Digests

Wessel v. Energy Rentals Inc.

T-150-01

2004 FC 791, Snider J.

31/5/04

33 pp.

Westmen Oilfield Rentals (Alberta) Ltd., (Westmen) and Energy Rentals Inc. (ER) competitors in providing power swivel units together with drill collars to petroleum companies for purpose of reworking or servicing their oil and gas wells--Mr. Wessel inventor and holder of Canadian patent 2206675 (675 patent) for trailer-mounted power swivel unit--By licence agreement, Westmen holds exclusive rights to construct, use invention referred to as "Westmen Trailer"-- Westmen Trailer can transport all of necessary servicing equipment on one trailer hauled by pick-up truck--About two years after Westmen trailer put on road, ER began operating trailers resembling Mr. Wessel's invention--ER has 13 such units in operation--Action claiming ER infringing patent by operating trailers--ER denies claim on basis patent invalid and, in any event, design of their trailers not infringing-- Essential elements of claim identified--As to invalidity of patent by reason of obviousness, test whether mythical skilled oilfield service technician would be led, based on state of art, to claimed invention without conducting further experiments, serious thought or research--Invention here undeniably simple--However, apparent simplicity not leading to conclusion Westmen trailer obvious and not worthy of patent --Factors supporting conclusion of inventiveness, in spite of simplicity of unit: Westmen trailer invention not intuitive, took significant time and effort to develop, demonstrated immediate commercial success and copied by competitor-- Cumulative effect of these factors that patent inventive, not obvious--As to invalidity by reason of anticipation, to be pleaded successfully, anticipation must be found in specific prior use--Any prior use not containing entire combination of essential elements not anticipatory--Two trailers in use in Manitoba from early 1980s until 2000 advanced as evidence of prior use--But designed to carry rig assist swivels only-- Dramatic departure from invention--Someone looking at either of these trailers would not be able to find in it all information needed to produce claimed invention without exercise of any inventive skill and without possibility of error --Accordingly, neither trailer sufficient to allow ER to succeed in its plea of anticipation and patent not invalid by reason of anticipation--As to whether ER's trailers infringe patent, neither minor different positioning of equipment nor use of ER trailers without drill collars sufficient to conclude patent not infringed--Necessary to examine essential element of invention--Patent provides Westmen trailer sufficiently unbalanced without drill collars to be unstable for highway travel--Therefore necessary to determine whether ER trailers unbalanced and whether imbalance sufficient to render trailer unsafe for highway travel--Evidence establishing ER trailers not balanced side to side--As to whether ER trailers sufficiently unbalanced to be unstable for highway travel, analysis commenced with examination of stability or instability of Westmen trailer--Westmen trailer without load of drill collars sufficiently unbalanced to be unstable in certain evasive manoeuvres carried out on certain types of highways --Whether differences in two trailers leading to conclusion unloaded ER trailer stable--Field test results not supporting conclusion ER trailer sufficiently balanced to be stable for highway travel--Theoretical analysis of overturn potential of ER trailer also not supporting proposition unloaded ER trailer stable--Final expert concluded ER trailer considered to be more stable than Westmen trailer in unloaded condition for three reasons, of which calculation of rollover threshold most relevant--Once that calculation corrected, insignificant difference in stability of two trailers--Thus, if Westmen trailer unstable, so is ER trailer--ER trailers infringes patent.