Date: 20020313
Docket: T-1026-99
Neutral Citation: 2002 FCT 276
BETWEEN:
M.T. BEAUTY CO. LTD. AND MICHEL MOSLER
Plaintiffs/
Defendants by Counterclaim
- and -
CLASSIC FURS COMPANY LTD.
Defendant/
Plaintiff by Counterclaim
REASONS FOR ORDER
KELEN J.:
[1] This is a motion under Rule 216 of the Federal Court Rules, (1998), by the defendant for summary judgment dismissing this patent infringement action by the plaintiffs on the basis that none of the claims in the Reissued Patent are identical to the claims in the original Patent, thus abating any cause of action existing at the time of reissue.
FACTS
[2] This action is in respect of Canadian Patent No. 2,098,352 ("the 352 Patent") entitled"Fur Fabric and Method of Production", filed June 14, 1993 and issued on September 10, 1996. The 352 Patent relates to a process whereby the strength of the fabric is enhanced by "reinforcing threads sewn to the elongated strip of hair-coated skin".
[3] In the action the plaintiffs allege infringement of the 352 Patent and seek a declaration of infringement, an injunction and damages. In the counterclaim, the defendant seeks a declaration that the 352 Patent is invalid.
[4] The plaintiff, Mosler, an individual residing in Toronto, is the inventor and owner of the subject of the 352 Patent. The plaintiff, M.T. Beauty, is in the business of manufacturing and selling garments and accessories made of fur fabric, and is a licensee of the 352 Patent.
[5] The defendant, Classic Furs, an Ontario corporation, is in the business of manufacturing and selling garments and accessories made of fur fabric.
REISSUE OF THE PATENT
[6] On November 28, 2000, the 352 Patent was reissued to the plaintiff Mosler. According to the affidavit of the plaintiff Mosler, Mr. Mosler sought the reissue because his patent agent did not adequately put into words the content of the patent he intended to protect and patent. The patent consists of 13 claims setting out the details of the process by which the fur fabric is assembled.
[7] The Patent Reissue dated November 28, 2000 added the word "substantially" in Claims 1 and 9, and deleted two words, viz, "bearing portion" from the last sentence of Claims 1 and 9 (underling added to highlight changes).
Claim 1:
Original Claim 1
A fabric having a furry surface made from an elongated strip of a hair-coated skin of a fur-bearing animal, said strip consisting essentially of a base skin layer and a hair coating such that said base layer provides a hair-free body portion extending the length of the said strip and said hair coating provides a hair-bearing portion extending the length of the strip at a lower part thereof such that the hair extends from said lower part substantially in a single plane; and a non-furry thread of reinforcing material sewn into and extending the length of said hair-free body portion in such a manner so as to be free from contact with said hair bearing portion.
Patent Reissue Claim 1
A fabric having a furry surface made from an elongated strip of a hair-coated skin of a fur-bearing animal, said strip consisting essentially of a base skin layer and a hair coating such that said base layer provides a hair-free body portion extending the length of the said strip and said hair coating provides a hair-bearing portion extending the length of the strip at a lower part thereof such that the hair extends from said lower part substantially in a single plane; and a non-furry thread of reinforcing material sewn into and extending the length of said hair-free body portion in such a manner so as to be substantially free from contact with said hair.
Claim 9:
Original Claim 9
An elongated strip of a hair-coated skin of a fur-bearing animal for use in forming a fabric, said strip consisting essentially of a base skin layer and a hair coating such that said base skin layer provides a hair-free body portion extending the length of the strip and the hair-coating provides a hair-bearing portion extending the length of the strip at a lower part thereof such that the hair extends from said lower part substantially in a single plane; and a non-furry thread of reinforcing material sewn into and extending the length of said hair-free body portion in such a manner so as to be free from contact with said hair bearing portion.
Patent Reissue Claim 9
An elongated strip of a hair-coated skin of a fur-bearing animal for use in forming a fabric, said strip consisting essentially of a base skin layer and a hair coating such that said base skin layer provides a hair-free body portion extending the length of the strip and the hair-coating provides a hair-bearing portion extending the length of the strip at a lower part thereof such that the hair extends from said lower part substantially in a single plane; and a non-furry thread of reinforcing material sewn into and extending the length of said hair-free body portion in such a manner so as to be substantially free from contact with said hair.
GENUINE ISSUE OF MATERIAL FACT FOR TRIAL
[8] The defendant brings this motion for summary judgment under Rule 216 (2)(b) and (3) of the Federal Court Rules, (1998), which reads:
216. (1) Where on a motion for summary judgment the Court is satisfied that there is no genuine issue for trial with respect to a claim or defence, the Court shall grant summary judgment accordingly.
(2) Where on a motion for summary judgment the Court is satisfied that the only genuine issue is
(a) the amount to which the moving party is entitled, the Court may order a trial of that issue or grant summary judgment with a reference under rule 153 to determine the amount; or
(b) a question of law, the Court may determine the question and grant summary judgment accordingly.
(3) Where on a motion for summary judgment the Court decides that there is a genuine issue with respect to a claim or defence, the Court may nevertheless grant summary judgment in favour of any party, either on an issue or generally, if the Court is able on the whole of the evidence to find the facts necessary to decide the questions of fact and law.
216.(1) Lorsque, par suite d'une requête en jugement sommaire, la Cour est convaincue qu'il n'existe pas de véritable question litigieuse quant à une déclaration ou à une défense, elle rend un jugement sommaire en conséquence.
(2) Lorsque, par suite d'une requête en jugement sommaire, la Cour est convaincue que la seule véritable question litigieuse est:
a) le montant auquel le requérant a droit, elle peut ordonner l'instruction de la question ou rendre un jugement sommaire assorti d'un renvoi pour détermination du montant conformément à la règle 153;
b) un point de droit, elle peut statuer sur celui-ci et rendre un jugement sommaire en conséquence.
(3) Lorsque, par suite d'une requête en jugement sommaire, la Cour conclut qu'il existe une véritable question litigieuse à l'égard d'une déclaration ou d'une défense, elle peut néamoins rendre un jugement sommaire en faveur d'une partie, soit sur une question particulière, soit de façon générale, si elle parvient à partir de l'ensemble de la preuve à dégager les faits nécessaires pour trancher les questions de fair et de droit.
[9] The Supreme Court of Canada in Guarantee Co. of North America v. Gordon Capital Corporation, [1999] 3 S.C.R. 423, summarized the test per Iacobucci and Bastarache JJ. at page 435:
The appropriate test to be applied on a motion for summary judgment is satisfied when the applicant has shown that there is no genuine issue of material fact requiring trial, and therefore summary judgment is a proper question for consideration by the court. See Hercules Managements Ltd. v. Ernst & Young, [1997] 2 S.C.R. 165, at para. 15; Dawson v. Rexcraft Storage and Warehouse Inc. (1998), 164 D.L.R. (4th) 257 (Ont. C.A.), at pp. 267-68; Irving Ungerman Ltd. v. Galanis (1991), 4 O.R. (3d) 545 (C.A.), at pp. 550-51. Once the moving party has made this showing, the respondent must then "establish his claim as being one with a real chance of success" (Hercules, supra, at para. 15).
Therefore, the applicable test is whether or not a genuine issue of material fact requiring trial exists in this matter.
REISSUE OF THE PATENT UNDER SECTION 47 OF THE PATENT ACT
[10] The defendant submits that the November 28, 2000 reissue of the 352 Patent, has abated the original cause of action as provided in subsection 47(2) of the Patent Act, R.S.C. 1985, c. P-4, which reads:
REISSUE OF PATENTS
Issue of new or amended patents
47. (1) Whenever any patent is deemed defective or inoperative by reason of insufficient description and specification, or by reason of the patentee's claiming more or less than he had a right to claim as new, but at the same time it appears that the error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention, the Commissioner may, on the surrender of the patent within four years from its date and the payment of a further prescribed fee, cause a new patent, in accordance with an amended description and specification made by the patentee, to be issued to him for the same invention for the then unexpired term for which the original patent was granted.
Effect of new patent
(2) The surrender referred to in subsection (1) takes effect only on the issue of the new patent, and the new patent and the amended description and specification have the same effect in law, on the trial of any action thereafter commenced for any cause subsequently accruing, as if the amended description and specification had been originally filed in their corrected form before the issue of the original patent, but, in so far as the claims of the original and reissued patents are identical, the surrender does not affect any action pending at the time of reissue or abate any cause of action then existing, and the reissued patent to the extent that its claims are identical with the original patent constitutes a continuation thereof and has effect continuously from the date of the original patent.
REDÉLIVRANCE DE BREVETS
Délivrance de brevets nouveaux ou rectifiés
47. (1) Lorsqu'un brevet est jugé défectueux ou inopérant à cause d'une description et spécification insuffisante, ou parce que le breveté a revendiqué plus ou moins qu'il n'avait droit de revendiquer à titre d'invention nouvelle, mais qu'il apparaît en même temps que l'erreur a été commise par inadvertance, accident ou méprise, sans intention de frauder ou de tromper, le commissaire peut, si le breveté abandonne ce brevet dans un délai de quatre ans àcompter de la date du brevet, et aprés acquittement d'une taxe réglementaire additionnelle, faire délivrer au breveté un nouveau brevet, conforme à une description et spécification rectifiée par le breveté, pour la même invention et pour la partie restant alors à courir de la période pour laquelle le brevet original a été accordé.
Effet du nouveau brevet
(2) Un tel abandon ne prend effet qu'au moment de la délivrance du nouveau brevet, et ce nouveau brevet, ainsi que la description et spécification rectifiée, a le même effet en droit, dans l'instruction de toute action engagée par la suite pour tout motif survenu subséquemment, que si cette description et spécification rectifiée avait été originalement déposée dans sa forme corrigée, avant la délivrance du brevet original. Dans la mesure oùles revendications du brevet original et du brevet redélivré sont identiques, un tel abandon n'atteint aucune instance pendante au moment de la redélivrance, ni n'annule aucun motif d'instance alors existant, et le brevet redélivré, dans la mesure où ses revendications sont identiques à celles du brevet original, constitue une continuation du brevet original et est maintenu en vigueur sans interruptionn depuis la date du brevet original.
[11] The defendant relies upon Stamicarbon B. v. Urea Casale S.A.I (2000), 8 C.P.R. (4th) 206, [2001] 1 F.C. 172 (F.C.T.D.) wherein the Motion Judge held at page 217:
Pursuant to section 47, a reissue is premised on the admission by the patentee that a patent is defective or inoperative by reason of inter alia the patentee claiming "more or less than he had a right to claim as new". Accordingly, in seeking to make the amendments to claim 14, the Defendant admitted that the scope of the claim as amended is different from the scope of the original claim. If the Defendant felt it needed to correct mere technical errors which did not alter the scope of the claims, its only option was to seek to have those amendments made under the clerical error provision of section 8 of the Patent Act. While I recognize that there are perhaps some de minimus exceptions, the word "identical" is used in subsection 47(2). The two claims are thus not identical under that subsection.
[12] The defendant submits that the changes made in the 352 Patent upon the November 28, 2000 reissue are such that under subsection 47(2) of the Patent Act, no claims under the Reissued Patent are identical to those in the original Patent. This leads to the conclusion that the action under the original Patent is abated under the Reissued Patent.
[13] The plaintiffs submit that the correct interpretation of the claims is beyond the scope of summary judgment. The plaintiffs refer to the recent Supreme Court of Canada cases of Free World Trust v. Electro Sante Inc., [2000] S.C.R. 1024, 9 C.P.R. (4th) 168, and Whirlpool Corp. v. Camco Inc., [2000] S.C.C. 67, 9 C.P.R. (4th) 129 which held that patent claims ought be construed in an informed and purposive way, which is to say that if the patent is reissued, and if the changes to its language would cause a competent and appropriately skilled individual to interpret the patent claims to be the same as before the reissue, than the patent is the same.
CHANGES TO THE PATENT UPON REISSUE
[14] The addition of the word "substantially" and the deletion of the words "bearing portion" in Claims 1 and 9 in the Reissued Patent affect all of the other claims in the Patent. The addition of the word "substantially" is an adverb to modify the meaning. On a literal interpretation of the Patent, the Reissued Patent has been changed and is therefore not "identical". The defendant submits that the logical extension leads to the conclusion that the Reissued Patent, as a whole, is not identical to the original Patent so that the original cause of action is "abated"
in the words of subsection 47(2) of the Patent Act. The defendant relies upon the affidavit of Mr. Mosler which was submitted with the application for reissuing the Patent. This affidavit explains that the original Patent did not fully describe his invention and that this is the reason for requesting the reissue.
[15] The plaintiffs submit that the small change in wording does not change the meaning of the Patent so that the claims continue to be identical. The plaintiffs rely upon the U.S. jurisprudence as authority for the proposition that an original and a reissued claim are identical if the reissued patent's claim did not change the original claim in a substantial way.
[16] The plaintiff submits that the Supreme Court of Canada has held that patent claims are to be construed to achieve their purpose, and the same principle ought to apply in construing the original patent claim in relation to the reissued patent claim.
[17] The plaintiffs submit that the scope of the claims in the original Patent and the Reissued Patent are not questions of law, but questions of fact requiring expert evidence by those skilled persons in the art of fur manufacture. Such experts may testify that the claims in the reissued Patent are identical to the claims in the original Patent and that the addition of one word and the deletion of two words has no effect on the actual meaning.
FEDERAL COURT OF APPEAL DECISION IN STAMICARBON
[18] On the day this motion for summary judgment was argued, the Federal Court of Appeal delivered its Judgment and Reasons for Judgment in the Stamicarbon appeal: Urea Casale S.A. v. Stamicarbon B.V. (2002), F.C.A. 10 per Stone J.A. for the Court. The Court of Appeal held as follows:
i. at paragraph 11:
[...] The issue of patent construction is not of the same nature as construction of the statute. Considerations inherent in patent construction must be kept in mind before a Court determines whether the (action) should have been disposed at the summary judgment stage.
ii. at paragraph 19:
Given the apparent derivation of the reissue provision of the Act, it would seem appropriate to consider American jurisprudence construing the word "identical" in the United States statute for assistance in construing the same word in subsection 47(2) (of the Patent Act).
iii. at paragraph 22:
It seems to me that the approach taken by the American Courts to the construction of the word "identical" is to be preferred to a strict literal interpretation of that word in subsection 47(2) of the Act. If the language of Claim 21 did not work a substantive change of the scope of Claim 14, the former Claim must be viewed as "identical" to the latter claim even though the language of the one is not in all respects the same as the other.
iv. at paragraph 27:
The need for expert evidence is all the more evident here, where the parties dispute what is old and what is new in Claim 21 as well as whether essential features of that Claim have been deleted and its scope so changed as to render it non-"identical" to the original Claim.
Since this Federal Court of Appeal Judgment was not known when this motion for summary judgment was argued, I advised the parties that I would reserve my decision until the Federal Court of Appeal decision in Stamnicarbon, and that the parties would be expected to make submissions on the basis of the Federal Court of Appeal Judgment in Stamnicarbon before I would render my decision. These submissions have now been received and considered. It is my opinion that the Federal Court of Appeal Reasons for Judgment in Stamnicarbon, including the four passages referred to above, are determinative and conclusive with respect to the motion for summary judgment at bar.
CONCLUSION
[19] The basis for this summary judgment motion, the Motions Judge's decision in Stamnicarbon, has been reversed by the Federal Court of Appeal. There is a genuine issue of material fact for trial in the case at bar, viz. whether Claims 1 and 9 in the Reissued Patent are "identical" to Claims 1 and 9 in the original Patent. The patent claims will need expert evidence to determine whether the scope of claims in the Reissue Patent has been changed over the original claims because of the addition of the word "substantially", and the deletion of the last two words in each respective claim. If the change in the language did not work a substantive change in the scope of the claims, the former claims must be viewed as "identical" to the latter claims, even though the language has been changed.
[20] For these reasons, this motion for summary judgment is dismissed with costs in the cause.
(signed) Michael A. Kelen
______________________________
JUDGE
OTTAWA, Ontario
March 13, 2002
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-1026-99
STYLE OF CAUSE: M. T. BEAUTY CO. LTD. AND MICHEL MOSLER v. CLASSIC FURS COMPANY LTD.
PLACE OF HEARING: TORONTO, ONTARIO
DATE OF HEARING: JANUARY 15, 2002
REASONS FOR ORDER: THE HON. MR. JUSTICE KELEN
DATED: MARCH 13, 2002
APPEARANCES:
Peter Kappel FOR PLAINTIFF / APPLICANT
Pauline Bosman FOR DEFENDANT/ RESPONDENT
SOLICITORS OF RECORD:
Kappel Ludlow LLP
Toronto, Ontario FOR PLAINTIFF/APPLICANT
Ridout & Maybee LLP FOR
Toronto, Ontario DEFENDANT/RESPONDENT