Westaim Corp. v. Royal Canadian Mint

Westaim Corp. v. Royal Canadian Mint
Court (s) Database
Federal Court Decisions
Date
2002-11-22
Neutral citation
2002 FCT 1217
File numbers
T-453-98
Notes
Digest
Decision Content
Date: 20021122
Docket: T-453-98
Neutral Citation: 2002 FCT 1217
BETWEEN:
WESTAIM CORPORATION
Plaintiff
- and -
ROYAL CANADIAN MINT
Defendant
AND BETWEEN:
ROYAL CANADIAN MINT
and THE ATTORNEY GENERAL OF CANADA
Plaintiffs by Counterclaim
- and -
WESTAIM CORPORATION
Defendants by Counterclaim
REASONS FOR ORDER
HANSEN J.
Introduction
[1] This is a patent infringement action in which The Westaim Corporation ("Westaim" or "plaintiff") alleges that claims 2, 4, and 6 of its patent, Canadian Letters Patent No. 1,198,073 ("'073 patent") have been infringed by the Royal Canadian Mint ("RCM" or "defendant") at its coin blank manufacturing operation in Winnipeg, Manitoba.
[2] The RCM denies the allegations and seeks declarations of non-infringement. As well, the RCM seeks a declaration that the '073 patent is invalid.
[3] The Attorney General of Canada is a plaintiff by counterclaim. In the counterclaim, the Attorney General also asks for a declaration of invalidity. The Attorney General, however, did not participate in the trial.
Background
[4] The '073 patent, entitled "Process for Producing Coin Blanks", was issued on December 17, 1985 to Sherritt Gordon Mines Limited ("Sherritt"). The application for the '073 patent was filed in Canada on July 8, 1982 and claims priority from a corresponding patent application filed in the United Kingdom on July 28, 1981. The named inventors are Dr. Maurice Clegg and Mr. Michael Ruscoe.
[5] Sherritt is a predecessor to Viridian Inc.. Viridian Inc. assigned the '073 patent to Westaim in 1996.
[6] Traditionally, coins were made from solid metals such as gold, silver, copper and alloys of copper and silver. In later years, nickel and nickel alloys were introduced as less expensive alternatives.
[7] During World War II and the Korean War, in an attempt to reduce the cost of producing coins and to conserve strategic materials for the war effort, Canada, the USA, Germany and other countries substituted their nickel and copper coins with coins produced from steel strip clad with metals such as nickel and zinc. For example, in Germany steel slabs with a metal coating were reduced to coinage gauge by hot and cold rolling. Blanks were punched from the clad steel strip and then minted. In Canada, steel strip was electroplated with nickel and then a thin coating of chromium. In the USA, steel strip was electroplated with zinc. For both the Canadian and USA coins, blanks were punched from the electroplated steel strip and then minted. Because the middle layer of steel was exposed, these World War II and Korean War coins were prone to rusting at the edges. As well, the plate tended to crack and peel. In the minting process, die life was significantly reduced due to the hardness of the steel.
[8] In the 1960's, Vereinige Deutsche Nickelwerke AG ("VDN") developed a process whereby two strips of nickel were metallurgically bonded to the two sides of strip steel. The strip now formed of steel sandwiched between two layers of nickel was cold rolled to the required gauge followed by the usual processes of punching, edging, deburring, annealing and burnishing to produce coin blanks. The exposed edge of the steel was still subject to rusting and corrosion particularly in equatorial countries.
[9] The dramatic increase of the price of silver in the 1960's led many countries to convert their coinage to an alloy of 75% copper and 25% nickel known as cupro-nickel. However, the rising prices of nickel and copper led a number of countries to turn to steel based coinage.
Sherritt's Nickel-Bonded-Steel Product
[10] In the early 1970's, Sherritt recognized the need for a substitute for nickel coinage. Sherritt's Director of Coinage Marketing challenged Dr. Clegg, the head of Sherritt's Department of Physical Metallurgy Research and Mr. Ruscoe a research metallurgist, to develop a new coinage product having all of the properties of nickel but at lower cost than a nickel coin. In order to meet the competition, the 1960's German roll clad steel product noted earlier, the requirements for the new coin blank included 10% nickel by weight on each face of the coin and a metallurgical bond between the nickel and steel core. To address the problem of the rusting on the edges of the German product, the edge of the coin blank had to be plated with nickel. As well, the new product had to match the properties of nickel including its ductility and softness, silver colour, corrosion resistance, metallic ream, density and vending machine discrimination. The requirement of 10% by weight of nickel was later reduced to 5% by weight on each face.
[11] Dr. Clegg and Mr. Ruscoe's subsequent work resulted in the development of Sherritt's nickel- bonded-steel ("N-B-S") coinage product and the issue of a number of US, Canadian and U.K. patents which will be referred to collectively as the N-B-S patents in these reasons.
[12] These patents relate to a process and product whereby discs, the cores, are punched from hard steel strip, deburred, rimmed, barrel electroplated with nickel or copper, and then annealed to soften the steel core. The coin blank is then minted. Of particular significance in the N-B-S process, is the formation of a metallurgical bond between the nickel or copper plate and the steel core during the annealing step.
[13] One of the concerns associated with the N-B-S process was the formation of blisters on the surface of the plated core during the post-plate anneal. In 1976, Dr. Clegg and Mr. Ruscoe began working on a solution to this problem. The result of that work is the patent at issue in these proceedings.
The '073 patent
[14] The '073 patent relates to the "production of coin blanks suitable for minting into coins". The word "coins" as defined in the patent includes "not only coins used as currency but also similar disc-like articles such as medals and medallions upon which insignia is imprinted".
[15] The patent discloses Sherritt's United States N-B-S patents as the relevant prior art regarding the production of less expensive coinage and summarizes the earlier patents as follows:
In these prior proposals, a metal such as nickel or copper is electroplated onto a disc-shaped steel core to produce a nickel or copper cladding with a thickness of at least about 0.03 - 0.05 mm on each opposed face of the core and a thickness on the circumference of the core in the range of from about 2 to about 4 times the face thickness, and the cladded core is heated to form a metallurgical bond between the nickel or copper cladding and the core and to reduce the hardness to less than about 65 on the Rockwell 30T hardness scale. The resultant blanks are then imprinted to form coins.
[16] Next, the inventive step is described which distinguishes the invention from the prior art:
The present invention is based on the discovery that satisfactory coin blanks can be produced by annealing a metal core to reduce its hardness to less than about 65 on the Rockwell 30T hardness scale, and electro-plating a metallic cladding onto the annealed core to produce a thickness of at least about 0.01 mm on each opposed face of the core and a thickness on the circumference of from about 2 to about 4 times the face thickness. In other words, the metallurgical bond formed between the cladding and the core in the prior proposals can be omitted, and the annealing of the core can be carried out before instead of after the electroplating operation. [17] Following a detailed statement of the process as set out in the claims, the patent states that the "metallic cladding may be nickel, a nickel alloy, copper or a copper alloy, silver or gold". As well, the "cores may be of steel, nickel, zinc, zinc alloys, or other commercial coinage metals such as cupronickel".
[18] The disclosure states that the steel may have a carbon content in the range of about 0.005 to about 0.1% by weight. Where the steel has a carbon content less than about 0.01% by weight, the cores may be cooled by immersion in water. Where the steel has a carbon content greater than 0.01%, the cores should be cooled at a much slower rate to achieve the required degree of hardness of less than about 50 on the Rockwell 30 T hardness scale. Examples of the heating and cooling steps are provided.
[19] The patent also states that the metallic cladding may be applied in the manner described in the '014 patent with a face thickness of a least 0.01 mm, preferably between about 0.01 mm and 0.1 mm.
[20] The disclosure provides a list of suitable metallic cladding and core combinations which can be used with the process of the invention: "nickel on steel, silver on nickel, copper on nickel, nickel on copper, nickel on cupronickel, gold on copper on nickel, bronze on steel, bronze on nickel, copper on steel and nickel-iron on steel".
[21] Finally, the disclosure states that other embodiments of the invention will be readily apparent to a person skilled in the art.
[22] As noted earlier, only claims 2, 4, and 6 of the patent are at issue. Accordingly, only these three claims are detailed here.
[23] Claims 2, 4, and 6 are dependent upon claim 1. It reads:
A process for producing blanks suitable for minting into coins, comprising providing a plurality of appropriately disc-shaped metallic cores, heating the cores to decrease their hardness to less than about 65 on the Rockwell 30T hardness scale, cooling the heated cores to provide cooled cores with a hardness less than about 65 on the Rockwell 30T hardness scale, loading a plurality of cooled steel cores into an electrically non-conducting perforated container, placing the container in an electroplating bath, electroplating a metallic cladding onto the cores, while moving the container angularly about a horizontal axis, until a plating thickness of at least about 0.01 mm has been deposited on each face of each core and a thickness of from about 2 to about 4 times the face thickness has been deposited on the circumference of each core, and removing the cladded core pieces from the container. [24] Claim 2 provides that the cores are steel. Claim 4 provides that the carbon content of the steel is in the range of from about 0.005 to about 0.1% by weight. Claim 6 provides for a process according to claim 4 with the steel having a carbon content higher than about 0.01% and the heated cores are cooled at a rate to provide a hardness of less than about 50 on the Rockwell 30T hardness scale.
The RCM Process
[25] In the Agreed Statement of Facts, the RCM process for the production of its coin blanks is described as follows:
a) The RCM purchases coils of cold rolled low carbon steel strip, having a hardness in the range of about 88-92 on the Rockwell B scale. The steel has a maximum carbon content of 0.06%, preferably 0.04%, and is designated generally as type SAE 1006.
b) The RCM punches disc shaped cores or "blanks" from the steel strip in a blanking press.
c) The steel blanks are deburred, and rimmed (or "upset").
d) The steel blanks are annealed in an annealing furnace, having an atmosphere of 19.5% hydrogen, to decrease their hardness and remove surface oxides. The blanks are heated from ambient temperature to 900 ° C, held and then slow cooled to ambient temperature over a period of about 120 minutes.
e) The cooled blanks have a hardness of approximately 47 on the Rockwell 30T scale.
f) The cooled blanks are then loaded into an electrically non-conducting perforated electroplating barrel, washed and electro-cleaned. After cleaning, the blanks are rinsed and acid pickled.
g) The electrically non-conductive, perforated barrel is rotated about a horizontal axis in a nickel sulphamate electroplating bath until a layer of nickel is electroplated onto the blanks to a thickness of approximately 0.006 - 0.008 mm on the face of the blanks and about 2 times that thickness on the circumference of the blanks.
h) The barrel is removed from the bath and the nickel plated blanks are rinsed, dipped in a 5% sulphuric acid solution, and rinsed.
i) The barrel containing the blanks is rotated about a horizontal axis in an acidic copper sulphate bath until a layer of copper is electroplated onto the nickel plated blanks to a thickness of approximately 0.013 - 0.017 mm on the face of these nickel electroplated blanks and about 2 times this thickness on their circumference.
j) The barrel is removed from the bath and the nickel/copper electroplated blanks are rinsed, anodically electro-cleaned, rinsed, dipped in a 5% sulphuric acid solution, and rinsed again. This is the end of the electroplating steps for coin blanks that will have an outer surface of electroplated copper.
k) Coin blanks that will have an outer surface of electroplated nickel continue on to another electroplating step wherein the barrel is rotated about a horizontal axis in a nickel sulphamate electroplating bath until a layer of nickel is electroplated to a thickness of approximately 0.006 - 0.010 mm onto the face of the nickel/electroplated blanks and about 2 times this thickness on their circumference.
l) The electroplated coin blanks from step j) or k) are rinsed and removed from the barrel and dried in a hot air dryer.
m) All coin blanks are heated in a furnace having an atmosphere of about 8.5% hydrogen to remove internal plating stress, to improve the grain structure with a grain size of the plating between ASTM grain size numbers 7 and 10.
n) The blanks are burnished in a centrifugal polishing unit.
o) The burnished blanks are inspected.
p) If acceptable, the blanks are minted into coins or sold to another mint for subsequent minting.
The Relevant Statute
[26] As the '073 patent was issued before October 1, 1989, the provisions of the Patent Act, R.S.C. 1985, c. P-4 (the "Act") apply to this proceeding.
Issues
Infringement
[27] Westaim submits that a comparison of the RCM process and claims 2, 4, and 6 of the '073 patent clearly demonstrates that the RCM has used every step of each of the relevant claims in its process.
[28] The RCM maintains that its process does not infringe any of the claims at issue for the following reasons:
a) the first layer of nickel electroplated onto the steel cores is not at least 0.01 mm thick;
b) multiple electroplating baths of different metals are used to achieve a plating thickness greater than 0.01 mm; and
c) the second copper layer and third nickel layer are not electroplated onto steel cores.
[29] Thus it can be seen that the central issue on infringement is whether the two or three electroplated layers used by the RCM in its process are within the scope of any of claims 2, 4, or 6. Westaim takes the position that while the electroplating step itself is an essential element of the invention, the details of the electroplating step are non-essential elements that permit variations.
Validity
[30] The RCM alleges that the '073 patent is invalid for the following reasons:
a) the claimed invention was anticipated;
b) the claimed invention was obvious at the date the invention was made;
c) the claimed invention lacks utility;
d) the claimed invention is broader than any invention made by the inventors;
e) the claimed invention is broader than any invention disclosed in the patent;
f) the claims are ambiguous; and
g) the patent's specification is insufficient to enable a skilled person to practice the claimed invention.
[31] As stated in Whirlpool Corp. v. Camco Inc., [2000] 2 S.C.R.1067, before considering issues of infringement and validity, the relevant claims of the patent at issue are to be construed. Since the pre-October 1989 Act applies in these proceedings, the claims are to be construed at the date the patent was granted.
Construction of the Claims
[32] In Whirlpool, supra, and Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R. 1024, Binnie J. affirmed the "purposive construction" approach to claims construction. The court's task is to identify how the patentee has used various terms in the claims and what was meant by the terms. An understanding of the meaning of the terms is derived from the context of the patent specification as a whole with the assistance of the person skilled in the art to which the patent relates. An informed and knowledgeable reading of the claims will enable the court to identify as stated in Whirlpool, supra at paragraph 45 "... the particular words or phrases in the claims that describe what the inventor considered to be the "essential" elements of his invention".
[33] Three experts testified for Westaim. Mr. Douglas Hill, a metallurgist, was the manager of the Birmingham Mint, UK between 1977 and 1995. He testified as an expert in the field of metallurgy as applied to minting. Dr. John Jonas, Professor emeritus at McGill University, testified as an expert in the field of metallurgy, in particular, the deformation of ferrous metals. Mr. Allan Lee, a retired metallurgical engineer, worked at Sherritt in a number of capacities between 1962 and 1994. He testified as an expert in the field of metallurgy as applied to the coinage industry and the history of coinage development.
[34] Two experts testified for the RCM. Dr. Neil Risebrough, a consultant and Professor emeritus at the University of British Columbia, testified as an expert in the field of metallurgy. Dr. Mordechai Schlesinger, a consultant and Professor emeritus at the University of Windsor, testified as an expert in the field of electroplating.
[35] Westaim submits that the person skilled in the art of the invention, in the present case, is a person skilled in the production of coin blanks suitable for minting. Westaim notes that Mr. Hill and Mr. Lee have many years of experience in this field. In contrast, the RCM's experts do not have any experience in the production of plated blanks. Westaim argues that where there is a conflict in the evidence the opinions of Mr. Hill and Mr. Lee should be accepted over those of the RCM's experts.
[36] The RCM takes the position that it is not necessary that the notional "skilled worker" be an individual. Particularly in this instance, the appropriately skilled person is a team of people bringing together the necessary knowledge and experience regarding the production of plated blanks. As stated by Wetson J. in Mobil Oil Corp. et al. v. Hercules Canada Inc. (1994), 57 C.P.R. (3d) 488 (FCTD) at page 494, reversed but not on this point at 63 C.P.R. (3d) 473 (FCA):
The first step in any patent case is the construction of the patent. In other words, what does the patent mean. However, the audience of the patent is not the average member of the Canadian public but rather the person skilled in the art or science to which the patent pertains. Thus, before construing the patent, it is necessary to define the scope of this notional person.
. . .
The person skilled in the art need not be an individual person. Rather it can be a combination of skilled workers, scientists and technicians, each bringing their own and collective expertise to the problem. This is particularly true where the invention relates to a science or art that transcends several scientific disciplines...
[37] The RCM also relies on the following statement in Fox, Harold G. The Canadian Patent Law and Practice Relating to Letters Patent for Inventions, 4th ed. Toronto: Carswell, 1969 at pages 185-186:
¼The class of workman to be considered is, in each case, that which would carry out the invention. A specification may, therefore, be addressed to more than one class of 'ordinary workmen' and it is no objection that one person may require to call in assistance from a person in another art in order to understand it fully. It is not necessary for the patentee to instruct persons wholly ignorant of the subject-matter to which his invention relates in all that they must known before they can understand what he is talking about. As Lindley L.J. said in Edison and Swan Electric Light Co. v. Holland: "One class of persons may understand only one part of the specification and another class the other, and yet the patent may be valid." This principle was more fully discussed by Lord Parker in Osram Lamp Works Ltd. v. Popes Electric Lamp Co. Ltd.: "¼It may well be necessary to call in aid more than one art. Some of the directions contained in a specification may have to be carried out by skilled mechanics, others by competent chemists. In such case, the mechanic and chemist must be assumed to co-operate for the purpose in view, each making good any deficiency in the other's technical equipment. [references omitted]
[38] The RCM submits that knowledge in the fields of minting, metallurgy and electroplating is essential for a number of reasons. The '073 patent is directed to a process for making coin blanks suitable for minting into coins. Therefore, the skilled person must have some knowledge of the methods and equipment used in the minting process and what is "suitable" for minting. Since one step of the process of the '073 patent is the annealing of the metal cores and a number of metals are referred to in the patent as being suitable for the cores, a skilled person must be knowledgeable in the heat treatment of various metals. As well, the process of the invention includes an electroplating step. Accordingly, the skilled person must be knowledgeable about electroplating and the conditions required to electroplate one metal onto another.
[39] I accept the RCM's argument. In the present case, a reading of the '073 patent makes it clear that it is addressed to a person or a team of people who are knowledgeable in minting, metallurgy and electroplating.
[40] The key difference between the parties' positions regarding the construction of the claims at issue arises from the meaning of the words "¼ placing the container into an electroplating bath, electroplating a metallic cladding onto the cores while moving the container angularly about a horizontal axis, until a plating thickness of at least about 0.01mm has been deposited ¼". The issue is whether the meaning of these words includes a cladding consisting of multiple metallic layers.
[41] With respect to the '073 patent, Mr. Hill states in his report:
41. The '073 Patent teaches me that the annealing step can be carried out before plating the hard steel blanks so that the hard steel blanks are made soft before the plating is applied. The heat treatment costs would have been about the same for either the NBS or the method of this patent. A point made by the patent is that where the composition of the carbon in the steel is kept at a low level, the carefully controlled heat treatment and rate of cooling can soften the steel to make it an acceptable coinage substrate.
46. As of 1981 or 1985 a person skilled in the art would have understood the term "electro-plating a metallic cladding onto cores" to mean that a blank would be electro-plated with a metallic material. I would also have been well aware that it was common practice to electro-plate multi-layers of different materials. The '073 Patent does not restrict itself to the plating of one metal only and as of 1981, I would have understood that included in the concept of that patent would be not only the plating of a layer of one type of metal, but the plating of sequential layers of differing metals before the removal of the blanks from the plating barrels for any further treatments.
54. Speaking as a metallurgist, as of 1981 or 1985 or even today, the number of layers plated during the plating process is immaterial with respect to the process that we are discussing. What is important is that the plating covers the entire blank in a continuous, unbroken surface which surface is retained after minting into a coin.
[42] On cross-examination, Mr. Hill agreed that the words in the claims suggest a single electroplating bath and a single metallic cladding on the cores.
[43] The focus of Dr. Jonas' opinion regarding the claims at issue was on the carbon content of the steel core. He observes in his report that claim 4 in contrast to claim 2 specifies a range of the carbon content for the steel core (about 0.005 to about 0.1% by weight) to include ultra-low carbon steels up to conventional mild steels. Claim 6 provides that if the carbon content is higher than about 0.01% by weight then a slower rate must be used to reduce the hardness of the steel to less than about 50 on the Rockwell 30 T hardness scale.
[44] He also notes that the Rockwell 30 T value in Claim 6 is softer than in claim 2. This is significant, according to Dr. Jonas, because the softer steel causes less die wear during minting and results in a better reproduction of the design features imposed by the dies. Also, because softer steel is readily deformed, it will more likely prevent separation between the plated coat and the core during minting.
[45] Dr. Jonas' report continues with his interpretation of the essential elements of the claims. He states:
20. Overall, I would interpret the essential elements of these claims to be:
i) the use of ultralow carbon steels (0.005 to 0.01% carbon), which have lower carbon levels (and therefore lower hardness levels) than conventional low carbon (0.05 to 0.10% carbon) steels;
ii) annealing (defined below) of the cores is to be done after (rather than before) blanking and before rather than after electroplating;
iii) the annealing process carried out on the prescribed steel cores is intended to reduce the hardness to below about 65 (and indeed below about 50, claim 6) on the Rockwell 30 T hardness scale. Such hardness, particularly the latter, correspond to very soft and therefore relatively formable steels (see above); and
iv) The cores are to be barrel plated after blanking. This is in contrast to the strip plating or roll bonding prior to blanking used by earlier processes.
[46] During cross-examination, a number of questions were put to Dr. Jonas regarding the meaning of "a metallic cladding" in the context of the claims. He maintained that a metallic cladding could have a number of layers.
[47] In his expert report, Dr. Risebrough states that the expanded definition of "coin" in the '073 patent is significant. A review of the prior art cited in the patent reveals that electroplated less expensive coins had a minimum plate thickness of 0.03 to 0.05 mm on each face of the coin and 2 to 4 times that amount on the edge. The plated core was annealed to reduce the hardness of the coin blank to less than 65 Rockwell 30 T and a metallurgical bond was formed between the core and plate. The prior art also reveals that care had to be taken not to deteriorate the metal surface of the blank with the post-plate anneal.
[48] In Dr. Risebrough's opinion, the invention in the '073 patent is based first on the discovery that annealing could take place prior to the plating step and the metallurgical bond could be omitted. A skilled person would understand that a simple mechanical bond would be sufficient to withstand the force of minting and the expected wear of the coin. Second, the thickness electroplated layer can be 0.01 mm rather than the earlier requirement of 0.03 to 0.05 mm.
[49] Dr. Risebrough also notes that the patent directs the reader to use the electroplating process of the U.S. '014 patent which is a process for electroplating nickel on steel to a thickness of 0.05 mm. However, there is no information on how to electroplate other metals onto other cores.
[50] He also observes that in the examples of suitable core and cladding combinations, one of the examples has more than one layer in the cladding.
[51] Dr. Risebrough then makes the following observations:
32. A number of points arise from the claims.
a) Claim 1 describes a process of annealing to soften a metallic core and electroplating a metallic coating on it.
b) The process seems to relate to a single electroplating bath. It says
... placing the container in an electroplating bath, electroplating a metallic cladding onto the cores, moving the container angularly about a horizontal axis until a plating thickness of a metallic cladding of at least about 0.01 mm is deposited on each face of each coin...
So the barrel stays in the same bath until at least 0.01 mm is plated. This process seems to cover only the first of multiple layers such as the gold on copper on nickel example on page 5 of the patent.
c) Only Claim 3 mentions specific plating metals for steel cores.
d) Otherwise the claims relating to steel cores appear to be unrestricted regarding the plating metal.
e) Six of the twelve claims (Claims 2-7) relate to steel with various carbon contents and cooling methods to anneal steel, which suggests that the inventors thought that this information was new and an important part of the invention.
f) Claim 2 seems to cover steel with any carbon content.
[52] Following a lengthy analysis of the meaning of "suitable for minting into coins", Dr. Risebrough states:
42. This limitation allows one to restate the assertions in the patent in a more finite way, as follows:
a) It was not known that a mechanical bond obtained by annealing before electroplating, rather than a metallurgical bond obtained by annealing afterwards, and a minimum face thickness of 0.01 mm, rather than 0.03-0.05 mm, could produce a coin blank that would be formable during minting and thereafter able to resist corrosion and wear during the expected lifetime of a coin.
b) The patented process will yield coin blanks that are formable during minting and thereafter able to resist corrosion and wear during the expected lifetime of a coin.
[53] In his expert report, Dr. Schlesinger states:
118. The patent describes a process to make blanks suitable for minting into coins. A summary of the process is set out at page 2. A skilled person would have understood the process involves two basic steps: annealing disc-shaped cores to soften them, and barrel electroplating a metal coating to a minimum thickness of 0.01 mm.
[54] With respect to the number of layers in the cladding, in Dr. Schlesinger's opinion:
126. A skilled person would have understood that the process described relates to electroplating one metallic cladding, at least 0.01 mm thick, onto a core. In my opinion, the following language of the patent at issue makes this clear (emphasis added):
Page 2, line 29- Page 3, line 2: "placing the container in an electroplating bath, electroplating a metallic cladding onto the cores, which (sic) moving the container angularly about a horizontal axis, until a plating thickness of at least about 0.01 mm has been deposited on each face of each core and a thickness of from about 2 to about 4 times the face thickness has been deposited on the circumference of each core, and removing the cladded core pieces from the container."
Similar language is used throughout the description of the invention. The only exception is the reference on page 5 to gold on copper on nickel, but no process for this coin blank is described anywhere in the patent, nor is it mentioned in any claim.
[55] In his rebuttal report, Dr. Schlesinger notes that when a metal is electroplated a phenomenon known as apitxal growth causes distortion in the lattice structure of the deposited metal. Where the deposited layer is greater than about 0.015 mm these distortions are minimized at the outer surface of the deposited metal. However, where the deposited layer is less than about 0.015 mm, the distortions are not minimized. The exact thickness at which the distortions are minimized depends upon the metal being plated, however, it generally occurs at thicknesses greater than about 0.015 mm. Accordingly, where a thin layer of metal is to be electroplated with a second layer, it is important for an electroplater to know the properties of the thin layer since the distortions can affect adhesion and other properties in the finished product.
[56] Dr. Schlesinger also adds in his rebuttal report that "the electroplating process conditions used to electroplate a second metal onto a thin first metal must often be developed for each specific application". According to Dr. Schlesinger, in 1985, experimentation would have been required to determine the precise conditions. For these reasons, he concludes in his rebuttal report that:
12. ... where a process relates to multiple electroplating layers, particularly thin layers, skilled people normally expressly refer to that fact, and specify the electroplating conditions for the different steps.
13. As stated in my prior declaration, in my opinion a skilled person would read Westaim's Patent as being limited to electroplating a single metallic layer, at least 0.01 mm thick, onto a core.
[57] During cross-examination, Mr. Lee was also questioned regarding the number of layers contemplated in the cladding. Based on the earlier patents referred to in the '073 patent and in particular the '374 patent which involves multiple plating layers, in his view the patent at issue would also include a multilayered coinage product. Mr. Lee acknowledged that there was nothing in the claims language to indicate whether "it is one plating coating or more". He maintained, however, that the cladding could possibly consist of more than one layer.
[58] The RCM submits that the plain meaning of the language of the claims contemplates a cladding having a single metallic layer. The claims language refers to the plating of a single metallic layer throughout the electroplating step. In particular, the RCM points to the use of "a metallic cladding" "an electroplating bath" and "a plating thickness" in the language of the claims. The claims describe the plating step as a single continuous process until a minimum thickness is achieved. Additionally, none of the claims refer to more than one plating layer. The RCM argues that the evidence of Mr. Hill, Dr. Risebrough and Dr. Schlesinger supports this assertion.
[59] The RCM submits that since the language of the claims is clear and unambiguous Westaim must rely on a purposive construction of the claims to expand the meaning of the claims to include a variant of multiple layers within the cladding. As the elements of the claims must be taken as essential, the first question in this analysis is whether there is any language in the claims that indicates multiple layers are contemplated within the scope of the claims. Again, relying on the specific language of the claims and the evidence of Mr. Hill, Dr. Risebrough and Dr. Schlesinger, the RCM takes the position that there is nothing in the language of the claims to suggest that the variant sought by Westaim is included within the scope of the claims. The RCM also argues that the reference in the disclosure to a suitable cladding being "gold on copper on nickel" cannot be used to rewrite the claims to include multiple metallic layers.
[60] The second question is, therefore, does a variant of multiple layers make a functional difference to the working of the invention. The RCM submits that it does make a functional difference. The RCM relies on Dr. Schlesinger's evidence that the process for plating one metallic layer is materially different from the process for plating more than one layer. As well, where a process contemplates the plating of multiple layers this would be expressly specified by a skilled person. The RCM points to Westaim's earlier patents in support of this assertion.
[61] The RCM also submits that although Mr. Hill testified that the number of layers plated during the plating process is immaterial to the process, he was not qualified as an expert in electroplating. Therefore, he was not in a position to offer an opinion regarding the functional differences between the processes for plating one or multiple layers.
[62] The RCM maintains that the evidence clearly demonstrates that the variant of multiple plating layers sought by Westaim does make a functional difference to the process. Therefore, it is not necessary in the analysis to ask whether it would have been obvious to a skilled person that the variant would not make a material difference to the working of the invention.
[63] Finally, the RCM submits that Westaim has failed to discharge their onus of establishing that the elements of the claims relating to the electroplating process are non-essential. Accordingly, they must be taken as essential.
[64] Westaim submits that a construction of the claims based on a plain reading of the claims in the context of the whole specification does not differ from a construction of the claims with the assistance of a skilled person.
[65] According to Westaim, a reading of the disclosure reveals that the patent is directed to the production of plated blanks suitable for minting into coins. The principle inventive difference between the invention and the most relevant prior art is that cores, having been punched, are annealed before instead of after plating. The formation of a metallurgical bond between the core and the plating can be omitted. The disclosure provides instructions for annealing ultra low and low carbon steels. The disclosure specifies a minimum plating thickness of at least about 0.01 mm and preferably a plating thickness between about 0.01 mm and about 0.1 mm. The plating technique to be used is the barrel plating technique specified by Sherritt in its other patents such as the '014 patent. The disclosure suggests a variety of metals for the core and for the cladding. In the disclosure, the word "cladding" refers to both single and multiple metallic layers.
[66] Within this context, Westaim argues that on a plain reading of the claims it is clear that the essential elements of claim 2 are providing punched cores of steel, annealing the cores to reduce the hardness of the cooled cores to less than about 65 Rockwell 30T, and barrel plating the cores with a cladding having a thickness of at least 0.01 mm on the face and 2 to 4 times that amount on the circumference. The essential elements of claim 4 are the same as those of claim 2 except that the punched cores of steel have a carbon content of about 0.005 to about 0.1% by weight. The essential elements of claim 6 are the same as those of claim 4 except the steel cores have a carbon content higher than about 0.01% by weight and the cores are annealed to reduce the hardness of the cores to less than about 50 Rockwell 30T.
[67] Westaim submits that Mr. Hill, Dr. Jonas, Dr. Schlesinger and Dr. Risebrough all agree that the essential feature of the invention is to anneal the metal cores before instead of after plating. In this respect, a construction of the claims with the assistance of the skilled persons does not differ from the plain meaning of the language of the claims.
[68] Westaim states that the experts differed only with respect to the meaning of the word "cladding". Mr. Lee and Dr. Jonas were both of the opinion that the claimed invention contemplated a cladding consisting of multiple metallic layers. Mr. Hill was of the view that the process described in the patent included the plating of a single metallic layer and the plating of multiple layers before the blanks are removed from the plating barrels. Although Mr. Hill conceded on cross-examination that the language of the claims contemplates a single cladding, he was not asked how many metallic layers would be comprised in the cladding.
[69] Westaim argues that the RCM's experts based their opinions that the word "cladding" in the claims describes a cladding having a single metallic layer on a grammatical construction of the claims. Neither of the RCM's experts, however, stated that the number of layers in the cladding was an essential feature of the invention.
[70] Westaim stresses that the '073 patent is not an electroplating patent. Although electroplating a cladding onto the cores is an essential element of the invention, the details of the electroplati