Guest Tek Interactive Entertainment Ltd. v. Nomadix, Inc.

Guest Tek Interactive Entertainment Ltd. v. Nomadix, Inc.
Court (s) Database
Federal Court Decisions
Date
2021-03-31
Neutral citation
2021 FC 276
File numbers
T-448-17
Decision Content
Date: 20210331
Docket: T-448-17
Citation: 2021 FC 276
Ottawa, Ontario, March 31, 2021
PRESENT: Mr. Justice McHaffie
BETWEEN:
GUEST TEK INTERACTIVE
ENTERTAINMENT LTD.
Plaintiff Defendant by Counterclaim
and
NOMADIX, INC.
Defendant Plaintiff by Counterclaim
PUBLIC JUDGMENT AND REASONS
(Confidential Judgment and Reasons issued March 31, 2021)
TABLE OF CONTENTS
Para.
I. Overview [1]
II. Background [11]
A. The Trial [11]
B. The Parties [14]
C. The Witnesses [18]
(1) Inventors [19]
(2) Experts [23]
(3) Lay Witnesses [36]
III. General Principles [38]
A. Claims Construction [39]
(1) Recourse to the disclosure in claims construction [41]
(2) Additional principles of claims construction [49]
B. Prior Art and Common General Knowledge [51]
C. Infringement [53]
D. Inducing Infringement [56]
E. Validity [62]
(1) Anticipation [63]
(2) Obviousness [66]
IV. Canadian Patent 2,600,760
A. Introduction [70]
B. The Person of Ordinary Skill in the Art [73]
C. The Common General Knowledge [76]
D. Claims Construction [82]
E. Inducing Infringement [201]
(1) Infringement of the Claims by a Direct Infringer [204]
(2) Influence by Nomadix [241]
(3) Knowledge [251]
F. Validity [253]
(1) Anticipation [255]
(2) Obviousness [271]
G. Conclusion [284]
V. Canadian Patent 2,750,345
A. Introduction [285]
B. The Person of Ordinary Skill in the Art [288]
C. The Common General Knowledge [290]
D. Claims Construction [305]
E. Infringement [373]
(1) NSE Software: CBQ, WFQ, and SUB [374]
(2) Testing Using Nomadix Gateways [379]
(3) NSE Source Code and Approach to Traffic Management [384]
(4) Infringement of the Asserted Claims [397]
(5) Changes to Nomadix’s Source Code [412]
F. Inducing Infringement [417]
G. Validity [419]
(1) Anticipation [419]
(2) Obviousness [421]
H. Conclusion [437]
VI. Disposition and Costs [438]
I. Overview
[1] Allowing multiple users access to a computer network, such as when guests and the public access a hotel’s network, raises a number of technical issues. This patent infringement action has to do with two of those issues: network security and bandwidth management. Guest Tek Interactive Entertainment Ltd claims its competitor, Nomadix, Inc, is infringing or inducing infringement of two of its patents by selling access gateway devices and licensing the software they run on.
[2] The first, Canadian Patent No 2,600,760 (the ’760 Patent), relates to a way of addressing security concerns when wireless devices, such as wireless laptops or phones, access a network via a wireless access node. Guest Tek alleges Nomadix has induced hotels to infringe certain claims of the ’760 Patent by offering its gateways and software to hotels, and providing instructions on how to use the gateways in a network in a way that will infringe the claims.
[3] The second, Canadian Patent No 2,750,345 (the ’345 Patent), relates to a way of allocating bandwidth between “zones” of users in accordance with the “user load” of those zones. Guest Tek alleges Nomadix itself infringes certain claims of the ’345 Patent by providing license keys to its software to Canadian purchasers, including hotels in Canada. It also alleges Nomadix induces the hotels to infringe the patent, again by offering its gateways and software, and providing instructions to use them in a way that infringes the identified claims.
[4] Nomadix, for its part, denies it infringes either patent. It also alleges, in defence and by counterclaim, that the asserted claims of the ’760 Patent and the ’345 Patent are invalid because they are anticipated or obvious in light of the prior art.
[5] The action was bifurcated. During this liability phase of the proceeding, the most significant issues pertained to the construction of the ’760 and ’345 Patents. Guest Tek and Nomadix proposed different constructions of various terms in the relevant claims of the patents, each supported by expert evidence and argument. On Guest Tek’s construction, Nomadix’s devices and software infringe the patents; on Nomadix’s construction, they do not.
[6] I conclude a person of ordinary skill in the art (POSITA) reviewing the patents in light of the common general knowledge (CGK) would understand some of the terms in the patent claims in accordance with the constructions Guest Tek proposed, and some as Nomadix proposed. On the basis of these constructions and my assessment of Nomadix’s software as informed by the expert evidence, I conclude Nomadix has not infringed or induced infringement of the asserted claims of either the ’760 Patent or the ’345 Patent.
[7] With respect to the ’760 Patent, Guest Tek has not established Nomadix induced infringement of the claims it asserts. Direct infringement by hotels in Canada was not made out, as Guest Tek did not show the existence of a network using a Nomadix gateway in which (a) a wireless access node was configured to receive encrypted wireless protocol traffic and to transmit all packets from wireless devices to the gateway; and (b) the gateway was configured to determine whether packets were directed to another wireless device on the network and transmit or drop packets accordingly. Nor did Guest Tek establish Nomadix had influenced Canadian hotels to infringe to the point that, without the influence, any direct infringement would not have taken place.
[8] With respect to the ’345 Patent, Guest Tek has not established Nomadix infringed or induced infringement of the asserted claims. The software run on Nomadix’s gateways allocates bandwidth in a different manner than claimed in the ’345 Patent. It does not use a quantum, in the sense of a parameter that limits the amount of data dequeued from a packet queue, that is dynamically adjusted in accordance with the tracked user load associated with that queue. Even under the specific configurations and usage parameters in which Guest Tek argues the Nomadix gateways exhibit infringing behaviour, it does not have the essential elements of the system and method claimed in the ’345 Patent. There being no direct infringement of the patent through use of the Nomadix gateways, Nomadix cannot have induced any Canadian hotels to infringe.
[9] With respect to the counterclaim, I conclude Nomadix has not shown the asserted claims of either the ’760 Patent or the ’345 Patent to be invalid as having been anticipated or rendered obvious by the prior art. None of the prior art references cited by Nomadix disclose all of the essential elements of the respective claims of the patents. Nor are the differences between the identified prior art and the inventive concepts of the relevant claims steps that would have been obvious to the POSITA at the claim dates of the patents.
[10] The action and counterclaim are both therefore dismissed. If the parties are unable to agree on costs, they may make submissions in accordance with the schedule set out at the end of these reasons.
II. Background
A. The Trial
[11] This trial was conducted by videoconference pursuant to the order I issued on August 27, 2020: Guest Tek Interactive Entertainment Ltd v Nomadix, Inc, 2020 FC 860. Counsel, witnesses and party representatives attended by videoconference from their respective locations in Alberta, Quebec, Illinois, California, Texas, and Utah. At the outset of each witness’ evidence, I instructed them on the protocol for giving evidence by videoconference. No objections were raised during the trial regarding compliance with that protocol or any difficulty arising from the conduct of the hearing by videoconference.
[12] The Court would like to thank the parties, their counsel, and the Court Registry staff, for their efforts and goodwill in conducting the trial by videoconference, which was a novel experience for all involved. Thanks to those efforts, the trial proceeded efficiently and with a minimum of technological or logistical difficulties. Parties were able to take advantage of the technology through displaying documents on screen, playing videos, and referring to electronic documents to which all participants had access.
[13] During the course of the proceeding, the parties entered into a protective agreement regarding the treatment of confidential and proprietary information. At trial, confidential evidence was heard in camera with the videoconference locked and closed to members of the public. On informal consent motion at the trial, the parties asked that the terms of their protective agreement be reflected in a protective order and that a confidentiality order be issued pursuant to Rule 151 of the Federal Courts Rules, SOR/98-106. I issued a Protective and Confidentiality Order to this effect on October 30, 2020, which reflected the treatment of confidential information during the trial. Given the potential confidentiality issues, a draft confidential version of these reasons is being released to the parties to ensure any confidential information has been redacted before issuing a public version.
B. The Parties
[14] Guest Tek and Nomadix each provide network gateway equipment and supporting software to hotels. A gateway is a computer hardware device that connects computer networks, with information travelling from one network to the other passing through the gateway.
[15] Guest Tek is an Alberta company headquartered in Calgary. It offers its products under the brand name OneView, including its OneView Internet (OVI) solution. One of Guest Tek’s employees is the inventor of the ’345 Patent, while Guest Tek acquired the ’760 Patent as part of a larger transaction from another company, iBAHN.
[16] Nomadix, a Delaware company headquartered in California, also sells gateway devices. Its gateways were originally sold under the name Universal Subscriber Gateway (USG), with models named Access Gateway (AG) and Edge Gateway (EG) being used more recently. As described in Nomadix’s Access Gateway User Guide, the gateways enable public access service providers, such as hotels, to offer broadband internet connectivity to their customers: Exhibit 105, p 3. The various Nomadix gateways run software known as the Nomadix Service Engine (NSE) software. A number of different model numbers are sold in each of the AG and EG gateway series, and the NSE software has gone through and continues to go through various modifications. At issue in this proceeding are Nomadix models AG2400, AG2500, AG5600, AG5800, AG5900, and EG6000, running the NSE software versions 8.11 or higher (for the ’760 Patent) or 8.7 and higher (for the ’345 Patent). A change to Nomadix’s software shortly before trial in version 8.15.023 was the subject of an evidentiary dispute between the parties, discussed below at paragraphs [412]
to [416]
.
[17] Nomadix does not sell its gateway products directly to end users in Canada. Rather, it has a contractual relationship with two distributors who are authorized to sell Nomadix gateways to the Canadian market: Exhibit 55. The distributors sell Nomadix gateways to resellers, who in turn sell to hotels: Transcript, pp 1264–1266. These distributors sometimes provide technical support on network and gateway configuration in connection with the sale. For the gateway to operate, an end user must register the gateway and enter into a license agreement directly with Nomadix: Transcript, pp 1367–1368, 1379–1380; Exhibit 63. While not in significant factual dispute, the parties took different positions on whether Nomadix’s role in selling gateways, configuring customer networks, and providing licenses and support could or did amount to infringement or inducing infringement. Given my conclusions on the construction of the patents, these issues are ultimately not determinative.
C. The Witnesses
[18] The witnesses called by the parties fell into three main categories: inventors, experts, and lay witnesses. I provide a brief summary of their evidence below and some general observations, and will refer to that evidence in greater detail as necessary during the course of these reasons.
(1) Inventors
[19] Guest Tek called the three living inventors of the ’760 Patent, Brett Molen, Nichol Draper, and Jan DeHoop, as well as the inventor of the ’345 Patent, David Ong. Each of the inventors provided background information regarding their education and experience, their work in the industry at the time of the inventions, and the context in which the inventions came about.
[20] Mr. Molen, Mr. Draper, and Mr. DeHoop, together with a fourth inventor, Richard Ehlers, were employed by a company Mr. Molen co-founded named STSN when they filed an application for a United States Patent in 2005. The inventors assigned their interest in the application and invention to STSN shortly after the US Patent application was filed: Exhibit 5. STSN subsequently changed its name to iBAHN. In 2013, iBAHN assigned to Guest Tek its interest in the invention and associated patents and applications, which by then included the Canadian application that became the ’760 Patent: Exhibit 10. Nomadix raises no issue with respect to inventorship, the assignments, or Guest Tek’s resulting ownership of the ’760 Patent.
[21] Mr. Ong is an employee of Guest Tek in Calgary, and developed what became the ’345 Patent while at Guest Tek in or around 2011. Again, Nomadix takes no issue regarding inventorship or Guest Tek’s ownership of the ’345 Patent.
[22] Some of the evidence elicited from the inventors by counsel, both in examination in chief and in cross-examination, strayed into areas that amounted to them giving their understanding of the invention and the meaning of the terms used in the patents. Inventors’ evidence regarding their understanding of the terms in a patent is not admissible for the purpose of construing the claims of the patent: Nekoosa Packaging Corp v AMCA International Ltd, [1994] FCJ No 1046, 56 CPR (3d) 470 (CA) at para 23; Free World Trust v Électro Santé Inc, 2000 SCC 66 at paras 61–66; Bombardier Recreational Products Inc v Arctic Cat, Inc, 2018 FCA 172 at paras 22–23, 51. I have not referred to this evidence in my construction of the patents herein.
(2) Experts
[23] The Court had the assistance of three experienced computer scientists called by the parties. Their various expert reports were filed on consent, and no objections were made to their respective qualifications.
[24] Guest Tek called two expert witnesses, one on each patent. Dr. Peter Reiher addressed the ’760 Patent. Dr. Reiher is an Adjunct Professor in the Computer Science Department at the University of California, Los Angeles. He has taught courses at UCLA in computer science, including computer security and network security. He is an author on a large number of texts and papers, many of which deal with network security, one of his research interests. Dr. Reiher was tendered and accepted as qualified to give expert evidence in the areas of computer and computer network security, including wired and wireless networks; packet transmission and security issues in relation thereto; and security for mobile devices in wireless and wired networks. Dr. Reiher authored an initial report on construction and infringement [Reiher First Report]; a rebuttal report on validity and responding to construction issues [Reiher Second Report]; and a sur-reply report dealing with one non-infringement and construction issue [Reiher Third Report].
[25] Dr. Peter Dordal addressed the ’345 Patent. Dr. Dordal is an Associate Professor in the Computer Science Department at Loyola University Chicago, where he has taught courses in computer programming and computer networking. He is the author of An Introduction to Computer Networks, an online textbook published since 2012, and has contributed to other publications on computer networks. He was also System Administrator for departmental computing facilities at Loyola for almost 20 years, a position that involved management of university networks and software development. Dr. Dordal was tendered and accepted as qualified to give expert evidence in the areas of computer systems and programming of computers; and computer internet access equipment and management of bandwidth. Dr. Dordal filed an initial report on construction and infringement [Dordal First Report] and a rebuttal report on validity and responding to construction issues [Dordal Second Report].
[26] Nomadix called Dr. Tal Lavian to address both the ’760 and ’345 Patents. Dr. Lavian earned his Ph.D. in Computer Science from the University of California, Berkeley. He has taught as a Lecturer at UC Berkeley and acted as Visiting Scientist and as Industry Fellow at that university, teaching classes on wireless devices and smartphones. Dr. Lavian has worked in telecommunications, wireless, and networking technologies for over 30 years, including over a decade as Principal Scientist at his own network communications company. He is a named co-inventor on more than 100 issued patents. Dr. Lavian was tendered and accepted as qualified to give expert evidence in network communications; computer programming; mobile and wireless communications; computer networks; internet protocols; packet switching; and network design and architecture, including switches, access devices, edge devices, and gateways. Dr. Lavian filed a total of four reports, namely a first report on construction and validity in respect of each patent [Lavian First ’760 Report and Lavian First ’345 Report], and a second report on infringement and responding construction issues in respect of each patent [Lavian Second ’760 Report and Lavian Second ’345 Report].
[27] The reports and oral evidence of the experts gave information regarding the relevant fields of endeavour, what was known to those working in those fields at the time, and their views on how the patents would be understood by a POSITA. Their evidence allowed the Court to put itself in the position of the POSITA for the purposes of construing the patents and assessing the parties’ respective arguments on infringement and invalidity: Whirlpool Corp v Camco Inc, 2000 SCC 67 at para 57.
[28] For the most part, I found all three experts were helpful and intended to fulfill their role of assisting the Court impartially on matters relevant to their expertise. At the same time, each expert on occasion put forward constructions and justifications that strained impartiality and moved towards advocacy. I refer to these elements in further detail as necessary in the course of these reasons.
[29] I also make the following general comments regarding the evidence of the three experts. It is now clearly recognized that counsel may assist in the preparation of an expert report, and that counsel’s involvement can even be beneficial in ensuring reports are framed in a way that is comprehensible and relevant: Biogen Canada Inc v Taro Pharmaceuticals Inc, 2020 FC 621 at para 71; Moore v Getahun, 2015 ONCA 55 at paras 55–64. In my assessment, Guest Tek’s reports suffered from too much involvement of counsel, while Nomadix’s might have benefited from somewhat more.
[30] It was clear—even before this was confirmed in cross-examination—that Dr. Reiher and Dr. Dordal’s reports had significant input from counsel for Guest Tek: Transcript, pp 580–581, 584–590, 1022–1023, 1076–1077, 1080–1081, 1110–1111. For example, they each opined at some length, in similar or identical language, on factual issues unrelated to computer science, such as the extent to which Nomadix could be considered to have influenced Canadian hotels to infringe the patent through their user documentation and licenses: Reiher First Report, paras 493–524; Dordal First Report, paras 434–474. Dr. Reiher and Dr. Dordal’s rebuttal reports also included very similar, and often argumentative, responses to Dr. Lavian’s discussion of the CGK: Reiher Second Report, paras 16–19, 24–58; Dordal Second Report, paras 20–23, 30–40. They also each criticized Dr. Lavian for not following legal principles, again in argumentative and often similar or identical language: Reiher Second Report, paras 7–10, 60, 123, 262–265; Dordal Second Report, paras 6–13, 150–154. While the involvement of counsel in the preparation of reports is by no means objectionable in itself, as stated, Dr. Reiher and Dr. Dordal’s reports suffered from the inclusion of what was effectively legal argument.
[31] Dr. Lavian’s reports, on the other hand, might have benefited from greater guidance, as their structure and the issues they addressed were not always helpfully focused on the material issues in dispute. Dr. Lavian’s discussions of the CGK, while thorough and generally useful, often veered into areas less relevant to the patents and issues in dispute. His analysis of validity issues tended to be broadly couched and less focused on the specific claims and the relevant analysis, and would have been of more assistance had it been more focused on the issues relevant to the obviousness assessment: Lavian First ’760 Report, paras 10.1–10.6; Lavian First ’345 Report, paras 9.1–9.7.
[32] Whether due to too much involvement of counsel or too little, each of the experts also undermined the strength of their own opinions through the nature of their criticisms of the other. For example, Dr. Reiher purported to give his opinion that Dr. Lavian “completely and utterly failed to follow” legal principles of claims construction (language from counsel that Dr. Reiher regretted), while Dr. Dordal argued Dr. Lavian “completely failed to follow” the steps in the obviousness analysis: Reiher Second Report, para 60; Transcript, pp 584–585; Dordal Second Report, para 150. Dr. Lavian criticized Dr. Reiher for, among other things, “struggl[ing] to build […] a lawyer’s argument”, and suggested Dr. Dordal’s basic premise was “unreasonable and biased”: Lavian Second ’760 Report, para 122; Lavian Second ’345 Report, para 21. While rigorous debate between experts should not be shied away from, and may even be beneficial, the nature of each expert’s criticism of the other, particularly in their reports, was unhelpful.
[33] One surprising issue that arose out of Dr. Lavian’s reports and oral evidence is also worth addressing as a preliminary matter. Dr. Lavian’s First Report on each of the patents was entitled “Claim Construction and Validity.” Each report said his mandate included providing his opinion on how a POSITA “would understand various words and phrases in the patents mentioned above and help the Court construe the claims”: Lavian First ’760 Report and Lavian First ’345 Report, para 2.1.3. As is common, Dr. Lavian attached to each a list of legal principles that counsel provided for him to follow in his report, including principles of claims construction. In each, Dr. Lavian included a section entitled “Claim Construction” that provided a description of claim elements, his comments, and his opinion on whether the element was essential: Lavian First ’760 Report, paras 3.2, 7.1–7.10 and Appendix TL-04; Lavian First ’345 Report, paras 3.2, 8.1 and Appendix TL-03. Nonetheless, in his oral testimony, Dr. Lavian insisted on a number of occasions that he had not undertaken a claims construction and “didn’t construe any claim”: Transcript, pp 1615–1616, 1847–1862, 1874–1878, 1881, 1945–1953. Rather, he said, he simply adopted the ordinary meaning of the terms and provided comments. His adamance that he had not construed the claims led to a certain inefficiency in cross-examining him on his “Claim Construction and Validity” reports.
[34] Leaving aside whether adopting the “ordinary meaning” is itself construing the claims, it is clear that Dr. Lavian’s reports provided a construction of the claims, or at least his understanding of how a POSITA would understand the claims and whether they would be considered essential. It appears, and I am prepared to accept, that the matter may simply be one of terminology, i.e., that Dr. Lavian believed “construction” was a term of art that did not describe what he was doing, notwithstanding the use of the term in his report, or that he was perhaps concerned that construction is ultimately the Court’s domain: Whirlpool at para 57. In any event, I have taken Dr. Lavian’s evidence regarding the CGK and how a POSITA would understand the patents for the information it provides without significant concern as to whether he engaged in “claims construction” or not.
[35] The foregoing comments having been made, I reiterate that each expert ultimately appeared desirous of providing their expertise to help the Court understand the patents and the underlying technologies. This was particularly clear during their oral testimony. I have adopted the approach of accepting their technical expertise and opinions on this basis, considering their evidence where helpful and discounting that which was less helpful, without making any overall conclusion that one party’s expert was to be preferred over the other as a blanket matter.
(3) Lay Witnesses
[36] Guest Tek called three lay witnesses. Arnon Levy is the founder of Guest Tek. Formerly President and CEO of the company, he now sits as Chair of the Board of Directors and Founder. He gave an overview of Guest Tek’s history and business, as well as the acquisition of the ’760 Patent and other intellectual property from iBAHN as part of a larger purchase agreement. Zoey Sachdeva was recently named Chief Information Officer (CIO) of Guest Tek, having worked at the company for about 13 of the last 16 years. She gave evidence primarily regarding brand standards adopted by hotels in respect of their networks, and in particular Marriott Hotels’ Global Property Networking Standards (GPNS). Kenneth Barnes is the Chief Technology Officer (CTO) of Progress Residential, and was briefly a Guest Tek employee in the mid-2010s. He gave evidence primarily regarding his experiences while working as CIO of Omni Hotels & Resorts, a role that included responsibility for designing and assisting in developing guest high speed internet access (HSIA) standards for Omni Hotels.
[37] Nomadix called two lay witnesses, both Nomadix employees since 1999. Jeremy Cook is currently Product Manager of Nomadix Cloud. He gave evidence on the development and functionality of Nomadix’s gateway devices and the NSE software, as well as its commercial sales and support structures. This included confidential evidence regarding Nomadix’s license tracking system. Vadim Olshansky is currently the CTO of Edge Gateways for the company. He gave evidence on the development, architecture, and functionality of Nomadix’s NSE software. His evidence included confidential descriptions and explanations of the source code for Nomadix’s software, showing how the software achieves certain functionalities.
III. General Principles
[38] There was little dispute between the parties regarding the legal principles applicable to the issues of patent construction, infringement, and validity. As these principles are applicable to each of the patents at issue, I will set them out here before turning to their application.
A. Claims Construction
[39] The monopoly protected by a patent is defined by the claims: Patent Act, RSC 1985, c P‑4, s 27(4). The appropriate approach to interpreting or construing those claims was recently reiterated and summarized by the Federal Court of Appeal in Tearlab Corporation v I-MED Pharma Inc, 2019 FCA 179, making reference to the Supreme Court of Canada’s decisions in Whirlpool; Free World Trust; Consolboard Inc v MacMillan Bloedel (Sask) Ltd, [1981] 1 SCR 504; and Teva Canada Ltd v Pfizer Canada Inc, 2012 SCC 60 [Teva]. In Tearlab, Justice de Montigny for the Court of Appeal set out the main principles in the following terms:
[31] The Patent Act promotes adherence to the language of the claims, which in turn promotes fairness and predictability. The words of the claims must, however, be read in an informed and purposive way, with a mind willing to understand. On a purposive construction, 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 the non-essential elements, and to give the legal protection to which the holder of a valid patent is entitled only to the essential elements.
[32] To identify these elements, the claim language must be read through the eyes of a POSITA, in light of the latter’s common general knowledge. As noted in Free World Trust:
[51] …The words chosen by the inventor will be read in the sense the inventor is presumed to have intended, and in a way that is sympathetic to accomplishment of the inventor’s purpose expressed or implicit in the text of the claims. However, if the inventor has misspoken or otherwise created an unnecessary or troublesome limitation in the claims, it is a self-inflicted wound. The public is entitled to rely on the words used provided the words used are interpreted fairly and knowledgeably. [Emphasis in the original.]
[33] Claim construction requires that the disclosure and the claims be looked at as a whole “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”. Consideration can thus be given to the patent specifications to understand what was meant by the words in the claims. One must be wary, however, not to use these so as “to enlarge or contract the scope of the claim as written and … understood”. The Supreme Court recently emphasized that the focus of the validity analysis will be on the claims; specifications will be relevant where there is ambiguity in the claims.
[34] Finally, it is important to stress that claim construction must be the same for the purpose of validity and for the purpose of infringement.
[Emphasis added; citations omitted.]
[40] As is often the case, there was considerably less dispute in this matter over the essentiality of the claim elements than over the interpretation of the essential elements. Unless a party maintains that a claim element is not essential, it will be considered essential: Corlac Inc v Weatherford Canada Inc, 2011 FCA 228 at para 26.
(1) Recourse to the disclosure in claims construction
[41] Paragraph 33 from Tearlab, reproduced above, prompts some further discussion, as the parties and experts each referred frequently to passages in the disclosure in support of their arguments on construction. Justice de Montigny reaffirms that claims construction requires that the disclosure and the claims must be “looked at as a whole.” In support, he quotes the oft-cited principle from Consolboard that “[w]e must look to the whole of the disclosure and the claims to ascertain the nature of the invention” and a reasonable and fair construction [emphasis added]: Consolboard at p 520, cited with approval in Teva at para 50; in Monsanto Canada Inc v Schmeiser, 2004 SCC 34 at para 18; in Whirlpool at para 49(g); and recently by the Court of Appeal in Western Oilfield Equipment Rentals Ltd v M-I LLC, 2021 FCA 24 at para 16.
[42] However, Justice de Montigny also cited the caution from Whirlpool that a Court may look to the disclosure and drawings to “understand” the words of a claim but not to “enlarge or contract the scope of the claim as written”: Tearlab at para 33, citing Whirlpool at para 52. Of course, any construction given to the words in a claim will affect the scope of the claim: Whirlpool at para 49(h). I therefore take the rule against using the disclosure to “enlarge or contract” the claim as written to preclude adding words, elements, or limitations not found in the claim, or giving the words a meaning they cannot reasonably bear when interpreted in the context of the patent as a whole.
[43] Justice de Montigny also alludes to the principle that the specification will be relevant where there is “ambiguity” in the claim, citing AstraZeneca Canada Inc v Apotex Inc, 2017 SCC 36 at para 31. The Federal Court of Appeal in its 2016 decision in Tadalafil adopted the approach that “recourse” to the rest of the specification is unnecessary where the words in the claim are “plain and unambiguous”: Mylan Pharmaceuticals ULC v Eli Lilly Canada Inc, 2016 FCA 119 at para 39 [Tadalafil], quoting The Hon RT Hughes, D Clarizio & N Armstrong, Hughes and Woodley on Patents (Toronto: LexisNexis Butterworths, 2005) (loose-leaf 2d ed) at p 312. The Court of Appeal concluded the trial judge in that case erred in even referring to the disclosure when construing the claims, given the lack of ambiguity in the relevant claim, saying such reference was precluded:
[39] In my view, the judge erred in referring to the specification when construing the claims of the ‘377 patent. The rules of patent construction preclude reference to the specification when the claims are clear, and also improper if it varies the scope of the claims: Hughes and Woodley on Patents, p. 312:
In construing a patent, the claims are the starting point. The claims alone define the statutory monopoly and the Patentee has a statutory duty to state, in the claims, what [t]he invention is for which protection is sought. In construing the claims, recourse to the rest of the specifications is (1) permissible to assist in understanding the terms used in the claims; (2) unnecessary where the words [are] plain and unambiguous and (3) improper to vary the scope or ambit of the claims.
[Emphasis added.]
The final sentence of the foregoing passage from Hughes and Woodley on Patents is itself simply a restatement of the Court of Appeal’s earlier decision in Dableh v Ontario Hydro, [1996] 3 FC 751 (CA) at para 30. This passage from Tadalafil was referenced by the Court of Appeal recently without adverse comment about its applicability: Hospira Healthcare Corp v Kennedy Trust for Rheumatology Research, 2020 FCA 30 at paras 21–22.
[44] A similar approach was taken by the Court of Appeal shortly after Tearlab in Tetra Tech EBA Inc v Georgetown Rail Equipment Company, 2019 FCA 203. There, the Court of Appeal held that a Court may look to the whole of the specification to understand a claim term or “confirm” a construction arrived at upon consideration of the claims, but not to enlarge or contract the scope of the claim as written: Tetra Tech at paras 86, 103–104. The Court of Appeal criticized a construction by this Court that relied on expert testimony and a passage in the disclosure, and not the language of the claim, stating that recourse to the disclosure should be undertaken only in cases of ambiguity: Tetra Tech at paras 91, 100–103.
[45] There is in my view some tension between the principle that claims construction requires the disclosure and the claims be looked at as a whole, and the notion that “recourse” to the disclosure is only permissible when the claims are ambiguous. The purpose of beginning the construction exercise with the disclosure, and requiring consideration of the disclosure and the claims as a whole, is presumably to recognize that the disclosure assists and influences the purposive understanding of the claim terms in their context: Consolboard at p 520; Whirlpool at paras 49(c)–(g), 52; Tearlab at para 33. If this is so, it is difficult to reconcile with the requirement that the POSITA—and the parties, experts, and Court—cannot refer (or have “recourse”) to those very parts of the disclosure that assist in understanding the claim terms unless they first conclude the terms are ambiguous. As Justice Binnie recognized in Whirlpool, determining whether a term is ambiguous may itself require “careful review” of the disclosure: Whirlpool at para 52. I note that in Monsanto, the Supreme Court engaged in claims construction with reference to the disclosure without any prior determination that the claims were ambiguous: Monsanto at paras 17–19.
[46] Indeed, terms used in a claim will often be expressly discussed or defined in the disclosure, in keeping with the principle that the patentee may “act as his own lexicographer”: Kramer v Lawn Furniture Inc, [1974] FCJ No 100, 13 CPR (2d) 231 at para 16. The rule against recourse to the disclosure presumably does not require the POSITA to find an ambiguity in a claim term before having recourse to the patentee’s definition of the term in the disclosure, or the patentee’s ability to define their lexicon would be significantly undermined.
[47] Ultimately, I conclude from the foregoing that the exercise of construction must consider both the disclosure and the claims, with the claims being purposively construed in the context of the patent as a whole and in light of the CGK of the POSITA. However, the focus remains on the language of the claims, which defines the scope of the monopoly. The disclosure should not be used to enlarge or contract the scope of the claims, particularly through the addition of words or limitations not found in the claims.
[48] As discussed below, in this case I conclude there are no terms where consideration of the disclosure suggests a construction different than that suggested by the face of the claim read in light of the patent as a whole. In two cases—the term communications between in the ’760 Patent, discussed at paragraphs [174]
to [189]
below, and the term in proportion to in the ’345 Patent, discussed at paragraphs [344]
to [355]
—reference to the disclosure is necessary to resolve an ambiguity in the claim itself. In all other cases, referring to the disclosure simply “confirms” the construction arrived at in considering the claims: Tetra Tech at para 86.
(2) Additional principles of claims construction
[49] Two further principles of claims construction are relevant in this proceeding, given the parties’ positions and some of the expert evidence. The first is that claims construction is “antecedent” to consideration of validity and infringement issues: Whirlpool at para 43. In other words, it is to be undertaken with an eye to understanding the patent as written, rather than with the goal of obtaining, or avoiding, a finding of infringement or invalidity. At the same time, it is appropriate for the Court to be aware of the issues on which the parties disagree—where the “shoe pinches”—so as to focus the construction exercise on relevant issues: Cobalt Pharmaceuticals Company v Bayer Inc, 2015 FCA 116 at para 83.
[50] The second principle involves a balance between two evocative terms well known in patent law: the Court should construe a patent with “judicial anxiety” to support a useful invention, but if the inventor has created troublesome limitations in the claims, this is a “self-inflicted wound” the Court will not cure: Consolboard at p 521, quoting Hinks & Son v Safety Lighting Company (1876), 4 Ch D 607 at p 612; Free World Trust at para 51. Again, these two principles balance the central importance of the words of the claim as drafted by the inventor with the need to read those words in the context of the patent as a whole and with a mind willing to understand.
B. Prior Art and Common General Knowledge
[51] Claims construction is undertaken through the eyes of the POSITA in light of the CGK: Tearlab at para 32; Free World Trust at paras 31(e)(i), 44, 51; Whirlpool at para 53. The Supreme Court of Canada has defined the CGK as “knowledge generally known by persons skilled in the relevant art at the relevant time”: Apotex Inc v Sanofi-Synthelabo Canada Inc, 2008 SCC 61 at para 37(2). Sanofi-Synthelabo addressed the CGK in the context of the test for anticipation, but the same definition applies to the CGK for construction purposes, although the relevant date of analysis may differ: Tadalafil at paras 23–25. The relevant date for purposes of construction of a patent is the date of publication, while the relevant date for purposes of invalidity is the cla