Valley Blades Ltd v. Usinage Pro-24 Inc

Valley Blades Ltd. v. Usinage Pro-24 Inc. (Nordik Blades)
Court (s) Database
Federal Court Decisions
Date
2024-02-15
Neutral citation
2023 FC 1749
File numbers
T-1790-17, T-416-19
Decision Content
Date: 20240215
Docket: T-1790-17
T-416-19
Citation: 2023 FC 1749
Ottawa, Ontario, February 15, 2024
PRESENT: Madam Justice St-Louis Docket: T-1790-17
BETWEEN:
VALLEY BLADES LTD
Plaintiff/ Defendant by Counterclaim
and
USINAGE PRO-24 INC
C/O/B AS NORDIK BLADES
Defendant/ Plaintiff by Counterclaim
Docket: T-416-19
AND BETWEEN:
USINAGE PRO-24 INC
C/O/B AS NORDIK BLADES
Plaintiff/ Defendant by Counterclaim
and
VALLEY BLADES LTD
Defendant/Plaintiff by Counterclaim
PUBLIC JUDGMENT AND REASONS
(Identical to the Judgment and Reasons issued
on December 22, 2023)
I. Overview [1] In 2017, Valley Blades Ltd. [Valley Blades] commenced an action against Usinage Pro-24 Inc., carrying on business as Nordik Blades [Nordik Blades]. Valley Blades sought an order pursuant to subsection 60(1) of the Patent Act, RSC 1985, c P-4 [Patent Act], declaring that Nordik Blades’ Canadian Patent No. 2,856,940 [the 940 Patent] and each of the claims thereof was invalid, void, unenforceable, and of no force and effect, as well as a declaration that Nordik Blades made false and/or misleading statements tending to discredit the business, goods, and services of Valley Blades contrary to paragraph 7(a) of the Trademarks Act, RSC 1985, c T-13 [Trademarks Act].
[2] Nordik Blades defended the action and counterclaimed for a declaration that claims 1 to 12 of the 940 Patent were valid and that Valley Blades infringed them.
[3] In 2019, Nordik Blades commenced an action against Valley Blades seeking a declaration that independent claims 1, 20, 35, and 50, and dependent claims 2-14, 16-19, 21-28, 30-34, 36-43, 45-49, 51-62, and 64 of Canadian Patent No. 2,965,426 [the 426 Patent] as well as independent claim 1 and dependent claims 2-14 of Canadian Patent No. 2,992,233 [the 233 Patent] had been infringed by Valley Blades, and various reliefs.
[4] Valley Blades defended the action and counterclaimed for a declaration that the 426 and 233 Patents, and each of their asserted claims, are and always have been invalid.
[5] The actions have been bifurcated and this judgment and reasons pertain to the liability issues within both.
[6] On October 3, 2022, the parties’ joint Statement of Issues confirmed the issues before the Court related to: (1) the 940, 426, and 233 Patents’ validity (pertaining to the person skilled in the art [POSITA], claim construction, obviousness, overbreadth, and section 53 of the Patent Act); (2) infringement (i.e., are the three patents’ asserted claims infringed by Valley Blades EconoFlex-M products?); (3) Nordik Blades’ liability under subsection 7(a) of the Trademarks Act; and (4) costs.
[7] The parties subsequently agreed that infringement will be found if the asserted claims are found valid; they thus confirmed that infringement is no longer an issue to assess.
[8] Nordik Blades is the listed owner of the three Canadian patents at issue in these proceedings that all relate to each other and cover the same subject matter, i.e., segmented snow plow blades: the 940, 426, and 233 Patents [the Nordik Patents]. The 426 and 233 Patents are divisional patents.
[9] Pursuant to a stipulation between the parties, the only claims being asserted are: claims 1-12 of the 940 Patent; claims 1-8, 10-14, 16, 17, 19, 20-28, 31-32, 34-37, 39-43, 45-47, 49-51, 54-62, and 64 of the 426 Patent; and claims 1-2, 4-5, 7, and 9-14 of the 233 Patent [the Disputed Claims]. However, there is no longer any dispute that claim 35 of the 426 Patent is obvious; counsel for Nordik Blades acknowledged that their own expert, Mr. Harold Bouchard, indicated as much in his expert report and admitted the same at trial.
[10] In brief, Valley Blades submits that:
(i)the Disputed Claims are invalid for obviousness;
(ii)the Disputed Claims are invalid for overbreadth for claiming more than what the inventor made in regard to the blades’ tapered shape;
(iii)the Nordik Patents are invalid as a whole under section 53 of the Patent Act for false and misleading statements;
(iv)Nordik Blades is liable under subsection 7(a) of the Trademarks Act for the false and misleading statements it made to Valley Blades’ customers; and
(v)the parties should be given an opportunity to make submissions on an appropriate lump sum cost award, if they are unable to agree on costs.
[11] Nordik Blades responds that Valley Blades has not met its burden to:
(i)demonstrate obviousness as there is no expert evidence that would enable the Court to assess how the POSITA would have been led to combine the five pieces of prior art to create the subject of the Nordik Patents;
(ii)demonstrate the Disputed Claims are invalid for overbreadth as its arguments on the absence of limitations in regards to the shape (i.e., tapered) of the blades in the Disputed Claims are senseless;
(iii)demonstrate it satisfies the stringent legal test under section 53 of the Patent Act; and
(iv)prove each of the elements necessary to ground a claim under subsection 7(a) of the Trademarks Act.
[12] Nordik Blades also responds that costs should be awarded according to the top end of column IV of the Tariff.
[13] Considering the parties’ submissions, the Court must determine whether Valley Blades has met its burden to demonstrate that:
(i)the Disputed Claims of the Nordik Patents are invalid for obviousness and overbreadth;
(ii)the Nordik Patents are void under section 53 of the Patent Act; and
(iii)Nordik Blades violated subsection 7(a) of the Trademarks Act.
[14] The Court must also assess how costs should be awarded.
[15] For the reasons that follow, I find Valley Blades has successfully demonstrated that the Disputed Claims of the Nordik Patents are obvious. However, I find that Valley Blades has not demonstrated that the Disputed Claims are overbroad nor that it has met the test under section 53 of the Patent Act to void the Nordik Patents. As obviousness is a sufficient ground of invalidity, the Disputed Claims are invalid. Also, while I accept that Nordik Blades’ statements concerning Valley Blades’ products were false, I find Valley Blades nevertheless failed to satisfy each of the elements necessary to ground a claim under subsection 7(a) of the Trademarks Act. Valley Blades shall be awarded costs, with the quantum reserved pending additional submissions from the parties.
II. The evidence A. Evidence adduced by Valley Blades (1) Fact witnesses (a) Mr. Brad Hunt [16] Mr. Brad Hunt started his career at Valley Blades in or around 2001 and is now its Vice President. His primary responsibilities relate to the management of Valley Blades’ business and he continues to be involved in the research and development of Valley Blades’ products.
[17] Mr. Hunt was asked to provide evidence about (a) Valley Blades’ development and commercialization of the PolarFlex products; (b) Valley Blades’ development and commercialization of the EconoFlex-M products; (c) the false and misleading statements made by Nordik Blades to Valley Blades’ customers; and (d) Valley Blades’ business records.
[18] Mr. Hunt introduced 46 exhibits. He explained, inter alia, how he modified the rubber bushings of the Valley Blades PolarFlex in two ways. In one version, he added a depression in the bushings by removing some of the rubber in order to increase the bushing’s compressibility, leading to more blade movement. In a second version, he replaced the full elliptical bushings with round bushings to create an air gap below; since air compresses more than rubber, this bushing enables an even greater range of blade movement. Valley Blades delivered about 170 units of this version before the Nordik Patents’ filing date. Mr. Hunt also testified that while Canadian Patent No. 2,717,986 [the Valley Blades Patent] describes a system with separate rubber pieces covering the blade’s top and sides, the commercialized version of PolarFlex integrates the rubber pieces into one.
[19] Mr. Hunt further testified that Nordik Blades’ communications to Valley Blades’ customers caused Valley Blades to lose business with at least the following customers: the Government of Manitoba, the Township of Russell [the Township], and the United Counties of Stormont, Dundas, and Glengarry.
[20] I agree with Valley Blades that Mr. Hunt was a knowledgeable and careful witness who showed knowledge of the facts related to the Valley Blades’ products and explained the facts to the Court without hesitation.
(b) Mr. Jonathan Bourgon [21] Mr. Jonathan Bourgon is an employee of the Township of Russell, as its Director of Infrastructure. He provided evidence relating to the impact of Nordik Blades’ communications on the Township’s decision to return Valley Blades’ EconoFlex-M products.
[22] At the relevant time in 2017, he was Manager of Operations for the Township and was responsible for approving the procurement of snow plow blades.
[23] Mr. Bourgon testified that in 2017, the Township placed an order for EconoFlex-M products from Valley Blades. In late 2017, the Township received a Notice of Patent Infringement from Nordik Blades following which the Township decided to return its purchase of EconoFlex-M systems. Mr. Bourgon testified that the potential risk of being involved in litigation was part of the Township’s assessment of risk.
[24] Mr. Bourgon came across as a reliable witness.
(2) Expert witness: Mr. Gino Paonessa [25] Mr. Gino Paonessa is the founder and chief executive officer [CEO] of Adepco Technologies Corp., which manufactures snow removal equipment. He has an Italian high school diploma, more than 30 years of experience in the snow removal industry, and conceived and commercialized a number of snow removal products.
[26] Mr. Paonessa was qualified as an expert in the design, development, and manufacture of snow removal attachments. His expertise includes the design and manufacture of segmented snow plow blade assemblies and mounting structures for snow plow blades, as well as the selection and role of materials, including steel and rubber, used for manufacturing snow plow blade assemblies.
[27] On May 10, 2021, Mr. Paonessa signed an expert report on the Nordik Patents’ validity, and on July 9, 2021, he signed a responding expert report on infringement of the Nordik Patents by Valley Blades.
[28] To prepare his expert report on validity, Mr. Paonessa was provided with information in stages. His report indicates that he was first provided with, and asked by counsel to review and summarize, copies of the US Patent No. 5,746,017 [the JOMA Patent] and the Valley Blades Patent. These were the first two of the nine mandates that counsel tasked him with. The seven remaining mandates pertained to each of the Nordik Patents and their obviousness (mandates 3 to 8) and on the movement of the Nordik Blades’ blades (mandate 9).
[29] Mr. Paonessa examined the JOMA Patent and the related JOMA product as well as the Valley Blades Patent and the two versions of the PolarFlex product, one that features a flexible elliptical fastening means with a depression and the other that features a round fastener flexible element that leaves an air gap in the blade apertures. He provided an opinion on the POSITA’s understanding of each of the Nordik Patents and assessed whether the Disputed Claims, both the independent and dependent ones, were obvious.
[30] In brief, Mr. Paonessa opines that each of the Disputed Claims of the Nordik Patents are obvious. He asserts that there is no material difference between features described in the Disputed Claims and the state of the art, notably the JOMA Patent and products [the JOMA prior art] and the Valley Blades Patent and both versions of the PolarFlex product [the Valley Blades prior art]. For Mr. Paonessa, any differences are cosmetic in nature, and the POSITA would have reached them directly and without difficulty based on the prior art and the common general knowledge [CGK] available at the relevant date. Mr. Paonessa further opines that the Nordik Blades’ blades’ range of vertical and/or angular movement would not be greater than that of the blades disclosed in the Valley Blades prior art and/or the JOMA prior art. Ultimately, the range of vertical and/or angular movement for all the blades is limited by the apertures’ size in the blades and/or the compressibility of the resilient bushing inserted therein, and the presence of adjacent blades.
[31] Mr. Paonessa came across as knowledgeable and honest. He admittedly received help from counsel to draft his affidavit, which is not uncommon or troublesome in itself (dTechs EPM Ltd v British Columbia Hydro and Power Authority, 2023 FCA 115 at paras 32-34; Moore v Getahun, 2015 ONCA 55 at para 55). Counsel for Nordik Blades raised this as an issue in their opening statement, but I have found no mention of this as a persisting issue in their closing. In any event, it does not impact the weight I give to Mr. Paonessa’s opinion.
[32] Mr. Paonessa was vigorously challenged during cross-examination and was at times confused and reluctant to answer the questions put to him; he seemed then more preoccupied with fulfilling his counsel’s agenda than with helping the Court understand the technical issues.
B. Evidence adduced by Nordik Blades (1) Fact witness: Mr. Hugo Michel [33] Mr. Hugo Michel is the CEO and founder of Nordik Blades. He is also one of the inventors of the Nordik Patents. Mr. Michel provided evidence on the design, development, and commercialization of the Nordik MOVE Products and their related patents. He testified that the angular movement of the blade was not due to the blade’s tapered shape.
[34] Mr. Michel described how he developed the Nordik MOVE. Valley Blades contends that Mr. Michel’s basis for asserting his product was inventive and was undermined during cross-examination. In particular, Mr. Michel admitted that, prior to developing the Nordik MOVE, he never conducted a literature search, never purchased a Valley Blades’ PolarFlex and opened it to check what was inside, and was not aware that there was a version of the PolarFlex with an elliptical bushing (and a depression) or a version with a round bushing (transcript, Michel, cross, day 3 (109:19-110:2); transcript, Michel, cross, day 3 (134:15-135:1); Ex. 4 – FC00603 Item 22).
[35] Valley Blades adds that during his examination for discovery in July 2020, Mr. Michel was clear that he considered the shape of the Nordik MOVE product’s blade (i.e., tapered) to be a part of his purported invention, and that he gave the opposite answer when he was asked the exact same question at trial. Valley Blades asserts that when confronted with his inconsistent views, it became clear that Mr. Michel changed his belief after discussions he had with his counsel (Ex. 4 – FC00603, Item 22; 25 TT(FR), Michel, Cross, Day 3 (134:15-135:1); 26 TT(FR), Michel, Cross, Day 3 (140:6-141:16)). Nordik Blades contends that Mr. Michel’s testimony is not conclusive in light of the difference between questions he was asked on discovery and at trial.
[36] While the impact of Mr. Michel’s answer will be assessed later, it was clear at the trial that Mr. Michel was aware of his change of testimony between his discovery and the trial. This negatively impacts the weight I give his testimony.
(2) Expert witness: Mr. Harold Bouchard [37] Mr. Bouchard obtained a bachelor degree in industrial engineering from the École Polytechnique in Montréal in 1988. He has more than 30 years of experience advising companies involved in the development or improvement of technologies to claim Scientific Research and Experimental Development tax incentives. Mr. Bouchard acquired expertise in the understanding, analysis, and technological development used by businesses in the automobile industry to determine if there is an improvement of existing known technologies.
[38] He was qualified as an expert in claim construction and infringement. On May 10, 2021, Mr. Bouchard signed his expert report on infringement and construction of the Nordik Patents containing his opinion on claim construction. On July 12, 2021, pursuant to his mandate, he signed his expert report in response to Mr. Paonessa’s expert report opining on the validity of the Nordik Patents.
[39] In section 10.2 of his expert report, at page 47, Mr. Bouchard concludes that all the Nordik Patents’ claims implied non-obvious inventive activity. However, during his cross-examination, Mr. Bouchard readily admitted that he knew at least claim 35 of the 426 Patent was obvious.
[40] In Mr. Bouchard’s expert report, particularly in the chart he prepared outlining the essential elements of each of the Nordik Patents’ independent claims in relation with their presence or absence in the prior art, he confirms that all the essential elements of the claims are found in either the JOMA and/or the Valley Blades Patents. However, oddly, Mr. Bouchard did not disclose in his conclusions the opinion that claim 35 of the 426 Patent was obvious. Despite submissions to the contrary from Nordik Blades, it was clear to the Court that up until Mr. Bouchard’s testimony in cross-examination, claim 35 of the 426 Patent was among the Disputed Claims, which Nordik Blades defended as inventive.
[41] Furthermore, in its opening statement (transcript, October 17, 2023, 96), Valley Blades clearly alluded that Mr. Bouchard agreed that at least claim 35 of the 426 Patent was obvious, while eliciting no response or acknowledgement from Nordik Blades that the claim in issue was indeed obvious. It is surprising that Mr. Bouchard, who has experience and expertise in claim construction and infringement, did not highlight this conclusion for the Court in his expert report, nor address the impact of such an opinion, if any, on the other Disputed Claims.
[42] In assessing obviousness, Mr. Bouchard did not examine any of the numerous dependant claims of each of the Nordik Patents; he limited his assessment to the independent claims.
[43] Mr. Bouchard acknowledged both versions of the PolarFlex products, the one with an elliptical bushing (and a depression) and the one with a round bushing (Bouchard expert report in response, sections 7.16 to 7.21), and included both in the prior art (Bouchard expert report in response, sections 9.1 and 9.2). He referred to the depression and round bushings as a “trou,” but opined that the PolarFlex system did not include “ventilation holes” and that it was difficult to argue that the PolarFlex features were “ventilation holes” (Bouchard expert report in response, page 37).
[44] Valley Blades stressed that in Hamel v Nordik Blades (Pro-24 Machining), 2021 QCCS 3405 [Hamel] (reversed Nordik blades (Pro-24 machining) v Hamel, 2023 QCCA 874), concerning Canadian Patent No. 2,423,830 [the Hamel Patent], Mr. Bouchard found that a single prior art document anticipated the Hamel Patent even though three essential elements were missing from that prior art because the missing elements were part of the CGK. In this case, Mr. Bouchard also identifies three differences between the Disputed Claims and the prior art: (i) an open top; (ii) the presence of ventilation holes in the rubber bushings; and (iii) the integration of two rubber bushings with the outer rubber layer. Despite each of these differences being part of the CGK (as explained below), Mr. Bouchard concludes that the Disputed Claims are inventive on a less stringent test compared to anticipation.
[45] The difference in Mr. Bouchard’s assessment of obviousness in this case versus his assessment of anticipation in Hamel, and his withholding of the conclusion that claim 35 of the 426 Patent is obvious, negatively impacts the weight I give to his opinion.
III. Overview of the patents at issue [46] The named inventors on the Nordik Patents are Hugo Michel, Stéphane Michel, and Marco Bergeron. The Nordik Patents are related patents as the 426 Patent is a divisional application of the 940 Patent and the 233 Patent is a divisional application of the 426 Patent.
A. The 940 Patent [47] The 940 Patent is titled: “Adjustable sweeping blade device and sweeping blade assembly.” The following dates apply to the 940 Patent: (1) priority filing date: December 8, 2010; (2) filing date: November 30, 2011; (3) publication date: June 14, 2012; (4) issuance date: July 4, 2017; and (5) expiry date: November 30, 2031.
[48] The 940 Patent states that there is a need for an improved sweeping blade device and the object of the invention is to provide such a device and blade assembly for attachment to personal or commercial vehicles (the 940 Patent at paras 11-12). Per the patent’s abstract, the 940 Patent describes a sweeping blade assembly for attachment to a vehicle for sweeping a ground surface. The assembly comprises the first and the second blade supports attached parallel to and distant from each other to define a vertical channel. A plurality of sweeping blades comprises two bushing holes and a compressible bushing in each bushing hole for attachment to the first blade support and/or the second blade support. The bushing may be made of a resilient material and may comprise a ventilation hole for improving its compressibility. Whereby, upon contacting an obstacle on the ground, the bushings compress under pressure to cause a vertical and/or angular movement of the blade within the channel.
[49] The 940 Patent sets out the following challenges for blades during snow removal: (i) uneven and different road surfaces; (ii) repeated impact to the blades; (iii) hitting obstacles on the road; (iv) operator error; (v) metal-to-metal contact; and (vi) easy replacement of blades. The 940 Patent contains ten figures consisting of a sweeping blade assembly and sweeping blade device from multiple angles. Figure 2 shows a frontal view of the sweeping blade assembly:
[50] As shown, item 10 is the sweeping blade assembly, item 12 is the first blade support for attachment to a vehicle, item 14 is a sweeping blade device for attachment to a first blade support, and item 16 is a second blade support that attaches to the sweeping blade devices.
[51] Figure 7 shows a front view of the sweeping blade device:
[52] As shown, item 14 is the sweeping blade device, item 18 is a layer of resilient material (such as rubber) covering the blade, item 20 is a bushing made of a resilient material that is inserted into an elliptical bushing hole and integrally formed with the outer layer (item 18), item 21 is a metal bushing, item 23 is a ventilation hole in the resilient material bushing (item 20), and item 32 is the lower edge of the blade.
[53] The 940 Patent has 12 claims. Claim 1 is the only independent claim. Pursuant to a stipulation between the parties, claims 1-12 of the 940 Patent are asserted.
[54] Claim 1 reads:
A sweeping blade assembly comprising:
a first blade support adapted to be attached to a vehicle, said first blade support defining a first planar surface;
a second blade support defining a second planar surface, the second blade support being adapted to be attached parallel to and distant from the first blade support whereby the first planar surface and the second planar surface define a vertical channel for receiving sweeping blade devices;
and a plurality of sweeping blade devices, each sweeping blade device comprising;
a blade portion comprising a lower edge for sweeping a ground surface, and an upper edge opposite the lower edge;
two bushing holes provided at opposite sides of the sweeping blade device for receiving two bushings;
a bushing provided in each bushing hole, the bushing comprising: a metal bushing for operably attaching the sweeping blade device to the first blade support and/or the second blade support, a resilient material bushing surrounding the metal bushing, and a ventilation hole provided in the resilient material bushing to increase the compressibility of the bushing;
wherein a substantially equal compression of the two bushings causes a vertical movement of the sweeping blade device across the vertical channel, and wherein a differential compression, wherein a first bushing is compressed more than a second bushing, causes an angular movement of the sweeping blade device around a rotation axis defined by the metal bushing of the second bushing.
[55] Claims 2 to 12 are reproduced in the Annex.
B. The 426 Patent [56] The 426 Patent is also titled “Adjustable sweeping blade device and sweeping blade assembly” and it has substantially the same disclosure as the 940 Patent. The 426 Patent contains ten figures or photos.
[57] The following dates apply to the 426 Patent: (1) priority filing date: December 8, 2010; (2) filing date: November 30, 2011; (3) publication date: June 14, 2012; (4) issuance date: January 8, 2019; and (5) expiry date: November 30, 2031.
[58] The 426 Patent has 64 claims. Claims 1, 20, 35, and 50 are the only independent claims while the dependant claims add limitations.
[59] Pursuant to a stipulation between the parties, claims 1-8, 10-14, 16, 17, 19, 20-28, 31-32, 34-37, 39-43, 45-47, 49-51, 54-62, and 64 are asserted. However, there is no longer any dispute that claim 35 of the 426 Patent is obvious as Mr. Bouchard admitted this at trial.
[60] Claim 1 reads :
A sweeping blade assembly for attachment to a vehicle having a snow plough blade for sweeping a ground surface, the sweeping blade assembly comprising:
a first blade support adapted to be attached to the snow plough blade of the vehicle;
a second blade support adapted to be attached parallel to and distant from the first blade support; and
a plurality of sweeping blade devices for sweeping the ground surface, each one of the sweeping blade devices comprising a blade portion having at least two bushing holes extending therethrough and a compressible bushing inserted in each one of the at least two bushing holes, each one of the sweeping blade devices further comprises a resilient material layer coated on the blade portion with the compressible bushings being integral with said resilient material layer, wherein the sweeping blade devices are operably attached to the first blade support and/or the second blade support using the compressible bushings that allow for a vertical movement of the sweeping blade devices when the ground surface is uneven;
wherein the first blade support and the second blade support define a channel in which the plurality of sweeping blade devices are inserted, the second blade support extending continuously along the plurality of sweeping blade devices mounted in an adjacent configuration, with each one of the sweeping blade devices being shorter in length than the first and the second blade supports, and wherein the channel is open on top to allow for a free movement of the sweeping blade devices across the channel when at least one of the compressible bushings is compressed.
[61] Claims 20 reads:
A sweeping blade assembly for sweeping a ground surface comprising:
a first blade support adapted to be attached to a snow plough blade of a vehicle, said first blade support defining a first planar surface;
a second blade support defining a second planar surface, the second blade support being adapted to be attached parallel to and distant from the first blade support, the first planar surface and the second planar surface defining a vertical channel inbetween; and
a plurality of sweeping blade devices operably installed within the vertical channel with the second blade support extending continuously along the plurality of sweeping blade devices mounted in an adjacent configuration with each one of the sweeping blade devices being shorter in length than the first and the second blade supports, the sweeping blade devices being configured for sweeping a ground surface, each one of the sweeping blade devices comprises a blade portion with two bushing holes defined therein and a resilient material bushing inserted in each one of the two bushing holes, wherein each one of the sweeping blade devices further comprises a resilient material layer coated on the blade portion with the resilient material bushings being integral with said resilient material layer, the sweeping blade devices being attached to the first blade support or the second blade support through the resilient material bushings, the sweeping blade devices being configured to move vertically and angularly within the vertical channel when the ground surface is uneven;
wherein the vertical channel has an open top and an open bottom for allowing vertical and angular movement of the sweeping blade devices across the vertical channel.
[62] Claim 50 reads:
An assembly of sweeping blade devices engageable with a blade support assembly attached to a vehicle and including a first blade support and a second blade support, the second blade support extending parallel to and spaced-apart from the first blade support, the first and second blade supports defining together a channel having an open bottom, at least a plurality of the sweeping blade devices comprising:
a blade portion having a front face, a rear face, a lower edge for sweeping a ground surface, and an upper edge opposite the lower edge, the blade portion having at least two bushing holes extending therethrough between the front face and the lower face and between the upper and lower edges, the blade portion being insertable into the channel defined between the first and the second blade supports and operably attachable to the first blade support and/or the second blade support through the at least two bushing holes:
bushings, each one of the bushings comprising a resilient bushing portion having a fastener aperture extending therethrough and each one of the bushings being inserted in a respective one of at least two bushing holes: and
a resilient material layer coated on the blade portion to at least partially cover same and the resilient material bushing portions being integral with said resilient material layer;
wherein at least one of the blade portions of the sweeping blade devices is displaceable above the first and the second blade supports through the open top.
[63] The dependant claims are reproduced in the Annex. Although they are not all in issue, they are reproduced for clarity.
C. The 233 Patent [64] The 233 Patent is also titled: “Adjustable sweeping blade device and sweeping blade assembly” and has substantially the same disclosure as the 940 and 426 Patents. It shows the same ten figures and has 14 claims, directed to just the blade and not the assembly.
[65] The following dates apply to the 233 Patent: (1) priority filing date: December 8, 2010; (2) filing date: November 30, 2011; (3) publication date: June 14, 2012; (4) issuance date: July 9, 2019; and (5) expiry date: November 30, 2031.
[66] Claim 1 is the only independent claim. Pursuant to a stipulation between the parties, claims 1-2, 4-5, 7, and 9-14 of the 233 Patent are asserted.
[67] Claim 1 reads:
A sweeping blade comprising:
a blade portion having a front face, a rear face, a lower edge for sweeping a ground surface, and an upper edge opposite the lower edge, the blade portion having at least two bushing holes extending therethrough between the front face and the lower face and between the upper and lower edges;
bushings, each one of the bushings comprising a resilient bushing portion having a fastener aperture, each one of the bushings being inserted in a respective one of at least two bushing holes; and
a resilient material layer coated on the blade portion to at least partially cover the blade portion and the resilient material bushing portions being integral with said resilient material layer.
[68] The dependant claims are reproduced in the Annex. Although they are not all in issue, they are reproduced for clarity
IV. Other patents or products of interest [69] Nordik Blades is also the current owner of the United States Patent No. 9,121,151 [the US 151 Patent] issued from a Patent Cooperation Treaty Application No. PCT/CA2011/001334. The named inventors are Hugo Michel, Stéphane Michel, and Marco Bergeron. The following dates apply to the US 151 Patent: (1) provisional application No. 61/421,185 filing date: December 8, 2010; (2) PCT filing date: November 30, 2011; (3) publication date: June 14, 2012; and (4) registration date: September 1, 2015.
[70] On January 26, 2017, Nordik Blades filed a PCT Application No. PCT/CA2017/050082 for a sweeping blade device with adjustable blades. The named inventors are Hugo Michel, Stéphane Michel, and Marco Bergeron. The PCT Application has a priority date of January 26, 2016, from a US provisional application No. 62/287,139.
[71] The Nordik MOVE product is based on the system described in the Nordik Patents. There are two elements found in the Nordik MOVE product that are not present in the Nordik Patents: 1) the tapered shape of the Nordik MOVE product’s blade; and 2) the ideal size of the ventilation hole. After testing the product, the inventor, Mr. Michel, concluded that 3/8th of an inch was the ideal size for the ventilation hole.
[72] I also note that, due to Hamel, Nordik Blades now only sells the Nordik MOVE products with full bushing. Prior to August 2021, it only sold about 5% to 10% of the Nordik MOVE products with full bushing, and 90% with the bushing containing the ventilation hole.
V. Claim construction A. Principles [73] The first step in any patent suit is to construe the claims.
[74] This construction is antecedent to considering both validity and infringement issues and is the same for all purposes (Free World Trust v Electro Santé Inc, 2000 SCC 66 at paras 33-50; Whirlpool Corp v Camco Inc 2000 SCC 67 at paras 42-43 [Whirlpool]; AstraZeneca Canada Inc v Apotex Inc, 2017 SCC 36 at para 31). A claim cannot be construed with an eye on the allegedly infringing device in respect of infringement or with an eye to the prior art in respect of validity to avoid its effect (Dableh v Ontario Hydro, [1996] 3 FC 751, 68 CPR (3d) 129).
[75] As Justice Zinn outlined in Meridian Manufacturing Inc v Concept Industries LTD, 2023 FC 20 at paragraph 44, the general principles of claim construction were recently discussed in Tearlab Corporation v I-MED Pharma Inc, 2019 FCA 179 at paragraphs 31-34 and may be summarized as the following:
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.
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.]
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.
Finally, it is important to stress that claim construction must be the same for the purpose of validity and for the purpose of infringement.
[References omitted.]
B. Relevant date for claim construction [76] The relevant date for claim construction is the date of publication (Whirlpool at para 56). In this case, the date is June 14, 2012, which is when the 940 Patent was published (Agreed Statement of Facts, Ex. 2).
C. Person skilled in the art [77] There is little dispute between the two experts as to the POSITA to whom the Nordik Patents are addressed. The main distinction is the type and level of education required, as Nordik Blades’ expert, Mr. Bouchard, suggests the POSITA has education in engineering while Valley Blades’ expert, Mr. Paonessa, suggests no particular level or type of education is necessary.
[78] For Valley Blades, the POSITA would be a team consisting of one or more people with the following skills gained from several years of work experience in this industry: (a) knowledge of the design of snow plow blade assemblies; and (b) knowledge of the materials used to make snow plow blade assemblies.
[79] For Nordik Blades, the POSITA to whom the Nordik Patents are addressed should have a technical or university engineering degree, about five years experience in the conception and manufacturing of parts or systems linked to the automotive industry, and about one year of experience specifically in the snow removal sector.
[80] I am prepared to accept the POSITA as suggested by Mr. Bouchard, i.e., Nordik Blades’ expert.
[81] The parties agree that the experts themselves do not need to possess the characteristics of the POSITA. They must however be able to present to the Court the perspective of the POSITA at the date of the patent’s publication.
[82] Insofar as Nordik Blades asserts that a POSITA would not have taken risks in the face of uncertainty to arrive at the alleged differences between the Nordik Patents’ Disputed Claims and the prior art, I disagree. The jurisprudence is clear that a POSITA is not risk-averse: “I do not accept that the skilled person avoids risk” (Leo Pharma Inc v Teva Canada Limited, 2015 FC 1237 at para 105; see also Amgen v Pfizer, 2020 FC 522 [Amgen] at paras 327-330). The POSITA can face some level of uncertainty along the way: “But equally, it cannot, in my judgment, be assumed that inventiveness must have been involved somewhere, just because a wager on success could have been placed at long odds” (Amgen Canada v Apotex, 2015 FC 1261 at para 101).
D. Common general knowledge as of June 14, 2012 [83] Common general knowledge does not amount to all information in the public domain. Rather, CGK is the knowledge generally known at the relevant time by the person skilled in the field of art or science to which the patent relates (Bell Helicopter Textron Canada Limitée v Eurocopter, société par actions simplifiée, 2013 FCA 219 at paras 63–65 [Bell Helicopter Textron]). In other words, as stated in Mylan Pharmaceuticals ULC v Eli Lilly Canada Inc, 2016 FCA 119 [Mylan Pharmaceuticals], “common general knowledge […] is the knowledge generally known by POSITAs at the relevant time” (para 24).
[84] Unlike the prior art, which is a broad category encompassing all previously disclosed information in the field, a piece of information only migrates into the CGK if a POSITA would become aware of it and accept it as “a good basis for further action” (Mylan Pharmaceuticals at para 24). The CGK informs the way in which the claims and specifications must be read, because