ABB Technology AG et al. v. Hyundai Heavy Industries Co., Ltd.- 2013 FC 947

This action relates to the alleged infringement of two
patents held by ABB  Technology AG –
Patent 2,570,772 and 2,567,781. The patents relate to gas-insulated switchgear
(GIS) assemblies.

In this action the ‘772 Patent and the ‘781 Patent were
declared invalid. No infringement of the ‘772 Patent occurred since an
essential feature of the ‘772 Patent was not included by Hyundai in their
design. Equally no infringement of the ‘781 Patent occurred since the allegedly
infringing component lacked utility for the patented purpose.

The Patents

Claim 1 of the ‘772 Patent is for

    A gas-insulated medium-voltage switchgear assembly comprising circuit
breakers, isolators and     ground conductors, wherein a circuit breaker
compartment thereof is dimensioned such that both (i)     the circuit breakers and
(ii) the isolators and ground conductors in an outgoing section, are arranged
    therein.

Claims 2 through 7 of the ‘772 Patent are dependent
claims.

Claim 1 of the ‘781 Patent is for

A gas-insulated switchgear assembly having at least one disconnector
within a housing for the insulating-gas area of the switchgear assembly, and
comprising an inspection window fitted in the housing such that positions of a
movable switch-contact element: can be seen from outside the housing in a
direct line of sight via the inspection window by an unassisted eye; or can be
seen from outside the housing in an indirect line of sight via the inspection
window and at least one mirror by an otherwise unassisted eye.

Claims 2 through 8 of the ‘781 Patent are dependent
claims.

Ownership of the Patents

Hyundai argued that the Plaintiffs lacked sufficient
interest in the Patents to be entitled to prosecute the action or support a
claim to damages. Justice Barnes acknowledges that there may have been irregularities concerning the ownership transfers of
the patents but that the evidence was insufficient to establish that none of
the Plaintiffs had standing. Justice Barnes indicates that Hyundai’s
allegations are dependent on a point of German law that was not satisfactorily
established.

Person of Ordinary Skill

Justice Barnes goes on to reject the opinion of ABB’s
expert that the person of ordinary skill would be different depending on which
of the two patents were being interpreted.

No explanation is provided by [ABB’s expert] to justify the distinction he makes and, in fact, the evidence
establishes that there is no clear demarcation between medium and high voltage
GIS.

Claim Construction

Justice Barnes reiterates the approach to claim
construction from Whirlpool Corp. v Camco Inc. stating

the patentee has an obligation to draft the patent with sufficient
clarity that competitors can know its limits.[27]

The Court notes that the inventors likely misunderstood
the North American grounding requirements[81]. Nevertheless they were included
in Claim 1 of the patent. Since cable grounding was included as an essential
feature ABB cannot subsequently retreat from it.[81]

Obviousness

The patents failed to claim an invention not already
known in prior art and so fails. The specific invention claimed in the ‘781
Patent was known in prior art. Justice Barnes held the same with respect to the
‘772 Patent.

The problem of viewing switch positions in GIS applications had been
solved and the 722[sic] Patent
describes nothing that is inventive. [54]

Dealing with the ‘781 Patent – ABB’s own expert testified
that windows had previously been used to visualize sliding contact switches in
high voltage GIS. Additionally to explain the absence of positioning instructions
in the Patent ABB’s expert testified that routine measurement could be used to
establish the window position and that it was " 'really a matter of geometry' ”.[55]

 With respect to positioning the viewing windows Justice
Barnes states that:

This is the type of trial and error work that any skilled technician is
capable of performing without any inventive skill. [58]

Justice Barnes rejected the ‘772 Patent on the basis that
the invention described a known design solution – enclosing everything within
the GIS capsule. Justice Barnes goes on to state that:

The remaining 6 claims are all dependant on Claim 1 and every one of
them describes a feature that was well-known in the prior art. [72]

The Court points out that you cannot create an invention
by merely adding a number of already known features. [98]

Infringement

The Court held that Hyundai had not infringed the ‘772
Patent or the ‘781 Patent.

Justice Barnes rejected ABB’s assertion that guide pins
protruding from Hyundai’s switch constitutes a topographical position reference
as contemplated by the ‘781 Patent. The Court recognized that they served a
practical mechanical purpose – preventing rotation under movement.

Additionally the viewing windows of Hyundai are not
designed to be accessible and do not permit informative direct viewing. While
the evidence was that the inclusion of the windows was redundant and likely a
design error Justice Barnes notes that "even a design error can give rise to an infringement." [68]

Claim 1 of the ‘772 Patent listed a cable grounding
feature within the GIS assembly as an essential element. The Hyundai GIS
assembly does not include this and so Hyundai’s design does not infringe.

Validity

The Court concludes that adjusting the size and placement
of a GIS capsule to accommodate the placement of components would be obvious to
a person of skill. Placing switch and circuit breaker components into a common
gas compartment was a ‘well-known design expedient’. As well, all of the
dependent claims in the ‘772 Patent were ultimately acknowledged to be known in
prior art.

Positioning a window so that switch position could be
viewed had already been accomplished in high voltage GIS compartments. Its
application in medium voltage compartments was therefore obvious. The ‘781
Patent was determined invalid.