Federal Appeal

Industrial and Intellectual Property

No error in trial judge’s construction of patent or assessment of expert evidence

Plaintiffs owned ‘781 patent, relating to window on switchgear assembly with line of sight to grounding switch, to verify position and confirm grounding of circuit breaker, and ‘772 patent, dealing with dimensions and positions of gas-insulated compartment and grounding switches. Plaintiffs’ action against defendant competitor for patent infringement was dismissed and defendant’s counterclaim for declarations of patent invalidity was allowed, with defendants awarded costs in amount of $350,000. Appeals dismissed. Trial judge found that phrase “moveable switch contact element” in ‘781 patent claim covered both “sliding contact switches” and knife blade switches such that it did not differ from prior art disclosing use of viewing windows to determine position of “knife blade switches”. Trial judge was right to avoid construing ‘781 patent in manner that would unduly neglect its wording, as principle of purposive construction only applied to language that could bear more than one equally plausible meaning. Plaintiffs failed to establish any palpable and overriding error in trial judge’s assessment of expert evidence informing reading of patents. It was open to trial judge to reject plaintiffs’ submissions that purpose of ‘781 patent was to address problem unique to linear-travel switches and that its figures showing only linear-travel switch were only exemplary and not embodiments of all switches covered. Trial judge was entitled to accept defendant’s expert evidence that inspection windows were well-known in prior art and to reject plaintiff’s expert evidence that placement of window was inventive. Trial judge’s infelicitous paraphrasing of expert’s testimony on inventiveness did not indicate he misconstrued that testimony. Trial judge’s conclusions on obviousness were not vitiated by palpable and overriding error. Plaintiffs failed to establish any reviewable error in finding that presence of second switch was essential element in ‘772 patent’s claim, which construction supported trial judge’s finding that all claims were obvious. Plaintiff’s submissions went mainly to weight that should have been placed on expert reports, which was matter for trial judge. Trial judge’s finding that invention path was neither complex nor time consuming did not involve palpable and overriding error.

ABB Technology AG v. Hyundai Heavy Industries Co. (Aug. 18, 2015, F.C.A., David Stratas J.A., Wyman W. Webb J.A., and D.G. Near J.A., File No. A-346-13, A-379-13) Decision at 233 A.C.W.S. (3d) 229 and 234 A.C.W.S. (3d) 577 were affirmed.  260 A.C.W.S. (3d) 838.

cover image


Subscribers get early and easy access to Law Times.

Law Times Poll

Law Times reports that there is the highest number of lawyer candidates in the upcoming Law Society of Ontario Bencher election since 1995, but turn-out is declining. Do you think voting should be mandatory for all lawyers and paralegals in this election?