Morissette, Levesque, Baudouin

Appeal from a judgment of the Superior Court granting in part an application for declaratory judgment and permanent injunction. Allowed.

The appellants argue that the trial judge erred in finding that the scraper blade system they market under the name “Nordik Move” infringes Canadian Patent 1 243 830 owned by the respondents. This patent protects a system composed of multiple blades, each one of which can move up and down automatically according to various obstacles on the road. The judge found that the Nordik Move system, which includes all the essential elements of Patent 830, infringed that patent.

A court tasked with construing patent claims to determine whether the invention that is the subject-matter of the patent has been infringed by another product must: 1) first construe the claims language, then 2) establish which of the patent’s essential elements are in the alleged infringer’s invention. Moreover, according to the principles developed in Improver Corp. v. Remington Consumer Products Ltd. (1989), [1990] 17 F.S.R. 181, a patent’s field of protection may be materially affected not only by elements whose substitution would change the way the invention works, i.e., essential elements, but also by elements that, in the eyes of the person skilled in the art at the date of publication of the patent, could easily be substituted or omitted without making any material difference to the working of the invention, i.e., non-essential elements or their substituted variants . However, the determination of essential elements should not be done in a manner completely detached from the terms used in the claims.

In this case, the judge erred in law by basing her analysis of the claim on the invention’s purpose, i.e., the vertical movement when the blade encounters an obstacle on the road, rather than on the way it achieves this purpose, that is, the ingenious method designed by the inventor to do so. The judge also erred by conducting a piece-by-piece analysis to determine whether each element taken in isolation was essential to the purpose sought and whether a variant could be substituted to achieve the desired result, instead of purposively construing the claim. In doing so, she lost sight of the teachings in Free World Trust v. Électro Santé Inc. (S.C. Can., 2000-12-15), 2000 SCC 66, SOQUIJ AZ-50068948. J.E. 2001-89, [2000] 2 S.C.R. 1024, but also of the presumption of essentiality of a claim’s elements.

In fact, the judge incorrectly applied the principles of Improver Corp. and erred by concluding that several of the patent’s components, i.e., the upper part of the invention and the deflector, although described in the claim, were not essential elements. With respect to the first requirement developed in Free World Trust, nothing in the claim language indicates that the inventor clearly wanted these elements to be characterized as non-essential. The second requirement, which corresponds to the third part of the test developed in Improver Corp., is nowhere to be found in the judge’s reasons. The judge erred when she failed to consider the essential nature of the upper part by referring only to the fact that this part could take various forms and by setting aside the terms used in the claim. By characterizing nearly half of the claim’s elements as non-essential, even though they were mentioned in the claim and are an integral part of the working of the invention described in the claim, the judge rendered the claim meaningless. Without the upper part, characterized as non-essential by the judge, Patent 830 is merely a few parts assembled together but that are unconnected and cannot achieve the invention’s subject-matter. Were it not for these errors of interpretation, the judge would not have found any infringement because several of Patent 830’s essential elements were missing from the Nordik Move system.

Text of the decision: http://citoyens.soquij.qc.ca