Cascade Corporation v Kinshofer GmbH, 2016 FC 1117
There is a great deal of precision required in patent claim drafting – to the extent that a single word or phrase can mean the difference between infringement and non-infringement.
In this Federal Court (“FC”) decision, Cascade Corporation (“Cascade”) brought a claim that Kinshofer GmbH and Kinshofer Liftall Inc. (collectively, “Kinshofer”) had infringed its patent, Canadian Patent No. 2,587,065 (“the ‘065 Patent”), [7] related to a safety locking device for quick couplers. [1] After analyzing the language of the claims and carrying out a construction thereof, the FC did not find that the patent had been infringed. [5]
Background
The ‘065 Patent discloses technology that is used in the Cascade quick coupler, a type of quick hitch assembly for construction machinery attachments. [7] Cascade manufactures and sells its quick coupler in North America. [8] Kinshofer sells two of its quick couplers in Europe, but only one of them, the one at issue, is sold in North America. [8] Cascade alleged that the Kinshofer quick coupler infringed the ‘065 Patent and began proceedings against Kinshofer claiming damages, injunctive relief and other remedies for infringement or inducement of others to infringe. [9] Kinshofer did not dispute the validity of the ‘065 Patent, but merely argued that the Kinshofer quick coupler did not possess all of the essential elements of any of the claims in the ‘065 Patent. [9]
Issues
The FC adopted Cascade’s identification of four issues for adjudication. [33] These issues were as follows:
- Whether this matter will be heard by way of summary trial;
- Whether Kinshofer infringed claims 1, 2, 5, 6 and 8-13 of the ‘065 Patent;
- Whether Kinshofer induced or procured others to infringe the ‘065 Patent;
- Whether Cascade would be entitled to declaratory relief, injunctive relief, delivery up/destruction, reasonable compensation, damages and/or profits, costs and interest. [33]
Analysis
1. Whether this matter will be heard by way of summary trial
With the exception of inducement (“Issue 3”), the parties agreed that the matter was suitable for summary trial. [36] However, Issue 3 was deemed moot due to the finding of non-infringement, so the entire matter was deemed suitable for summary trial. [37]
2. Whether Kinshofer infringes claims 1,2 5-6 and 8-13 of the Patent
Claim 1 of the ‘065 Patent reads:
A coupler for attaching an implement to an arm of an earth working machine, comprising: an upwardly facing portion adapted to fix the coupler to an end of the arm of the earth working machine; a downwardly facing mounting portion positioned near one end of the coupler, comprising a hydraulic locking mechanism to lock a back pin of the implement in the mounting portion; an outwardly facing hook portion positioned near an opposite end of the coupler, including a safety locking device comprising a locking element biased into a locking position to lock a front pin of the implement into the hook portion of the coupler, the locking element being configured to be moved against the bias into an open position by the front pin as the coupler engages with the front pin, and then to move under the bias back into the locking position once the front pin is fully engaged with the hook portion; wherein the safety locking device of the hook portion is configured to release the front pin by being moved into an unlocked position using a hydraulic circuit which operates independently of the hydraulic locking mechanism of the mounting portion.
The FC cited the principles from Free World Trust v Électro Santé Inc, 2000 SCC 66 in its construction analysis. [38] Of note, when ambiguity arises in a claim term, care must be taken to rely on the disclosure only to the extent necessary to assist in properly understanding the intended claim scope, and not to expand the scope of the claim.
In this case, the ambiguity of the term “hydraulic circuit” warranted recourse to the disclosure to assist in understanding of the meaning of the term. [58] The FC held that in relation to the “hydraulic circuit” the specific structure of the hydraulic circuit was non-essential. [79] However, the FC also held that it was essential that the particular hydraulic componentry must confer independence. [80]
The FC thus found that the claims of the ‘065 Patent were limited to couplers that have independent hydraulic circuits for operating the front pin and back pin locks. The Kinshofer quick coupler, on the other hand, lacked the hydraulic components that would move the front pin safety locking device into an unlocked position independently of the hydraulic components of the back pin locking mechanism. [86] For this reason, the FC did not find the Kinshofer quick coupler to infringe the ‘065 Patent. [86]
3. Whether Kinshofer induced or procured others to infringe the ‘065 Patent
This issue was held to be moot because no infringement was found. [36]
4. Whether Cascade would be entitled to declaratory relief, injunctive relief, delivery up or destruction, reasonable compensation, damages and/or profits, costs and interest
Kinshofer was not found to have infringed the ‘065 Patent [88] and Cascade was not entitled to any of the relief it had claimed. [90]
Commentary
There are a number of takeaways to be gleamed from this decision. First, the decision reinforces the age-old maxim that the precise nature of patent drafting can affect the enforceability of a patent following a rigorous claim construction. The decision also highlights considerations as to when recourse of the disclosure is permissible to construe a claim term. Finally, of great interest is that this case provides an example of an instance where the complexity of the evidence presented at trial may not pose a bar to summary proceedings. Pivotal in the decision to allow the matter to proceed by summary trial was that the damages at issue were less than what a full trial would cost.