Date: 20050622
Docket: T-2108-03
Citation: 2005 FC 881
BETWEEN:
M.K. PLASTICS CORPORATION
Plaintiff
- and -
PLASTICAIR INC.
Defendant
REASONS FOR ORDER
(Delivered from the Bench at Toronto, June 21, 2005)
HUGESSEN J.
[1] This is a motion for summary judgment, brought by the defendant Plasticair, under Rule 213 of the Federal Courts Rules in an action for patent infringement.
[2] The dispute between the parties turns around two patents. The first is owned by the plaintiff, number 2,140,163 (the '163 patent), and the second, number 2,413,627, (the '627 patent, or the Skyplume) is owned by the defendant. The defendant's patent is not directly in suit. Both patents are for exhaust systems, which are designed to direct jets of noxious air and exhaust gases upward and away from buildings, while at the same time diluting any contamination contained in the exhaust fumes.
[3] Both parties offer evidence in the form of affidavits. The affidavits conflict on the interpretation of the essential elements of the '163 and the '627 patents. Only the plaintiff has produced the affidavit of an independent qualified expert although the defendant's president and principal deponent is undoubtedly a person skilled in the relevant art. The plaintiff's expert contends that the patents are essentially the same, and the Skyplume patent infringes the '163 patent. The defendant's deponent claims that the essential elements of the patents differ (specifically the nozzles) and the patents are therefore different.
[4] The defendant/moving party argues that the Skyplume does not infringe on the '163 patent, as the plain language of Claim 1 of the '163 patent clearly indicates that the Axijet Nozzle (the nozzle of the exhaust system on the '163 patent) is required to have physically separated ("bifurcated") channels. This, it is argued, is an essential element which differentiates the plaintiff's '163 patent from the Skyplume. The defendant notes that the Skyplume does not claim a bifurcated nozzle, but rather a single passage.
[5] The relevant claim of the '163 patent reads as follows:
An exhaust fan apparatus comprising a housing having an upper portion and a lower portion, wherein the lower portion includes a centrifugal fan scroll casing, the scroll casing having parallel side walls, a shaft extending within the casing and having a first axis normal to the side wall and mounting an impeller for rotation therewithin, motor means for driving the shaft, an inlet portion provided axially of the first axis on a side wall of the casing, a discharge port extending from the scroll, a first tubular diffuser portion communicating with the fan discharge port and a second tubular portion extending upwardly from the first tubular portion, the second tubular portion being bifurcated to provide at least two passageways having generally parallel axes generally normal to the first axis, and wherein the axes of the passageways lie in a plane which is parallel to the first axis.
[6] The defendant argues that summary judgment is available for two reasons. First, the defendant's deponent claims that the nozzle is an essential element of both patents. Second, the deponent also argues that the nozzles differ, as the plaintiff's nozzle is bifurcated, and the defendant's nozzle comprises a duct member forming a single exhaust passage.
[7] By contrast, the plaintiff's expert argues that the two patents, properly interpreted, constitute the same invention. The plaintiff argues that the defendant's infringing patent is invalid, given the priority of the '163 patent. The plaintiff also argues that both patents contain the same elements: a lower portion housing a centrifugal fan, an upper portion that includes a first tubular portion called the diffuser and a second tubular portion called the nozzle, and finally a windband mounted on top of the upper portion. The plaintiff argues that, despite the defendant's arguments regarding the bifurcated nature of the Axijet nozzle, the essential elements of the two patents are the same, and the defendant's patent therefore infringes the plaintiff's patent.
[8] The argument put forward by the defendant based as it is on the so called "plain meaning" of the words of the plaintiff's patent is neither unattractive nor implausible. It is however trite law that a patent must be read through the eyes of a person skilled in the relevant art in order to distinguish its essential elements. In a case such as this, given the guidelines laid down by the Supreme Court in the companion cases Free World Trust v. Électro Santé Inc., [2000] 2 S.R.C. 1024, and Whirlpool Corp. v. Maytag Corp., [2000] 2 S.C.R. 1067. The essential elements of each patent must be identified, and the competing patents must be compared in the light of the expert evidence. The interpretation of the plaintiff's patent here in suit in the light of the conflicting evidence constitutes, in my view, a genuine issue for trial. That issue cannot and should not be resolved on affidavit evidence alone (see MacNeil Estates v. Canada 2004 FCA 50 and Trojan Technologies Inc. v. Suntec Environmental Inc. 2004 FCA 140).
[9] The motion for summary judgment accordingly must be dismissed.
"James K. Hugessen"
Judge
Ottawa, Ontario
June 22, 2005
FEDERAL COURT
NAME OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-2108-03
STYLE OF CAUSE: M.K. PLASTICS COPRORATION
Plaintiff
- and -
PLASTICAIR INC.
Defendant
PLACE OF HEARING: TORONTO, ONTARIO
DATE OF HEARING: JUNE 21, 2005
REASONS FOR ORDER: HUGESSEN J.
DATED: JUNE 22, 2005
APPEARANCES:
MR. YVES ROBILLARD FOR PLAINTIFF
MR. RICHARD B. JONES
MS. TIFFANY V. LITTLE FOR DEFENDANT
SOLICITORS OF RECORD:
BÉLANGER SAUVÉ
MONTREAL, QUEBEC FOR PLAINTIFF
JONES, ROGERS LLP
TORONTO, ONTARIO FOR DEFENDANT