Anticipation by Prior Sale 
Sterling Lumber Company v. Harrison, 2010 FCA 21; and
Sterling Lumber Company v. Harrison, 2010 FCA 22 (Nadon, Evans & Trudel, JJ.A.)

January 20, 2010

Arthur B. Renaud and Christopher D. Heer for the Appellants, Sterling Lumber Company (“Sterling”) and Swamp Mats Inc.
Kenneth D. Hanna and Mala Joshi for the Respondents, Ronald Harrison and Carolina Mat Co. Inc.

Sterling Lumber Company appealed an Order of Justice Campbell who dismissed its motion for summary judgment.  There was also an appeal by Swamp Mats Inc. against an identical Order with respect to the same Respondents.  The appeals were heard together and the same reasons were given for both matters.

The motion arises from a patent infringement action started by the Respondents who alleged infringement of Canadian Patent No. 2,462,302 (the “302 Patent”) which relates to bolted three ply temporary wooden road mat.  Sterling’s motion alleges that the 302 Patent is invalid on several grounds, including anticipation based on a sale of the mats by Mr. Harrison, the inventor and owner of the patent, more than one year before the filing date of the 302 Patent, March 29, 2004.

The motion’s Judge dismissed the motion on the ground that the construction of claim 14 of the 302 Patent was a serious issue for trial and he was unable to make the critical factual finding of the meaning of the words, “an array of vertically aligned intersecting surfaces” from the perspective of a person skilled in the art.

The basis of Sterling’s appeal is that Mr. Harrison admitted in cross-examination on an affidavit that he had put in stock and sold some of the mats described in claim 14 before 2003, and that a purchaser could have made a mat simply by examining it.

The Court of Appeal found that Mr. Harrison’s answer on cross-examination was clear: prior to 2003 he had sold manually made wooden road mats as described in claim 14. 

Further, the principle that parties to a motion for summary judgment must put their best foot forward precludes the Respondents from saying that other evidence may be adduced at trial that contradicts Mr. Harrison’s statement against interest and under oath that he had sold the mats in question before 2003.

The Court of Appeal determined that the only issue remaining is whether the prior sales of the mats constituted an “enabling disclosure” of claim 14.  The prior sale of the product will normally make information available as to its contents and method of manufacture: Baker Petrolite Corp. v. Canwell Enviro-Industries Ltd., 2002 FCA 158 at para. 42.  In the absence of evidence to the contrary, any purchaser of a mat would have known how to make it simply by examining it.

In the result, the Federal Court of Appeal found that the Respondents’ case is so doubtful as not to deserve consideration by a trier of fact and for those reasons, the Court of Appeal allowed the appeal.

By: Peter W. Choe, Gowling Lafleur Henderson LLP