Flatwork Technologies, LLC (Powerblanket) v. Brierley

Flatwork Technologies, LLC (Powerblanket) v. Brierley
Court (s) Database
Federal Court Decisions
Date
2020-10-22
Neutral citation
2020 FC 997
File numbers
T-1615-18
Notes
A correction was made on January 18, 2021
Decision Content
Date: 20201022
Docket: T-1615-18
Citation: 2020 FC 997
Ottawa, Ontario, October 22, 2020
PRESENT: The Honourable Madam Justice McVeigh
BETWEEN:
FLATWORK TECHNOLOGIES, LLC
(DOING BUSINESS AS POWERBLANKET)
Plaintiff
and
SUSAN BRIERLEY
Defendant
ORDER AND REASONS
I. Introduction
[1] The Plaintiff has brought a motion for summary judgment in respect of its patent impeachment action under section 60(1) of the Patent Act, RSC 1985, c P-4 [the “Act” or “Patent Act”]. The Plaintiff’s position is that Canadian Patent No. 2,383,341 [the ‘341 Patent] which describes an electric heating wrap for use on articulated hydraulic booms should be declared invalid pursuant to section 62 of the Act.
[2] The grounds the Plaintiff relies on is that their expert evidence proves that the ‘341 Patent does not disclose a patentable invention. The evidence they say is that it was obvious as of the claim date so the patent is invalid pursuant to section 28(3) of the Patent Act. As well, the Plaintiff argues that the ‘341 Patent was anticipated by prior art therefore invalid pursuant to section 28(2) of the Patent Act and section 28.2 of the Patent Act due to previous disclosure of the subject-matter of the claim. The final ground the Plaintiff argued was that claim 5 of the ‘341 Patent was invalid because of lack of utility under section 2 of the Patent Act. Alternatively, the Plaintiff argues that ‘341 Patent’s validity should be determined by way of a summary trial.
[3] This matter proceeded over the course of two days by a virtual hearing.
II. Background
A. The parties
[4] The Plaintiff Flatwork Technologies, LLC [Flatwork] is a corporation registered in Nevada with a primary office in Utah. Flatwork carries out business manufacturing heating blankets as well as other heating and cooling solutions.
[5] The Defendant Susan Brierley [Ms. Brierley] is a businessperson living in Wetaskiwin, Alberta. She explained at the hearing that she worked operating heavy equipment in northern British Columbia including at very cold job sites and developed the ‘341 Patent to keep articulated hydraulic booms operating in cold temperatures. Ms. Brierley is self-represented and very ably represented herself.
[6] Each party filed an expert report with both affiants being cross-examined on their affidavits and reports.
B. The ‘341 Patent
[7] On April 25, 2002, Ms. Brierley applied for the ‘341 Patent. The ‘341 Patent was issued to her in 2007. This patent is entitled “Method and apparatus for maintaining articulated hydraulic booms operating in freezing temperatures.” The following image from page 1(duplicated in Figure 1) of the patent depicts an image of a backhoe containing an articulated hydraulic boom with the device wrapped around it:
[8] Ms. Brierley, in a previous legal proceeding [the Alberta proceeding], at paragraph 2 states that she “…named her product Inferno Tarps.” From 2007 to 2015, she investigated the market for her devices and eventually learned in 2016 that similar products were available on the market.
C. Alberta Court of Queen’s Bench proceedings
[9] Ms. Brierley launched an Alberta Court of Queen’s Bench action (Court File No. 1812-000073) on March 12, 2018. She alleged Flatwork infringed the ‘341 Patent by selling its products under the trade names “Powerblanket” and “Warmguard”. In defence of the Alberta proceeding, Flatwork alleged the ‘341 Patent is invalid. This action was subsequently brought by Flatwork.
[10] By orders on April 29, 2019 and October 15, 2019, Justice Henderson stayed the Alberta proceeding until the Federal Court proceeding is concluded due to concerns that judicial resources would be wasted if the Alberta proceeding continues and the Federal Court ultimately concludes the ‘341 Patent is invalid.
D. Federal Court pleadings
[11] In its Federal Court Statement of Claim filed September 4, 2018, Flatwork claims the ‘341 Patent is invalid for five reasons: obviousness; lack of utility; lack of novelty; insufficiency; and ambiguity. This summary judgment application is based on three grounds of invalidity: obviousness; anticipation; and lack of utility.
[12] Ms. Brierley defenses that her patent is valid and that the Plaintiff has “not produced any Prior Art that would be conceived as evidence that would invalidate the ‘341 Patent.”
E. Motion for summary judgment
[13] On January 10, 2020, Flatwork filed a Notice of Motion seeking summary judgment to invalidate the ‘341 Patent pursuant to section 60(1) of the Patent Act and for an order that a Certificate of Judgment voiding the ‘341 Patent be registered at the Canadian Intellectual Property Office [CIPO], pursuant to section 62 of the Patent Act. Alternatively, Flatwork requests an order that the validity of the ‘341 Patent shall be determined by way of summary trial.
[14] Ms. Brierley asks the Court to dismiss the motion to grant summary judgment in her favour and declare the ‘341 patent valid pursuant to sections 42 & 43(2) of the Patent Act, or in the alternative for an order that the validity of the ‘341 Patent be determined by summary trial. She also asked for an order stating that this “[i]s an abuse of the court process, court resources, vexatious and prejudice.”
III. Preliminary Issues
A. Inadmissible evidence in Ms. Brierley’s memorandum
[15] Ms. Brierley’s original motion record contained new evidence, including affidavits from Lisa Olver and Robert Anderson. These affidavits were submitted after cross-examination had concluded, so Prothonotary Ring allowed Ms. Brierley to file an amended motion record on the condition that she removed these affidavits. Flatwork objected at the hearing to Ms. Brierley’s continued references to these affidavits in her memorandum. Ms. Brierley agreed not to reference the affidavits. Ms. Brierley in her oral argument did give some viva voce evidence that will not be considered, nor will any reference to the above noted affidavits.
B. Leave to amend Flatwork’s Statement of Claim
[16] Flatwork sought leave to serve and file an Amended Statement of Claim to include two pieces of additional prior art—the Termo 2000, a sleeping bag warmer, and the Gas Vapour Sleeve. Ms. Brierley argued they should not be included as neither were patented and “it is highly unlikely a detailed disclosure of how the product was constructed was produced with any purchase”, and so this documentation was “not existent to the public.” As well she said that the Termo 2000s were sold to the Israeli military and again not available to the public. For these reasons, she argued that I should not allow the amendment.
[17] Though Rule 75(2) indicates that an amendment should not be allowed during or after a hearing unless it fits in to the exceptions in section 75(2) (a) and (c). At the hearing, I allowed the Amended Statement of Claim to be accepted for filing and the hearing proceeded on the Amended Statement of Claim.
[18] Similar amendments were permitted by Justice Manson on a pre-trial motion in Janssen Inc v Teva Canada Limited, 2019 FC 1309 at paragraph 56 to give the Court “a complete picture of the state of the art” and because it “will not work an injustice” to the opposing party.
[19] These amendments to the appendixes simply update and reflect the prior art discussed in the expert reports and the memorandums. Nor is there any prejudice to Ms. Brierley because the two pieces of prior art were disclosed in the June 12, 2019 expert affidavit. Ms. Brierley knew of that prior art over a year in advance of the scheduled hearing and she cross-examined the Plaintiff’s expert on that prior art. Further, allowing the amendments will aid the Court in understanding the attack on the ‘341 Patent.
IV. Issues
[20] The issues on this summary judgment motion are:
Should the ‘341 Patent be declared invalid because obviousness?
Should the‘341 Patent be declared invalid because it lacks anticipation and\or utility?
V. Summary Judgment
[21] Given that this is a motion for summary judgment, the Court must be satisfied there is no genuine issue for trial with respect to the claim of obviousness, anticipation or lack of utility. Rule 215 of the Federal Courts Rules, SOR/98-106 governs summary judgment motions:
If no genuine issue for trial
215 (1) If on a motion for summary judgment the Court is satisfied that there is no genuine issue for trial with respect to a claim or defence, the Court shall grant summary judgment accordingly.
Genuine issue of amount or question of law
(2) If the Court is satisfied that the only genuine issue is
(a) the amount to which the moving party is entitled, the Court may order a trial of that issue or grant summary judgment with a reference under rule 153 to determine the amount; or
(b) a question of law, the Court may determine the question and grant summary judgment accordingly.
Powers of Court
(3) If the Court is satisfied that there is a genuine issue of fact or law for trial with respect to a claim or a defence, the Court may
(a) nevertheless determine that issue by way of summary trial and make any order necessary for the conduct of the summary trial; or
(b) dismiss the motion in whole or in part and order that the action, or the issues in the action not disposed of by summary judgment, proceed to trial or that the action be conducted as a specially managed proceeding.
[22] Patent construction is a question of law (Whirlpool Corporation v Camco Inc, 2000 SCC 67 at para 76 [Whirlpool]). In Canmar Foods Ltd v TA Foods Ltd, 2019 FC 1233, a case currently under appeal, at paragraph 43 Justice Manson noted “If the only genuine issue is a question of law, the Court may also determine the question and grant summary judgment.” He went on to construct the claims of the patent – a question of law – and ultimately found there was no genuine issue concerning infringement.
[23] Justice Lafrenière confirmed patents can be constructed on summary judgment motions in Gemak Trust v Jempak Corporation, 2020 FC 644 at paras 89–90 [Gemak] and he further explained the factors to consider whether a matter can be determined by summary judgment (see also Hryniak v Mauldin, 2014 SCC 7 at para 5).
A. Burden of Proof
[24] In this case, Flatwork must show on a balance of probabilities, the usual burden in a civil trial, that there is no genuine trial for at least one of their invalidity arguments (obviousness, novelty, or lack of utility) to be granted summary judgment (Teva Canada Limited v Wyeth and Pfizer Canada Inc, 2011 FC 1169 (rev'd on other grounds 2012 FCA 141), at para 36).
[25] Even though the onus is on Flatwork, the responding party Ms. Brierley must still provide evidence showing that there is a genuine issue for trial (Collins v Canada, 2015 FCA 281 at paras 70–71). The Court is entitled to assume the parties have put their best foot forward and that no additional evidence would be presented if the matter was to go to trial (Milano Pizza Ltd. v 6034799 Canada Inc., 2018 FC 1112 at para 105).
B. Conclusion: Summary Judgment
[26] When I review whether to proceed by summary judgment, I note that there is no need to assess the credibility of the parties or of their expert witnesses. There is also no need to conduct a trial to determine that the ‘341 Patent is valid, as all I need to make the determination is before me. I can apply the law to the facts as well there is no disagreement regarding the underlying facts and the matter can be decided based on the discrete question of whether the ‘341 Patent is obvious, or lacks novelty or utility.
[27] It would not be in the best interests of either party to expend the time and money required to bring this proceeding to trial given my finding below that there is no genuine issue. I find that by granting summary judgment rather than proceeding to trial or a summary trial will promote expeditious, proportionate, less expensive, timely justice in this matter, because there is no genuine issue for trial.
VI. Expert Evidence
[28] The parties dispute that each other’s experts are qualified as experts with respect to the subject matter of the ‘341 Patent.
A. Jonathan Willner –Plaintiff’s expert
[29] Jonathan Willner’s report was sworn on May 27, 2019 and he was cross-examined on this affidavit by videoconference on January 31, 2020. Mr. Willner is an independent consultant who identifies himself as an expert in the field of industrial heating wraps and blankets, and thermodynamic problem-solving. He has worked on heating systems including underfloor heating products, heated panels, and heat wraps for various companies – at first in Israel, and then for the last 30-plus years in Canada, the United States and more recently in global markets. His education is unrelated to the subject matter with degrees in education and oceanography.
[30] Mr. Willner was instructed by Plaintiff’s counsel on Canadian patent law and considered the ‘341 Patent from the position of a person of ordinary skill in the art [POSITA]. He created a claim chart showing where the claims could be found in the prior art and concluded the ‘341 Patent was obvious and lacked utility.
[31] Mr. Willner stated that he worked as in independent contractor for Flatwork and in that role set up a production line as a contractor from 2016-2018. He has not done any work for them since early 2018. In the Defendant’s expert’s responding expert report at paragraph 15, Mr. Grace viewed this as a potential conflict of interest particularly because Mr. Willner did not submit documentation about his work for Flatwork. Ms. Brierley did not pursue this argument at the hearing and I find it irrelevant regarding his ability to opine on this patent.
[32] Ms. Brierley argues Mr. Willner did not approach the case with an open mind and because he had worked in Israel, where it is not cold, he did not know what he was talking about. In addition, she alleges that he did not provide information about some prior art that he relied on, therefore his opinion should be dismissed, as the prior art may not even exist or certainly would not be found by a POSITA at the relevant date.
[33] I note that when reading his cross-examination transcript I must comment on how unprofessional and combative he in dealing with Ms. Brierley. For instance he told her it was “tough” that she did not have a document in front of her, he commented “you’ve got a limited education or exposure,” he said to “have fun” when she told him she wanted to ask questions and flatly told her “you’re wrong” when he disagreed. An expert is there to assist the Court and to be impartial. This must be taken into account or factored in when assessing an expert’s testimony. In this case Mr. Willner acted like a belligerent litigant rather than as an impartial expert.
[34] I do, though, find he qualifies as an expert. I find that his earlier work in Israel does not disqualify him especially as his experience has been in the electrical heating and floor warming industry throughout North America and the global market for the last 30 years. While he has not worked in northern Alberta, Manitoba, Saskatchewan or British Columbia, I do not find this particular lack of work experience as being essential to give an expert opinion given his lengthy experience working in other parts of Canada that have freezing temperatures. Given that the patent does not have insulation or thresholds for thermal productivity, I find his experience qualifies him to opine on the ‘341 Patent. Though his occasional apparent lack of impartiality leads me to be cautious, his claim charts are of great assistance to the Court.
B. Patrick Grace- Defendant’s Expert
[35] Ms. Brierley’s expert is Patrick Grace, the President of West-Pro Renewable Projects in Calgary. His expert report was sworn January 13, 2020 and he was cross-examined on the report via videoconference on January 30, 2020.
[36] Mr. Grace’s experience is “as a Licensed Heavy Duty Mechanic (Alberta), working 20 years on many year-round projects in the coldest of Northern Canada, Ontario, Manitoba, Saskatchewan and Alberta.” He indicated he had “lived year round in Northern Manitoba at exploration and Hydro Project sites, [and in] Northern Alberta at many construction, oil and gas projects, maintaining and servicing equipment in the harshest of winter conditions.” For the next 12 years he owned a steel and equipment design and fabrication company in Alberta. He has worked on renewable energy projects for the past 10 years. Mr. Grace admitted on cross-examination that he does not have experience designing or making electric heat wraps or blankets.
[37] Though he has no educational component, an expert does not need formal education in every situation, and experience alone could qualify a person as an expert. As noted by this Court:
A properly qualified expert is someone "who is shown to have acquired special or peculiar knowledge through study or experience in respect of the matters on which he or she undertakes to testify"
(Rallysport Direct LLC v 2424508 Ontario Ltd, 2020 FC 794 at para 17 citing R v Mohan, [1994] 2 SCR 9 at para 31 [Mohan], my emphasis)
[38] I find that Mr. Grace’s experience working as a heavy duty mechanic for 20 years in northern Canada’s freezing temperatures could render him an expert on some topics to opine on the ‘341 Patent. But because he has no experience in designing or making electric heat wraps or blankets which is the subject matter of this patent, he is of limited assistance.
[39] Mr. Grace admitted that he was not instructed about the concept of a POSITA when he gave his expert report or about Canadian legal principles of claims construction. He stated that Mr. Willner’s analysis about what a POSITA would think about the ‘341 Patent is “a waste of time/money.” He criticized Mr. Willner for “dwelling” too much on what the POSITA would think. He also included “Without Prejudice” opinions which are not appropriate in an expert report.
[40] Given that Mr. Grace was never properly instructed in Canadian legal patent concepts, his opinions from his expert report have no legal basis and will be given no weight with the exception being if his experience on a specific subject is useful to the Court and I specifically refer to it.
[41] In some cases expert evidence is not required to construe the claims of a patent but it is admissible to assist the Court in this exercise (Gemak at para 93). The Court is not required to choose between the constructions offered by the experts, “but rather should, with the assistance of the expert evidence, reach its own conclusion as to the proper construction” (Justice Southcott in Cascade Corporation v Kinshofer GmbH, 2016 FC 1117 at para 72).
[42] As Justice Manson stated in Biogen Canada Inc v Taro Pharmaceuticals Inc, 2020 FC 621 at paragraph 77: “Where the judge can construe the patent as it would be understood by a skilled person, expert evidence is not required.”
[43] In this case the patent is straightforward. This patent as well as the prior art is not complex – it is not a pharmaceutical or mechanical invention and it can be constructed with minimal input from the experts given their inadequacies noted above. As Flatwork acknowledged this is not something that has to be reverse-engineered or is otherwise difficult to understand from looking at it, as it is a simple heating device.
[44] This is a case that with assistance that is reliable evidence from the two reports filed by the parties the Court can construct the patent.
VII. Claims Construction
[45] Before constructing the ‘341 Patent, I find that Flatwork has standing to bring this impeachment proceeding challenging the validity. Flatwork falls within the definition of “any interested person” under section 60(1) of the Patent Act. Flatwork is an interested person as it is defending itself in the Alberta patent infringement proceeding commenced by Ms. Brierley with respect to the very same patent. Justice Southcott found that a plaintiff who brought impeachment proceedings against a party who was suing them for infringement in a separate pending Alberta court action dealing with the same patent met the test of an interested person in Aux Sable Liquid Products LP v JL Energy Transportation Inc, 2019 FC 581 at paragraph 10 [Aux Sable].
[46] Claims construction is the starting point in determining questions of validity and infringement. The principles of claims construction is set out by the Supreme Court in Free World Trust v Électro Santé Inc, 2000 SCC 66, [2000] 2 SCR 1024 at paragraphs 31-67; Consolboard Inc v MacMillan Bloedel (Sask) Ltd, [1981] 1 SCR 504 at 520 [Consolboard]). The claims construction should be determined prior to consideration of either validity attacks or infringement. The Patent Act promotes fairness and predictability by adherence to the language of the claims.
[47] When engaging in the purposive construction of the patent, the Court should consider whether the particular words and phrases in the patent claims describe “essential” elements of an invention (Whirlpool at para 45). In Tearlab Corporation v I-Med Pharma Inc, 2019 FCA 179 at paragraph 31, the Court of Appeal said that:
it will be apparent that some elements of the claimed invention are essential while others are non-essential… The interpretative task of the court, in claim construction, is to separate and distinguish between the essential and non-essential elements, and to give the legal protection to which the holder of a valid patent is entitled only to the essential elements.
[48] The claims language must be read through the eyes of a POSITA with their common general knowledge to identify the elements.
[49] The disclosure and claims must be looked at as a whole when constructing the claim “to ascertain the nature of the invention and methods of its performance…being neither benevolent nor harsh, but rather seeking a construction which is reasonable and fair to both patentee and public” (Consolboard at 520).
[50] The patent specifications must be considered to understand what was meant but not to enlarge or narrow the scope of the claim as written (Whirlpool at para 52). The Supreme Court in AztraZeneca Canada Inc v Apotex Inc, 2017 SCC 36 at paragraph 31 was clear that the focus will be on the claims with the specifications being relevant during an ambiguity attack on validity.
A. Person of Ordinary Skill in the Art
[51] Flatwork’s position is that a POSITA with respect to the ‘341 Patent is a person with knowledge of thermodynamics and electronics or mechanical or electrical engineering with experience in the design, construction and different uses of industrial heating wraps and blankets. This is consistent with Mr. Willner’s understanding as set out in paragraphs 13–15 of his expert report, where he confirms that he considered himself a POSITA with respect to the ‘341 Patent. Mr. Willner clarified that a POSITA would have “several years of experience in the design, construction, and different uses of industrial heating wraps and blankets.”
[52] Ms. Brierley did not make submissions on who a POSITA is in this case or explain the concept to Mr. Grace.
[53] A POSITA can have a combination of education and experience, or just experience (Pollard Banknote Ltd v BABN Technologies Corp, 2016 FC 883 at para 83).
[54] In ViiV Healthcare Company v Gilead Sciences Canada Inc, 2020 FC 486 at paragraph 78, Justice Manson noted that the parties agreed generally on the POSITA so he did not analyze the issue in much detail. He noted where there is a disagreement about the characteristics of the skilled person, “the notional skilled person must be capable of understanding the entirety of the patent in issue.”
[55] Here, there is similarly no meaningful dispute about the POSITA. The POSITA is someone with knowledge either gained from experience or education or a combination of both in thermodynamics and electronics or mechanical or electrical engineering. The POSITA would have experience in the design, construction and different uses of electrical industrial heating wraps and blankets on different items in freezing conditions. The POSITA must have substantial experience meaning at least 15 years—a level that would be appropriate to have sufficient experience of cold weather seasonal variances.
B. Common General Knowledge
[56] The next step is to determine the common general knowledge [CGK] of such a person. CGK is “knowledge generally known by persons skilled in the relevant art at the relevant time” and “it is what the skilled person would know without doing research” (Seedlings Life Science Ventures, LLC v Pfizer Canada ULC, 2020 FC 1 at para 48; Bauer Hockey Ltd v Sport Maska Inc (CCM Hockey), 2020 FC 624 at para 36). To be considered as CGK it should be “generally known and accepted without question by the bulk of those who are engaged in the particular art” (Eli Lilly and Company v Apotex Inc, 2009 FC 991 at para 97, aff’d 2010 FCA 240).
[57] As of the claim date of April 25, 2002, the following knowledge would have been within the CGK of a POSITA (i.e. someone with knowledge of thermodynamics and electronics or mechanical or electrical engineering with experience in the design, construction and different uses of electrical industrial heating wraps and blankets in freezing weather). That knowledge would be that first, heating elements can be imbedded within flexible sleeves. Secondly, that various types of insulating materials can be used in these sleeves. And finally that various types of fasteners can then be used to secure the flexible sleeve around an object for heating.
[58] These three general concepts would clearly have been known by a POSITA. Flatwork described the CGK as knowing a variety of heated wraps, sleeves and blankets in a variety of shapes and sizes that can heat different objects. In his expert report, Mr. Willner cites five specific pieces of prior art together reflecting what he sees as the CGK in the industry, for example:
a) The Termo 2000 sleeping bag warmer sold in the late 1970s in Israeli camping stores and to the Israeli military: sleeping bags could be inserted into the interior opening, fastened and heated; note that this device was not patented and Mr. Willner said on cross-examination “it couldn’t be protected by a patent. It’s like a simple heated blanket just suitable for outdoor use”;
b) US Patent 5,049,724 issued in 1991 for the Thermal Protection Blanket for a Blow Out Preventor: a flexible insulated sleeve was wrapped around “well head control devices such as blow out preventors”, fastened, and then heated [the ‘724 Patent];
c) A 1967 Machine Design advertisement: the advertisement shows electric heating blankets consisting of a resistance wire sandwiched between two sheets of silicone rubber have been available on the market since at least 1967;
d) US Patent 5,827,050 issued in 1998 for the Jug Heat Pak: a heating sleeve wraps around a portable gas cylinder in a manner that facilitates the transfer of gas [the ‘050 Patent]; and
e) A gas vaporizer sleeve for use on tanks containing propane, butane or acetylene: the heating sleeve keeps the tank warm. These have been sold since the early 1980s. Mr. Willner designed these sleeves in Israel and he says he still sells a modified version of this product today through CQ Ventures.
[59] I find that the prior art regarding the sleeping bag warmer (#1) and the silicone electric heating blanket (#3) are excluded as are Mr. Willner’s opinions related to them. I do so as they are not citable prior art (Janssen-Ortho Inc. v. Novopharm Ltd, 2006 FC 1234 at para 57). Though the law is not settled whether the test is: a) the common law test of the prior art through a reasonably diligent search would have been found; or b) whether the introduction of section 28(3) updated that test to a “prior art reference which was disclosed to the public, prior to the applicable date prescribed by a section 28.3 forms part of the prior art for purposes of an obviousness analysis, regardless of whether the reference would have been locatable through a reasonably diligent search.” (Aux Sable at para 176).
[60] No matter which of the tests are applied neither of the purposed pieces of prior art #1 and #3 the references met the tests. Both are too imprecise and not disclosed to the public by the date necessary as #1 was found in a magazine article dated Jan, 1967 and #3 was disclosed only in Mr. Willner’s report with his description and two photos.
[61] I accept that the remaining three prior art references confirm it was within the CGK of a POSITA to imbed electrical heating elements within a flexible sleeve or blanket with insulating materials and then the sleeve could be fastened around an object for heating in freezing temperatures and secured by a variety of ways such as strings, straps, buckles and Velcro at the longitudinal opening.
C. Construction
[62] Having identified the skilled person and the common general knowledge, I will now identify how that POSITA would construct the claims.
[63] There is no dispute that the relevant date is April 25, 2002—when the ‘341 Patent was filed.
[64] At the hearing Ms. Brierley confirmed that she views the articulated hydraulic boom as an essential element which I note is contrary to her position in the Alberta action. As well Ms. Brierley explained that she views the essential elements of the patent as a wrapping to go around an articulated hydraulic boom with an outer shell, an electric heating element, a layer of insulating material and means to secure the longitudinal opening and securing the opposed ends.
[65] But when constructing a patent it is good to be reminded that an inventor which, Ms. Brierley is among a number of other job titles, is not a POSITA and she was articulating those views on essential elements as an advocate. Though I cannot disagree with her that is what a POSITA would know.
[66] I will construct the patent and determine the essential elements by looking at what a POSITA with CGK at the time would have known. When determining what are the essential elements, I considered that both experts view the use of the heating wrap with the articulated hydraulic boom as an essential aspect of the ‘341 Patent. Mr. Willner says “In my opinion the POSITA would consider the ‘341 Patent to be limited to use with articulated hydraulic booms… There is no suggestion in the ‘341 Patent that the heating wrap disclosed is adapted to be used in any other context.” Mr. Grace says “this is a totally NOVEL INVENTION – specific to the operation of an Articulated Hydraulic Boom operating in sub zero weather conditions.”
[67] Looking to the ‘341 Patent we see that it contains 8 claims (reproduced below) describing an electric heating sleeve wrapped around an articulated hydraulic boom and a method of keeping the hydraulic boom warm. Claims 1 to 6 are apparatus claims. Claims 7 and 8 are method claims:
1. An apparatus for maintaining an articulated hydraulic boom operating in freezing temperatures, comprising:
a flexible sleeve of thermal insulating material having an interior surface defining an interior cavity, opposed ends, and a longitudinal opening providing access to the interior cavity, such that the articulated hydraulic boom can be positioned within the interior cavity of the sleeve;
means for closing the longitudinal opening;
means for heating the interior cavity of the sleeve; and
means for constricting the opposed ends of the flexible sleeve, thereby maintaining the sleeve in position on the articulated boom and preventing heat from escaping the interior cavity.
2. The apparatus as defined in Claim 1, wherein the means for closing the longitudinal opening being fasteners positioned at spaced intervals along the sleeve on opposed sides of the longitudinal opening.
3. The apparatus as defined in Claim 1, wherein draw strings positioned at the opposed ends of the flexible sleeve serve as the means for constricting the opposed ends of the flexible sleeve.
4. The apparatus as defined in Claim 1, wherein an electric heating element imbedded in the interior surface of the sleeve serves as the means for heating the interior cavity of the sleeve.
5. The apparatus as defined in Claim 4, wherein the flexible sleeve includes a first protective polyurethane layer which forms an outer surface of the flexible sleeve, and a second protective polyurethane layer which forms the interior surface of the flexible sleeve, a heat resistant liner underlying the first protective polyurethane layer, a first layer of insulating material and a second layer of insulating material being disposed between the heat resistant liner and the second protective polyurethane layer, and the electrical heating element being positioned between the first layer of insulating material and the second layer of insulating material.
6. An apparatus for maintaining an articulating hydraulic boom operating in freezing temperatures, comprising:
a flexible sleeve of thermal insulating material having an interior surface defining an interior cavity, opposed ends, and a longitudinal opening providing access to the interior cavity, such that the articulated hydraulic boom can be positioned within the interior cavity of the sleeve;
fasteners positioned at spaced intervals along the sleeve on opposed sides of the longitudinal opening, whereby the longitudinal opening can be selectively closed;
an electric heating element imbedded in the interior surface of the sleeve, whereby the interior cavity of the sleeve is heated; and
draw strings positioned at the opposed ends of the flexible sleeve constricting the opposed ends of the flexible sleeve, thereby maintaining the sleeve in position on the articulated boom and preventing heat from escaping from the interior cavity.
7. A method for maintaining an articulated hydraulic boom operating in freezing temperatures, comprising the steps of:
positioning a flexible sleeve of thermal insulating material having an interior cavity around the articulated hydraulic boom, the sleeve being sufficiently flexible that the articulated boom can operate with the sleeve in place;
heating the interior cavity of the sleeve; and
constricting the opposed ends of the sleeve to tightly engage the articulated hydraulic boom so that the sleeve is maintained in position and heat is prevented from escaping from the interior cavity.
8. The method as defined in Claim 7, the sleeve being sufficiently flexible that the articulated boom can operate with the sleeve in place.
[68] A POSITA would understand that an articulated hydraulic boom is a mechanical arm with at least two sections but it could be more. The sections are connected by a flexible joint and the joint is controlled by the flow of hydraulic fluid that affects the movable mechanical arm.
[69] The elements in the independent Claim 1 are: a) articulated hydraulic boom b) flexible sleeve of thermal insulating material having an interior surface defining an interior cavity c) opposed ends d) longitudinal opening providing access to the interior cavity for the articulated hydraulic boom e) means for closing the longitudinal opening f) means for heating the interior cavity of the sleeve g) means for constricting the opposed ends thereby maintaining the sleeve in position on the articulated boom and preventing heat from escaping from the interior cavity. A POSITA would consider all of these elements essential.
[70] Proceeding with the construction now that the essential elements have been determined I will adopt the construction of the claims as set out in the Plaintiff’s expert report:
“a flexible sleeve of thermal insulating material”
24. The purpose of the "flexible sleeve" in the '341 Patent is to permit the sleeve to be wrapped around an articulated hydraulic boom. A POSA would understand "a flexible sleeve" to refer to a sleeve that is sufficiently flexible to accomplish this purpose
25. The phrase “thermal insulating material” refers to a material that is used to stop the passage of heat. The ‘341 patent does not specify the thermal insulating material to be used, but a POSA would understand what thermal insulsting [sic] materials are typically used in heating wraps. These could include closed or open cell foam (polymeric, organic or mineral), sponge, bubble wrap, or any other substrate containing air as an insulator and preventing heat transfer by convection, conduction of radiation.
“an interior surface defining an interior cavity”
26. A POSA would understand that the "interior surface" is the inside surface of the sleeve. The interior cavity is the space defined by the inside of the sleeve. For example, if the sleeve is wrapped around an articulated hydraulic boom, the boom would be positioned in the “interior cavity”.
"opposed ends"
27. This refers to the two ends of the sleeve, as shown in the Figure 4 of the Patent (reproduced below) as reference numerals 18 (reproduced below).
"a longitudinal opening providing access to the interior cavity, such that the articulated hydraulic boom can be positioned within the interior cavity of the sleeve"
28. A POSA would understand "longitudinal opening" to be a lengthwise opening along the sleeve. This opening would open to allow the sleeve to be wrapped around, or removed from, the hydraulic boom. It is identified in Figure 4 of the Patent (reproduce above), as reference numeral 20.
"means for closing the longitudinal opening"
29. A POSA would understand this claim element to refer to any means by which the longitudinal opening could be fastened or secured around the articulated hydraulic boom. The only embodiment of this claim element provided in the patent specification is "fasteners" (reference numeral 24 in Figure 4 above), but a POSA would understand that other means could be used, such as Velcro, snaps, buttons, etc.
"means for heating the interior cavity of the sleeve"
30. A POSA would understand this claim element to refer to an electric heating element. An electric heating element is the only type of "means for heating" that is referred to in the specification. Although other methods of heating exist, the structure of the sleeve is specifically geared toward electric heating. For example, the patent does not provide any information as to how the claimed apparatus could be implemented with a chemical or other heating mechanism.
"means for constricting the opposed ends, thereby maintaining the sleeve in position on the articulated boom preventing heat from escaping from the interior cavity"
31. A POSA would understand this claim element to refer to any means for closing the ends of the sleeve around the hydraulic boom. The '341 Patent provides the example of drawstrings, but it would be apparent to a POSA that other means could be used, such as bungee cords or Velcro.
Claim 2
32. Claim 2 incorporates by reference all the elements of claim 1, and adds the limitation:
wherein the means for closing the longitudinal opening being fasteners positioned at spaced intervals along the sleeve on opposed sides of the longitudinal opening.
33. A POSA would understand this to mean that the longitudinal opening is closed by way of fastening elements that are spaced apart from each other, such as a series of snaps, hooks, buttons, Velcro fasteners, straps or the like. This would not include a continuous fastener such as a zipper.
Claim 3
34. Claim 3 incorporates by reference all the elements of claim 1, and adds the limitation:
wherein draw strings positioned at the opposed ends of the flexible sleeve serve as the means for constricting the opposed ends of the flexible sleeve.
35. A POSA would understand "draw strings" to refer to the well-known mechanism for constricting the end of a flexible device consisting of a string dispose