Noco Company, Inc. v. Guangzhou Unique Electronics Co., Ltd.

Noco Company, Inc. v. Guangzhou Unique Electronics Co., Ltd.
Court (s) Database
Federal Court Decisions
Date
2023-02-13
Neutral citation
2023 FC 208
File numbers
T-484-21
Notes
Digest
Decision Content
Date: 20230213
Docket: T-484-21
Citation: 2023 FC 208
Ottawa, Ontario, February 13, 2023
PRESENT: Madam Justice Pallotta
BETWEEN:
THE NOCO COMPANY, INC.
Plaintiff/ Defendant by Counterclaim
and
GUANGZHOU UNIQUE ELECTRONICS CO., LTD.,
SUI CHENG LIMITED,
SHENZHEN GOOLOO E-COMMERCE CO., LTD.,
AUKEY TECHNOLOGY CO. LTD.,
Defendants/ Plaintiffs by Counterclaim
and
SHENZHEN YIKE ELECTRONICAS CO., LTD.,
SHENZHEN DINGJIANG TECHNOLOGY CO. LTD.,
SHENZHEN LIANKE ELECTRON TECHNOLOGY CO., LTD.,
SHENZHEN TOPDON ELECTRONIC CO., LTD.,
HUNAN LIANKE ELECTRONIC COMMERCE CO., LTD.,
SUBSTANBO INNOVATIONS TECHNOLOGY LIMITED
LIABILITY COMPANY, AND SUBSTANBO INC.
Defendants
PUBLIC ORDER AND REASONS
(Confidential Order and Reasons issued February 13, 2023)
I. Overview [1] This is a motion for summary trial by Guangzhou Unique Electronics Co Ltd, Sui Cheng Limited, Shenzhen Gooloo E-Commerce Co Ltd, and Aukey Technology Co Ltd (Moving Defendants), arising from a patent action brought against them and other defendants. The other defendants have not participated in the motion.
[2] In the action, the plaintiff (NOCO) alleges that certain vehicle battery jump starters the defendants have offered for sale in Canada infringe claims 1-3, 9-15, 17, and 19 of Canadian Patent No 2,916,782 titled “Portable Vehicle Battery Jump Start Apparatus with Safety Protection” (782 Patent). The Moving Defendants defend these allegations on the basis that their jump starters do not infringe the asserted claims of the 782 Patent, and that all claims of the 782 Patent are invalid. Also, the Moving Defendants counterclaim for various relief, including a declaration that their newer jump starters, namely those equipped with a CC-209 printed circuit board (PCB) (CC-209 Products), do not infringe any claim of the 782 Patent.
[3] On this motion, the Moving Defendants seek judgment prior to trial on their counterclaim pursuant to Rule 216 of the Federal Courts Rules, SOR/98-106. Specifically, the Moving Defendants seek a declaration, pursuant to subsection 60(2) of the Patent Act, RSC 1985, c P-4, that their CC-209 Products do not infringe any claim of 782 Patent.
[4] The Moving Defendants allege that the requested declaration would cover some of the products identified as infringing products in NOCO’s amended statement of claim, but would not be limited to those products. The declaration would apply to any of the Moving Defendants’ products that are equipped with a CC-209 PCB.
[5] While a declaration of non-infringement for CC-209 Products would leave issues for trial, the Moving Defendants assert that a summary determination of the issues on this motion will streamline the action going forward, and possibly lead to a settlement of the action. In this regard, they ask the Court to direct that the claim construction findings made on this motion shall apply to the underlying action as a whole.
[6] For the reasons below, the motion for judgment is dismissed. The Moving Defendants have not met their burden to establish that summary trial under Rule 216 is appropriate. While NOCO asserts that the true nature of the motion is one for summary judgment under Rule 215, and that it should be dismissed because there is a genuine issue for trial, my decision does not turn on the nature of the motion. That said, the issues raised by the Moving Defendants are also unsuited to summary judgment under Rule 215.
[7] In addition to the Moving Defendants’ motion for summary trial, these reasons address two evidence motions brought by NOCO: a motion to strike out parts of a reply affidavit from the Moving Defendants’ expert witness, and a motion for leave to file a supplemental affidavit from NOCO’s expert witness. The parties argued the evidence motions on the same day as the motion for judgment.
[8] NOCO’s evidence motions are allowed. With the exception of one challenged paragraph, the challenged reply evidence from the Moving Defendants’ expert’s reply affidavit is struck out as improper. Leave to file NOCO’s expert’s supplemental affidavit is granted.
[9] I note that I would have dismissed the motion for judgment even if I had not allowed NOCO’s evidence motions. In that sense, my decision does not depend on the outcomes of the evidence motions. However, the parties’ arguments on the evidence motions were interconnected with their arguments on the main motion, and the points they raised are relevant to the question of whether summary trial is appropriate in this case. Furthermore, the evidence that was introduced through these motion records is relevant to a number of factors that I considered and weighed in reaching my decision on the motion for summary trial. The reasons on the evidence motions therefore form part of the overall reasons for dismissing the motion for summary trial.
[10] After setting out the background, I provide my reasons on the evidence motions, followed by my reasons on the main motion for summary trial.
II. Background [11] NOCO commenced the underlying action in March 2021. Counsel for the Moving Defendants accepted service of NOCO’s amended statement of claim in October 2021 and delivered a joint statement of defence and counterclaim in November 2021. In December 2021, the Moving Defendants amended their counterclaim to further specify the declaratory relief sought with respect to CC-209 Products. At the same time, they raised their intention to bring this motion, and provided a draft notice of motion to NOCO. The Moving Defendants filed their notice of motion in January 2022.
[12] Prior to 2021, the Moving Defendants sold jump starter products in Canada through Amazon.ca. According to the Moving Defendants, NOCO persuaded Amazon.ca to de-list their jump starter products, resulting in a de facto injunction since they do not have an alternative retail channel in Canada. They ask for a declaration of non-infringement for CC-209 Products “with the goal of undoing NOCO’s commercial tactics”.
[13] The notice of motion is titled as a motion for “summary judgment / summary trial”. The reason for this, according to the Moving Defendants, is that they had not settled on which one of Rules 215 and 216 was the more appropriate summary disposition rule at the time they filed the notice of motion. The Moving Defendants subsequently elected to proceed under Rule 216. NOCO maintains that the election did not change the nature of the motion. NOCO asserts that the nature of this motion, which was argued in one day based on a paper record, is for summary judgment under Rule 215.
[14] The expert evidence on infringement relates to one product, Aukey Technology Co Ltd’s Tacklife T8 Pro jump starter (T8 Pro). The Moving Defendants allege the T8 Pro is: (i) equipped with a CC-209 PCB; and (ii) representative of all CC-209 Products for the purposes of determining non-infringement. To establish these allegations, the Moving Defendants rely on affidavits from two employees of Shenzhen Carku Technology Co Ltd (Carku). Carku engineered the CC-209 PCB, and it manufactures CC-209 Products for the Moving Defendants. Carku is not a party to the action.
[15] The Carku employees are Mr. XingLiang (Leon) Lei, a sales manager who is responsible for managing sales of Carku’s vehicle jump starter products, and Mr. Ming Cheng, a research and development manager who is responsible for various jump starter products engineered and manufactured at Carku, including the various PCBs that are installed and used in jump starter products. The employees attest that Carku has manufactured vehicle jump starters for the Moving Defendants, which were sold and delivered to the Moving Defendants in China as finished and packaged products ready for retail sale in Canada.
[16] Mr. Cheng attests that Carku engineered the CC-209 PCB in |||||||||||||||||||| and that Carku has installed the CC-209 PCB in vehicle jump starters manufactured after ||||||||||||||||||||. He further attests that all products equipped with a CC-209 PCB function in the same manner. His affidavit attaches six documents prepared and maintained by Carku, including technical specifications and source code, that are said to describe the functionality of “any product made by Carku that is equipped with this CC-209 PCB”. English translations of the Carku documents were prepared by Morningside, a company that provides translation services for technical and legal documents.
[17] NOCO does not accept that the T8 Pro is representative of CC-209 Products, and submits there is insufficient evidence before the Court to make such a determination summarily.
[18] The parties rely on expert opinion evidence for the issues of claim construction and infringement. The Moving Defendants rely on the opinion of Dr. Martin Walker. Dr. Walker received a PhD in Electrical Engineering from Stanford University in 1979. NOCO relies on a responding opinion of Dr. Jonathan Wood. Dr. Wood received a PhD in Electrical Engineering from the Massachusetts Institute of Technology in 1973.
[19] In his affidavit, Dr. Walker discloses that he was retained in a proceeding before the United States International Trade Commission involving NOCO. In the US proceeding, he provided an opinion on behalf of one of the Moving Defendants (Shenzhen Gooloo E-Commerce Co Ltd) on whether jump starter products equipped with a CC-209 PCB infringed claim 1 of United States Patent No 9,007,015 (US Patent 015), which Dr. Walker states is identical to claim 1 of the 782 Patent. He states that in the US proceeding, the T8 Pro was the representative product for jump starters equipped with a CC-209 PCB, and the experts’ infringement analyses involved the same Carku documents that are appended to Mr. Cheng’s affidavit.
[20] NOCO’s expert Dr. Wood was also involved in the US proceeding. His affidavit for this motion includes results from tests he conducted on the T8 Pro for the US proceeding. Even though the Moving Defendants were not present for those tests, the parties agreed that the Moving Defendants would not object to the admissibility of Dr. Wood’s evidence of his earlier tests, and NOCO would not object to the admissibility of reply evidence from Dr. Walker relating to the tests. NOCO’s motion to strike out parts of Dr. Walker’s reply affidavit, which I address in section III below, asserts that parts of the affidavit are outside the scope of the parties’ agreement and constitute improper reply evidence.
[21] Dr. Wood is also an expert for NOCO in Federal Court File No T-343-20, The NOCO Company, Inc v Canadian Tire Corporation, Limited. In that action, NOCO alleges that the defendant (Canadian Tire) sells vehicle jump starters that infringe the 782 Patent. NOCO’s motion to admit Dr. Wood’s supplemental affidavit seeks to introduce evidence of his tests of Canadian Tire jump starters manufactured by Carku and equipped with a CC-209 PCB. NOCO asserts that Dr. Wood’s tests revealed that the Canadian Tire CC-209 jump starters do not function in the same way as the T8 Pro tested in the US proceeding, suggesting that Carku uses different versions of the CC-209 PCB and/or different versions of the source code for the CC-209 PCB in the jump starters it manufactures. NOCO states this evidence is relevant to whether the T8 Pro is representative of the Moving Defendants’ CC-209 Products, and consequently, whether a declaration of non-infringement should issue based on the experts’ opinions on a single allegedly representative product, the T8 Pro.
[22] The Carku employees and the parties’ expert witnesses were cross-examined out of court. The expert witnesses were cross-examined on all of their affidavits, including the parts of Dr. Walker’s reply affidavit that are challenged in the motion to strike, and Dr. Wood’s proposed supplemental affidavit. Transcripts of the cross-examinations and the exhibits marked on cross-examination are included in the motion records.
[23] I now turn to the two evidence motions brought by NOCO.
III. NOCO’s motion to strike parts of the Walker Reply [24] NOCO seeks an order striking paragraphs 5-37, 49-50, 51 (first sentence), and 52-60, as well as corresponding exhibits K-M and O-R, of Dr. Walker’s Reply Affidavit sworn May 16, 2022 (Walker Reply). The Walker Reply was filed as part of the Moving Defendants’ motion record for summary trial.
A. The parties’ submissions [25] As noted above, NOCO asserts that the challenged evidence is not proper reply evidence, and it falls outside the scope of the parties’ agreement because it does not relate to Dr. Wood’s US tests.
[26] NOCO submits the challenged paragraphs constitute improper case splitting, as they provide Dr. Walker’s opinions on the construction of multiple terms in claim 1 of the 782 Patent that were or should have been part of his expert opinion in chief—including “microcontroller”, “internal power supply”, “vehicle battery isolation sensor” and “not turned on”. NOCO submits these constructions were not unexpected; in fact, they were integral to Dr. Walker’s non-infringement opinion addressed in his first affidavit. Claims must be construed prior to an infringement analysis and Dr. Walker’s opinions on the construction of claim terms should have been led in chief. Furthermore, Dr. Walker’s position in his first affidavit was that some of these terms did not need to be construed, and he should not be permitted to resile from that position. In addition, NOCO submits much of the evidence constitutes mere rebuttal of Dr. Wood’s evidence, or repeats evidence Dr. Walker gave in chief.
[27] The Moving Defendants note that paragraphs 34-37 and 52-60 of the Walker Reply are no longer necessary for the Court to decide the issues on this motion. However, they submit that Dr. Walker’s evidence in the other challenged paragraphs is proper reply evidence, and even if it is not, the Court should exercise discretion to admit the other challenged paragraphs in the interests of justice.
[28] The Moving Defendants submit the challenged paragraphs should be admitted to allow Dr. Walker to respond to unforeseeable opinions from Dr. Wood. Dr. Wood and Dr. Walker both provided opinions for the US proceeding on whether products equipped with a CC-209 PCB infringed claim 1 of US Patent 015. The Moving Defendants allege that several of Dr. Wood’s claim construction opinions on this motion were new and unexpected because they differed from Dr. Wood’s previous opinions on the meaning of corresponding claim terms in US Patent 015, and they also differed from how the skilled person would define the terms. Dr. Walker states in the Walker Reply that he could not have anticipated the opinions of Dr. Wood with respect to several of the construed claim terms.
[29] The Moving Defendants state they have been disadvantaged by the order in which the evidence was presented on this motion. They provided their non-infringement position first, “in a reversal of the usual order”. The Moving Defendants state they were “prepared to go first at least in part because NOCO’s infringement position was believed to be known”, alleging that NOCO and Dr. Wood changed several of their positions on material points when compared to the positions they took in the US proceeding.
B. Analysis [30] On a motion for summary trial, a moving party is permitted to file evidence that would be admissible at trial as rebuttal evidence: Federal Courts Rules, Rule 216(2)(a).
[31] The core principles governing the admissibility of rebuttal or reply evidence at trial are set out in Halford v Seed Hawk Inc, 2003 FCT 141 at paragraphs 15-16 [Halford]:
Evidence which is simply confirmatory of evidence already before the Court is not to be allowed.
Evidence which is directed to a matter raised for the first time in cross-examination and which ought to have been part of the plaintiff’s case in chief is not to be allowed.Any other new matter relevant to a matter in issue, and not simply for the purpose of contradicting a defence witness, may be allowed.
Evidence which is simply a rebuttal of evidence led as part of the defence case and which could have been led in chief is not to be admitted.
Evidence which is excluded because it should have been led as part of the plaintiff’s case in chief will be examined to determine if it should be admitted in the exercise of the Court’s discretion.
[32] The principles in Halford apply to reply expert reports in patent cases: Janssen Inc v Teva Canada Ltd, 2019 FC 1309 at paras 16-17 [Janssen v Teva], citing Dow Chemical Co v NOVA Chemicals Corp, 2014 FC 844 at paras 5-8 of Schedule A; see also T-Rex Property AB v Pattison Outdoor Advertising Limited Partnership, 2022 FC 1008 at para 34.
[33] In exercising discretion to admit evidence that may not be the proper subject of reply, the Court may consider factors such as whether admitting the further evidence would serve the interests of justice, assist the Court in making a determination on the merits, or cause substantial prejudice to the other party: Solvay Pharma Inc v Apotex Inc, 2007 FC 913 at paras 9-12.
[34] Rules limiting the scope of reply evidence foster the goals of fairness and efficiency by ensuring that the responding party knows the case to meet, and by avoiding an endless alternation in adducing evidence: Bauer Hockey Ltd v Sports Maska Inc dba CCM Hockey, 2020 FC 212 at para 13, citing Amgen Canada Inc v Apotex Inc, 2016 FCA 121 at para 12.
[35] Mere disagreement with statements made by another expert witness is not the proper subject of reply, and disagreements between experts can be addressed by cross-examination or highlighted in argument: Janssen v Teva at para 17; Bauer Hockey Ltd v Sports Maska Inc dba CCM Hockey, 2020 FC 212 at para 16.
[36] Dr. Walker’s assertion that he could not have anticipated Dr. Wood’s opinions is of marginal value. The Court must determine whether reply evidence could have been anticipated based on an objective analysis: Merck-Frosst v Canada (Health), 2009 FC 914 at paras 17-18, citing Astrazeneca Canada Inc et al v Novopharm Limited et al, 2009 FC 902.
[37] Apart from paragraph 50, I agree with NOCO that the challenged paragraphs of the Walker Reply fall outside the scope of the parties’ agreement, and they are not proper reply evidence. I am not persuaded that the Moving Defendants should be permitted to file the challenged parts of the Walker Reply on the basis that they could not have anticipated Dr. Wood’s constructions of claim terms in the 782 Patent, and I am not satisfied that the evidence should be admitted in the Court’s discretion, in the interests of justice.
[38] I would note that, in their attempt to establish that Dr. Wood’s opinions were unforeseeable, the evidence the Moving Defendants introduced in response to the motion to strike and the questions put to Dr. Wood on cross-examination have implications beyond the propriety of Dr. Walker’s reply evidence. The Moving Defendants also seek to discredit Dr. Wood’s claim construction opinions by raising an alleged inconsistency between his sworn opinions in the US and Canada, which NOCO vigorously disputes. This is an issue of credibility and as noted below, the need to decide serious issues of credibility is a consideration in deciding whether summary adjudication is appropriate, particularly based on a paper record.
[39] In any event, for the purpose of deciding whether the Walker Reply is admissible, I am not satisfied that the challenged paragraphs respond to evidence that could not have been reasonably anticipated. The Moving Defendants have not established that Dr. Wood’s opinions were not reasonably foreseeable in light of the opinions he gave in the US, nor was it reasonable for them to assume that the construction of some claim terms would not be contentious in this action, based on Dr. Wood’s US opinion.
[40] First, Dr. Wood’s opinions in the US proceeding appear to reflect the assumptions that he was asked to make. The Moving Defendants cross-examined Dr. Wood on this point and they filed excerpts from his US report. This evidence indicates that Dr. Wood was not asked to construe claim 1 of US Patent 015 for the US proceeding. He was instructed to provide an opinion on infringement based on claim constructions that were provided to him.
[41] Second, while there is no evidence before me on US law, it is apparent that the legal principles for claim construction in Canada and the US are not the same. In Google LLC v Sonos, Inc, 2021 FC 1462 [Google], this Court dismissed a motion for summary judgment where the moving defendant alleged that the parties to the Canadian proceeding had agreed, in a corresponding US proceeding involving identically-worded patent claims, that there was no infringement for the same products that were at issue in the Canadian proceeding. The Court found that even if it could conclude that the parties had reached an agreement on the construction of identically-worded US patent claims, construction of the Canadian patent claims could differ based on the different applicable principles under US and Canadian law: Google at para 53. Indeed, Dr. Walker states in his first affidavit that he was asked to follow the Canadian legal instructions, and not the legal instructions that were provided to him by the US lawyers.
[42] Also, I am not persuaded by the Moving Defendants’ argument that they have been disadvantaged because the sequence of the evidence did not mirror the parties’ respective burdens of proof on the issue of infringement. I fail to see how the Moving Defendants are disadvantaged by serving their evidence first when they are the moving parties on a motion for summary trial. The issues to be determined on a motion for summary judgment or summary trial are limited to the claims or defences from the underlying action that the moving party has raised: Janssen Inc v Pharmascience Inc, 2022 FC 62 at para 59 [Janssen v PMS]. The Moving Defendants’ notice of motion does not set out the specific claim construction or infringement issues to be determined on this motion, and NOCO would not have known the precise issues for summary adjudication until it received their evidence.
[43] Furthermore, I am not convinced that the burden lies with NOCO. The relief the Moving Defendants seek is judgment prior to trial on their counterclaim—specifically, a declaration pursuant to subsection 60(2) of the Patent Act that their products equipped with a CC-209 PCB do not infringe any claim of the 782 Patent. I disagree with the Moving Defendants that the motion for summary trial arises from the amended statement of claim and their counterclaim is merely a formality. In their notice of motion, the Moving Defendants state that they need a subsection 60(2) declaration of non-infringement so they will be able to list their “new” products on Amazon. The declaration the Moving Defendants seek would broadly cover all their jump starters that use the CC-209 PCB, independent of model name/number, and even future products. In my view, the Moving Defendants bear the burden on the issues they have raised on their motion, which is whether they are entitled to a declaration according to their counterclaim. In any event, much of the reply evidence in question relates to claim construction, which the Moving Defendants contend is a matter of law with no burden.
[44] Turning to the specific paragraphs of the Walker Reply that are at issue, (i) paragraphs 5-26, (ii) paragraphs 27-30, (iii) paragraphs 31-33, and (iv) paragraphs 49-50 and the first sentence of paragraph 51, respectively, respond to Dr. Wood’s construction of the claim terms (i) “microcontroller”, (ii) “internal power supply”, (iii) “vehicle battery isolation sensor”, and (iv) “not turned on”.
[45] The claim terms “microcontroller”, “vehicle battery isolation sensor” and “not turned on” are directly relevant to Dr. Walker’s non-infringement opinion. Dr. Walker provided an opinion on the construction of “vehicle battery isolation sensor” and “not turned on” in chief. He did not provide an opinion on the construction of “microcontroller”, even though the Moving Defendants argue that whether CC-209 Products have a “microcontroller” according to claim 1 of the 782 Patent is an important issue for summary determination. Dr. Walker discusses microcontrollers in various paragraphs of his in-chief affidavit and he stated on cross-examination that he had a construction in mind for his non-infringement opinion, and construed the term “microcontroller” in accordance with Canadian principles of claim construction. Dr. Walker stated that since “microcontroller” is a well-known term in the industry, he did not think there was any controversy on its meaning, and he did not feel it was necessary to explain what the term means.
[46] While Dr. Walker considers “internal power supply” to be an essential element of claim 1, the Moving Defendants admit that CC-209 Products have an internal power supply. Therefore, it is not necessary to construe this term in order to decide the issues raised for summary trial. The Moving Defendants’ position is that the Court could admit Dr. Walker’s reply on this point, if the Court chooses to construe additional claim terms to help focus the action.
[47] Of the challenged paragraphs and exhibits, in my view paragraph 50 of the Walker Reply falls within the scope of the parties’ agreement and is admissible. Paragraph 50 provides Dr. Walker’s response to Dr. Wood’s opinion on how the car battery detection circuit of the T8 Pro functions, based on voltage measurements shown on an oscilloscope trace that was generated in the course of Dr. Wood’s US tests. Dr. Walker’s opinion on this point assists the Court to understand the tests.
[48] Paragraphs 5-26 (microcontroller), paragraphs 27-30 (internal power supply), paragraphs 31-33 (vehicle battery isolation sensor), and paragraphs 49 and 51 (first sentence) (not turned on), as well as corresponding exhibits K-M and O-Q, do not respond to an issue that could not have been reasonably anticipated. Rather, they address issues that could have been addressed in chief, or they are simply confirmatory of opinions that were provided in chief. In addition, paragraphs 27-30 are irrelevant. All of these paragraphs will be struck out, as they are not proper reply and I am not persuaded they should be admitted in the interests of justice.
[49] The Moving Defendants concede that paragraphs 34-37, 52-60, and Exhibit R of the Walker Reply, which relate to other claim terms, are no longer necessary for the Court to adjudicate infringement on the merits. These paragraphs are irrelevant and will also be struck out.
[50] In conclusion, paragraph 50 of the Walker Reply responds to Dr. Wood’s US tests and falls within the scope of the parties’ agreement. Paragraph 50 of the Walker Reply will not be struck out. All other challenged paragraphs and their corresponding exhibits are inadmissible, and struck from the record. Paragraphs 5-26, 27-30, 31-33, 49 and 51 (first sentence) and the corresponding exhibits do not meet the requirements for reply evidence and should not be admitted in the Court’s discretion. Paragraphs 34-37 and 52-60 and the corresponding exhibit are irrelevant as they are unnecessary to decide an issue on the motion for summary trial.
IV. NOCO’s motion to admit Dr. Wood’s supplemental affidavit [51] NOCO seeks leave pursuant to Rule 216(2) of the Federal Courts Rules to admit a supplemental affidavit from Dr. Wood dated August 9, 2022. Dr. Wood was cross-examined on the supplemental affidavit, on August 29, 2022.
A. The parties’ submissions [52] NOCO submits that Dr. Wood’s supplemental affidavit is directly relevant to the issues on the main motion, it assists the Court, and it was not available prior to cross-examinations. Admitting the supplemental affidavit would be in the interests of justice and would not prejudice the Moving Defendants.
[53] In his supplemental affidavit, Dr. Wood states that in July 2022 he conducted experimental testing on four Canadian Tire jump starter products at issue in Court File No T-343-20, namely, CC-201 PCB- and CC-209 PCB-versions of two jump starter models manufactured by Carku. The CC-209 PCB jump starters in that proceeding did not function in the same way as the T8 Pro, and as a result, Dr. Wood states he has reason to believe the assumption he relied on for his first affidavit in this proceeding was not correct. For his first affidavit, Dr. Wood was asked to assume the T8 Pro is representative of the allegedly infringing CC-209 Products in this proceeding. Dr. Wood now believes Carku must use different versions of the CC-209 PCB and/or different versions of source code in different devices, and possibly in different manufacturing batches of the same devices, and he believes at least some CC-209 Products may behave differently than the T8 Pro.
[54] NOCO states it has never conceded that the T8 Pro is representative of CC-209 Products, and the supplemental affidavit of Dr. Wood confirms its concerns are legitimate. The Moving Defendants’ evidence to establish that the T8 Pro is representative of CC-209 Products consists of Mr. Cheng’s bare assertions that the products at issue in the summary trial motion are equipped with a CC-209 PCB and function in the same way. He asserts that the schematics, source code, flow charts and user manuals for the T8 Pro that are attached to his affidavit apply to each of the Moving Defendants’ CC-209 Products, without corroborating documentary evidence. NOCO states it has not had a proper opportunity to test the accuracy of Mr. Cheng’s assertions, since the Moving Defendants did not produce sample products and the parties have not exchanged production documents or conducted examinations for discovery.
[55] The Moving Defendants argue that Dr. Wood’s supplemental affidavit is not relevant because the summary trial motion relates to products having a specific technical configuration. While the Canadian Tire jump starters use the same CC-209 PCB as the T8 Pro, they function differently because they use different source code in the microcontroller (CC-209LXL source code, not CC-209 source code). The Moving Defendants contend NOCO would have known about this distinction because it had access to significant documentary production in the US proceeding. In this regard, the Moving Defendants rely on an affidavit from a senior paralegal at the law firm that represented Carku and Shenzhen Gooloo E-Commerce Co Ltd in the US proceeding. They state the paralegal’s affidavit confirms that NOCO was provided with PCB schematics and source code for the products at issue in the US proceeding, and that NOCO was advised that Carku products do not all use the same PCB, and products using the same PCB may have different source code.
[56] The Moving Defendants submit that NOCO is attempting to create a discovery problem when obvious differences in source code explain the differences in functionality. When NOCO served its responding evidence for summary trial, it did not include any factual evidence to contest the suitability of the T8 Pro as a representative product. Further, the Moving Defendants say NOCO is attempting to use Dr. Wood’s supplemental affidavit to contradict Mr. Cheng’s evidence that was unchallenged on cross-examination, in violation of the rule in Browne v Dunn.
[57] The Moving Defendants argue that the functionality of Canadian Tire jump starters is irrelevant, as they are seeking a declaration that any of their products made according to the specific technical configuration set out in Mr. Cheng’s affidavit—which encompasses both wiring and source code—do not infringe the 782 Patent. The Court’s determination on the construction of claim 1 may or may not be applicable to Canadian Tire jump starters, depending on whether the non-infringement findings turn on the specifics of the source code. Regardless, the Moving Defendants contend the requested non-infringement declaration would not encompass Canadian Tire products because neither Canadian Tire nor the manufacturer, Carku, are parties to this action.
[58] NOCO counters that it could not have anticipated the issues with Mr. Cheng’s evidence at the time of his cross-examination, and the rule in Browne v Dunn is inapplicable. Furthermore, NOCO says it now knows, based on the paralegal’s affidavit filed in response to the motion to admit, that Mr. Cheng spoke with an internal specialist at Carku on a break during his US examination, in order to confirm the accuracy of a table listing various Carku-manufactured jump starters and the PCBs used in each. NOCO submits this raises further concerns with Mr. Cheng’s evidence, as it suggests he is not the person at Carku with the best information about the PCBs used in Carku jump starters, and his evidence is likely hearsay.
B. Analysis [59] Since NOCO seeks to introduce the supplemental affidavit after cross-examinations, Rule 84(2) applies. The factors to consider include the relevance of the proposed affidavit and whether it will assist the Court, any prejudice to the opposing party, and the overall interests of justice, including whether the evidence was available or could have been anticipated earlier: Havi Global Solutions LLC v IS Container Pte Ltd, 2020 FC 803 at para 6 [Havi]; Canmar Foods Ltd v TA Foods Ltd, 2019 FC 1229 at paras 11-12. The factors are not a list of criteria to be met nor are they discrete, mandatory requirements of a conjunctive test; rather, they are factors to be considered and weighed in the Court’s discretion: Havi at para 58; Apotex Inc v Canada (Minister of Health), 2005 FC 1401 at paras 14, 36, aff’d 2005 FCA 397. The failure to establish any one factor is not necessarily fatal: Havi at para 58.
[60] I agree with NOCO that Dr. Wood’s supplemental affidavit is relevant to whether there is sufficient evidence in respect of the declaration the Moving Defendants seek—that their products equipped with a CC-209 PCB do not infringe any claim of the 782 Patent. Dr. Wood’s evidence assists the Court. His tests on Canadian Tire products were conducted in July 2022, and I am satisfied that this evidence was not available prior to cross-examinations. Admitting the supplemental affidavit is in the interests of justice, and would not prejudice the Moving Defendants.
[61] I do not accept the Moving Defendants’ argument that Dr. Wood’s supplemental affidavit should not be admitted because there is a ready explanation for the difference in functionality, which shows that his evidence is not relevant to the products that are at issue in this proceeding. Dr. Wood’s affidavit provides evidence that Carku manufactures jump starters that function differently despite having a CC-209 PCB. The Moving Defendants’ explanation for the difference in functionality is the result of investigations by the Moving Defendants’ counsel after NOCO served its motion to admit Dr. Wood’s supplemental affidavit. Furthermore, the Moving Defendants introduce that explanation through an affidavit of a law clerk working with counsel for the Moving Defendants. The law clerk’s affidavit attaches email correspondence from the Moving Defendants’ counsel setting out the results of counsel’s preliminary and further investigations, including discussions with Mr. Cheng who said that Canadian Tire products use a distinct source code identified as CC-209LXL and this is different from CC-209 source code.
[62] The fact that it was necessary for the Moving Defendants’ counsel to conduct investigations after receiving Dr. Wood’s supplemental affidavit is itself indicative of the relevance of the evidence.
[63] Furthermore, the fact that the Moving Defendants seek to rely on the information uncovered by counsel’s investigation to support the relief sought on the motion for summary trial, by way of counsel’s hearsay evidence on a disputed point, highlights a deficiency in the evidence on the summary trial motion. Mr. Cheng’s affidavit does not explain the source code Carku uses in association with its CC-209 PCB or how any differences in source code affect functionality, and the Moving Defendants have not filed a further affidavit from him. There is no direct evidence from Carku that explains the different versions of source code programmed on the third-party chips mounted on Carku CC-209 PCBs, and there is no evidence establishing that the difference in functionality that Dr. Wood observed is exclusively a function of CC-209LXL source code that is unique to Canadian Tire products.
[64] The paralegal’s affidavit raises additional questions about whether the T8 Pro is representative of all the Moving Defendants’ CC-209 Products. It also raises questions about whether the presence of a CC-209 PCB provides a reliable and unambiguous basis for defining what is alleged to be a class of non-infringing jump starter products, encompassing not only existing products but also future products. For example, the paralegal’s affidavit indicates that source code on the CC-209 jump starters at issue in the US proceeding was updated around October 2021, and in that proceeding, the T8 Pro was the stipulated representative product for products equipped with a CC-209-V1.2 PCB, not simply a CC-209 PCB.
[65] I am not persuaded that NOCO or its Canadian counsel would have known all of this by reason of NOCO’s access to documentary productions in the US proceeding. The paralegal’s affidavit is marked as “solicitor’s eyes only” confidential information and states that schematics and source code for the Carku products at issue in the US proceeding were provided to NOCO’s US lawyers. NOCO asserts it was given limited information, which did not include Mr. Cheng’s deposition or evidence. Furthermore, I expect that Carku and certain Moving Defendants who were also parties to the US proceeding would have known more about the technical distinctions between Carku’s products than NOCO, yet the Moving Defendants’ Canadian counsel had to conduct an investigation after receiving Dr. Wood’s supplemental affidavit, and it took almost two weeks to complete.
[66] For the foregoing reasons, I am satisfied that the Havi factors favour admitting Dr. Wood’s supplemental affidavit, notwithstanding that it post-dates cross-examinations. NOCO is granted leave to file Dr. Wood’s supplemental affidavit.
V. The Moving Defendants’ motion for summary trial A. Overview of the parties’ submissions [67] The Moving Defendants submit there has been a palpable culture shift to summary disposition, including in patent cases. In 2014, the Supreme Court of Canada issued its decision in Hryniak v Mauldin, 2014 SCC 7 [Hryniak], which states that rules of summary disposition should be “interpreted broadly, favouring proportionality and fair access to the affordable, timely and just adjudication of claims”: Hryniak at para 5.
[68] The Moving Defendants submit the issues on this motion are simple, straightforward and suitable for summary adjudication. The Court need only consider one representative product, three documents, and one patent claim. The experts disagree on infringement; however, their disagreement turns on the proper construction of claim 1, which is a question of law for the Court to decide. According to the Moving Defendants, once the Court construes claim 1, there is no dispute on how that construction would be applied to the T8 Pro to determine whether it infringes the 782 Patent.
[69] The Moving Defendants argue that their motion follows the instruction at paragraph 29 of Bauer Hockey Ltd v Sport Maska Inc (CCM Hockey), 2020 FC 624 [Bauer], where the Court encouraged summary trial following a patent trial that turned on claim construction:
[29] The trial lasted 21 days. Nevertheless, as these reasons will show, the case largely