Digests

Almecon Industries Ltd. v. Anchortek Ltd.

A-34-02, A-398-02

2003 FCA 168, Sharlow J.A.

1/4/03

15 pp.

Appeal from judgment of Trial Division ((2001), 17 C.P.R. (4th) 74) finding respondent's Canadian Patent Number 1220134 (Almecon patent) valid and infringed by appellants --Seismic exploration carried out by drilling into ground pattern of deep holes, each approximately 3.5 inches in diameter, and detonating explosive charge placed near the bottom of each hole--Results of explosion recorded by devices on surface--Ground then restored by filling hole with earth, mud or concrete--Expert analysis of record discloses information used to help locate oil and gas--Seismic bore hole plug inserted into bore hole some distance above explosive charge and 18 to 24 inches below ground level-- Prior to 1987, ideal plug would contain explosion within bore hole (tamping function) and remain in place to support fill required to close hole (topping function)--Plugs in use before 1987 inclined to blow out of ground during explosion, serving neither tamping nor topping function--Problem alleviated by Almecon invention, seismic bore hole plug sold under name "King Plug"--Appeal dismissed--(1) Whether Trial Judge erred in concluding Anchortek's "Energy Plug" infringed claim 5 of patent in that respondent's claim of infringement in relation to that claim dropped at outset of trial--Counsel for Almecon did not abandon Almecon's claim for infringement of claim 5--Counsel simply said finding claim 1 not infringed would establish claim 5 not infringed--Evidence adduced by both parties in relation to both claims--(2) Whether Trial Judge erred in concluding Anchortek's "Energy Plug" infringed claim 1 of patent in failing to apply Mr. Justice Wetston's construction of claims 1, 5 in earlier infringement action--After reading Trial Judge's reasons, nothing turned on difficulty Trial Judge perceived with one aspect of Mr. Justice Wetston's construction--In final analysis, Trial Judge adopted and correctly applied Mr. Justice Wetston's construction, and correctly concluded front end of Anchortek's "Energy Plug" somewhat flattened and substantially closed--(3) Whether Trial Judge erred in concluding Anchortek's "Energy Plug" infringed claim 1 of patent (a) in determining essential elements of patented plug by reference to respondent's commercial embodiment rather than language of claim, and (b) in failing to properly apply test for infringement set out in Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R. 1024--(a) Trial Judge adverting to construction of claims in course of discussion of difference between literal substantive infringement--In connection with applicable principles from Free World Trust, compared characteristics of plugs of both parties--Recitation of essential elements substantially restatement of Mr. Justice Wetston's construction--Trial Judge not construing patent with eye on infringing device-- (b) Anchortek also argued Trial Judge failed to consider essential elements of claim from point of view of person skilled in art--Trial Judge may have preferred expert opinion to opinions of experienced seismic crew technician, whom he accepted as person skilled in the art--Trial Judge's conclusion justified by evidence--Preferable if Trial Judge, instead of simply stating relying on "totality of the evidence", had explained more specifically why preferred opinion of professional engineer over that of experienced seismic crew technician--However, lack of such detailed explanation not fatal to judgment--Anchortek also argued Trial Judge, in considering question of infringement, erred by failing to refer to essential requirements that forward end of body must terminate with somewhat flattened end part and be substantially closed, and in concluding "Energy Plug" is "tamping plug"--Evidence supports conclusion of Trial Judge--Despite existence of openings in forward end of Energy Plug, it effectively "tamped" explosions in seismic bore hole, and this was sufficiently explained by fact particular configuration of forward end of Energy Plug, in functional terms, somewhat flattened and substantially closed --(3) Whether Trial Judge erred in considering "hypothetical" or "doctored-up versions" of "Energy Plug" rather than Anchortek's actual product, and in comparing "doctored-up" versions of "Energy Plug" to Nutron product found to infringe in Nutron action--Trial Judge made no error in relying upon evidence to aid in gaining full understanding of various parts of "Energy Plug" and way in which worked--(4) Whether Trial Judge erred in concluding invention of patent included plug of Energy Plug design, despite statement of inventors had rejected such design at brainstorming stage--Evidence supports conclusion of Trial Judge, accordingly argument must fail.