Deeproot Green Infrastructure, LLC v. Greenblue Urban North America Inc.

Deeproot Green Infrastructure, LLC v. Greenblue Urban North America Inc.
Court (s) Database
Federal Court Decisions
Date
2021-07-16
Neutral citation
2021 FC 501
File numbers
T-954-18
Decision Content
Date: 20210716
Docket: T-954-18
Citation: 2021 FC 501
Fredericton, New Brunswick, July 16, 2021
PRESENT: Madam Justice McDonald
BETWEEN:
DEEPROOT GREEN INFRASTRUCTURE, LLC
AND DEEPROOT CANADA CORP.
Plaintiffs/
Defendants By Counterclaim
and
GREENBLUE URBAN NORTH AMERICA INC.
Defendant/
Plaintiff by Counterclaim
PUBLIC JUDGMENT AND REASONS
(Confidential Judgment and Reasons issued May 28, 2021)
Table of Contents
Overview 5
Background 6
Confidentiality Order 7
The Trial 7
The Witnesses 8
Plaintiffs’ Fact Witnesses 8
Charles Graham Ray 8
James Urban 10
Plaintiffs’ Expert Witnesses 11
Dr. Richard LeBrasseur 11
Prem Lobo 12
Defendant’s Fact Witnesses 12
Dean Bowie 12
Stewart Bowie 14
Craig Melvin 14
Jeremy Bailey 14
Carol Daly 14
Defendant’s Expert Witnesses 15
Dr. Barrett L. Kays 15
Bruce Blacker 16
Agreed Statement of Issues 17
Claim Construction 17
Infringement 17
Validity 18
Remedies 18
The Patents 19
The 348 Patent 20
The 599 Patent 22
Claim Construction 23
General Principles 23
What are the relevant dates of the 348 Patent and 599 Patent? 25
Who is the Person of Skill in the Art (POSITA) 25
Common General Knowledge 27
Conclusion - Common General Knowledge 31
Supporting Tree Growth 31
Managing Storm Water 32
Hardscape Management 32
Construction of the Patents 33
348 Patent 33
“structural cell” 36
“A plurality of structural cells positioned below a hardscape substantially covering the structural cells, the structural cells each comprising” 38
“a base” 39
“a top” 41
“at least approximately 8 inches” 42
“at least approximately 85%” 43
… maintaining the soil within the volume in a low compacted state accommodating natural growth of structural roots of a tree within the volume … 43
“One or more permeable barriers around the structural cells” 45
“Water ingress into / water egress from the plurality of structural cells” 46
Claims 2, 3, 4 46
Claim 5 46
Claims 7 & 8 46
Claims 11 & 12 46
Claim 13 47
Claim 14 47
Claims 16 & 17 47
Claims 18, 19, 20 47
Claim 22 47
Claim 23 48
Claim 24 48
Conclusion 348 Patent Essential Elements 48
599 Patent 50
Periphery support members engaging the base and extending outwardly from said base, for attaching to a base of another cell or a lid and for supporting said hardscape, said support members being size and arranged so that at least approximately eighty five percent of a volume defined by outer edge of said cell is a void space. 51
Claim 2 51
Claims 3 & 4 52
Conclusion 599 Patent Essential Elements 53
Infringement 53
Legal Principles 53
GreenBlue Product Development 54
Analysis 60
A Base 63
A Top 64
At least approximately 85% 64
Conclusion – 348 Infringement 64
599 Patent 64
Validity 65
Anticipation 65
GreenLeaf 2002 Catalogue – Prior Art 66
Other Prior Art 67
Anticipation - Disclosure 70
Anticipation - Enablement 71
Burkhart 609 72
Gilette Defence 73
Obviousness 74
Ambiguity 80
Overbreadth and Insufficiency 82
Improper and Speculative Amendments 84
Conclusion 84
Remedies 85
Injunction 85
Damages 85
Experts Opinions 88
Costs 91
Judgment 92
Annex: Relevant Provisions of the Patent Act 93
Overview
[1] The Plaintiffs, DeepRoot Green Infrastructure LLC and DeepRoot Canada Corp. (collectively referred to as “DeepRoot”), and the Defendant GreenBlue Urban North America Inc. (GreenBlue) provide products and services in the urban landscaping field.
[2] DeepRoot alleges that GreenBlue’s “RootSpace” product infringes various claims of their Patents number 2,552,348 (348 Patent) and number 2,829,599 (599 Patent).
[3] DeepRoot seeks a declaration that their patents have been infringed, a permanent injunction as well as monetary damages in the form of an accounting of profits or a reasonable royalty.
[4] GreenBlue denies any infringement and counterclaims that the 348 and 599 Patents are invalid. The grounds of invalidity asserted by GreenBlue include anticipation, obviousness, overbreadth, insufficiency, speculative filing, and section 53 of the Patent Act.
[5] For the reasons that follow, I have concluded that the 348 Patent and the 599 Patent are valid and have been infringed.
Background
[6] The following background facts are from the Agreed Statement of Facts filed by the parties:
(a) The Plaintiff DeepRoot Green Infrastructure, LLC (“DeepRoot”) is a corporation organized and existing under the laws of California, having its principal place of business at 101 Montgomery Street, Suite 2850, San Francisco, California.
(b) The Plaintiff DeepRoot Canada Corp. (“DeepRoot Canada”) is the Canadian operating subsidiary of DeepRoot. DeepRoot Canada is incorporated under the laws of Nova Scotia with a principal place of business at 550 West Broadway, Suite 341, Vancouver, British Columbia.
(c) DeepRoot and DeepRoot Canada are in the business of providing products and services in the field of urban landscaping.
(d) The Defendant GreenBlue Urban North American Inc. (“GreenBlue”) is a corporation organized and existing under the laws of Ontario, having a principal place of business at 71 Bysham Park Drive, Woodstock, Ontario.
(e) GreenBlue is in the business of providing products and services in the field of urban landscaping.
(f) In general, GreenBlue’s RootSpace is an engineered structural cell soil system with modular components providing high volumes of uncompacted soil for healthy tree root growth below hardscape surfaces.
(g) GreenBlue’s RootSpace structural cell system uses a series of structural cells positioned below a hardscape to enable tree root growth and accommodate filtering, retention, storage and infiltration of storm water while preventing hardscape damage.
(h) The structural cells of the RootSpace system are designed and used by GreenBlue and its customers to bear substantially the entire load of both the hardscape and commercial vehicle traffic directed thereover, while maintaining the soil within the volume in a low compacted state accommodating natural growth of structural roots of a tree within the volume.
(i) GreenBlue has advertised RootSpace as having “over 95% usable void space”, being “made from 100% recycled plastic” and “rated vehicular traffic with minimal surface.”
(j) DeepRoot is the owner of record of Canadian Patent No. 2,552,348 (the “348 Patent”) and Canadian Patent No. 2,829,599 (the “599 Patent”).
(k) The 599 Patent is a divisional of the 348 Patent.
Confidentiality Order
[7] Pursuant to a Protective Order dated September 24, 2020, the parties agreed to the confidentiality of certain documents and evidence. When necessary, the Court moved to “in camera” proceedings in keeping with the provisions of this Order.
The Trial
[8] This trial was conducted via videoconference pursuant to the terms of the Remote Hearing Protocol Order dated October 1, 2020. Legal counsel, the parties, and the witnesses attended via videoconference from their various locations in Ontario, Nova Scotia, California, North Carolina and the UK.
The Witnesses
[9] The following is a brief summary of the witness evidence. I include this summary to provide an overall factual and contextual framework. I also note my general observations as to the reliability of the witnesses’ evidence. The particulars of some of the witness evidence will be addressed in more detail in the analysis of the issue to which it relates.
[10] Read-ins from the Discovery evidence of Dean Bowie and Graham Ray were also tendered by the parties.
Plaintiffs’ Fact Witnesses
Charles Graham Ray
[11] Mr. Ray is the Chief Executive Officer of DeepRoot Green Infrastructure LLC. He is one of the named inventors on the 348 Patent and the 599 Patent. He provided background evidence on the research and development that went into the product that became the SilvaCell. Before the development of the SilvaCell product, Mr. Ray was in the related business of manufacturing products related to the control of tree root growth, geo-membranes and tree trunk protectors. He testified that in the early 2000s there were very few products designed to promote the growth of urban trees.
[12] Mr. Ray explained the various options explored by DeepRoot to develop a product that would enhance and support tree growth in the urban environment. Around 2003, DeepRoot started collaborating with James Urban. The collaboration focused on promoting tree growth and managing stormwater in the urban environment. This collaboration became a joint venture between DeepRoot and Mr. Urban.
[13] DeepRoot and Mr. Urban retained an engineering design firm, Innova Engineering, to provide engineering designs of the first concept of the structural cell. Innova Engineering provided a number of iterations until the group arrived at a product that was able to meet the specifications necessary for the industry.
[14] When the SilvaCell commercial product entered the market, it got positive reviews in industry publications. According to Mr. Ray, the product’s success is directly related to the significant research and development that DeepRoot invested in the development of the product. Mr. Ray testified that one of the first projects using the SilvaCell was the site of the athlete’s housing for the 2010 Winter Olympic Games in Vancouver. He also testified about the use of SilvaCell in a number of projects in the city of Toronto. He testified that the market for green infrastructure is growing and climate change initiatives have enhanced that growth. Mr. Ray also explained that the key to sales is to ensure that the product is specified by architects and engineers on project plans.
[15] Mr. Ray states that he first learned of the RootSpace product in 2016. He explained that the presence of the RootSpace product has created confusion in the marketplace.
[16] Mr. Ray gave evidence in a straightforward manner. He did not engage in embellishment and did not avoid answering questions that were not helpful to his position. Overall, I have no reason to doubt the veracity of his evidence.
James Urban
[17] Mr. Urban is one of the named inventors on the 348 Patent and the 599 Patent. He is a landscape architect specializing in urban forestry, soil analysis and design, trees, horticulture design, and site-specific landscape architecture projects. He testified that he has been involved with methods to improve trees in urban settings since 1978. He has written over 50 articles including articles in the Landscape Architecture magazine, the Journal of Horticulture and Arborist News. Mr. Urban testified that his book, published in 2008, Up by Roots: Trees and Soils in the Built Environment, is considered a primary book in the landscape architecture profession. Mr. Urban has won several awards for his work including an award from the American Society of Landscape Architecture.
[18] Mr. Urban testified on the research and development of the SilvaCell product. He explained that the modular concept informed the development of the SilvaCell. Mr. Urban also explained that the intention was to maximize soil and minimize structure size in order to balance the size of the product with the economic cost of creating it. It is clear Mr. Urban has a strong body of knowledge in the relevant area; he is passionate about tree health in the urban environment. Mr. Urban provided useful background on the evolution and development of green space in the urban environment.
[19] Mr. Urban was a credible witness who also did not engage in embellishment and answered all questions forthright. His evidence was helpful.
Plaintiffs’ Expert Witnesses
Dr. Richard LeBrasseur
[20] Dr. LeBrasseur was qualified on consent as an expert in landscape architecture and green infrastructure. He is a licensed landscape architect and an environmental psychologist. He is currently an associate professor of landscape architecture at Dalhousie University. Dr. LeBrasseur has a PhD in green infrastructure from the University of Edinburgh, a Master of Landscape Architecture from the University of Michigan, and a Bachelor of Landscape Architecture from the University of Connecticut.
[21] Dr. LeBrasseur prepared three reports as follows:
Report of Dr. Richard LeBrasseur dated June 14, 2020 (LeBrasseur first report)
Responding report dated August 21, 2020 (LeBrasseur second report)
Reply report dated September 25, 2020 (LeBrasseur third report).
[22] Dr. LeBrasseur provided opinions on claims construction, the credentials and characteristics of the Skilled Person, the state of the art as of January 15, 2004, and the common general knowledge [CGK] of the Skilled Person for both the 348 Patent and the 599 Patent.
[23] My impression of Dr. LeBrasseur was that he attempted to testify accurately and honestly. At times, he seemed to be defensive regarding questions that he felt threatened his opinion. I also note that he had difficulty going outside the parameters of his written reports. However, I interpret this as Dr. LeBrasseur attempting to ensure his answers were precise rather than avoiding answering questions.
Prem Lobo
[24] Mr. Lobo was DeepRoot’s expert witness on loss quantification and was qualified on consent. Mr. Lobo is a chartered professional accountant, chartered accountant, chartered business valuator, certified fraud examiner and is certified in financial forensics. Mr. Lobo is an expert in investigative and forensic accounting, the valuation of intellectual property and commercial businesses and loss quantification in commercial and intellectual property disputes.
[25] Mr. Lobo gave his opinion based upon instructions he received from legal counsel to quantify revenues and royalties based on set percentages. On royalty calculations, Mr. Lobo confirmed that he did not consider any royalties beyond his instructions.
[26] Mr. Lobo gave evidence in a straightforward and objective manner.
Defendant’s Fact Witnesses
Dean Bowie
[27] Mr. Dean Bowie is the Chief Executive Officer of GreenBlue Urban Limited, United Kingdom, and President of the Defendant, GreenBlue Urban North America, Inc.
[28] In college, Mr. Bowie studied land sciences, horticulture, and arboriculture. Mr. Bowie has many years of experience in the urban landscape business. He described the evolution of GreenBlue’s landscape architecture products including tree pits and how the RootCell product evolved to become the RootSpace product. Mr. Bowie gave evidence on the RootCell product and its use on various projects such as Hastings, Blackheath the Old Bailey and Alesbury.
[29] Mr. Bowie holds a number of patents for urban landscaping products. GreenBlue also took steps to seek a patent for the RootSpace product. However, Mr. Bowie’s evidence on why GreenBlue did not pursue patent protection was vague; he attributed this to failures of his patent agent to make timely filings. He also claimed that he decided against seeking patent protection in favour of allowing others to use the RootSpace concept in the interest of promoting urban tree health.
[30] He became aware of the SilvaCell product in 2013 but states that it did not have features he needed. According to Mr. Bowie, the RootSpace product was designed away from SilvaCell.
[31] Overall, Mr. Bowie’s evidence was helpful and provided useful background information on the GreenBlue business undertakings.
Stewart Bowie
[32] Mr. Bowie is the brother of Dean Bowie. Mr. Stewart Bowie gave evidence on the sales of GreenBlue tree pit systems and products throughout the UK, while he was employed with GreenBlue from 2000 to 2008.
Craig Melvin
[33] Mr. Melvin is the current Operations Manager at the Defendant Corporation GreenBlue, responsible for Canada and the US. In 2005, Mr. Melvin set up GreenLeaf Canada, the company that later became GreenBlue Urban North America Inc. Mr. Melvin testified on the operations of GreenBlue. His evidence provided useful context.
Jeremy Bailey
[34] Mr. Bailey is the general manager of GreenBlue Urban North America who provided evidence on sales in North America since he joined the company in April 2011. He first joined as a sales consultant and became the general manager in May 2019. Mr. Bailey explained the full line of products offered by GreenBlue including RootSpace. Mr. Bailey also gave evidence on the sales and related expenses regarding GreenBlue products.
Carol Daly
[35] Ms. Daly is employed in an administrative role with GreenBlue, and part of her duties include bookkeeping. Ms. Daly gave evidence on the financial records. Ms. Daly explained where the numbers used in the reports were taken from and the accounting approach taken to calculate expenses such as exchange rates and freight rates.
Defendant’s Expert Witnesses
Dr. Barrett L. Kays
[36] Dr. Kays gave evidence as an expert in both the landscape architect and soil scientist fields. He was qualified on consent as an expert in landscape architecture, urban stormwater, horticulture, and soil science. Dr. Kays holds a Bachelor’s degree in horticulture from Oklahoma State University and a Master’s degree in landscape architecture from North Carolina State University. He holds a PhD in soil science from North Carolina State University and is a Fellow in the American Society of landscape architects [ASLA]. He is a registered landscape architect in the states of North Carolina, Virginia and New York.
[37] Dr. Kays prepared three reports as follows:
First witness statement dated June 12, 2020 (Kays first report)
Second witness statement dated August 21, 2020 (Kays second report)
Third witness statement dated September 25, 2020 (Kays third report).
[38] Dr. Kays has extensive experience in landscape architecture and storm-water management. As a witness however, Dr. Kays occasionally did not answer the questions put to him by opposing counsel in a direct or straightforward manner. On occasion he made claims that were not supported with evidence. For example, he claimed that the RootSpace product had a “system that handles much larger structural loads” without an evidentiary basis for his statement.
[39] Dr. Kays also went into detail to explain the distinction between woody versus non-woody roots and structural and non-structural roots, however his definition of “structural roots” did not have an evidentiary basis.
[40] Overall, I would describe Dr. Kays’ approach to claims construction as overly technical and narrow. Despite his extensive experience, at times he appeared to struggle with concepts that should have been familiar to someone with his extensive experience. I took this to be more of a defensive tactic rather than an evasive one.
[41] Subject to these comments, Dr. Kays otherwise provided useful evidence.
Bruce Blacker
[42] Mr. Blacker is a certified public accountant, certified in financial forensics, and is a forensic accountant. He was qualified on consent as an expert in the evaluation of economic damages in intellectual property matters. Mr. Blacker has an undergraduate degree and Master’s degree in accounting from Brigham Young University. He is a Chartered Public Accountant and certified in financial forensics under the American Institute of Certified Public Accountants (AICPA). Mr. Blacker has extensive experience in litigation and particularly in intellectual property cases.
[43] Mr. Blacker explained his reasonable royalty calculation. He approached quantifying damages based on the per unit sales of the product versus relying upon net sales. In his view, a per-unit royalty is the most logical approach in light of the fact that GreenBlue sells other products aside from RootSpace products. He explained that factors unrelated to the patents in suit should not influence the value of royalty payments.
[44] I found Mr. Blacker’s evidence helpful and, as explained below, I prefer his royalty calculation approach.
Agreed Statement of Issues
[45] The parties submitted the following agreed statement of issues which I will follow:
Claim Construction
Who is the appropriate person of skill in the art of the 348 Patent and the 599 Patent?
What is the claim date of the 348 Patent and 599 Patent?
What was the POSITA’s common general knowledge as of:
(a) The claim date of the 348 Patent and 599 patent; and
(b) The publication date of the 348 Patent and 599 Patent?
What is the meaning of the words and phrases of:
(a) Claims 1-3, 7, 11, 12, 16-20, 23 and 24 of the 348 Patent; and
(b) Claims 1-4 of the 599 Patent?
Infringement
Has GreenBlue infringed or induced infringement of any valid Asserted Claims of the 348 Patent by making, using, or selling systems including the RootSpace products?
Has GreenBlue infringed or induced infringement of any valid Asserted Claims of the 599 Patent by making, using or selling the RootSpace products?
In particular, do the RootSpace products have:
(a) A “base” (all asserted claims) and “for attaching to a base” (599 Patent claims 1-4)
(b) “periphery support members” (599 Patent claims 1-4);
(c) “outer edges” (599 Patent claims 1-4);
(d) A lid including “structural members to bear a portion of load of said hardscape” (599 Patent claim 3); and
(e) “a portion of the lid is formed of plastic” (599 Patent claim 4)?
Validity
Were the essential elements of the Asserted Claims of the 348 Patent and the 599 Patent disclosed and enabled by any one of the asserted Prior Art:
(a) RootCell system described in, inter alia, the GreenLeaf 2002 Brochure
(b) Urriola Patent US 5,030,343
(c) Urriola Patent US 6,779,946
(d) Urriola Patent US 5,810,510
(e) Bonhoff Patent US 6,095,718
(f) Bonhoff Patent US 6,428,870, and
(g) Burkhart Patent CA 2,445,609?
Was the subject matter of the Asserted Claims invalid for insufficient disclosure contrary to Section 27(3) of the Patent Act?
Are any of the Asserted Claims of the 348 Patent and of the 599 Patent obvious in view of the above-noted Prior Art, either alone or in combination?
Are any of the Asserted Claims invalid as being unclear, lacking definiteness and being ambiguous contrary to Section 27(4) of the Patent Act? In particular:
(a) “at least approximately 8 inches apart” and “at least approximately 85% of the volume can be filled with soil”
(b) “collectively defining a volume”
(c) “substantially”
(d) “may”
(e) “preventing hardscape damage”
(f) “or”.
Are any of the Asserted Claims broader than the invention made or disclosed as a result of missing a necessary essential element? In particular, the two metal rods located at the top of the structure (599 Patent, Claims 1-4).
Is DeepRoot entitled to a permanent injunction, enjoining GreenBlue from infringing the 348 Patent or the 599 Patent until the expiry of the patents?
Is DeepRoot entitled to elect an accounting of GreenBlue’s profits from infringement of the 348 Patent and 599 Patent? If so:
Remedies
(a) What are GreenBlue’s revenues casually connected to infringement?
(b) What are the appropriate cost deductions from GreenBlue’s infringing revenues? And
(c) Is an apportionment of GreenBlue’s profit appropriate, and if so what is the percentage that should be apportioned?
In the alternative, what is reasonable royalty that would have been negotiated between DeepRoot and GreenBlue, but for GreenBlue’s infringement?
Is DeepRoot entitled to reasonable compensation for GreenBlue’s acts after the publication of the application for the 599 Patent but before the grant of the 599 Patent? If so, what is the amount of reasonable compensation?
The Patents
[46] In the Chronology of Agreed Facts the parties agreed to the following dates:
a. The 348 Patent and the 599 Patent claimed priority to a US patent application (US 10/759, 493) filed on January 15, 2004.
b. The 348 Patent in the 599 Patent have a filing date of January 14, 2005.
c. The 348 Patent and the 599 Patent are shown to have been laid open for public inspection on August 4, 2005.
d. GreenBlue became aware of DeepRoot’s first generation SilvaCell product in approximately 2009.
e. GreenBlue began designing RootSpace in 2014.
f. The 348 Patent was issued on January 7, 2014.
g. GreenBlue introduced and began advertising RootSpace in March 2016.
h. GreenBlue first became aware of the 348 Patent and 599 Patent Application in or about February 2017.
i. Construction of the Jack Layton Ferry Terminal project implementing using RootSpace commenced in October 2017.
j. GreenBlue’s first Canadian invoice for the sale of the RootSpace structural cell system is dated April 27, 2017.
k. The 599 Patent was issued on September 26, 2017.
l. The full term of the 348 Patent runs until January 14, 2025.
m. The full term of the 599 Patent runs until January 14, 2025.
The 348 Patent
[47] The 348 Patent is titled: “Integrated tree root and storm water system”. The five named inventors are James Urban, Albert L. Key, Charles Julian Ray, Charles Graham Ray and Michael James. The following is the diagram for the 348 Patent:
[48] The abstract, in reference to the above diagram, states as follows:
A structural cell system (100) is disclosed for supporting hardscape (106) areas in a way that enables tree root growth and accommodates filtering, retention, storage and infiltration of stormwater while preventing hardscape damage. The system (100) includes a plurality of structural cells (210) capable of being positioned below a hardscape. The structural cells are designed to have openings that are sized to accept tree root. The system has one or more permeable barriers around the structural cells with a way for water to flow into and out of the plurality of structural cells. The structural cells may include a lid (712) that includes reinforcement members to reduce resin creep.
[49] The field of invention is noted at page 1 as follows:
[0002] This disclosure relates generally to a system for the management of tree roots and stormwater runoff in urban areas, and more particularly to integrated cells used in a structural system for supporting sidewalks and other paved areas that enables tree root growth and accommodates filtering, retention, storage and infiltration of stormwater while preventing hardscape damage.
[50] The summary of this invention is described at pages 3 and 3a of the of the Patent as follows:
[0008] Embodiments of this invention may allow the same space within the city infrastructure to accommodate both significant storm water management and tree root development.
[0008a] According to one particular aspect of the invention, there is provided a structural cell system for supporting hardscape areas that enables tree root growth and accommodates filtering, retention, storage and infiltration of stormwater while preventing hardscape damage, comprising; a plurality of structural cells positioned below a hardscape substantially covering the structural cells, the structural cells each comprising: a base, a top, and structural members positioned therebetween so as to maintain the base and the top at least approximately 8 inches apart, the base, top, and structural members collectively defining a volume that includes the base, top, and structural members, wherein at least approximately 85% of the volume can be filled with soil; wherein the structural cell bears substantially the entire load of both the hardscape and commercial vehicle traffic directed thereover, while maintaining the soil within the volume in a low compacted state accommodating natural growth of structural roots of a tree within the volume; one or more permeable barriers around the structural cells; water ingress into the plurality of structural cells; and water egress from the plurality of structural cells.
[0009] In one embodiment a structural cell or frame system is disclosed for supporting hardscape areas that enables tree root growth and accommodates filtering, retention, storage and infiltration of stormwater while preventing hardscape damage from tree roots. The system includes a plurality of structural cells capable of being positioned below a hardscape. The structural cells may have openings sized to accept tree roots. The system may also include one or more permeable barriers around the structural cells. There is also a way for water to flow into and out of the plurality of structural cells.
[0010] In another embodiment a multilayered structural cell system is disclosed for supporting hardscape areas that enables tree root growth and accommodates filtering, retention, storage and infiltration of stormwater while preventing hardscape damage. The system includes a first layer of structural cells for short-term water storage positioned below the hardscape and being capable of short-term water storage. A second layer of structural cells positioned below the first layer, the second layer of structural cells being capable of storing tree routing medium supporting the growth of tree roots. A third layer of cell structure positioned below the second layer, the third layer of structural cells being capable of long-term water storage. There is also a way for water to flow into the first layer and out of the third layer. With a first permeable barrier separating the first and second layer, a second permeable barrier separates the second and third layers and each of the layers being in fluid communication with the other layers.
The 599 Patent
[51] The 599 Patent lists the same five inventors as the 348 Patent and is also titled “integrated tree root and storm water system”. The diagram for the 599 Patent is as follows:
[52] The 599 Patent abstract description is identical to the 348 Patent with the exception that it does not include the diagram numbers as noted in brackets in the 348 Patent. Likewise, the field of invention is identical to that of the 348 Patent.
[53] The summary at paragraph [0008] is identical to the summary at paragraph [0008] of the 348 Patent; however, the next paragraph is different from the 348 Patent, as follows:
[0008a] According to one particular aspect, there is provided a structural cell for supporting hardscape, the cell comprising: a base; and periphery support members engaging the base and extending outwardly from said base, for attaching to a base of another cell or a lid and for supporting said hardscape, said support members being sized and arranged so that at least approximately eighty five percent of a volume defined by outer edges of said cell is a void space.
[54] The balance of the summary at paragraphs [0009] and [0010] are identical to those for the 348 Patent.
Claim Construction
General Principles
[55] Claim construction requires the consideration of the claims 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” (Consolboard Inc v Macmillan Bloedel (Sask) Ltd. [1981] 1 S.C.R. 504 at page 520; see also Teva Canada Ltd v Pfizer Canada Inc, 2012 SCC 60 [Teva] at para. 50).
[56] The words of the claims must be read in an informed and purposive way with a mind willing to understand. (Free World Trust v Électro Santé Inc, 2000 SCC 66 [Free World Trust] at para 44).
[57] A patent is not addressed to an ordinary member of the public, it is directed to a worker who is skilled in the art to which the patent relates (Whirlpool Corp v Camco Inc, 2000 SCC 67 [Whirlpool] at para 44). The claim language must be read through the eyes of the person of skill in the art (POSITA) with the common general knowledge (Free World Trust at paras 44-45; see also AFD Petroleum Ltd v Frac Shack Inc, 2018 FCA 140 at para 60; Whirlpool at para 53).
[58] The Federal Court of Appeal in Tearlab Corporation v I-MED Pharma Inc, 2019 FCA 179 at para 31, noted:
The Patent Act promotes adherence to the language of the claims, which in turn promotes fairness and predictability (Free World Trust at paras. 31(a), (b) and 41). The words of the claims must, however, be read in an informed and purposive way (at para. 31(c)), with a mind willing to understand (at para. 44). On a purposive construction, it will be apparent that some elements of the claimed invention are essential while others are non-essential (at para. 31(e)). 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 (at para. 15).
[59] In construing the claims, the Court can consider the patent specifications to understand what the inventor meant by the words in the claims. However, the specifications cannot be used to “to enlarge or contract the scope of the claim as written and ... understood” (Whirlpool at para 52; see also Free World Trust at para 32).
[60] 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.
What are the relevant dates of the 348 Patent and 599 Patent?
[61] I agree with DeepRoot that the relevant date for claims construction is the date of publication of August 5, 2005, being the date that the 348 Patent was laid open for public inspection. As the 599 Patent is a divisional patent of the 348 Patent, the same date applies.
Who is the Person of Skill in the Art (POSITA)
[62] The Person of Skill in the Art (POSITA) is a hypothetical person possessing the ordinary skill and knowledge of the particular art to which the invention relates and a mind willing to understand a specification that is addressed to them (see, e.g., Tetra Tech EBA Inc v Georgetown Rail Equipment Company, 2019 FCA 203 at para 25, citing Free World Trust at para 44).
[63] The POSITA is a technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right (see Apotex Inc v Sanofi-Synthelabo Canada Inc, 2008 SCC 61 [Sanofi] at para 52).
[64] The POSITA may be a team of people possessed of different skills (see Teva Canada Limited v Jansen Inc, 2018 FC 754 at para 66).
[65] DeepRoot’s expert Dr. LeBrasseur describes the POSITA as a team of persons rather than one person. At paragraph 36 of his June 14, 2020 report, he states: “where a particular project requires highly technical scientific information, the landscape architect would either research the relevant area in publications they subscribe to or can locate themselves, or hire a specialist to advise on the issue.” According to Dr. LeBrasseur, such individuals may include urban planners/designers, civil engineers, hydrologists and hydrogeologists, architects, arborists or botanists, soil scientists, tradespersons, landscape contractors, and governments or municipalities.
[66] Dr. LeBrasseur states that the POSITA would be a landscape architect with at least 10 years of experience practicing as a professional landscape architect. The POSITA would also include a professional civil engineer to conduct load-bearing calculations.
[67] Dr. Kays’ description of the POSITA is a person with a Master’s degree in landscape architecture with at least a minor in environmental sciences and a considerable amount of experience in designing stormwater systems (Kays Second Report, para 132).
[68] With regard to the educational requirements for POSITA, I agree with Dr. Kays that the POSITA would likely have an advanced degree in landscape architecture. Dr. Kays gave evidence that universities in the 1970s began transitioning from undergraduate programs to graduate programs to fulfill accreditation requirements. Therefore, in 2005, the relevant date of the Patent, it is likely that the POSITA would have an advanced degree in landscape architecture.
[69] Considering the claims language specifically references the necessity to be “load-bearing”, I agree with Dr. LeBrasseur that the POSITA would also include a professional civil engineer to determine load-bearing capabilities. In my view, landscape architects would rely upon a civil engineer to determine load-bearing capabilities of a product for the specified use.
[70] I conclude that the POSITA is a team comprised of a landscape architect who has, at a minimum, a Master’s degree in landscape architecture and who has fulfilled the relevant landscape architecture licensing requirements. The POSITA also has storm water expertise and has knowledge of environmental science. Finally, the POSITA would also include a professional civil engineer.
Common General Knowledge
[71] The relevant date for assessing common general knowledge for the purpose of claim construction is the publication date (Eli Lilly Canada Inc v Mylan Pharmaceuticals ULC, 2020 FC 816 at para 187). Therefore, the relevant date for the common general knowledge is August 4, 2005 for both patents.
[72] The Supreme Court in Sanofi noted that “common general knowledge means knowledge generally known by persons skilled in the relevant art at the relevant time” (para 37). Whirlpool at para 74 notes that the POSITA is expected to be “reasonably diligent in keeping up with advances in the field to which the patent relates.”
[73] Both parties submitted evidence that prior to the early 2000s, urban trees had a poor survival rate.
[74] The following are the key points noted in the LeBrasseur First Report, at paragraphs 47-52, as the common general knowledge regarding trees in the urban environment:
trees are an important part of ecological and human well-being
urban trees provide social, recreational, and psychological benefits
urban trees are environmentally important and contribute to climate change mitigation
urban trees play an important role in regulating stormwater
growing trees successfully in an urban environment is difficult because of compacted soil and conflicts with urban infrastructure such as building foundations roadways sidewalks pipes and utilities.
[75] With respect to stormwater management, the LeBrasseur First Report notes the following at paragraphs 97-116, which would have been common general knowledge of the relevant time:
stormwater management is the practice of maintaining and controlling the water resulting from weather events like rain and snow melt
infiltration and filtration of stormwater is dependent on the properties of the soil
surface runoff can wash away fertile topsoil and other organic matter that is important for trees and soil health
in the urban areas stormwater was managed by collecting the runoff and redirecting it to sewer systems, drainage ditches, or floodways
commercial products available to address urban stormwater management were limited
engineered soils are manufactured soils were used to address stormwater management.
[76] With respect to load management, the LeBrasseur First Report, at paragraphs 117-119, notes that the skilled person would have the following common general knowledge:
knowledge of how to design and construct structures safe and sufficiently strong for their desired purpose
knowledge of the relevant building construction transportation safety codes
know how to design and construct hardscape areas including roads parking lots and sidewalks.
[77] In the Kays First Report, the following is noted as being part of the common general knowledge:
The skilled person would have known that prior to the year 2000, plastic chambers for wastewater and stormwater systems had begun to dominate on-site systems (at para 128).
different products could be used to improve urban trees and stormwater management including concrete boxes gravel based soil systems and plastic systems (at para 22).
concret