2023 FC, 2023 FC 1749

Date: 20240215 Docket: T-1790-17 T-416-19 Citation: 2023 FC 1749 Ottawa, Ontario, February 15, 2024 PRESENT: Madam Justice St-Louis Docket: T-1790-17 BETWEEN: VALLEY BLADES LTD Plaintiff/ Defendant by Counterclaim and USINAGE PRO-24 INC C/O/B AS NORDIK BLADES Defendant/ Plaintiff by Counterclaim Docket: T-416-19 AND BETWEEN: USINAGE PRO-24 INC C/O/B AS NORDIK BLADES Plaintiff/ Defendant by Counterclaim and VALLEY BLADES LTD Defendant/Plaintiff by Counterclaim PUBLIC JUDGMENT AND REASONS (Identical to the Judgment and Reasons issued on December 22, 2023) I.

Overview [ 1 ] In 2017, Valley Blades Ltd. [Valley Blades] commenced an action against Usinage Pro-24 Inc., carrying on business as Nordik Blades [Nordik Blades].

Valley Blades sought an order pursuant to subsection 60(1) of the Patent Act , RSC 1985, c P-4 [ Patent Act ], declaring that Nordik Blades’ Canadian Patent No. 2,856,940 [the 940 Patent] and each of the claims thereof was invalid, void, unenforceable, and of no force and effect, as well as a declaration that Nordik Blades made false and/or misleading statements tending to discredit the business, goods, and services of Valley Blades contrary to paragraph 7 (

a) of the Trademarks Act , RSC 1985, c T-13 [ Trademarks Act ]. [ 2 ] Nordik Blades defended the action and counterclaimed for a declaration that claims 1 to 12 of the 940 Patent were valid and that Valley Blades infringed them. [ 3 ] In 2019, Nordik Blades commenced an action against Valley Blades seeking a declaration that independent claims 1, 20, 35, and 50, and dependent claims 2-14, 16-19, 21-28, 30-34, 36-43, 45-49, 51-62, and 64 of Canadian Patent No. 2,965,426 [the 426 Patent] as well as independent claim 1 and dependent claims 2-14 of Canadian Patent No. 2,992,233 [the 233 Patent] had been infringed by Valley Blades, and various reliefs. [ 4 ] Valley Blades defended the action and counterclaimed for a declaration that the 426 and 233 Patents, and each of their asserted claims, are and always have been invalid. [ 5 ] The actions have been bifurcated and this judgment and reasons pertain to the liability issues within both. [ 6 ] On October 3, 2022, the parties’ joint Statement of Issues confirmed the issues before the Court related to: (1) the 940, 426, and 233 Patents’ validity (pertaining to the person skilled in the art [POSITA], claim construction, obviousness, overbreadth, and

section 53 of the Patent Act ); (2) infringement (i.e., are the three patents’ asserted claims infringed by Valley Blades EconoFlex-M products?);

(3) Nordik Blades’ liability under subsection 7 (

a) of the Trademarks Act ; and (4) costs. [ 7 ] The parties subsequently agreed that infringement will be found if the asserted claims are found valid; they thus confirmed that infringement is no longer an issue to assess. [ 8 ] Nordik Blades is the listed owner of the three Canadian patents at issue in these proceedings that all relate to each other and cover the same subject matter, i.e., segmented snow plow blades: the 940, 426, and 233 Patents [the Nordik Patents]. The 426 and 233 Patents are divisional patents.

[ 9 ] Pursuant to a stipulation between the parties, the only claims being asserted are: claims 1-12 of the 940 Patent; claims 1-8, 10-14, 16, 17, 19, 20-28, 31-32, 34-37, 39-43, 45-47, 49-51, 54-62, and 64 of the 426 Patent; and claims 1-2, 4-5, 7, and 9-14 of the 233 Patent [the Disputed Claims]. However, there is no longer any dispute that claim 35 of the 426 Patent is obvious; counsel for Nordik Blades acknowledged that their own expert, Mr. Harold Bouchard, indicated as much in his expert report and admitted the same at trial. [ 10 ] In brief, Valley Blades submits that: (

i) the Disputed Claims are invalid for obviousness; (ii) the Disputed Claims are invalid for overbreadth for claiming more than what the inventor made in regard to the blades’ tapered shape; (iii) the Nordik Patents are invalid as a whole under

section 53 of the Patent Act for false and misleading statements; (iv) Nordik Blades is liable under subsection 7 (

a) of the Trademarks Act for the false and misleading statements it made to Valley Blades’ customers; and (

v) the parties should be given an opportunity to make submissions on an appropriate lump sum cost award, if they are unable to agree on costs. [ 11 ] Nordik Blades responds that Valley Blades has not met its burden to: (

i) demonstrate obviousness as there is no expert evidence that would enable the Court to assess how the POSITA would have been led to combine the five pieces of prior art to create the subject of the Nordik Patents; (ii) demonstrate the Disputed Claims are invalid for overbreadth as its arguments on the absence of limitations in regards to the shape (i.e., tapered) of the blades in the Disputed Claims are senseless; (iii) demonstrate it satisfies the stringent legal test under

section 53 of the Patent Act ; and (iv) prove each of the elements necessary to ground a claim under subsection 7 (

a) of the Trademarks Act . [ 12 ] Nordik Blades also responds that costs should be awarded according to the top end of column IV of the Tariff. [ 13 ] Considering the parties’ submissions, the Court must determine whether Valley Blades has met its burden to demonstrate that: (

i) the Disputed Claims of the Nordik Patents are invalid for obviousness and overbreadth; (ii) the Nordik Patents are void under

section 53 of the Patent Act ; and (iii) Nordik Blades violated subsection 7 (

a) of the Trademarks Act . [ 14 ] The Court must also assess how costs should be awarded. [ 15 ] For the reasons that follow, I find Valley Blades has successfully demonstrated that the Disputed Claims of the Nordik Patents are obvious. However, I find that Valley Blades has not demonstrated that the Disputed Claims are overbroad nor that it has met the test under

section 53 of the Patent Act to void the Nordik Patents. As obviousness is a sufficient ground of invalidity, the Disputed Claims are invalid. Also, while I accept that Nordik Blades’ statements concerning Valley Blades’ products were false, I find Valley Blades nevertheless failed to satisfy each of the elements necessary to ground a claim under subsection 7 (

a) of the Trademarks Act. Valley Blades shall be awarded costs, with the quantum reserved pending additional submissions from the parties. II. The evidence A. Evidence adduced by Valley Blades

(1) Fact witnesses (

a) Mr. Brad Hunt [ 16 ] Mr. Brad Hunt started his career at Valley Blades in or around 2001 and is now its Vice President. His primary responsibilities relate to the management of Valley Blades’ business and he continues to be involved in the research and development of Valley Blades’ products. [ 17 ] Mr. Hunt was asked to provide evidence about (

a) Valley Blades’ development and commercialization of the PolarFlex products; (

b) Valley Blades’ development and commercialization of the EconoFlex-M products; (

c) the false and misleading statements made by Nordik Blades to Valley Blades’ customers; and (

d) Valley Blades’ business records. [ 18 ] Mr. Hunt introduced 46 exhibits. He explained, inter alia , how he modified the rubber bushings of the Valley Blades PolarFlex in two ways. In one version, he added a depression in the bushings by removing some of the rubber in order to increase the bushing’s compressibility, leading to more blade movement. In a second version, he replaced the full elliptical bushings with round bushings to create an air gap below; since air compresses more than rubber, this bushing enables an even greater range of blade movement.

Valley Blades delivered about 170 units of this version before the Nordik Patents’ filing date. Mr. Hunt also testified that while Canadian Patent

No. 2,717,986 [the Valley Blades Patent] describes a system with separate rubber pieces covering the blade’s top and sides, the commercialized version of PolarFlex integrates the rubber pieces into one. [ 19 ] Mr. Hunt further testified that Nordik Blades’ communications to Valley Blades’ customers caused Valley Blades to lose business with at least the following customers: the Government of Manitoba, the Township of Russell [the Township], and the United Counties of Stormont, Dundas, and Glengarry. [ 20 ] I agree with Valley Blades that Mr.

Hunt was a knowledgeable and careful witness who showed knowledge of the facts related to the Valley Blades’ products and explained the facts to the Court without hesitation. (

b) Mr. Jonathan Bourgon [ 21 ] Mr. Jonathan Bourgon is an employee of the Township of Russell, as its Director of Infrastructure. He provided evidence relating to the impact of Nordik Blades’ communications on the Township’s decision to return Valley Blades’ EconoFlex-M products. [ 22 ] At the relevant time in 2017, he was Manager of Operations for the Township and was responsible for approving the procurement of snow plow blades. [ 23 ] Mr. Bourgon testified that in 2017, the Township placed an order for EconoFlex-M products from Valley Blades.

In late 2017, the Township received a Notice of Patent Infringement from Nordik Blades following which the Township decided to return its purchase of EconoFlex-M systems. Mr. Bourgon testified that the potential risk of being involved in litigation was part of the Township’s assessment of risk. [ 24 ] Mr. Bourgon came across as a reliable witness.

(2) Expert witness: Mr. Gino Paonessa [ 25 ] Mr. Gino Paonessa is the founder and chief executive officer [CEO] of Adepco Technologies Corp., which manufactures snow removal equipment. He has an Italian high school diploma, more than 30 years of experience in the snow removal industry, and conceived and commercialized a number of snow removal products. [ 26 ] Mr. Paonessa was qualified as an expert in the design, development, and manufacture of snow removal attachments.

His expertise includes the design and manufacture of segmented snow plow blade assemblies and mounting structures for snow plow blades, as well as the selection and role of materials, including steel and rubber, used for manufacturing snow plow blade assemblies. [ 27 ] On May 10, 2021, Mr. Paonessa signed an expert report on the Nordik Patents’ validity, and on July 9, 2021, he signed a responding expert report on infringement of the Nordik Patents by Valley Blades. [ 28 ] To prepare his expert report on validity, Mr. Paonessa was provided with information in stages.

His report indicates that he was first provided with, and asked by counsel to review and summarize, copies of the US Patent No. 5,746,017 [the JOMA Patent] and the Valley Blades Patent. These were the first two of the nine mandates that counsel tasked him with. The seven remaining mandates pertained to each of the Nordik Patents and their obviousness (mandates 3 to 8) and on the movement of the Nordik Blades’ blades (mandate 9). [ 29 ] Mr.

Paonessa examined the JOMA Patent and the related JOMA product as well as the Valley Blades Patent and the two versions of the PolarFlex product, one that features a flexible elliptical fastening means with a depression and the other that features a round fastener flexible element that leaves an air gap in the blade apertures. He provided an opinion on the POSITA’s understanding of each of the Nordik Patents and assessed whether the Disputed Claims, both the independent and dependent ones, were obvious. [ 30 ] In brief, Mr. Paonessa opines that each of the Disputed Claims of the Nordik Patents are obvious.

He asserts that there is no material difference between features described in the Disputed Claims and the state of the art, notably the JOMA Patent and products [the JOMA prior art] and the Valley Blades Patent and both versions of the PolarFlex product [the Valley Blades prior art]. For Mr. Paonessa, any differences are cosmetic in nature, and the POSITA would have reached them directly and without difficulty based on the prior art and the common general knowledge [CGK] available at the relevant date. Mr.

Paonessa further opines that the Nordik Blades’ blades’ range of vertical and/or angular movement would not be greater than that of the blades disclosed in the Valley Blades prior art and/or the JOMA prior art. Ultimately, the range of vertical and/or angular movement for all the blades is limited by the apertures’ size in the blades and/or the compressibility of the resilient bushing inserted therein, and the presence of adjacent blades. [ 31 ] Mr. Paonessa came across as knowledgeable and honest.

He admittedly received help from counsel to draft his affidavit, which is not uncommon or troublesome in itself ( dTechs EPM Ltd v British Columbia Hydro and Power Authority , 2023 FCA 115 at paras 32-34 ; Moore v Getahun , 2015 ONCA 55 at para 55 ). Counsel for Nordik Blades raised this as an issue in their opening statement, but I have found no mention of this as a persisting issue in their closing. In any event, it does not impact the weight I give to Mr. Paonessa’s opinion. [ 32 ] Mr.

Paonessa was vigorously challenged during cross-examination and was at times confused and reluctant to answer the questions put to him; he seemed then more preoccupied with fulfilling his counsel’s agenda than with helping the Court understand the technical issues. B. Evidence adduced by Nordik Blades

(1) Fact witness: Mr. Hugo Michel [ 33 ] Mr. Hugo Michel is the CEO and founder of Nordik Blades. He is also one of the inventors of the Nordik Patents. Mr. Michel

provided evidence on the design, development, and commercialization of the Nordik MOVE Products and their related patents. He testified that the angular movement of the blade was not due to the blade’s tapered shape. [ 34 ] Mr. Michel described how he developed the Nordik MOVE. Valley Blades contends that Mr. Michel’s basis for asserting his product was inventive and was undermined during cross-examination. In particular, Mr.

Michel admitted that, prior to developing the Nordik MOVE, he never conducted a literature search, never purchased a Valley Blades’ PolarFlex and opened it to check what was inside, and was not aware that there was a version of the PolarFlex with an elliptical bushing (and a depression) or a version with a round bushing (transcript, Michel, cross, day 3 (109:19-110:2); transcript, Michel, cross, day 3 (134:15-135:1); Ex. 4 – FC00603 Item 22). [ 35 ] Valley Blades adds that during his examination for discovery in July 2020, Mr.

Michel was clear that he considered the shape of the Nordik MOVE product’s blade (i.e., tapered) to be a part of his purported invention, and that he gave the opposite answer when he was asked the exact same question at trial. Valley Blades asserts that when confronted with his inconsistent views, it became clear that Mr. Michel changed his belief after discussions he had with his counsel (Ex. 4 – FC00603, Item 22; 25 TT(FR), Michel, Cross, Day 3 (134:15-135:1); 26 TT(FR), Michel, Cross, Day 3 (140:6-141:16)). Nordik Blades contends that Mr.

Michel’s testimony is not conclusive in light of the difference between questions he was asked on discovery and at trial. [ 36 ] While the impact of Mr. Michel’s answer will be assessed later, it was clear at the trial that Mr. Michel was aware of his change of testimony between his discovery and the trial. This negatively impacts the weight I give his testimony.

(2) Expert witness: Mr. Harold Bouchard [ 37 ] Mr. Bouchard obtained a bachelor degree in industrial engineering from the École Polytechnique in Montréal in 1988. He has more than 30 years of experience advising companies involved in the development or improvement of technologies to claim Scientific Research and Experimental Development tax incentives. Mr.

Bouchard acquired expertise in the understanding, analysis, and technological development used by businesses in the automobile industry to determine if there is an improvement of existing known technologies. [ 38 ] He was qualified as an expert in claim construction and infringement. On May 10, 2021, Mr. Bouchard signed his expert report on infringement and construction of the Nordik Patents containing his opinion on claim construction. On July 12, 2021, pursuant to his mandate, he signed his expert report in response to Mr. Paonessa’s expert report opining on the validity of the Nordik Patents. [ 39 ] In

section 10.2 of his expert report, at page 47, Mr. Bouchard concludes that all the Nordik Patents’ claims implied non-obvious inventive activity. However, during his cross-examination, Mr. Bouchard readily admitted that he knew at least claim 35 of the 426 Patent was obvious. [ 40 ] In Mr. Bouchard’s expert report, particularly in the chart he prepared outlining the essential elements of each of the Nordik Patents’ independent claims in relation with their presence or absence in the prior art, he confirms that all the essential elements of the claims are found in either the JOMA and/or the Valley Blades Patents.

However, oddly, Mr. Bouchard did not disclose in his conclusions the opinion that claim 35 of the 426 Patent was obvious. Despite submissions to the contrary from Nordik Blades, it was clear to the Court that up until Mr. Bouchard’s testimony in cross-examination, claim 35 of the 426 Patent was among the Disputed Claims, which Nordik Blades defended as inventive. [ 41 ] Furthermore, in its opening statement (transcript, October 17, 2023, 96), Valley Blades clearly alluded that Mr.

Bouchard agreed that at least claim 35 of the 426 Patent was obvious, while eliciting no response or acknowledgement from Nordik Blades that the claim in issue was indeed obvious. It is surprising that Mr. Bouchard, who has experience and expertise in claim construction and infringement, did not highlight this conclusion for the Court in his expert report, nor address the impact of such an opinion, if any, on the other Disputed Claims. [ 42 ] In assessing obviousness, Mr.

Bouchard did not examine any of the numerous dependant claims of each of the Nordik Patents; he limited his assessment to the independent claims. [ 43 ] Mr. Bouchard acknowledged both versions of the PolarFlex products, the one with an elliptical bushing (and a depression) and the one with a round bushing (Bouchard expert report in response, sections 7.16 to 7.21), and included both in the prior art (Bouchard expert report in response, sections 9.1 and 9.2).

He referred to the depression and round bushings as a " “trou,” " but opined that the PolarFlex system did not include " “ventilation holes” " and that it was difficult to argue that the PolarFlex features were " “ventilation holes” " (Bouchard expert report in response, page 37). [ 44 ] Valley Blades stressed that in Hamel v Nordik Blades (Pro-24 Machining) , 2021 QCCS 3405 [ Hamel ] (reversed Nordik blades (Pro-24 machining) v Hamel , 2023 QCCA 874 ), concerning Canadian Patent No. 2,423,830 [the Hamel Patent], Mr.

Bouchard found that a single prior art document anticipated the Hamel Patent even though three essential elements were missing from that prior art because the missing elements were part of the CGK. In this case, Mr. Bouchard also identifies three differences between the Disputed Claims and the prior art: (

i) an open top; (ii) the presence of ventilation holes in the rubber bushings; and (iii) the integration of two rubber bushings with the outer rubber layer. Despite each of these differences being part of the CGK (as explained below), Mr. Bouchard concludes that the Disputed Claims are inventive on a less stringent test compared to anticipation. [ 45 ] The difference in Mr. Bouchard’s assessment of obviousness in this case versus his assessment of anticipation in Hamel , and his withholding of the conclusion that claim 35 of the 426 Patent is obvious, negatively impacts the weight I give to his opinion. III.

Overview of the patents at issue [ 46 ] The named inventors on the Nordik Patents are Hugo Michel, Stéphane Michel, and Marco Bergeron. The Nordik Patents are related patents as the 426 Patent is a divisional application of the 940 Patent and the 233 Patent is a divisional application of the 426

Patent. A. The 940 Patent [ 47 ] The 940 Patent is titled: " “Adjustable sweeping blade device and sweeping blade assembly.” " The following dates apply to the 940 Patent: (1) priority filing date: December 8, 2010; (2) filing date: November 30, 2011; (3) publication date: June 14, 2012; (4) issuance date: July 4, 2017; and (5) expiry date: November 30, 2031. [ 48 ] The 940 Patent states that there is a need for an improved sweeping blade device and the object of the invention is to provide such a device and blade assembly for attachment to personal or commercial vehicles (the 940 Patent at paras 11-12).

Per the patent’s abstract, the 940 Patent describes a sweeping blade assembly for attachment to a vehicle for sweeping a ground surface. The assembly comprises the first and the second blade supports attached parallel to and distant from each other to define a vertical channel. A plurality of sweeping blades comprises two bushing holes and a compressible bushing in each bushing hole for attachment to the first blade support and/or the second blade support. The bushing may be made of a resilient material and may comprise a ventilation hole for improving its compressibility.

Whereby, upon contacting an obstacle on the ground, the bushings compress under pressure to cause a vertical and/or angular movement of the blade within the channel. [ 49 ] The 940 Patent sets out the following challenges for blades during snow removal: (

i) uneven and different road surfaces; (ii) repeated impact to the blades; (iii) hitting obstacles on the road; (iv) operator error; (

v) metal-to-metal contact; and (vi) easy replacement of blades. The 940 Patent contains ten figures consisting of a sweeping blade assembly and sweeping blade device from multiple angles.

Figure 2 shows a frontal view of the sweeping blade assembly: [ 50 ] As shown, item 10 is the sweeping blade assembly, item 12 is the first blade support for attachment to a vehicle, item 14 is a sweeping blade device for attachment to a first blade support, and item 16 is a second blade support that attaches to the sweeping blade devices. [ 51 ] Figure 7 shows a front view of the sweeping blade device: [ 52 ] As shown, item 14 is the sweeping blade device, item 18 is a layer of resilient material (such as rubber) covering the blade, item 20 is a bushing made of a resilient material that is inserted into an elliptical bushing hole and integrally formed with the outer layer (item 18), item 21 is a metal bushing, item 23 is a ventilation hole in the resilient material bushing (item 20), and item 32 is the lower edge of the blade. [ 53 ] The 940 Patent has 12 claims.

Claim 1 is the only independent claim.

Pursuant to a stipulation between the parties, claims 1-12 of the 940 Patent are asserted. [ 54 ] Claim 1 reads: A sweeping blade assembly comprising: a first blade support adapted to be attached to a vehicle, said first blade support defining a first planar surface; a second blade support defining a second planar surface, the second blade support being adapted to be attached parallel to and distant from the first blade support whereby the first planar surface and the second planar surface define a vertical channel for receiving sweeping blade devices; and a plurality of sweeping blade devices, each sweeping blade device comprising; a blade portion comprising a lower edge for sweeping a ground surface, and an upper edge opposite the lower edge;

two bushing holes provided at opposite sides of the sweeping blade device for receiving two bushings; a bushing provided in each bushing hole, the bushing comprising: a metal bushing for operably attaching the sweeping blade device to the first blade support and/or the second blade support, a resilient material bushing surrounding the metal bushing, and a ventilation hole provided in the resilient material bushing to increase the compressibility of the bushing; wherein a substantially equal compression of the two bushings causes a vertical movement of the sweeping blade device across the vertical channel, and wherein a differential compression, wherein a first bushing is compressed more than a second bushing, causes an angular movement of the sweeping blade device around a rotation axis defined by the metal bushing of the second bushing. [ 55 ] Claims 2 to 12 are reproduced in the Annex.

B. The 426 Patent [ 56 ] The 426 Patent is also titled " “Adjustable sweeping blade device and sweeping blade assembly” " and it has substantially the same disclosure as the 940 Patent. The 426 Patent contains ten figures or photos. [ 57 ] The following dates apply to the 426 Patent: (1) priority filing date: December 8, 2010; (2) filing date: November 30, 2011; (3) publication date: June 14, 2012; (4) issuance date: January 8, 2019; and (5) expiry date: November 30, 2031. [ 58 ] The 426 Patent has 64 claims.

Claims 1, 20, 35, and 50 are the only independent claims while the dependant claims add limitations. [ 59 ] Pursuant to a stipulation between the parties, claims 1-8, 10-14, 16, 17, 19, 20-28, 31-32, 34-37, 39-43, 45-47, 49-51, 54-62, and 64 are asserted. However, there is no longer any dispute that claim 35 of the 426 Patent is obvious as Mr.

Bouchard admitted this at trial. [ 60 ] Claim 1 reads : A sweeping blade assembly for attachment to a vehicle having a snow plough blade for sweeping a ground surface, the sweeping blade assembly comprising: a first blade support adapted to be attached to the snow plough blade of the vehicle; a second blade support adapted to be attached parallel to and distant from the first blade support; and a plurality of sweeping blade devices for sweeping the ground surface, each one of the sweeping blade devices comprising a blade portion having at least two bushing holes extending therethrough and a compressible bushing inserted in each one of the at least two bushing holes, each one of the sweeping blade devices further comprises a resilient material layer coated on the blade portion with the compressible bushings being integral with said resilient material layer, wherein the sweeping blade devices are operably attached to the first blade support and/or the second blade support using the compressible bushings that allow for a vertical movement of the sweeping blade devices when the ground surface is uneven; wherein the first blade support and the second blade support define a channel in which the plurality of sweeping blade devices are inserted, the second blade support extending continuously along the plurality of sweeping blade devices mounted in an adjacent configuration, with each one of the sweeping blade devices being shorter in length than the first and the second blade supports, and wherein the channel is open on top to allow for a free movement of the sweeping blade devices across the channel when at least one of the compressible bushings is compressed. [ 61 ] Claims 20 reads: A sweeping blade assembly for sweeping a ground surface comprising: a first blade support adapted to be attached to a snow plough blade of a vehicle, said first blade support defining a first planar surface; a second blade support defining a second planar surface, the second blade support being adapted to be attached parallel to and distant from the first blade support, the first planar surface and the second planar surface defining a vertical channel inbetween; and a plurality of sweeping blade devices operably installed within the vertical channel with the second blade support extending continuously along the plurality of sweeping blade devices mounted in an adjacent configuration with each one of the sweeping blade devices being shorter in length than the first and the second blade supports, the sweeping blade devices being configured for sweeping a ground surface, each one of the sweeping blade devices comprises a blade portion with two bushing holes defined therein and a resilient material bushing inserted in each one of the two bushing holes, wherein each one of the sweeping blade devices further comprises a resilient material layer coated on the blade portion with the resilient material bushings being integral with said resilient material layer, the sweeping blade devices being attached to the first blade support or the second blade support through the resilient material bushings, the sweeping blade devices being configured to move vertically and angularly within the vertical channel when the ground surface is uneven; wherein the vertical channel has an open top and an open bottom for allowing vertical and angular movement of the sweeping blade devices across the vertical channel. [ 62 ] Claim 50 reads:

An assembly of sweeping blade devices engageable with a blade support assembly attached to a vehicle and including a first blade support and a second blade support, the second blade support extending parallel to and spaced-apart from the first blade support, the first and second blade supports defining together a channel having an open bottom, at least a plurality of the sweeping blade devices comprising: a blade portion having a front face, a rear face, a lower edge for sweeping a ground surface, and an upper edge opposite the lower edge, the blade portion having at least two bushing holes extending therethrough between the front face and the lower face and between the upper and lower edges, the blade portion being insertable into the channel defined between the first and the second blade supports and operably attachable to the first blade support and/or the second blade support through the at least two bushing holes: bushings, each one of the bushings comprising a resilient bushing portion having a fastener aperture extending therethrough and each one of the bushings being inserted in a respective one of at least two bushing holes: and a resilient material layer coated on the blade portion to at least partially cover same and the resilient material bushing portions being integral with said resilient material layer; wherein at least one of the blade portions of the sweeping blade devices is displaceable above the first and the second blade supports through the open top. [ 63 ] The dependant claims are reproduced in the Annex.

Although they are not all in issue, they are reproduced for clarity. C. The 233 Patent [ 64 ] The 233 Patent is also titled: " “Adjustable sweeping blade device and sweeping blade assembly” " and has substantially the same disclosure as the 940 and 426 Patents.

It shows the same ten figures and has 14 claims, directed to just the blade and not the assembly. [ 65 ] The following dates apply to the 233 Patent: (1) priority filing date: December 8, 2010; (2) filing date: November 30, 2011; (3) publication date: June 14, 2012; (4) issuance date: July 9, 2019; and (5) expiry date: November 30, 2031. [ 66 ] Claim 1 is the only independent claim.

Pursuant to a stipulation between the parties, claims 1-2, 4-5, 7, and 9-14 of the 233 Patent are asserted. [ 67 ] Claim 1 reads: A sweeping blade comprising: a blade portion having a front face, a rear face, a lower edge for sweeping a ground surface, and an upper edge opposite the lower edge, the blade portion having at least two bushing holes extending therethrough between the front face and the lower face and between the upper and lower edges; bushings, each one of the bushings comprising a resilient bushing portion having a fastener aperture, each one of the bushings being inserted in a respective one of at least two bushing holes; and a resilient material layer coated on the blade portion to at least partially cover the blade portion and the resilient material bushing portions being integral with said resilient material layer. [ 68 ] The dependant claims are reproduced in the Annex.

Although they are not all in issue, they are reproduced for clarity IV. Other patents or products of interest [ 69 ] Nordik Blades is also the current owner of the United States Patent No. 9,121,151 [the US 151 Patent] issued from a Patent Cooperation Treaty Application No. PCT/CA2011/001334. The named inventors are Hugo Michel, Stéphane Michel, and Marco Bergeron. The following dates apply to the US 151 Patent: (1) provisional application No. 61/421,185 filing date: December 8, 2010;

(2) PCT filing date: November 30, 2011; (3) publication date: June 14, 2012; and (4) registration date: September 1, 2015. [ 70 ] On January 26, 2017, Nordik Blades filed a PCT Application No. PCT/CA2017/050082 for a sweeping blade device with adjustable blades. The named inventors are Hugo Michel, Stéphane Michel, and Marco Bergeron. The PCT Application has a priority date of January 26, 2016, from a US provisional application No. 62/287,139. [ 71 ] The Nordik MOVE product is based on the system described in the Nordik Patents.

There are two elements found in the Nordik MOVE product that are not present in the Nordik Patents: 1) the tapered shape of the Nordik MOVE product’s blade; and 2) the ideal size of the ventilation hole. After testing the product, the inventor, Mr. Michel, concluded that 3/8th of an inch was the ideal size for the ventilation hole. [ 72 ] I also note that, due to Hamel , Nordik Blades now only sells the Nordik MOVE products with full bushing. Prior to August 2021, it only sold about 5% to 10% of the Nordik MOVE products with full bushing, and 90% with the bushing containing the ventilation hole. V.

Claim construction

A. Principles [73] The first step in any patent suit is to construe the claims. [74] This construction is antecedent to considering both validity and infringement issues and is the same for all purposes (Free WorldTrust v Electro Santé Inc, 2000 SCC 66 at paras 33-50; Whirlpool Corp v Camco Inc 2000 SCC 67 at paras 42-43 [Whirlpool];AstraZeneca Canada Inc v Apotex Inc, 2017 SCC 36 at para 31).

A claim cannot be construed with an eye on the allegedly infringingdevice in respect of infringement or with an eye to the prior art in respect of validity to avoid its effect (Dableh v Ontario Hydro, (FCA), [1996] 3 FC 751, 68 CPR (3d) 129). [75] As Justice Zinn outlined in Meridian Manufacturing Inc v Concept Industries LTD, 2023 FC 20 at paragraph 44, the generalprinciples of claim construction were recently discussed in Tearlab Corporation v I-MED Pharma Inc, 2019 FCA 179 at paragraphs 31-34 and may be summarized as the following: The Patent Act promotes adherence to the language of the claims, which in turn promotes fairness and predictability.

Thewords of the claims must, however, be read in an informed and purposive way, with a mind willing to understand. On apurposive construction, it will be apparent that some elements of the claimed invention are essential while others are non-essential. The interpretative task of the court, in claim construction, is to separate and distinguish between the essential andthe non-essential elements, and to give the legal protection to which the holder of a valid patent is entitled only to theessential elements.

To identify these elements, the claim language must be read through the eyes of a POSITA, in light of the latter’s commongeneral knowledge. As noted in Free World Trust: [51] ...The words chosen by the inventor will be read in the sense the inventor is presumed to have intended, and in a waythat is sympathetic to accomplishment of the inventor’s purpose expressed or implicit in the text of the claims. However, ifthe inventor has misspoken or otherwise created an unnecessary or troublesome limitation in the claims, it is a self-inflictedwound.

The public is entitled to rely on the words used provided the words used are interpreted fairly and knowledgeably.[Emphasis in the original.] Claim construction requires that the disclosure and the claims be looked at as a whole “to ascertain the nature of theinvention and methods of its performance, ... being neither benevolent nor harsh, but rather seeking a construction which isreasonable and fair to both patentee and public”. Consideration can thus be given to the patent specifications to understandwhat was meant by the words in the claims.

One must be wary, however, not to use these so as “to enlarge or contract thescope of the claim as written and ... understood.” The Supreme Court recently emphasized that the focus of the validityanalysis will be on the claims; specifications will be relevant where there is ambiguity in the claims. Finally, it is important to stress that claim construction must be the same for the purpose of validity and for the purpose ofinfringement. [References omitted.] B. Relevant date for claim construction [76] The relevant date for claim construction is the date of publication (Whirlpool at para 56).

In this case, the date is June 14, 2012,which is when the 940 Patent was published (Agreed Statement of Facts, Ex. 2). C. Person skilled in the art [77] There is little dispute between the two experts as to the POSITA to whom the Nordik Patents are addressed. The main distinction isthe type and level of education required, as Nordik Blades’ expert, Mr. Bouchard, suggests the POSITA has education in engineeringwhile Valley Blades’ expert, Mr.

Paonessa, suggests no particular level or type of education is necessary. [78] For Valley Blades, the POSITA would be a team consisting of one or more people with the following skills gained from severalyears of work experience in this industry: (

a) knowledge of the design of snow plow blade assemblies; and (

b) knowledge of thematerials used to make snow plow blade assemblies. [79] For Nordik Blades, the POSITA to whom the Nordik Patents are addressed should have a technical or university engineering degree,about five years experience in the conception and manufacturing of parts or systems linked to the automotive industry, and about oneyear of experience specifically in the snow removal sector. [80] I am prepared to accept the POSITA as suggested by Mr. Bouchard, i.e., Nordik Blades’ expert. [81] The parties agree that the experts themselves do not need to possess the characteristics of the POSITA.

They must however be ableto present to the Court the perspective of the POSITA at the date of the patent’s publication. [82] Insofar as Nordik Blades asserts that a POSITA would not have taken risks in the face of uncertainty to arrive at the allegeddifferences between the Nordik Patents’ Disputed Claims and the prior art, I disagree. The jurisprudence is clear that a POSITA is notrisk-averse: "“I do not accept that the skilled person avoids risk”" (Leo Pharma Inc v Teva Canada Limited, 2015 FC 1237 at para 105;see also Amgen v Pfizer, 2020 FC 522 [Amgen] at paras 327-330).

The POSITA can face some level of uncertainty along the way: "“Butequally, it cannot, in my judgment, be assumed that inventiveness must have been involved somewhere, just because a wager on successcould have been placed at long odds”" (Amgen Canada v Apotex, 2015 FC 1261 at para 101).

D. Common general knowledge as of June 14, 2012 [ 83 ] Common general knowledge does not amount to all information in the public domain. Rather, CGK is the knowledge generally known at the relevant time by the person skilled in the field of art or science to which the patent relates ( Bell Helicopter Textron Canada Limitée v Eurocopter, société par actions simplifiée , 2013 FCA 219 at paras 63–65 [ Bell Helicopter Textron ]).

In other words, as stated in Mylan Pharmaceuticals ULC v Eli Lilly Canada Inc , 2016 FCA 119 [ Mylan Pharmaceuticals ] , " “common general knowledge […] is the knowledge generally known by POSITAs at the relevant time” " (para 24). [ 84 ] Unlike the prior art, which is a broad category encompassing all previously disclosed information in the field, a piece of information only migrates into the CGK if a POSITA would become aware of it and accept it as " “a good basis for further action” ( " Mylan Pharmaceuticals at para 24 ).

The CGK informs the way in which the claims and specifications must be read, because the patent is addressed to the POSITA. Any inquiry in patent law that is performed from the perspective of a POSITA will thus import the CGK. A POSITA’s CGK cannot be assumed; rather, it must be proven with fact evidence on a balance of probabilities ( Eli Lilly & Co v Apotex Inc , 2009 FC 991 at para 100 ). For a claim construction, the relevant date to construe the CGK is the date of the publication, i.e., on June 14, 2012. [ 85 ] Mr.

Paonessa describes the CGK as of June 14, 2012 at page 43 of his expert report in which he includes the version of the Valley Blades’ PolarFlex product with a round bushing that creates an air gap. His description is as follows: (

a) Knowledge of the Valley Blades Patent and the sweeping blade assembly / device it describes and claims; (

b) Knowledge of PolarFlex (both the version with the elliptical bushing and the version with the round bushing that creates an Air Gap ) and its features; (

c) Knowledge of the JOMA Patent and the sweeping blade assembly / device it describes and claims; and (

d) Knowledge of the JOMA 6000 and its features. In addition, the skilled person would generally be aware of and have an understanding of the use of resilient materials (such as rubber) in structures in order to: (

a) allow for compressibility and/or movement; (

b) surround certain components to avoid metal-to-metal contact; and (

c) absorb vibrations and sounds. [Emphasis added.] [ 86 ] Mr. Bouchard, on the other hand, describes the CGK as of June 14, 2012 at pages 9 to 12 of his expert report (on construction and infringement) to include only holes in elliptical (allongé) or oblong forms (referencing US Patent 2,116,351 dated 1938 and the Hamel Patent dated 2003). [ 87 ] The experts thus disagree as to whether the PolarFlex product with a round bushing that creates an air gap was part of the CGK as of June 14, 2012, but nothing turns on it as to claim construction. I note however that the Hamel Patent from 2003 also has an air gap. E.

Claims construction [ 88 ] There is no dispute between the experts as to claims construction. Both Mr. Paonessa and Mr. Bouchard identified the same essential elements of the Disputed Claims. The text of the Disputed Claims are reproduced in this decision and attached in the Annex.

(1) The 940 Patent (

a) Claim 1 [ 89 ] The two experts agree on the essential elements of independent claim 1 of the 940 Patent. [ 90 ] Nordik Blades asserts, in its closing submissions, that there exists a contentious issue relating to the ventilation hole since Mr. Paonessa would have required it to pass through . I assume Nordik Blades interprets this as if Mr. Paonessa was requiring the ventilation hole to pass all the way through. However, I am satisfied that there is no contentious issue in that regard. First, I have not seen that Mr.

Paonessa considers essential that the ventilation hole passes all the way through the rubber bushing. Second, on the contrary, both experts construe the ventilation hole to have no particular shape, depth, or position (Valley Blades closing submissions at page 14; Paonessa responding expert report at page 12; Bouchard expert report (interpretation and infringement) at page 123). [ 91 ] The essential elements of claim 1 are:

(1) Vehicle attachment : there is a first blade support that attaches to a vehicle.

(2) Vertical channel : there is a second blade support that is parallel to and distant from the first blade support, creating a vertical channel for receiving sweeping blade devices.

(3) Blade portion : there is a plurality of sweeping blade devices, each device containing a lower edge for sweeping the ground and an upper edge opposite the lower edge.

(4) Bushing holes : there are two bushing holes provided at opposite sides of the sweeping blade device for receiving two bushings.

(5) Bushings : there is a bushing provided in each bushing hole to allow for vertical and / or angular movement of the sweeping blade device. Each bushing comprises the following: (

i) a metal bushing that attaches the sweeping blade device to the first and/or second blade supports.

(ii) a resilient material bushing that surrounds the metal bushing. (iii) a ventilation hole passing through the resilient material bushing to increase its compressibility. (

b) Claims 2-12 [ 92 ] Each of the dependant claims 2-12 are asserted and add the following limitations to claim 1: - Blade portion: the blade portion is made of composite material, steel, carbide, aluminum, alloy, polymer or plastic (claim 2); has an insert in the lower edge (claim 3) made of carbide (claim 4); and is covered by a layer of resilient material (claim 5) - Resilient material bushing: the resilient material bushing is made of rubber (claim 6) - Vehicle attachment: the vehicle attachment is removably attached to the vehicle (claim 7); the vehicle is a truck, car, four- wheeler, tractor, personal vehicle, commercial vehicles, snow plow vehicle, or van (claim 8); and the attachment can occur on the front, side, back, or underneath of the vehicle (claim 9) - Vertical channel: the second blade support that forms the Vertical Channel is narrower than the sweeping blade devices (claim 10); has an open top adjacent to the upper edge of the blade portion (claim 11); and has an open bottom adjacent to the lower edge of the blade portion (claim 12)

(2) The 426 Patent (

a) Claim 1 [ 93 ] Claim 1 of the 426 Patent claims a sweeping blade assembly with the following essential elements:

(1) Vehicle attachment : there is a first blade support that attaches to the snow plough blade of the vehicle.

(2) Vertical channel : there is a second blade support that is parallel to and distant from the first blade support, creating a vertical channel for receiving sweeping blade devices. The second blade support extends continuously along the sweeping blade devices, with each of the sweeping blade devices being shorter in length than the first and second blade supports.

(3) Open top : the vertical channel created by the first blade support and second blade support for receiving sweeping blades has an open top to allow for free movement of the sweeping blades.

(4) Blade portion : there is a plurality of sweeping blade devices, each device comprising a blade portion.

(5) Bushing holes : there are at least two bushing holes extending through the blade portion.

(6) Bushings : there is a compressible bushing inserted in each bushing hole to allow for vertical movement of the sweeping blade device (does not require ventilation holes).

(7) Integrated coating : there is a resilient material layer coated on the blade portion with the compressible bushings being integral with the resilient material layer. (

b) Claims 2-19 [ 94 ] The dependent claims 2-8, 10-14, 16-17, and 19 are asserted. Some limitations pertaining to the blade portion (claims 3-5), and resilient material bushing (claim 7) are substantially the same as the related limitations imposed on claim 1 of the 940 Patent as described above.

The remaining dependant claims add the following limitations to claim 1: - Blade support: the second blade support is narrower than the sweeping blade devices (claim 2) - Blade portion: the blade portion is steel-based (claim 11) and the lower edges extend downwardly past the first and second blade supports (claim 14) - Resilient material bushing: The resilient material bushing covers a majority of the front and rear faces of the blade portion (claim 16), at least the upper edge of the blade portion (claim 19), and is bonded to the blade portion (claim 17) - Metallic bushing: a metallic bushing is inserted in the resilient material bushing that defines a fastener aperture (claim 10) - Ventilation hole: each compressible bushing contains a ventilation hole to increase the bushing’s compressibility (claim 8) that is aligned with a fastener aperture, each being closer to the lower edge than the metallic bushings (claim 13) - Bushing hole: the bushing hole is elliptic (claim 12) (

c) Claim 20 [ 95 ] Claim 20 of the 426 Patent substantially overlaps with claim 1 of the 426 Patent. The essential elements are:

(1) Vehicle attachment : there is a first blade support that attaches to the snowplough blade of the vehicle.

(2) Vertical channel : there is a second blade support that is parallel to and distant from the first blade support defining a second planar surface creating a vertical channel for receiving sweeping blade devices. The second blade support extends continuously along the sweeping blade devices, with each of the sweeping blade devices being shorter in length than the first and second blade supports.

(3) Blade portion : there is a plurality of sweeping blade devices, each device comprising a blade portion.

(4) Bushing holes : there are two bushing holes extending through the blade portion.

(5) Bushings : there is a compressible bushing inserted in each bushing so the bushings can cause both vertical and angular movement of the sweeping blade device.

(6) Integrated coating : there is a resilient material layer coated on the blade portion with the compressible bushings being integral with the resilient material layer.

(7) Open top and open bottom : the vertical channel created by the first blade support and second blade support for receiving sweeping blades has an open top and an open bottom for allowing vertical and angular movement of the sweeping blades. (

d) Claims 21 to 34 [ 96 ] The dependant claims 21-28, 31-32, and 34 were asserted. Some limitations pertaining to the blade support (claim 22), blade portion (claims 25, 27-28), resilient material bushing (claims 25, 31-32, 34), ventilation hole (claims 21, 27), bushing hole (claim 26), and metallic bushing (claim 24) are substantially the same as the related limitations imposed on claim 1 of the 426 Patent as described above.

The remaining claims add the following limitations to claim 20: - Blade support: the sweeping blade device attaches to the first or second blade support through the resilient material bushing (claim 21) and the first blade support is removably secure to a snow plough blade (claim 23) (

e) Claim 35 and dependent claims 36 to 49 [ 97 ] During the trial and in their closing submissions, Nordik Blades acknowledged that claim 35, which describes a sweeping blade assembly, is obvious and thus is no longer an issue. [ 98 ] The claims dependant of claim 35 should still be assessed, as they are presumed valid even if they are dependent on an invalid claim. Dependant claims 36-37; 39-43, 45-47, and 49 were asserted.

Some limitations pertaining to the blade support (claim 37), blade portion (claims 40, 42-43), resilient material bushing (claims 40, 46-47, 49), ventilation hole (claims 36, 42), bushing hole (claim 41), and metallic bushing (claim 39) are substantially the same as the related limitations imposed on claim 20 of the 426 Patent as described above. The remaining claim adds the following limitation to claim 35: Blade support: the first and second blade supports are longer than the sweeping blade devices (claim 45) (

f) Claim 50 [ 99 ] Claim 50 of the 426 Patent also substantially overlaps with claim 1 of the 426 Patent. The essential elements are:

(1) Vehicle attachment : there is a first blade support that attaches to the snowplough blade of the vehicle.

(2) Vertical channel : there is a second blade support that is parallel to and distant from the first blade support, creating a vertical channel for receiving sweeping blade devices. The second blade support extends continuously along the sweeping blade devices, with each of the sweeping blade devices being shorter in length than the first and second blade supports.

(3) Blade portion : there is a plurality of sweeping blade devices, each device comprising a blade portion.

(4) Bushing holes : there are at least two bushing holes extending through the blade portion.

(5) Bushings : the bushings comprises a resilient bushing portion that must have a “fastener aperture extending therethrough”

(6) Integrated coating : the resilient material layer must “at least partially cover” the blade portion.

(7) Open top and open bottom : the vertical channel has both an open top and an open bottom. (

g) Claims 51-64 [ 100 ] The dependent claims 51, 54-62, and 64 were asserted. Some limitations pertaining to the blade support (claims 56, 64), blade portion (claims 57-59, 62), resilient material bushing (claim 59), ventilation hole (claims 51, 61), and bushing hole (claim 60) are substantially the same as the related limitations imposed on claims 20 and 35 of the 426 Patent as described above. The remaining claims add the following limitations: - Metallic bushing: a metallic bushing is inserted in the fastener aperture and is externally surrounded by the resilient bushing (claim 55) - Blade portion: the blade portion has an upper edge covered by the resilient material layer (claim 54)

(3) The 233 Patent [ 101 ] The 233 Patent pertains an individual sweeping blade rather than a sweeping blade assembly. (

a) Claim 1 [ 102 ] Claim 1 of the 233 Patent claims a sweeping blade with the following essential elements:

(1) Blade portion: there is a blade portion having a front face, a rear face, a lower edge for sweeping a ground surface, and an upper edge opposite the lower edge.

(2) Bushing holes: there are at least two bushing holes extending through the blade portion.

(3) Bushings: there is a resilient bushing having a fastener aperture inserted in each bushing hole.

(4) Integrated coating: there is a resilient material layer at least partially coated on the blade portion with the resilient bushings being integral with the resilient material layer. (

b) Claims 2 to 14 [ 103 ] The dependent claims 2, 4-5, 7, and 9-14 were asserted. Some limitations pertaining to the blade portion (claims 10-11), resilient material bushing (claims 4-5, 7), ventilation hole (claims 2, 13, 14), bushing hole (claim 12), and metallic bushing (claim 9) are substantially the same as the related limitations imposed on the disputed independent claims of the 426 Patent as described above. VI. Obviousness A. Principles [ 104 ] A patent cannot be issued for an invention that was obvious on the priority filing date to a POSITA to which the patent pertains, per

section 28.3 of the Patent Act. The experts agree that obviousness in this case is to be assessed as of December 8, 2010 (the priority filing date of the Nordik Patents). [ 105 ] In Apotex v Shire LLC , 2021 FCA 52 [ Shire ], the Federal Court of Appeal [FCA] restated that, as with anticipation, obviousness is assessed on a claim-by-claim basis (referencing Zero Spill Systems (Int’

l) Inc v Heide , 2015 FCA 115 at paras 83 , 85). If the Court holds an independent claim obvious, it must still go on to consider each of the cascading, narrower dependent claims for obviousness. Each claim is evaluated against the four-part test set out in Apotex Inc v Sanofi-Synthelabo Canada Inc , 2008 SCC 61 [ Sanofi ] at para 67 : (1) (

a) Identify the notional “person skilled in the art”; (

b) Identify the relevant common general knowledge of that person;

(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;

(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;

(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention? [ 106 ] The fourth step of the inquiry may require considering whether the steps to reach the claimed invention were, for the POSITA, " “obvious to try” ( " Sanofi at paras 68-71 ). When considering obviousness, hindsight is prohibited. B.

Person skilled in the art [ 107 ] As addressed earlier in paragraph 78 of these reasons, the POSITA to whom the Nordik Patents are addressed is an individual with a technical or university engineering degree, about five years experience in conceptualizing and manufacturing parts or systems linked to the automotive industry, and about one year of experience specifically in the snow removal sector. C. Common general knowledge as of December 8, 2010 [ 108 ] The parties agree that the documents and products listed in their Agreed Statement of Fact were part of the POSITA’s CGK as of December 8, 2010.

In particular, the parties have agreed that the following formed part of the CGK: (

i) the Hamel Patent (ii) the JOMA Patent; (iii) the JOMA product; (iv) the Valley Blades Patent; and (

v) Valley Blades’ PolarFlex product with the oblong (elliptical) bushings. [ 109 ] Nordik Blades disputes that the round bushings forming " “air gaps” " in the other version of the PolarFlex product formed part of the CGK at the relevant date since only a modest number of products with that feature were sold before December 8, 2010. On the other hand, Mr. Hunt for Valley Blades explained that the initial " “test samples” " of the round bushings were sent to distributors (who sell the product to end-user customers) before the priority filing date. Mr. Hunt explained that it is typical in the industry for customer sales

representatives to show customers the individual pieces including the round bushings to explain how the system works. Again, I note that, in any case, the Hamel Patent has bushings with air gaps. [ 110 ] Hence, on a balance of probabilities, I find the round bushings forming " air gaps " featured in one version of the PolarFlex products formed part of the CGK at the relevant date. However, as seen below, this has no impact on my finding on obviousness. D.

Prior art [ 111 ] Prior art is " “the collection of learning in the field of the patent at issue” " and " “comprises any publically available teaching, however obscure or not generally accepted” " ( Mylan Pharmaceuticals at para 23 ). In C iba Specialty Chemicals Water Treatments Limited’s v SNF Inc , 2017 FCA 225 [ Ciba ] at para 56 , the Federal Court of Appeal confirmed that state of the art is simply another term for prior art, and I may refer to either in these reasons.

The FCA recently held that no publicly available piece of art at the relevant date should be excluded from the prior art solely because it would not be located following a reasonably diligent search ( Hospira Healthcare Corporation v Kennedy Trust for Rheumatology Research , 2020 FCA 30 at para 86 ). [ 112 ] Valley Blades asserts there is no dispute between the parties as to the applicable prior art. It includes: (

i) the Hamel Patent; (ii) the JOMA Patent; (iii) the JOMA product; (iv) the Valley Blades Patent; and (

v) Valley Blades’ PolarFlex product (both with elliptical bushings with depressions and with round bushings with air gaps). [ 113 ] Oddly, both at paragraph 55 of the Plan de Plaidoirie it submitted in closing and in its oral closing submissions, Nordik Blades submitted that the PolarFlex product with round bushings should not be considered as prior art (transcript, October 25, closing submissions, 166-67). However, during the trial, Nordik Blades confirmed clearly that the PolarFlex product with round bushings did form part of the prior art (transcript, October 25, closing submissions, 37-38 and 167). Mr.

Bouchard even considered it as prior art in his obviousness analysis. [ 114 ] The Federal Court of Appeal in Ciba reminds us that: The matter cited as forming part of the prior art is simply the prior art relied upon by the person alleging obviousness. Obviousness is not determined by reference to the prior art at large. The person alleging obviousness must point to one or more elements of prior art which make the impugned invention obvious. The choice of those elements of prior art is entirely in the hands of the party alleging obviousness, limited only by

section 28.3 of the Act which sets out the cut-off date for opposable prior art. In fact, the challenger may rely on a combination of pieces of prior art under the “mosaic” theory of obviousness: Wenzel Downhole Tools Ltd. v. National-Oilwell Canada Ltd. , 2012 FCA 333 at paragraph 87 , [2014] 2 F.C.R. 459. [ 115 ] Valley Blades demonstrated that the version of the PolarFlex product featuring the round bushings with air gaps was first sold on January 27, 2010; hence, it was made publicly available before the cut-off date on December 8, 2010 (Hunt’s affidavit at para 28).

Furthermore, and as stated earlier, Nordik Blades confirmed this version of the PolarFlex product formed part of the prior art during its oral closing submissions and Mr. Bouchard, Nordik Blades’ expert, considered it as such in his expert report. I am satisfied that the Valley Blades’ PolarFlex product featuring the round bushings with air gaps forms part of the prior art. [ 116 ] The JOMA Patent discloses a segmented blade that is designed to be mounted on a plow for clearing snow, slush, and ice from the underlying surface.

The JOMA product is an embodiment of the invention claimed in the JOMA Patent. [ 117 ] The segmented blade disclosed in the JOMA Patent comprises an elastomer mass (consisting of rubber) which encases multiple moving blades and the blades of the claimed invention are sandwiched between two metal supports (a clamp bar and back support blade) that form an open channel wherein the individual blades can move. [ 118 ] The key features of the JOMA Patent include the integration of bushing with the outer rubber layer: (1) an elastomer mass (consisting of rubber) encases the multiple blades; (2) the rubber prevents damaging metal-on-metal contact that could cause premature wear and structural damage to the blades and to any adjacent metal parts in the plow; (3) the presence of the rubber also absorbs and dampens sounds and vibrations caused by friction between the blades and the road surface; and (4) there is at least one bushing hole in each blade that is filled with rubber and is integrated with the outer rubber. [ 119 ] The JOMA Product was first marketed in Scandinavia and became available in North America in the early 2000s (Paonessa expert report, Ex. 7 at para 68; Appendix II, Tab 3, para 71, Figure 5).

The JOMA Product contains all elements of the segmented snow plow disclosed in the JOMA Patent, including that each blade contains a bushing that is integrated with the outer rubber layer. The blades of the JOMA product are sandwiched between two metal supports (a clamp bar and a back support blade) forming an open channel wherein the individual blades can move.

The entire unit is mounted onto a vehicle using plow bolts that pass through the clamp bar, metal bushings in the rubber, back support blade, and the moldboard itself. [ 120 ] The JOMA Patent teaches the benefits of vulcanizing the metal blades to the rubber mass that surrounds them. There is no dispute between the experts that the rubber inside the U-shaped blades of the invention claimed in the JOMA Patent forms at least one integrated bushing (Ex. 6 – FC00192, Col.

II, ln 59-64 and Ex. 74 – FC00264, p. 43; TT(EN), Bouchard, cross, day 4 (44:17-22); Ex. 73 – FC00246, p. 43). [ 121 ] The Valley Blades Patent describes an improved removable blade system, which may be used to mount a blade onto a vehicle for snow removal. Both versions of the PolarFlex products are embodiments of the blade system disclosed in the Valley Blades Patent. The system comprises: (

i) a mounting assembly; (ii) at least one blade; (iii) a flexible absorber (i.e., rubber) consisting of one or more pieces; and (iv) a fastening means. [ 122 ] As discussed, Valley Blades sells its PolarFlex products with two different versions of rubber bushings: elliptical bushings and round bushings.

[ 123 ] The version of the PolarFlex that was first sold on May 8, 2008, had two elliptical rubber bushings. The elliptical bushings have always been sold with a depression in them (i.e., a reduced

section of rubber). The version of the PolarFlex with round bushings was first sold on January 27, 2010. As Mr. Hunt explained, when a PolarFlex blade is outfitted with round bushings, there is an air gap between the outside of the round bushing and the bushing hole. E. The 940 Patent

(1) Claim 1 (

a) Inventive concept [ 124 ] There does not appear to be any dispute regarding the inventive concepts of the Disputed Claims. Mr. Bouchard does not use the phrase " “inventive concept” " when assessing obviousness in his report, but he does compare each essential element of the Nordik Patents’ independent claims against the prior art to determine the independent claims’ inventivity (Bouchard’s responding expert report at sections 9.2 and 10.2). Mr.

Paonessa finds the inventive concept is no different from the POSITA’s understanding of the claim (Paonessa expert report at paras 144, 190, 217, 244, 265, and 269) and likewise compares each essential element of the claims against the prior art. According to both experts, the inventive concept is readily apparent here and corresponds to the essential elements of the claims.

It need not be independently construed ( Shire at para 67 ). [ 125 ] In the Plan de Plaidoirie it submitted in closing, and in its oral closing submissions (transcript, October 25, 2023, 136-37), Nordik Blades suggested, although not entirely clearly, that the inventive concept of the claims may be based in something other than the essential elements of the claims.

I do not agree and find, as the experts have, that the inventive concept of each claim is found in its essential elements. [ 126 ] Nordik Blades also alluded, particularly in its closing submissions, to the Nordik Patents being " “combination patents,” " and cited to case law relating to combination patents (see, for example, Bridgeview Manufacturing Inc v 931409 Alberta Ltd (Central Alberta Hay Centre), 2010 FCA 188 [ Bridgeview ]). Combination patents are those that combine elements from multiple patented items; the inventivity is in the selection and combination of those elements.

Nothing indicates that the Nordik Patents are combination patents or relate to a combination invention, that a combination was claimed, or that a combination was an essential element. The experts neither opined that the Nordik Patents related to a " “combination invention” " ( Bridgeview at paras 51-52 ). I therefore do not consider the Nordik Patents as combination patents. (

b) Difference between the inventive concept of claim 1 of the 940 Patent and the prior art [ 127 ] The experts agree that there are no differences between most of the elements of claim 1 of the 940 Patent and the prior art (relating to the vehicle attachment, vertical channel, blade portion, and bushing hole). These elements are common to most of the Disputed Claims.

The experts also agree that the first two components of the bushing (i.e., the metal bushing and rubber rushing) were known in the prior art. [ 128 ] The experts’ disagreement in regards to claim 1 of the 940 Patent is over the ventilation hole in the bushing. Mr. Bouchard contends that the prior art does not encompass a ventilation hole within the rubber bushing.

He outlines that Valley Blades’ PolarFlex product shows either a depression in the rubber bushing or an empty space below the metal bushing, and that it is difficult to argue that these features include ventilation holes that allow a more important deformation of the bushing for the same constraint (i.e., to increase the bushing’s compressibility) (Bouchard responding expert report at

section 9.2). [ 129 ] Mr. Paonessa contends that in the first version of the PolarFlex product, the depressions in the elliptical fastener increase the deformability and compressibility of the resilient bushing, which increase the vertical and/or angular movement of the blade when it encounters an uneven road surface (with the air gap providing a greater range of movement). The PolarFlex’s second version’s air gaps in the round fastener allow for an even greater range of vertical and/or angular movement. Thus, these features serve the same function as the ventilation hole. Mr.

Paonessa therefore opines that there is no material difference between the bushings feature of claim 1 of the 940 Patent and the Valley Blades prior art (Paonessa expert report at paras 168-69). [ 130 ] I agree with Valley Blades (see Valley Blades’ closing submissions at paras 89-92) that Mr. Bouchard’s conclusion does not withstand scrutiny as: • When construing claim 1 of the 940 Patent, both experts construed the term “ventilation hole” as not being limited by its shape, depth, or position.

A ventilation hole could thus include a depression in the elastic material, like the one in the version of the PolarFlex product with elliptical (oblong) rubber bushing; • When conducting his infringement analysis, Mr. Bouchard had no difficulty arguing that a layer of rubber inside the rubber bushings of Valley Blades’ EconoFlex-M product was still a “ventilation hole” (Bouchard expert report at

section 6.22). The PolarFlex with the elliptical bushing likewise has a layer of rubber; • In his expert report, Mr. Bouchard opined that the purpose of the ventilation hole is to replace a portion of the rubber with air, which allows for greater compression of the rubber bushing. In his validity report, Mr. Bouchard describes the depressions in the PolarFlex bushings in the exact same way: “ Ces dépressions auront un impact sur le contrôle du mouvement puisqu’elles permettront un déplacement plus facile de la matière élastique, facilitant ainsi la compressibilité de chacun des éléments flexibles de fixation ” (Bouchard expert report in response at

section 7.16); • Mr. Hunt described the purpose of adding depressions to the PolarFlex bushings in the same way as Mr. Bouchard did in his original construction; and

• The claim itself specifies that the purpose for the ventilation hole is to increase the bushing’s compressibility. [ 131 ] I find there are no differences between the inventive concept (i.e., the essential elements) of claim 1 of the 940 Patent and the prior art. In particular, in regards to the contentious ventilation hole feature, I am satisfied that there is no difference between the ventilation hole and the PolarFlex product with an elliptical bushing comprising a depression in the rubber, which is in itself a ventilation hole. As mentioned earlier, the Hamel Patent, disclosed prior to both the Nordik Patents and the Valley Blades Patent, also has air gaps. (

c) Bridge the gap between prior art and inventive concept of claim 1 [ 132 ] Alternatively, to the extent that there are differences between the inventive concept of claim 1 of the 940 Patent and the prior art related to the ventilation hole feature, this difference would have been easily bridged by the POSITA. I note particularly that both parties accept that the version of the PolarFlex product featuring an elliptical depression in the bushing was part of the CGK as of the relevant date. [ 133 ] It would have been obvious for the POSITA to take away more rubber, and to know how to do so.

The POSITA knew that reducing rubber from the bushing would increase the bushing’s compressibility, leading to increased movement. For the POSITA it was, at a minimum, obvious to try to reduce more rubber to get more movement, even if there was no guarantee that more movement would result. (

d) Conclusion on claim 1 of the 940 Patent [ 134 ] Claim 1 of the 940 Patent is obvious. There is no difference between the claim’s inventive concept and the prior art; both contemplate a ventilation hole. In any case, it would have been obvious for the POSITA, equipped with the CGK, to try to take away more rubber to increase the bushing’s compressibility. (

e) Dependant claims 2 to 12 [ 135 ] The only evidence before the Court on the validity of the dependent claims 2-12 of the 940 Patent is that they are obvious (Paonessa expert report, pages 63-68). [ 136 ] Mr. Paonessa opines that there are no material differences between the prior art and the limitations described in the remaining dependant claims 2-12 of the 940 Patent, which pertain to the blade portion, resilient material bushing, vehicle attachment, and vertical channel.

He adds that any differences are cosmetic in nature and that the POSITA would have come to them directly and without difficulty based on the prior art and the CGK available by the relevant date (Paonessa expert report at para 191). He provided a detailed chart comparing the essential elements of claims 2-12 against the prior art that has not been contradicted (Paonessa expert report, pages 63-66); Mr. Bouchard provided no opinion on the inventivity of the dependant claims. [ 137 ] I accept Mr.

Paonessa’s expert evidence and find there are no differences between the inventive concept (i.e., the essential elements) of claims 2 to 12 of the 940 Patent and the prior art. Claims 2-12 of the 940 Patent are therefore obvious. F. The 426 Patent

(1) Claim 1 (

a) Inventive concept [ 138 ] As mentioned above, the inventive concept, per both parties’ experts, corresponds to the essential elements of the claim as construed. (

b) Difference between the inventive concept of claim 1 of the 426 Patent and the prior art [ 139 ] Two elements of claim 1 are in dispute as between the experts: (1) the open top, i.e., the vertical channel created by the first and second blade supports for receiving sweeping blades has an open top to allow for free movement of the sweeping blades; and (2) the integrated coating, i.e., there is a resilient material layer coated on the blade portion which is integral with the compressible bushings. [ 140 ] The experts agree that there is no difference between the other essential elements of claim 1 of the 426 Patent and the prior art. [ 141 ] In regards to the open top feature, Mr.

Bouchard first seemingly opined in his responding expert report (page 40) that neither the JOMA nor Valley Blades prior art presented this feature, although the language he used was not very precise. However, under cross- examination, Mr.

Bouchard unequivocally confirmed that there was an open top in the JOMA prior art and that the concept of an open top was even part of the CGK of the POSITA at the time Nordik Blades filed its patents (transcript, Bouchard, cross, October 20, 2022, 72-73). [ 142 ] So the parties ultimately agree that there is no difference between the open top claimed in claim 1 of the 426 Patent and the prior art. Furthermore, since the open top was even part of the CGK, as Mr.

Bouchard acknowledged, it cannot be inventive for Nordik Blades to have claimed this feature. [ 143 ] In regards to the integrated coating, this feature requires a resilient material layer (i.e., rubber) coated on the blade portion and integral with the compressible bushings. Mr.

Paonessa opines that (1) the Valley Blades Patent describes this exact feature, as well as a non-material variation of this feature, under claim 1 which contemplates that the outer rubber layer and inner rubber bushings can be one integrated piece (see also Figure 2 of the Valley Blades Patent); and (2) the JOMA Patent already disclosed the concept of a snow plow

blade covered in one integrated rubber piece. He points to Figure 2 of the JOMA Patent that shows a series of three U-shaped blades completely covered or embedded in a resilient material layer. [ 144 ] Mr. Bouchard agrees with Mr. Paonessa that the concept of integration was known in the prior art (i.e., the JOMA prior art) for at least one bushing. We can see that when assessing claim 35 of the 426 Patent, which comprises at least one bushing hole, Mr. Bouchard agreed that the JOMA product disclosed at least one bushing that is integrated with the outer rubber layer (Bouchard responding expert report, page 43).

Mr. Bouchard thus acknowledges that the integration of one bushing hole was in the prior art and was therefore obvious. [ 145 ] However, Mr. Bouchard opines that (1) the JOMA prior art is different in that the compressible bushings cannot be integral with the material layer coated on the blade portion given the absence of two bushings; and

(2) Valley Blades prior art is different because the number of detachable pieces differs, with the result that the layers of coated material are not integral with the compressible bushings. [ 146 ] The issue here is thus narrowed to determining whether the integration of two bushings rather than one was obvious. In his expert report, Mr. Bouchard provided no explanation as to why it would have been inventive for a POSITA to add one more integrated bushing to the blade. [ 147 ] As Valley Blades points out, in regards to the integration, Mr.

Bouchard’s opinion amounts to advancing the claim that the one integrated bushing in the U-shaped blade of the JOMA prior art does not correspond to the two integrated bushings in the Nordik Patents. However, in cross-examination, Mr. Bouchard acknowledged that in Hamel , he had found that the one bushing hole in the U-shaped blade of the JOMA Patent did correspond to the two bushing holes in the Hamel Patent’s blade (in that case, slip gaps).

However, he stressed that his comparison in this case between the JOMA Patent (one integrated bushing) and the claim of the 426 Patent (two integrated bushings) is different as he is trying to understand how the system works, which was not his aim in Hamel . He did not convince me that the distinction is meaningful nor that it explains the apparent contradiction. [ 148 ] I will nonetheless accept that there is a difference between claim 1 of the 426 Patent and the prior art, which is the integration of two bushings rather than one. (

c) Bridge the gap between the prior art and inventive concept of claim 1 [ 149 ] I agree with Valley Blades that any difference between the integration of one bushing versus two is obvious, as the POSITA would have easily bridged the gap.

The evidence reveals there was nothing inventive about fusing rubber to the blade or the rubber bushings and that: (1) the concept of two bushings formed part of the CGK; (2) the concept of integration of rubber with at least one bushing and the blade formed part of the CGK; and (3) even the commercialized PolarFlex product differed from the Valley Blades Patent by having most of the rubber pieces fused together. [ 150 ] I accept Mr. Paonessa’s evidence. The POSITA would not require inventive ingenuity to add one more integrated bushing or to fuse the rubber to the blade.

I am satisfied that the steps to integrate two bushings rather then one constitute steps , which would have been obvious to the POSITA, who has an engineering degree and is armed with the CGK. (

d) Conclusion on claim 1 of the 426 Patent [ 151 ] Claim 1 of the 426 Patent is obvious. Even if there is a difference between the claim and the prior art, due to the integration of two bushings rather than one, this difference is one that can be easily bridged by the POSITA without inventive ingenuity. (

e) Dependant claims 2-19 [ 152 ] The remaining features described in the asserted dependent claims 2-8, 10-14, 16-17, and 19 are also obvious in light of the prior art, and the Court has no evidence from Nordik Blades to the contrary. This includes: the type of vehicle (and location on the vehicle) that the snow plow attaches to, th

[…]