Date: 19991112
Docket: T-1973-95
OTTAWA, ONTARIO, THIS 12TH DAY OF NOVEMBER, 1999.
PRESENT: THE HONOURABLE MR. JUSTICE EVANS
BETWEEN:
NORAC SYSTEMS INTERNATIONAL INC.
Plaintiff
- and -
WILLIAM ELLIOTT, MARCEL FENDELET,
PRAIRIE SYSTEMS AND EQUIP. LTD. and
CALGARY SCALE SERVICES (1988) LTD.
c.o.b. as CALGARY SCALE SERVICES LTD.
Defendants
ORDER
| The motions are dismissed with costs in the cause. |
"John M. Evans"
J.F.C.C.
Date: 19991112
Docket: T-1973-95
BETWEEN:
NORAC SYSTEMS INTERNATIONAL INC.
Plaintiff
- and -
WILLIAM ELLIOTT, MARCEL FENDELET,
PRAIRIE SYSTEMS AND EQUIP. LTD. and
CALGARY SCALE SERVICES (1988) LTD.
c.o.b. as CALGARY SCALE SERVICES LTD.
Defendants
REASONS FOR ORDER
EVANS J.:
[1] Norac Systems International Inc. has commenced an action against Prairie Systems and Equip. Ltd. and others seeking a declaration that the defendants have infringed Canadian Patent 2,096,761 which is owned by the plaintiff. The plaintiff has settled its claim with Calgary Scales, which has therefore dropped out of the litigation.
[2] The present proceeding concerns two motions for summary judgment brought by Norac and Prairie Systems. The plaintiff, Norac, has brought a motion for summary judgment under Rule 213(1) of the Federal Court Rules, 1998. In addition to responding to this motion, the defendant has brought a motion of its own under Rule 213(2) for summary judgment dismissing the plaintiff"s statement of claim. The motions were heard together.
[3] Rule 216(1) provides that a motion for summary judgment shall be granted when the Court is satisfied that there is no genuine issue for trial with respect to a claim or a defence. Rule 216(3) provides that, even if there is a genuine issue with respect to a claim or a defence, summary judgment may be granted if the Court is satisfied that on the whole of the evidence it is able to find the facts necessary to decide the questions of fact and law that are in dispute. The moving party has the burden of satisfying the Court that there are no issues of fact that can only fairly be determined at trial: Feoso Oil Ltd. v. Sarla (The), [1995] 3 F.C. 68, 82 (F.C.A.).
[4] Canadian Patent 2,096,761 is for a mobile weighing system. The weighing system covered by the patent attaches to the frame of a truck and enables goods to be weighed while they are on the truck. In particular, it is used for weighing the content of cylinders, containing fertilizer, for example, that are being transported on trucks.
[5] While Norac"s product was not the first mobile weighing system on the market, it contains features that are alleged to have improved significantly on previous systems, including ease of installation and use. In addition, because the load cell is hung, rather than rested, the system can provide an accurate measurement of weight even though the load being weighed is not vertical because, for example, the truck is parked on uneven ground.
[6] The plaintiff alleges that the "on-board" weighing system manufactured by Prairie Systems infringes its patent, and in particular claims 6 and 7. Claim 6 is for:
| A weighing cell for use in a mobile weighing system, comprising a lifting mechanism having an extended and a rest position, a vertically disposed tension load cell which produces an output correlated to a tension load thereon and a linkage assembly whereby said linkage assembly couples said lifting mechanism and said load cell to cause an upward force on a first end of said load cell when said lifting mechanism is in an extended position, the second end of said load cell being configured for coupling to a load support frame such that said load support frame may be suspended by a plurality of said load cells when the lifting mechanisms thereof are in extended positions. |
Claim 7 is for :
| A weighing cell according to claim 6 wherein said linkage assembly comprises a stationary bar and a cross-arm pivotally attached thereto and said first end of said load cell is pivotally attached to said cross-arm whereby said load cell remains vertically disposed when said lifting mechanism is in an extended position. |
[7] The weighing system of the defendant that allegedly infringes the elements of claim 6 is described in an expert report prepared on behalf of the defendant by Lorne G. Smith, a mechanical engineer. However, Mr. Smith"s report was only attached as an exhibit to the affidavit of William Elliott, the president of Prairie Systems. The report was not sworn by Mr. Smith as an affidavit, nor was he cross-examined on it.
[8] The report mostly compares the description of the preferred embodiment contained in the plaintiff"s patent with the defendant"s weighing system and notes many differences between them. It also concludes that
| the substance or essence of the parts assembly and operating methods as described in claim No. 6 of the Patent is definitely not present in the Defendant"s weighing cell. |
As for what might be added to claim 6 by claim 7, Mr. Smith states that it
| is nothing more than a simple machine (fulcrum and lever) utilized to apply force from a hydraulic cylinder to raise a load. |
The report concludes:
| There is nothing novel or innovative about this action. It is prior art and well known to anyone skilled in the design of such systems. |
[9] Counsel for the plaintiff submitted that, apart from the fact that Mr. Smith"s report is inadmissible as hearsay, it did not assist the defendant because infringement is not determined by reference to the description of the preferred embodiment, but to the content of the claims.
[10] However, in his oral submissions counsel for the defendant elaborated on Mr. Smith"s conclusion that the defendant"s product did not infringe claim 6, and pointed to specific differences between the parties" products that demonstrated that the defendant"s weighing system did not infringe the elements of claim 6, which has principally been relied on by the plaintiff in this proceeding.
[11] For example, counsel said that, unlike the plaintiff"s weighing system, the defendant"s has no tension load cell; the defendant"s system has no linkage assembly at either end; and in the defendant"s system the end of the load cell was not configured for coupling to a load support frame.
[12] Counsel for the defendant went on to submit that the defendant"s system is so different from the plaintiff"s patented mobile weighing system that none of the elements of the claim is infringed, and that consequently the statement of claim should be dismissed.
[13] Despite the submission of counsel for the plaintiff that the disposition of the dispute turns entirely on a construction of the "plain and unambiguous" language of the specification, these motions were in my opinion misconceived. In Pallmann Maschinenfabrik GmbH Co. KG v. CAE Machinery Ltd. and PS & E Projects Ltd. (1995), 98 F.T.R. 125, (F.C.T.D.), Teitelbaum J. said:
| I am of the view that summary judgment should only be granted in circumstances where the facts are clear. I am also of the view that, in general, summary judgment is not the proper means to obtain judgment where the issues before the court involve the infringement or the invalidity of a patent. |
[14] There will, of course, be exceptions to this general rule, as is illustrated by Hudson Luggage Supplies Inc. v. Tormont Publications Inc. (1995), 65 C.P.R (3d) 216 (F.C.T.D.). In that case, after inspecting the allegedly offending product, Noël J. (as he then was) was able to satisfy himself that it contained each of the elements of the patent claim.
[15] However, I am not satisfied that the case before me justifies a departure from the general rule enunciated in Pallmann. As should be clear from these reasons, the issues in dispute between the parties are sufficiently numerous and technical in nature that their proper elucidation requires viva voce evidence, including testimony from the parties" expert witnesses who can be cross-examined. In my opinion, more is involved in the resolution of this dispute than a construction of the patent.
[16] Neither the limited written materials submitted by the parties in support of their motions, including the inadmissible report from Mr. Smith and the extracts from transcripts of the examinations for discovery of the presidents of the parties, nor the oral submissions of counsel, satisfied me that the facts were sufficiently clear that there was no genuine issue that should be sent to trial.
[17] Given both the nature of the material submitted in support of these motions, and the manner in which it was presented, I am not in a position to determine whether, as the plaintiff alleges, each and every element of claim 6 is to be found in the defendant"s product or, as the defendant alleges, none is.
[18] Accordingly, the motions are dismissed with costs in the cause.
OTTAWA, ONTARIO "John M. Evans"
November 12, 1999. J.F.C.C.