UPONOR AB Plaintiff v. HEATLINK GROUP, 2016 FC 320

Date: 20160316 Docket: T-496-11 Citation: 2016 FC 320 Ottawa, Ontario, March 16, 2016 PRESENT: The Honourable Mr. Justice Manson BETWEEN: UPONOR AB Plaintiff And HEATLINK GROUP INC. AND PEXCOR MANUFACTURING COMPANY INC. AND CROSSLINK FINLAND OY AND INOEX GMBH AND INOEX LLC Defendants AND BETWEEN: PEXCOR MANUFACTURING COMPANY INC. AND HEATLINK GROUP INC. Plaintiffs by Counterclaim And UPONOR AB Defendant by Counterclaim TABLE OF CONTENTS I. Background . 3 A. The Parties and Pleadings . 3 B. Technical and Background Information to Understanding the ‘376 Patent 6 (

a) Polyethylenes & Crosslinking . 6 (

b) Infrared Radiation, Equipment & Spectra . 8 II. Canadian Patent 2,232,376 (the ‘376 Patent) 8 A. Claims in Issue: 1-38 (Counterclaim relates to validity of all the Claims) 8 B. Claim Construction . 9 (

a) Principles, Relevant Date . 12 (

b) Claim Terms Needing Construction . 13 (

i) Elimination . 14 (ii) Filtered out 14 (iii) Wavelengths corresponding to the absorption peaks of polymer material 15 (

c) The Person Skilled in the Art (POSITA) 15 (

d) Common General Knowledge . 16 III. Preliminary Issues . 18 A. Relevant Dates for Anticipation, Obviousness: claim date (priority documents) 18 B. Inventors’ Liability under

Section 53 of the Patent Act 19 IV. Fact Witness Evidence . 21 A. Bill Gray . 21 B. David Harget 22 C. Jan Rydberg . 22 D. Michael Sjöberg . 23 E. Jan Robertson . 23

V. Expert Witness Evidence on Claim Construction and Validity . 24 A. Plaintiff’s Expert Witnesses . 24

(1) Dr. Gene Palermo . 24

(2) Dr. Robert Kimmel 27 B. Defendants’ Expert Witnesses . 35

(1) Dr. Glenn Boreman . 35

(2) Dr. John Dutcher 39

(3) Franz Seydel 42 C. Plaintiff’s Responding Reports on Validity . 45

(1) Dr. Robert Kimmel 45

(2) Dr. Mohamad Al-Sheikhly . 46 VI. Validity Analysis . 47 A. Unpatentable Subject Matter 47 B. Utility . 48 C. Insufficiency of the Disclosure . 52 D. Anticipation . 61

(1) The IR Handbook . 63

(2) Electric IR Heating . 66

(3) Polymer Processing . 66

(4) The ‘624 Patent 67 E. Obviousness . 68 VII. Expert Witness Evidence on Infringement 78 A. Plaintiff’s Expert Witnesses . 78

(1) Dr. Gene Palermo . 78

(2) Dr. Robert Kimmel 80 B. Defendants’ Expert Witnesses . 80 VIII. Infringement Analysis . 81 A. Pexcor 81 B. Heatlink . 82 C. Crosslink . 82

(1) Direct 82

(2) Indirect (Inducing) 83 D. Laches and Acquiescence . 88 E. Unclean Hands . 89 IX. Remedies . 89 JUDGMENT AND REASONS I. Background

A. The Parties and Pleadings [ 1 ] This action concerns the infringement and validity of a number of claims of Canadian Patent 2,232,376 [the ‘376 Patent]. [ 2 ] The ‘376 Patent, entitled “Method for Heating and/or Cross-Linking of Polymers and Apparatus Therefor” , relates in general terms to a uniform, fast, and contactless method of crosslinking polymers using infrared [IR] radiation, wherein the wavelengths corresponding to absorption peaks for the polymer material are eliminated in the IR radiation.

The invention also relates to an apparatus used for the polymer crosslinking. [ 3 ] The ‘376 Patent was assigned a filing date of September 20, 1996, by the Canadian Intellectual Property Office, was published on March 27, 1997, and was issued on November 19, 2002. It claims priority from three foreign applications; 9503272-8 (Sweden), filed September 20, 1985; 9600091-4 (Sweden), filed January 11, 1996; PCT/EP96/02801 (PCT), filed June 26, 1996. The ‘376 Patent continues to be in good standing. [ 4 ] The Plaintiff in this action is a Swedish company, Uponor AB [Uponor], who is owner of the ‘376 Patent.

Wirsbo Bruks AB [Wirsbo], a predecessor company to Uponor, was the first company to manufacture crosslinked polyethylene [PEX] pipes. PEX has significant product performance advantages over non-crosslinked polyethylene pipes, and is also highly marketable by virtue of it being less expensive and quicker to install than non-crosslinked polyethylene. [ 5 ] The Defendants Pexcor Manufacturing Inc. [Pexcor] and Heatlink Group Inc. [Heatlink] are affiliated companies based in Calgary, Alberta that manufacture and sell PEX pipe.

Garry Schmidt and Manfred Schmidt are the key executives for management and operations of Pexcor and Heatlink. The third Defendant, Crosslink Finland OY [Crosslink], is a Finnish company that supplies, operates, imports, services and provides support for the IR ovens used by Pexcor. Mr.

Aarne Heino is the principal and sole operator of Crosslink. [ 6 ] Uponor claims that the Defendants Pexcor, Heatlink and Crosslink have infringed certain process claims (claims 1, 2, 3, 4, 7, 8, 9, 11, 12, 13, 14, 15, 16, 17) and apparatus claims (claims 19, 22, 23, 24, 25, 26, 27, 29, 30, 32, 33, 34, 35, 36, 37, 38) of the ‘376 Patent. [ 7 ] Between 2000 and 2012, Crosslink supplied Pexcor with six IR radiation ovens. Using the ovens, Pexcor started commercial manufacture of PEX pipe in 2003.

Uponor asserts that Pexcor is unauthorized to use the patented process and apparatus in the ‘376 Patent to make PEX pipe, and thereby directly infringed the patent. [ 8 ] Uponor asserts Heatlink is also liable for infringing the ‘376 Patent, as Heatlink markets, sells and distributes PEX pipe manufactured by Pexcor’s infringing process. [ 9 ] Crosslink’s subcontractor attended Pexcor’s facilities in Alberta, Canada, between 2005 and 2012 to add more IR units to the crosslinking ovens.

Uponor claims that Crosslink’s reconstruction of the ‘376 patented apparatus for Pexcor’s use in the ‘376 patented process renders Crosslink liable for direct infringement for having “made” the ovens in Canada. [ 10 ] Uponor also alleges Crosslink induced infringement of the ‘376 Patent. They claim that “but-for” Crosslink’s activities, Pexcor would not have directly infringed the patent’s process and apparatus claims. Crosslink provided Pexcor with instructions, advice, services, warranties and training, which enabled Pexcor to achieve the desired crosslinking of polyethylene by using the ‘376 Patent process.

Uponor claims this infringement was knowingly induced by Mr. Heino of Crosslink. [ 11 ] The Defendants denied all allegations of infringement and counterclaimed, challenging the validity of all 50 claims of the ‘376 Patent on the basis of anticipation and obviousness, insufficiency of description and indistinct claims, lack of utility, overbreadth, unpatentable subject matter and non-entitlement to priority claims.

They also alleged the ‘376 Patent is void under section 53(1) of the Patent Act , RSC 1985, c P-4, on the basis that untrue material allegations were wilfully made for the purpose of misleading during the prosecution of the ‘376 Patent. [ 12 ] Pexcor and Heatlink also allege Uponor is guilty of laches and acquiescence in bringing the action, as Uponor knew or ought to have known that manufacture by Pexcor and sale by Heatlink commenced in 2003.

Uponor formed the belief the ‘376 Patent was being infringed in 2005, yet did nothing to raise allegations of infringement until commencement of this action in January 2011. B. Technical and Background Information to Understanding the ‘376 Patent [ 13 ] The experts provided technical and background information they considered important for understanding the ‘376 Patent in context, and which they find would have been known by a person of skill in the art [POSITA] at the relevant time. (

a) Polyethylenes & Crosslinking [ 14 ] Polyethylenes are repeating units of two carbons and four hydrogens. They have diverse applications by virtue of their good thermal insulating properties, tensile strength, and relatively low melting points. The type of polyethylene used for a given application depends on how their repeating units are arranged.

High density polyethylene [HDPE] is used in pipe manufacture, and is characterized by a high number of densely-packed polyethylene chains that form crystalline structures resulting in greater stiffness, strength and superior barrier properties. [ 15 ] Crosslinking of polyethylene causes bond formation between adjacent polymer chains, which restricts the movement of chains relative to each other, resulting in increased strength, chemical, and heat resistance as compared to un-crosslinked polyethylene. [ 16 ] There are several ways to crosslink polyethylene.

The ‘376 Patent specification states the process taught in the patent is faster and provides superior quality products than previously widely-used polyethylene crosslinking processes: the Engel method and PEXEP

Process. [ 17 ] The Engel method, developed in the early 1970’s, involves mixing polyethylene resin pellets with organic peroxides prior to heating and extrusion. The ‘376 Patent varies this method by using IR radiation as the heat source. [ 18 ] In the PEXEP process, an extruded tube of polyethylene is heated by direct contact with heated wheels in order to initiate crosslinking. The background description of the ‘376 Patent invention states the disadvantages of the PEXEP process are reduced dimensional stability, inferior surface quality and non-uniform crosslinking throughout the entire tube wall. (

b) Infrared Radiation, Equipment & Spectra [ 19 ] IR radiation is a type of electromagnetic radiation. It is used in a wide variety of industrial equipment to heat, cure or dry products. Such equipment usually permits temperature regulation of the IR-generating source, which correlatively adjusts the desired wavelengths transmitted.

IR radiation follows a characteristic distribution of wavelengths: shorter wavelengths [short-wave IR] are emitted at higher temperatures and longer wavelengths [long-wave IR] are emitted at lower temperatures. [ 20 ] A material’s molecular structure causes it to better absorb different wavelengths of IR radiation, referred to as a material’s absorption profile. The IR spectrum for a given material, measured using IR spectroscopy, can be shown as a plot of either absorbance or transmittance versus wavelength.

Polyethylene optimally absorbs IR radiation at 3.2 to 3.6 microns [µm], 6.6 to 6.8 µm (the absorption peaks). II. Canadian Patent 2,232,376 (the ‘376 Patent) A.

Claims in Issue: 1-38 (Counterclaim relates to validity of all the Claims) [ 21 ] A short description of the alleged inventive concept of the ‘376 Patent is set out in pages 4 to 5 of the specification: The object of the present invention is to set forth a process and an apparatus making possible a fast, contactless and uniform heating of a polymer or polymer mix (which in the following will be called polymer material), inter alia for cross-linking, so that manufacture of objects made of cross-linkable polymers can be carried out at high speeds and with a good surface finish.

In accordance with the invention this is achieved in that the polymer material is irradiated with infrared radiation having wave lengths which differ from the wave lengths which are absorbed by the polymer material in question. This means that the infrared radiation penetrates through the polymer and in this way quickly heats the moulding throughout its entire thickness. In cross-linking this means that a high speed of manufacture is made possible. Since the heating is carried out by means of infrared radiation the heating can be done entirely without contact, which results in a high surface finish.

In a preferred embodiment, primarily used for cross-linking after extrusion, the zone with infrared radiation is arranged in a vertical direction from the extrusion nozzle, preferably upwardly, so that the moulding after the extrusion is fed vertically upwards through the said zone. Because of the fast and uniform heating the cross-linking proceeds quickly and the extruded moulding rapidly retains a high rigidity (that is the material in the body or moulding passes from having been mainly viscous to being mainly visco-elastic).

Since the cross-linking zone at the same time can be made short this results in that the risk for deformation or local thickening due to vertical yielding caused by gravitational forces will be small. Both the dimensional and the thermal stability thus will be high. To the extent peroxide for instance is used as a cross-linking agent, the agent does not have time to evaporate from the surface.

The above-mentioned objects of the invention are also achieved by means of an apparatus for heating mouldings provided with at least one zone with at least one source of infrared radiation, particularly for cross-linking of polymers which are cross-linkable by means of heat, the infrared radiation having wave lengths that mainly differ from the absorption peaks of the polymer in question. B. Claim Construction [ 22 ] The two independent claims that are the focus of this action are claims 1 and 19:

a) Claim 1: • Process for heating a polymer material, comprising irradiation of said polymer material with infrared radiation, wherein wave lengths corresponding to the absorption peaks for the polymer material in respect of infrared radiation, have been eliminated in the infrared radiation irradiating the polymer material.

b) Claim 19: • Apparatus for heating polymer material, comprising at least one zone with at least one source of infrared radiation for Irradiation of the polymer material with infrared radiation in which the wave lengths corresponding to the absorption peaks of the polymer material in respect of infrared radiation have been eliminated. [ 23 ] While claim 1 covers a process for heating a polymer material and claim 19 covers an apparatus for heating a polymer material, the essential features defining the invention claimed are the same:

a) irradiation of the polymer material with IR radiation;

b) such that the wavelengths corresponding to the absorption peaks for the polymer material in respect of the IR radiation have been eliminated.

[ 24 ] Claim 19 requires that the apparatus used have at least one zone with one source of the IR radiation. [ 25 ] A useful diagram of an embodiment of the process covered by narrower claims is shown in Figure 1 of the ‘376 Patent (labelling added): [ 26 ] The process, commencing at the left of the above diagram, is as follows: the peroxide (3) and polymer (2) are mixed in a hopper, and then enter the extruder.

The extruded polymer pipe (4) then travels around a wheel and is directed 90° upwards through four IR zones (7, 8), it then turns 180° over and around a large wheel at the top (9), and travels vertically downwards through a further four IR zones (10, 11). The pipe is then guided by another wheel (12) to make another 90° turn and enters a water bath (13) to cool and calibrate the pipe. Additional coatings are added, the pipe travels through a second water bath and is finally coiled, cut and bundled (15). [ 27 ] Figure 4 of the ‘376 Patent depicts the IR absorption profile of polyethylene.

The large dips (labelled A and

B) portray polyethylene’s main absorption peaks at 3.3 to 3.6 µm and 6.6 to 6.7 µm. It was the topic of much discussion at trial and is included herein for ease of reference: [ 28 ] While there are multiple claim dependencies, necessitating a claim by claim analysis for purposes of determining both the validity and infringement issues, the Expert Report of Dr. Kimmel on behalf of the Plaintiff provided a useful grouping of the general types of claims:

a) Group A (claims 1, 4-7, 14, 18, 19, 24, 28, 29-32, 38, 47-50): relates to irradiating polymer material with IR radiation in which absorption peaks of the polymer material have been eliminated. Dr. Kimmel included in this group dependent claims describing additional subject matter for use in manufacturing, such as use of reflecting devices, use of inert gases such as nitrogen, and the manufacture of oriented pipe and composite pipes;

b) Group B (claims 2, 3, 26, and 37): relates to elimination using filters;

c) Group C (claims 33, 34): relates to elimination using IR lamps;

d) Group D (claim 22): involves regulating IR radiation to achieve the desired degree of crosslinking;

e) Group E (claims 8-13): relates to the use of polyethylene, organic peroxides or azo-compounds as crosslinking additives, and to specific wavelengths;

f) Group F (claims 15-17, 23, 25-27, 35): relates to the continuous extrusion of pipe, fed vertically through IR zones;

g) Group G (claims 20-21): relates to a transparent forming tool for shaping the polymer product;

h) Group H (claims 39-46): relates to processes and products to recondition pipes. [29] The Plaintiff of course argues that all of the claims asserted are valid and infringed. However, if the Court is to find thatindependent claims 1 and 19 are invalid, the Plaintiff asserts that at least the claims relating to vertical orientation within themanufacturing process (some of the Group F claims above), although built up from multiple claim dependencies, are nevertheless validand infringed. (

a) Principles, Relevant Date [30] The relevant date for construing claims is the date of publication of the ‘376 application, March 27, 1997.

Construction is aquestion of law for the Court and should be done before considering infringement or validity; the same issues of construction apply forboth validity and infringement (Pfizer Canada Inc v Canada (Minister of Health), 2005 FC 1725 at para 10, aff’d 2007 FCA 1). [31] The parties agree that the canons of claim construction have been determined in the leading Supreme Court of Canadadecisions of Whirlpool Corp v Camco Inc, 2000 SCC 67 at paras 49-55 [Whirlpool]; Free World Trust v Électro Santé Inc, 2000 SCC 66at paras 44-54 [Free World Trust]; and Consolboard Inc v MacMillan Bloedel (Saskatchewan) Ltd, (SCC), [1981] 1SCR 504 at para 27 [Consolboard].

They are:

a) Claims are to be read in an informed and purposive way with a mind willing to understand, viewed through the eyes of a POSITAas of the date of publication having regard to the common general knowledge;

b) Adherence to the language of the claims allows them to be read in the manner the inventor is presumed to have intended and in away that is sympathetic to accomplishing the inventor’s purpose, which promotes both fairness and predictability;

c) The whole of the specification should be considered to ascertain the nature of the invention, and the construction of claims must beneither benevolent nor harsh, but instead should be reasonable and fair to both the patentee and the public. [32] While experts may aid the Court in construing terms or elements of the claims, that assistance is only necessary when theCourt deems it helpful or useful to do so – if the meaning of terms is evident from the patent specification, the Court does not need theadvice of experts. (

b) Claim Terms Needing Construction [33] While there were a number of opinions expressed by the parties’ experts on the meaning of terms used in the claims of the‘376 Patent, as discussed below in reviewing the experts’ evidence, the terms that introduce some question as their meaning are: (i)“elimination”, as used in claims 1 and 19; (ii) “filtered out”, as used in claims 2 and 3; and (iii) wavelengths corresponding to theabsorption peaks of the polymer material. [34] There was some divergence in opinion around “polymer material” and “filters”, however, I do not find the experts’ viewsnecessary to help the Court define or construe these terms. (

i) Elimination [35] Independent claims 1 and 19 refer to “elimination” of the wavelengths corresponding to the absorption peaks (also identifiedas “bands”) of polymer material. [36] The experts all agreed that elimination does not mean complete elimination or the absence of any IR wavelengthscorresponding to the absorption peaks of the polymer material being irradiated. Some absorption is necessary to sufficiently heat thepolymer in order for crosslinking to occur. It is agreed that eliminated means that the IR radiation wavelengths corresponding to theabsorption peaks of the polymer are substantially reduced.

What constitutes a “substantial reduction” is not disclosed in the patent, isdisputed, and is analyzed below. (ii) Filtered out [37] Claims 2 and 3 refer to the wavelengths corresponding to the absorption peaks for the polymer material being “filtered out”. [38] The specification teaches two ways of achieving elimination of the wavelengths corresponding to the absorption peaks. Oneway is to place filters between the IR sources and the object being irradiated, such as polyethylene pipes. Filters work by either reflectingaway the undesired wavelengths, or by absorbing them before they can reach the target surface.

The ‘376 Patent’s examples of possiblefilters are silica glass (SiO2), Pyrex or Crown glass. [39] The other manner of eliminating wavelengths corresponding to a polymer’s absorption peaks is by using IR radiation having awavelength substantially located at 1.2 µm. [40] The parties’ experts disagreed on what a POSITA of the ‘376 Patent would understand when reading the specification and theuse of “filtered out” in claims 2 and 3.

I find that the ‘376 Patent clearly specifies that using the four types of filters disclosed shouldenable a POSITA to achieve the elimination of wavelengths corresponding to the absorption peaks of polymer material – which simply isnot the case. I will discuss this issue further below. (iii) Wavelengths corresponding to the absorption peaks of polymer material [41] A POSITA at the date of publication of the ‘376 Patent would understand from the specification that by referring to

“absorption peaks” the inventors are concerned with the primary absorption peaks of polymers at about 3.2-3.6 µm and 6.6-6.8 µm. [ 42 ] Defence expert, Dr. Dutcher, argued that absorption peaks at wavelengths around 1.5 to 1.7 µm are omitted from Figure 4 of the patent (see Figure 4 above), and that the alleged elimination or substantial reduction of absorption peaks in the patent is thus misleading. I disagree. The evidence shows that the primary absorption peaks for polymers are at the two wavelength ranges of 3.3-3.6 µm and 6.6-6.7 µm, as discussed more fully below, and that this would form part of the common general knowledge of a POSITA at the relevant time. (

c) The Person Skilled in the Art (POSITA) [ 43 ] The parties’ experts generally agreed on who the POSITA would be as addressee of the ‘376 Patent. In terms of education, the POSITA would require a university bachelor’s degree or a technical school diploma. In terms of work experience, the POSITA would have industrial experience in polymer processing and/or pipe manufacture. [ 44 ] However, the experts disagreed on the extent of knowledge the POSITA would have relating to IR radiation and details of IR lamp construction.

While the Plaintiff’s experts agreed that the POSITA would know fundamentals of IR radiation, Dr. Boreman on behalf of the Defendants stated that the POSITA requires a higher level of IR science and optics to be able to practice the invention upon reading the ‘376 specification. [ 45 ] I find that the POSITA, in order to understand and be able to follow the specification and claims of the ‘376 Patent and thereby be enabled to practice the ‘376 invention, would:

a) have a university bachelor’s degree or technical degree or diploma in industrial chemistry, polymer chemistry or polymer science;

b) have knowledge of polymer processing and extrusion of polymer products;

c) know how to use IR radiation in processing polymers with 3 to 5 years industrial experience, to the extent there is a basic understanding of IR apparatus used for crosslinking polymers; and

d) know how to calculate a polymer’s IR absorption profiles at different wavelengths, through personal knowledge or by accessing relevant reference materials available at the publication date. (

d) Common General Knowledge [ 46 ] Common general knowledge is the knowledge generally known by the POSITA at the relevant time. It includes what the POSITA may reasonably be expected to know and be able to find out.

One must assess what knowledge the POSITA would have obtained through a reasonably diligent search conducted using the means available at the relevant time. [ 47 ] A POSITA’s common general knowledge cannot be assumed but must be proven with fact evidence on a balance of probabilities. [ 48 ] In Eli Lilly & Co v Apotex Inc , 2009 FC 991 at para 97 , Justice Gauthier adopted with approval the comprehensive description of common general knowledge from General Tire & Rubber Co v Firestone Tyre & Rubber Co , [1972] RPC 457 (UKHL) at 482-483:

a) The common general knowledge imputed to such an addressee must, of course, be carefully distinguished from what in patent law is regarded as public knowledge;

b) Common general knowledge is a different concept derived from a common sense approach to the practical question of what would in fact be known to an appropriately skilled addressee - the sort of man, good at his job, that could be found in real life;

c) Individual patent specifications and their contents do not normally form part of the relevant common general knowledge, though there may be exceptions.

d) Regarding scientific papers generally: i. It is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, or in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates; ii. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated; iii.

Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art; iv. It is difficult to appreciate how the use of something which has in fact never been used in a particular art can ever be held to be common general knowledge in the art. [ 49 ] I agree.

In this case, based on the evidence before the Court, a POSITA would have understood the following as the common general knowledge at the relevant dates for claim construction and for consideration of validity:

a) the features of polymers at a molecular level, including knowing which polymer formulations are suitable for particular purposes (such as using HDPE for pipe manufacture) and what happens upon crosslinking of polymers;

b) the various methods used to manufacture extruded polymer products generally (not solely in relation to the pipe industry);

c) that IR radiation can be used in manufacturing of polymers;

d) that sources of IR radiation emit a distribution of wavelengths which peak in intensity in a given area depending on the temperature of the IR source, and that the peak intensity shifts towards shorter IR wavelengths as temperatures rise;

e) the characteristic distribution curve of IR radiation, which illustrates that there is less transmittance of wavelengths further from the peak of the curve;

f) that each polymer, depending on its molecular structure, will absorb certain IR wavelengths, known as the polymer’s characteristic absorption profile;

g) how to determine the characteristic absorption profile for any specific polymer;

h) that IR absorbed at the surface of a polymer would lead to localized and non-uniform heating of the polymer; and

i) to use IR radiation that would not be absorbed only at the surface, but which rather penetrates the polymer to achieve uniform heating. III. Preliminary Issues A. Relevant Dates for Anticipation, Obviousness: claim date (priority documents) [ 50 ] The Claim Date for each claim in the PCT application which was granted as the ‘376 Patent is the relevant date for prior art references for consideration of anticipation and obviousness. [ 51 ] The ‘376 Patent was issued in Canada following national entry of PCT Application SE 1996/001169, which was filed on September 20, 1996, in Sweden.

This PCT application claimed priority from three earlier Uponor patent applications filed on the following dates: a) 9503272-8 (Sweden), filed September 20, 1985; b) 9600091-4 (Sweden), filed January 11, 1996;

c) PCT/EP96/02801 (PCT), filed June 26, 1996. [ 52 ] The legal test governing priority claims to earlier filed applications is set out in

section 28.1 of the Patent Act . This

section states that the date of a claim in an application [the Claim Date] is the filing date of the application (defined in

section 28), unless a proper request for priority to one or more earlier patent applications has been made. To qualify, the request for priority must have (

i) been made within 12 months of the earlier application, and (ii) the subject matter defined by the claim in the application at the time of the national entry in Canada must have been disclosed in the earlier filed application(s). [ 53 ] I have reviewed the subject matter of the priority applications relied upon by the Plaintiff and find that the claim for priority in respect of the claims in issue, as asserted by the Plaintiff, claims 1 to 4, 7 to 9, 11, 12, 14 to 17, 19, 22 to 27, 29, 30 and 32 to 38, is not justified.

There is no disclosure of the irradiation of polymer material with IR radiation wherein the wavelengths corresponding to the absorption peaks for the polymer material have been eliminated, essential elements of independent claims 1 and 19 and all dependent claims thereon. The relevant claim date for obviousness and anticipation is therefore September 20, 1996. [ 54 ] However, I agree with the Plaintiff that the application of a claim date of September 20, 1995, or September 20, 1996, is of no consequence, as no prior art relied upon by the Defendants fall within that window. B. Inventors’ Liability under

Section 53 of the Patent Act [ 55 ] The Defendants, Pexcor and Heatlink, have alleged that the ‘376 Patent is void, as the request for national phase entry date of March 18, 1998, contains untrue material allegations wilfully made for the purpose of misleading.

In particular, that the inventors (Sjöberg, Rydberg, and Järvenkylä), the applicant (Uponor B.V.), and all other entities claiming an ownership interest in the ‘376 Patent prior to its date of issuance, knew or were reckless in not knowing that the priority applications did not disclose the subject matter defined by any of the claims of the ‘376 Patent, as issued or as pending at any time. [ 56 ] For a patent to be void under subsection 53(1) of the Patent Act, the Court must find that there is an untrue allegation made in the petition, that it is material, and that was willfully made for the purpose of misleading: 53

(1) A patent is void if any material allegation in the petition of the applicant in respect of the patent is untrue, or if the specification and drawings contain more or less than is necessary for obtaining the end for which they purport to be made, and the omission or addition is wilfully made for the purpose of misleading. [ 57 ] I agree with the Plaintiff that the Patent Act explicitly contemplates that the allegation must be made by the application. The inventors of the ‘376 Patent, Sjöberg, Rydberg, and Järvenkylä, were never “applicants” and as such, no duty is imposed against them ( Ratiopharm Inc v Pfizer Ltd , 2009 FC 711 at para 115 ).

[ 58 ] In any event, the inventors were not involved in patent drafting. The evidence shows that:

a) Sjöberg testified he had no role in selecting the priority applications;

b) the Defendants dropped this allegation against Rydberg prior to his testimony; and

c) Järvenkylä may have had some input at the time, but would not have had the authority to make the final decision. [ 59 ] For an allegation to be material it must somehow affect how the public makes use of the invention taught by the ‘376 Patent. The only effect of an improper priority claim in this case would be that the applicant would not be entitled to the benefit of the earlier claim date of September 20, 1995, and instead the claim date would be September 20, 1996.

This would not and does not impact how the public would make use of the invention. [ 60 ] As was held by Justice Thurlow in Canadian Marconi Co v Vera Prinzen Enterprises Ltd (1964), 46 CPR 97 at 141 (Ex Ct) , an improper claim to convention priority based on a U.S. application was not a material allegation in the petition which renders the patent void. [ 61 ] As well, there is no evidence before the Court to suggest that the priority dates claimed were made with any intent or purpose to mislead the Canadian public. [ 62 ] Moreover, the Defendants should have known that the inventors were not responsible for the claims to priority in the ‘376 Patent application. [ 63 ] This is not a case where the inventors are the applicants and responsible for preparing and filing the application for the ‘376 Patent, which might in some cases lead to potential liability for an individual inventor under

section 53. [ 64 ] To the contrary, the applicant is a sophisticated company who in the normal course employs qualified patent agents or counsel to prepare such an application. To impute liability on the inventors in this case defies logic or reasonableness. Consequences must flow in terms of costs against the Defendants on this front. IV. Fact Witness Evidence A. Bill Gray [ 65 ] Bill Gray has been the President of Uponor North America since February 2012. In this role, he oversees sales marketing and overall performance of all North American operations. Mr.

Gray is also a member of the Executive Committee of Uponor Corporation, where he makes decisions relating to the brand, technology and people strategy. Mr. Gray testified that the North American Uponor plants use the Engel method or a modification thereof for manufacturing PEX pipe. The ‘376 Patent technology is only used by the Uponor plants in Sweden and Poland. Mr. Gray also testified that Uponor AB holds the ‘376 Patent rights. B. David Harget [ 66 ] Dr. David Harget is the VP of Standardization for the Uponor Group.

He has a Bachelor’s degree in chemistry, a Master’s of Polymer Science, a PhD in Polymer Chemistry and 40 years of industry experience. In or around 2006, Mr. Harget was the VP of Technology for Uponor Group and was indirectly involved in the commercialization of the invention taught in the ‘376 Patent. He testified he reviewed disclosures of possible patentable inventions to decide whether to proceed with patents, but the ultimate patent decisions were made at an executive level. Mr. Harget wrote an

article in 1992 regarding the performance characteristics of PEX pipe, which would have been read by people in the field. The

article states that a major area of application of PEX is in the power cable industry, which Mr. Harget stated he learned from a review of the literature for the use of PEX at that time. C. Jan Rydberg [ 67 ] Jan Rydberg, a named co-inventor of the ‘376 Patent, has an engineering degree and a Master’s of Science in material technology. He began working for Wirsbo in 1995 as a Development Engineer, where he reported to Michael Sjöberg as member of the High Speed PEX Project development team that developed the ‘376 Patent.

His job on the team was to find equipment for trial runs that were carried out in Finland and which measured speed, efficiency and crosslinking achieved. He testified that the vertical orientation of the IR lamps was Mr. Sjöberg’s idea. Mr. Rydberg did not know the whereabouts of notes and trial reports relating to the development of the ‘376 invention. In fact, there is no evidence at all with respect to what happened to lab books, trial reports, or any other documents relating to the invention’s development. D. Michael Sjöberg [ 68 ] Michael Sjöberg is a named co-inventor of the ‘376 Patent.

He has a Master’s of Science in polymer processing and an MBA. He began working for Wirsbo as a Development Engineer in 1990, and his initial work involved developing new methods for making PEX pipes. Mr. Sjöberg was the project leader on the High Speed PEX Project that led to the ‘376 invention. He testified that during development of the ‘376 technology, he, and a team of five or six others working on trials kept daily notes and made quarterly and monthly reports, comprising approximately a meter high of lab notebooks. They were not produced in evidence and he has no idea what happened to them.

He was not involved in the patent drafting and had no role in selecting the priority applications; Mr. Järvenkylä was responsible for the patent activities involving the ‘376 invention. Mr. Sjöberg left Uponor in 2001.

E. Jan Robertson [ 69 ] Jan Robertson was the sole fact witness called by the Defendants. He has held various roles at Infrarodteknik AB [IRT], a specialized short-wave IR supplier, between 1979 and 2001. IRT purchased their IR lamps from Philips, which are referenced in the IR Handbook – a document he and others at IRT referred to often in the course of their work. He testified that IRT provided monocassettes and technical support to Aarne Heino (Crosslink). He does not know what information Mr. Heino then conveyed to Pexcor in Canada. V.

Expert Witness Evidence on Claim Construction and Validity [ 70 ] All of the expert witnesses were provided with the relevant tests for claim construction for Canadian patents based on the Supreme Court of Canada decisions in Free World Trust , above, and Whirlpool , above, as instructed by counsel. They were also instructed on patent infringement and validity based on relevant patent law in Canada. [ 71 ] The expert evidence regarding validity centered on issues of utility, breadth of claims, sufficient disclosure and anticipation and obviousness.

In addressing both anticipation and obviousness the Defendants relied on the following four references:

a) United States Patent No. 4,234,624 (1980) [the ‘624 Patent];

b) The IR Handbook published by Philips (1974) [the IR Handbook];

c) Electric Infra-Red Heating for Industrial Purposes, O’Connell JR et al (1989) [Electric IR Heating];

d) Polymer Processing: Principles and Design Baird

Chapter 15 – Plastic Extrusion Technology (1995) [Polymer Processing]. A. Plaintiff’s Expert Witnesses

(1) Dr. Gene Palermo [ 72 ] Dr. Palermo is a polymer chemist who has worked in the plastic pipe industry for over 40 years. He obtained a BSc in Chemistry in 1969, and a PhD of Analytical Chemistry from Michigan State in 1973. His industry experience encompasses manufacturing, formulation, testing, standards, technical and regulatory approvals and marketing new plastic piping materials. He was also Technical Director of the Plastic Pipes Institute (PPI) and is currently an independent consultant in the plastics pipe industry. [ 73 ] Dr.

Palermo has been qualified as an expert in plastic pipes, including material used to make pipes, technical characteristics and standards for pipe, pipe manufacturing and IR spectroscopy for polymer pipes. [ 74 ] In Dr. Palermo’s opinion, the invention of the ‘376 Patent relates to a process and apparatus for a “fast, contactless, and uniform heating” of a polymer or polymer mix using IR radiation with wavelengths which differ from the wavelengths that are absorbed by the polymer. The patent describes that the IR radiation zones are oriented vertically to reduce deformation due to gravitational forces. [ 75 ] Dr.

Palermo interprets the term “elimination” of wavelengths (in claims 1 and 19) corresponding to the absorption peaks as not requiring complete absence of those wavelengths, but rather a substantial reduction. He testified that the skilled person would know the wavelengths have been “eliminated” in accordance with the ‘376 Patent if the IR radiation intensity were reduced by 50%. [ 76 ] He interprets that “filtered out” in the ‘376 Patent indicates using filters between the IR source and the object being irradiated to help eliminate wavelengths of the material’s absorption peaks. Dr.

Palermo testified that the filters “augment” or “assist” the reduction of absorption peaks, and the examples provided in the ‘376 Patent – silica glass, Pyrex or Crown glass – would all have this effect. During cross-examination it was pointed out to Dr. Palermo that the ‘376 Patent indicates that an alternative to filters is to use IR lamps having wavelengths of about 1.2 µm (‘376 Patent, p 9, lines 37-38). The plain reading of the ‘376 Patent specification does not support Dr. Palermo’s opinion that “the two kind of work together” . [ 77 ] Dr.

Palermo also testified on cross-examination that an additive, such as peroxide, is required to crosslink polyethylene: it cannot be done by heat alone. The validity analysis of claim 7, which stipulates crosslinking may be achieved with or without crosslinking additives, addresses this issue below. [ 78 ] On cross-examination, Dr. Palermo also testified that a POSITA in 1995, as characterized by him, would have been aware of power cables with polyethylene coatings, but would not have been familiar with their processing.

He admitted the skilled person could have known about use of PEX insulation in the cable industry, and could have referenced this information prior to its use in the pipe industry. He also testified that a cable with polyethylene coating heated by IR, as taught in the prior art (the ‘624 Patent), would be considered “contactless” heating with respect to the outer surface of the coating. [ 79 ] Dr. Palermo further testified that high, medium and low-density polyethylene (HDPE, MDPE and LDPE) would all have similar absorption peaks.

Thus using a theoretical representation of polyethylene’s absorption spectrum that does not disclose the type of polyethylene measured is not misleading or problematic. [ 80 ] As well, he testified it is insignificant that Figure 4 of the ‘376 Patent does not depict wavelengths shorter than 2.5 µm (4000cm -1 ), as polyethylene has characteristic absorption peaks in the mid-IR range (between 500 and 4000cm -1 ), and typically no absorption peaks below 2.5 µm. He admits that the equipment used to generate IR spectrum in the short-IR range, not depicted in Figure 4, was available in 1995.

[ 81 ] Dr. Palermo agreed that although the vertical arrangement of the IR ovens is an option in the ‘376 Patent that does not appear until the final two process claims 16 and 17, the benefit of the invention would be lost if one were to use a horizontal, rather than vertical orientation. Dr. Palermo also stated that the arrangement of lamps, depicted in Figures 2A and 2B of the ‘376 Patent, as well as the vertical orientation of IR zones, are “logical” arrangements for use by a POSITA prior to 1995 in processing polymer material.

(2) Dr. Robert Kimmel [ 82 ] Dr. Kimmel has close to 60 years’ experience working with polymers and polymer products. He holds four degrees from M.I.T., including a PhD in Materials Engineering, and has worked in the industry for over 30 years at Hoechst North America, a diversified polymer products company. [ 83 ] He is currently Associate Professor of Packaging Science at Clemson University, South Carolina, where he has worked on many products involving extruded components and has developed and taught courses involving principles and applications of IR heating of plastics. [ 84 ] Dr.

Kimmel was qualified at trial as an expert in polymer science, manufacturing with polymers and extruded polymer products, in particular with respect to polymer films. [ 85 ] Although Dr. Kimmel agreed with Dr. Palermo that “eliminated” in the context of the ‘376 Patent signifies substantially reduced, rather than 100% removed, he did not and could not quantify what reduction percentage constitutes “substantial reduction” . [ 86 ] With respect to “filtering” described in claim 2, Dr.

Kimmel testified that quartz glass (containing SiO 2 ) used in Pexcor’s process filters the 6.6-6.8 µm peak and partially filters the 3.3-3.6 µm peak – polyethylene’s primary absorption peaks. During cross- examination it was pointed out that quartz glass only reduces wavelength emission by 10% or 12% in the 3.2-3.6 µm ranges, which is not “substantial reduction” . Dr. Kimmel attempted to explain it is important to also know the IR source, as its combination with the filter affects the result, (i.e. claim 2 depends on claim 1).

In his view, it is necessary to examine the end product to determine if the ‘376 process was properly executed, and similarly whether there was infringement. [ 87 ] Dr. Kimmel testified that filters are unnecessary if one uses an IR lamp with 1.2 µm intensity. However, he stated filters could be used to enhance reduction of wavelengths corresponding to polyethylene’s absorption peaks. He qualified that the wording “suitable filters” in the ‘376 Patent does not necessarily mean only silica glass, Pyrex or Crown glass – these are examples.

In his view, discerning which filters to use to obtain the desired result would either fall within the common general knowledge of a POSITA, or they would find out from a specialist. [ 88 ] Dr. Kimmel’s report describes that tungsten filament lamps had been used to heat polymers prior to 1995. He opined that the skilled person in 1995 would either know, or be able to obtain from an IR equipment manufacturer, the peak IR wavelengths emitted by tungsten filament lamps.

Thus, as he stated on cross-examination, to determine what IR radiation to use for achieving the claimed elimination, and thus to follow the teaching of the ‘376 Patent and make and use its claimed invention in 1995, a skilled person would go to others skilled in IR heating. [ 89 ] Dr. Kimmel testified that the most important absorption peaks for polyethylene are at 3.2-3.6 µm, which corresponds to the carbon-hydrogen bonds, and 6.7-6.9 µm, relating to the carbon-carbon bonds.

The ‘376 Patent teaches reduction at those peaks, particularly at 3.2-3.6 µm, where the majority of the absorption takes place in polyethylene and in any polymer. He testified that using a lamp with a wavelength of 1.2 µm results in substantial reduction of absorption peaks in polyethylene. [ 90 ] In assessing validity, Dr. Kimmel’s report reviews each claim in light of the four references relied upon for anticipation: the IR Handbook, Electric IR Heating, the ‘624 Patent and Polymer Processing.

He finds that to anticipate claim 1 and the dependent claims, it would be necessary for the reference to disclose a particular polymer, direct the POSITA to consider its absorption profile, and direct the use of IR radiation that avoids that polymer’s absorption peaks – which is not disclosed in any of the prior art. [ 91 ] I disagree with this characterization. The prior art’s disclosure does not have to be an “exact description” of the claimed invention, and the disclosure when carried out may be done without a person necessarily recognizing what is present or what is happening.

Anticipation is found where performance of the prior art necessarily infringes the patent under review ( Abbott Laboratories v Canada (Minister of Health) , 2008 FC 1359 at para 75 [ Abbott Laboratories ], aff'd 2009 FCA 94 ; Sanofi-Synthelabo Canada Inc v Apotex Inc, 2008 SCC 61 at para 25 [ Sanofi ] citing Synthon BV v Smithkline Beecham plc , [2005] UKHL 59 (UK HL) at para 23 ).

Thus, to anticipate claims 1 and 19 of the ‘376 Patent, the prior art need not specifically direct the POSITA to remove wavelengths corresponding to the absorption peaks of a particular polymer, so long as that would be an inevitable consequence of the prior art’s teachings and understood by the POSITA as necessary to achieve the desired result in polymer processing as taught by the ‘376 Patent. [ 92 ] Dr. Kimmel found that the main process and apparatus claims 1 and 19, and the remaining dependent claims, were not anticipated in the literature pre-1995. In fact, Dr.

Kimmel described that the concept taught in the ‘376 Patent is counterintuitive to what was known in 1997, when IR radiation was used to match the absorption peaks for the material being irradiated so as to heat it quickly and minimize power consumption in a process called thermoforming. [ 93 ] Neither the IR Handbook nor Electric IR Heating disclose any particular polymer: these are general references explaining the use of IR for various purposes.

The POSITA would not understand the statements in these references to indicate that the absorption peaks are being eliminated. [ 94 ] Polymer Processing also does not disclose the invention: it discusses the areas of transmission of polyethylene terephthalate, but does not direct the POSITA to use any particular wavelengths of IR radiation to irradiate that polymer. However, Dr.

Kimmel did agree with the statement in Polymer Processing that the advantages to having the polymer partially transparent to the incident radiation are internal absorption in the polymer sample, which results in more uniform heating of the material, and agreed the same information is

given in the ‘376 Patent. [ 95 ] Dr. Kimmel’s report also finds that the ‘624 Patent does not disclose elimination of the polymer’s absorption peaks. In the ‘624 process described, the polymer layer is coated on top of the cable core, which contains a metal wire and a carbon black layer. Dr. Kimmel explains that the carbon black layer re-radiates IR at the frequencies it most absorbs, resulting in the polymer being irradiated with multiple sources of IR radiation, and no elimination of the wavelengths corresponding to its absorption peaks. [ 96 ] Dr. Kimmel’s above analysis applies as well to claims 2 to 6.

Claims 7 to 18 are only analyzed with respect to the ‘624 Patent. Claims 16 and 17, pertaining to the vertical orientation of the IR zones, are also not anticipated by the ‘624 Patent, as it does not disclose extruded tubes or vertical feeding through IR zones. [ 97 ] In Dr. Kimmel’s opinion, apparatus claims 19 through 38 are also not anticipated for the reasons set out above regarding the process claims. [ 98 ] On cross-examination, Defence counsel referred Dr.

Kimmel to portions of the ‘376 Patent specification relating to claims 20 and 21 (‘376 Patent, p 12, lines 35-38), which convey that the extrusion forming tool may be made using material that is both transparent and which filters IR radiation. Dr. Kimmel had trouble explaining what he understood to have been intended by the inventors and could not explain how the same glass can be transparent and also a filter for the same wavelengths. [ 99 ] Dr.

Kimmel’s attention was also drawn on cross-examination to an extract from “Plastics Extrusion Technology” (1988) (Seydel Report, Exhibit G), which states that use of PEX in the cable industry was the real impetus behind the development of various crosslinking processes (p. 490). Dr. Kimmel has no experience in the cable industry and could not confirm the understanding taught in that reference. [ 100 ] In assessing the ‘624 Patent as prior art, Dr. Kimmel opined that a POSITA would be confused and could not follow what is written or reproduce what was done in the ‘624 Patent.

I find this position difficult to reconcile with the fact he apparently has no trouble understanding the ‘376 Patent, which discloses significantly less information about how to make or use the invention in the specification than does the ‘624 Patent specification. [ 101 ] The ‘624 Patent teaches use of an inner conductor that reflects IR radiation. Although Dr.

Kimmel maintained this is a point of distinction between the ‘376 and ‘624 Patents which renders this prior art not anticipatory or obvious, he later agreed on cross- examination that it would have the same scientific effect on the radiation as the aluminium reflective layer described in the ‘376 Patent, and that the reflection principles of IR radiation are similar between the ‘624 and ‘376 Patents. [ 102 ] The ‘624 Patent states that short-wave IR radiation passes through the polyethylene, resulting in rapid through heating of the cable conductor/inner conducting layer and rapid crosslinking of the polymer. Dr.

Kimmel did not agree that uniform crosslinking will necessarily result from the ‘624 Patent, as additional components not present in the ‘376 process may have an unknown effect. Dr. Kimmel explained the comparison between the ‘624 and ‘376 processes is not apt because in the ‘624 Patent the inner tube is not hollow, which results in a complex heat transfer situation. On this point, Defence counsel pointed out that the aluminum interior in both patents reflects the IR radiation. Dr.

Kimmel testified he did not know the effect of the aluminum layer on crosslinking, yet, he agreed that the inventors of the ‘376 Patent claim it causes uniform crosslinking. [ 103 ] The ‘624 Patent describes heating a polymer material, LDPE, using IR radiation emitting wavelengths at 1.2 µm to instigate crosslinking. Dr. Kimmel agreed that this process involves heating a polymer material, polyethylene, for the purpose of crosslinking by way of IR radiation at a peak intensity of 1.2 µm.

He initially did not agree that if a person follows the ‘624 process they would be eliminating wavelengths corresponding to the absorption peaks for polyethylene, but upon further questioning agreed that elimination was taking place in the ‘624 Patent. His uncertain and equivocal testimony raises doubt about the weight to be given this evidence. [ 104 ] Dr. Kimmel also conceded that the peroxide mentioned in the ‘624 Patent is an organic peroxide, and that the wavelengths of the IR used fall outside the 3.2-3.6 µm and 6.7-6.9 µm ranges, as well as the 2-10 µm range, as required by the ‘376 Patent.

As well, he admitted that the skilled person carrying out the ‘624 process would use IR radiation having a wavelength substantially located around 1.2 µm. The ‘624 process also requires the use of nitrogen to prevent oxidation, and the polymer is extruded continuously. [ 105 ] Dr. Kimmel disagreed that a vertical manufacturing process for a pipe would be obvious in light of the fact it was used for cable prior to 1995.

Yet, he acknowledged that the broad application of the ‘376 invention is not limited to pipes: it describes a process for the manufacture of tubes which could later be heated and expanded as a liner for another tube - such as for cable lining production. [ 106 ] A POSITA, as defined by Dr. Kimmel, would not have a good understanding of how polymers respond to IR radiation, but would at least understand Figure 4 of the ‘376 Patent. Dr. Kimmel thinks the POSITA would seek assistance from a supplier knowledgeable in IR to learn which lamps to use for irradiating the polymer material.

I disagree with this characterization, as the invention centers on selection of IR wavelengths. The specification and claims, along with the POSITA’s common general knowledge, must be sufficient to enable the POSITA to carry out the invention as claimed. B. Defendants’ Expert Witnesses

(1) Dr. Glenn Boreman [ 107 ] Dr. Boreman is currently Professor and Chair of the Department of Physics and Optical Science at University of North Carolina at Charlotte and is Director of the Center for Optoelectronics and Optical Communications. He was also professor for 27 years at University of Central Florida. He has conducted research on IR technology, has authored numerous texts, chapters and articles, and has been on the editorial board of a number of journals in the field of optics. He obtained his PhD in Optical Sciences from the University of Arizona in 1984, and obtained a Master’s in 1981 and BSc in 1978.

[ 108 ] Dr. Boreman has been qualified as an expert in the physics of IR radiation and IR technology. [ 109 ] Dr. Boreman admitted he is not an expert in emitter technology for polyethylene pipes and has not worked in manufacturing plants. Thus, his expertise is limited to what a POSITA would need to know about IR radiation to practice the patent, and does not involve heating polymers – the second major aspect of the ‘376 Patent. [ 110 ] According to Dr.

Boreman, the term “elimination” would require the skilled person to first ask what is being eliminated (a qualitative issue), and would require them to determine how much elimination is required (a quantitative issue). [ 111 ] Dr. Boreman agreed with Drs. Palermo and Kimmel that the term “eliminated” does not require 100% elimination.

To define “elimination” he stated a skilled person would use the blackbody IR spectrum, which demonstrates theoretical measurements of an idealized substance that absorbs all radiation, to calculate that if the relative intensity of IR radiation at a wavelength around 3.4 µm is 20% or less, “elimination” has occurred. [ 112 ] On cross-examination, Dr. Boreman agreed he took an academic approach to interpreting the ‘376 Patent, as otherwise, he could not interpret the meaning of “elimination” . Although a POSITA would not have had access to all the scientific analytical data Dr.

Boreman did, he opined they would have had relevant resource materials to refer to for an understanding of his

interpretation of the ‘376 Patent at the relevant date. [ 113 ] Dr. Boreman’s report states that the skilled person would conclude that using any of the suggested examples of glass filter materials in the ‘376 Patent (silica glass, Pyrex or Crown glass) would eliminate both stated absorption peaks from IR radiation. However, this is not the case: due to the large variance in the IR transmission of each filter, a POSITA would be at a loss to determine what is meant by “wavelengths corresponding to the absorption peaks are eliminated” based on the suggestion that these materials act as filters. [ 114 ] Dr.

Boreman found Figure 4 of the ‘376 Patent “puzzling” , given the y-axis starts at value of 1.44 rather than 0, and has top value of “T” rather than 100%, and only shows the IR curve from the lowest wavelength value of 4000cm -1 (2.5µm). As well, Figure 4 does not indicate the thickness of polyethylene measured, which he states affects radiation transmission. [ 115 ] Dr. Boreman’s report also concludes that the inventive concept of the ‘376 Patent is a known application of various principles of physics.

This concept along with the supposed benefits of the elimination claimed in the ‘376 Patent were previously described in a number of prior art documents. [ 116 ] In analyzing novelty of the ‘376 invention, Dr. Boreman’s report states that the IR Handbook discloses that short-wave IR having a peak at 1.2 µm can be used to heat a polymer rapidly and uniformly without damaging the surface – exactly what is taught by the ‘376 Patent.

In his opinion, the IR Handbook anticipates claims 1 and 19. [ 117 ] Polymer Processing teaches that radiation absorbed internally provides more uniform heating of the material relative to radiation absorbed at the surface, which Dr. Boreman opines is the key teaching of claims 1 and 19 of the ‘376 Patent. [ 118 ] The ‘624 Patent describes a method of applying insulation of crosslinked polymer on a cable conductor. It teaches use of IR radiation for crosslinking the polymer insulation, transmitted into the interior of the polymer, which allows for rapid heating through its cross-section.

It lists polyethylene as a suitable polymer and teaches using peroxide as an additive to effect crosslinking. The radiation source may consist of several IR lamps with tungsten filaments operating at 2100°C, thus providing radiation with maximum intensity at a wavelength of 1.2 µm. [ 119 ] Dr. Boreman thus finds that the ‘624 Patent describes the invention claimed in claims 1 and 19 of the ‘376 Patent. It involves: (

i) use of an IR lamp to crosslink extruded polyethylene; (ii) that the IR radiation should penetrate into the polyethylene material and not be absorbed at the surface; and (iii) irradiation with an IR lamp having a peak wavelength of 1.2 µm, which provides rapid through- heating of the polymer. [ 120 ] However, Dr. Boreman admitted that the ‘624 Patent’s non-optional use of pressure within a vulcanization tube is not “contactless” , and thus is not part of the ‘376 Patent.

He agreed that a person reading the ‘624 Patent would have to selectively identify aspects from that patent in order to use the process described therein to implement the ‘376 Patent. [ 121 ] The final prior art reference relied on by the Defendants, Electric IR Heating, states that “selection of the appropriate wavelength is particularly important for processing plastics” , and short-wave radiation is not absorbed at the surface, but is transmitted into and penetrates the polymer material – in Dr. Boreman’s opinion, it describes the same physical phenomena as the ‘376 Patent. [ 122 ] Dr.

Boreman opined that the POSITA at the relevant time would consider the inventive concept of claims 1 and 19 to be the heating of a polymer by IR radiation in which wavelengths corresponding to the absorption peaks have been eliminated, and that the extra details provided by dependent claims do not change this concept in any meaningful way. The ‘376 Patent states that all parts of the described extrusion line, except the IR zones and vertical orientation, are “quite conventional” (‘376 Patent, p. 7, lines 12-14). [ 123 ] His report concludes that this inventive concept was well known prior to 1995.

With respect to IR radiation, the common general knowledge of a POSITA as of September 1995 would have included all essential elements, namely that heating a polymer using short-wave IR radiation would allow it to penetrate into the polymer, leading to uniform heating without surface damage. [ 124 ] I note that Dr. Boreman’s expertise is limited to the IR radiation aspect of the patent: it does not extend to polymer processing and extrusion of polymer products. Thus, his opinion of the importance of dependent claims, which he did not individually assess, is afforded little weight.

(2) Dr. John Dutcher

[125] Dr. Dutcher is currently Professor in the Department of Physics at the University of Guelph. He has taught several graduatecourses and is author of numerous articles on polymer physics. He was appointed as Tier 1 Canada Research Chair in Soft MatterPhysics in 2006 and in Soft Matter and Biological Physics in 2013. He obtained his PhD from Simon Fraser in 1989, and has a Master’sof Science in Physics (UBC) and a Bachelor’s of Science (Dalhousie). [126] Dr. Dutcher has been qualified as an expert in polymer physics. [127] Dr.

Dutcher’s report finds that the entire ‘376 Patent is based on incorrect data regarding the IR absorption of polyethylene, isbased on fundamentally flawed reasoning, and would mislead the skilled person. [128] In his opinion, the “elimination” of wavelengths corresponding to the polymer’s absorption peaks does not occur in the ‘376Patent and neither does the claimed elimination occur in the Pexcor process. Furthermore, the supposed inventive concept of the ‘376Patent was disclosed in a number of prior documents. [129] Regarding claim 1 of the ‘376 Patent, Dr.

Dutcher found it unclear what constitutes “substantial reduction”. He estimated thatapplying IR radiation at around 1.2 µm, there may be a 66% reduction at 3.3-3.6 µm peak, but he qualified that one would have toexperiment to figure out if that level of reduction is sufficient for the purposes of the ‘376 Patent. [130] Dr. Dutcher agreed that a POSITA would understand that “elimination” in the context of the ‘376 Patent does not requirecomplete elimination of the wavelengths corresponding to absorption peaks.

The POSITA would determine the amount of “elimination”necessary for the ‘376 claims by referencing the information provided in the patent; by using filters and IR radiation with specifiedwavelengths. He testified it is important to know all absorption peaks of the polymer, including within the short-wave range, to be able to“eliminate” and avoid overheating the polymer. [131] Dr. Dutcher’s report states that the wavelengths corresponding to polyethylene’s absorption peaks are not eliminated in the ‘376Patent.

The wide variance in “filtering” obtained by silica, Pyrex or Crown glass would render the POSITA at a loss to understand howto quantify the amount of filtering necessary for “elimination”, and thus whether the elimination required by the claims of the ‘376Patent is or is not occurring. For instance, silica glass transmits 85% and 60% of the incident radiation at wavelengths corresponding topolyethylene’s absorption peaks, and Pyrex transmits 45% and 10% respectively. [132] Dr. Dutcher also found Figure 4 of the ‘376 Patent to be misleading because it does not extend to the short-wave IR region.

Hisreport produces a “more complete IR spectrum” for 2 mm thick polyethylene, obtained online from an optics company, Tydex Optics[the Tydex Graph]. He claims the Tydex Graph demonstrates polyethylene has a “significant absorption” peak between 1.7 and 1.8 µm,and another at 1.2 µm. This is the only reference to polyethylene’s other absorption peaks in Dr. Dutcher’s report.

He opines the skilledperson would be curious as to the lack of information on smaller wavelengths, not depicted in Figure 4. [133] Given that the relevant date for construction of the ‘376 Patent was May 27, 1997, and the Tydex Graph is dated 2010, aPOSITA would not have had access to it as of 1997 and would not have been confused by the ‘376 Patent. [134] While Dr. Dutcher agreed it is important to know the conditions under which spectra are generated, he did not contact Tydex toask about the conditions under which the Tydex Graph was generated, nor did he know whether a qualified person made suchmeasurements.

He relied on the fact the graph was reproduced by a specialty optics company doing what he considers a very standardmeasurement. Nevertheless, he did not investigate further to ensure it was a standard measure. [135] In his view, using the lamp described in the ‘376 Patent does not “eliminate” or even “substantially reduce” the 1.2 or 1.7 µmabsorption peak for polyethylene. Dr.

Dutcher opines that the entirety of the ‘376 Patent is based on an incorrect understanding of theactual physical phenomena occurring and the language of the claims would mislead the skilled person. [136] With regards to anticipation and obviousness, Dr. Dutcher’s report claims that the ‘376 inventive concept was disclosed in theprior art and he provides a similar analysis to Dr. Boreman, finding that:

a) The IR Handbook essentially paraphrases the content of the ‘376 Patent, and the skilled person would have no difficultyunderstanding that it anticipates claims 1 and 19.

b) The ‘624 Patent’s reference to the polymer having “good perviousness” for the radiation for crosslinking would convey to thePOSITA that the radiation would be transmitted through the polymer. The ‘624 Patent also refers to using an IR source with the samepeak wavelength as in the ‘376 Patent – 1.2 µm.

c) Polymer Processing states the advantages to having the polymer partially transparent to the incident radiation are internalabsorption, which provides more uniform heating of the material – the same mechanism of heating described in the ‘376 Patent.

d) Electric IR Heating is similar to the IR Handbook, and conveys that short-wave radiation, which generally has a peak wavelength of1.2 µm, will be primarily transmitted by polymer sheets, which reduces the possibility of scorching the surface – which in Dr. Dutcher’sopinion, discloses what is said to be the invention of the ‘376 Patent.

(3) Franz Seydel [137] Mr. Seydel studied plastics engineering in Darmstadt, West Germany and has worked in plastic pipe manufacturing and theplastic pipe systems business for over 40 years in a variety of roles, including quality assurance, testing, product and processdevelopment, marketing, design, and logistics. He has been a member of international technical committees that developed standards forPEX pipe. Since 2008, Mr. Seydel has been a consultant relating to plastic pipe and plastic pipe systems. [138] At trial the Plaintiff objected to Mr.

Seydel’s qualification as expert, citing R v Mohan, (SCC), [1994] 2 SCR 9,and claiming that his testimony was not necessary. I find that Mr. Seydel has specialized knowledge beyond that of the ordinary person

and that his opinion related to material issues that are technical in nature and beyond the experience and knowledge the Court is expected to have. [ 139 ] It was on this basis, and a consideration of the other Mohan factors (as modified in R v Abbey , 2009 ONCA 624 , leave to appeal refused, [2010] 2 SCR v (note), and confirmed in White Burgess Langille Inman v Abbott and Haliburton Co, 2015 SCC 23 [ White Burgess ]) that I admitted Mr. Seydel’s expert evidence.

However, ultimately, I afford it little if any weight. [ 140 ] Justice Phelan has recently laid out a comprehensive review of the current law on the role of expert witnesses in Allard et al v Canada, 2016 FC 236 at paras 103-108 [ Allard ], which I find appropriate to reiterate.

At paragraph 106 of that decision he quotes the Supreme Court’s most recent commentary on expert opinion evidence in White Burgess , above, stating: [106] The Court went on to discuss the nature of an expert’s duty to the court and where it fits into the [ Abbey ] framework: 27 One influential statement of the elements of this duty are found in the English case National Justice Compania Naviera SA v. Prudential Assurance Co. , [1993] 2 Lloyd's Rep. 68 (Eng. Comm. Ct.) .

Following an 87-day trial, Cresswell J. believed that a misunderstanding of the duties and responsibilities of expert witnesses contributed to the length of the trial. He listed in obiter dictum duties and responsibilities of experts, the first two of which have particularly influenced the development of Canadian law: 1. Expert evidence presented to the Court should be, and should be seen to be, the independent product of the expert uninfluenced as to form or content by the exigencies of litigation .... 2.

An expert witness should provide independent assistance to the Court by way of objective unbiased opinion in relation to matters within his [or her] expertise.... An expert witness in the High Court should never assume the role of an advocate. [Emphasis added; citation omitted; p. 81.] (These duties were endorsed on appeal: [ "Ikarian Reefer" (The), Re ] [1995] 1 Lloyd's Rep. 455 (Eng.

C.A.), at p. 496 .) As to admissibility or weight, the following comments were provided: 45 Following what I take to be the dominant view in the Canadian cases, I would hold that an expert's lack of independence and impartiality goes to the admissibility of the evidence in addition to being considered in relation to the weight to be given to the evidence if admitted. That approach seems to me to be more in line with the basic structure of our law relating to expert evidence and with the importance our jurisprudence has attached to the gatekeeping role of trial judges.

Binnie J. summed up the Canadian approach well in J. (J.-L.) : "The admissibility of the expert evidence should be scrutinized at the time it is proffered, and not allowed too easy an entry on the basis that all of the frailties could go at the end of the day to weight rather than admissibility" (para. 28). … 54 Finding that expert evidence meets the basic threshold does not end the inquiry.

Consistent with the structure of the analysis developed following Mohan which I have discussed earlier, the judge must still take concerns about the expert's independence and impartiality into account in weighing the evidence at the gatekeeping stage. At this point, relevance, necessity, reliability and absence of bias can helpfully be seen as part of a sliding scale where a basic level must first be achieved in order to meet the admissibility threshold and thereafter continue to play a role in weighing the overall competing considerations in admitting the evidence.

At the end of the day, the judge must be satisfied that the potential helpfulness of the evidence is not outweighed by the risk of the dangers materializing that are associated with expert evidence. [Emphasis in original]. [ 141 ] The role of an expert is to provide independent assistance by objective , unbiased opinion. Mr. Seydel’s evidence was not only “shredded on cross-examination” ( Allard , above, at para 108 ), but his opinion strayed into assuming the role of advocate, and was neither independent nor unbiased. C. Plaintiff’s Responding Reports on Validity

(1) Dr. Robert Kimmel [ 142 ] Dr. Kimmel’s responding report largely responded to and refuted assertions made in Mr. Seydel’s report on issues of whether crosslinking agents specified in the ‘376 Patent actually work and on Mr. Seydel’s analysis of the speeds of different extrusion processes. Given my above finding, it is not necessary to describe this evidence. [ 143 ] In response to the other Defence experts, Dr. Kimmel opined that Figure 4 of the ‘376 Patent is not misleading: the spectrum is simply used to explain the location of polyethylene’s absorption peaks.

(2) Dr. Mohamad Al-Sheikhly [ 144 ] Dr. Al-Sheikhly is currently a Professor at the University of Maryland in the Department of Materials Science and Engineering and the Chemical Physics program. He is Director of Radiation and Polymer Science. [ 145 ] Dr. Al-Sheikhly received his PhD in 1981 from the University of Newcastle Upon Tyne (UK). He has held positions at the Max-Planch Institute in Germany and at the National Institute of Standards and Technology in Maryland and has industry experience consulting in respect of manufacturing processes involving polymers and radiation. [ 146 ] Dr.

Al-Sheikhly has been qualified as an expert on IR radiation, its applications in manufacturing, and its effect on polymers.

[ 147 ] Dr. Al-Sheikhly clarifies in his report that standard IR spectroscopy equipment cannot measure IR absorption along the entire spectrum: different machines measure short-wave IR as compared to mid-wave IR. It is well known that polymers primarily absorb in the mid-IR region; therefore polymer chemists focus on that region when considering IR absorption for a given polymer. Short-wave IR spectra are used for very narrow purposes and are not widely consulted. [ 148 ] Dr. Al-Sheikhly included a graph in his report from the Journal of Polymer Science illustrating that Dr.

Dutcher’s “significant” absorption peak near 1.7 µm is not significant at all. Thus, Figure 4 of the ‘376 Patent is not misleading for its failure to include the short-wave IR absorption profile. On cross-examination, Dr. Al-Sheikhly admitted he does not know the machine that generated Figure 4, the conditions under which it was generated, the statistical error, or the scale. He stated you cannot have a negative transmittance, contrary to his evidence in chief. [ 149 ] Dr. Al-Sheikhly stated filters can be made to order.

They are widely available today and were available before 1995 in configurations that could be targeted to block virtually any desired wavelengths of IR, including in the mid-IR region. Despite stating that a skilled person would go to a manufacturer to select the appropriate filter for a polymer, on cross-examination Dr. Al-Sheikhly did not agree that the skilled person needs something more than what is written in the patent to understand and use it.

Upon further questioning, he agreed that the skilled person would not know what filter to use for a particular polymer without going outside the patent. [ 150 ] Although there were various inconsistencies in Dr. Al-Sheikhly’s testimony, I give more weight to his evidence over that of Dr. Dutcher’s with respect to polyethylene’s absorption peaks at the short-wave region (near 1.7 µm), as his graph comes from a reputable and verifiable source and does not pose the timing difficulties of Dr. Dutcher’s Tydex Graph, having been published on February 2, 1996. VI. Validity Analysis A.

Unpatentable Subject Matter [ 151 ] The Defendants Pexcor and Heatlink have pleaded that the ‘376 Patent is invalid as the purported invention is not proper subject matter under

section 2 of the Patent Act . [ 152 ] The Defendants assert this ground on the basis that independent claims 1 and 19 disclose “mental steps” and not physical steps. I disagree: selection of a source of IR radiation such that the wavelengths corresponding to the absorption peaks for polymer materials have been eliminated can be a patentable process, so long as the other criteria for patentability are met, namely sufficiency of description in the specification, utility, novelty and non-obviousness, which are discussed below.

Moreover, the use of known equipment or apparatus in a novel and unobvious application for crosslinking polymer pipe is also capable of being patentable subject matter, subject to the same requirements for patentability as for the process to carry out the invention. B. Utility [ 153 ]

Section 2 of the Patent Act requires that the subject matter of a patent be both new and useful. To establish inutility, one must show that the invention will not work, either not at all, or for the purpose(

s) promised in the specification. Utility is determined on a claim by claim basis ( Eli Lily Canada Inc et al v Novopharm Ltd , 2010 FCA 197 at paras 74-75 ). [ 154 ] The Defendants allege that the ‘376 Patent lacks utility and is invalid because:

a) it does not provide “uniform and fast heating of polymers or mixtures of polymer” , as promised;

b) no heating and crosslinking of polymers will occur if the wavelengths corresponding to all peaks of the polymeric material have been eliminated;

c) it is not possible to filter an IR lamp to eliminate wavelengths corresponding to the absorption peaks of a polymer using any of the filters disclosed or claimed; and

d) a polymer material cannot be crosslinked without a crosslinking additive. [ 155 ] The evidence before the Court does not establish either (

a) or (

b) lack utility, given agreement that “elimination” means substantial reduction, and there is no evidence to suggest that the alleged inventive process does not provide uniform and fast heating. Only issues (

c) and (

d) are in dispute and were substantively argued by the Defendants at trial. [ 156 ] There was considerable disagreement over what “elimination” or “substantial reduction” of the wavelengths corresponding to the absorption peaks for polymer material means when “filtered out” by the use of filters.

The patent provides no useful definition or disclosure of what constitutes a substantial reduction, and the experts’ opinions of what a POSITA might understand that to mean creates a great deal of ambiguity in being able to ascertain what level of reduction constitutes a “substantial reduction” , further discussed below in assessing sufficiency of disclosure. [ 157 ] The ‘376 Patent states that the absorption peaks for polyethylene (3.2-3.6 µm and 6.7-6.9 µ

m) can be “eliminated” using filters: The elimination of these absorption peaks may for instance be achieved by placing a filter filtering off t

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