the defendants) and Mr. Shaw’s company Sno Conversions Industries LLC (SCI).
(d) Julien Michaud
[30] Mr. Michaud has been employed by Camso since 2003 and has held the position of Vice-President and General Director of Business Affairs, Construction Division since 2017. He has a degree in mechanical engineering. He was working at a company called ADS Composite in 2003 when it was purchased by Camso.
[31] Mr. Michaud discussed Camso’s internal organisation and its marketing and product development strategies around the time of its acquisitions of Tatou Inc. and A&D Boivin.
(e) Jérémie Zuchoski
[32] Mr. Zuchoski is currently employed by Camso as the Product Line Director for the Track System Group. He obtained a degree in mechanical engineering in 2003 and began working at A&D Boivin on further developments to the Traxion+ system. He joined Camso in 2006 as part of its acquisition of A&D Boivin.
[33] Mr. Zuchoski discussed the various products developed by A&D Boivin and Camso in the years around the acquisition.
(2) The Defendants’ Fact Witnesses
[34] In addition to the fact witnesses introduced by the defendants who testified in Court, the parties also agreed that they could cite as evidence parts of the transcript of the examination for discovery of Alain Boivin as a co-inventor of the patents in suit. Alain Boivin is the brother of Denis Boivin, one of Camso’s fact witnesses.
(a) Charles Shaw
[35] Mr. Shaw was the principal of SCI which was based in California and developed and sold various ATV track conversion kits, including Sno-Traxx, Sno-Quad and Quad-Traxx in the 1990s.
[36] Mr. Shaw’s testimony discussed the history of the development and marketing of SCI’s ATV track conversion kits, with an emphasis on the decision to remove the stiffening rods that had been included in prototypes of the endless tracks. Because of the nature and timing of SCI’s business, Mr. Shaw’s testimony was important in establishing the prior art that was available at the time of the patents in suit. This testimony was therefore important in assessing the validity of the claims in issue.
[37] Mr. Shaw testified straightforwardly and with no indication of any particular interest or bias in favour of the defendants. That said, his memory was imprecise and unreliable about details from some 20 years ago. This is not surprising. As a result, I am hesitant to rely on his memory when his testimony is uncorroborated. I am also not surprised that he had few documents from his SCI business. I accept his explanation that most such documents were thrown out years ago, and the few that he located were found in stray boxes that had not been thrown out. He had to make a couple of important corrections to his June 8, 2018 affidavit, but this may reflect the urgency of its preparation. Nevertheless, I am somewhat concerned that the errors in his affidavit and the failure to locate certain documents earlier reflect a level of apathy concerning the accuracy of his testimony.
(b) Yves St-Pierre
[38] Mr. St-Pierre is the Technical Director for Soucy. He has a degree in mechanical engineering and is a registered engineer. He has worked in various divisions at Soucy since shortly after completing school in 1995. Mr. St-Pierre was also the corporate representative for the defendants during examinations for discovery by Camso.
[39] Mr. St-Pierre discussed Soucy’s history and the research and development of its products with a focus on the TJD Cat Track conversion kit, which was similar to Tatou and was developed around the time of the patents in suit.
(c) France Bégin
[40] Ms. Bégin is employed by the defendant Kimpex and has been the Product Manager of the ATV and Motorcycle Division since 2002. She joined Kimpex in 1987.
[41] Ms. Bégin discussed the development, marketing and sale of different Kimpex products, including the TJD Cat Track conversion kits.
B. Expert Witnesses
(1) Camso’s Expert Mark Kittel
[42] Mr. Kittel is a forensic engineer with Veritech Consulting Engineering LLC. He graduated with a degree in mechanical engineering in 1998 and is a Professional Engineer in the states of Colorado and California. From 1998 to 2006, Mr. Kittel worked for Honda in Research and Development for the Power Sport Vehicle Division. While there, he worked on the development of a Utility-Task Vehicle (UTV), early designs of which contemplated endless tracks in place of the rear wheels. As a forensic engineer, Mr. Kittel assists insurance companies and courts with accident reconstruction and analyzing mechanical failures for various types of vehicles, including motorcycles and ATVs.
[43] Mr. Kittel provided his interpretation of the claims in issue in the patents in suit. He also provided his opinion on the validity of the claims in issue and on which of the defendants’ products infringe the patents. Mr. Kittel provided the Court with three export reports setting out his opinions and commenting on Mr. Leblanc’s opinions.
[44] Though his experience with tracked ATVs is limited compared to the other experts, I feel that it is sufficient for him to understand the patents in suit and provide helpful opinions to the Court in this case. Camso suggests that he be accepted as having expertise defined as follows:
Mechanical engineer with expertise in the development and testing of motorcycles and ATVs/UTVs, with and without track systems, as well as forensic engineering with an emphasis on issues such as powersport vehicle dynamics.
[45] The defendants object to this definition. They argue principally that Mr. Kittel has no experience with the design and manufacture of endless tracks for tracked vehicles, or with vehicles for use in the snow, and that he has little experience even using off-road vehicles in the snow.
[46] Having considered the defendants’ objection to this definition, and because there is no evidence that he has experience developing and testing motorcycles, I accept his expertise as modified here:
Mechanical engineer with expertise in the use of motorcycles, and in the development and testing of ATVs/UTVs, with and without track systems, as well as forensic engineering with an emphasis on issues such as powersport vehicle dynamics.
[47] His testimony was generally clear and logical, and I agree with most of it, at least as regards claim construction. Also, his answers on cross-examination demonstrated a willingness to concede points where appropriate.
[48] That said, his limited experience in the field of tracked ATVs (including endless tracks themselves), as well as vehicles for use in snow, affect the weight I give to his view of the common general knowledge of the skilled person.
(2) The Defendants’ Expert Pierre Pellerin
[49] Mr. Pellerin is a retired pilot who has had a longstanding hobby interest in snowmobiles. In 1980, he started collecting old snowmobiles and repairing them. He sold some, but kept many. The snowmobiles in his collection (about 120 of them) are currently on display in his private museum. He also collects old snowmobile owner’s manuals, books, and magazines. Starting in the late-1990s, he joined a number of snowmobile associations, including the “Regroupement des collectionneurs des motoneiges antiques du Québec” (a group for antique snowmobile collectors) of which he has been the president since 2013. Finally, he is the author of “Histoire de la motoneige,” a book that reviews the history of snowmobiles from 1900 to 2000. An English version of the book entitled “Snowmobile History: the Vanishing Trail” was written later and examines the history of the snowmobile up to 2010. It is difficult to imagine a more passionate amateur of snowmobiles.
[50] Mr. Pellerin discussed the history and evolution of snowmobiles and snowmobile track belts. Mr. Pellerin also provided a report of his evidence.
[51] Camso objects to the treatment of Mr. Pellerin as an expert. Camso argues that his expert report contains no statement of opinion, and therefore he is simply a fact witness. Of course, if I agree with Camso that Mr. Pellerin’s testimony contains no opinion, then his testimony is nevertheless admissible (subject to relevance). Camso acknowledges this but argues that this issue is important because there may be implications as to costs if Mr. Pellerin is considered a fact witness rather than an expert. Typically, reasonable expenses associated with a relevant expert witness are assessed in full in costs, whereas similar expenses for a fact witness are not.
[52] I agree that much of Mr. Pellerin’s testimony appeared to be mostly factual in nature. However, there are two reasons that I conclude that he should be recognized as an expert witness.
[53] Firstly, I find that paragraph 33 of Mr. Pellerin’s report states an opinion of the kind that would not be permissible from a fact witness:
Bien que la chenille de motoneige avec tiges (ou raidisseurs) était plus commune, la chenille de motoneige souple (sur la largeur) sans tige ou raidisseur était commune et connue généralement des personnes qui œuvraient dans le milieu de la motoneige avant l’année 2000.
[Translation] Although endless belts for snowmobiles with rods (or stiffeners) were more common, endless belts for snowmobiles without rods or stiffeners were common and generally known by persons working in the field of snowmobiles before 2000.
[54] More importantly, the facts about which Mr. Pellerin testified are historical in nature. Many of these facts could not be introduced by people with direct knowledge. Even if such people were available, it would greatly lengthen the trial to require their testimony rather than Mr. Pellerin’s. His ability to speak to these issues despite the rule against hearsay is the result of a lifetime devoted to snowmobile history. The defendants cite the decision of the Supreme Court of Newfoundland and Labrador in Anderson v Canada (Attorney General), 2015 NLTD(G) 138, 2015 CanLII 63429 [Anderson], and the discussion therein of the criteria for the admission of expert evidence as determined by the SCC in R v Mohan, [1994] 2 SCR 9 at 20:
Admission of expert evidence depends on the application of the following criteria:
(a) relevance;
(b) necessity in assisting the trier of fact;
(c) the absence of any exclusionary rule;
(d) a properly qualified expert.
[55] There is no doubt that Mr. Pellerin’s testimony was relevant and that he was eminently qualified. No applicable exclusionary rule has been asserted. That leaves only the issue of necessity. As stated in Anderson at paragraph 11:
… The Supreme Court of Canada has confirmed that the “necessity” component of the admissibility test ought not to be judged by too strict a standard. Rather, the requirement is that the opinion be necessary in the sense that it provides information “which is likely to be outside the experience and knowledge of a judge or jury” (Mohan at page 23). Identifying and reviewing the relevant historical documents among thousands of documents produced and then organizing them contextually results in a concise and comprehensible presentation of information that is beyond the experience and knowledge of the reasonable judge or juror.
[56] This reasoning is equally applicable in the present case. I accept Mr. Pellerin’s expertise as a historian in the field of snowmobiles and other vehicles for use on snow.
[57] Mr. Pellerin provided clear and informative testimony. He thoroughly explained the history of the snowmobile and easily discussed various snowmobile models, in terms of their structures and mechanisms. He was an unbiased and credible witness.
(3) The Defendants’ Expert Jean-Yves Leblanc
[58] Mr. Leblanc is a mechanical engineer with 45 years of experience and is currently employed as a forensic engineer. Mr. Leblanc began his career in the mid-1970s working with industrial forestry vehicles. He spent most of the 1970s and 1980s working in this area. In 1992, Mr. Leblanc joined BRP as the Engineering Director in the Snowmobile Development Division. During his 20 years with BRP, he worked in different divisions and held a number of different positions, including positions with regard to quality control and product safety. In 2012 he joined CEP as a forensic engineer.
[59] Mr. Leblanc provided his construction of the claims in issue, his opinion on which products infringe the patents, and his opinion on the validity of the patents. Mr. Leblanc also provided the Court with three export reports setting out his opinions on these issues, and commenting on Mr. Kittel’s opinions.
[60] Mr. Leblanc clearly has sufficient expertise to be accepted as an expert. I recognize him as a mechanical engineer with expertise:
in the development of rubber track systems for small vehicles, such as snowmobiles;
generally for tracked systems used in various types of vehicles; and
in product safety for motorized vehicles.
[61] Mr. Leblanc was eager to provide the Court with knowledge and instruction regarding the general track assembly and track belt structures and mechanisms. He clearly has a profound understanding of the engineering principles at play. However, he sometimes overlooked finer details in his assessment. For example, at one point he confused the front and rear track assemblies of a particular track kit. This was not an isolated incident. Such details are critical in the present case.
[62] In addition, I have concerns regarding (i) his construction of the term “ATV,” and (ii) measurements that were reported in his first expert report. These concerns are detailed later in this decision, but the result is that Mr. Leblanc appeared to be too close to the defendants’ counsel and not sufficiently independent.
V. Claims in Issue
[63] The claims in issue of the patents in suit are:
294 Patent: Claims 2, 3, 4, 20, 22, 23, 29, 30, 31, 47, 49, 58, 59, 63, 66, 67, 68, 73, 74, 75, 91, 92, 94, 95, 96, 100, 105, 108, 109, 115, 116, 117, 133, 134, 136, 137, 138, 142, 143, 144, 160, 162, 163, 170, 171, 175, 178, 179, 180, 185, 186, 187, 203, 204, 206, 207, 208, 212, 213, 217, 220, 221, 227, 228, 229, 245, 246, 248, 249, 250;
562 Patent: Claims 1, 2, 3, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 22, 23, 25, 26, 27, 28, 29, 32, 33, 38, 39, 40, 41, 42, 43, 48, 49, 50, 51, 52, 53, 54, 55, 56, 57, 58, 62, 63, 65, 66, 67, 68, 69, 76, 77, 78, 79, 80, 101, 102, 107, 108, 109, 110, 111, 112, 113, 114, 115, 116, 120, 121, 123, 124, 125, 126, 127, 134, 135, 136, 137, 146;
509 Patent: Claims 1, 2, 3, 4, 5, 7, 8, 10, 11, 12, 13, 15, 17, 18, 20, 21, 22, 23, 24, 25, 26, 27, 30, 33, 34, 35, 36, 37, 39, 40, 42, 43, 44, 45, 47, 48, 49, 50, 51, 54, 55, 56, 57, 58, 60, 61, 63, 64, 65, 66, 68, 70, 71, 73, 74, 75, 76, 77, 78, 79, 80, 82, 83, 85, 86, 87, 88, 90, 92, 93, 95, 96, 101, 102, 103, 104, 105, 106, 107, 108, 109, 110, 111, 112, 113, 114, 116, 118, 119, 120, 121, 123, 124, 126, 127, 128, 129, 130, 132, 133.
[64] For convenience, these claims are reproduced in the Appendix to these reasons.
[65] Many of the elements of the claims in issue appear in similar or identical form in several different claims. Accordingly, these claims can be grouped, thus simplifying somewhat the exercise of construction of the claims, as well as analysis of issues of validity and infringement of the claims. These groups of claims are discussed in greater detail below.
A. The 294 Patent
[66] Seven independent claims of the 294 Patent must be reviewed: claims 1, 28, 56, 98, 141, 168 and 210. These various independent claims have different preambles, thus defining different types of things:
Claim 1 concerns an endless track for a track assembly;
Claim 28 concerns a set of endless tracks for a track assembly;
Claim 56 concerns a track assembly;
Claims 98 and 210 concern a set of track assemblies;
Claim 141 concerns an endless track for a track assembly of a set of track assemblies;
Claim 168 defines a track assembly for a set of track assemblies.
[67] It is convenient here to reproduce claim 1:
1. An endless track for a track assembly to provide traction to an all-terrain vehicle (ATV), the track assembly being mountable to the ATV in place of a ground-engaging wheel, the track assembly comprising a plurality of track-contacting wheels for contacting the endless track, the plurality of track-contacting wheels including a driving wheel to impart motion to the endless track, the endless track comprising:
i) an inner side for facing the plurality of track-contacting wheels; and
ii) a ground-engaging outer side for engaging the ground;
the endless track being free of stiffening rods extending in a transversal direction of the endless track.
[68] Though claim 1 (as well as the other independent claims of the 294 Patent) is not itself in issue (because these claims have been cancelled in re-examination), many claims dependent thereon are in issue. It is therefore necessary to construe the elements of claim 1.
[69] These elements can be identified as follows:
Providing traction to an all-terrain vehicle (ATV);
Mountable to the ATV in place of a ground-engaging wheel;
A plurality of track-contacting wheels for contacting the endless track;
A driving wheel to impart motion to the endless track;
An inner side for facing the plurality of track-contacting wheels;
A ground-engaging outer side for engaging the ground;
Free of stiffening rods extending in a transversal direction.
[70] All of these claim elements are also present in the other independent claims in issue of the 294 Patent, except that claims 141, 168 and 210 do not specify that the track assembly is mountable to the ATV in place of a ground-engaging wheel. Instead, they specify that the ATV comprises a straddle seat and handlebars. Also, claims 56, 98, 168 and 210, which concern track assemblies or sets thereof, specify that the plurality of track-contacting wheels also includes an idler wheel, and that an endless track is disposed around the plurality of track-contacting wheels.
[71] The claims dependent on claim 1 which are in issue are claims 2, 3, 4, 20, 22 and 23. Because the dependency of claims 20, 22 and 23 on claim 1 is not direct, it is necessary also to consider claims 6, 14, 15, 16, 18, 19 and 21, even though they were cancelled. The table below identifies the limitations defined in each of the foregoing dependent claims (cancelled claims are shown in italics):
Claim
Dependent on Claim
Limitation
2
1
A flexibility of the endless track in the transversal direction of the endless track allows the endless track to conform to a profile of the ground
3
2
The profile of the ground includes a depression, the flexibility of the endless track in the transversal direction of the endless track allowing the endless track to conform to the depression
4
3
The endless track includes a central portion aligned with the driving wheel in the transversal direction of the endless track when the driving wheel imparts motion to the endless track, the flexibility of the endless track in the transversal direction of the endless track allowing the central portion of the endless track to contact the depression
6
1-5
The ground-engaging outer side comprises a plurality of traction projections spaced apart in a longitudinal direction of the endless track
14
6-13
The inner side comprises a plurality of inner lugs distributed in the longitudinal direction of the endless track
15
14
The plurality of inner lugs is arranged into a plurality of rows of lugs spaced apart in the transversal direction of the endless track, the lugs of each row of lugs of the plurality of rows of lugs being spaced apart in the longitudinal direction of the endless track
16
15
A first one of the rows of lugs is a row of drive lugs positioned to engage the driving wheel
18
15-17
The plurality of track-contacting wheels includes an idler wheel, a first given one of the rows of lugs being a row of guide lugs to be positioned adjacent to the idler wheel
19
18
The row of guide lugs is a first row of guide lugs, a second given one of the rows of lugs being a second row of guide lugs to be positioned adjacent to the idler wheel such that the idler wheel passes between the first row of guide lugs and the second row of guide lugs
20
19
The idler wheel is a first idler wheel, the plurality of track-contacting wheels including a second idler wheel spaced apart from the first idler wheel in the transversal direction of the endless track, a third given one of the rows of lugs and a fourth given one of the rows of lugs respectively being a third row of guide lugs and a fourth row of guide lugs to be positioned adjacent to the second idler wheel such that the second idler wheel passes between the third row of guide lugs and the fourth row of guide lugs
21
1-17
The plurality of track-contacting wheels includes a first idler wheel and a second idler wheel spaced apart from the first idler wheel in a longitudinal direction of the track assembly, an axis of rotation of the driving wheel being located in the longitudinal direction of the track assembly between an axis of rotation of the first idler wheel and an axis of rotation of the second idler wheel
22
21
The axis of rotation of the driving wheel is located closer to the axis of rotation of the second idler wheel than to the axis of rotation of the first idler wheel in the longitudinal direction of the track assembly
23
22
The first idler wheel is located in a front of the track assembly and the second idler wheel is located in a rear of the track assembly
[72] A number of claims dependent on claim 56 of the 294 Patent add additional limitations that are not mentioned in the previous table (claim 60 is shown in italics because it has been cancelled):
Claim
Dependent on Claim
Limitation
60
57-59
A frame interconnecting the first idler wheel and the second idler wheel
63
60-62
The frame comprises a first arm and a second arm shorter than the first arm
66
60-65
A tension adjusting mechanism mounted to the frame for adjusting a tension of the endless track
67
66
The tension adjusting mechanism is configured to adjust a position of a given one of the first idler wheel and the second idler wheel for adjusting the tension of the endless track
68
67
The given one of the first idler wheel and the second idler wheel is the first idler wheel
91
57-90
The endless track has an upper run extending over the driving wheel and from the first idler wheel to the second idler wheel and a lower run extending under the driving wheel and from the first idler wheel to the second idler wheel, the lower run of the endless track being curved in the longitudinal direction of the track assembly between the axis of rotation of the first idler wheel and the axis of rotation of the second idler wheel
92
57-90
The endless track has an upper run extending over the driving wheel and from the first idler wheel to the second idler wheel and a lower run extending under the driving wheel and from the first idler wheel to the second idler wheel, the track assembly being configured such that, in the longitudinal direction of the track assembly, a lowest segment of the lower run of the endless track is located where the driving wheel is located
94
91-93
The track assembly is configured to press onto the ground a limited portion of the lower run of the endless t