Zero Spill Systems (Int’l) Inc. v. Heide, 2015 FCA 115 (Dawson J.A., Stratas J.A., Near J.A.)
May 4, 2015
Christopher J. Kvas, William D. Regan, and Adrian H. Lambert for the Appellants, Zero Spill Systems (Int’l) Inc., Katch Kan Holdings Ltd., Quinn Holtby, and Katch Kan Rentals Ltd.
Bruce Comba for the Respondents, Bill Heide dba Central Alberta Plastic Products, and Rat Plastic Ltd.
Daryl W. Schnurr and Judy Fowler Byrne for the Respondent, 1284897 Alberta Ltd.
This was an appeal by Zero Spill of findings of non-infringement of industrial design registration no. 86,793 and patent no. 2,136,375; non-infringement and invalidity of patent no. 2,258,064; invalidity of patent no. 2,166,265; and the trial division’s failure to address the validity of industrial design registration no. 102,346.
Zero Spill’s action for infringement of the 793 Design was dismissed at trial for failure to establish which portions of the 793 Design are dictated solely by their function. In this appeal, the Court found that the Federal Court erred in law by requiring Zero Spill to lead evidence explaining which features were not dictated solely by function and remitted the issue of infringement to the Federal Court. With respect to the 346 Design, the registration had expired and the issue was now moot.
Zero Spill appealed non-infringement of the 375 Patent based on construction of “telescopic movement”. Zero Spill asserted that at trial, the Court had construed this term with inappropriate reference to the prior art. The Court of Appeal found that as a whole, the construction was appropriately based on the specification and that an isolated phrase which suggested reference to the prior art was not a palpable and overriding error This portion of the appeal was dismissed. 1284897 Alberta Ltd. made submissions that the 375 Patent was invalid, but had not cross-appealed on this point and validity of the 375 Patent was not properly before the Court.
Zero Spill appealed invalidity and non-infringement of the 064 Patent based on failure of the Court to construe some of the claims at issue and for ruling on obviousness of individual claim elements rather than the claimed invention as a whole. The Court found that the claims which were construed were construed correctly and that there was no infringement. However, the Court also found that the Federal Court’s failure to construe all claims of the 064 Patent was a reviewable error. In addition, the Federal Court failed to consider enablement when ruling on anticipation and had ruled on obviousness based on individual elements separately from the claimed combination. Based on these reviewable errors, the findings of invalidity of the 064 Patent were remitted.
Zero Spill appealed the Federal Court’s finding that the 265 Patent as whole was invalid for obviousness and argued that the 265 Patent must be construed, and inventiveness assessed, on a claim-by-claim basis. The Court agreed and remitted this issue to the Federal Court with reference to the reasons relating to the 064 Patent.
Zero Spill was awarded 70% costs based on mixed success.
By: David Wood, Borden Ladner Gervais LLP