Appeals Dismissed in Switchgear Assembly Patent Matter (Patent Invalid and Not Infringed)

  • August 18, 2015

ABB Technology AG, ABB Inc. v. Hyundai Heavy Industries Co. Ltd., 2015 FCA 181 (Stratas J.A., Webb J.A., Near J.A.)

August 18 2015

Chris Van Barr, Michael Chrichton and Kiernan A. Murphy of Gowlings Lafleur Henderson LLP for the Appellants ABB Technology AG, ABB Inc. and ABB AG
Alan Aucoin, Anthony Prenol and Sarah O’Grady of Blake, Cassels & Graydon LLP for the Respondents Hyundai Heavy Industries Co., Ltd.

The Appellant ABB Technology AG, and two related corporations (“ABB”) appealed from two judgments of the Federal Court finding no infringement and invalidity of ABB’s ‘781 and ‘772 Patents (Canadian Patents No. 2,567,781 and 2,570,772) for gas-insulated switchgear assemblies used in electrical power transmission. A switchgear assembly allows for the safe transmission of electricity from the supply side to the load side. The ‘772 Patent was in respect of a specific dimensioning the switchgear, while the ‘781 Patent provided for the determination of whether the circuit breaker in the switchgear was activated or not by the use of a window and colour-coding components.

Costs were awarded at trial in the amount of $350,000.

The standard of review of patent claims was noted, in practice, to be palpable and overriding error when the trial Court’s assessment of the claims was done through the use of expert testimony, although the current state of the law was to review on a basis of correctness. The standard of review for both obviousness and infringement was held to be palpable and overriding error.

Claim 1 of the ‘781 Patent used the term “moveable switch contact element” that the Court found covered both the potentially new application for “sliding contact switches” and the old application for “knife blade switches”, in particular given the reference to knife switches in the disclosure. Windows and colour coding being generally known in the prior art, the patent claims were held to be obvious. Given the finding of obviousness, the Court of Appeal declined to decide on the infringement issue for the ‘781 Patent.

For the ‘772 Patent, the Court held that first claim included as an essential element the requirement for a cable grounding feature. Since this feature was specifically mentioned in Claim 1 (the independent claim), it was held to be essential and not an optional feature that was inessential. Based on this, the prior art (including a 2002 USA patent application) showed that the combination claimed was known in the prior art. The Hyundai assemblies did not incorporate the cable grounding feature, and thus did not infringe.

The standard of review for a costs award was held to be palpable and overriding error, it being a discretionary decision of the Federal Court, in accordance with the FCA’s decision in Imperial Manufacturing (2015 FCA 100). The Federal Court’s decision to deviate from the Tariff was held to be justifiable due to the complexity of the matter and the offer to settle prior to the trial.

By: Ken Clark, Aird & Berlis LLP