April 2, 2019
By Matthew Graff
In a recent lengthy decision in Camso Inc. v. Soucy International Inc. 2019 FC 255, a patent infringement action came up empty after it was concluded that all of the claims asserted by the plaintiff are invalid.
The technology at issue relates to track assemblies for All-Terrain Vehicles (ATVs). These are essentially aftermarket systems that convert a regular ATV with wheels into one with tracks to improve operation on snow and other unstable or uneven surfaces. The plaintiff (Camso Inc.) and the defendants (Soucy International Inc. and Kimpex Inc.) are direct competitors. Camso alleged infringement of a family of three Canadian patents.
Unusual for a case involving mechanical subject matter, a large number of claims was asserted. Each of the three patents has over 100 issued claims (including multiple dependent claims), and most were alleged to be infringed by the defendants. The Court was tasked with considering about 250 claims in total. Despite the large list of claims, there is substantial overlap in the claimed subject matter, with many of the claims having identical or similar features. This allowed the claims to be grouped to simplify the Court’s analysis.
The defendants argued that the claims in issue are invalid, citing several grounds of invalidity, including anticipation and obviousness in view of relevant prior art. The Court reviewed the available prior art and considered the common general knowledge at the relevant time periods. In addition to patent publications, key prior art included prior sales of track conversion kits by other parties, and based on the evidence, these prior art systems were accepted as being well-known products in the field. The Court concluded that the track structures recited in the asserted claims were either not new, or they lacked inventiveness in view of the prior art.
The discussion of the relevant prior art gives the impression that the playing field for this technology was relatively small, with players that were well known to each other, and with commercial relationships between many of the parties. It seems that Camso was in a good position to know the prior art, at least the track conversion kits that were sold before the patent applications were filed. Despite this, and the large number of claims, none of the claims passed muster.
This case serves as a reminder that it can be insufficient to rely on patent searches when considering the patentability of an invention. Prior sales, whether by the applicant or a competitor, can be critical and should be assessed to ensure that new and inventive features are clearly expressed in the claims. For this reason, effective claiming often requires in-depth knowledge of the particular industry and good communication between the applicant and their counsel.
Camso is appealing the decision.
Content shared on Bereskin & Parr’s website is for information purposes only. It should not be taken as legal or professional advice. To obtain such advice, please contact a Bereskin & Parr LLP professional. We will be pleased to help you.