Date: 20000215
Docket: A-677-99
CORAM: ROBERTSON J.A.
ROTHSTEIN J.A.
SHARLOW J.A.
BETWEEN:
CALGON CARBON CANADA, INC. and
CALGON CARBON CORPORATION
Appellants
- and -
TROJAN TECHNOLOGIES, INC.
Respondent
Heard at Ottawa, Ontario, on Tuesday, February 15, 2000
Judgment delivered from the Bench at Ottawa, Ontario, on Tuesday, February 15, 2000
REASONS FOR JUDGMENT
OF THE COURT DELIVERED BY: ROTHSTEIN J.A.
Date: 20000215
Docket: A-677-99
CORAM: ROBERTSON J.A.
ROTHSTEIN J.A.
SHARLOW J.A.
BETWEEN:
CALGON CARBON CANADA, INC. and
CALGON CARBON CORPORATION
Appellants
- and -
TROJAN TECHNOLOGIES, INC.
Respondent
REASONS FOR JUDGMENT OF THE COURT
(Delivered from the Bench at Ottawa, Ontario
on Tuesday, February 15, 2000)
ROTHSTEIN J.A.
[1] This is an appeal from a September 30, 1999 decision of the Federal Court Trial Division which granted the respondent summary judgment on limited terms. The respondent holds Canadian Letters Patent 2117040 for a system for the treatment of waste water using ultraviolet radiation in a gravity-fed fluid treatment system. The appellants manufacture and sell a waste water treatment system using ultraviolet radiation as well. The respondent instituted a patent infringement action against the appellants on the grounds that the appellants" system infringes the respondent"s patent. The learned Motions Judge granted the respondent partial summary judgment finding that patent claim 22 and dependent claims 24 to 27 were valid and had been infringed. The balance of the respondent"s infringement action in respect of claims 1 and 28 to 31 were ordered to be resolved in a trial.
[2] On this appeal, the appellants say the learned Motions Judge erred in granting partial summary judgment to the respondent:
| (a) because of conflicting evidence relating to infringement; and |
| (b) because, contrary to the evidence, she found that the prior art referred to by the appellants" expert did not deal with "modularity" and that therefore the appellants did not provide credible and substantial evidence that claim 22 was invalid. |
[3] Claim 22 provides:
| A radiation source module for use in a fluid treatment system comprising: |
| a first support member; |
| at least one radiation source assembly extending from the said support member, the at least one radiation source assembly comprising at least one radiation source, the at least radiation source be elongate, having one end thereof secured to the support member and having an opposite end thereof free; and |
| fastening means to affix the radiation source module in the fluid treatment system. |
[4] As to infringement, the learned Motions Judge relied on the evidence of the appellants" expert witness who admitted that all of the essential elements of claims 22 and 24 to 27 were found in the appellants" system. The appellants say another of their witnesses testified that one aspect of the appellant"s system was not the same, i.e. that one end of its radiation source was not free, as in the respondent"s patent. The appellants here are attempting to rely on a conflict in the evidence of their own witnesses. When considered in context, we doubt that there is a real conflict. More to the point, however, it ill-behooves an alleged infringer to argue, on the basis of contradictions in its own evidence, that summary judgment should not be granted. We find no error in the learned Motions Judge relying on the evidence of the appellants" expert witness, which was consistent with the respondent"s expert evidence on infringement, in finding that there had been infringement of claims 22 and 24 to 27 of the respondent"s patent.
[5] As to invalidity, the learned Motions Judge stated at paragraph 6 of her reasons:
| Further, with respect to obviousness of claim 22, none of the references cited by the defendant are applicable. As indicated by the applicant, none deal with modularity. Consequently, the defendant did not provide credible and substantial evidence that claim 22 is invalid. [Emphasis in original] |
[6] However, before her was the evidence of the appellants" expert that in respect of modularity, claim 22 included radiation source modules shown in prior patents. One prior patent refers to "modularized" and another to "modular" and "modules". The respondent did not file evidence in reply to the appellants" evidence on obviousness in respect of claim 22, nor did it cross-examine the appellants" expert on the issue of modularity. The brief reasons of the learned Motions Judge do not disclose why, in the face of references to modularity in prior patents, she concluded that none dealt with modularity, nor why she rejected the appellants" evidence on modularity in prior art in the absence of contradictory evidence.
[7] The respondent argued that modularity in the context of the patent at issue is "cantilevered modularity", that is, an ultraviolet radiation source assembly connected to a projecting arm, being removable for maintenance by raising the arm out of the waste water, without removing other modules and shutting down the entire treatment system. If indeed this was the context in which the learned Motions Judge was referring to modularity, her reasons do not make that clear. We have reviewed the prior art and while it may be that cantilevered modularity is not disclosed and is not obvious, we cannot say on a balance of probabilities that such is the case. We can say, however, that the learned Motions Judge erred in finding, as she did, that the prior art did not deal with modularity. As that was the basis on which she concluded that the appellants did not provide credible and substantial evidence that claim 22 was invalid, we find that her conclusion is not consistent with the evidence.
[8] We acknowledge that claims for invalidity of a patent by an alleged infringer must be closely scrutinized by a court. However, the high threshold to be met does not justify summarily dismissing the defence of invalidity without considering the evidence of prior art. The words of the learned Motions Judge are such that we are not satisfied she did have regard for the prior art relied upon by the appellants. In the circumstances of this case, we are of the view that the learned Motions Judge erred in finding that the appellants" prior art references did not deal with modularity and that on that ground the appellants did not provide credible and substantial evidence that claim 22 was invalid.
[9] The appeal will be allowed in respect of the invalidity finding only and dismissed with respect to the infringement finding and the matter will be remitted to the Trial Division to be set
down for trial on the issue of invalidity of claim 22 and the dependent claims 24 to 27 only, together with the other issues referred to trial by the Motions Judge.
"Marshall Rothstein"
J.A.