dTechs EPM Ltd. v. British Columbia Hydro and Power Authority

dTechs EPM Ltd. v. British Columbia Hydro and Power Authority
Court (s) Database
Federal Court of Appeal Decisions
Date
2023-05-26
Neutral citation
2023 FCA 115
File numbers
A-121-21
Notes
A correction was made on June 1, 2023
Decision Content
Date: 20230526
Docket: A-121-21
Citation: 2023 FCA 115
CORAM:
GAUTHIER J.A.
MACTAVISH J.A.
LEBLANC J.A.
BETWEEN:
DTECHS EPM LTD.
Appellant
and
BRITISH COLUMBIA HYDRO AND POWER AUTHORITY AND AWESENSE WIRELESS INC.
Respondents
Heard at Calgary, Alberta, on October 27, 2022.
Judgment delivered at Ottawa, Ontario, on May 26, 2023.
REASONS FOR JUDGMENT BY:
GAUTHIER J.A.
CONCURRED IN BY:
MACTAVISH J.A. LEBLANC J.A.
Date: 20230526
Docket: A-121-21
Citation: 2023 FCA 115
CORAM:
GAUTHIER J.A.
MACTAVISH J.A.
LEBLANC J.A.
BETWEEN:
DTECHS EPM LTD.
Appellant
and
BRITISH COLUMBIA HYDRO AND POWER AUTHORITY AND AWESENSE WIRELESS INC.
Respondents
REASONS FOR JUDGMENT
GAUTHIER J.A.
[1] This is an appeal from a judgment of the Federal Court (per Fothergill J.) dismissing dTechs EPM Ltd.’s (dTechs) claim for infringement of its Canadian patent No. 2,549,087 (the 087 Patent) against the respondents British Columbia Hydro and Power Authority (BC Hydro) and Awesense Wireless Inc. (Awesense). The Federal Court also declared the claims at issue invalid on the grounds of anticipation and obviousness.
[2] This matter is somewhat unusual in that originally, the appellant was contesting almost all of the conclusions of the Federal Court in respect of the construction of the 087 Patent, the validity of the claims, and the findings of non-infringement. However, since the original filing of the notice of appeal, the appellant’s position has changed based on new evidence obtained in the context of the assessment of BC Hydro’s costs (expert working agreement and invoices), which it was granted leave to file by a motion judge of this Court. The appellant was also granted leave to amend this notice of appeal to include that the Federal Court erred in admitting or giving any weight to the evidence of BC Hydro’s expert.
[3] In its memorandum of fact and law, and before us, the appellant effectively abandoned all of the other grounds of appeal listed in its amended notice of appeal. Its position is now premised entirely on the proposition that the evidence of BC Hydro expert’s should have been excluded or given no weight because he did not provide independent expert evidence. If so, the appellant contends that it would have succeeded at trial. On that basis, the appellant seeks a judgment of this Court granting the infringement action in its favour and declaring the asserted claims valid, or, alternatively, an order directing a new trial, subject to strict conditions, namely that the parties be precluded from adducing new expert evidence. In both cases, the appellant seeks all the costs incurred below, as well as the costs in the present appeal.
[4] At the outset of the hearing, counsel for the appellant made it very clear that he agreed that the role of this panel was limited to two questions:
a)Whether the new evidence (i.e. working agreement and invoices of BC Hydro’s expert) has sufficient probative value to support the appellant’s position that the evidence of BC Hydro’s expert was inadmissible or should have been given no weight whatsoever;
b)If so, whether in light of the other evidence adduced at trial, such a finding might have led to the granting of the infringement action and the dismissal of the defence and counterclaims based on invalidity.
[5] It was also agreed that in respect of the second question, this Court was to take into account the legal and factual findings of the Federal Court that were unaffected by the evidence of BC Hydro’s expert, for these were no longer contested per se on this appeal. Obviously, this also means that these reasons should not be construed as confirming these findings as this is not our task in this appeal.
[6] After the hearing, the appellant seemingly changed its mind as to this Court’s role in this appeal, which it now says is limited by the Supreme Court’s decision in R v. Stolar, [1988] 1 S.C.R. 480 (Stolar) and the order of the motion judge in this case. I deal with this argument at paragraphs 20-31 of these reasons.
[7] In the end, this matter requires the application of known principles to a very unusual set of facts. It illustrates how care must be taken in dealing with a motion for leave to file new evidence before this Court, so that there is no misunderstanding as to the impact of an eventual order by a motion judge granting such leave. It also emphasizes the need for lawyers involved in patent cases to thoroughly consider and assess the admissibility of an expert report before this evidence is actually admitted at trial or, at the very least, before the end of the testimony of said expert.
[8] It is also important to immediately clarify that dTechs’ decision not to pursue its other grounds of appeal has a direct impact on its ability to succeed against Awesense. By the end of the trial, the appellant’s claim against this respondent was solely based on allegations of indirect infringement through inducement or common design. In light of the specific findings in the Federal Court’s decision (the FC Decision) at paragraphs 176 to 179, the new evidence can have absolutely no bearing whatsoever on the liability of this respondent/defendant. Consequently, the appeal in respect of the infringement action against Awesense ought to be dismissed.
[9] As will be explained in these reasons, I would also dismiss the appeal in respect of the infringement action against BC Hydro. However, I would allow the appeal as it relates to the declaration of invalidity sought in the counterclaims in respect of dependent claim 4 because of the potential impact of the new evidence on the Federal Court’s findings regarding that claim. Should BC Hydro decide to pursue its counterclaim with respect to dependent claim 4 on the grounds of anticipation or obviousness, or on any other grounds the Federal Court did not deem necessary to rule on, it will have to do so by way of a new trial before the same judge. Moreover, as the new evidence is not conclusive of anything other than the fact that Mr. Shepherd did not write the first drafts of his reports, it will be for the Federal Court to determine its impact on the weight of Mr. Shepherd’s evidence, if any, on the issues that need to be redetermined.
[10] The judgment before us did not award costs. It left this matter to be determined in a distinct order. In fact, costs were awarded and instructions were given as to how they were to be assessed in an order (per Fothergill J.), dated April 22, 2021 (2021 FC 357). The awarding of costs involved various matters, including the application of Rule 420 of the Federal Court Rules, SOR/98-106 (the Rules). The final costs were assessed by an assessment officer in a confidential order, dated May 11, 2022. None of these orders were appealed. In the circumstances, I cannot see on what basis this Court could deal with the issue of the costs in the Federal Court.
I. Background [11] The 087 Patent is entitled “Electrical Profile Monitoring System for Detection of Atypical Consumption” and relates generally to “monitoring usage of utilities, such as electrical, for alteration in normal patterns of consumption of utilities and, more specifically, to a system of detection of patterns indicative of theft of electrical utilities, such as in the indoor cultivation of marijuana”. All the claims are directed to methods; none cover an apparatus. The appellant is the owner of the 087 Patent issued on January 20, 2009. The appellant’s application was published on August 10, 2007. Mr. Morrison, a former sergeant with the Calgary Police Service, is the inventor listed therein. He is the founder of dTechs, which he incorporated on May 24, 2006. How he came to develop his invention is described at paragraphs 90 to 100 of the FC Decision.
[12] BC Hydro is a Crown corporation and electrical utility, and Awesense is a start-up company that supplied the wireless ammeters and energy meters to BC Hydro that were used on the primary supply line, together with supporting software. As mentioned, by the end of the trial, the appellant claimed that while Awesense does not perform any of the steps included in the methods described in the 087 Patent, it is liable for inducing or procuring its customers to infringe the 087 Patent. It also alleged that Awesense is liable under the doctrine of common design.
[13] Each party relied on the following expert evidence: i) dTechs’ expert was Mr. LaPlace; ii) BC Hydro’s expert was Mr. Shepherd; and iii) Awesense’s expert was Mr. Bennett. These experts opined on issues related to the construction of the claims in issue, including identifying the person of ordinary skill in the art (POSITA) to whom the patent is addressed and the relevant common general knowledge (CGK), as well as on infringement. Only Mr. Shepherd and Mr. LaPlace provided evidence on issues related to the validity of the claims.
[14] The admissibility of the reports of the above-mentioned experts was not challenged at any time before the FC Decision was issued. In fact, the reports of all three experts were filed on consent, and they were qualified to opine on the matters contained in their reports.
[15] However, as noted by the Federal Court, each party made criticisms regarding the qualifications or approaches of the expert witnesses tendered in these proceedings to diminish the weight that should be attributed to their evidence. The Court found that while some of these criticisms were valid, none of them were sufficient to undermine any of the witnesses’ evidence in their entirety. At paragraph 89 of the FC Decision, the Court indicated that its reasons for preferring some witnesses’ evidence over others were explained therein.
[16] The Federal Court held that neither BC Hydro nor Awesense, individually or together, had infringed the asserted claims of the 087 Patent. It found that there was no evidence that BC Hydro compares metered consumption on the primary supply line with known consumption patterns, i.e., historical or predicted consumption patterns, an essential element of independent claims 1 and 21 (FC Decision at paras. 174-175). It also found that Awesense i) did not itself infringe the asserted claims, as it did not perform any of the steps of the method described in the 087 Patent, ii) exercised no control over the manner in which BC Hydro used its software, and iii) that there was no evidence that Awesense ever induced BC Hydro to infringe the asserted claims, or to support an allegation of infringement by common design (FC Decision at paras. 177-179).
[17] The Federal Court found that BC Hydro’s prior use, established through the testimony of lay witnesses, would have infringed the 087 Patent (FC Decision at paras. 186-203). It concluded that this use anticipated all the claims still at issue at the end of the trial, except for dependent claims 4 and 22. The Court also found that two publications, referred to as the OLO Reference and the De Reference, anticipated most of the asserted claims. However, only the De Reference was found to anticipate claim 4. Finally, the Federal Court found that all the asserted claims were obvious.
[18] At this stage, there is no need to say more about the FC Decision, which is more than 80 pages long. I will refer to the most relevant portions in my analysis. It is nevertheless important to note that the Federal Court’s construction of the terms “known consumption patterns”, part of an essential element of all the claims at issue, was critical to its ultimate conclusions. Indeed, this construction was ultimately what led the Federal Court to conclude that BC Hydro does not infringe the 087 Patent.
II. Claims [19] All the claims that were originally at issue are reproduced in the FC Decision at paragraphs 47 to 71. For the sake of understanding the present reasons, I need only to reproduce claims 1, 4 and 22 of the 087 Patent:
1. A method for detection of atypical electrical consumption patterns comprising:
providing a meter for detecting consumption of electricity from a utility;
connecting the meter to a primary supply line, the primary supply line supplying electricity to a plurality of transformers, each transformer feeding the electricity to a plurality of structures, the meter having a resolution for detecting variation from known consumption patterns in the primary supply line;
monitoring the primary supply line at predetermined time intervals for consumption of electricity;
collecting data for determining measures indicative of patterns of consumption;
comparing the patterns of consumption to known consumption patterns for identifying suspect consumption patterns; and
when a suspect consumption pattern is identified, notifying the utility of the identified suspect consumption pattern in the primary line, the utility thereafter monitoring characteristics of the plurality of transformers for identifying a suspect transformer; and
load testing at least one of a plurality of secondary lines from the suspect transformer to each of the plurality of structures for identifying a suspect structure.
4. The method of claim 1, 2 or 3 further having a smart meter connected to secondary lines at each structure for determining consumption at each of the structures, the method further comprising:
comparing electrical supply at the primary supply line to a sum of the consumption at all of the secondary lines for reconciling consumption to supply.
22. The method of claim 21 wherein the monitoring characteristics of the plurality of transformers further comprises:
notifying a monitoring agency of the suspect consumption pattern in the primary line, wherein the monitoring agency then monitors characteristics of the plurality of transformers.
[my emphasis]
III. The Motion to Amend the Notice of Appeal and to File New Evidence [20] The appellant brought a motion in writing seeking an order admitting the working agreement and invoices of BC Hydro’s expert for consideration on this appeal for the purpose of establishing that this expert was not independent, and to amend the notice of appeal to include the ground that the Federal Court erred in admitting or giving any weight to the evidence of Mr. Shepherd. It requested that the admissibility of the new evidence be determined by the panel hearing the appeal on the merits in the context of all evidence from the trial and full argument on the merits of the ground of appeal. BC Hydro opposed the appellant’s request, arguing that the motion should be disposed of by a motion judge prior to the hearing as it would determine the scope of the issues and grounds of appeal it would need to address in the appeal. In the respondent’s view, there was no reason to treat this motion other than in writing, as per Rule 369.2 of the Rules. According to the appellant, granting BC Hydro’s request to dismiss the motion on an interlocutory basis would end the appeal, as this this was the sole remaining ground argued in the appellant’s memorandum of fact and law. dTechs never raised the issue that the motion judge would be binding the panel hearing the appeal on its merits, as argued in its post-hearing submissions on the basis of Stolar.
[21] The motion judge appears to have sought to satisfy all the parties by immediately allowing the appellant to advance this new ground of appeal. In order to do so, he had to conclude that the appeal on this new ground was not bound to fail. This could only be so if the new evidence the appellant was seeking to rely on was admitted for consideration by the panel hearing the merits of the appeal. However, the motion judge appears to have had some difficulty with the second issue of whether he could admit the evidence on the basis of the record before him, especially considering that the appeal book had not yet been filed, and that Awesense had argued that the evidence of its own expert, Mr. Bennett would have to be considered, even if the expert evidence of Mr. Shepherd was excluded or given no weight.
[22] It is worth recalling at this stage that the fourth criterion of the test for admitting new evidence on appeal stated in Palmer v. The Queen, [1980] 1 S.C.R. 759 (Palmer) at page 775, involves determining, once the evidence meets the first three criteria, whether “when taken with the other evidence adduced at trial”, this evidence might have affected the result of the trial [my emphasis].
[23] Thus, although the motion judge purported to apply the Palmer test, he did what motion judges of this Court usually do when dealing with such motions. While it could have been stated more clearly, he simply considered whether in theory the new evidence could have reasonably affected the result of the trial, focusing on its relevance as to the admissibility and weight of BC Hydro’s expert evidence.
[24] Obviously, a motion judge cannot usurp the role of the panel hearing the appeal on its merits by looking at each finding of the trial court, and the supporting evidentiary record to determine how this new evidence might actually affect each of them. That is simply not the role of a motion judge.
[25] That is the context in which the motion judge stated that whether the new evidence will be sufficient to support the appellant’s claim goes to the merits of the appeal and is best left to the panel which will hear it. He also noted that whether, on the basis of the new evidence, the credibility of BC Hydro’s expert had been undermined such that his evidence should have been held inadmissible or should have been given much less weight was also a matter for the appeal panel to determine.
[26] Even more importantly, the motion judge clearly stated that “[w]hether the Federal Court’s decision would have been the same and its ultimate findings undisturbed had BC Hydro’s expert credibility been impugned is a matter best left to the panel hearing the appeal”.
[27] It is also worth noting that the rules of procedure and/or the case law of most provincial courts of appeal clearly spell out that motions to admit new evidence on appeal should only be heard by a panel or the panel hearing the merits of the appeal. In Quebec, the statutory requirement that the new evidence be indispensable (article 380 of the Code of Civil Procedure, C.Q.L.R. c. C-25.01) has been construed in a manner consistent with the Palmer test. Only a panel can deal with such a motion, and it is common practice for said panel to allow the evidence to be included in the appeal record, and to defer to the panel hearing the merits of the appeal the determination on its admissibility and impact—akin to the approach taken by the motion judge in the present case (Syndicat des copropriétaires du Square Champlain II c. Syndicat des copropriétaires du Samuel de Champlain, 2018 QCCA 1538; Duscheneau c. Ville de Montréal, 2019 QCCA 1955; Simon c. Haccoun, 2020 QCCA 64).
[28] Despite my view that this submission was improperly made after the hearing (see paragraph 38), I ought to say the following. The appellant’s assertion, based on Stolar, that the motion judge’s order binds this panel and limits its remedy-granting ability to either granting the appeal and entering judgment in favour of the appellant, or ordering a new trial on all issues is ill-founded. The two-step process described in Stolar (in the context of a criminal trial) cannot be directly applied in cases like this one, where the motion to file new evidence was dealt with by a single motion judge, without the benefit of all the evidence adduced at trial, and where the proposed new evidence was tendered in support of a new ground of appeal that did not have a clear bearing on all of the Federal Court’s findings and the ultimate outcome of the trial. To construe it otherwise would defy the logic of the Supreme Court’s teachings in Stolar.
[29] As a matter of practice in this Court, motion judges are normally expected to deal with more obvious cases where, for example, the new evidence proposed does not meet the first three criteria of the Palmer test, or where the interests of justice warrants the exercise of a motion judge’s residual discretion to include it in the record, subject to a determination of the impact of that evidence on the findings of the trial court by the panel hearing the merits, informed by a comprehensive appeal record. There is no precedent from this Court for limiting the remedies that may be granted by the appeal panel in light of a motion judge’s order admitting new evidence.
[30] I agree with the appellant that the motion judge properly made a final determination as to whether the appellant met the first criteria of the Palmer test, i.e., due diligence. In that respect, this Court is not sitting in appeal of this determination. There was no dispute that the new evidence, per se, was not in the possession of dTechs. The argument raised by the respondents was whether the appellant should, in any event, have fully canvassed the issue of how the report was prepared during the trial.
[31] In the circumstances, I nevertheless ought to include some general comments regarding the particularities of expert evidence in patent cases.
A. General Comments [32] In patent cases, it is not unusual for expert reports to be prepared in close collaboration with counsel in an effort to present the substantive opinion of the expert in a manner and format that is helpful to the Court in light of the complexity of the issues raised. Here, I am not only referring to the technical issues, per se, but to the complex questions that need to be answered because of the particular role of experts in patent cases. It is very rare indeed that technical experts will know how to present a claim analysis or be familiar with the legal principles applicable to matters such as claim construction, anticipation or obviousness.
[33] As a practical matter, it is known that extensive notes are taken during meetings with experts to help prepare the draft reports, and that counsel are actively involved in putting these reports together. This does not inevitably mean that those drafts do not reflect the substantive and objective opinion expressed by the expert during those meetings. The preparation of those reports is often a long, tedious, and iterative process. It is obviously a difficult task for counsel to ensure that the independence and credibility of the expert is not diminished by this well-known and necessary practice in this particular field. I must reiterate that I am only dealing with patent cases here.
[34] I agree with the appellant that there are, however, limits to the involvement of counsel. The Court must ultimately be presented with the substantive and objective opinion of the expert. This is why experts are very clearly put on notice of their duty towards the Federal Court when they agree to abide by the Code of Conduct for Expert Witnesses. I know of no cases where an expert report was excluded in a patent case on the sole ground that the first draft of said report was penned by counsel after meetings with the expert to discuss their opinions in detail. While counsel may make mistakes and overstep the bounds of what is permissible involvement, this will normally be revealed on cross-examination at trial, and will be considered by trial courts in assessing the evidence (Medimmune Ltd. v. Novartis Pharmaceuticals UK Ltd., [2011] EWHC 1668 (Pat.) (Medimmune).
[35] Thus, litigators involved in patent cases ought to be alert and alive to their duty to verify whether those limits were infringed by obtaining, through cross-examination, the information necessary for the Court to assess if the opinion presented by the expert is truly their own objective opinion.
[36] As noted in Moore v. Getahun, 2015 ONCA 55 at paragraph 61 (Moore) (citing Medimmune at para. 111), partisan expert evidence is almost always exposed as such in cross-examination. In patent cases, often, a simple review of the structure and wording of the report or the answers given in cross-examination will give an air of reality to the suggestion that counsel improperly influenced an expert witness.
[37] The interest of justice and its proper administration would not be served if one could simply wait to review an expert’s invoices after the trial to argue that a new trial should take place on the basis of information contained therein. Naturally, there may be exceptional cases but these should be rare.
B. Post-hearing submissions [38] Turning back to the appellant’s submissions after the hearing of this appeal, a few observations are in order. This Court never asked for submissions like those filed by the appellant after the hearing. It asked the parties to provide additional authorities (highlighted copies of cases only) where courts of appeal have admitted new evidence tendered in support of an alleged error on an issue that was not raised before the trial court (here, the inadmissibility of this expert’s reports). It made it very clear that it did not want to receive any written submissions, and the parties agreed. Despite this Court’s express instructions, dTechs took this as an opportunity to put forward a novel position, one that is entirely contrary to that expressed at the hearing, by filing 9 pages of written submissions titled “Remedies”, in which it even went so far as to request that the new trial be before a different judge, a remedy it had never raised. It did so under the pretext that, in its view, our request indicated that the Court was asking itself the wrong question. While I understand the passion with which litigators defend their client’s position, especially when the deficiencies in that position are revealed at the hearing, I simply cannot condone such practices. Therefore, I will consider this appeal on the basis of the appellant’s position as presented in its memorandum and at the hearing.
IV. The issues [39] In the present circumstances, there are only two issues properly before us:
Whether the new evidence has sufficient probative value to support the allegation that the evidence of BC Hydro’s expert was inadmissible or should have been given no weight (new ground of appeal);
If so, whether, in light of the other evidence adduced at trial, it might have led to the granting of the infringement action and the dismissal of the invalidity allegations.
V. Analysis A. Nature and probative value of the new evidence [40] As mentioned, the new evidence consists of a working agreement signed by Mr. Curtis E. Falany, the President of J.B. Shepherd & Company, Inc. (J.B. Shepherd), for the services of Mr. Brad Shepherd as an expert witness, and the related invoices describing the work completed in fulfilment of said agreement between April 14, 2020 and November 25, 2020.
[41] There is no reason to doubt the veracity and the credibility of these documents. dTechs alleges that this evidence supports its allegation that Mr. Shepherd was not an independent and unbiased witness because he did not author his reports, and that the involvement of Mr. Falany indicates that the reports may have been ghostwritten by him.
[42] From the first document, it is clear that the expert whose opinions are to be provided was Mr. Shepherd. The agreement expressly states that:
J.B. Shepherd & Company, Inc. represented by Brad Shepherd (Expert), understands that Client is interested in obtaining Expert’s honest, independent expert opinion on matters at issue in the dispute. Expert understands that Expert has an overriding duty to assist the Court impartially on matters relevant to Expert’s area of expertise, and that this duty overrides any duty to Client or to Client’s client. Expert agrees to abide by and to execute the Federal Court of Canada’s Expert Code of Conduct, a copy of which the Client will provide the Expert.
[43] Mr. Shepherd did review this Code of Conduct and sign the certificate referred to at Rule 52.2 of the Rules.
[44] Turning to the invoices, there are indeed no time entries which explicitly relate to the actual writing of the first drafts of these reports by Mr. Shepherd following Zoom meetings with BC Hydro’s counsel. There are many entries indicating that Mr. Shepherd read, reviewed, and commented on the first drafts of the reports he received, in addition to researching and reviewing various documents provided by counsel. There are also no entries for any writing by Mr. Falany either.
[45] Considering that the drafts revised by Mr. Shepherd were received after various Zoom conferences with BC Hydro’s counsel, the only reasonable inference that might be made is that the drafts were penned by said counsel after discussing the matters at issue with Mr. Shepherd.
[46] The time entries are consistent with the way Mr. Shepherd describes how he performed his mandate in each of his reports. See for example, paragraphs 12 to 16 of his report on construction and validity, where he describes how he sequentially reviewed documents provided by counsel, and the answers he provided to the specific questions he was asked by counsel, as well as the headings under which they can be found in the report (Shepherd Report on Construction and Validity, Appeal Book, Vol. 2, Tab 136, pp. 4128-4129).
[47] dTechs admitted that the role of Mr. Falany in drafting the report or in forming the ultimate opinion is not known (Appellant’s Memorandum at para. 150). Nonetheless, the appellant theorizes that Mr. Falany’s presence at those conferences indicates that he may have ghostwritten or co-authored the reports. Such a proposition is not supported by the invoices, and is nothing more than mere speculation. I can think of many reasons why Mr. Falany, as the President of this American company, would choose to attend those meetings with the client and not bill for his time. For example, his firm would benefit from a better understanding of the particularities of patent files, as this would appear to have been a new type of litigation for the firm. However, Mr. Falany signed a contract, which clearly stipulates that it is the expertise and opinion of Mr. Shepherd alone that BC Hydro was paying for.
[48] Mr. Falany’s attendance at the Zoom conferences between Mr. Shepherd and BC Hydro’s counsel would be insufficient to support a reasonable inference by a trial judge that he ghostwrote the reports.
[49] In White Burgess Langille Inman v. Abbott and Haliburton Co., 2015 SCC 23, the Supreme Court of Canada enunciated the principle that it is only in clear cases where the proposed expert is unable or unwilling to comply with the duty to give fair, objective and non-partisan opinion evidence that concerns raised by the opposing party will go to admissibility. Anything less than clear unwillingness or inability to do so will go to the weight of the evidence of that expert.
[50] Although the Supreme Court was dealing with a question of independence based on bias, it also rejected, at paragraph 61, the argument that the expert in that case was not independent because she had incorporated some of the work done by others in her firm.
[51] Though he may not have written the first drafts of these reports, it is clear from his cross-examination that Mr. Shepherd did consider the opinions expressed therein as his own. I see nothing in the invoices that could support a reasonable inference that Mr. Shepherd’s reports, as signed and presented to the Court, do not represent his objective and non-partisan opinions.
[52] As mentioned earlier, for at least 20 years, this Court has acknowledged that it is not unusual, in patent cases, for counsel to prepare the first draft of an expert’s affidavits or statements (Janssen Pharmaceutica Inc. v. Apotex Inc. (C.A.), 2001 FCA 247 at para. 53). Contrary to the appellant’s contention at the hearing, expert affidavits are no different than the reports before us. In fact, the Rules use the terms “affidavit” or “statement” to refer to such evidence, even though they are commonly referred to as reports.
[53] Even the Ontario Court of Appeal recognized the need, in some highly technical areas such as patent law, for a high level of instruction by the lawyers to expert witnesses, which may require a high degree of consultation involving an iterative process through a number of drafts (Moore at para. 55).
[54] I note that although the technology was not particularly complex and Mr. Shepherd had acted as an expert witness in a number of civil cases in the United States, he had no experience whatsoever in patents cases either in Canada or in the United States. Therefore, he would clearly need guidance in order to answer the particular type of questions an expert is expected to address in patent cases (see paragraph 32 above).
[55] The Federal Court could not conclude that there was a reasonable basis for refusing to admit Mr. Shepherd’s expert evidence simply because the first drafts of his reports were penned by counsel after many hours of consultation with him.
[56] The Federal Court could have, however, considered whatever argument dTechs might have raised regarding the drafting of the reports when assessing the weight to be given to this evidence, in which case it would have assessed the validity of such arguments having the benefit of the oral evidence given by this expert witness. The weight to be given to Mr. Shepherd’s evidence is not a matter for this Court to determine.
[57] However, the conclusion that the new evidence might have had an impact on the weight given to Mr. Shepherd’s expert evidence does not end the inquiry. This Court must determine whether, based on the other evidence adduced at trial, the distinct findings and conclusions of the Federal Court would remain unchanged, such that the outcome of the trial would not be affected.
[58] For the purpose of this determination, I will assume the best scenario possible for dTechs—that is, that no weight would have been given to any of Mr. Shepherd’s evidence. This should not be construed to mean that I do in fact think that in the present circumstances, it should or would likely have been given no weight.
B. Considered in light of the other evidence adduced at trial, could the Federal Court have been led to the granting of the infringement action and the dismissal of the allegations of invalidity? [59] In this portion of the analysis, I will review the potential impact of giving no weight to Mr. Shepherd’s evidence on three distinct issues. First, on the construction of the words “known consumption patterns”, which is relevant to all the asserted claims. Second, on the Federal Court’s finding of non-infringement by BC Hydro and Awesense. Third, on the Federal Court’s conclusions with respect to anticipation by prior use, and on the conclusion that the De Reference anticipated claims 4 and 22. Finally, if necessary to dispose of this appeal, I will comment on the findings as to obviousness in respect of these two claims.
[60] Before doing so, I must first deal with dTechs’ argument regarding construction and infringement, that the Federal Court would have had no choice but to accept the evidence of its own expert, Mr. LaPlace. This argument is based on dTechs’ submission that the Federal Court could not give any weight whatsoever to the evidence of Awesense’s expert, Mr. Bennett, who also opined on matters relating to construction and infringement. It would thus have had to rely on and accept Mr. LaPlace’s evidence as to the meaning of “known consumption patterns”.
[61] dTechs’ arguments can essentially be summarized as follows: Mr. Bennett was not an independent expert because he merely agreed with the opinion of Mr. Shepherd. Without Mr. Shepherd’s evidence, Mr. Bennett’s evidence would have carried no weight. I cannot agree.
[62] First, a simple review of Mr. Bennett’s report indicates that this is an inaccurate description of Mr. Bennett’s evidence. Moreover and importantly, the argument that Mr. Bennett’s evidence should be given no weight because he simply agreed and relied on the opinion of Mr. Shepherd was raised before the Federal Court. The Federal Court did not find it sufficient to give no weight to Mr. Bennett’s evidence; instead, it clearly considered and relied on Mr. Bennett’s evidence (see for example FC Decision at para. 132).
[63] Second, Mr. Bennett’s report was filed on August 26, 2020, after both Mr. LaPlace and Mr. Shepherd had filed their own main reports. It was responding to Mr. LaPlace’s reports on construction and infringement.
[64] The Code of Conduct for Expert Witnesses to which Mr. Bennett agreed to abide (Rule 52.2(1)(c)), provides that the expert has an overriding duty to assist the Court impartially on matters relevant to his or her area of expertise. It also states at paragraph 3(f) that the expert’s report shall include:
[I]n the case of a report that is provided in response to another expert’s report, an indication of the points of agreement and of disagreement with the other expert’s opinions;
[65] Although strictly speaking, Mr. Bennett was not responding to Mr. Shepherd’s report on construction, it is evident that he had been provided with that report, and tried to express his agreement and disagreement with the opinions contained therein, as noted at paragraph 17 of his report (Bennett Report, Appeal Book, Vol. 2, Tab 146, p. 6099). It is easy to understand the benefit of including this same kind of information about this other expert’s view in his report. In fact, it is best practice to do so.
[66] The Rules were amended in 2010 to include Rule 52.6, which ensures that when matters on which there is disagreement are not made sufficiently clear in the expert reports, the Courts could ask all the experts to meet in order to narrow the issues and identify points on which their views differ. There is no doubt that in patent cases it is necessary for trial judges to understand where experts agree and disagree, especially when determining the content of the CGK of the POSITA and the construction of the technical terms in the asserted claims. This is why it is important for experts to be as clear as possible in that respect in their reports.
[67] That said, the Federal Court made its own assessment as to the weight to be given to Mr. Bennett and Mr. LaPlace’s evidence. It was open to the Federal Court to select which aspects of the experts’ evidence it favoured, based on its own analysis of the claims. In this case, it is clear that the Federal Court did not accept in its entirety any of the expert’s evidence in respect of construction. As noted in Tensar Technologies, Limited v. Enviro-Pro Geosynthetics, Ltd., 2021 FCA 3 (Tensar Technologies) at paragraph 33, I know of no authority, and the appellants cited none, that would suggest that the trial judge was obliged to follow the entirety of the evidence of one party or the other, and could not reach his own conclusion, especially in respect of matters of law like claim construction to which I now turn.
(1) Construction of “known consumption patterns” in the claims [68] It is important to recall that the construction of claims is ultimately a matter of law, and that the role of experts in that respect is more limited than the one suggested by dTechs in this case.
[69] Although the Federal Court in this case did not have the benefit of our Court’s decision in Biogen Canada Inc. v. Pharmascience Inc., 2022 FCA 143, I believe that it is worth reproducing the following paragraphs:
[72] As noted in Whirlpool at paragraph 49(e), interpreting a patent is like interpreting a regulation. Purposive claim construction involves looking at words of the claims in context. This includes in the claims individually and as a whole, considering their purpose as well as the description. As noted by the Federal Court, the entire patent must be considered, but adhere