A slippery defendant: WhiteWater’s slides constructed outside Canada held to be non-infringing
Background
ProSlide and WhiteWater are the two largest water slide companies in the world.
ProSlide claimed that three of WhiteWater’s water slide products (the “AquaSphere”, the “Orbiter”, and the “Tailspin”) infringed four of ProSlide’s patents: Canadian Patent No. 2,778,601; Canadian Patent No. 2,951,552; Canadian Patent No. 3,063,073; and Canadian Patent No. 3,085,150.
WhiteWater denied infringement and counterclaimed that the asserted claims of the four patents were invalid.
Infringement
The parties agreed that none of the products at issue were manufactured, assembled, or used in Canada, with the exception of components of the AquaSpheres, which were made in Canada but were then shipped abroad for assembly and use.
The Court noted that, for liability to arise, “[t]he making, constructing, using, or selling must occur within Canada”.
Nevertheless, ProSlide argued that WhiteWater’s activities attracted liability because they had a “real and substantial connection to Canada”. Specifically, ProSlide alleged that WhiteWater: “(1) creates pre-contract conceptual designs to promote its products, (2) generates detailed computer-aided designs and mechanical specification drawings in Canada for each product it sells, (3) provides these designs and drawings to subcontractors, who then manufacture the impugned articles’ components outside of Canada, (4) inspects and audits the moulds and parts created by the subcontractors, (5) sends instructions for the assembly, and (6) supervises installation, among other things.”
Relying on the Federal Court of Appeal decision in Steelhead LNG (ASLNG) Ltd. v. Arc Resources Ltd., the Court rejected ProSlide’s argument.
The principles in Steelhead define what constitutes “use”: when a patent claims a physical object, “the patentee’s exclusive rights under section 42 of the Patent Act to ‘use’ the invention extend only to that object. They do not also include the use of conceptual designs or drawings of that object”.
The Court extended the reasoning in Steelhead to what constitutes “making”. Preparing detailed designs and drawings in Canada did not constitute “making” the claimed invention.
The Court found that the AquaSpheres did not embody the essential elements of the asserted claims of the 601 Patent, with the exception of Claim 20.
Invalidity
601 Patent
The Court found that all asserted claims of the 601 Patent were invalid as lacking utility and that Claim 20 was also anticipated and obvious.
Utility
For the water slide feature of the 601 Patent to have a scintilla of utility, it must be “demonstrated or soundly predicted that a rider would enter, traverse, and exit the feature.”
The scintilla of utility was not demonstrated because the claimed features of the 601 Patent were not built, nor were they modelled in a way that would “allow for ‘strongly suggestive’ results for which ‘no other logical explanation is likely’.”
The scintilla of utility was not soundly predicted because, although the inventor may have soundly predicted the ride path, the inventor could not have inferred that a rider would be able to enter and exit the feature.
Anticipation and obviousness
Claim 20 claimed:
A water slide feature comprising a spherical sliding surface adapted to carry one or more riders and/or ride vehicles sliding thereon from an entry to an exit, the entry sized and positioned to direct the one or more riders and/or ride vehicles along the sliding surface to the exit; wherein the sliding surface is a shape approximating one-half of a sphere.
The Court found all elements of Claim 20 were anticipated by the United Kingdom Patent No. 2,224,948. Claim 20 was also part of the state of the art disclosed in the UK 948 Patent and, therefore, obvious.
552 Patent, 073 Patent, and 150 Patent
The Court found that the asserted claims of the 552 Patent, the 073 Patent, and the 150 Patent were invalid as being overbroad. The 073 Patent and 150 Patent were divisional patents of the 552 Patents, and the Court referred to them collectively as the “552 Patent Family”.
All asserted claims of the 552 Patent, the 073 Patent, and the 150 Patent lacked one or more of what the skilled person would consider the key aspects of the inventions contemplated or made in relation to the 552 Patent Family. The asserted claims were therefore overbroad.
Conclusion
The Court invalidated all asserted claims of the 601 Patent, the 552 Patent, the 073 Patent, and the 150 Patent.
A copy of the decision can be found here.