Molo Design, Ltd v. Chanel Canada Ulc

Molo Design, Ltd v. Chanel Canada ULC
Court (s) Database
Federal Court Decisions
Date
2024-08-14
Neutral citation
2024 FC 1260
File numbers
T-379-21
Decision Content
Date: 20240814
Docket: T-379-21
Citation: 2024 FC 1260
Ottawa, Ontario, August 14, 2024
PRESENT: Mr. Justice McHaffie
BETWEEN:
MOLO DESIGN, LTD
Plaintiff
and
CHANEL CANADA ULC, PROCÉDÉS CHÉNEL INTERNATIONAL SA, AND CHANEL SAS
Defendants
AND BETWEEN:
CHANEL CANADA ULC, CHANEL SAS, AND PROCÉDÉS CHÉNEL SARL
Plaintiffs by Counterclaim
and
MOLO DESIGN, LTD
Defendant by Counterclaim
JUDGMENT AND REASONS
TABLE OF CONTENTS
I. Overview I
II. Issues [10]
III. Overview of the Evidence
A. Lay Witnesses [13]
B. Expert Witnesses [19]
C. Physical Evidence [26]
IV. Analysis
A. The Gillette Defence [27]
B. Claims Construction
(1) Principles [32]
(2) The person of ordinary skill in the art [37]
(3) The common general knowledge of the POSITA [43]
(4) The disclosure of the ’927 Patent [62]
(5) Claim 1 [73]
(6) Asserted dependent claims [136]
C. Infringement
(1) Principles [154]
(2) Chanel’s SS21 Act 1 window décor [161]
(3) Molo has not established infringement [171]
D. Validity [200]
(1) Anticipation [203]
(2) Obviousness [285]
(3) Insufficiency and ambiguity [348]
V. Conclusion, Disposition and Costs [357]
I. Overview
[1] For about two months in early 2021, the windows of Chanel stores around the world, including in Canada, had displays incorporating elements made of large blocks of “honeycomb” tissue paper. Such paper, familiar to many from its use in festive decorations, is made by gluing multiple sheets of paper together with offset lines of adhesive. When pulled apart or expanded, the sheets form a honeycomb-like lattice that takes on a three-dimensional shape. Chanel’s window décor used structural elements made of large white and black blocks of this paper, with the last sheet of each block folded on itself and joined with hook and loop fasteners.
[2] In conceptualizing and developing its 2021 window décor, Chanel used “mood boards” that included pictures of products made by Molo Design, Ltd called “softwall” and “softblock.” Softwall and softblock are flexible partition products incorporating honeycomb lattice material, for which Molo’s co-founders, Canadian architects Stephanie Forsythe and Todd MacAllen, have received numerous international awards and recognitions. Softwall and softblock are said to embody Molo’s Canadian Patent 2,527,927 [the ’927 Patent], entitled “Flexible Wall System,” which names Ms. Forsythe and Mr. MacAllen as inventors.
[3] Molo alleges that in implementing its window décor, Chanel deliberately chose not to purchase its patented softwall and softblock products, but to use cheaper copies supplied by a former distributor of Molo’s products in France, Procédés Chénel SARL. Molo claims that in doing so, Chanel (i.e., Chanel SAS and Chanel Canada ULC) and Procédés Chénel infringed 11 of the 17 claims of the ’927 Patent.
[4] The ’927 Patent claims articles of flexible furniture including a partition having a core formed from, in essence, honeycomb lattice material, with a pair of supports at opposite ends of the core that provide rigidity to the core to provide a freestanding wall. The central issue between the parties is whether the blocks of honeycomb paper in Chanel’s window décor had a pair of supports as that term is used in the claims of the ’927 Patent. Chanel argues the blocks were simply honeycomb paper with nothing added to the ends other than fasteners, and they therefore had no pair of supports within the meaning of the patent. Molo argues the two outer sheets of the honeycomb paper blocks provided the necessary rigidity to the core and constituted a pair of supports.
[5] For the reasons set out in greater detail below, I conclude that the skilled reader of the ’927 Patent, reading the claims purposively in the context of the patent as a whole and in light of their common general knowledge, would understand the pair of supports in the claimed articles of flexible furniture to be separate elements distinct from the core, which provide rigidity to the core and are thus more rigid than the core. The honeycomb tissue paper elements used in Chanel’s window décor did not have a pair of supports within the meaning of the claims of the ’927 Patent. Molo’s arguments that the outermost sheets of Chanel’s block of honeycomb tissue paper constitute a pair of supports and not part of the core are not persuasive, and there was no cogent evidence that the outermost tissue paper sheet provided any rigidity whatsoever to the other tissue paper sheets in the block. As Chanel’s products did not comprise all of the essential elements of the claims, the ’927 Patent was not infringed. Given this conclusion, I need not address Procédés Chénel’s additional argument that all of its activities were conducted in France and it therefore cannot have infringed a Canadian patent.
[6] Chanel and Procédés Chénel also assert, both in defence and by way of counterclaim, that the ’927 Patent is invalid in light of prior art publications, including Molo’s own disclosure of partitions incorporating honeycomb paper more than a year before it filed for a patent. For the reasons set out below, I find that Claims 1 and 2 of the ’927 Patent are invalid as having been anticipated or obvious in light of the prior art.
[7] However, Claim 3 of the ’927 Patent—which claims the article of flexible furniture described above with the added limitations that the pair of supports are flexible and may be folded into a tubular configuration and that they have fasteners on them to maintain that configuration—is not anticipated, or rendered obvious, by the prior art. Claim 3 and its dependent claims are valid, but were not infringed. The asserted dependent claims are invalid as they depend from Claims 1 and 2, but not as they depend from Claim 3.
[8] Molo’s action is therefore dismissed. The counterclaims of Chanel and Procédés Chénel are granted in part. The parties may make submissions on costs in accordance with the schedule set out at the end of these reasons.
[9] I commend and thank all counsel for their thoughtful and skillful presentations.
II. Issues [10] As is common in patent cases, the primary issues in this action are those of construction, infringement, and validity. Chanel also raises a defence based on the House of Lords’ decision in Gillette Safety Razor Company v Anglo-American Trading Company Ltd (1913), 30 RPC 465 (HL). The Gillette defence has been described as a “shortcut” that may obviate the need to address other issues in some cases. I will therefore consider it before turning to the other questions.
[11] The determinative issues are therefore the following, which I will address in sequence after a brief overview of the evidence presented at trial:
Is this an appropriate case to address the Gillette defence?
How would the skilled reader construe the claims of the ’927 Patent?
Did the defendants infringe one or more of the claims of the ’927 Patent?
Are one or more of the claims of the ’927 Patent invalid?
[12] The defendants’ case on these issues was primarily led by Chanel, with Procédés Chénel adopting and relying on Chanel’s submissions. For ease, I will refer to the defendants’ arguments and positions on these questions as being those of Chanel. Procédés Chénel focused its own evidence and arguments on particular issues relevant to the infringement allegations against it, notably the questions of territoriality, inducing infringement, and infringement by common design. Given my conclusions on other issues, I need not address these questions. Nor do I need to address the question of remedies, and in particular Molo’s claims for “nominal” and punitive damages.
III. Overview of the Evidence A. Lay Witnesses [13] Molo’s primary fact witness was Stephanie Forsythe, co-founder of Molo and one of the inventors of the ’927 Patent. She spoke to the founding of Molo and its successes, the development of the softwall and softblock product, and the invention said to be reflected in the ’927 Patent. She testified to the recognitions and awards the softwall and softblock products have received, including the Museum of Modern Art [MoMA] in New York acquiring several softwall modules for their permanent collection in 2005, and the softwall being awarded one of the inaugural “Index Awards,” described as the largest design awards in the world. Ms. Forsythe also spoke to Molo’s former relationship with Procédés Chénel, subsequent disputes between the companies, and inquiries Molo received in connection with Chanel’s window décor project.
[14] Molo also called evidence from two witnesses who spoke to the qualities of Molo’s softwall and softblock products and their knowledge of awards Molo had won for the products. Catherine Osborne is an architecture and design consultant and former editor-in-chief of Azure, an architecture and design magazine. Ms. Osborne was a jury member for the “ICFF Editors Awards” at the International Contemporary Furniture Fair in New York in 2004, and awarded one of those awards to Molo. Her magazine Azure also issued awards to Molo in 2011 for various product lines, including softwall and softblock. Kigge Hvid is the founder and former CEO of the Index Awards referred to above. Ms. Hvid spoke to Molo being one of the first recipients of that award in 2005, and the qualities of the softwall that merited that distinction.
[15] Chanel called evidence from two of its employees who were involved in the window décor at the heart of this litigation, which was deployed for a Chanel fashion collection known as “Spring/Summer 2021 Act 1” [SS21 Act 1]. Benedetto Rigo is Global Head of Window Design for Chanel SAS. He spoke to Chanel’s general process for developing window treatments and to the development and implementation of the SS21 Act 1 window décor in particular. Christina Diaconescu is Head of Visual Merchandising for Chanel Canada ULC [Chanel Canada]. She spoke to Chanel Canada’s implementation and installation of the SS21 Act 1 window décor in Chanel stores in Canada.
[16] Chanel also called Bernhard Thonhauser to testify. Mr. Thonhauser is General Manager of Fest-Dekor GesmbH, an Austrian paper decoration company founded by his parents in 1982 that makes, among other things, honeycomb tissue paper. Fest-Dekor manufactured the honeycomb paper used in Chanel Canada’s SS21 Act 1 window décor. Mr. Thonhauser spoke to Fest-Dekor’s business and products, currently and historically, including the processes and machines used to produce honeycomb tissue paper.
[17] Procédés Chénel called evidence from its Managing Director, Sophie Chénel. Ms. Chénel spoke to her family’s decoration business, originally founded in 1896 by her great grandfather and now carried on by Procédés Chénel, and its current product lines. She addressed Procédés Chénel’s role as a distributor for Molo between 2007 and 2009, the subsequent disputes between the companies, and Procédés Chénel’s involvement in supplying the honeycomb paper elements for Chanel’s SS21 Act 1 window décor.
[18] Finally, Chanel also filed affidavit evidence, without objection or cross-examination, from Nathaniel E. Frank-White, a Records Request Processor at the Internet Archive. Mr. White’s affidavit speaks to the nature of the Internet Archive, its Wayback Machine service, and exhibits copies of certain archived files from the Internet Archive.
B. Expert Witnesses [19] As discussed further below, the parties agree that the ’927 Patent is directed to a person skilled in industrial design. Molo and Chanel each called an experienced industrial designer to give expert evidence to assist the Court in performing its task of understanding the ’927 Patent and the prior art.
[20] Molo’s expert, Paul Hatch, has over 25 years’ work experience in the area of product design and industrial design, acting as both an industrial designer and a consultant in the area. He has received numerous design awards over the years, including being nominated into the Academy of Fellows of the Industrial Designers Society of America. He is a named inventor on many design and utility patents, covering a wide range of products including power tool handles, ring binder mechanisms, food product dispensers, and vision measurement devices. He holds an Honours Bachelor of Arts degree in Industrial Design from the University of Northumbria at Newcastle, United Kingdom, and is currently pursuing a doctorate in Learning Sciences at the University of Illinois in Chicago, where he acts as a member of Adjunct Faculty.
[21] Mr. Hatch was qualified, without objection, as an expert in industrial design with particular expertise in product design, retail displays, and designing, with different and unconventional materials, with further expertise in paper and card folding fabrication, and as an expert in running a multi-disciplinary design team comprising industrial designers and mechanical engineers.
[22] Chanel’s expert, Steven C. Visser, is a Full Professor in the Industrial Design Program at Purdue University, where he has been teaching since 1989 after working briefly as an industrial designer in private industry. Prof. Visser also runs his own industrial design consultancy business. He has received numerous awards and recognitions in the area of design, including being named the “World’s 7th Best Designer in 2021” by DAC World’s Leading Designers. Prof. Visser is a named inventor on a number of design and utility patents, covering products ranging from video game controllers to clamps to chair support structures to soft tissue therapy tools. He received a Master of Fine Arts in Industrial Design in 1988 from the University of Illinois at Urbana-Champaign.
[23] Prof. Visser was qualified, without objection, as an expert in industrial design, including the design of flexible furniture, as well as a wide variety of products, including those made of flexible materials, such as folded paper, felt, rubber, plastics, and sheet metal.
[24] Each expert prepared three reports, which were admitted into evidence without objection and taken as read. Mr. Hatch prepared an initial report dated March 20, 2023, addressing construction and infringement [Hatch First Report]; a further report dated May 10, 2023, addressing validity and responding to Prof. Visser on issues of construction and validity [Hatch Second Report]; and a reply report dated May 24, 2023, responding to Prof. Visser’s report on construction and infringement [Hatch Third Report]. Prof. Visser prepared an initial report dated March 20, 2023, addressing construction and validity [Visser First Report]; a further report dated May 10, 2023, addressing the Gillette defence and infringement and responding to the Hatch First Report [Visser Second Report]; and a reply report dated May 24, 2023, responding to the Hatch Second Report [Visser Third Report].
[25] Overall, I found that each of the experts sought to convey their expertise objectively and to assist the Court in understanding the field of industrial design and the ’927 Patent in particular. While the cross-examination of each expert revealed limitations and weaknesses in their evidence, this I not a case where I consider that the evidence of one expert should be entirely preferred over the other. That said, as discussed in further detail below, I found that some of the opinions of Mr. Hatch were not well supported and were at times inconsistent with the patent, other aspects of his own opinions, or physical realities. Ultimately, the combined evidence of the two experts helped put the Court in the position to make its own determinations on the relevant legal issues from the perspective of the skilled reader of the ’927 Patent.
C. Physical Evidence [26] In addition to the testimony and reports of the foregoing witnesses, the parties filed a variety of documentary and other exhibits. These included physical samples of the Chanel products said to infringe the ’927 Patent, Molo’s softwall and softblock products said to embody it, and other articles incorporating honeycomb paper said to form part of the prior art or demonstrate its nature: Exhibits 11–14, 45–46, 58–59, 61–67, 70–73, 78–79, 131–136. These physical exhibits, often accompanied by demonstrations in the Courtroom, assisted the Court in understanding the nature of the various products and their properties.
IV. Analysis A. The Gillette Defence [27] If a defendant’s product is the same as, or not patentably distinct from, a product in the prior art, then the defendant cannot be infringing a valid patent: either the patent does not cover the defendant’s product or, if it does, it must also cover the prior art and be invalid as lacking novelty: Western Oilfield Equipment Rentals Ltd v M-I LLC, 2021 FCA 24 at paras 75–76, citing Gillette at p 480 and JK Smit & Sons, Inc v McClintock, 1939 CanLII 50 (SCC), [1940] SCR 279 at p 286. This principle allows a defendant to respond to an allegation of infringement by asserting a “Gillette defence,” i.e., that it is simply practicing the prior art, and therefore cannot be liable regardless of any issues of construction or validity.
[28] As Justice Locke of the Federal Court of Appeal has noted, the Gillette defence may permit the defendant, and the Court, a “shortcut” around the steps of construing the claims of a patent, and then determining whether the claims are valid and infringed: Western Oilfield at para 77. At the same time, where the Court needs to address issues of construction and validity in any event, there may be little practical value in addressing the Gillette defence, since no “shortcut” has been achieved: Western Oilfield at paras 78–79. Indeed, it may sometimes be preferable not to take the shortcut: Western Oilfield at para 79.
[29] Chanel argues the paper elements used in the Chanel window displays associated with the SS21 Act 1 collection were simply honeycomb tissue paper blocks that are not patentably distinct from the prior art, including honeycomb tissue paper blocks products offered by Fest-Dekor and Molo’s own prior publications. It argues the Gillette defence applies to require Molo’s claim to be dismissed, regardless of how the construction issues might affect the infringement or invalidity analyses.
[30] However, in addition to defending Molo’s claim, Chanel and Procédés Chénel have each brought counterclaims seeking declarations that the claims of the ’927 Patent asserted by Molo are invalid. Those counterclaims are not dependent or conditional on the outcome of Molo’s infringement claim. To determine the counterclaims, the Court must determine whether the asserted claims are valid, which requires the Court to construe those claims.
[31] As a result, consideration of the Gillette defence would ultimately be “superfluous and unnecessary,” adding an analytical step rather than creating a beneficial shortcut: Western Oilfield at para 79. I will therefore address the usual issues of construction, infringement, and validity of the’927 Patent, rather than embarking on a comparison of Chanel’s product to the prior art in the context of its Gillette defence. I note that Chanel’s anticipation and obviousness arguments raise the same prior art it raises for its Gillette defence, such that some of the same issues arise in any case.
B. Claims Construction (1) Principles [32] The claims of a patent define the monopoly granted to the inventor: Patent Act, RSC 1985, c P‑4, s 27(4). How the claims are interpreted or construed therefore affects the scope of the monopoly, which may in turn affect whether the claims are valid and/or infringed.
[33] The general principles governing claims construction in Canada have remained fairly constant since they were established by the Supreme Court of Canada in the companion cases of Free World Trust v Électro Santé Inc, 2000 SCC 66 and Whirlpool Corp v Camco Inc, 2000 SCC 67. These cases, and the subsequent cases of the Federal Court of Appeal that have interpreted and applied them, set out the following relevant principles:
a)Patent claims are construed through the eyes of a person of ordinary skill in the art [POSITA], in light of their common general knowledge [CGK], as of the date the patent is published: Free World Trust at paras 31(e), 51, 53; Whirlpool at para 55; Tearlab Corporation v I-Med Pharma Inc, 2019 FCA 179 at para 32.
b)The Court must adhere to the language of the claims, which promotes fairness and predictability, but this claim language is to be read in an “informed and purposive” way: Free World Trust at paras 31(a)–(c), 39–40; Whirlpool at paras 49(e)–(g), 52, 54; Tearlab at para 31.
c)Purposive construction involves looking at and understanding the words and terms used in the claims in the context of the whole patent specification, including the disclosure and the claims. While the claims are to be read and understood in the context of the disclosure, the disclosure should not be used to enlarge or contract the scope of the claim as written: Whirlpool at paras 48, 49(f), (h), 52; Biogen Canada Inc v Pharmascience Inc, 2022 FCA 143 at paras 71–73; Tetra Tech EBA Inc v Georgetown Rail Equipment Company, 2019 FCA 203 at paras 86, 104, leave to appeal ref’d 2020 CanLII 27687 (SCC); Tearlab at para 33; ViiV Healthcare Company v Gilead Sciences Canada, Inc, 2021 FCA 122 at paras 57–60.
d)The language of the claims is to be read with a mind willing to understand and not one desirous of misunderstanding, in the sense the inventor is presumed to have intended and sympathetic to accomplishing their purpose, but without resort to extrinsic evidence of the inventor’s intent: Free World Trust at paras 31(e), 44, 51, 61–67; Whirlpool at paras 49(c), (f); Tearlab at para 31.
e)The claim language, purposively construed, will show that some elements of the claimed invention are essential while others are non-essential. The main purpose of claims construction is to identify these essential elements: Free World Trust at paras 31(e), 51–60; Whirlpool at paras 45–48; Biogen at para 74.
f)Claims construction is undertaken before considering infringement or validity, and a single construction is to be adopted for all purposes without regard to whether the construction will affect those issues: Whirlpool at paras 43, 49(a)–(b); Tearlab at para 34.
g)Specific principles guiding claims construction may apply, such as the presumption that different claims and/or claim elements are not redundant but have distinct and useful meanings (the presumption of claim differentiation), the presumption that the same word is to be given the same meaning throughout the claims (the presumption of claim consistency), and the corollary presumption that different words have different meanings. These presumptions are rebuttable where a purposive construction of the claim language requires: Whirlpool at para 79; Tetra Tech at paras 113–115; Nova Chemicals Corporation v Dow Chemical Company, 2016 FCA 216 at paras 82–83, leave to appeal ref’d 2017 CanLII 21418 (SCC); Seedlings Life Science Ventures, LLC v Pfizer Canada ULC, 2020 FC 1 [Seedlings (FC)] at para 75, aff’d 2021 FCA 154 [Seedlings (FCA)] at paras 18–21, 32; Ratiopharm Inc v Canada (Health), 2007 FCA 83 at para 33.
[34] With respect to the principle summarized at letter (c) above, Molo submits that it is an error to refer to the disclosure of the patent unless the language of the claims is itself ambiguous. This argument has support in cases such as Mylan Pharmaceuticals ULC v Eli Lilly Canada Inc, 2016 FCA 119 [Mylan Tadalafil] at para 39, Tetra Tech at para 103 and, arguably, Tearlab at para 33. However, my reading of the most recent cases of the Federal Court of Appeal is that they recognize and reiterate that claims construction is always undertaken in the context of the patent as a whole, and that the disclosure “must be considered when construing claims,” even for words “that would appear at first glance to be simple and unambiguous when reading only the claims”: Biogen at paras 71–73; Western Oilfield at paras 15–16; ViiV Healthcare at para 58; dTechs EPM Ltd v British Columbia Hydro and Power Authority, 2023 FCA 115 at paras 69–70, 81. This, to my understanding, is consistent with the general approach to construction set out in Whirlpool and Free World Trust, and the rejection in Whirlpool of a “plain and unambiguous meaning” approach to claims construction in favour of purposive construction: Whirlpool at paras 40, 49(f), (g), 52.
[35] Of course, this is not to abandon the language of the claims in favour of the disclosure, or to permit a rewriting of the claims based on the discussion set out in disclosure: Whirlpool at para 52. That would go beyond purposive construction. It is simply to recognize that the words and terms used in the claims of a patent must be purposively understood in their context, which includes the patent as a whole.
[36] In any event, the disputed terms of the ’927 Patent are not unambiguous in the sense that the POSITA reviewing them in light of the CGK would readily understand them without consideration of their context as set out in the disclosure. Indeed, both experts referred to the disclosure in their construction of the claims, to understand what the inventors intended to convey through the language set out in the claims. In my view, they were right to do so.
(2) The person of ordinary skill in the art [37] At the outset of the ’927 Patent, under the heading “Field of the Invention,” the inventors state that “[t]he present invention relates to partitions”: ’927 Patent, para 1. Based on this reference, and the discussion of partitions in the disclosure, Molo argues that the technical field of the patent is partitions in particular, and not the broader field of furniture, even though the claims refer to an “article of flexible furniture.” It argues the field of the invention is determined by the disclosure and not by the claims, citing E Mishan & Sons Inc v Supertek Canada, 2014 FC 326 [Supertek] at paras 26–27, 71, 137–139, aff’d 2015 FCA 163.
[38] I disagree. I do not read Supertek as establishing, either explicitly or implicitly, a rule that the technical field of a patent is defined exclusively by the disclosure and not its claims. Rather, Justice Hughes was noting that despite narrower claims limited to water hoses, the patent disclosure in that case expressly referred to hoses being used to transport gases, an issue that became relevant, in particular, to assessing differences with a prior art reference to a gas hose: Supertek, at paras 26–27, 137–143. In my view, it would be absurd to conclude that the field of an invention does not take into account the very claims that set out “the subject-matter of the invention for which an exclusive privilege or property is claimed”: Patent Act, s 27(4). As discussed in detail below, the claims of the ’927 Patent are directed to an article of flexible furniture including a partition.
[39] There is also no evidence before me that “partition design” exists as a narrow field of art distinct from the industrial design of other furniture, such that a partition designer might view their field as independent from, and uninfluenced by, other furniture design. To the contrary, as discussed below, both experts described the person skilled in “the art” of the ’927 Patent as being someone having skill and experience in furniture design, with neither saying that the POSITA’s skill, knowledge, or experience would be limited to partitions to the exclusion of other furniture: Hatch First Report, para 18; Visser First Report, para 35.
[40] I therefore agree with Prof. Visser that the field of the ’927 Patent is that of furniture, and in particular the industrial design of furniture, and not simply that of “partitions”: Visser First Report, paras 31–34. That said, defining the field as “furniture” or “partitions” does not ultimately affect the identification of the POSITA, an assessment of their CGK, or the construction, infringement, and validity issues discussed below.
[41] The experts agree that the ’927 Patent is directed to someone with training and experience in the area of industrial design, and in particular furniture design. Mr. Hatch considered that person would have a bachelor’s degree in industrial design or mechanical or industrial engineering, with two to three years’ experience designing or manufacturing products such as partitions and furniture using a variety of materials: Hatch First Report, para 18. Prof. Visser considered they would have a university degree in architecture, industrial design, or a related field, with about two years’ experience in designing furniture and/or partitions: Visser First Report, para 35. While Mr. Hatch disagreed with Prof. Visser that the POSITA would include an architect (a possibility Prof. Visser may have included in recognition that the inventors are themselves architects), nothing material turns on this disagreement: Hatch Second Report, para 17; Visser Second Report, para 52.
[42] I accept the experts’ view that the skilled reader of the POSITA is, in essence, an industrial designer with training and experience in the design of furniture and partitions in particular.
(3) The common general knowledge of the POSITA [43] The CGK is what is generally known and accepted without question by the bulk of those who are engaged in the particular art. It does not include all information available to the POSITA, or even all information that may be obtained through a reasonably diligent search. Rather, it is limited to the “common stock of knowledge relating to the art” of the POSITA. It is thus a subset of the knowledge that makes up the “prior art” or the “state of the art”: Gemak Trust v Jempak Corporation, 2022 FCA 141 at paras 93–100, citing British Acoustic Films LD v Nettelfold Productions (1936), 53 RPC 221 at p 250; Mylan Tadalafil at paras 23–25; Hospira Healthcare Corporation v Kennedy Trust for Rheumatology Research, 2020 FCA 30 at para 84, leave to appeal ref’d 2020 CanLII 102984 (SCC).
[44] The CGK must be considered at the relevant date, since the POSITA’s knowledge may change over time and they are “reasonably diligent in keeping up with advances in the field”: Whirlpool at para 55. For issues of construction, the relevant date is the date of publication of the patent, in this case September 18, 2006. For issues of obviousness, the relevant date is the priority date, in this case May 18, 2005. Neither party asserted that there was a relevant difference in the CGK of the POSITA between these dates: Visser First Report, para 85.
[45] The experts agreed on some aspects of the CGK of the POSITA and disagreed on others, notably the extent to which collapsible lattice or honeycomb structures would have been part of the CGK.
[46] Both experts recognized that the POSITA would be familiar with various types of rigid and flexible partitions, including fixed and moveable partitions: Hatch First Report, paras 28–29; Visser First Report, paras 39–62; Visser Second Report, paras 53–54. Mr. Hatch and Prof. Visser gave examples of known partitions that are (a) permanently fixed in a particular spot and in a given size and structure, like a semi-transparent room divider or a decorative concrete block partition; (b) fixed in a particular spot but expandable or retractable, like an “accordion” room divider common in office spaces or a curtain divider in a hospital room; or (c) fully portable, such as partition systems used to create or subdivide spaces at trade shows or decorative folding screens. Prof. Visser referred to the second and third categories as “moveable” partitions, with portable partitions being a subset of moveable partitions.
[47] The experts also agreed that the POSITA would be familiar with the properties of various materials used in partitions and furniture, including rigid materials such as glass and wood, and flexible materials such as paper, cardboard, or fabric: Hatch First Report, paras 18, 29, 32–34; Visser First Report, paras 40–47; Visser Second Report, paras 54, 56. The experts each specifically recognized that the CGK of the POSITA would include knowledge regarding the properties of paper and how the strength and rigidity of paper may be affected by folding, each giving the example of a folded piece of paper standing on its edge: Hatch First Report, para 32; Visser First Report, para 64.
[48] However, Mr. Hatch disagreed with Prof. Visser’s opinion that the POSITA would be familiar with items with lattice structures and methods of making them, and considered that Prof. Visser improperly conflated “hexagonal honeycomb structures” with “lattice structures.”
[49] Prof. Visser included in his discussion of the CGK information about honeycomb lattice structures, including the honeycomb tissue paper commonly used to make festive decorations. As illustrative examples, he referred to Christmas decorations and greeting cards that are stored flat and then unfolded in a circular manner to form three-dimensional shapes such as a bell, a ball, or a tree. Such honeycomb tissue paper can be seen at the top and bottom of the greeting card below, which Prof. Visser dates from around 1940. Prof. Visser opined that furniture made with such honeycomb structures was also known as part of the CGK at the relevant time, providing an example of a honeycomb lamp, also depicted below, apparently seen on a website dating from 2004.
[50] It is common ground that honeycomb paper of this sort is made by gluing sheets of paper together with lines of adhesive that are offset at regular intervals. When pulled apart, the sheets stick together at the glue lines and draw apart where not glued, creating the lattice structure seen in the pictures above. According to Ms. Forsythe, such paper has been around “for hundreds, if not thousands of years”: Transcript, p 127–128; see also Visser First Report, Appendix 43.
[51] Prof. Visser’s discussion of the CGK also referred to honeycomb structures being used in collapsible window shades, referring to a product sold since the 1980s by the company Hunter Douglas known as Duette Honeycomb Shades: Visser First Report, paras 63–75. The following table from Mr. Hatch’s responding report shows excerpts from the illustrations of these blinds in Prof. Visser’s report:
[52] Mr. Hatch recognized that the POSITA may have encountered decorative ornaments made with honeycomb paper as a layperson, but contended they would not have been familiar with methods of making either the paper or such ornaments, and would not think to look to decorative ornaments or window shades when tasked with creating a partition: Hatch Second Report, paras 19–22. He similarly recognized that the POSITA would have been aware of hanging blinds using a hexagonal honeycomb structure, but asserted that they would be unlikely to use these as a reference when designing a freestanding partition: Hatch Second Report, paras 39–41.
[53] Having reviewed the evidence, I conclude that the CGK of the POSITA would include knowledge of both the existence of honeycomb paper and its use in festive decorations. Mr. Hatch recognizes that the POSITA may have been aware of these matters “as a layperson.” While the CGK is generally considered in the context of the particular field—the “common stock of knowledge relating to the art”—I do not understand the hypothetical POSITA to be so exclusively focused on their own art that they are unaware of the common knowledge of those who are not skilled in the art. The hypothetical “person of ordinary skill in the art” is, among other things, a person. If the average layperson has a particular body of common knowledge, there is no reason to exclude that knowledge from the CGK of the POSITA simply because they are more knowledgeable in their particular art. Usually, such knowledge is not particularly relevant to the construction or assessment of a patent. But where it is, the fact that knowledge is not exclusively held by the POSITA does not bring it outside the CGK.
[54] Beyond this, both experts agreed the POSITA of the ’927 Patent would have particular knowledge with respect to the physical properties of rigid and flexible materials, including paper and the “cuts, folds, and bonds” of paper products: Hatch First Report, paras 3, 18, 21, 32–36; Visser Second Report, paras 53–58. Indeed, Mr. Hatch himself recognizes that the POSITA would have knowledge of (a) how materials, including paper materials, could be formed in manufacture, assembled, bonded, and finished; (b) common techniques used in the manufacture of mass-produced products; (c) the general principles of production techniques used in the manufacture of products utilizing flexible materials; (d) how to create products by combining parts of similar or different materials; (e) methods of bonding, including glue and glue strips; (f) commonly used technologies and methods to fold paper products, including those made of tissue paper; and (g) how cuts, folds, and creases can be applied in manufacture and how to design the machinery to do so. With this focused knowledge and interest with respect to paper products and their properties, well beyond that of the layperson, it is in my view inconsistent to suggest that the POSITA would somehow be unaware of a common mass-produced form of paper material such as honeycomb paper, or that their common knowledge would not include a basic understanding of how it is made.
[55] With respect to the use of lattice structures in furniture in particular, there are certainly several examples in the evidence of furniture with lattice structures dating from before May 2005, including the “Honey-Pop Chair” made of honeycomb parchment paper in 2001 by designer Tokujin Yoshioka, which is also in the collection of the MoMA (Exhibits 47, 81), and the “K-Bench” designed by Charles Kaisin in 2002, made of an expandable honeycomb polypropylene material (Hatch First Report, Appendices 36–38). I conclude that whether such structures would be in the CGK of the POSITA is ultimately not material, as they form part of the prior art or state of the art for purposes of the obviousness analysis.
[56] Mr. Hatch also sought to draw a distinction between the lattice structures of honeycomb paper and those that have hexagonal honeycomb structures. The former have thin lines of adhesive and thus have cells that are more diamond-shaped; the latter have a greater degree of adhered overlap (i.e., thicker lines of adhesive), and therefore have cells that are more hexagonal in shape: Hatch Second Report, paras 23–35; Transcript, pp 1061–1067. Mr. Hatch considered that the POSITA would understand there are considerable mechanical and structural differences between the two, such that they would view them as distinct from each other.
[57] Mr. Hatch asserted that the thicker lines of adhesive mean that hexagonal honeycomb structures gain greater strength from the wider doubled area, and that they involve a “sharp bend” of the sheet away from the adhesive. He contrasted this with sheets in a lattice structure such as honeycomb paper, which he described as flexing and curving rather than bending: Hatch Second Report, paras 29–30. In Mr. Hatch’s opinion, the POSITA would know that hexagonal honeycomb structures are therefore less flexible than lattice structures: Hatch Second Report, para 33. Mr. Hatch considered that the cell shapes of both the Hunter Douglas window blinds and the K-Bench showed a hexagonal honeycomb structure rather than a lattice structure: Hatch Second Report, paras 38–39.
[58] I agree with Prof. Visser that Mr. Hatch’s asserted distinction between these types of lattice is arbitrary and unsupported. The distinction between what Mr. Hatch refers to as a hexagonal honeycomb structure and a lattice structure is essentially the width of the overlap between the sheets, i.e., the width of the glue lin