BETWEEN:
- and -
THE CORPORATION OF THE CITY OF
NORTH BAYand
TROJAN TECHNOLOGIES INC.
REASONS FOR ORDER AND ORDER
HUGESSEN J.
[1] This is an action for patent infringement. The plaintiff, Calgon Carbon Corporation ("Calgon") alleges that Canadian Patent No. 2,331,525 (the "'525 patent") has been infringed by the defendant, the Corporation of the City of North Bay ("North Bay"), and the other defendant Trojan Technologies Inc. ("Trojan") the action seeks various relief including a declaration of infringement, a permanent injunction and damages.
[2] The '525 patent claims a method for preventing cryptosporidium oocysts ("crypto"), using ultraviolet light to irradiate water (water purification). The expert for the plaintiff, on cross-examination, admitted that the techniques claimed, which are used to irradiate the water, have been used before for water treatment and the killing of bacteria and viruses, but not directly as a method for the prevention of other organisms such as crypto. Prior to the discovery which led eventually to the patent it had been thought that it was necessary to kill the crypto organisms which required a much higher dose of radiation than was used for the elimination of bacteria and viruses; the patent teaches that a much lower dose of radiation, similar to what was already being used to kill bacteria and viruses, which simply disables the crypto so as to prevent replication is enough to prevent disease.
[3] The claims of the '525 patent are as follows:
WHAT IS CLAIMED:
1. A method for the prevention of cryptosporidium oocysts comprising irradiating water with a continuous broad band of ultraviolet light in doses of from about 10 mJ/cm2 to about 175 mJ/cm2.
2. A method as set forth in claim 1 wherein said broadband is a frequency of 200 to 300 nm using a UV lamp.
3. A method as set forth in claim 1 or 2 wherein said dose is from about 20 mJ/cm2 to about 30 mJ/cm2.
4. A method as set forth in claim 1 wherein said broadband is a frequency of 200 to 300 nm using a medium pressure UV lamp.
[4] The parties supply a number of expert affidavits and cross-examinations, which document the method claimed, and the prior art. The expert for the plaintiff, Dr. Huffman, admitted on cross-examination that if the phrase "for the prevention of cryptosporidium oocysts" was removed from claims 1-4, that the method was well-known (prior to the claim date) and old. Dr. Huffman also admitted that the method had been used in waste water applications, surface water applications, drinking water applications, and recreational applications (ie: swimming pools), prior to the claim date, but not directly for the purpose of preventing crypto. The defendant, North Bay, abandoned its own expert evidence for the purposes of this motion and relied only on the evidence of Dr. Huffman.
[5] The defendant/moving party correctly points out that the issue is whether the phrase, "for the prevention of cryptosporidium oocysts" in the claims of the '525 patent is sufficient to render the method claimed in the patent an invention.
[6] The defendant/moving party argues that the '525 patent is invalid as the invention claimed was already known (not novel.) The moving party notes that, while the phrase "for the prevention of crypto" is new, the invention (a) existed in the past, and (b) prevented crypto in the past.
[7] The defendant/moving party also argues that the '525 patent does not disclose an invention, but rather relates to a mere discovery of an advantage of an old invention.
[8] The current test for summary judgment in this Court is whether there is a genuine issue for trial. Since the decisions of the Court of Appeal in MacNeil Estates v. Canada 2004 FCA 50 and Trojan Technologies Inc. v. Suntec Environmental Inc. 2004 FCA 140, if there is a genuine issue to be tried, then summary judgment is not available. In the current context, I am convinced that summary judgment is available in the instant matter, for the reasons that follow.
[9] Rule 216 of the Federal Court Rules SOR-98/106 reads as follows:
216. (1) Where on a motion for summary judgment the Court is satisfied that there is no genuine issue for trial with respect to a claim or defence, the Court shall grant summary judgment accordingly.
216. (2) Where on a motion for summary judgment the Court is satisfied that the only genuine issue is
[...]
(b) a question of law, the Court may determine the question and grant summary judgment accordingly.
216. (3) Where on a motion for summary judgment the Court decides that there is a genuine issue with respect to a claim or defence, the Court may nevertheless grant summary judgment in favour of any party, either on an issue or generally, if the Court is able on the whole of the evidence to find the facts necessary to decide the questions of fact and law.
[10] Without getting into a discussion of s. 216(3), which has been the subject of much debate, I believe that this matter can be disposed of given sections 216(1) and 216(2)(b). The defendant argues that patent construction, and interpretation is a question of law, and that the use of the phrase, "for the prevention of cryptosporidium oocysts" can be construed on a motion for summary judgment, under Rule 216(2)(b). Patent construction and interpretation is, as the defendant suggests, a question of law, and therefore can be dealt with under 216(2)(b).
[11] In his argument counsel for the defendant North Bay abandons any reliance on the affidavit evidence which he has himself produced and rests his case entirely upon the affidavit and cross-examination evidence of the plaintiff's expert Dr. Huffman. At the hearing of the motion, the plaintiff's counsel argued strenuously that the evidence of the defendant's expert must also be considered on this motion but he was unable to point to any issue of substance raised by that evidence. The competence and capacity of the plaintiff's own expert as a "person skilled in the art" is a wholly collateral issue and even if it lay in plaintiff's mouth to raise the question I would have no difficulty ruling that Dr. Huffman was competent to give the evidence she gave. In my view the defendant is fully entitled to rely on the evidence produced by plaintiff. The issue is not who has produced the evidence but whether it establishes that there is no genuine issue for trial. On the present motion the moving party, North Bay, bears the onus of proving that there is no genuine issue for trial (see Miliken & Co. v. Interface Flooring Systems (Canada) Inc. (1997), 76 C.P.R. (3d) 499). Given that onus and the fact that there is no property in any witness I see no reason why North Bay should not be able to rely only on the other party's expert evidence, and abandon its own expert's evidence for the purpose of this motion.
[12] On the substance of the motion, the patent must be construed and the prior use of the claimed method must be analyzed. The defendant argues that the "prevention of cryptosporidium oocysts" is the mere discovery of an advantage of an old invention. In the cross-examination of Dr. Huffman, questions 15-23, the plaintiff's expert admitted that, should the words, "for the prevention of cryptosporidium oocysts" be removed from the claims of the '525 patent, the method is old and was well known before the '525 patent priority date (May 13, 1998). The relevant testimony on cross-examination is reproduced here:
I'd ask you just to take a pen and in your book just put parenthesis
around the words, "for the prevention of Cryptosporidium oocysts."
Could you do that, please?
Okay. Now, I want you to consider taking those words out.
If you simply take out the words that you have in parenthesis, that is
"for the prevention of Cryptosporidium oocysts" from claims 1 through 4,
would you agree with me that the method set out there is old and well known
before May 13th, 1998?
A. Yes.
16. Q. Thank you. And it was used in --certainly in
waste-water applications, that method?
A. That's correct.
17. Q. And it was used in drinking-water applications?
A. That's correct.
18. Q. It was used in water treatment for recreational
applications; correct? Swimming pools and -
A. Potentially to a small degree, correct.
19. Q. Correct?
A. Yes.
20. Q. And it was used in applications where there was
surface water being treated?
A. That's correct.
21. Q. And as well as groundwater being treated?
A. That's correct.
22. Q. Okay. As a matter of fact, there were hundreds,
if not thousands, of these applications out there prior to May 13th, 1998; correct?
A. You're talking worldwide?
23. Q. Yes.
A. Yes.
[13] Dr. Huffman further admitted that cryptosporidium oocysts would have been prevented from replicating in the systems that existed prior to May 13, 1998 (cross-examination Question 30). Dr. Huffman continually notes that, even if the old systems did prevent cryptosporidium oocysts from replicating, it was not known that the systems prevented replication until the '525 patent priority date. Dr. Huffman argues that the prevention of cryptosporidium oocyst replication is a new use.
[14] Given Dr. Huffman's evidence, the patent must be given the following interpretation: the key element of the patent, or the element which the plaintiff relies on for patentability, is the use of the system to prevent cryptosporidium oocyst replication.
[15] In response to the defendant's arguments that the knowledge of prevention is the only issue in the patent, the plaintiff submits that knowledge, or lack thereof, must be considered in this matter. The plaintiff argues that Shell Oil v. Commissioner of Patents (1982), 67 C.P.R. (2d) 1 (S.C.C) applies to the instant matter, and that there is a knowledge component that must be considered. The plaintiff argues that application of new knowledge to effect a desired result of commercial value is an invention if it falls within the words "any new and useful art" in section 2 of the Patent Act, R.S.C. 1985 c. P-4. The Supreme Court of Canada noted the following in Shell Oil at 10:
What then is the invention under s. 2? I believe it is the application of this new knowledge to effect a desired result which has an undisputed commercial value and that it falls within the words "any new and useful art". I think the word "art" in the context of the definition must be given its general connotation of "learning" or "knowledge" as commonly used in expressions such as "the state of the art" or "the prior art". The appellants' discovery in this case has added to the cumulative wisdom on the subject of these compounds by a recognition of their hitherto unrecognized properties and it has established the method whereby these properties may be realized through practical application. In my view, this constitutes a "new and useful art" and the compositions are the practical embodiment of the new knowledge.
[16] In Shell Oil, the Supreme Courtof Canada recognized that a patent must establish a, "method whereby these [new] properties may be realized through practical application". In the instant matter, there is no new method. The water treatment system still uses the same "old" method as the existing systems in, amongst other places, Fort Benton and Trout Lake. The old method is the same as the new method, as affirmed by Dr. Huffman. Likewise, the results obtained have not changed: under both the old and the new methods the replication of crypto was effectively prevented. All that has changed is that the system of water purification previously used to eliminate bacteria and viruses has now been shown to be effective as well in the elimination of the danger of disease due to crypto.
[17] The plaintiff goes on to arguethat the test for anticipation is not met in the face of new knowledge (the prevention of cryptosporidium oocyst replication). The plaintiff submits that Baker Petrolite Corp. v. Canwell Enviro- Industries Ltd. (2002), 17 C.P.R. (4th) 478 illustrates that anticipation cannot occur where there is new knowledge. In Merrel Dow Pharmaceuticals v. H.N. Norton & Co. Ltd., [1996] R.P.C. 3, cited with approval in Baker Petrolite, the House of Lords stated:
Likewise, a gap has opened between the test for infringement and anticipation. Acts done secretly or without knowledge of the relevant facts, which would amount to infringements after the grant of the patent, will not count as anticipations before.
[18] The plaintiff argues, based on Baker Petrolite, supra, that the defendant has to show a prior, single use all the information which, for practical purposes, is needed to produce the claimed invention without the exercise of any inventive skill (see Beloit Canada Ltd. v. Valmet Oy (1986), 8 C.P.R. (3d) 289 (F.C.A.)). The plaintiff, based on the phrase "without knowledge" in Merrel Dow, supra, claims that there must necessarily be a knowledge component, which is absent here, to the prior use as the users at Fort Benton and Trout Lake did not know that the method used for water treatment prevented the replication of cryptosporidium oocysts. The test for a patentable invention, based on new knowledge, involves analyzing whether the '525 patent constitutes a patentable invention or a mere discovery or previously unknown advantage.
[19] The key element of the '525 patent that is at issue here is the use for the prevention of cryptosporidium oocyst replication. The defendant does not contest that the old systems were operating without the express knowledge that the systems prevented cryptosporidium oocyst replication, but rather argues that the prevention of cryptosporidium oocyst replication is a mere discovery, and not an invention. The defendant argues, and I agree that Riello Canada, Inc. v. Lambert (1986), 9 C.P.R. (3d) (FCTD) applies to the instant matter. In Riello, the Federal Court noted, at p. 335-336:
The identification of an additional advantage to a mechanical device -- an advantage which has always existed but which was theretofore unperceived -- does not, in my view, constitute any new "art", nor "process", nor "machine", nor "manufacture or composition of matter", nor any "new and useful improvement" in any of the foregoing. It seems to me that, at best, it is a "discovery".
The classic distinction between a "discovery" and an "invention" may be found in the judgment of Buckley J. in Reynolds v. Herbert Smith & Co., Ltd. (1902), 20 R.P.C. 123 (Ch. D.). In that case the patentee had claimed only for an article made of commonly available materials. It involved a strip of canvass with a piece of india rubber attached to it, to be used for wrapping around damaged tires in order to make a repair. At p. 126 Buckley J. said:
Discovery adds to the amount of human knowledge, but it does so only by lifting the veil and disclosing something which before had been unseen or dimly seen. Invention also adds to human knowledge, but not merely by disclosing something. Invention necessarily involves also the suggestion of an act to be done, and it must be an act which results in a new product, or a new result, or a new process, or a new combination for producing an old product or an old result.
Applying this test to the present case, there is nothing in the nature of an invention because there is no new product, no new result, no new process, nor any new combination for producing an old product or an old result. There is simply an old product. Its use in the same manner produces no "new result" but merely the same result as before, albeit that the defendant alleges that part of that result was previously unknown. What the defendant has contributed, if anything, is an idea -- the idea that if a homeowner uses a device which is already well known and available he will realize more benefits than he would previously have expected. At p. 127 of the Reynolds case Buckley J. states:
Now the idea that leads to an invention is, in my opinion, no part of the invention. The idea, or the recognition of the want, stimulates the inventor to do something else. It is the something further which he does which is the invention. The mere idea, or the conception that it is very desirable to have a patch, such as that you can put it on when you have not got the materials in the workshop is not patentable. What is patentable is a new way of doing that thing, either by way of a new article to be used, or a new method of putting it on, or some combination which would be capable of being patented. I cannot find that there is anything of that sort here.
Similarly, I cannot find anything capable of being patented in the present case.
[20] Adopting and applying the decision in Riello, the test is quite clear: there must be a new process, new result, new product, or a new combination for producing an old product or an old result. As in Riello, none of the new elements exist here. The process and product are the same. The result remains the same, even if the prevention of cryptosporidium oocyst replication was previously undiscovered. The use of an old invention to prevent cryptosporidium oocyst replication is a mere discovery, and not a new invention, even if the advantage was previously unknown. The use of the system in the '525 patent for the prevention of cryptosporidium oocyst replication is a mere discovery, and not a new invention.
[21] In conclusion, I find that summary judgment is an appropriate remedy in this matter. Rules 216(1) and 216(2)(b) allow the motion to be decided where there is no conflicting evidence, or where the decision involves a question of law. That is our situation.
[22] The prevention of crypto replication by the methods claimed in the patent in suit is not a new result, process, or product, as the system remains the same. As was the case in Riello, the '525 patent relates to a mere discovery of a previously unknown advantage, in this case of a water treatment system. A new discovery, or a previously unknown advantage of an existing invention is not, in and of itself, a patentable invention. The '525 patent does not disclose a patentable invention and is accordingly invalid. Given that finding, there are no genuine issues for trial, as an invalid patent cannot be infringed.
[23] Summary judgment should be granted and the action as against North Bay dismissed with costs to be assessed. Although the counterclaim seeks a declaration of invalidity of the patent in suit, that prayer is not repeated in the motion for summary judgment and accordingly cannot now be granted.
ORDER
The motion for summary judgment is granted and the action against the defendant North Bay is dismissed with costs to be assessed.
"James K. Hugessen"
Judge
Ottawa, Ontario
June 15, 2005
FEDERAL COURT
NAME OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-1408-02
STYLE OF CAUSE: CALGON CARBON CORPORATION
- and -
THE CORPORATION OF THE CITY OF NORTH BAY and TROJAN TECHNOLOGIES INC.
PLACE OF HEARING: OTTAWA, ONTARIO
APPEARANCES:
RON DIMOCK AND MICHAEL CRINSON FOR PLAINTIFF
GARY O'NEILL AND DAVID TAIT FOR DEFENDANTS
SOLICITORS OF RECORD:
DIMOCK STRATTON LLP
TORONTO, ONTARIO FOR PLAINTIFF
GOWLING LAFLEUR HENDERSON LLP