Improver Questions Need No Improvement

Published July 18th, 2012

Hollick Solar Systems Limited and Conserval Engineering Inc. v. Matrix Energy Inc. 2012 FCA 174 (Blais, Létourneau, Pelletier) aff’g 2011 FC 1213 (Scott)

Summary – The Federal Court of Appeal (“FCA”) recently dismissed an appeal by Hollick Solar Systems Limited and Conserval Engineering Inc. (“Hollick”) alleging infringement of their Canadian Patent No. 1,326,619 (“the ‘619 Patent”) by Matrix Energy Inc. (“Matrix”).  The FCA found no error in the finding of the Federal Court (“FC”) that a variant that has a material effect upon the way in which an invention works is outside the scope of a patent’s claims.

Analysis – Matrix sells a solar air heating system that is the same as Hollick’s system except instead of having an inlet at the top of the air collection space, as embodied in claims 1 and 10 of the ‘619 Patent, the inlet in Matrix’s system is located at or near the bottom of the air collection space.  Following the construction principles set forth in Free World Trust v. Électro Santé Inc. (2000 SCC 66, [2000] 2 SCR 1024, paras. [55-56]), the FC considered whether the location of the inlet at the top of the air collection space was an essential element.  In answering this question of essentiality, the FC considered the “Improver Questions” from Improver v. Remington (Consumer Products Ltd) ([1990] FSR 181), which are as follows:

(i) Does the variant have a material effect upon the way the invention works?  If yes the variant is outside the claim.  If no:
(ii) Would this (i.e., that the variant has no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art?  If no, the variant is outside the claim.  If yes:
(iii) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention?  If yes, the variant is outside the claim.

The FC, preferring the testimony of Matrix’s expert to that of Hollick’s, determined that, in response to the first Improver question, altering the location of the inlet has a material effect on the way the invention described in claims 1 and 10 of the ‘619 Patent works.  As such, the location of the inlet at the top of the air collection space was essential, and therefore, Matrix’s system did not infringe.  In response to the statements of Hollick’s expert regarding reduced efficiency of Matrix’s system and the placement of the inlet at the bottom to avoid the claims of the patent, the FC stated that “The criteria is not whether the variant improves the performance of the invention but rather does it have a significant effect on how the device functions, be it positive or negative” (2011 FC 1213, para. [59]).

The FCA found no error in the findings of the FC.

Practice Point – The decision of the FC is one of the very few decisions to apply the three-part Improver test.  The FCA’s acceptance of the FC’s approach is a good reminder to Applicants that the wording of the claims is of utmost importance and defines the scope of the protection that will be granted by their patents.  If variants in design are available, even if they do not function as well as the preferred embodiment, it is a best practice for Applicants to claim them.  However, in so doing, Applicants must consider the requirements of patentability, including novelty, inventiveness, support and utility and the effect of claiming such variants on the subsequent validity of the granted patent.

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