The Federal Court (per St-Louis J.) held that the asserted claims of three patents owned by Nordik Blades (collectively, the “Nordik Patents”) are invalid on the basis of obviousness. However, the Court found that the asserted claims are not overbroad and the Nordik Patents are not void under section 53 of the Patent Act. The Court also found that Nordik Blades had not made false and misleading statements contrary to subsection 7(a) of the Trademarks Act.
Valley Blades Ltd. v. Usinage Pro-24 Inc. (Nordik Blades) – Federal Court (fct-cf.gc.ca)
Valley Blades Ltd. (“Valley Blades”) and Nordik Blades are direct competitors in the snowplow parts industry. The Nordik Patents relate to segmented snowplow blades. Valley Blades first commenced an action in 2017 to invalidate one patent. Nordik Blades later commenced an infringement action against Valley Blades in respect of two other patents, with Valley Blades counterclaiming seeking a declaration of patent invalidity.
The Court’s decision in respect of the validity of the Nordik Patents largely turned on the facts.
Obviousness
The Court found that all the asserted claims of the Nordik Patents are obvious and therefore invalid.
The Court noted in its analysis that obviousness is to be determined on a claim-by-claim basis. With respect to each of the asserted claims of the three Nordik Patents, the Court found that there are either no differences between the inventive concept of the claim (corresponding to the essential elements of the claim) and the prior art, or to the extent there are any differences, these differences would have been easily bridged by the skilled person.
Overbreadth
Valley Blades alleged that the tapered shape of patented blades was a key element of the purported invention and that this feature is omitted from the asserted claims. Given that this feature was not claimed, Valley Blades argued that the claims are broader than the invention actually made by the inventors. In support of its contention, Valley Blades relied on admissions that were made on discovery and on a later-filed Nordik Blades PCT Application where the inventors purportedly considered the tapered shape to be a key part of the invention.
However, the Court found that this evidence did not establish that the blades’ tapered shape was an essential element of the invention that had been omitted from the asserted claims. As such, the claims were not invalid for overbreadth.
Section 53 Patent Act Allegations
Valley Blades also argued that Nordik Blades made statements in the patent specifications that inflated the benefits of the invention knowing that these statements were untrue at the time they were made and therefore contrary to section 53 of the Patent Act.
However, the Court stressed that a party raising an allegation under section 53 of the Patent Act has a heavy burden because the allegation is akin to one of fraud. In this case, even assuming Nordik Blades “somehow exaggerated the blade movement, the system’s efficiency, and the blade’s wear-and tear”, the Court held this did not meet the high threshold required to void a patent under section 53 of the Patent Act.
Section 7(a) Trademarks Act Allegations
Lastly, Valley Blades raised issues with two specific acts by Nordik Blades: (1) a letter sent to Valley Blades and the Government of Manitoba before the issuance of the first of the Nordik Patents, and (2) a statement made to third parties after the patent issued. Valley Blades asserted that these statements were false and misleading contrary to subsection 7(a) of the Trademarks Act.
The Court noted that the essential element of this type of allegation are: (1) a false or misleading statement; (2) tending to discredit the business, wares, or services of a competitor; and (3) resulting damage that can be causally linked to the false or misleading statement.
Although the first letter sent prior to the issuance of the patent was found to contain false or misleading statements, the Court held that the evidence did not establish that the letter discredited Valley Blades nor that any damage resulted from the false or misleading statement.
With respect to the second statement that was made after the issuance of the patent, the Court found that the first two elements of a claim under subsection 7(a) are met. The statement was false or misleading and it tended to discredit the product of Valley Blades. However, the evidence did not establish that Valley Blades suffered any damage that were causally connected to the statement.
Nordik Blades has 30 days from the date of Judgment (February 15, 2024) to appeal to the Federal Court of Appeal.