Proslide Technology, Inc v. Whitewater West Industries, Ltd

Proslide Technology, Inc. v. Whitewater West Industries, Ltd.
Court (s) Database
Federal Court Decisions
Date
2024-09-13
Neutral citation
2024 FC 1439
File numbers
T-1449-20
Decision Content
Date: 20240913
Docket: T-1449-20
Citation: 2024 FC 1439
Toronto, Ontario, September 13, 2024
PRESENT: The Honourable Mr. Justice Manson
BETWEEN:
PROSLIDE TECHNOLOGY, INC.
Plaintiff
and
WHITEWATER WEST INDUSTRIES, LTD.
Defendant
AND BETWEEN:
WHITEWATER WEST INDUSTRIES, LTD.
Plaintiff by Counterclaim
and
PROSLIDE TECHNOLOGY, INC.
Defendant by Counterclaim
PUBLIC JUDGMENT AND REASONS
(Confidential Judgment and Reasons issued September 13, 2024)
Table of Contents
I. Introduction 4
II. Background 4
A. The Parties 4
B. The Technical Background 5
C. The 601 Patent 5
D. The 552 Patent Family 6
III. Issues 10
IV. Preliminary Issue on Ambiguity 13
V. The Parties’ Evidence 14
A. ProSlide’s Witnesses 14
(1) Jason Young 14
(2) Andreas Tanzer 16
(3) Richard Hunter 20
(4) Ray Smegal 22
B. WhiteWater’s Witnesses 22
(1) James Diamond 22
(2) Claudio Barrera 24
VI. Analysis 27
A. Claim Construction, the Skilled Person, and the Common General Knowledge 27
(1) The Skilled Person(s) to whom the Patents are Addressed 29
(2) The Common General Knowledge 30
(3) ||||||||||||||||||||||||| ||||||||||||||||||||||||| and the Common General Knowledge 32
(4) Construing the Claims 34
B. Infringement 43
C. Invalidity 50
(1) Applicable Principles 50
(2) The 601 Patent 56
(3) The 552 Patent 75
(4) The 073 Patent 92
(5) The 150 Patent 95
VII. Costs 101
VIII. Conclusion 101
Schedule A: Figures from the ProSlide Patents 104
Schedule B: Images of the Allegedly Infringing Products 106
Schedule C: Images of and Figures from the Prior Art Cited by WhiteWater’s Expert 108
I. Introduction [1] ProSlide Technology, Inc. (“ProSlide” or the “Plaintiff”) brings an action against WhiteWater West Industries, Ltd. (“WhiteWater” or the “Defendant”) alleging infringement of Canadian Patent No. 2,778,601 (the “601 Patent”), Canadian Patent No. 2,951,552 (the “552 Patent”), Canadian Patent No. 3,063,073 (the “073 Patent”), and Canadian Patent No. 3,085,150 (the “150 Patent”) – collectively, the “ProSlide Patents”. WhiteWater defends the action and brings a counterclaim alleging that the asserted claims of the ProSlide Patents are invalid.
II. Background A. The Parties [2] The parties are both Canadian corporations. ProSlide operates principally out of Ottawa, Ontario. WhiteWater’s head office is in Richmond, British Columbia. ProSlide focuses on water slides exclusively, while WhiteWater offers a broader range of products. However, they are the two largest water slide companies globally, with customers around the world.
[3] Among ProSlide’s commercial products is a water slide feature called the “FlyingSAUCER”. The FlyingSAUCER falls within the subject matter claimed by the 552 Patent, the 073 Patent, and the 150 Patent. WhiteWater’s commercial water slide products include features referred to as the “AquaSphere”, the “Orbiter”, and the “Tailspin”. Images of each of WhiteWater’s products at issue are included in Schedule B of these reasons. ProSlide alleges that the AquaSphere infringes certain claims of the 601 Patent; that the Orbiter infringes certain claims of the 552 Patent, the 073 Patent, and the 150 Patent; and that the Tailspin infringes certain claims of the 150 Patent. WhiteWater denies infringement of any of the ProSlide Patents and challenges the validity of all the asserted claims.
B. The Technical Background [4] Water slides are a subset of amusement rides. Their defining feature is their use of water to lubricate the sliding surface upon which one or more riders or ride vehicles travel. Water slides comprise an entry pool positioned higher than an exit pool, and a ride path from the entry pool to the exit pool.
[5] The entry and exit of a water slide are connected by “flumes” of varying sizes. A “flume” is an artificial walled channel that directs the rider through a specific path. Flumes are usually circular in shape, and can be fully enclosed or open along the top. They will often direct riders into a “feature” through an entry chute and out of the feature through an exit chute. A “feature” is a broad term that refers to a structure containing a sliding surface that offers a unique experience to the rider along the ride path.
C. The 601 Patent [6] The 601 Patent is entitled “Water Slide” and generally relates to a slide feature design for a water slide. It was filed in Canada on November 12, 2010, but claims priority to a US patent filed on November 13, 2009. The 601 Patent was published on May 19, 2011, and issued on January 8, 2019.
[7] The patent’s specification teaches that, although water slides are popular and entertaining attractions, there is a constant demand for new designs. Park owners seek water slides that will draw more consumers. Consumers in turn want unique designs that are more exciting and stimulating. The specification goes on to briefly describe various embodiments of a water slide feature comprising a sliding surface concave about three axes. It then discloses 11 figures and describes their various elements with greater detail. A representative figure can be found in Schedule A of these reasons.
[8] The 601 Patent has 44 claims. At issue are claims 1, 4, 5, 9, 11, 12, 18, 19, 20, 30, 35, and 38 (the “601 Asserted Claims”). Claims 1, 18, 19, 20, and 30 are independent claims. Claims 4, 5, 9, 11, and 12 depend solely on claim 1, while claims 35 and 38 depend solely on claim 30.
[9] The elements of each claim will be discussed in greater detail below. For the purposes of this background, and by way of example, claim 1 claims:
A water slide feature comprising a sliding surface concave about three axes sized and adapted to carry one or more riders and/or ride vehicles sliding thereon on a non-predetermined path from an entry to an exit, the entry sized and positioned to direct the one or more riders and/or ride vehicles along the sliding surface on a path which is at least partially upward; wherein the sliding surface is a shape approximating one-half of a sphere.
D. The 552 Patent Family
[10] The 552 Patent is entitled “Water Ride” and relates generally to an amusement ride feature. It was filed in Canada on March 3, 2015, and published on December 17, 2015. It claims priority to a US patent filed on June 13, 2014.
[11] The 073 Patent and the 150 Patent are divisional patents of the 552 Patent (collectively for the purposes of these reasons, the “552 Patent Family”). They all share the same title, filing date, and publication date. The 552 Patent was issued on July 21, 2020. The 073 Patent was issued on September 8, 2020. The 150 Patent was issued on November 24, 2020.
[12] The 552 Patent Family disclose similar, but not identical, specifications. The specifications all teach that park owners seek new and innovative rides that provide exciting and thrilling experiences to consumers. The specifications also cite a number of known water ride designs, including one containing a closed loop section and another containing a “bowl” with an exit at the bottom center. The patents go on to state that there is a need for water rides that resolve the disadvantages of the prior art and provide more exciting experiences. Each specification goes on to summarize various embodiments of the claimed inventions, followed by detailed drawings and descriptions. Representative drawings from the specifications are included in Schedule A of these reasons.
[13] Despite the specifications’ initial focus on “water rides”, the overwhelming majority of the embodiments disclosed therein pertain to “a slide feature for an amusement ride” (emphasis added). The same is true of almost all of the 552 Patent Family’s claims. In fact, in the 552 Patent, only two of the embodiments disclosed and two of the claims pertain explicitly to water slides. As for the 073 Patent and the 150 Patent, only two of the embodiments disclosed in each patent and none of their claims pertain to water slides.
[14] The 552 Patent has 34 claims. At issue are claims 1, 2, 3, 4, 12, 16, 18, 19, 21, 22, 25, 27, 28, 29, 30, 31, and 32 (the “552 Asserted Claims”). Claims 1, 27, and 30 are independent claims. Their essential elements are similar but not identical in scope or language. Claims 2, 3, 4, 12, 16, 18, 19, 21, 22, 25, 28, 29, 31, and 32 are dependent claims. By way of example, claims 1 and 25 claim as follows:
1. A slide feature for an amusement ride adapted to carry a rider or ride vehicle sliding thereon, the slide feature comprising:
an inrun permitting ingress of the rider or ride vehicle at a first elevation,
an outrun permitting egress of the rider or ride vehicle at a second elevation, wherein the first elevation is higher than the second elevation,
a sliding surface in communication with the inrun and the outrun, wherein the sliding surface comprises a two-dimensional, planar surface portion substantially in the geometric shape of a sector of a closed curve,
wherein the slide feature provides that the rider or ride vehicle, at least partially urged by gravity, slides along the sliding surface from the inrun to the outrun in an arcuate path,
wherein the sliding surface is oriented at a pitch angle around a pitch axis, the pitch angle being measured relative to a horizontal plane,
wherein the sliding surface is oriented at a roll angle around a roll axis, the roll angle being measured relative to the horizontal plane,
wherein the pitch axis and the roll axis are mutually perpendicular, and
wherein at least one of the pitch angle and the roll angle is nonzero.
[…]
25. A water slide comprising a slide feature according to claim 1.
[15] The 073 Patent has 8 claims. At issue are claims 1, 3, 4, 5, 6, and 8 (the “073 Asserted Claims”). Claim 1 is the only independent claim. All other claims depend solely on claim 1. Claim 1 claims:
A slide feature for an amusement ride adapted to carry a rider or ride vehicle sliding thereon, the slide feature comprising:
an inrun permitting ingress of the rider or ride vehicle at a first elevation;
an outrun permitting egress of the rider or ride vehicle at a second elevation, wherein the first and second elevations are different;
a sliding surface in communication with the inrun and the outrun, an apex of the sliding surface being at a higher elevation than the first and second elevations; and
a curved outer lip bounding the sliding surface from the inrun to the outrun in an arc of at least 60 degrees, wherein a radius of the outer lip decreases along at least a first portion of the outer lip beginning proximate to the inrun, and wherein the rider or ride vehicle slide along the sliding surface from the inrun to the outrun in an arcuate path at least partially guided by the outer lip.
[16] The 150 Patent has 16 claims. At issue are claims 1, 2, 5, 6, 7, 8, 9, 10, 11, 13, 14, 15, and 16 (the “150 Asserted Claims”). Claims 1, 6, and 11 are independent claims. As with the 552 Patent, the 150 Patent’s independent claims are similar but not identical in scope or language. Claims 2 and 5 depend solely on claim 1. Claims 7, 8, 9, and 10 depend solely on claim 6. Claims 13, 14, 15, and 16 depend solely on claim 11. As an example, claim 1 claims:
A slide feature for an amusement ride adapted to carry a rider or ride vehicle sliding thereon, the slide feature comprising:
an inrun permitting ingress of the rider or ride vehicle at a first elevation;
an outrun permitting egress of the rider or ride vehicle at a second elevation, wherein the first and second elevations are different;
a sliding surface in communication with the inrun and the outrun;
a curved outer lip extending from the inrun to the outrun, the outer lip defining an outer boundary of the sliding surface, wherein the outer lip has a height with respect to the sliding surface; and
an inner core portion defining an inner boundary of the sliding surface from the inrun to the outrun, the inner core portion having a top surface, wherein at least a portion of the top surface has a height with respect to the sliding surface that is less than the height of the outer lip, wherein a radius of the outer lip decreases along at least a first portion of the outer lip beginning proximate to the inrun.
III. Issues [17] With respect to the 601 Patent:
Does the Defendant’s AquaSphere product infringe one or more of the 601 Asserted Claims?
Are one or more of the 601 Asserted Claims invalid for one or more of the following reasons?
Anticipation – only with respect to claims 1, 4, 5, 9, 12, 19, and 20;
Obviousness;
Lack of utility;
Overbreadth; or
Ambiguity – only with respect to claims 1, 4, 5, 9, 11, 12, 18, 19, and 38, on the basis that they include one or more of the terms “non-predetermined path from an entry to an exit”, “adjacent”, and “substantially”.
[18] With respect to the 552 Patent:
Does the Defendant’s Orbiter product infringe one or more of the 552 Asserted Claims?
Are one or more of the 552 Asserted Claims invalid for one or more of the following reasons?
Obviousness;
Lack of utility;
Overbreadth; or
Ambiguity, on the basis that they include one or more of the terms “pitch axis”, “pitch angle”, “roll axis”, “roll angle”, “sliding surface”, “radius”, “substantially planar”, and “planar surface”.
[19] With respect to the 073 Patent:
Does the Defendant’s Orbiter product infringe one or more of the 073 Asserted Claims?
Are one or more of the 073 Asserted Claims invalid for one or more of the following reasons?
Obviousness;
Lack of utility;
Overbreadth; or
Ambiguity, on the basis that they include one or more of the terms “sliding surface” and “radius”.
[20] With respect to the 150 Patent:
Does the Defendant’s Orbiter product infringe one or more of claims 1, 2, 5 to 7, 10, 11, 13, and 16 of the 150 Asserted Claims?
Does the Defendant’s Tailspin product infringe one or more of claims 6, 8 to 11, and 14 to 16 of the 150 Asserted Claims?
Are one or more of the 150 Asserted Claims invalid for one or more of the following reasons?
Obviousness;
Lack of utility;
Overbreadth; or
Ambiguity, on the basis that they include one or more of the terms “sliding surface”, “inner boundary”, “outer boundary”, and “radius”.
IV. Preliminary Issue on Ambiguity [21] Early in the trial, WhiteWater stated that it will not make arguments or adduce any evidence with respect to ambiguity. It nevertheless continues to advance this ground as a matter of claim construction. In other words, WhiteWater relies on its ambiguity challenge insofar as I find that the skilled person would not be able to understand certain terms within each of the asserted claims.
[22] In making this submission, WhiteWater faces a high threshold. Justice Hughes described a finding of ambiguity as a “last resort”, one to be avoided “if at all possible” (Pfizer Canada Inc v Canada (Minister of Health), 2005 FC 1725 at paras 49, 53; Teva Canada Innovation v Apotex Inc, 2014 FC 1070 at para 31, citing Hughes & Woodley, Patents, 2nd ed, looseleaf (Canada: LexisNexis Canada Inc, 2005-2014) at 310-11).
[23] Notably, while the parties’ experts disagree on some aspects of claim construction, neither of them have opined that the claims at issue contain terms that the skilled person would not be able to understand, particularly in light of the patents’ specifications and the common general knowledge. I find no reason in my analysis below to conclude differently. Therefore, in my view, none of the asserted claims are ambiguous.
V. The Parties’ Evidence A. ProSlide’s Witnesses (1) Jason Young [24] ProSlide relies on the expert evidence of Jason Young.
[25] Mr. Young is a mechanical engineer. He earned a bachelor’s degree in mechanical engineering from the University of Western Ontario and a master’s degree in biomedical engineering from the University of Toronto. He is certified as a professional engineer, first licensed in Ontario in 2002, and then in Alberta in 2021.
[26] Mr. Young is involved with the ASTM International (the “ASTM”), an organization that publishes technical standards in several industries. He sits on various committees within the ASTM, some of which develop standards in relation to measurements and testing of amusement rides and water slides. He is also a technical contributor to the ASTM’s standard for measuring dynamic characteristics of water slide systems using instrumented humans.
[27] Mr. Young is currently the president of Advantage Forensics, Inc., a forensic engineering firm. He has conducted over 100 assessments of water slides and water park rides. This involved assessing the geometry, speed, acceleration, and tube performance of water slides. He has been qualified as an expert in water slide design and mechanical engineering in multiple superior courts in Canada, as well as the Florida District Court.
[28] I accepted Mr. Young’s expert qualification as follows:
Mr. Jason Young is an expert in the field of mechanical engineering and waterslide design, operation, testing and evaluation.
[29] Mr. Young provided his opinion on both validity and infringement in three reports. His first report focuses on claim construction and infringement. His second report responds to WhiteWater’s expert evidence on claim construction and validity. His final report expands on the first report with the benefit of WhiteWater’s expert’s commentary.
[30] On cross-examination, Mr. Young was consistent. He made some concessions where appropriate and was forthcoming in acknowledging one clear inconsistency in his analysis, once it was pointed out to him. That said, he also conceded that (1) he did not have the same level of experience in the water slide design process as what he would expect of the skilled person, and (2) his understanding of the water slide design industry as it was between 2009 and 2011 and between 2014 and 2015 is based in part on webinars attended in 2023. While this impacts the weight of Mr. Young’s testimony on the skilled persons and their common general knowledge, I nonetheless found Mr. Young to be knowledgeable and credible overall. I discuss his evidence as may be relevant below.
(2) Andreas Tanzer [31] ProSlide also called Andreas Tanzer as an expert witness. Mr. Tanzer was (as of the date of his testimony) the Director of Research, Design & Standards at ProSlide. He worked closely with Richard Hunter, the named inventor in the asserted patents and the owner and founder of ProSlide. The two are co-inventors on a number of other patents, none of which are at issue here.
[32] Mr. Tanzer’s father co-founded ProSlide with Mr. Hunter. Mr. Tanzer has worked with ProSlide ever since. He retired from ProSlide on July 5, 2024, a few weeks after his oral testimony.
[33] Mr. Tanzer has over 35 years of experience in water ride design and development at ProSlide. In addition, Mr. Tanzer was certified as a Professional Ride Inspector with the AIMS International, an organization that promotes safety in the amusement industry. He is also involved separately with the ASTM. He served as a member of the ASTM’s F24 committee, and has since become its vice-chair. The F24 committee is devoted to developing standards relating to amusement rides and devices. Through his involvement with the ASTM, Mr. Tanzer chaired a number of task groups that went on to develop various standards relating to water slides and aquatic play equipment.
[34] Mr. Tanzer’s evidence is focused on the design process for a new water slide feature and whether the utility of the ProSlide Patents was demonstrated or soundly predicted. In addition, his report offers fact evidence at paragraphs 22, 26, 29, 43, | |, 52, 74, 75, 77, 79, ||| |||, 89, and 118. Among other things, Mr. Tanzer’s fact evidence states that (1) he was the leader of the product development team that developed new water slide features; (2) ProSlide had done modelling and testing of the feature claimed by the 601 Patent; and (3) ProSlide created 3D models and video simulations of the feature claimed in the 552 Patent Family and compared it with previous slides. It would therefore be incorrect to describe Mr. Tanzer merely as a proposed expert witness. He is also a fact witness, and a distinction must be made between his opinion evidence and his fact evidence.
[35] With respect to his opinion evidence, ProSlide proposes that Mr. Tanzer be qualified as follows:
Mr. Andreas Tanzer is an expert in the field of water slide design, including the development of water slide features.
[36] WhiteWater objects to Mr. Tanzer’s proposed qualification and submits that his opinion evidence is inadmissible. WhiteWater argues that he is unable to discharge the duty expected of an expert to the Court, namely to provide independent and impartial evidence. Although it is evident that Mr. Tanzer has specialized knowledge and experience in water slide design, I nevertheless agree that Mr. Tanzer’s opinion evidence is compromised by his long and intimate association with ProSlide and Mr. Hunter. The issue is whether the nature and extent of the association prevents him from discharging his duty to the Court as a proposed expert.
[37] To be admissible, expert evidence must be relevant, necessary, and not subject to an exclusionary rule. The Court must also be satisfied that the proposed expert is qualified. In addition to these requirements, the Court retains its gatekeeping function, measuring the benefits of admitting a proposed expert’s evidence against the costs (White Burgess Langille Inman v Abbott and Haliburton Co, 2015 SCC 23 [White Burgess] at paras 23-24). An expert’s lack of independence can render their evidence inadmissible if they are “clearly unwilling and/or unable to carry out” their duty to the Court. The expert’s inability to discharge that duty engages (1) the expert’s qualification and/or (2) the Court’s gatekeeping role (White Burgess at paras 49-54).
[38] In assessing an expert’s independence and impartiality, what matters is the nature and extent of their interest or connection with one of the parties, not the existence of an interest or connection. Therefore, a mere employment relationship with the party calling the evidence will be insufficient to render the evidence inadmissible, but advocacy on behalf of, close familial relationships with, or a financial stake in one party would likely suffice, depending on the circumstances, to infer that the expert lacks independence and impartiality (White Burgess at para 49).
[39] In Roher v Canada, 2019 FCA 313 [Roher], the Federal Court of Appeal upheld a decision by the trial Judge to exclude expert evidence for lack of independence. The appellant participated in an art donation program to reduce his taxes. At issue before the trial Judge was the fair market value of the art. The appellant relied on an expert report from an art appraiser. However, the appraiser was previously retained by the art donation program. In affirming the trial Judge’s decision, the Court noted that the expert’s “proposed report gave an opinion on the validity of her own appraisals” and that “she essentially proposed to give an expert opinion on her own professional opinions” (Roher at para 15).
[40] Mr. Tanzer’s expert report is analogous to the report that was before the Court in Roher. On cross examination, Mr. Tanzer acknowledged that he was involved at key points in the product design process that led to the 552 Patent Family. Though he characterized his involvement as “mak[ing] sure that [the design team] crossed their Ts, dotted their Is, and [making] sure that they covered everything”, it was evident from the documentary record that his involvement was far more substantive. He is identified in one document as a “mandatory reviewer” of the design concept. In a design meeting’s minutes, he is noted for suggesting that ProSlide file a PCT patent and then a US patent in relation to the subject matter of the 552 Patent Family. Separately, in an email exchange referencing allegedly infringing products sold by WhiteWater, Mr. Tanzer expressed his hope that ProSlide would take legal action. When asked directly on cross examination whether he is loyal to ProSlide, Mr. Tanzer confirmed unequivocally that he is indeed loyal.
[41] In my view, given the nature and extent of his involvement in ProSlide’s design process, combined with his comments on cross examination, Mr. Tanzer is unable to independently and impartially provide opinion evidence, particularly as to whether ProSlide demonstrated or soundly predicted utility. Mr. Tanzer is therefore not qualified to provide expert evidence and his opinion evidence must be excluded. Even if Mr. Tanzer’s opinion evidence were admissible, I would still give it little to no weight, in light of his long and intimate association with ProSlide and the product development of at least some of the water slide features that are the subject of the patents at issue.
[42] This conclusion has no bearing on Mr. Tanzer’s fact evidence, which remains admissible. I find no issues with Mr. Tanzer’s credibility in that respect.
(3) Richard Hunter [43] Richard Hunter is the President and Chief Executive Officer at ProSlide. He is the named inventor of the ProSlide Patents. Mr. Hunter’s evidence discussed ProSlide’s founding and its current business model. He also testified regarding the invention story of both the 601 Patent and the 552 Patent Family, and discussed the commercialization of the 552 Patent Family into the FlyingSAUCER commercial product.
[44] With respect to the 601 Patent, Mr. Hunter testified that he conceived of the invention’s concept and then developed it through a method known as ||||||||||||||||||||||||| ||||||||||||||||||||||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| |||| |||| According to Mr. Hunter, this testing method, combined with his prior experience in the method and water slides more generally, allowed him to understand the path a rider would take through various embodiments of the feature claimed in the 601 Patent. ||||||||||||||||||| ||||||||||||||||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| ||||||||||||||||||||||||||||||||||||||||||||||||| |||||||||||||||||||||||||||||||||||||||||||||||||
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[47] As for the 552 Patent Family, Mr. Hunter testified that he conceived of the underlying concepts by melding his background as a professional skier performing high speed turns with what he saw as disadvantages in existing water slide designs that involve a looping feature. ||||| ||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| ||||||||||||||| |||||||||||||||
[48] On cross examination, Mr. Hunter was consistent in saying that compound curves were not essential to the inventions claimed by the 552 Patent Family, since certain embodiments may not have compound curves. He nonetheless conceded that having a roll or pitch angle is a fundamental design element. ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
[49] Overall, Mr. Hunter was consistent in his evidence, though he tended to embellish some of his testimony. Nevertheless, I find he is a credible witness and I discuss his evidence as may be relevant below.
(4) Ray Smegal [50] Ray Smegal is the Chief Commercial Officer at ProSlide. His current position is focused on sales, but he previously held various roles in ProSlide’s product development team, including as head of that team.
[51] Mr. Smegal discussed ProSlide’s position in the water slide industry. His evidence also focused on the development of the FlyingSAUCER product and its impact on the industry. He also testified regarding the negative effects that WhiteWater’s Orbiter and Tailspin products had on ProSlide’s sales of the FlyingSAUCER.
[52] Mr. Smegal was consistent in his evidence. He answered questions directly and clearly. I find him to be a credible witness. I discuss his evidence as may be relevant below.
B. WhiteWater’s Witnesses (1) James Diamond [53] Mr. James Diamond is WhiteWater’s sole expert witness in this proceeding.
[54] Mr. Diamond is a professional engineer with over 40 years of experience. He earned a bachelor’s degree of applied science in civil engineering from the University of Ottawa in 1983, after which he worked with various firms as a structural engineer between 1984 and 1998. His responsibilities in that period included creating preliminary designs, conducting engineering analysis and computer modelling, and reviewing buildings.
[55] In 1998 and until 2006, Mr. Diamond worked at ProSlide, first as a senior structural engineer and then as Manager of Design and Engineering. His responsibilities included supervision of in-house design and engineering staff, assistance in the development of conceptual designs and proposals of water slides, the standardization of water slide towers and support structures, the automation of water slide design and estimation processes, and the supervision and management of external engineering resources. He was involved in the development of several of ProSlide’s water feature products, but not the features that form the subject matter of the ProSlide Patents at issue.
[56] Since leaving ProSlide, Mr. Diamond has worked with Leibe Engineering Associates. He continues to work there on matters such as the structural design of industrial projects, residential and commercial buildings, and water parks.
[57] I accepted Mr. Diamond’s expert qualification as follows:
James Diamond is a professional engineer and civil engineering consultant with expertise in structural engineering, including the design, development, manufacture and installation of water slides, water slide features and related infrastructure.
[58] As with Mr. Young, Mr. Diamond provided his opinion on both validity and infringement in three reports. His first report focuses on claim construction and validity. His second report responds to WhiteWater’s expert evidence on claim construction and infringement. His final report expands on the first report with the benefit of Mr. Young’s commentary.
[59] I found Mr. Diamond to be knowledgeable, and considered his evidence to be helpful and generally credible. That said, his evidence was inconsistent in respect of several aspects, and, on cross examination, he made a number of material concessions that undermined his analysis. This undermined the weight of his evidence. I discuss his testimony, concessions, and inconsistencies as may be relevant below.
(2) Claudio Barrera [60] Claudio Barrera has worked with WhiteWater for 23 years. He currently holds the position of Director of Innovation and has been in that role since late 2019.
[61] Between early 2010 and late 2019, Mr. Barrera held the role of Water Slide Product Manager and then Director of Product Development. In the latter of these two roles, he was responsible for the development of new products and the improvement of existing products, among other things. He oversaw the development of WhiteWater’s Orbiter and Tailspin products. Though he was not involved directly with the development of WhiteWater’s AquaSphere product, which coincided with his time as Water Slide Product Manager, he was aware of that work and took part in the testing and validation of the product.
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[63] Mr. Barrera provided evidence on the product development history of WhiteWater’s AquaSphere. He stated that WhiteWater sought to create a water slide feature with a visual appeal to the external observer and a unique but brief ride experience that includes a 90 degree turn. After an early full-size model was built, an injury caused the product development team to adjust the design. According to Mr. Barrera, the team determined that it was “critical, for safety reasons,” to ensure all ride vehicles enter straight down the middle of the flume leading into the AquaSphere, down a narrow corridor, up the portion of the sliding surface opposite the entry, and then back down towards the exit. This was done by, among other things, (1) creating entry and exit “channels” within the feature that direct the rider in a particular direction, and (2) adding and removing water in key areas to control the speed and trajectory of the rider.
[64] Mr. Barrera also discussed the product development history of the Orbiter. His evidence in chief acknowledged that the Orbiter’s development was a response to ProSlide’s FlyingSAUCER. The intent behind the Orbiter was to offer an alternative to the FlyingSAUCER. It was nonetheless allegedly designed to be distinct from ProSlide’s product. According to Mr. Barrera, distinguishing features of the Orbiter’s design are its curved sliding surface, its partially upward trajectory, and its use of a “weightlessness” moment.
[65] Mr. Barrera’s evidence showed that WhiteWater’s product development team made an effort to remain aware of ProSlide’s intellectual property. Though he and his team felt that there may be a risk of litigation, they also considered the Orbiter’s design to be non-infringing.
[66] With respect to the development history of the Tailspin, Mr. Barrera testified that the concept evolved from WhiteWater’s existing Open Constrictor product. The Open Constrictor is a feature that involves tight spiral curves with a constant radius using an open flume. An image of the Open Constrictor is included in Schedule A of these reasons. The evolution to the Tailspin was, per Mr. Barrera, motivated by aesthetic considerations. However, on cross examination, Mr. Barrera acknowledged that WhiteWater’s development team also considered ProSlide’s FlyingSAUCER product and how to best compete with it.
[67] Mr. Barrera also provided evidence of WhiteWater’s manufacturing and sales process. The manufacturing of WhiteWater’s parts is handled by third party subcontractors, who also handle shipping to customers. Mr. Barrera testified that the parts of eight AquaSpheres were manufactured by a third party in Canada. They were subsequently shipped for assembly and use abroad. All other products at issue were and are manufactured, assembled, and used outside of Canada. They do not pass through Canada at any point.
[68] I found Mr. Barrera’s evidence to be consistent and credible. I discuss his evidence as may be relevant below.
VI. Analysis A. Claim Construction, the Skilled Person, and the Common General Knowledge
[69] A patent’s claims are interpreted by the Court in an informed and purposive manner. They are read from the perspective of a person of ordinary skill in the art (the “skilled person”) as of the date of publication. To ensure predictability and fairness to both the patentee and the public, the Court’s interpretation must remain anchored in the words and language of the claims. The Court will therefore distinguish between a claim’s essential and non-essential elements, granting protection only to the invention’s essential features. Reference cannot be made to the “spirit of the invention” to extend the scope of a claim. Instead, the Court will endeavour, through the eyes of the skilled person, to glean the nature of the claimed invention as described, being neither too generous nor too harsh (Whirlpool Corp v Camco Inc, 2000 SCC 67 [Whirlpool] at paras 42-55; Free World Trust v Électro Santé Inc, 2000 SCC 66 [Free World Trust] at paras 31, 44-54; Consolboard Inc v MacMillan Bloedel (Saskatchewan) Ltd, [1981] 1 SCR 504 [Consolboard] at para 27; Tearlab Corporation v I-MED Pharma Inc, 2019 FCA 179 [Tearlab] at paras 31-34).
[70] Where ambiguity persists in the words of a claim, the Court may also refer to the patent’s specification for clarity (Tearlab at para 33).
[71] While the claim language is read through the eyes of the skilled person, having regard to that person’s common general knowledge, the Court is entitled to differ from the construction argued by either party, as it is the role of the Court alone as a matter of law to construe the claims (Biogen Canada Inc v Pharmascience Inc, 2022 FCA 143 at paras 71-72; Whirlpool at para 61).
[72] The skilled person referred to above is a hypothetical figure who, being equipped with the common general knowledge, is sufficiently informed in the art to be able to appreciate the patent at a technical level. In doing so, the skilled person is presumed to have a mind willing to understand. Though a paragon of deduction and dexterity, the skilled person is nevertheless devoid of intuition, imagination, or inventiveness (Free World Trust at para 44; Whirlpool at para 53; Hospira Healthcare Cor