ABB Technology AG v. Hyundai Heavy Industries Co., Ltd.

ABB Technology AG v. Hyundai Heavy Industries Co., Ltd.
Court (s) Database
Federal Court Decisions
Date
2013-09-11
Neutral citation
2013 FC 947
File numbers
T-735-11
Notes
A correction was made on February 13, 2014
Decision Content
Date: 20130911
Docket: T-735-11
Citation: 2013 FC 947
Ottawa, Ontario, September 11, 2013
PRESENT: The Honourable Mr. Justice Barnes
BETWEEN:
ABB TECHNOLOGY AG,
ABB INC. AND
ABB AG
Plaintiffs
and
HYUNDAI HEAVY INDUSTRIES CO., LTD.
Defendant
REASONS FOR JUDGMENT AND JUDGMENT
[1] In this patent infringement action the Plaintiffs, ABB Technology AG, ABB Inc. and ABB AG (collectively ABB), allege that the Defendant, Hyundai Heavy Industries Co., Ltd. (Hyundai), has infringed Canadian Letters Patent No. 2,570,772 (772 Patent) and Canadian Letters Patent No. 2,567,781 (781 Patent). The specific acts ABB complains about involve the sale by Hyundai of several medium voltage gas-insulated switchgear (GIS) assemblies to British Columbia Transmission Corporation and/or to British Columbia Hydro Authority (collectively BC Hydro). Those GIS assemblies are alleged to infringe a number of essential features claimed in the 772 and 781 Patents. The Defendant has counterclaimed against the Plaintiffs seeking declarations of invalidity with respect to both patents. This action has been bifurcated and only the liability issues are now before the Court.
[2] The parties are agreed about the following facts:
a. The Plaintiff ABB Technology AG (“ABB Technology”) is a Swiss corporation having a principal place of business at Affolternstrasse 44, CH-8050 Zürich, Switzerland.
b. The Plaintiff ABB Inc. (“ABB Canada”) is a Canadian corporation having a principal place of business at 8585 route Transcanadienne, Saint-Laurent, Montreal.
c. The Plaintiff ABB AG (“ABB Germany”) is a German corporation having a principal place of business at Kallstadter Str. 1, Mannheim, 68309, Germany.
d. The Defendant is a corporation incorporated under the laws of Korea and having a principal place of business at 1 Junha-dong, Dong-gu, Ulsan-si, Republic of Korea.
e. The application for the ‘772 Patent was filed on June 27, 2005, and laid open for public inspection on January 5, 2006. As well, the ‘772 Patent claims priority to: German Patent Application No. 10 2004 031 090.0, filed June 28, 2004; and, German Patent Application No. 10 2005 029 600.9, filed June 23, 2005.
f. The ‘772 Patent issued on August 10, 2010, naming Harald Fink and Maik Hyrenbach as inventors and bearing the title “Gas-Insulated Medium-Voltage Switchgear”. ABB Technology AG is recorded in the Canadian Intellectual Property Office’s records as the owner of this patent.
g. The application for the ‘781 Patent was filed on June 7, 2005, and laid open for public inspection on December 22, 2005. As well, the ‘781 Patent claims priority to German Patent Application No. 10 2004 028 275.7, filed June 9, 2004.
h. The ‘781 Patent issued on August 10, 2010, naming Kasimir Mai and Maik Hyrenbach as inventors and bearing the title “Gas-Insulated Switchgear Assembly having a Switch-Position Inspection Window”. ABB Technology AG is recorded in the Canadian Intellectual Property Office’s records as the owner of this patent.
i. The Defendant has sold HMGS-G82 switchgear assemblies in Canada, continues to market its C-GIS switchgear in Canada, is completing the installation and commissioning of its switchgear assemblies for BC Hydro and plans on bidding on future projects.
j. The HMGS-G82 is a medium-voltage gas-insulated switchgear assembly.
k. SF6 is the insulating gas used in the HMGS-G82.
l. The HMGS-G82 comprises three phases.
[3] There are numerous issues that remain in contention between the parties including ownership of the patents, construction of the patent claims and validity and infringement of the patents. For the reasons that follow it is unnecessary to deal with every issue in dispute.
The Trial Witnesses
[4] In the course of this trial testimony was received from seven witnesses. ABB called three witnesses and Hyundai called four witnesses.
[5] Dr. Maik Hyrenbach works for ABB AG as a principal engineer in its research and development department. He is one of the inventors named in both patents. Dr. Hyrenbach provided evidence about the technologies relevant to the patent claims and about the steps taken to arrive at the patented technology. He also testified about the processes that were followed at ABB to transfer ownership of the patents.
[6] Christoph Bartoszek also testified on behalf of ABB. He is employed by ABB AG as a sales manager and gave evidence about ABB’s business in Canada including its history as a long-standing supplier of switchgear to BC Hydro.
[7] Mr. David Leone provided expert opinion evidence on behalf of ABB on the issues of construction, validity and infringement. To that end he produced two reports upon which he was cross-examined.
[8] Mr. Sung Geil Kim (Mr. Kim) testified in Korean and his evidence was ably interpreted by Mr. Albert Kim. Mr. Kim is employed by Hyundai as an engineer. He testified about his responsibilities for the design and development of Hyundai’s medium voltage GIS including the supply of GIS assemblies to BC Hydro.
[9] Mr. Albert Tymchyshyn was called by Hyundai to give evidence about its GIS equipment supplied to BC Hydro. Mr. Tymchyshyn is employed by SNC-Lavalin Engineering (SNC) in Vancouver. SNC has ongoing contract responsibilities with BC Hydro in connection with the Kidd 1 electrical substation where Hyundai’s GIS has been installed. Mr. Tymchyshyn testified mainly about matters pertaining to the alleged infringement of the 781 Patent.
[10] Expert evidence on behalf of Hyundai was provided by Mr. Tim Molony and by Mr. Stig Nilsson. Messrs. Molony and Nilsson authored three reports dealing with claims construction, validity and infringement and they were each cross-examined with respect to their opinions.
[11] No objections were taken to the admissibility of any of the expert opinion evidence and I am satisfied that each of those witnesses was qualified to speak to the issues addressed in their respective opinion reports and in their testimony.
Ownership of the Patents
[12] Hyundai asserts that none of the Plaintiffs has an interest in the Patents in suit sufficient to prosecute this action or to support a claim to damages. The Patents, however, were issued in Canada to ABB Technology AG supported by assignments executed by the named inventors. While there may have been irregularities concerning the internal corporate procedures for effecting ownership transfers of these Patents, the evidence before me is insufficient to establish that none of the Plaintiffs has a sufficient interest to afford it standing. One problem with Hyundai’s allegation, among others, is that it rests on a point of German law that has not been established to my satisfaction. In the result, there is no basis for me to find that these Patents should not have been issued to ABB Technology AG.
Background to the Technology and to the Patents
[13] Switchgear can refer to a broad range of electro-mechanical devices that control the flow of electricity. A switchgear assembly is an assemblage of components intended to safely control the flow of electrical power from the supply side (incoming) to the electrical load side (outgoing). The constituent components of a switchgear assembly will typically include circuit breakers, buses,
disconnect switches, grounding switches, instrument transformers, cable terminators and control devices.
[14] A major safety concern with higher voltage switchgear assemblies is the potential for arc faults. Electricity can be conducted through air and when a current arcs between two separated switchgear components the resulting flash-over can be explosive and life-threatening. For this reason air-insulated switchgear (AIS) components must be sufficiently separated or, when contact is required, sufficiently tight that arc faults do not arise.
[15] In the 1930s, gas insulated technology began to be applied to high voltage switchgear. This method involved the encapsulation of high voltage switchgear assemblies in gas tight compartments. These systems typically contain sulphur hexafluoride (SF6) – a gas that has excellent insulating and arc extinguishing properties.
[16] In a GIS system the components can be brought into much closer proximity because the risk of an arc fault is considerably reduced. In terms of space saving the advantage of GIS was considerable, particularly at higher voltages where greater separation of parts is required.
[17] In the 1980s, GIS technology began to be introduced in medium voltage applications (typically 1 kV to 52 kV) and to this day it continues to displace older AIS systems.
[18] The evidence before me indicates that there is no common international standard that applies to GIS and there is apparently no Canadian or United States standard applying specifically to medium voltage GIS (see Molony report at para 44). Much of what is required in the design of medium voltage GIS is driven by end-user requirements. This has led to some differences between European and North American practices. This point is made by Mr. Leone at paras 49 and 50 of his initial report:
49. Specific markets and customers may dictate which combination of these functions are required in any given power switchgear assembly. Many of the specific requirements are driven by service and maintenance protocols dictated by local standards and customer practices. These service and maintenance protocols are important due to the high risk of personal injury at the elevated voltage and power levels.
50. For example, the North American market, which is commonly referred to as the ANSI market, has a practice requiring that electrical equipment or conductors operating at more than 600V must have a provision for grounding while maintenance is being performed, in addition to a provision for circuit isolation. The European market, which is commonly referred to as the IEC market, has a practice that requires a provision for circuit isolation and does not typically require the additional provision for grounding during maintenance operations. On the other hand for example, a common requirement for both markets is the provision for a “visible-break” in order to verify circuit isolation.
[Footnotes omitted]
Essentially the same point is made by Mr. Nilsson at para 11 of his validity report:
11. The general principles of operation are common throughout the World and are continuously being harmonized through standardization activities. However, each region will have different codes and acceptable practices, terminology, and even within a region, there is no complete harmonization of practices. For example, practices in Europe are different in some respects than those in North America and within North America, the practice of one generating authority (e.g. electric utilities in the state of New York) will be different in some respects from others (e.g. electric utilities in the state of California). For that reason, among others, each installation is considered a custom design project.
[19] In switchgear assemblies of the sort described by the patents in suit a principal safety component is the circuit breaker. The circuit breaker disconnects the supply of power if an abnormal or fault condition arises. If maintenance of the circuit breaker is required, it must be disconnected from the circuit. In GIS this can be accomplished in different ways all of which involve grounding means.
[20] In Europe it is a common practice to ground the circuit by closing the circuit breaker (grounding through the circuit breaker). In North America this is considered to be unsafe because the circuit breaker may open and disconnect the cables from the ground and because it is not possible to visually verify the contacts within the circuit breaker. In North America this has led to the practice of incorporating a separate and potentially visible grounding switch below the circuit breaker.
[21] The patents in suit address two particular market requirements for GIS assemblies.
[22] The 772 Patent acknowledges the North American desire for redundant grounding between the circuit breaker and the outgoing cables and the corresponding need to introduce “both an additional isolator and an additional ground conductor” to the GIS assembly. This, in turn, created a problem of dimensioning the GIS gas compartment, which the inventors claim to have solved by enlarging the circuit breaker compartment in the direction of the cable connections.
[23] The 781 Patent offers a solution to the problem of visually verifying switch positions in an enclosed GIS capsule. According to the patent, the solution was to fit an inspection window into the housing of the GIS assembly in a line of sight to the switch. Visualization of the switch position was enhanced by the incorporation on the moveable switch element of coloured or topographical markings that act as reference points.
[24] Several of the terms used in these patents require interpretation. These issues of construction were addressed by Mr. Leone on behalf of ABB and by Messrs. Nilsson and Molony on behalf of Hyundai.
Principles of Patent Construction
[25] Patent claims must be interpreted in a purposive way. They are construed through the eyes of the person skilled in the art to which the patent relates. A purely literal construction may thus give way to a contextual or nuanced interpretation in keeping with the common knowledge and experience of the person of skill. Part of the construction exercise is the identification of the essential elements of the invention. Sorting out the essential from the non-essential is necessary because an infringement may arise notwithstanding the omission or substitution by the infringer of non-essential features: see Free World Trust v Electro Sante Inc., 2000 SCC 66, [2000] 2 SCR 1024 and Western Electric Co. v Baldwin International Radio, [1934] SCR 570 at pp 586-587, 4 DLR 129 (SCC).
[26] The language of the claims is to be interpreted with the objective of achieving a fair result as between the patentee and the public: see Whirlpool Corporation v Camco Inc., 2000 SCC 67 at para 49, [2000] 2 SCR 1067. The words used in the claims may be considered with reference to the entire specification but not with a view to enlarging or contracting the claims’ language. In other words, limiting language in the claims has primacy over a more expansive description of the invention in the specification. While the Court must be sympathetic to the presumed intent of the inventor that principle does not permit an interpretation that effectively ignores the claims language. The balance required is expressed in the following passage from Free World Trust, above, at para 51.
51 This point is addressed more particularly in Whirlpool Corp. v. Camco Inc., [2000] 2 S.C.R. 1067, 2000 SCC 67 and Whirlpool Corp. v. Maytag Corp., [2000] 2 S.C.R. 1116, 2000 SCC 68, released concurrently. The involvement in claims construction of the skilled addressee holds out to the patentee the comfort that the claims will be read in light of the knowledge provided to the court by expert evidence on the technical meaning of the terms and concepts used in the claims. The words chosen by the inventor will be read in the sense the inventor is presumed to have intended, and in a way that is sympathetic to accomplishment of the inventor's purpose expressed or implicit in the text of the claims. However, if the inventor has misspoken or otherwise created an unnecessary or troublesome limitation in the claims, it is a self-inflicted wound. The public is [page1054] entitled to rely on the words used provided the words used are interpreted fairly and knowledgeably.
[27] ABB contends that the purposive approach requires the Court to choose an available construction that favours the validity of these patents and it cites in support the decision of this Court in Letourneau v Clearbrook Iron Works Ltd., 2005 FC 1229, [2005] FCJ No 1589 and the authorities cited therein. There is a danger, however, in applying a single interpretive principle as though it has primacy over others and, indeed, in Whirlpool, above, the Supreme Court of Canada explicitly warned against a result-oriented approach to claims construction. It is worth remembering that it is the patentee who writes the patent and, with sufficient care, should be able to avoid obvious or glaring ambiguities. Indeed the patentee has an obligation to draft the patent with sufficient clarity that competitors can know its limits: see Whirlpool, above, at para 42.
[28] Purposive construction is essentially a contextual exercise with a primary focus on the language of the claims as viewed objectively by the notional person of skill. The approach I adopt is expressed in the following passage from Whirlpool, above, at para 49:
…
A patent must therefore be given such interpretation according to s. 12 of the Interpretation Act "as best ensures the attainment of its objects". Intention is manifested in words, whose meaning should be respected, but words themselves occur in a context that generally provides clues to their interpretation and a safeguard against their misinterpretation. P.-A. Côté, in The Interpretation of Legislation in Canada [page1095] (3rd ed. 2000), puts the matter succinctly when he writes, at p. 387, "Meaning flows at least partly from context, of which the statute's purpose is an integral element" (emphasis added). To the same effect see Rizzo & Rizzo Shoes Ltd. (Re), [1998] 1 S.C.R. 27, at para. 21. These principles apply to claims construction by virtue of the Interpretation Act.
(f) While the appellants express concern that "purposive construction" may open the door to extrinsic evidence of intent, as is the case with certain types of extrinsic evidence in the United States, neither Catnic, supra, nor O'Hara, supra, goes outside the four corners of the specification, and both properly limit themselves to the words of the claims interpreted in the context of the specification as a whole.
(g) While "purposive construction" is a label introduced into claims construction by Catnic, supra, the approach itself is quite consistent, in my view, with what was said by Dickson J. the previous year in Consolboard, supra, on the topic of claims construction, at pp. 520-21:
We must look to the whole of the disclosure and the claims to ascertain the nature of the invention and methods of its performance, (Noranda Mines Limited v. Minerals Separation North American Corporation, [1950] S.C.R. 36), being neither benevolent nor harsh, but rather seeking a construction which is reasonable and fair to both patentee and public. There is no occasion for being too astute or technical in the matter of objections to either title or specification for, as Duff C.J.C. said, giving the judgment of the Court in Western Electric Company, Incorporated, and Northern Electric Company v. Baldwin International Radio of Canada, [1934] S.C.R. 570, at p. 574, "where the language of the specification, upon a reasonable view of it, can be so read as to afford the inventor protection for that which he has actually in good faith invented, the court, as a rule, will endeavour to give effect to that construction"…
[29] Forming a “reasonable view” of patent language does not, to my thinking, prefer any arguable interpretation that would uphold the patent. In most cases the language of the patent, when viewed contextually and objectively, will be sufficient to establish what was intended thereby ensuring the attainment of its purpose. I would add that the purposive approach is not an invitation to the Court to ignore the ordinary rules of grammar and syntax. If an essential feature of a patent is defined in a specific way and a different more expansive term is also introduced than can include the specific term, one would not generally interpret the two terms as denoting the same thing. The usual purpose of using different words is to distinguish one feature from another and not to express synonymy.
Who is the Person of Skill in this Case
[30] The parties are not in complete agreement about what a person skilled in the art would be expected to know about GIS technology as it applies to these patents. In Mr. Leone’s initial report the person of skill reading the 781 Patent was said to be someone “with practical experience in gas-insulated switchgear assemblies generally”. That person would also have a sound understanding of the electrical, mechanical and safety aspects of “such assemblies”. This would include knowledge of the requirement for visual verification of switch positions and the means by which that could be accomplished – including cameras or windows (see paras 252-253). At para 258 Mr. Leone stated:
In my opinion, the skilled addressee of the ‘781 Patent would have included the same broad range of individuals as I identified above with respect to the ‘772 Patent, but in the context of switchgear assemblies generally (i.e., not limited to medium-voltage switchgear assemblies, as the visual verification requirement exists with respect to low, medium and high voltage applications).
[31] According to Mr. Leone, the person of skill reading the 772 Patent would have practical experience limited to medium voltage GIS. In Mr. Leone’s reply report, he disagreed with Mr. Nilsson’s opinion that the person of skill would be the same for both patents and would have a range of knowledge and experience that extended beyond medium voltage GIS. No explanation is provided by Mr. Leone to justify the distinction he makes and, in fact, the evidence establishes that there is no clear demarcation between medium and high voltage GIS. At the margins of their ranges these systems overlap. I, therefore, reject Mr. Leone’s contention that the person of skill would be different according to which of the two patents was under consideration. Instead I accept Mr. Nilsson’s description of the person of skill at para 7 of his report:
It is my opinion that the person of ordinary skill in the art to whom each of the 772 and 781 Patents is addressed is a person who has two to four years of experience working with switchgear generally, including experience with design of gas-insulated switchgear in particular. Such persons would have the needed technical background. Their experience may be as a supplier of switchgear to the end user, typically a utility company or an industrial complex, or as a representative of the end user who would have responsibility for oversight of the design and installation of electrical power infrastructure. In either event, the persons should be familiar with the configuration, operation, maintenance and use of various types of switchgear, and should be cognizant of the risks present in handling electrical power and the best practices used to mitigate those risks.
The 781 Patent - Construction
[32] The 781 Patent was filed on June 7, 2005 based on PCT Application No. EP 2005/006079. The PCT application claimed priority to a German Patent application filed on June 9, 2004. The 781 Patent was published on December 22, 2005 and issued on August 10, 2010.
[33] The 781 Patent addresses the problem of viewing the position of switches in medium voltage GIS. The visual verification of switch positions in GIS as a supplement to remote sensory verification methods is often a safety requirement for operators, particularly in North America: see para 273 of the Leone Statement dated March 15, 2013. Users of all switchgear systems are naturally concerned that interior components carrying lethal electrical loads be de-energized and grounded before maintenance work is carried out. The use of switches is one means by which this can be accomplished, but in GIS applications the switches are physically inaccessible and cannot be readily observed.
[34] The solution proposed by the 781 Patent to visualize the positions of switches is the fitting of one or more gas tight viewing windows into the GIS housing in a direct or indirect (mirror assisted) line of sight to the switches. Visual verification is enhanced by the incorporation of permanent markings on the moveable contact portion of the switches that act as positioning references.
[35] The 781 Patent advances eight claims. Claim 1 is an independent claim and claims 2 to 8 are all dependant. Claims 1 and 4 are particularly significant to the issue of infringement but all of the claims are in issue with respect to the issue of validity. The claims state:
The embodiments of the invention in which an exclusive property or privilege is claimed are defined as follows:
1. A gas-insulated switchgear assembly having at least one disconnector within a housing for the insulating-gas area of the switchgear assembly, and comprising an inspection window fitted in the housing such that positions of a moveable switch-contact element: can be seen from outside the housing in a direct line of sight via the inspection window by an unassisted eye; or can be seen from outside the housing in an indirect line of sight via the inspection window and at least one mirror by an otherwise unassisted eye.
2. A gas-insulated switchgear assembly as defined in claim 1, wherein the inspection window is fitted in the housing such that a hermetic seal with the housing is maintained.
3. A gas-insulated switchgear assembly as defined in claim 2, wherein a pressure-overload triggering device is arranged within the housing and is triggered before a bursting limit of the hermetic seal of the inspection window with the housing.
4. A gas-insulated switchgear assembly as defined in claim 1, 2 or 3, wherein the movable switch-contact element is provided with a colored or topographical marking which changes position with respect to a fixed marking or reference structure depending on the switch-contact element position.
5. A gas-insulated switchgear assembly as defined in claim 4, wherein, in order to inspect switch positions in a polyphase arrangement, the positions of the inspection window and of the marking or reference structure are selected in relation to one another in such a way that the latter can be inspected safely.
6. A gas-insulated switchgear assembly as defined in claim 4 or 5, wherein illumination means are provided outside the housing which can illuminate the marking or reference structure for inspection thereof.
7. A gas-insulated switchgear assembly as defined in any one of claims 1 to 6, wherein, in order to inspect switch positions in a polyphase arrangement, one or more inspection windows are provided.
8. A gas-insulated switchgear assembly as defined in any one of claims 1 to 7, which is a gas-insulated medium- voltage switchgear assembly.
[36] In a general sense the construction of Claims 1 and 4 is not difficult. ABB claims an invention over the use of viewing windows to ascertain the positions of the described switches in medium voltage GIS. They also claim to have invented the incorporation of coloured or topographical markings into the described switches that serve as positioning references.
[37] One important point of construction controversy that arises from the evidence is whether the reference in the claims to “a moveable switch-contact element” is limited to a sliding contact switch or would be understood to include what is conventionally known as a knife blade switch. ABB argues that the patent claims are directed at the problem of viewing sliding contact switches for which the use of windows was apparently unknown. The Defendant says that the term would be understood by a person of skill to include knife blade switches. This difference is significant because, as ABB acknowledges, the prior art disclosed the use of viewing windows in medium voltage and high voltage GIS to observe the positions of knife blade switches.
[38] The evidence before me establishes that knife blade switches are commonly used in AIS where space limitations are not usually a significant limitation. In GIS systems, where space limitations are often a consideration, sliding contact switches are used more often.
[39] Sliding contact switches and knife blade switches perform the same function by somewhat different means. In the case of a sliding contact switch, the moveable contact travels in line between its positions which, in the case of a three position switch, are “on”, “isolated” or “grounded”. Although the moveable contact can only be in one position at a time, the operator is, nevertheless, concerned that it be in its proper full contact position (“on” or “ground”) or fully isolated from “on” or “ground”. In a less than optimal position an arc fault can arise with catastrophic results. With sliding contact switches, the resting positions of the moveable contact can be difficult to observe.
[40] Knife blade switches can also be used as three position switches. These switches incorporate a moveable blade that pivots in an arc between the desired positions making contact in either a grounded saddle or an energized saddle or resting between those two positions (isolated). Given their design, the contact and isolated positions of knife blade switches are generally easier to observe than sliding contact switches.
[41] Mr. Leone asserted that a person of skill mindful of the overall context of the 781 Patent claims, description and drawings would not understand the reference to a moveable switch-contact element to include a knife blade switch (see para 275 of Leone’s Statement). This opinion is supported, he said, by the ease by which knife blade switches can be observed (see para 277) and by the exemplary embodiment of a sliding contact switch in Figures 1 and 2 of the Patent.
[42] Mr. Leone’s reliance on the ease with which knife blade switches can usually be seen is not a valid basis for excluding them from Claim 1. There is nothing in the patent that discusses this point and the distinction is entirely relative. The problem described is one of viewing a switch in an inaccessible location potentially presenting any number of variable visibility problems. While the position of a knife blade switch may be easier to see through a viewing window, that is not inevitably true. Indeed in comparing the ease of viewing knife blade switches as between AIS and GIS, Mr. Leone acknowledged that “if you put a knife blade in GIS, then it’s more difficult to see” (see p 650).
[43] Although Mr. Leone was in places quite categorical about the “unique” and “specific” problems associated with viewing sliding contact switches, at other points his testimony was less dogmatic. For example, when he was asked why windows had seemingly not been employed to view sliding contact switches when the prior art disclosed this use with knife blade switches, he answered: “I guess because the configuration and the minimum use of sliding contact switches at that time. It was easy to confirm – easier to confirm with knife blade switches, which was basically the state of the art at the time, and they hadn’t developed the solution for windows and sliding contact switches yet”. To the same effect is his evidence at p 649. The Patent description also acknowledges that the viewing problems associated with GIS assemblies will vary according to their “construction, position and design”.
[44] I do not agree with Mr. Leone’s interpretation of this essential feature of the 781 Patent. In a purely grammatical sense the words used by the inventors readily apply to knife blade switches which also incorporate “a moveable switch-contact element” ie. the blade. The inventors were clearly mindful of both types of switches because at page one of the description, they state that “[c]onventional three-position disconnectors are known as linear-travel switches or knife switches”. Thereafter the patent refers repeatedly to disconnectors to describe the switch that is being visualized. A skilled reader would not interpret the claims as limited to “linear-travel switches” because that phrase was not reused. Instead the patent employs a generic reference to a moveable contact that does not distinguish between switch types.
[45] Mr. Leone did not address this grammatical point in his report but it did arise in an oblique way during his testimony. When he was asked what had led him to his narrow interpretation of “moveable switch contact element”, Mr. Leone gave the following answer:
A. Yes, and this is the first reference that begins to teach me that they’re discussing a linear-travel switch because the movable contact piece is generally not a knife blade. If it would have said the movable blade, or the movable knife, then I would be thinking about a knife blade switch. But because they say “movable contact piece” that leans me towards a sliding switch. [p 537]
This evidence actually undermines Mr. Leone’s construction opinion. By suggesting that the drafter of the claims would have used a specific term if the intent was to include a knife blade switch, he necessarily invites the same approach if the intent was to claim only a sliding contact switch. Instead the drafter used language that comfortably describes both switch types.
[46] The description of a sliding contact switch in the patent illustrations does not, as Mr. Leone suggests, support any limitation in the claim language. Indeed, from the description of the diagram as “exemplary” a skilled reader would be just as likely to infer that the claims were not limited but, instead, included both of the two identified conventional switch types that are generically identified as disconnectors.
[47] I reject Mr. Leone’s assertion that the problem addressed by the 781 Patent is unique or specific to sliding contact switches or that visibility issues do not exist with knife blade switches. Whatever the switch type, the viewer needs to know where the moveable contact has come to rest and in GIS assemblies both switches can be difficult to observe. On this issue of construction, I accept Mr. Nilsson’s opinion that the phrase “moveable switch contact element” in Claim 1 is a generic term that includes knife switches and sliding contact switches.
[48] Another point of interpretive disagreement arises in connection with Claim 4 and, in particular, what constitutes “a colored or topographical marking” on the moveable switch-contact element. ABB and Mr. Leone maintain that Hyundai has incorporated such a feature in its GIS installed in British Columbia.
[49] The 781 Patent discloses one embodiment of a coloured topographical reference in the form of a groove that is machined and painted around the circumference of the moveable contact element of the switch. When the moveable contact element is properly seated the painted ring is visible immediately adjacent to the end of the circular switch housing. This tells the user that the contact is in the desired position. According to Mr. Leone, the inventors did not have any specific requirement as to the colour or shape of the topographical marking (see Leone report at para 330). I have no particular problem with Mr. Leone’s characterization of this essential feature but, as discussed below, I do not agree with Mr. Leone that any visible feature, whatever its intended purpose, is included. Based on the evidence from Hyundai’s witnesses, I reject Mr. Leone’s opinion that the guide pins protruding from Hyundai’s moveable switch contact constitute a topographical positioning reference as described in Claim 4 or that a person of skill would read Claim 4 to include them.
The 781 Patent – Validity – Legal Principles
[50] The general approach to obviousness was outlined by Justice Judith Snider in Laboratoires Servier v Apotex Inc, 2008 FC 825 at paras 226-227, [2008] FCJ No 1094:
226 Much has been written about the test for obviousness in the case law. However, I think that the Federal Court of Appeal in Janssen-Ortho Inc. v. Novopharm Ltd., 2007 FCA 217, leave to appeal to S.C.C. refused, [2007] S.C.C.A. No. 442 [Janssen-Ortho (C.A.)], has now provided a very useful summary of the test for obviousness and the manner in which a trial judge should approach the question. Justice Sharlow, writing for the Court of Appeal in Janssen-Ortho (C.A.), outlined the test for obviousness at paras. 23-24:
The accepted legal test for obviousness is stated as follows in the leading case of Beloit Canada Ltd. et al. v. Valmet OY (1986), 8 C.P.R. (3d) 289 (F.C.A.) at page 294, per Hugessen J.A.:
The classical touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right. The question to be asked is whether this mythical creature (the man in the Clapham omnibus of patent law) would, in the light of the state of the art and of common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent. It is a very difficult test to satisfy.
The inquiry mandated by the Beloit test is factual and functional, and must be guided by expert evidence about the relevant skills of the hypothetical person of ordinary skill in the art, and the state of the art at the relevant time. The expert evidence must be carefully assessed as to its credibility and reliability. The classic warning from Beloit about hindsight must always be borne in mind (at page 295, per Hugessen J.A.):
Every invention is obvious after it has been made, and to no one more so than an expert in the field. Where the expert has been hired for the purpose of testifying, his infallible hindsight is even more suspect. It is so easy, once the teaching of a patent is known, to say, "I could have done that"; before the assertion can be given any weight, one must have a satisfactory answer to the question, "Why didn't you?"
227 Of particular assistance, at paragraph 25, Justice Sharlow described a number of factors that could "guide the required factual inquiry" and that could be used "as a framework for the factual analysis that must be undertaken". Justice Sharlow then listed and explained the following non-exhaustive list of factors that could guide the factual inquiry. Those factors are the following:
Principal factors
1. The invention
2. The hypothetical skilled person referred to in the Beloit quotation
3. The body of knowledge of the person of ordinary skill in the art
4. The climate in the relevant field at the time the alleged invention was made
5. The motivation in existence at the time [of] the alleged invention to solve a recognized problem
6. The time and effort involved in the invention
Secondary factors
7. Commercial success
8. Meritorious awards
[51] In Apotex Inc v Sanofi-Synthelabo Canada Inc, [2008] SCC 61 at para 67, [2008] 3 SCR 265, the Supreme Court of Canada set out a four-part framework for assessing whether a patent claim is obvious. The test requires the reviewing Court to apply the following considerations:
a. identify the notional person skilled in the art and the relevant general knowledge of that person;
b. identify the inventive concept of the claim and, if that cannot be readily accomplished, construe the claim;
c. Identify what, if any, differences exist between the matter cited as forming part of the state of the art and the inventive concept as construed; and
d. viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps that would have been obvious to the person of skill or do they require any degree of invention.
The patents in issue are presumed to be valid and the burden of proving otherwise on a balance of probabilities rests upon the Defendant.
Is the 781 Patent Invalid for Obviousness?
[52] Having found that Claim 1 of the 781 Patent asserts a claim to the use of viewing windows t