SNF Inc. v. Ciba Specialty Chemicals Water Treatments Limited

SNF Inc. v. Ciba Specialty Chemicals Water Treatments Limited
Court (s) Database
Federal Court Decisions
Date
2015-08-24
Neutral citation
2015 FC 997
Decision Content
Date: 20150824
Docket: T-1749-11
Citation: 2015 FC 997
BETWEEN:
SNF INC.
Plaintiff
and
CIBA SPECIALTY CHEMICALS WATER TREATMENTS LIMITED
Defendant
REASONS FOR JUDGMENT
PHELAN J.
I. Introduction [1] This is an action for a declaration that Canadian Patent CA 2 515 581 [581 or the 581 Patent] – a process of “rigidifying” a material using polymers – is invalid. This case does not follow the usual pattern of an infringement action for which there is a defence and counterclaim of invalidity. This is a direct challenge to validity.
[2] The issues about a similar patent have been litigated in Australia, about which this Court comments later.
[3] There was a counterclaim by the Defendant (Plaintiff by Counterclaim) for infringement of the 581 Patent, but that was settled during the course of the trial.
Therefore, the central issue before this Court is the validity of the 581 Patent. The commercial product incorporating the patented process has been used in the oil fields in and around Fort McMurray.
[4] The Plaintiff, SNF Inc [SNF], is a company incorporated under the laws of the State of Delaware, USA, and has its principal place of business in Riceboro, Georgia, USA. SNF is a manufacturer and distributor of water soluble polymers and polymer feed equipment.
[5] Ciba Specialty Chemicals Water Treatment Limited [Ciba] is a company incorporated in the United Kingdom with a principal place of business in Bradford, West Yorkshire, United Kingdom.
[6] The patent at issue, the 581 Patent, stems from an international patent application filed on January 7, 2004, as international application no PCT/EP2004/000042.
The international patent application was published on July 22, 2004, as international publication no WO 2004/060819 [the 581 PCT Patent Application].
[7] The 581 Patent claims priority from GB 0310419.7, which is an application filed on May 7, 2003, in Great Britain [Priority Document].
The 581 Patent was granted on July 5, 2011.
[8] Philip McColl and Stephen Scammell are the individuals listed as inventors on the 581 Patent. Scammell gave evidence in this trial concerning his work in “inventing” the process at issue.
[9] Ciba is listed in the Canadian Intellectual Property Office [CIPO] as the owner of the 581 Patent.
II. 581 Patent [10] The 581 Patent invention is described as:
The present invention relates to the treatment of mineral material, especially waste mineral slurries. The invention is particularly suitable for the disposal of tailings and other waste material resulting from mineral processing and beneficiation processes, including the co-disposal of coarse and fine solids, as a homogenous mixture.
[11] Normally the process of mineral extraction results in waste material frequently called tailings. Often the waste consists of an aqueous slurry or sludge comprising different mineral materials such as clay, sand, grit, etc. Generally, the material consists of mineral particles of different sizes.
[12] Flocculation, in polymer science, is the formation of aggregates – sometimes also called coagulation. As the Patent discloses, it is common practice to use flocculants to assist this process by flocculating the fine material to increase the rate of sedimentation. However, the problem is that the coarse materials will sediment at a faster rate than the flocculated fines, resulting in a heterogeneous deposit of coarse and fine solids.
[13] In cases where it is not possible to dispose of the waste in an emptied mine, it is common practice to dispose of the waste material by pumping the aqueous slurry to lagoons, heaps or stacks and allowing it to dewater gradually through the actions of sedimentation, drainage and evaporation.
[14] The Patent pointed out environmental pressures to reduce the land area for waste. One method is to layer stacks of waste. The difficulty is to ensure that the new waste flows over the “rigidified” (a term discussed more fully under Claim Construction) prior waste, remains within the waste area boundaries, forms a stack and the waste, old and new, consolidated to support multiple layers without collapsing or overflowing.
The Patent identified that there was a requirement for providing a waste material with the right sort of characteristics for stacking that was altogether different from those required for other forms of disposal, such as back-filling within a relatively enclosed area (such as an emptied excavation site).
[15] The Patent outlined that past attempts to use a coagulant or a flocculant had been unsuccessful because the treatments were at conventional dosages, which brought little or no benefit in either the rate of compaction of the fine waste material or clarity of the recovered water.
[16] The Patent further asserts that it is desirable to have a treatment, which provides a more rapid release of water from the suspension of solids, that the concentrated solids are held in a more convenient manner that prevents both segregation of any coarse and fine fractions and that prevents contamination of the released water, while minimizing the impact on the environment.
[17] The Patent then goes on to discuss some prior treatment processes using a flocculant, in particular a polymer, water absorbent or water soluble and their difficulties or failings.
[18] Most particularly for purposes of this litigation, the Patent refers to WO-A-0192167, known as the “Gallagher Patent”. The Gallagher Patent discloses a process where a material comprising a suspension of particulate solids is pumped as a fluid and then allowed to stand and rigidify. The rigidification is achieved by introducing particles of a water soluble polymer which has an intrinsic viscosity of at least 3 dl/g into the suspension.
[19] The advantage of the Gallagher treatment is that it enables the material to retain its fluidity while being pumped and upon standing causes the material to rigidify. The benefit is that the concentrated solids can be easily stacked and water is released rather than being retained in a water absorbent polymer. The disclosure of the 581 Patent contains the following phrase which became a major source of dispute:
The importance of using particles of water soluble polymer is emphasised and it is stated that the use of aqueous solutions of the dissolved polymer would be ineffective.
(Court’s underlining)
[20] In addressing the invention in the 581 Patent, while acknowledging the improvements of the Gallagher Patent, it states there is a need to further improve the rigidification of suspensions of materials and further improve upon the clarity of water released (Court’s underlining).
[21] The Patent describes its objective as finding a more suitable method of treating coarse and/or fine particulate waste material from mineral processing operations in order to provide a better release of fluids and a more effective means of disposing of the concentrated solids.
[22] The Patent contains 13 examples of how one tested to determine the proper amount of polymer to add to the slurry to create the desired “rigidification”.
[23] The Patent does not contain a formula to achieve the benefits of rigidification nor did it specify what constituted rigidification. In many ways, the process consists of adding enough water soluble polymer until one achieved the desired result.
[24] With respect to the Claims at issue, those Claims are attached as Appendix I to these Reasons for ease of reference. The central claim is Claim 1.
A process of rigidifying a material whilst retaining the fluidity of the material during transfer, in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer, said water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1 M NaCl at 25°C).
[25] The evidence in this trial was focused on Claim 1 and its dependent Claims 2 to 31. The only other independent claim is Claim 32 but it is, in reality, a composite of a set of six claims (1, 2, 4, 9, 21 and 28). The claims which depend on Claim 32, namely Claims 33 to 50, have the same dependencies, limitations and qualifications as certain corresponding claims from the set of Claims 2 to 31. Therefore, any finding of invalidity with respect to the set of Claims 1 to 31 will apply to Claims 32 to 50.
[26] As a result of the nature of the dependencies and the state of the art, if Claim 1 is invalid, then its dependent claims are likewise invalid. Dr Farrow, Ciba’s principal expert, was correct in his view that there was only one inventive concept that applied to all claims in the 581 Patent. This case rises or falls on Claim 1.
[27] There are material dates for the various issues in this litigation including the construction of the Patent:
• for claim construction it is the publication date – July 22, 2004;
• for anticipation and obviousness, it is the claim date – May 7, 2003; and
• for false and misleading statements, the issuance date governs – July 5, 2011.
There is no dispute as to these material dates.
III. Grounds of Challenge [28] In addition to the issues of claim construction, determining the person of ordinary skill in the art [Skilled Person] as of July 22, 2004, and the state of Common General Knowledge, the Plaintiff submits that:
a) the Patent was anticipated by the prior art including the Gallagher Patent, the Condolios Patent 4,347,140 published August 31, 1982 and an article by Stewart, Backer and Busch published in 1986;
b) the Patent was anticipated by prior use including: the work done at Fos-sur-Mer near Marseilles, France; the process used at the John Brown Harris Coal Company in Quinwood, West Virginia in 1977; and subsequently, the process used at Central Coal Company in New Haven, West Virginia also commencing in 1977;
c) the Patent was obvious in light of the Common General Knowledge, and in light of the Gallagher Patent, the Pearson Patent and/or a combination of both patents;
d) the Patent was insufficient in its disclosure of the invention;
e) the Patent claims are overbroad in that they made claims broader than the invention, particularly with respect to the use of the patented process in the oil sands tailings; and,
f) the Patent contained false and misleading statements.
IV. Witnesses’ Summary [29] While this action, similar to any patent action, was dominated by expert evidence and reports, there were a number of lay witnesses whose evidence was an important part of the mosaic of the case and have influenced the result.
A. Plaintiff’s Lay Witnesses [30] The key lay witnesses for the Plaintiff were Dr Poteur and Larry Hyatt.
(1) Dr Poteur [31] Poteur gave evidence about a project, at the harbour at Fos-sur-Mer in France, which took place in the mid-1970s. His evidence was directed at the issue of Prior Use. The project was for the reclamation of land and the construction of the harbour. To achieve the objective of creating an area upon which buildings could be built, the slurry dredged from below water marshlands was treated with a polymer. Dr Poteur knew (as he suggested others knew as well) that using a polymer flocculant on the slurry would increase the sheer strength (the engineering term for strength required to tear material apart). The dredged material was transported by pipeline to a reclamation site and polymer was added to the material as it was transported. The polymer was a water soluble polymer and the dose of polymer was adjusted in order to obtain the desired effect. The observed results were: a slope of 3% indicating the solids had become more solid; the strength of the material was achieved quickly – in days rather than, for untreated materials, in weeks; clear water flowed off meaning fine particles did not escape into the water; and, there was homogeneity of particle size.
[32] While Dr Poteur’s evidence was attacked as faulty in memory and not sufficient to meet the legal test of Prior Use (which will be discussed later), his memory of key aspects – the use of polymer in a tube to increase solidification – was clear. His evidence was germane to the issue of Common General Knowledge as well as Prior Use.
[33] He was an honest witness who had no stake, financial or personal, in the litigation. His recollection of minute details such as the viscosity of the polymer use and related details may not be exact but his overall evidence was credible and worthy of considerable weight.
(2) Larry Hyatt [34] Larry Hyatt gave evidence, both as a lay witness and as an expert; a rather difficult thing to do without calling into question the weight which should be given to the evidence as a whole. In the 1970s, he was a sales representative for Nalco Chemical Co [Nalco]. As such, he was involved with two examples of Prior Use in the US coal industry. One was at John Brown Harris Coal Company, where Hyatt added polymer into a slurry pipeline 20 feet from the exit point. The result was that at the disposition area, where the slurry was allowed to stand, water flowed away from the solids, the solids started to compact, the solids were homogeneously distributed and the solids developed enough strength in a few days to support the weight of a person.
[35] Hyatt metaphorically introduced the Court to Cigar Bill (Bill Myers of Leckie Smokeless Coal Company) to whom Hyatt showed the results. Unfortunately, Cigar Bill did not testify – it is believed he had passed away.
[36] The other example of Prior Art attributed to Hyatt was a process at Central Coal, where there was concern that its process water was murky and carrying suspended particles to the Ohio River. The slurry to be treated was the underflow from a thickener that was moved to the deposition area by a centrifugal pump located under the thickener. The polymer said to be used was Nalco 8863, a water soluble 30% anionic co-polymer. The polymer was injected into the underflow slurry, transported to the disposition area and allowed to stand. The result was separation of solids and liquids with clear water coming out. The solids compacted and shaped a beach, which sloped away allowing for the release of clear water. The beach became solid with sufficient yield strength to allow stacking.
[37] Hyatt testified that he shared the results with others and subsequently believed that he had achieved the inventive concept in the Patent.
[38] Hyatt was a colourful witness who attempted to be forthright in his evidence. However, I put less weight on this evidence than SNF would like because his recollection of specifics was shown to be faulty, he had no documents, no contemporaneous corroborative evidence and there is no way to confirm the veracity of his recollection. His recollection is likely substantially influenced by reading the Patent and a desire to assist SNF.
B. Defendant’s Lay Witnesses [39] The Defendant had two key lay witnesses – William Peatfield, a European Patent Agent and an employee of Ciba in the UK who was generally responsible for the Gallagher Patent application process and Stephen Scammell, one of the inventors of the Patent.
(1) William Peatfield [40] The importance of Peatfield’s evidence stems not only from the Plaintiff’s reliance on it for its assertion of false and misleading statements, but also because it demonstrates, to some extent, how Ciba treated the Gallagher Patent and the 581 Patent in which Peatfield was personally involved. Combined with Scammell’s evidence, the evidence demonstrates the marketing/financial interests being protected by Ciba.
[41] The impugned statement in the 581 Patent is the description referring to Gallagher that “the importance of using particles of water soluble polymer is emphasised and it is stated that the use of aqueous solutions of the dissolved polymer would be ineffective”.
[42] The statement has been used by Ciba to show that Gallagher taught away from the inventive concept in the 581 Patent and thus, the 581 Patent was new and not covered by Prior Art.
[43] The words chosen for the Gallagher Patent were Peatfield’s. Since the Gallagher Patent used powdered polymer – and that would be the product being pushed commercially by Ciba – the Gallagher Patent described the so called uniqueness of using powder:
- It is surprising that the process according to the invention forms a product which rigidifies far better than alternative treatment.
- One advantage of additions in powder form is that the viscosity does not increase or diminish as rapidly as solution based additions.
[44] It was Ciba’s position that Gallagher and the 581 were conceptually different despite a substantial amount of evidence that internally Ciba considered the Gallagher Patent to cover five forms of polymers including aqueous solution. The fact is that the Gallagher application never stated that the aqueous polymer addition would be ineffective despite the statement to that effect found in the 581 Patent.
[45] Peatfield knew that the solution addition would work in the same way as powder and could achieve better or comparable results. Peatfield also recognized that an admission that aqueous solutions of the same polymers would carry out the same conditions as the 581 application would mean that the 581 process would not be novel.
[46] In trying to explain away some of the internal comments suggesting that at best 581 was merely a next step to Gallagher, Peatfield appeared distinctly uncomfortable in giving his evidence. In my view, Peatfield suffered from being an honest man caught in the internal and inconsistent story of his employer.
[47] Peatfield’s initial absence of recollection of key events was refreshed after discussion with counsel to fall in line with Ciba’s position in this litigation. I do not suggest anything improper in Ciba’s Canadian counsel’s conduct – they are people of the highest professional ethics. However, the Court cannot ignore this Pauline conversion of memory.
[48] I put greater weight on the documents, the internal memos and the commercial advantage to Ciba of protecting Gallagher and trying to assert or create a novel aspect in the 581 Patent. Such weight is reinforced by the Scammell evidence referred to below.
[49] In other words, I do not accept Peatfield’s attempt to explain away the efforts to distinguish Gallagher Patent from the 581 Patent except the patents’ obvious difference of powder versus aqueous solution.
(2) Stephen Scammell [50] Stephen Scammell worked in Australia for Allied Colloids, which then became Ciba. He ran plant trials on the flocculant business in the thickener application at various sites.
[51] Scammell’s evidence was the tale of the “discovery” of the inventive concept – adding an aqueous solution polymer to slurry and letting it stand. He was generally defensive throughout his evidence and cross-examination, often unresponsive to the questions posed. He was clearly there to protect “his” patent. His evidence must be taken in that light.
[52] The starting point for the work, which led to the Patent, involved the sand mining operations of Consolidated Rutile Limited [CRL] on Stradbrooke Island. CRL was moving their Gordon plant to Yarraman and going from dealing with low fines (low slimes) to high fines (high slimes). The process to treat low fines was not effective on high fines. Scammell was to look at the flocculant and equipment to be used to prepare the flocculant in the thickener CRL was using. Scammell secured CRL’s business by pushing an emulsion polymer.
[53] The problem CRL eventually had, after sorting out some initial teething issues, was that the pumped tailings below the specific gravity of 1.6 would wash away to the nearest flat area or even back to the dredge pond from whence it came.
[54] The focus became to use “rheology aids” – the marketing term for flocculants – in the thickener underflow/slurry. This would presumably change the characteristics of the slurry.
[55] Rheology is basically the study of the flow and deformation of matters primarily in a liquid state but also as “soft solids” or solids under conditions in which they respond with elastic flow rather than deforming elastically in response to an applied force.
[56] At that time, a number of people in Ciba, including Michael Gallagher (inventor of the Gallagher Patent), were working on rheology aids. The evidence included several series of e‑mails within Ciba dealing with how to test the effectiveness of the rheology aids. The advice or view exchanged included staying within the field of powder polymers because that was the product Ciba was working with and pushing for sales in the market.
[57] In August-September 2002, Scammell stated he decided to focus on the thickener underflow and treating the combined tailings. He started with a powder polymer and achieved good results. He then moved to a solution polymer which gave even better results.
[58] Of particular importance, and a matter Scammell attempted to deflect by questioning the date of communications from the field, is CRL’s request to use a liquid polymer (emulsion) injected 50 meters back from the discharge. It seemed obvious to CRL that a liquid polymer was likely to give the type of solidification of the discharge they sought.
[59] What followed thereafter was a series of communications within Ciba expressing concern that Scammell and McColl should not stray outside the Gallagher Patent and should continue to use powder. Given the correspondence, the most likely reason for Ciba’s concern was not Gallagher Patent integrity but the fact that emulsion polymer was 1/3 the cost of powder and thus, the sales revenue produced would be less. Gallagher expressed the view that Scammell would be better to have his test, which was to show CRL how well the solution worked, fail.
[60] I do not accept Scammell’s protestation that pricing had little to do with the ultimate solution and that Ciba was simply driven by desire to solve a customer’s problem.
[61] Scammell’s evidence, taken together with Peatfield’s, establishes that Ciba knew that the Gallagher Patent either included what Scammell was doing or that the polymer form switch (simply moving from powder polymer to liquid (aqueous) polymer) was not unforeseen.
V. Expert Evidence [62] Like any other witness, the credibility of an expert witness cannot be determined by following a set of rules. Credibility is an issue of fact and deciding between or preferring one expert’s evidence over another is not an easy matter. In R v White, [1947] SCR 268, the Supreme Court gave this overview:
The general integrity and intelligence of the witness, his powers to observe, his capacity to remember and his accuracy in statement are important. It is also important to determine whether he is honestly endeavouring to tell the truth, whether he is sincere and frank or whether he is biassed, reticent and evasive. All these questions and others may be answered from the observation of the witness’ general conduct and demeanour in determining the question of credibility.
[63] Courts have sought to structure the obligations of experts into a Code of Conduct under the Federal Courts Rules. The basic obligation is to be impartial and assist the Court; the basic prohibition is to not be an advocate.
1. An expert witness named to provide a report for use as evidence, or to testify in a proceeding, has an overriding duty to assist the Court impartially on matters relevant to his or her area of expertise.
1. Le témoin expert désigné pour produire un rapport qui sera présenté en preuve ou pour témoigner dans une instance a l’obligation primordiale d’aider la Cour avec impartialité quant aux questions qui relèvent de son domaine de compétence.
2. This duty overrides any duty to a party to the proceeding, including the person retaining the expert witness. An expert is to be independent and objective. An expert is not an advocate for a party.
2. Cette obligation l’emporte sur toute autre qu’il a envers une partie à l’instance notamment envers la personne qui retient ses services. Le témoin expert se doit d’être indépendant et objectif. Il ne doit pas plaider le point vue d’une partie.
Federal Courts Rules, SOR/98-106, Schedule, Code of Conduct for Expert Witnesses
[64] In addition to the above, some of the factors this Court has considered, and which are germane to this trial, in evaluating the credibility and weight of an expert’s evidence, are whether the witness:
• was intransigent, particularly during cross-examination and evaded questions that could expose any frailties in his theory and was intent on reiterating his views, when he deemed it necessary, irrespective of whether those views were responsive to the questions at hand (including by providing answers that went much beyond the question put to the witness);
• emphasized those areas favourable to the expert’s interpretation and reluctant to respond to other questions;
• frequently would not concede something which seemed to be obvious or logical and when the concession came, did so reluctantly and grudgingly;
• was forthright, fair, thoughtful and reasonable in answering all questions asked of him/her during both direct and cross-examination;
• in testifying as to the teachings of the Prior Art and the patent in issue, varied their interpretation in order to reach the desired result.
(See: Johnson & Johnson Inc v Boston Scientific Ltd, 2008 FC 552 at paras 202-205, 327 FTR 49; Xerox of Canada Ltd v IBM Canada Ltd, [1977] 33 CPR (2d) 24 at paras 37-41.)
[65] Rather than summarize each expert’s evidence, the Court will summarize their evidence in respect of each of the major issues, which are addressed in these Reasons. However, below is a brief discussion of the Court’s evaluation of each expert’s credibility and weight given to their evidence.
A. Dr Bernhard Klein [66] Klein has a PhD in Rheology. He has been a professor of Mineral Processing in the Department of Mining Engineering at UBC since 1998 and was head of the department for six years. His area of expertise – mineral processing – encompasses all the activities that take place following the excavation of rock from the ground to the creation of products that are saleable as well as the disposal of waste from the excavation.
[67] He taught courses in rheology and industrial applications in which mineral suspensions are being treated or processed.
[68] In addition to teaching, he had worked in private industry in the same field on about 300 projects but only one in which the addition of polymers to treat waste was involved.
[69] Klein testified on all the major issues in this case. His opinion evidence was countered by that of Dr Farrow on behalf of the Defendant, about whom more follows.
[70] I found Klein to be a straightforward witness, who recognized the limits of his knowledge. Perhaps too often he dismissed issues as theoretical where he did not know an answer and where some explanation of the engineering theory would have been helpful.
[71] Having said that, Klein brought an element of practicality to what was a practical patented process. Unlike Dr Farrow, he did not engage in answers that undermined his credibility. He was more objective, helpful and clear and I attach considerable weight to his evidence.
Generally, where there was a direct conflict between the Defendant’s witnesses and Klein, I preferred his evidence unless stated otherwise.
B. Larry Hyatt [72] Hyatt was accepted by the parties as both an expert witness and a fact witness. This hybrid type witness is an anomaly to the usual requirement of an expert witness. An expert need not be overloaded with PhDs and research papers, and expertise can be gained (and of considerable benefit to the Court) through practical and intellectual experience. The example of the master mariner resonates in this Court. Hyatt did not rise to that level of expertise.
[73] Specifically, he was qualified as an expert in the application and use of flocculants to treat mining waste with expertise in mineral processing unit operations such as thickeners, pumps, pipelines and the various treatments and techniques used for disposal of mining waste including liquid solids separation techniques.
[74] Hyatt has a BSc in chemistry and natural sciences from Morris Harvey College in West Virginia and a Masters of Arts in Educational Administration from West Virginia College of Graduate Studies. From 1972 until 1977, he was a high school chemistry and science teacher.
[75] In 1977, Hyatt began working with Nalco in the mining and minerals processing group where his focus was marketing and selling process chemicals to the mining industry. He was a technical sales representative until early 1980 whereupon he became a district sales manager, most specifically in coal mining related sales and services in the Appalachian coal basin. It was through that sales representative position with Nalco that he became involved with John Brown Harris Coal and Central Coal.
[76] From 2001, Hyatt had his own company marketing binders to the synfuel industry. During 2002-2003, he consulted for Freedom Industries, which had bought the coal portion of Ciba’s mining chemicals business. In 2005, he formed Appalachian Chemical Services LLC, which was focused on marketing process chemicals to the mining industry. That company was sold to SNF in 2011. Hyatt has no ongoing relationship with SNF other than the evidence here.
[77] Within the limitations of his education and background limited to the Appalachian coal industry, Hyatt gave straightforward practical evidence on how people “on the ground” would understand aspects of the industry and the Patent. I consider his evidence to be helpful and generally clear (except for the accents – West Virginian, and in Farrow’s case, Australian – the Court was reminded that we are “divided by a common language”.)
C. Dr John Benson Farrow [78] Farrow was the Defendant’s principal expert on all the major relevant issues. The Defendant’s case turned in large part on his evidence. Academically and experientially, he was, on paper, the most qualified major expert. He was relied upon heavily in the Australian Federal Court proceedings, although there are major differences between this case and the present one.
[79] Farrow has a BSc with first class honours in chemistry from the University of Western Australia. He completed his PhD in 1982 on the subject of hydrolysis.
[80] Since 2004, he has been employed with CSIRO and is the manager of the CSIRO Waterford site. CSIRO is an Australian government statutory authority in respect of mining heavily engaged in research projects related to mining. In addition to his Waterford site manager role, he has been the Project Manager of AMIRA P266 “Improving Thickener Technology” projects.
[81] He serves on several boards including the Chemistry Centre of Western Australia and has received awards for his work in thickener technology. He has in-depth knowledge of flocculants and their characteristics and applications. He has authored numerous articles and papers. He was qualified in this Court as an expert in the field of solid-liquid separation processes, flocculants, flocculation, the application of flocculants to tailings, thickener technology and tailings disposal to the mining industry.
[82] Farrow, like Klein, Clasen, Poteur and Hyatt, testified as to the construction of the Patent, as well as issues of Prior Art, Common General Knowledge, Obviousness and other aspects of validity.
[83] Despite Farrow’s strong background, I found his evidence to be less persuasive, consistent, objective and balanced than one would reasonably expect.
[84] It was particularly concerning that on a major construction of the Patent issue – the meaning of the term “rigidification”, Farrow advanced different and shifting meanings and components thereof. He stretched and strained the meaning of the Patent and supplied a result oriented interpretation.
[85] Overall, Farrow approached questioning as if it was warfare. No one expects an expert to be a wallflower at a high school dance nor should one expect an expert to be a pit bull in a dog park. Farrow chose both to challenge and debate with counsel on questions and to deflect and quibble with them on answers. He had to be reminded by the Court that he was to answer the question posed and not the one he wished he had been asked. He persisted in his non-responsiveness.
[86] Farrow engaged in trying to slip into an answer gratuitous comments to bolster other points he made. From my perspective, he appeared to have lost his objectivity and became a greater advocate for the Patent’s validity than was appropriate.
[87] With all due respect to a highly qualified expert, he was much less helpful to the Court than his duty called for. Therefore, despite his preeminent credentials, I approach his opinion with grave caution and tend to favour the Plaintiff’s experts’ opinion.
D. Dr Clasen [88] Dr Clasen is a professor of Chemical Engineering. He has authored and published more than 200 presentations and papers related to flow characteristics and viscosity. In 2004, he co-authored a book with Dr Werner-Michael Kulicke entitled “Viscosity of Polymers and Polyelectrolytes”. Two relevant chapters from that book, “Intrinsic Viscosity” and “Parameters affecting the Intrinsic Viscosity”, were included in his evidence.
[89] He has been appointed by the European Research Counsel as an expert peer reviewer in his field - the general rheology of polymers. He was qualified as an expert in this trial in the field of intrinsic viscosity, including the determination of intrinsic viscosity and techniques for measuring intrinsic viscosity.
[90] His evidence focused on determining the identifying characteristics of polymers including their molecular weight and intrinsic viscosity - a property that can be used to describe anything that can be added to a liquid. This evidence was important in identifying polymers used in Prior Art.
[91] There is a specific correlation between the mass of the polymer coil and the intrinsic viscosity. The same polymer with the same coil mass put into the same solvent at the same conditions will give the same intrinsic viscosity. As a result, in cases where the relationship between coil mass and intrinsic viscosity is known, a measurement of the intrinsic viscosity can be correlated to a mass for that polymer. This relationship is known as the Mark-Houwink equation and is used to identify a polymer.
[92] Dr Clasen's evidence also emphasized the vulnerability of any assumption made about polymers used in the Prior Art. Particularly, if the type of polymer along with its molecular weight turned out to be different, the intrinsic viscosity could vary immensely, distinguishing it from the polymers referenced in the 581 Patent.
[93] In Dr Clasen's opinion, the polymers referenced in the 581 Patent indicated the use of a moderate to high molecular weight polymer (as confirmed by an intrinsic viscosity greater than 5 dl/g in 1 M NaCl at 25°C) soluble in water and using a solution in which that polymer dissolved in water or at least partially dissolved in water.
VI. Claim Construction A. General Principles [94] There is no fundamental disagreement between the parties on the general principles; there is a difference of emphasis. The law creates a tension between the desire to reward and protect the truly innovative (Apotex Inc v Wellcome Foundation Ltd, 2002 SCC 77, [2002] 4 SCR 153) and a need to strictly confine and define the protection of a monopoly that society is prepared to give (Free World Trust v Électro Santé Inc, 2000 SCC 66, [2000] 2 SCR 1024 [Free World Trust]). The Plaintiff emphasizes the confinement – the fences; the Defendant emphasizes protection of which the presumption of validity is a part.
[95] The first step in the analysis of validity (and infringement) is to construe the claims of the Patent. Claim construction is not to be result oriented but it should be done knowing where the dispute between the parties lies (Free World Trust).
[96] Although claim construction is a matter of law, it is viewed through the perspective of a person of ordinary skill in the art, with a mind willing to understand having regard for the Common General Knowledge such a skilled person would have as of the material date.
[97] The guiding approach of a purposive construction is well established in such decisions as Free World Trust at para 43, and Whirlpool Corp v Camco Inc, 2000 SCC 67, [2000] 2 SCR 1067 [Whirlpool]. This is not, however, a search for the “spirit of the invention” or something akin to legislative intent.
43 The patent owner, competitors, potential infringers and the public generally are thus entitled to clear and definite rules as to the extent of the monopoly conferred. This in turn requires that the subjective or discretionary element of claims interpretation (e.g., the elusive quest for “the spirit of the invention”) be kept to the minimum, consistent with giving “the inventor protection for that which he has actually in good faith invented” (Western Electric Co. v. Baldwin International Radio of Canada, [1934] S.C.R. 570, at p. 574). Predictability is achieved by tying the patentee to its claims; fairness is achieved by interpreting those claims in an informed and purposive way.
[98] Claim construction is objective in nature – it is concerned with what a Skilled Person would have understood the inventor to mean. It addresses the question: What did the Skilled Person understand; not what the inventor might have understood (Pfizer Canada Inc v Canada (Minister of Health), 2005 FC 1725 at para 28, 285 FTR 1).
[99] Against those principles, the Court must determine who is “the skilled person” for purposes of this Patent and what was their Common General Knowledge.
B. Skilled Person [100] The experts generally agree on the description of the Skilled Person – the point of substantive disagreement is the Common General Knowledge that such person would have particularly as to in-line polymer addition.
[101] Dr Farrow laid out details of the Skilled Person, which included a pragmatic understanding of the options for mineral tailings. The Skilled Person would have:
• At least an undergraduate degree in such fields as chemistry, chemical engineering or metallurgy. That formal education would have to be combined with at least two years’ practical experience in the treatment of tailings. That experience would include:
• conducting and evaluating flocculation tests, settling tests, slump tests, turbidity tests, yield stress tests;
• working knowledge of polymers (class, physical properties such as molecular weight, intrinsic viscosity), polymer solution preparation, polymer solution aging, polymer dosing and mixing regimes;
• sampling of tailings materials to be treated;
• basic knowledge of flocculation of mineral tailings including the impact of solids contents, particle size distribution, mineralogy and morphology of solids;
• basic knowledge of how to prepare and apply polymer flocculants to treat mineral tailings in a thickener, filter or other application;
• mixing of flocculant with mineral tailings to be treated, including a range of laboratory mixing technologies;
• taking measurements during laboratory tests of treatment of tailings materials such as settling tests and rheology assessment of the treated tailings materials;
• ability to relate laboratory results to plant applications using an informed approach in recognition of the challenges (batch scale, mixing conditions and day-to-day conditions); and,
• measuring and evaluating plant data to assess thickener and filter performance, including t