[2015] 4 F.C.R. D-1
Industrial Design
Appeal from Federal Court (F.C.) decision (2013 FC 616) dismissing appellants’ action against respondents for patent infringement—Zero Spill Systems (Int’l) Inc. (appellant) non-exclusive licensee of Canadian Patent Nos. 2136375 ('375 patent), 2258064 ('064 patent), Canadian Industrial Design No. 86793 ('793 design) covering fluid containment apparatuses for use in oil field operations—Respondents making, selling “CAPP trays” to capture leaks, spills during oil field operations—F.C. noting similarities between '793 design, CAPP trays; finding however that appellant failing to identify features of '793 design protected under Industrial Design Act, R.S.C., 1985, c. I-19 (Act), s. 5.1(a)—Appellant submitting having no such burden, only those features whose form dictated solely by their function excluded from protection under s. 5.1(a), rather than all features that may have coincident function—F.C. erring in law when it required appellant to lead evidence explaining which features of '793 design complied with s. 5.1(a)—F.C.’s finding that all functional features of industrial design unprotectable by virtue of s. 5.1(a) even though those features also appealing to eye running counter to both ordinary meaning of s. 5.1(a), purpose of Act—Plain text of s. 5.1(a) and purpose underlying Act confirming functional features of designs may be protected under Act—Only those features whose form dictated solely by function not protected—F.C.’s construction of '375 patent claims correct, patent not infringed—F.C.’s finding '064 patent invalid could not stand—F.C. not construing completely claims thereof—As a result, not possible for F.C. to properly assess issues of anticipation, obviousness—F.C.’s finding '265 patent entirely invalid because obvious also could not stand—F.C. adopting same approach as for '064 patent—That approach found to be in error—F.C. required to construe or determine inventive concept of each claim at issue, assess combinations of various elements claimed to determine whether they were inventive—Appeal allowed in part.
Zero Spill Systems (Int’l) Inc. v. Heide (A-293-13, 2015 FCA 115, Stratas J.A., judgment dated May 4, 2015, 34 pp.)