Date: 20020531
Docket: T-355-01
Neutral Citation: 2002 FCT 617
BETWEEN:
DONALD LAPIERRE and
LES ÉQUIPEMENTS LAPIERRE INC.
Plaintiffs
AND:
ECHOCHEM INTERNATIONAl INC.
Defendant
[1] This is a motion within an action commenced on February 28, 2001, for infringement of Canadian patent number 1,274,781 (Patent 781). The defendant is seeking an order dismissing the objections raised at the examination for discovery of Donald Lapierre (Lapierre), plaintiff and representative of the plaintiff Équipements Lapierre, which took place on February 7, 2002. The defendant is also seeking an order requiring Lapierre to submit to a second examination in order to answer the questions that are the subject of the objections.
[2] During the examination for discovery on February 7, 2002, Mr. Lapierre's solicitors objected to two different types of questions. The first type, which related to the relationship between the plaintiff's product and the patent or the exact specifications of the plaintiff's product, are as follows:
a) Does the plaintiffs' device have a moulded plastic base like the invention shown in Figure 3 of the patent? (Tab 3: page 47, lines 19-23)
b) What is the interior diameter of model 600 manufactured by the plaintiff Équipement Lapierre ? (Tab 3: page 59, line 19 to page 60, line 2)
c) What is the exterior diameter of the membrane inside model 600? (Tab 3: page 60, line 24 to page 61, line 2)
d) What is the area of the cavities in the spacer through which the liquid passes from zone A to zone C? (Tab 3: page 61, lines 4-10)
e) What is the area of the cavities in the spacer that allows the liquid to pass from part C to part F in model 600? (Tab 3: page 61, lines 13-25)
f) What is the diameter of input conduit no. 3 in the base-plate? (Tab 3: page 62, lines 1-6)
g) What is the diameter of the output conduit plate, item 4 in plate no. 2 in model 600? (Tab 3: page 62, line 8 at page 63, line 9)
h) What is the interior diameter of the membrane in model 600? (Tab 3: page 63, lines 10-22)
i) What is the power of the motor in model 600? (Tab 3: page 63, line 22 to page 64, line 1)
j) Under what pressure does the liquid enter in model 600? (Tab 3: page 64, lines 18-23)
k) Do the impeller and the diffuser maintain or increase the pressure in model 600? (Tab 3: page 65, lines 6-11)
[3] The defendant argues that its questions would elucidate the terms of the patent and would help to distinguish the essential elements of the claimed invention from the non-essential elements.
[4] It is clear that in an infringement action, the defendant's device need not be compared to the plaintiff's device but to the claims set out in the patent. That proposition was well enunciated by Justice Binnie in Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R. 1024 at 1063 where he stated the following:
The appellant complains, with some justice in my view, that having stated its legal test of infringement, the Quebec Court of Appeal then erred in making a comparison between the device of the appellant and the device of the respondents, and coming to the conclusion (which the appellant did not dispute) that the devices were different.
The appellant contends that the proper comparison is between the claims set out in its patents and the devices marketed by the respondents. I agree, but I believe that on reading the reasons of the Quebec Court of Appeal in their entirety, the court did make the proper comparison, even though that court went on to make a superfluous comparison between the two devices themselves.
[5] Justice Binnie held that a purposive construction should be applied to patent claims and that such an approach will show that some elements of the claimed invention are essential while others are non-essential. He provided the following list of factors to be considered when making such an allocation (at 1053-1062):
(i) On the basis of the common knowledge of the worker skilled in the art to which the patent relates.
(ii) What constitutes an "essential" element is to be interpreted in light of the knowledge of the art at the date of the publication of the patent specification.
(iii) Regard is to be had to whether it was obvious at the time the patent was published that substitution of a different variant would make a difference to the way in which the invention works.
(iv) According to the intent of the inventor expressed or inferred from the claims of the patent.
(v) Based on the patent specification itself without resort to extrinsic evidence.
[6] Applying these principles to the case at bar, I am not satisfied that the plaintiff's actual device would be relevant to distinguishing essential from non-essential elements of the patent. Moreover, since the first claim is sufficiently broad, and, if anything, only discusses the relative size of one element compare to another, the specific details requested by the defendants do not relate to or arise from the claims. Finally, item (v) mentioned above specifically excludes resorting to extrinsic evidence, such as the plaintiff's device, for discerning the difference between essential and non-essential elements.
[7] In my view therefore, the impugned questions are not relevant and need not be answered by the plaintiffs.
[8] The second type of question that Mr. Lapierre refused to answer were related to whether, at the time of patenting his device, he had considered certain variations - variations which have been adopted into the defendant's device. Those questions are as follows:
a) Does the patent indicate that Mr. Lapierre had thought of putting the input conduit and the output conduit in the casing (where it is located in the Echochem device) rather than in the upper part? (Tab 3: page 92, lines 4-18)
b) Does the patent contemplate the use of elbows or external semi-circular conduits like those found in the defendant's device? (Tab 3: page 93, lines 6-13)
c) Does the patent contemplate welding one of the two plates at the two ends of the casing as in the defendant's device, rather than bolting them or sealing them? (Tab 3: page 93, lines 16-24)
[9] The defendant argues that its device does not embody every essential element contemplated in the patent and that some of the essential variations incorporated into its device are not contemplated by the patent. It contends that, at a preliminary stage in the proceedings, a plaintiff may be required to specify what it considers to be the "substance" of its invention, even if it will be for the Court to ultimately decide the point.
[10] To this, the plaintiffs argue that what the inventor intended the patent to cover is not relevant in a patent infringement action. Rather, the trial judge will have to determine whether the person skilled in the art would conclude that another device, regardless of its variations, infringes the zone of exclusivity protected by the words of the plaintiffs' patent.
[11] While it may be appropriate to ask Mr. Lapierre questions regarding the "substance" of his invention, questions involving an interpretation of the patent are inappropriate. The questions here are thinly veiled and in my view, cannot possibly relate to the "substance" or essential elements of the patent. After all, the questions do not even arise from the words in the patent but inquire into its scope by referring to variations that are not mentioned in the patent. In order to answer the questions appropriately, Mr. Lapierre would have to interpret the patent. The admissibility of such evidence has already been decided by the Court of Appeal in Nekoosa Packaging Corp. v. AMCA International Ltd (1994), 56 C.P.R. (3d) 470 at 479-80 where it was held that:
The trial judge also made reference to the evidence tendered by Bruce J. McColl, the inventor. In oral argument, counsel for the appellants relied extensively on his evidence. Earlier, I discussed the question of admissibility of expert opinion on the very issue to be decided. That issue takes on greater significance when it is the inventor himself or herself testifying on the proper construction of the patent. In my opinion, the question of the admissibility of such testimony has been settled. In Johnson Controls Inc. v. Varta Batteries Ltd. (1984), 80 C.P.R. (2d) 1 at pp. 27-8, 3 C.I.P.R. 1, 53 N.R. 6 (F.C.A.), Urie J.A. adopted the decision of the Exchequer Court in Lovell Manufacturing Co. v. Beatty Bros. Ltd. (1962), 41 C.P.R. 18, 23 Fox Pat. C. 112, where Thorson P. stated at p. 38: "Even the testimony of the inventor himself as to what his invention was would be inadmissible for the purpose [of patent construction]". The fact that Urie J.A.'s remarks in Johnson, supra, are obiter, does not detract from the jurisprudence on this point. The general rule is that extrinsic evidence is inadmissible for the purpose of construing a patent specification and this must necessarily extend to the testimony of the inventor pertaining to the proper construction of the specification: see also P.L.G. Research Ltd. v. Jannock Steel Fabricating Co. (1991), 35 C.P.R. (3d) 346, 46 F.T.R. 27, 26 A.C.W.S. (3d) 1157 (T.D.); affirmed 41 C.P.R. (3d) 492, 142 N.R. 203, 55 F.T.R. 240n (C.A.).
[12] The approach to purposive construction adopted by the Supreme Court in Free World Trust and Whirlpool Corp v. Camco Inc., [2000] 2 S.C.R. 1067 is consistent with this view.
Justice Binnie stated the following in Whirlpool Corp. at page 1095:
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..
[13] Here, the defendants are asking Mr. Lapierre to interpret the patent. The questions are improper or irrelevant and need not be answered.
[14] For these reasons, the motion is dismissed with costs to the plaintiffs.
"P. ROULEAU"
JUDGE
OTTAWA, Ontario
May 31, 2002
Certified true translation
Mary Jo Egan, LLB
FEDERAL COURT OF CANADA
TRIAL DIVISION
SOLICITORS OF RECORD
DOCKET: T-355-01
STYLE OF CAUSE: Donald Lapierre et al v.
Ecochem International Inc.
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: April 22, 2002
REASONS BY: Rouleau J.
DATE OF REASONS: May 31, 2002
APPEARANCES:
François Grenier FOR THE PLAINTIFF
J. Nelson Landry FOR THE DEFENDANT
SOLICITORS OF RECORD:
Léger Robie Richard FOR THE PLAINTIFF
Montréal, Quebec
Ogilvy Renault FOR THE DEFENDANT
Montréal, Quebec
Date: 20020531
Docket: T-355-01
OTTAWA, Ontario, the 31st day of May, 2002
PRESENT: The Honourable Mr. Justice Rouleau
BETWEEN:
DONALD LAPIERRE and
LES ÉQUIPEMENTS LAPIERRE INC.
Plaintiffs
AND:
ECHOCHEM INTERNATIONAL INC.
Defendant
ORDER
[1] The motion is dismissed with costs to the plaintiffs.
"P. ROULEAU"
JUDGE
Certified true translation
Mary Jo Egan, LLB