Date: 20160916  
Docket: T-1353-13  
Citation: 2016 FC 1047  
Ottawa, Ontario, September 16, 2016  
PRESENT: The Honourable Mr. Justice Roy  
BETWEEN:  
ARCTIC CAT INC. AND  
ARTIC CAT SALES, INC.  
Plaintiffs/Defendants  
by counterclaim  
and  
BOMBARDIER RECREATIONAL  
PRODUCTS INC.  
Defendant/Plaintiff  
by counterclaim  
PUBLIC JUDGMENT AND REASONS  
(Confidential Judgment and Reasons issued September 16, 2016)  
Page: 2  
TABLE OF CONTENTS  
I.  
THE PARTIES.................................................................................................................... 6  
TWO-STROKE ENGINE OPERATION........................................................................... 7  
THE 738 PATENT ........................................................................................................... 10  
A. An overview / Disclosure........................................................................................ 10  
II.  
III.  
B.  
The claims at issue................................................................................................... 17  
IV.  
V.  
FOREIGN LITIGATION ................................................................................................. 19  
THE WITNESSES............................................................................................................ 20  
A. Brad Darling............................................................................................................ 21  
B.  
Troy Halvorson........................................................................................................ 22  
C. Greg Spaulding........................................................................................................ 28  
D. Bernard Guy ............................................................................................................ 35  
E.  
F.  
Steward Strickland................................................................................................... 37  
Bruno Schuehmacher............................................................................................... 41  
G. The Experts.............................................................................................................. 47  
CREDIBILITY OF EXPERTS......................................................................................... 48  
VI.  
VII. PERSON OF SKILL IN THE ART.................................................................................. 58  
VIII. CLAIMS CONSTRUCTION............................................................................................ 71  
A. “Ignition Pattern”..................................................................................................... 72  
B.  
Controlling the activation of the ignition source according to an ignition pattern in  
which an ignition point during the compressing movement varies with operation speed of  
the engine [and throttle position]. (claims 33(28), 47(41) and 16)................................... 77  
A controller for activating the ignition source ..., the controller activating the  
ignition source according to an ignition pattern in which an ignition point during the  
compressing movement varies with the operation speed of the engine [and throttle  
position]. (claims 40(34) and 11)...................................................................................... 77  
C. The ignition pattern being selected from a plurality of different ignition patterns. 80  
Page: 3  
D. The particular ignition pattern used by the controller being selected based upon the  
sensed exhaust gas temperature. ....................................................................................... 81  
E.  
The different ignition patterns having different relationships between ignition point  
and engine speed. .............................................................................................................. 82  
F.  
The ignition pattern being selected from a plurality of different basic ignition  
patterns. (Claims 11 and 16) ............................................................................................. 85  
G. The basic ignition pattern used by the controller being modified based upon the  
sensed exhaust gas temperature. (Claims 11 and 16)........................................................ 87  
IX.  
INFRINGEMENT............................................................................................................. 91  
A. The 440 HO and 600 RS engines ............................................................................ 96  
B.  
The 600 ETEC and 800 ETEC Engines .................................................................. 97  
C. Analysis ................................................................................................................... 99  
INVALIDITY ................................................................................................................. 106  
A. Anticipation........................................................................................................... 110  
X.  
B.  
Obviousness........................................................................................................... 114  
XI.  
OVERBREADTH........................................................................................................... 137  
XII. INVENTOR .................................................................................................................... 146  
XIII. CONCLUSION............................................................................................................... 159  
XIV. DAMAGES..................................................................................................................... 160  
A. Mr. A. Carter for the Plaintiffs.............................................................................. 164  
(1) The expert compared two engines produced by BRP. One engine, the 800 P-  
TEC does not practice the invention. That engine was compared to the 800 E-TEC  
which practices the invention. That engine is a direct injection engine which does  
not use a carburetor................................................................................................ 166  
(2) The second method put forth by Mr. Carter was, in fact, a variation on the  
theme summarized under (1). This time, instead of multiplying the contribution  
margins derived from the difference from the contribution margin for the E-TEC  
snowmobile and for the P-TEC snowmobile, amounts that reach $[REDACTED] in  
2012 and $[REDACTED] in 2014, the expert multiplied these figures by a market  
share of 20%, which would represent the patent holders’ market share. He arrives at  
figures of $[REDACTED] (20% of $[REDACTED]) and $[REDACTED] (20% of  
$[REDACTED]).................................................................................................... 169  
Page: 4  
(3) Mr. Carter compared the additional profit that BRP was expecting for its new  
600 E-TEC engine as it was comparing it to its “600” semi-direct injection engine.  
The expert indicates that BRP was projecting an increased retail price attributable  
to the direct-injection engine of $[REDACTED]/unit. Given that BRP in 2002  
expected that some additional costs for the production for the E-TEC engine would  
be $[REDACTED], Mr. Carter projected an incremental profit of between  
$[REDACTED] and $[REDACTED] that would be associated with moving to the  
E-TEC technology, which included the invention................................................. 170  
(4) The preferred method offered by the expert is his comparison of AC  
snowmobiles using model year 2005, where the engine does not include the  
invention, and model year 2006, where the said invention is included................. 172  
B.  
Dr. Ugone for the Defendant................................................................................. 179  
(1) Incremental cost-based apportionment ........................................................ 180  
(2) Relative cost and inputs-based apportionment............................................. 183  
(3) Accused functionality usage-based apportionment...................................... 187  
XV. OBJECTIONS................................................................................................................. 198  
A. Objections to admissibility of evidence ................................................................ 200  
(1) Lack of factual basis..................................................................................... 200  
B.  
Case splitting ......................................................................................................... 203  
C. Failure to comply with Expert Code of Conduct................................................... 209  
D. Improper factual evidence ..................................................................................... 212  
E.  
Opinion beyond stipulated expertise ..................................................................... 213  
XVI. POST SCRIPTUM.......................................................................................................... 214  
JUDGMENT............................................................................................................................... 216  
ANNEX “A............................................................................................................................... 218  
ANNEX “B” ............................................................................................................................... 230  
Page: 5  
PUBLIC JUDGMENT AND REASONS  
[1]  
This action for infringement (section 54 of the Patent Act, RSC, 1985, c. P-4, hereinafter  
Patent Act) is concerned with some claims found in Canadian Patent No 2,322,738, to which we  
refer as the 738 Patent. In essence, Arctic Cat Inc. and Arctic Cat Sales Inc. allege that four  
engines, used by Bombardier Recreational Products Inc. (BRP) in more than 125 000  
snowmobiles sold in Canada in the last few years, infringe one or more of five asserted claims (3  
of the five asserted claims are dependent on another independent claim such that there are in fact  
eight claims in play in this case). The Defendant argues that it does not practice the Patent-in-  
suit. Even if it did, it would argue that the 738 Patent would have to be invalid for anticipation  
(lack of novelty) or obviousness (lack of inventiveness), is overbroad and the person presented as  
the inventor is not, such that the Plaintiffs as the assignees do not have the standing required to  
enforce the Patent. As for appropriate damages if a valid claim has been infringed, the parties  
remain at a considerable distance from one another. The trial took place over a period of 25 days.  
[2]  
This action for infringement of a patent originated as a counterclaim to an action for  
infringement launched by BRP against AC with respect to patents held by BRP that have a  
different subject-matter, one which is not concerned with engines. The Patent bears the title  
Two-cycle Engine with temperature-Controlled Ignition Timing. By order dated July 25, 2013,  
Prothonotary Aronovitch determined that the whole matter be severed from the original action  
and that it be pursued separately. As a result, AC became the Plaintiff in the action for  
infringement, and BRP became the Defendant in that action and counterclaimed that the asserted  
claims of the 738 Patent were, at any rate, invalid and void.  
Page: 6  
[3]  
Over and above the damages sustained by the patentee which would come from a  
declaration that its valid patent has been infringed, the Plaintiffs seek a permanent and  
interlocutory injunction restraining BRP from infringing the asserted claims of the 738 Patent,  
together with an order for the destruction of all vehicles that infringe its Patent. Exemplary,  
aggravated and punitive damages, with pre and post judgment interests are also sought.  
I.  
The parties  
[4]  
One Plaintiff, Arctic Cat Inc., is a recreational vehicle manufacturer founded in the early  
1960s by Edgar Hetteen, who has been described as the grandfather of the snowmobile industry.  
Arctic Cat Inc. currently produces snowmobiles and other recreational vehicles destined for the  
United States, Canada, and markets around the world.  
[5]  
The other Plaintiff, Arctic Cat Sales, Inc., is a wholly owned subsidiary of Arctic Cat,  
Inc. that is responsible for the sale of Arctic Cat snowmobiles to independent third-party dealers  
in Canada. Both Arctic Cat, Inc. and Arctic Cat Sales, Inc. (collectively, Arctic Cat or AC) are  
incorporated pursuant to the laws of the U.S. State of Minnesota and have a head office located  
at 601 Brooks Avenue South in Thief River Falls, Minnesota. Both are also Defendants by  
counterclaim in view of the allegations of invalidity made by the Defendant.  
[6]  
The Defendant and Plaintiff by counterclaim, Bombardier Recreational Products Inc.  
(BRP), is a public company incorporated pursuant to the Canada Business Corporations Act,  
RSC 1985, c C-44. Like Arctic Cat, BRP is a recreational vehicle manufacturer. It traces its  
 
Page: 7  
lineage back to the 1940s with the first autoneigedesigned by Joseph Armand Bombardier, as  
well as the Ski-Doo mark snowmobiles that began production in the 1960s. Bombardier acquired  
Lohnwerke GMbH, which manufactures Rotax engines, in 1970.  
[7]  
BRP now employs people in approximately 20 different countries and sells six different  
lines of products, including Ski-Doo snowmobiles, in the United States, Canada, and elsewhere  
in the world. BRP’s head office is located at 726 rue Saint-Joseph in Valcourt, Québec.  
II.  
Two-stroke engine operation  
[8]  
Before tackling the 738 Patent, a brief description of the operation of the two-stroke  
engine could prove to be useful. Evidence to that effect was led at trial.  
[9]  
In his testimony, Dr. Checkel, the expert retained by AC, elaborated at length on the  
general operation of two-stroke engines, so named because they complete five basic processes  
(specifically intake, compression, combustion, expansion and exhaust) in two strokes (one up,  
one down) of the reciprocating piston typically found inside an engine cylinder. A four-stroke  
engine, by contrast, requires four reciprocating piston strokes to complete these same five basic  
engine processes.  
[10] In both cases, the piston is typically attached to a connecting rod and crank shaft, the  
latter of which is in turn attached to an engine flywheel used to deliver output power from the  
engine. This is normally paired with a cylinder head that closes off the top of the engine, forming  
 
Page: 8  
a chamber between it and the piston inside the cylinder. The objective is to ignite the mixture of  
air and fuel compressed into that chamber while the piston is close to its highest point in the  
cylinder (commonly called top-dead-centreor TDC). The mixture then burns as the piston  
passes through the TDC position and begins to move downwards, increasing the pressure and  
imparting more energy into the downward-moving piston than was required for the upward-  
moving piston to compress that mixture before combustion. The net energy gain is then delivered  
to the vehicle through the flywheel.  
[11] The ability of two-stroke engines to provide energy output in this manner on each engine  
cycle allows for the engine to be lighter and more compact than four-stroke engines for a given  
power level. They have thus proven popular for small vehicles like motorcycles, all-terrain  
vehicles and snowmobiles. However, two-stroke engines must also accomplish the five processes  
listed above in only two piston strokes, rather than the four afforded to four-stroke engines.  
[12] On small vehicles like snowmobiles, the engines typically accomplish this task through  
the combination of cylinder ports rather than valves for the intake and exhaust processes, pre-  
compression in the crank shaft case, and an exhaust expansion chamber. These extra features  
allow the engine to accomplish both the intake and compression processes as the piston moves  
up towards the cylinder head on the first stroke. After the combustion process occurs as the  
piston passes the TDC position, the engine accomplishes the remaining expansion and exhaust  
processes as the piston moves down towards its lowest point in the cylinder (bottom dead centre  
or BDC) on the second stroke.  
Page: 9  
[13] While the piston is at the BDC position, the intake ports in the upper part of the cylinder  
are exposed, and the mixture of air and fuel from the crank shaft case is forced through the ports  
in the cylinder wall. This pushes out remaining combustion products through the exhaust ports  
and into an expansion chamber that forms part of the engine's exhaust system. That chamber, if  
sized (or tuned) correctly, creates an exhaust pressure wave at the right instant to prevent the  
new mixture of air and fuel from being forced out of the chamber alongside these remnants  
before the exhaust ports close as the piston moves back up the cylinder. Proper tuning varies  
with current conditions, including engine speed and the temperature inside the chamber itself.  
When done correctly, however, this process provides an important power boost to the engine.  
[14] Traditionally, engines have used carburetors to manage the mixture of air and fuel at the  
engine intake. As explained by Dr. Bower, the mechanical engineer expert retained by BRP, a  
carburetor is a mechanical fuel admission device that does not rely on a controller or electronic  
input. These devices have been progressively replaced with direct fuel injection technology,  
which injects fuel directly into the chamber above the piston at the start of compression rather  
than drawing it into the cylinder along with the air.  
[15] Dr. Checkel explained that the amount of power a two-stroke engine produces is typically  
controlled using a valve (the throttle), which is used to restrict the air flowing into the engine  
during intake. Knowing how hard the engine is working compared with its maximum capability  
(engine load) is useful for engine control purposes.  
Page: 10  
[16] The precise timing of the ignition in each engine cycle would be instrumental for engine  
power, efficiency, durability and controlling exhaust emissions in both two-stroke and four-  
stroke engines. If combustion occurs too late in the cycle, the engine produces lower output  
power, more waste heat, and is generally less efficient. If it occurs too early in the cycle, the  
engine is doing more work to complete the compression process, similarly reducing engine  
power output and efficiency, and increasing undesirable exhaust emissions.  
III.  
A.  
The 738 Patent  
An overview / Disclosure  
[17] Before considering more closely the 738 Patent, some basic information about the Patent  
should be stated:  
The inventor is Greg L. Spaulding, an employee of AC, and he testified at trial.  
The Patent was open to public inspection on May 25, 2001.  
The Patent was issued on February 18, 2003, having been filed on October 10,  
2000.  
The Patent signals as priorities December 1, 1999 for U.S. Patent 09/452,657 and  
May 10, 2000 for U.S. Patent 09/568,449.  
[18] Originally, AC was asserting a large number of the 47 claims found in the Patent-in-suit.  
However, by the time the matter came for trial, the number of claims asserted had been reduced  
to 5.  
   
Page: 11  
[19] The title given to the Patent is not particularly illuminating: Two-cycle Engine with  
exhaust temperature-controlled Ignition Timing. The abstract of the Patent states:  
A two-cycle internal combustion engine has an ignition timing that  
varies with engine speed. A plurality of ignition patterns (the  
relationship between ignition timing and engine speed) are used.  
The engine exhaust gas temperature is sensed and is used to  
determine the particular engine pattern used at a particular time.  
[20] Evidently, this invention is concerned with engines and, more specifically, the two-cycle,  
or two-stroke, internal combustion engine. In the two-stroke engine, it is possible to vary the  
point at which the fuel-air mixture is ignited within the cylinder in which the piston is operating,  
such that the optimization of the engine operation will be provided. The invention under  
consideration would allow for the selection of different ignition patternsbased on the exhaust  
gas temperature. There are two ways of using the exhaust gas temperature according to the  
Patent. Three of the five asserted claims are dealing with the selection of ignition patterns based  
on the exhaust gas temperature. They will be referred to collectively as the selection claims.  
There are also two claims that refer to the selection of the ignition pattern from a plurality of  
basic ignition patterns, the basic ignition pattern selected being modified based on the sensed  
exhaust gas temperature. They will be known as the modifications claims. The background of  
the invention provides some information and it reads:  
Background of the Invention  
The present invention is directed to a two-cycle internal  
combustion engine and the operation of such an engine. Such  
engines are used, for example, to drive various vehicles such as  
snowmobiles, motorcycles, personal watercraft and others.  
The operation of such engines is based on the ignition of a  
compressed fuel-air mixture within a cylinder, with the resulting  
expansion of the ignited mixture driving a reciprocating piston  
Page: 12  
located in the cylinder. The reciprocating movement of the piston  
then is used to drive the vehicle powered by the engine.  
It is desirable to vary the point during the reciprocation cycle  
of the piston at which the fuel-air mixture is ignited, i.e. a point  
between bottom dead centerand ''top dead center, to provide  
optimum operation of the engine. Thus, as one example the  
optimum point of ignition during acceleration can differ from that  
for a normal running operation. Because the piston usually is  
driven by a rotating crank shaft, the ignition point often is  
expressed in terms of degrees of advancement with respect to top  
dead center, in other words the position with respect to degrees of  
rotation of the rotating crank shaft ahead of the top dead center  
position.  
Typically, different engine operating speeds, which usually are  
expressed in revolutions per minute, will be associated with  
different engine conditions. For example, higher engine speeds  
often are associated with acceleration. Thus, it has been considered  
that the point of ignition during the reciprocation cycle of the  
piston should be varied, depending on the engine operating speed  
at the particular time, and engine ignition control systems can be  
programmed to vary the ignition point depending on the engine  
speed.  
Other factors can affect the optimum ignition timing. For  
example, an engine operating shortly after start-up may require a  
different relationship between ignition timing and engine speed  
(hereinafter ignition pattern) than an engine that has been  
operating from some time. Consideration has been given in the  
past to a system that allows the user to switch between two  
different ignition patterns. This has not been completely  
satisfactory in optimizing engine performance.  
[21] Under the title Summary of the Inventionin the disclosure part of the specification, one  
finds the replication of the claims. The only paragraph worth reproducing is the following, at  
page 2 of the 738 Patent:  
Summary of the Invention  
The present invention seeks to provide a two-cycle engine that  
enjoys improved performance by selecting from a plurality of  
relationships between ignition timing and engine speed (ignition  
Page: 13  
patterns) based on exhaust gas temperature. In one aspect of the  
present invention, individual ignition patterns cover ranges of  
exhaust gas temperature of about 50C. The sensitivity of the  
control system increases as the temperature range decreases. In  
another aspect of the present invention the exhaust gas temperature  
is determined by use of a sensor that is in contact with the exhaust  
gas, for example in an exhaust pipe. In a further aspect of the  
invention, a capacitor discharge ignition system is used to control  
the ignition timing of a spark plug. Yet another aspect of the  
invention provides for a default ignition pattern when there is a  
malfunction of the temperature sensor.  
On its face, the invention is centered on various ignition patterns that will be selected based on  
the exhaust gas temperature, or will be modified based on exhaust gas temperature, that will have  
been detected by an appropriate sensor. The ignition patterns are merely the relationships  
between ignition timing and the engine speed, expressed in revolutions per minute (RPMs). For  
different engine speeds there could be different ignition timings. The piston, in a two-stroke  
engine, will move towards the top of the cylinder and, at some point, the air-fuel mixture will be  
ignited, the explosion thus created generating energy that will send the piston back toward the  
bottom of the cylinder. Through the operation of a rotating crankshaft that is activated by the  
piston going to the bottom of the cylinder (bottom dead center), the vehicle moves. The ignition  
patterns are selected according to the Patent with a view to optimize the operation of the engine  
in different conditions. That point is described in terms of the degrees of rotation of the  
crankshaft ahead, or possibly after, the piston has reached the top of the cylinder (top dead  
center).  
[22] Before reaching the claims, the disclosure presents in five tables (A to E) data that are  
each representing an ignition pattern. For a given engine speed (RPMs) there is an angle which is  
the number of degrees before top dead center. The angle may vary with different RPMs. In the  
Page: 14  
ignition patterns depicted in the five tables, there is an angle that corresponds to different RPMs,  
from 1000 to 8800 RPMs. Each of the tables presents an ignition pattern that is a function of a  
range of different exhaust gas temperature. In this particular case, the temperatures are presented  
in ranges, Table A covering a range of 0 to 250 C, and the other tables operating in increments of  
50 C (250 to 300, 300 to 350, 350 to 400) until one reaches 400 and higher. As long as the  
temperature of the exhaust gas remains within a range, it will be that ignition pattern that will  
control. Thus, as the RPMs change, a different ignition point, representing a different angle, will  
be chosen in a particular table.  
[23] I have reproduced Table E from the 738 Patent. This is an example of an ignition pattern.  
The table applies once the temperature of the exhaust gas has reached at least 400 degrees. Other  
ignition patterns are said to apply for different temperature ranges:  
E: Exhaust Temperature 400C or higher  
RPM  
Angle  
8800  
8600  
8400  
8200  
8000  
7750  
7250  
7000  
6500  
6000  
5000  
4000  
3000  
2000  
1000  
0
11.0  
11.0  
11.0  
11.5  
13.0  
15.0  
19.0  
20.0  
22.0  
24.0  
24.0  
20  
10  
10  
8
8
Page: 15  
An ignition point will correspond to the angle, the number of degrees before top dead center at a  
particular RPM. Hence, at 8000 RPMs, the angle will be 13º, which means that the ignition  
source will ignite the mixture air-fuel at 13 degrees before TDC. The angle differs for different  
RPMs for temperature above 400C, as the table shows. Similarly, the angle may be different for  
different exhaust gas temperature ranges. In table A, for temperature lower than 250C, the angle  
before TDC is 10 at 8000 RPMs. Once the exhaust gas temperature leaves a particular range, it is  
a new ignition pattern that kicks in.  
[24] The specification refers to figures found after the claims. Figure 1, reproduced here, is a  
rather rudimentary drawing of a two-cycle engine, where 10 is the engine itself, 12 the cylinder,  
14 the piston, 16 the crankshaft, 18 the ignition source (like a spark plug), 20 the controller for  
the ignition of the ignition source, 22 the coil through which a spark plug could be activated, 24  
the exhaust gas temperature sensor and 26 is the exhaust pipe (at p 3 of the disclosure, it referred  
to exhaust pipe 28; that is manifestly an error).  
Page: 16  
[25] Figures 2 and 3 illustrate examples of the control of the ignition timing. Figures 4 to 8 are  
graphs illustrating different ignition patterns. The graphs do not appear to correspond precisely to  
tables A to E found at pages 7 to 9 of the specification. Nevertheless, each is presented as an  
ignition pattern covering a particular temperature range. Neither the tables nor the figures  
provide information concerning what these patterns are supposed to achieve in order to optimize  
the operation of an engine. There is no information either about the diagnosis that comes from  
sensing the temperature.  
[26] As a matter of first impression, the ignition pattern is at the heart of the invention. Tables  
A to E present numbers that correspond to ignition points for various RPMs once the exhaust gas  
temperature has reached a particular range. When considering figures 4 to 8, they are no more  
than the graphical representation of the ignition patterns. The ignition point is found at the  
Page: 17  
intersections of the speed of the engine and the number of degrees before top dead center for a  
particular exhaust gas temperature range. It is the collection of those points that is represented  
graphically. An ignition pattern is never one point. The pattern is simply the relationship between  
the engine speeds and the degrees of advance before top dead center, the ignition timings, for  
different temperature ranges. Figures 4 to 8 and tables 1 to 5 present in different formats the  
same information: an ignition pattern is composed of various ignition points; there is no pattern  
if there is one ignition point according to the tables and figures 4 to 8. That fundamental concept  
is not altered if is added how open the throttle is in a given case (two of the asserted claims are  
said to be three dimensionalin that the ignition pattern is the relationship of degrees in  
advance of top dead center, engine speed and throttle opening).  
B.  
The claims at issue  
[27] From the 47 claims found in the 738 Patent, AC is now asserting five claims: claims 11  
and 16, the modification claims, as well as claims 33, 40 and 47, the selection claims. Claims  
11 and 16 are related to each other in that claim 11 is the engine claim to claim 16’s method  
claim of the same engine. The same is true of claims 40 and 47. They are in fact the mirror image  
of one another and conclusions reached by the Court regarding the engine would apply altogether  
to the method of operating. While claims 40 and 47, which are written in dependent form from  
claims 34 and 41, are specific to snowmobiles, claims 11 and 16 do not have that specificity.  
They are not limited to snowmobiles. Finally, claim 33 is the dependent claim of method claim”  
claim 28, wherein the engine is a snowmobile engine. Although claims 40 and 47 are three  
dimensional, i.e. the ignition point varies with the speed of the engine and the throttle position, as  
 
Page: 18  
opposed to the ignition point varying only with the engine speed for the other three claims, that  
proved to be largely immaterial. The claims are reproduced in Annex A. The asserted claims,  
together with their independent claims, are highlighted.  
[28] It is not disputed that all the engine claims are with respect to a two-cycle engine  
comprising:  
a cylinder  
a piston  
an ignition source  
a controller  
a sensor.  
Similarly, the method claims all include a method of operating a two-cycle engine comprising:  
Moving a piston in a cylinder  
Activating an ignition source in the cylinder during the compression movement  
Expelling exhaust gas from combustion  
Sensing a temperature of the exhaust gas  
BRP does not contest that its engines on their accused snowmobiles comprise these elements.  
Indeed, BRP does not contest that its engines have all of the elements presented at Figure 1 of  
the 738 Patent (reproduced at para 24 of these reasons). That is not where the debate is situated.  
[29] There are evidently differences between the claims and there are issues with respect to  
the construction of those claims. These will be reviewed later in these reasons. For now, an  
overview will suffice.  
[30] Claims 11 and 16 will be examined together. According to them a plurality of basic  
ignition patternsmust exist; out of that plurality of basic ignition patterns one will be selected  
Page: 19  
and that basic ignition pattern will be modified based on exhaust gas temperature. That is the  
reason why they have been referred to as modification claims. That modified basic ignition  
pattern becomes the ignition pattern. It is according to that ignition pattern that the activation of  
the ignition source by the controller will occur. Claims 11 and 16 are only concerned with the  
relationship of ignition timing and engine speed.  
[31] The other three asserted claims are selection claimsin that it is the selection of the  
ignition pattern out of a plurality of ignition patterns that is effected based on the exhaust gas  
temperature. Claim 33, which is dependent on claim 28, a method claim, is a selection claim.  
However, contrary to selection claims 40(34) and 47(41), the other two selection claims, claim  
33(28) is two-dimensional, as are claims 11 and 16, as the throttle is not featured.  
[32] As pointed out earlier, claims 40(34), 47(41) and 33(28) are all concerned with engines  
that are snowmobile engines. That is not the case for the modification claims 11 and 16.  
IV.  
Foreign litigation  
[33] It has transpired, during the course of the trial, that there has been, and there continues to  
be, litigation in the United States concerning patents that relate to the Patent-in-suit in this case  
between the parties. This came to the attention of the Court through the cross-examination of  
witnesses involved in some manner in the other pieces of litigation.  
 
Page: 20  
[34] Thus, it appears that there is litigation in the Federal Court of Minnesota; however, the  
matter will not be heard for some time as it has not been set for trial. As for the litigation before  
the United States International Trade Commission, it was terminated in May 2015, following the  
withdrawal of the complaint filed by Arctic Cat Inc. in December 2014. As I understand it,  
Arctic Cat Inc. alleged that snowmobiles were imported in the U.S. that infringed certain claims  
of their U.S. patents. The allegation is no more.  
[35] There would have also been some litigation between Polaris, another snowmobile  
manufacturer, and AC more than ten years ago.  
[36] Having said that, I consider that litigation taking place elsewhere has no bearing on the  
case that must be decided in Canada on the basis of Canadian Law and the evidence put forth by  
the parties. At any rate, there is no foreign decision that has been rendered.  
V.  
The witnesses  
[37] The parties relied on a number of witnesses to advance their position at trial. First and  
foremost, they each relied on one expert to discuss and put forth their theory of the case  
concerning the alleged infringement of the Patent and, by counterclaim, the alleged invalidity of  
the claims. The parties also produced experts with respect to the damages claimed in case a valid  
patent had been infringed. Each side had three other witnesses. I will begin with the non-experts  
and the evidence of the experts will be referred to, as needed, when their expertise is required.  
 
Page: 21  
A.  
Brad Darling  
[38] Mr. Darling was AC’s corporate representative. Mr. Darling has been working for Arctic  
Cat since 2000 and is currently the vice-president, general manager of the snowmobile division  
of Arctic Cat Inc., a position he has held since January 2011.  
[39] Mr. Darling explained that Arctic Cat first became aware, and first believed, that BRP  
was infringing the 738 Patent in early 2012, following a review of all of Arctic Cat’s patents by  
its new in-house counsel. This happened shortly after BRP launched its own patent lawsuit  
against Arctic Cat, but Mr. Darling was uncertain if the review of Arctic Cat’s patents was done  
in order to retaliate, as suggested by BRP. Whether the Court’s action was in retaliation or not is  
of no moment as far as this Court is concerned. The only relevant consideration is to establish  
that a valid patent has been infringed or not.  
[40] It appears that AC approached BRP after it formed the opinion that its 738 Patent was  
infringed with a view to conclude a cross-licence arrangement. Obviously, the discussion did not  
produce an agreement.  
[41] Mr. Darling explained the dealer distribution aspect of his position, which involved  
keeping track of competitive dealers and Arctic Cat dealers across Canada. This analysis is  
conducted based on model year, calendar year, and then snowmobile season. The takeaway from  
these surveys is that Arctic Cat is competitive in Canada within the dealer base of the  
competition in the industry (Polaris, Ski-Doo, and Yamaha). Mr. Darling testified that for the  
 
Page: 22  
2016 model year, Arctic Cat will produce 26,000 snowmobiles, down from just over 41,000 in  
2005, before the recession. This corresponds to an industry-wide decline.  
[42] AC relies on racing snowmobiles for marketing its product as well as to assist in research  
and development. The 738 Patent in particular started being used on racing models in the 2000  
model year, and was used in consumer models starting with the 2001 model year. By 2008, the  
738 Patent was being used on all of Arctic Cat’s 600 and 800 two-stroke models. That  
technologywas very well received in the industry, as it gave a remarkable advantage in terms  
of acceleration when starting out of the gate.  
[43] On cross-examination, Mr. Darling explained that he was not aware of the technology  
used for the first time in conjunction with a hot buttonon 1999 model year snowmobiles. He  
also wasn’t aware of previous technology to manually adjust “tuning in the pipe. He confirmed  
that Suzuki had been Arctic Cat’s sole supplier of engines until 2008.  
[44] Is noteworthy that Mr. Darling did not testify concerning how AC is practicing its  
invention. No one did.  
B.  
Troy Halvorson  
[45] Mr. Halvorson has worked for Arctic Cat since 1997. In 2004, he became high  
performance product team manager, where he was responsible for the development of the Firecat  
models, among others. Mr. Halvorson is currently the snowmobile product manager at Arctic  
 
Page: 23  
Cat, a position he has held since April 2015. In that capacity, he helps to guide the product plan,  
which governs the development of new products over a five-year cycle generally.  
[46] As was to become obvious later, the testimony of Mr. Halvorson, based largely on  
written material produced by AC, was offered for the purpose of comparing two snowmobiles  
manufactured by AC with a view to distinguish between model years 2005 and 2006 to lay the  
groundwork for the expert on damages.  
[47] Thus, Mr. Halvorson explained that the F6 Firecat EFI EXT, the F6 Firecat EFI, and the  
F6 Firecat EFI Sno Pro were the available models listed on the specification sheet in model year  
2005. EFIdesignates electronic fuel injection, while EXTdesignates a longer track than the  
F6 Firecat EFI (the base model) or the F6 Firecat EFI Sno Pro. An additional model, the F6  
Firecat EFIR, was also available the Rdesignates that it had a reverse. All models are said to  
have the same engine specifications. He explained that the engines used in the 2006 models are  
the same as in the 2005 ones. However, the 2006 brochure lists an exhaust pipe temperature  
sensor (EPTS), introduced in the F6 for that model year. Another listed difference exists with  
respect to the shocks, with the 2005 using Arctic Cat gas internal floating piston shocks and the  
2006 using Fox gas internal floating piston shocks. As for the 2005 F6 Firecat EFIR, it would  
have had the same specifications as the F6 Firecat EFIR from 2006 had it been listed in the  
brochure for model year 2005. Mr. Halvorson then provided two final differences between the  
2005 and 2006 model years: a change in colour scheme, and Arctic Cat no longer offering the  
EXT model in 2006. Next, Mr. Halvorson explained that Arctic Cat did not list the electric start  
as available optional equipment in 2005, but did in 2006. However, the offering in 2006 did not  
Page: 24  
affect the price Arctic Cat charged its dealers for snowmobiles, as optional equipment was sold  
to customers by the dealers separately from the snowmobiles themselves.  
[48] The witness did not offer any information about how the 2006 model year F6  
snowmobile practiced the invention. In fact, surprisingly, Mr. Halvorson only referred to the  
addition of an exhaust pipe temperature sensor on the later engine.  
[49] On cross-examination, Mr. Halvorson explained that knowledge of Arctic Cat’s models  
of those years was quite limited, as is his knowledge of marketing material he did not develop.  
He confirmed that Arctic Cat purchased its engines for the Firecat models during those years  
from Suzuki. As for the specification sheets on the brochures, they were accurate to a point, as  
specifications could be changed by the time production started and errors could slip in.  
[50] Mr. Halvorson explained that the reference to an exhaust pipe temperature sensor, which  
is to be found on the specification sheet but not in the brochure, could have been connected by a  
knowledgeable reader to breakthrough performance regardless of temperature. It was not  
disputed by the witness that AC was promoting its suspension in 2006.  
[51] It was established before the Court that the witness is a graduate of CalPoly (California  
Polytechnic State University) in what he described as industrial technology. Although he is not  
an engineer, and does not profess to be one, Mr. Halvorson has been employed by AC since  
1997, yet he was incapable to give any explanation about the engine that is supposed to make a  
difference.  
Page: 25  
[52] The Court has no doubt whatsoever about the integrity of this witness: he was honest and  
forthcoming. He readily conceded that his knowledge about the engine was limited. Here are the  
important portions of the cross-examination which are found at pages 2441 to 2445:  
A.  
I don’t hold a mechanical engineering degree.  
Q.  
Right. And you don’t hold an electrical engineering degree  
either?  
A.  
No, I don’t.  
Q.  
Okay. You mentioned the F6 Firecat EFI. EFI stands for  
electronic fuel injection. Correct?  
A.  
Correct.  
Q.  
Yeah. Do you know how electronic fuel injection works,  
generally speaking?  
A.  
Q.  
A.  
Generally speaking, yes, I do.  
So, what is the extent of your knowledge?  
In an older conventional system with carburetors, the fuel  
delivery system is based off of is how the fuel flows into the  
carburetor into the engine. In an electronic fuel injection system,  
it’s injected into the engine through electrical pulses that’s  
supplied by dictated by the computer, the ECU of a snowmobile.  
Q.  
Okay. And to control the electronic fuel injection of an  
ECU, do you know what are the inputs and outputs of that ECU?  
A.  
Q.  
A.  
Q.  
There are a lot of inputs and outputs, yes.  
Would you be able to name them?  
Probably not all of them.  
And would you know how the control of that electronic  
fuel injection works within the controller based on the inputs of the  
sensors and the outputs?  
A.  
Q.  
A.  
I am not knowledgeable about how exactly it works.  
And that’s not your responsibility in any way?  
No, it is not.  
Page: 26  
So you mentioned you are not familiar with how the ECU  
works. Correct? You don’t know the inner functionings of the  
ECU, the logic, the software?  
A.  
Right. I – I don’t – I know how a I mean. I have an idea  
how a computer works. If I had to tell somebody how to build a  
computer, I would struggle.  
Q.  
Yes. And you wouldn’t be able to tell or help someone  
program the ECU of the ECUs used by Arctic Cat?  
A.  
Q.  
A.  
Q.  
A.  
Q.  
A.  
No.  
Back in 2005 or 2006?  
I would not be able to tell them.  
So that EPTS, you don’t know what it does?  
Yes, I know what the EPTS does.  
It’s connected to the ECU?  
I know the electronic or the exhaust pipe temperature  
sensor measures the temperature of the exhaust.  
Q.  
Right. And that signals input into the ECU?  
A.  
It is a sensor that the ECU relies on for that information,  
yes.  
Q.  
But beyond that, you don’t know what the ECU does with  
that and how it accomplishes it?  
A.  
Q.  
Well, I – I don’t know how it does it, no.  
Thank you.  
Back in 2006, the model year 2006, equipped with the  
EPTS, again, that was a Suzuki engine. Correct?  
A.  
Correct.  
Q.  
Equipped with Kokusan ECUs? Does that ring any bells for  
you?  
A.  
Yes.  
Page: 27  
Q.  
So that’s K-O-K-U-S-A-N. And those were delivered with  
the engines. Correct?  
A.  
Q.  
You would have to define delivered with the engine.  
So they were already installed on the engine or ready to be  
installed on the engine. That’s how the engine came?  
A.  
No.  
Q.  
No, they were not. Were they shipped together with the  
engine for a given engine?  
A.  
I have they were part of a packet that would have been  
with the engine, but not directly with the engine.  
Q.  
Right. So Engine A comes with Kokusan ECU A. Engine B  
comes with Kokusan ECU B. Would that be a correct description  
of how it happened?  
A.  
I wouldn’t – I wouldn’t be able to answer that question.  
Q.  
Okay. And you know nothing about the control logic of  
those ECUs, whether that was developed internally at Arctic Cat or  
elsewhere?  
A.  
I don’t.  
[53] As can been seen, there was no evidence coming from Messrs. Darling and Halvorson, in  
spite of their long standing association with AC and, in the case of Mr. Halvorson, his degree in  
industrial technology, about the very engine which it is claimed produced contribution margins  
that were used by an expert in calculating damages. That left to Greg Spaulding, the named  
inventor, to provide the evidence on the invention.  
Page: 28  
C.  
Greg Spaulding  
[54] Mr. Spaulding is currently the group leader for two-stroke engine design and  
development in Arctic Cat’s engineering department. He has been with Arctic Cat since 1994.  
His group designs the components necessary to have an assembled engine, working with Suzuki  
Motor Corporation as the motorist to produce a prototype. His group then completes engine  
development, which includes designing and developing the exhaust pipe. Mr. Spaulding does not  
have an engineering degree, but his experience and expertise in the calibration of engines is not  
to be denied.  
[55] The witness provided to the Court his view of the history of the invention. Mr. Spaulding  
explained that he had originally come up with the idea of optimizing ignition timing around  
1996. It started with his idea of keeping engine RPMs at the starting line below the level where  
the clutch engages while opening up the throttle to get out of the starting line faster when the  
race starts. Mr. Spaulding contacted Suzuki, Arctic Cat’s engine supplier, in order to implement  
this idea. However, the engine control units (ECUs) he received from Suzuki limited RPMs by  
producing fewer sparks. This also lowered the heat output to the exhaust pipe, thus reducing  
rather than improving starting line performance.  
[56] Mr. Spaulding explained that he contacted Suzuki to propose limiting the RPMs by  
retarding engine ignition instead, thus transferring less energy to the piston and more to the  
exhaust pipe to increase temperature. As a result, he received additional systems that retarded  
ignition timing, but also continued to use the counterproductive spark removal method. Mr.  
 
Page: 29  
Spaulding then contacted Suzuki to specifically request the capacity to have ignition take place  
after top-dead-centre. This functionality was incorporated into the 1998 model year 440 ZR  
racer. However, Mr. Spaulding was not yet satisfied with the design, and so he did not  
implement that which would actually allow the driver to use this capability.  
[57] Mr. Spaulding’s next step in the development saw him move away from the RPM limiter  
idea towards a two-map systemselected by a hot/cold switch, with the settings providing an  
optimized power curve for cold and hot exhaust pipe temperatures respectively. Arctic Cat  
implemented this new approach in the 1999 model year 440 ZR racer. Nonetheless, the cold map  
name continued to be called Rev Limit Ignition Timing” in Suzuki’s finalized engine  
specifications delivered to AC, the result of Mr. Spaulding’s desire to avoid “confusingSuzuki.  
[58] Mr. Spaulding then explained that the following developmental step was to make the  
changes between maps automatic. He requested that Suzuki review the ignition timing curves  
that Arctic Cat was using for its hot/cold switch settings. Mr. Spaulding described the cold curve  
as allowing for better acceleration through faster pipe heating, and the hot switch as providing  
better performance and preventing heat sagging” – the loss of performance in two-stroke  
engines that occurs in higher temperatures. Mr. Spaulding asked Suzuki if these curves could be  
selected automatically without a throttle position sensor, but Suzuki did not come up with any  
suggestions.  
[59] The invention is described as using exhaust gas temperature to optimize settings,  
ignition timing on a two-stroke engine. The term optimizerefers, in a circular way, to using  
Page: 30  
exhaust gas temperature to select the optimum ignition timing based on that internal  
temperature(Transcript, p 2616, lines 5-14). Mr. Spaulding did not testify as to how the exhaust  
gas temperature was to be used, and to what effect. From his examination in chief, the Court is  
left with someone who was asking questions of Suzuki, the motorist, which would come back  
with possible solutions. Actually, the documentary evidence offered by AC consists of questions,  
usually sent by fax, to Suzuki. I have not been able to find what contribution to solutions was  
offered by AC, and Mr. Spaulding, towards answering the questions asked.  
[60] Mr. Spaulding claimed that he came up with the idea of using exhaust gas temperature to  
select between the patterns, a method Arctic Cat implemented in the 2000 model year 440 ZR.  
Developmental problems included the fact that the temperature sensor they had selected would  
not function below and above certain temperatures. According to the testimony, Arctic Cat  
worked with Suzuki to develop a software logic that would get around the sensor tolerance  
range. However, no details of the cooperation were supplied.  
[61] Mr. Spaulding explained that he was never specifically concerned with the logic or the  
sensors, only the intended results. His goal was to have the sensor measure temperature to select  
timing patterns that were optimum for that particular temperature(Transcript, p 2677, lines  
9-18). He confirmed that in the case of the 2000 model, optimizereferred to power (Transcript,  
p 2678, lines 12-14). The use of the pipe sensor to select between different ignition timing maps  
in the 2000 model year ZR 440 produced very good racing results with respect to starting line  
acceleration.  
Page: 31  
[62] The first consumer model to use the technologyof selecting ignition patterns based on  
measured exhaust gas temperature for better engine control was the 2001 model year 500 ZR.  
The pipe sensor technologywas not incorporated into models using 600 CC and 700 CC  
engines, including the F6 Firecat, until the 2006 model year because of costing issues with the  
pipe sensor. It remains very much unclear what the witness means by technology. If  
technology is taken to mean the study or use of the mechanical and applied sciences, the  
application of this to practical tests industry(The Canadian Oxford Dictionary, Oxford  
University Press, 2001), the Court is hard pressed to find in the testimony anything resembling  
technology. We are left in the dark concerning how the temperature of the exhaust gas is used to  
adjust the ignition timing through different timing patterns or maps. Similarly, we are left in the  
dark about what benefit was to be obtained, other than speaking in terms of optimization.  
[63] Mr. Spaulding then explained that it was Mr. Ole Tweet, a vice-president at Arctic Cat,  
who suggested that the use of a sensor to select ignition patterns to be patented. Mr. Spaulding  
did not write the text of the Patent. He produced the sketch that became Figure 1 of the 738  
patent by hand. As for Figures 2 and 3, which depict the software logic used in the 2000 model  
year 440 ZR, they came from Suzuki, as well as Figures 4 to 8.  
[64] Finally, Mr. Spaulding explained that Kokusan, another Japanese company, the  
manufacturer of the Engine Control Unit [ECUs] used in Arctic Cat engines, actually wrote the  
control software. Kokusan then supplied the electronic components to Suzuki who then supplied  
the engines, with electrical systems, to Arctic Cat. Mr. Spaulding was quite clear about what he  
considers to be his invention. The development of the invention was around the use of different  
Page: 32  
ignition patterns. He ended up with a system that was described as the exhaust gas temperature  
measurement by sensor to select ignition timing patterns that are optimised for engine operation  
of those internal pipe temperatures(Transcript, p 2671). Throughout the development of the  
invention, the concept of changing ignition patterns remained central (Transcript, pp 2649, 2646,  
and 2670, among others).  
[65] On cross-examination, Mr. Spaulding confirmed that the design of an engine meant  
designing its structure and parts. This was mainly done by Suzuki, although Arctic Cat provided  
its input on a regular basis during the design phase. Mr. Spaulding did not communicate with  
Suzuki for the development of the exhaust pipe technology on the 2000 model year ZR 440  
engine, but rather Arctic Cat received a system that would measure exhaust gas temperature to  
select different timing patterns. The development and optimizing of those patterns was done by  
Mr. Spaulding himself at Arctic Cat.  
[66] Mr. Spaulding also confirmed that the control logic, including the ability to select from  
maps, was already programmed into the ECU when Mr. Spaulding received it, and Mr.  
Spaulding played no part in programming it. The ignition timing values he had provided to  
Suzuki to install in the ECU were all common generic values. Mr. Spaulding then optimized the  
different maps while working on the finalized version of the tuned pipe, which he confirmed  
accounted for up to 70% of the engine power from a snowmobile engine like the ZR 440.  
[67] Although Arctic Cat did not offer evidence about how its own engine may be practicing  
the invention, Mr. Spaulding was cross-examined on the use that was made of his invention,  
Page: 33  
starting in 2006. However, it became clear that the inventor did not have much to contribute. He  
was clearer about the history of the invention.  
[68] The data found in the five tables in the 738 Patent, which represent five ignition patterns,  
were taken from the input values and not the actual values of the finalized engine specification.  
[69] The matter of what constitutes the modification of the ignition patterns was also the  
subject of the cross-examination. The inventor was presented with the only paragraph in the  
disclosure which addresses the issue of modification of an ignition pattern (that corresponds with  
claims 11 and 16). There is in my view no ambiguity as to what was intended to modify an  
ignition pattern:  
A.  
I did not have any other way than a timing dial, D-  
58, to select?  
Q.  
A.  
Q.  
A.  
A pattern and then –  
When developing the 2000 model 440 ZR--  
Yes  
-- with my pipe sensor technology and a D-58  
timing dial, the exhaust temperature selected the pattern. D-58  
timing dial would simply take the patterns and shift them up or  
down.  
Q.  
Yes  
A.  
The measurement of the exhaust to select a pattern  
would still exist and function. The purpose of this was, and still is,  
because we still use this same dial, it, as an example, would be –  
because of tolerances and ignition components, manufacturing  
tolerances, is a specific timing value is the timing setting, meaning  
where do you check timing to make sure that your system is timed  
correctly, there can be a plus or minus 1-degree tolerance in a  
timing value by manufacturing tolerance.  
Page: 34  
So the operator with a dial like this would be able to check  
his timing manually, assuming he understood how to do that. He  
found that, because of the tolerance it was 1-degree retarded, 1  
degree advanced, you could turn this dial to make the timing  
setting correct per the specification. That’s one purpose.  
(Transcript, p 2824)  
[My emphasis]  
Clearly the pattern is modified in that it is changed, in the example given by the witness, by  
shifting them up or down.  
[70] It is striking that the inventor did not offer what his contribution to the invention was  
other than having general ideas and asking the motorist for solutions. Many times, the witness  
stated that it was a joint effort in the development of the engine, yet this assertion was not  
supported by the details of Mr. Spaulding’s contribution. He simply pivots in announcing that he  
moved from rev limiter(limiting the RPMs) to the selection of maps. The evidence is at best  
murky (Transcript, pp 2653 to 2658). The witness even testifies that his thinking had evolved,  
but he did not advise the motorist for fear of Suzuki becoming confused. How was Suzuki to  
implement the two-pattern innovation remained unsaid: we are only told about faxes being sent  
to Suzuki, by AC in December 1997, asking for views on how to turn the manual 2-pattern  
evolution to something done automatically somehow, without a T.P.S. Maybe RPM and time  
activated. What are your ideas?(Exhibit P-57).  
[71] It remains that the witness testified that, as the notion of changing ignition pattern  
automatically was being explored, he had the idea (Transcript, p 2669). But, what idea precisely?  
The record remained very thin about the actual contribution. There is no doubt that Mr.  
Page: 35  
Spaulding is a master calibrator with many years of experience. His contribution to an invention,  
his systemwhich he described at page 2671 of the transcript as the exhaust gas temperature  
measurement by sensor to select ignition timing patterns that are optimum for engine operation at  
those internal pipe temperatureis much more in doubt in view of the quality of the evidence  
proffered at trial.  
[72] BRP also presented three witnesses, other than experts retained for the purpose of  
discussing patent infringement and validity, and damages incurred.  
D.  
Bernard Guy  
[73] Mr. Guy was trained as a mechanical engineer at the Université de Sherbrooke. He also  
holds a master’s degree in business administration. Employed by BRP since 1987, he became  
vice-president responsible for sales and dealerships before being promoted to vice-president  
responsible for sales, marketing and customer service for North America.  
[74] The witness explained that BRP is not a division of Bombardier since 2003. It is a stand-  
alone corporate entity. The market for snowmobiles was around 150,000 units in 2005, but has  
dropped to 90 to 100,000 units per year more recently. The Canadian share would be around 40  
to 50,000 units. There are four major players: Yamaha, Polaris, AC and BRP. BRP holds 49% of  
the market in Canada and 43% in North America.  
 
Page: 36  
[75] He testified that the difference in price between snowmobiles does not come entirely  
from the high cost of engines. In some cases, a difference of $3700 between two snowmobiles of  
the same category could come in large part from the difference in shock absorbers (as much as  
$1000). At other times, the differences in price are much reduced.  
[76] On cross-examination, focus was put on a document titled ‘Direct Injection Study’, dated  
June 2006. Mr. Guy confirmed that BRP was looking at consumers’ perceptions of direct  
injection technology, and, as a subset, any association with specific direct injection technology  
such as the Evinrude E-TEC. Mr. Guy agreed that the perceptions of disadvantage, even if only  
slight, in terms of reliability and durability, were issues that BRP needed to address. The  
strongest concerns were about price and the fact that direct injection was not proven in the  
snowmobile industry.  
[77] The cross-examination established that BRP was concerned with durability, quality and  
reliability issues. When the initial 600 E-TEC engines were introduced into the market place,  
part of BRP’s advertising campaign promoted the engine as being virtually “hassle-free. It  
appears that the 2009 roll-out was not completely successful. A market survey of June 2009  
showed difficulties. Mr. Guy confirmed that this was after the 600 E-TEC rollout, and that a  
survey stated the Ski-Doo had lost from 5,000 to 8,000 sales due to durability, quality and  
reliability issues. Mr. Guy explained that he would need to validate the document further to be  
able to provide a specific opinion on what is a statistical projection. Mr. Guy explained that these  
statistics were based on statistical surveys of customers that are extrapolated for results on a  
bigger scale.  
Page: 37  
[78] The Court is left with little doubt that durability, quality and reliability were issues BRP  
was concerned about. BRP needed to avoid these types of issues on its 800 E-TEC model. BRP  
studies carefully client satisfaction. In spite of the equivocation of Mr. Guy, there would not be  
much doubt that reliability and durability were issues of concern for BRP.  
E.  
Steward Strickland  
[79] Mr. Strickland obtained a bachelor’s degree in mechanical engineering from McGill  
University in 2000 and started working at BRP shortly thereafter. He is an intellectual property  
engineer, currently one of two at BRP, a job that involves liaising between inventors at BRP  
and the outside agents who draft patent applications.  
[80] The witness’ job involves ensuring that BRP products do not infringe patents held by  
third parties. There is no doubt that BRP wanted to adjust the timing of its engines in connection  
with the temperature of the exhaust gas. Thus, Mr. Strickland was put to contribution. The first  
engine for which BRP proposed to use the exhaust gas temperature for the purpose of adjusting  
ignition timing was the 440 HO, in 2004. In conducting his patent clearance work, Mr.  
Strickland searches patent offices in an effort to locate relevant patents once he has been  
apprised of the issue raised by the project presented to him. Thus, using engine searches or other  
methods, he came across the 738 Patent; he also located US equivalent patents.  
[81] There are four BRP engines at issue in this case: the 440 HO, 600 RS, 600 E-TEC and  
800 E-TEC. Mr. Strickland explained that he was involved in the patent clearance search for the  
 
Page: 38  
440 HO in 2004, when a racing department engineer approached him about using exhaust pipe  
temperature sensors for the purpose of altering the ignition timing. The objective was to help  
racing engines get out of the gate faster.  
[82] These patents, located by Mr. Strickland, are owned by AC and the witness considered  
that they were all within the same family of patents. Reviewing the file history of the US patents,  
he noticed the existence of past litigation involving AC to Polaris, another snowmobile  
manufacturer. Having been unable to locate a decision in the matter, the witness got in touch  
with an American counsel who had been involved in the litigation.  
[83] The telephone conversation with the American attorney, which would have taken place  
late in 2004, led the witness to U.S. Patent 5,946,908 (908 Patent). While the witness wished to  
avoid infringing patents in place, he was also interested in locating prior art that could help deal  
with validity issues. According to the testimony, the American attorney stressed the 908 Patent  
as practicing something different than AC’s patent: it teaches a base map from which a timing  
value is extracted, and the timing value is then corrected. One reads at page 1320 of the  
transcript:  
A.  
Well, that’s – you know, these are my recollections  
and my understanding of what he was saying when I was writing it  
down. And basically, what he continued on to give me was a few  
more details.  
He also said preprogrammed maps elected by exhaust gas  
temperature was different to the preprogrammed than to calculate  
on the fly. And basically what he’s mentioning there – and he was  
always making reference to this -- we see at the bottom of the page  
there’s some U.S. Patent numbers. One of them ends with 908. He  
was making reference to that patent.  
Page: 39  
He was saying, this patent shows it was in the prior art at  
the time, it was publicly available. He was saying that this 908  
Patent shows using a base map and correcting the base map with a  
correction factor, and that was different because it was being  
calculated all the time. The point the ignition point from the base  
map was calculated and then manipulated with the correction  
factor, which was different than what was actually being claimed  
in the patents that were at suit at the time between Polaris and  
Arctic Cat.  
[84] Content that the 908 Patent was different from the AC’s patents, Mr. Strickland  
continued his investigation to ascertain that the 908 Patent could not be infringed:  
Q.  
We will pause for a moment here. So you said you  
had a lot of U.S. patents. So we see the numbers here. In terms of  
these patents, you were in the exercise of looking for alternative, I  
would say, or clearance search for the 440 HO. Did you look at  
those patents to see their status?  
A.  
Yes, at the time, I remember the because once  
Chuck Segelbaum told us about the 908 Patent, he said, this is  
what was being practised and this is what was taught and protected  
in the patent. Well, obviously before going ahead and trying to  
avoid one patent by doing one thing in the next patent, well, I  
wanted to make sure that I wasn’t going to infringe the second one.  
So yes, I looked at the status at the time of the 908 Patent.  
Q.  
What was the status?  
A.  
It had actually been expired. The assignee, which is  
Yamaha, they didn’t pay one of the maintenance fees that had been  
due prior to that time, and thus the patent had expired.  
(Transcript, p 1323)  
[85] Mr. Strickland was therefore testifying that the AC patents were not infringed if BRP  
sought to practice the 908 patent, which had expired by then.  
Page: 40  
[86] Following discussions within BRP, the witness testified that was chosen the option of a  
base map with corrective values. As explained at p 1335 of the transcript, the corrective factor  
would be added to the ignition timing point previously gotten from the base ignition map.That  
was the suggestion advocated by Mr. Strickland (Transcript, p 1339).  
[87] It is the witness’ evidence that the suggestions were also implemented in the other  
accused engines, the 600 RS, the 600 HOE-TEC and the 800 HOE-TEC (Transcript, pages 1350-  
1351).  
[88] On cross-examination, Mr. Strickland clarified that the American attorney made specific  
references to the US 908 Patent and that it was practiced by Polaris; BRP chose to base their  
system on a base map with a correction factor method, that is what was taught by the 908  
Patent.(Transcript, p 1371)  
[89] The testimony about the practice of the 908 Patent was not seriously challenged at trial.  
The cross-examination concentrated instead on the location of the sensor for the exhaust gas  
temperature. The witness expressed his view that the 908 Patent teaches that the sensor can be  
directly in touch with the exhaust gases or it may be installed flush against the exhaust system,  
thus measuring the temperature indirectly.  
[90] It is of course one thing to have an intellectual property engineer testify that BRP chose  
to practice the U.S. 908 patent which is claimed to be different than the 738 Patent with its  
Page: 41  
insistence on ignition patterns being either selected or modified through the use of the exhaust  
gas temperature. That was the task at hand for the next witness.  
F.  
Bruno Schuehmacher  
[91] Mr. Schuehmacher holds a Bachelor’s degree in mechanical engineering from the École  
Polytechnique de Montréal. He has been working at BRP since 1993, and as a mechanical  
engineer in the engine calibration department since 1998. As such, he is in charge of calibrating  
snowmobile and two-stroke engines. Since the engines themselves are assembled by the Rotax  
division of BRP in Austria, his work consists of developing intake and exhaust systems, as well  
as software used by the control module of the engines.  
[92] Mr. Schuehmacher explained that in response to environmental standards that were  
becoming increasingly strict, BRP developed a series of SDI (semi-direct injection) engines,  
introduced for the 2003 models. The SDI technology limits fuel loss through the exhaust pipe of  
a two-stroke engine by injecting fuel in the transfer port and not by using a carburetor. True  
direct injection resolves this issue completely but the technology is much more expensive. BRP  
acquired Johnson-Evinrude and its E-TEC direct injection technology around 2000-2001 and  
began developing it for use in its snowmobiles. This technology was marketed for the 2008  
model year and the SDI technology was discontinued in 2009. However, another technology  
called P-TEK, marketed for the first time in 2000, continued to be manufactured in small  
quantities with a carburetor managed by a control module.  
 
Page: 42  
[93] The witness explained how inputs are used in the control logic of the BRP engines. His  
evidence is that the same control logic was in use for the P-TEK engines (carburetors) as well as  
the 440 HO and 600 RS (direct injection). Base maps are basically ignition patterns. They are  
pre-determined ignition points for different engine speeds. For a given engine speed, or range of  
engine speeds, an ignition point is determined, usually at a point before the piston reaches the top  
of the cylinder (top dead center). The base maps provide the initial advance ignition timing. In  
the case of these engines, the four base maps, A, B, C and D, relate to the type of fuel to be used  
and, with respect to D, corresponds to the preheatmap used solely in race models. Map C was  
never used.  
[94] E, F, G, H, J and KxL are all corrections that are applied on the ignition timing selected  
from one of the four base maps, such that the logic is portrayed as:  
((A or B or C or D)+E+F+G+H+J+KxL)  
where K is the correction made as a function of the exhaust gas  
temperature.  
As can be seen from the equation, once one of the four base maps has been selected, a correction  
is to be applied on the ignition point that corresponds to the engine speed. One of the corrections  
will come from the temperature of the exhaust gas. It is worth reproducing the summary of the  
operation of the logic control for engines, in the words of the witness. That was never  
challenged. It must be taken by the Court as the operating logic for the BRP engines. As will  
appear later, the same logic will apply equally to the E-TEC engines.  
R.  
[TRADUCTION] First, the controller will have to select which  
basic spark advanced table to use to extract the ignition timing.  
Therefore, as explained, this will normally be A or B depending on  
whether it is a race application or not, or whether it’s at the starting  
Page: 43  
line warming up the tuned pipe; in that case it would be D, if I am  
not mistaken, that corresponded to the preheat. So based on the  
engine operating conditions, the basic table is chose. Knowing the  
point of operation for engine speed and throttle position, a base  
ignition timing is extracted and once this base ignition timing is  
extracted various corrections are added for the barometric pressure  
of the engine temperature, the engine break-in, the exhaust  
emissions temperature. Once these additions are made, the final  
ignition timing is determined, and that will be sent to the ignition  
coil to produce the spark.  
(Transcript, page 828)  
[95] Mr. Schuehmacher then addressed the E-TEC engines, for which BRP used the control  
module and logic developed by Johnson-Evinrude. He explained that BRP merely added  
functions that did not exist in outboard but that are necessary for snowmobiles. BRP also  
integrated a number of other functions that exist in the P-TEK modules, including muffler  
temperature management. This work was done in collaboration with Johnson-Evinrude and, to a  
certain extent, Rotax.  
[96] According to Mr. Schuehmacher, the inputs to the E-TEC module are essentially the  
same as those for the P-TEC module. However, there is also a GPSTPinput that is for the  
temperature of the exhaust gas in the tuned pipe. This corresponds to a second temperature  
detector for exhaust gas in the tuned pipe rather than in the muffler. It is found in the 800 E-TEC,  
but not in the 600 E-TEC. Mr. Schuehmacher then explained that the spark advance of the 800  
E-TEC module operates by selecting one of the four basis tables based on the combination of  
two distinct parameters: barometric pressure and fuel quality. Once the basic table is selected, the  
module will extract a spark advance according to the engine’s rotational speed and the throttle  
position. To this value, the corrections extracted from the Dynamic ignition timing correction  
Page: 44  
mapare added, including a correction based on the exhaust gas temperature sensor. This only  
applies when the throttle is open more than 70% or 80%, depending on the model of the  
snowmobile, and when the engine is at an operating speed greater than 7,800 revolutions per  
minute. Therefore, it is only when these conditions are met that the correction will apply  
according to the temperature detected.  
[97] The Engine Control Module [ECM] of the E-TEC engines is programmed to determine  
the final ignition point by applying one or more correction(s) to a base ignition timing point  
extracted from one of the four base ignition timing maps. The corrections are determined based  
on engine speed, atmospheric pressure and muffler temperature (see BRPE-58/8-9), using the  
following formula:  
Ignition timing calculation: (A or B or C or D) + E + F + G  
where:  
A, B, C or D is the ignition timing value extracted based on  
rpm and throttle position from the previously selected Base  
Ignition Timing Map;  
E is the ignition timing correction value (Dynamic Ignition  
Angle Correction) for sensed EGT [exhaust gas temperature] and  
engine speed (rpm);  
F is the ignition timing correction value for Altitude;  
G is the ignition timing correction value for muffler  
overheat protection.  
[98] Mr. Schuehmacher explained that according to the data collected from the trials  
conducted on BRP snowmobiles since 2005, situations in which there was a correction on the  
basis of the exhaust gas temperatures were very rare in practice since they correspond to high  
Page: 45  
throttle openings, greater than 70% and 80%, which requires a very high speed. The correction  
for the 800 E-TEC will only be used beyond 7,800 revolutions per minute. The correction based  
on the temperature of the exhaust gas therefore only applies 3% to 5% of the time. Mr.  
Schuehmacher added, however, that this data may vary according to engine power and the way it  
is used. In the 800 E-TEC, 3% corresponds to use on trails while 5% corresponds to use in the  
mountains. The 600 E-TEC, a more reliable engine, is generally only used on trails, and the  
correction also only applies less than 5% of the time it is used.  
[99] On cross-examination, the witness was not challenged on the control logic that is used  
with respect to the accused engines. He was asked to provide examples of how the logic would  
actually operate in an attempt, presumably, to show that the logic followed by the four engines  
corresponds, in the end, to the teachings of the asserted claims of the 738 Patent.  
[100] The witness was however steadfast. The logic of the four engines requires that an ignition  
point be extracted from the selected base map, to be corrected, including being corrected as a  
function of the temperature of the exhaust gas (Transcript, pp 1108 to 1123).  
[101] Finally, the cross-examination confirmed that BRP was conscious of the existence of the  
patents owned by AC. Clearly, BRP wanted to avoid infringement and Mr. Schuehmacher  
concluded that, in his view, there was no infringement (Transcript, pp 1143 to 1146). Far from  
resiling from the view that BRP was not practicing the 738 Patent, BRP goes even further in  
stating that it took care to avoid infringement. This is not a case where the infringement is  
Page: 46  
justified ex post facto. BRP, knowing about the AC patents, sought to avoid being in violation of  
the monopoly.  
[102] It is uncontradicted, on the record before the Court, that BRP’s logic was to the effect that  
a base map would be selected according to some criteria (eg. Fuel quality), but not on the basis  
of the exhaust gas temperature.  
[103] Once a map was selected, the ignition point corresponding to a particular engine speed  
(revolutions per minute) would be extracted for the purpose of applying to it a correction. That  
figure would then be corrected for different factors including as a function of the temperature of  
the exhaust gas. That logic is fundamentally the same for the four accused engines. The question  
then is, having constructed the claims asserted by AC, is there infringement?  
[104] I have reviewed at significant length the testimonies offered by these witnesses. The  
evidence of Mr. Spaulding is important in order to understand what the invention is and whether  
it is his invention. Messrs. Strickland and Schuehmacher sought to establish how BRP was to  
avoid infringing the 738 Patent. This case boils down to determining first what logic is followed  
by the four accused engines. Second, the Court will have to determine what the invention  
consists of, through a construction of the claims, before comparing the invention to the logic  
followed by BRP with respect to its engines.  
Page: 47  
G.  
The Experts  
[105] There have been four experts presented by the parties in this case. AC and BRP offered  
an expert each in order to assist with an understanding of how two-stroke engine operates and  
how to construct this Patent.  
[106] For AC, Dr. David Checkel is a professional mechanical engineer; he is the holder of a  
Ph.D. in engineering from the University of Cambridge. He has taught at the University of  
Alberta's Department of Mechanical Engineering for close to 30 years. He is now retired.  
[107] For BRP, Dr. Glenn Bower was also trained as a mechanical engineer. He holds a Ph.D.  
earned at the University of Wisconsin-Madison. He is currently a Senior Scientist at the  
University of Wisconsin-Madison Engine Research Center and Faculty Associate in the  
University of Wisconsin-Madison Mechanical Engineering Department.  
[108] Two other experts were retained by the parties to assist with the assessment of damages.  
The matter of damages was not bifurcated in this case and the case on damages was heard  
irrespective of the decision on infringement and validity. Both experts on damages also testified  
in the sister case T-2025-11.  
[109] For AC, Mr. Andrew N. Carter offered his expertise. He has a Bachelor of Science  
degree from the Rose-Hulman Institute of Technology. He also holds a Master of Business  
Administration from the University of Chicago’s Graduate School of Business.  
 
Page: 48  
[110] Dr. Keith R. Ugone, for BRP, was trained in economics. His B.A. in Economics was  
received from the University of Notre Dame. His M.A. in Economics is from the University of  
Southern California. His Ph.D was earned at Arizona State University.  
[111] Mr. Carter and Dr. Ugone have for some time provided advice to clients through, in the  
case of Mr. Carter, a firm where he is the head of the expert testimony practice, while Dr. Ugone  
is a managing principal at Analysis Group, Inc. where he specializes in the interpretation of  
financial and economic data.  
VI.  
Credibility of experts  
[112] The qualifications of the experts were never doubted. Nevertheless AC chose to dedicate  
a number of its allocated 60 pages for its memorandum of facts and law to challenging the  
credibility of the two experts retained by BRP in this case.  
[113] As for Dr. Bower, an expert in mechanical engineering, AC reproaches him that he  
lacked impartiality and acted as an advocate for the party having retained his services.  
[114] There is no doubt that expert witnesses have an overriding duty to assist the Court  
impartially on matters relevant to his or her area of expertise(Section 1 of the Code of Conduct  
for Expert Witnesses before the Federal Courts, adopted pursuant to Rule 52.2 of the Federal  
Courts Rules, SOR/98-106). Section 2 of the Code is even more explicit:  
2 This duty overrides any duty Cette obligation l’emporte sur  
to a party to the proceeding,  
toute autre qu’il a envers une  
 
Page: 49  
including the person retaining partie à l’instance notamment  
the expert witness. An expert  
is to be independent and  
objective. An expert is not an  
advocate for a party.  
envers la personne qui retient  
ses services. Le témoin expert  
se doit d’être indépendant et  
objectif. Il ne doit pas plaider  
le point vue d’une partie.  
Given the particular role played by expert witnesses and their duty to assist the Court impartially,  
a number of questions came from the bench throughout their testimony for the purpose of  
clarifying what was often left either ambiguous or unclear, at least in the eyes of the Court. That  
was true of the experts retained by BRP as well as those retained by AC.  
[115] In my view, having reviewed their lengthy reports and listened very carefully to the  
testimony of the four experts in this case including the testimony of Dr. Bower, I was left with  
the firm conviction that Dr. Bower was certainly no more an advocate for BRP than were Dr.  
Checkel and Mr. Carter for AC.  
[116] It must be acknowledged that experts are appearing in the context of trials where the  
parties have different points of view. They have formed an opinion which, evidently, will be  
consistent with the theory of the case advanced by a party. I thought this was the idea captured  
by the Supreme Court of Canada in White Burgess Langille Inman v Abbott and Haliburton Co.,  
2015 SCC 23, [2015] 2 SCR 182 [White Burgess Langille Inman]. It is certainly true that the  
expectation is that the expert’s opinion must be impartial, independent and unbiased. However,  
these concepts are qualified in view of the context in which an expert is testifying:  
32  
Underlying the various formulations of the duty are three  
related concepts: impartiality, independence and absence of bias.  
The expert's opinion must be impartial in the sense that it reflects  
an objective assessment of the questions at hand. It must be  
Page: 50  
independent in the sense that it is the product of the expert's  
independent judgment, uninfluenced by who has retained him or  
her or the outcome of the litigation. It must be unbiased in the  
sense that it does not unfairly favour one party's position over  
another. The acid test is whether the expert's opinion would not  
change regardless of which party retained him or her: P. Michell  
and R. Mandhane, The Uncertain Duty of the Expert Witness”  
(2005), 42 Alta. L. Rev. 635, at pp. 638-39. These concepts, of  
course, must be applied to the realities of adversary litigation.  
Experts are generally retained, instructed and paid by one of the  
adversaries. These facts alone do not undermine the expert's  
independence, impartiality and freedom from bias.  
It is certainly not infrequent for experts to hold different opinions. This is exemplified again in  
the recent case of R. v Borowiec, 2016 SCC 11, where two experts came to diametrically  
different views on whether a mother charged with the offence of infanticide had a disturbed  
mind. Different opinions do not show a lack of impartiality. It is common place that experts  
disagree.  
[117] In the case at hand, AC complained that Dr. Bower did not satisfy some of the specific  
requirements of section 3 of the Code of Conduct. Here, AC seems to refer to their view that Dr.  
Bower ought to have disclosed literature and other materials specifically relied on in support of  
the opinion.As I have explained elsewhere in this judgment, there was no such derogation from  
the Code, as what M. Bower was faulted for did not fall in the category of literature and other  
materials.  
[118] AC was also complaining about a peripheral role that may be played by the expert on a  
project at the University he is associated with, where one of the sponsors would be BRP. He is  
also faulted for having acted in a case in the United States involving Polaris, another snowmobile  
Page: 51  
manufacturer, and Arctic Cat in a matter about the American equivalent of the 738 Patent.  
Neither one of these two allegations was particularly convincing. They did not go to the  
impartiality, independence and lack of bias as described by the Supreme Court. Having  
considered the reports produced in this case by the expert and his demeanour in the witness box,  
he was candid and forthcoming, perhaps more so than Dr. Checkel; there was never any doubt  
that the assessment done was objective, or that the view expressed was not the product of his  
independent judgment, uninfluenced by who has retained him. He showed that willingness to  
explain his assessment, including his careful and complete review of claims. He never hesitated  
to engage with questioners and the Court. Dr. Bower was no less impartial and independent than  
Dr. Checkel or Mr. Carter. I would not impugn their integrity on the basis that they have a point  
of view that differs from that of Dr. Bower and, for that matter, Dr. Ugone. The same is true in  
reverse. They are all experts who have come to a conclusion and I have no indication that their  
position is tailor made.  
[119] AC contended that bias was demonstrated by the fact that Dr. Bower found prior art that  
would invalidate the 738 Patent. However, the main pieces of prior art in this case were  
identified more than ten years ago by BRP as it was attempting to avoid being in violation of the  
738 Patent. That, in and of itself, is a laudable objective and no one should be faulted for having  
conducted research that I found to be diligent. The fact that, once retained, Dr. Bower would  
conduct further research is not to be decried. Quite the opposite. One should expect that research  
is conducted to find what is the extent of the prior art. It would be quite a different matter if Dr.  
Bower had found prior art that would have been counterproductive from his stand point, yet he  
would have hidden that fact from the Court. The Court did not find that it was particularly  
Page: 52  
impressive that “Dr. Checkel’s construction is independent of the asserted prior art. In fact, he  
did not recall looking at the asserted prior art in the preparation of his report on claim  
construction and infringement.” (AC’s Memorandum of facts and law, at para 190)  
[120] In fact, the hesitation shown by Dr. Checkel to define and explain what ignition  
pattern, the central concept in this patent, signaled an intention to stick to a pre-determined  
scenario. On more than one occasion, Dr. Checkel showed reluctance to engage on that most  
important concept, as if the issue could be avoided. The Court was left with the impression the  
expert was walking some sort of a fine line from which he was reluctant to depart.  
[121] AC tried to make hay out of the obvious change of heart on the part of Dr. Bower about  
the required qualifications of the person skilled in the art (Posita). It is certainly true that he  
expressed a different view in a report he authored in the US case of Polaris v Arctic Cat some 13  
years ago. As he candidly testified at trial, he had forgotten about the particulars of his  
involvement which actually never resulted in him testifying as the case was settled out of court.  
Contrary to what is argued by AC, he did not prove himself to be willing to ignore his own  
evidence as much as he had forgotten about that evidence.  
[122] As I will try to show in the section of these reasons dedicated to determining the features  
of the person skilled in the art, the better view is that now defined by Dr. Bower. In my view, the  
knowledge that is required in order to practice the 738 Patent requires more than the experience  
of a cell technician. If the inventive concept is that which is defined by AC, it is simply unlikely  
that a person of skill in the art does not have the skills of a mechanical engineer. If, on the other  
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hand, what is needed is an engine calibrator, that would fit the definition of the Posita offered by  
Dr. Checkel where academic credentials are not required. I have concluded that the person to  
whom the patent is addressed is not merely a calibrator.  
[123] It follows that the Court is of the view that the definition of the Posita offered by  
Dr. Bower in this case does not render him less qualified, less objective or less independent. I  
have come to the conclusion that his credibility, and the weight of his evidence, should not be  
discounted simply on the basis that he has changed his mind on the definition of the Posita. As  
noted earlier, he had forgotten about the Polaris litigation and, in my view, revising one’s view is  
not to be held against the expert unless there is a nefarious purpose that can be inferred. That has  
not been shown in this case. AC has contended that the change of heart, or opinion, was that the  
expert showed a willingness to change his opinion based on who retains his services. I disagree.  
In the U.S. case Polaris v AC, Polaris was in the same position as BRP is in that it is in the  
opposite camp compared to AC. In a sense, Polaris and BRP appear to be in the same camp, as  
the conversation between Mr. Strickland and a U.S. attorney for Polaris would attest. The fact  
that Dr. Bower would define differently the Posita cannot reflect a predilection for changing his  
mind depending on who hires him when, in fact, the two clients are in a similar predicament.  
[124] I should add, parenthetically, that it is somewhat ironic that AC would insist that much on  
the difference between the positions taken by Dr. Bower in this case and in the U.S. litigation  
involving Polaris.  
Page: 54  
[125] As was brought to the attention of the Court, AC resisted strenuously answering any  
question relating to the U.S. litigation, including whether the matter did not proceed because  
Polaris designed around the U.S. Patents 082 and 566. One of the reasons given was that these  
two patents are not equivalent to the Patent-in-suit and the claims differ in number and in  
language (examination of corporate representative Donn Eide, March 20-21, 2014). Without  
knowing more about the U.S. litigation involving the witness, it is not possible to ascertain fully  
what would have been an appropriate definition of a Posita in U.S. litigation. Indeed, it is always  
a perilous exercise to try to compare requirements in two different pieces of litigation conducted  
in two different countries operating on different laws and sets of rules.  
[126] The Court found Dr. Bower to be generally clearer than Dr. Checkel in his explanations.  
Dr. Checkel was mistaken in a number of respects in his report; as with Dr. Bower, I would not  
hold that against him. Mistakes happen. On the other hand, he hesitated answering questions  
which appeared to be straight forward, indicating at times that he had misunderstood the question  
asked. Furthermore, the claims construction exercise conducted by Dr. Bower was much more  
fulsome than the cursory examination done by Dr. Checkel. Dr. Bower was precise and the  
construction accounted for the words used in the claims.  
[127] It must be said, however, that both experts were operating with a Patent that had a lot to  
be desired. They each had a theory as to what was intended by the invention and, to some extent,  
that is to be expected in a case that ends up before the Court. In other words, the simple fact that  
the matter needs to be litigated is a significant indication that there is a fundamental  
disagreement. This Court did not hold that Dr. Checkel and Dr. Bower were not experts; this  
Page: 55  
Court did not conclude that their evidence ought not to be admissible; this Court rather concludes  
that the experts dealt with a difficult patent that was lacking in details and precision and their  
integrity ought not to be impugned. At the end of the day, it is this Court’s assessment that the  
evidence offered by Dr. Bower was closer to the language of the Patent and it was consistent  
with the prior art that had been identified.  
[128] Advocating for a party and advocating for an opinion firmly held are two different things.  
The advantage enjoyed by Dr. Bower over Dr. Checkel, in my view, is that Dr. Bower’s opinion  
stayed close to the text of the Patent, accounted for all the terms of the claims and did not do  
violence to the text. Furthermore, the relevant prior art was consonant with the view he  
expressed in his reports and testimony.  
[129] AC made the same kind of argument with respect to Dr. Ugone’s evidence. He was  
retained by BRP to assess the damages suffered by AC were the Court to find in favour of the  
Plaintiffs. Here, the argument boils down to a disagreement with the testimony offered by Mr.  
Carter, the expert retained by AC. AC suggested that Dr. Ugone was reluctant to help the Court.  
As a matter of fact, Dr. Ugone was no more reluctant to help the Court than was Mr. Carter. On  
the issue of damages, these two experts arrived at conclusions that could hardly have been more  
apart.  
[130] Concerning Dr. Ugone, he was accused of being inconsistent in his methods and reluctant  
to help the Court.  
Page: 56  
[131] As will be shown in the part of these reasons dealing with damages, neither one of the  
experts was in the end of much assistance to the Court. One of the three methodologies offered  
by Dr. Ugone may have been the basis, with some significant adjustments, to serve as the basis  
of the notional negotiation. However, none of the four methods devised by Mr. Carter was of any  
assistance. Even his report was less than instructive and his methods were rather crude, lacking  
in sophistication or theoretical underpinnings. I have concluded that it is largely because of the  
Patent-in-suit which would have made very difficult to assess damages without more information  
on the actual practice of the Patent. I would not have retained any criticism against Dr. Ugone. If  
some assistance could have been derived from the experts’ evidence on damages, Dr. Ugone’s  
evidence at least provided a method that could have provided some guidance.  
[132] Until the end, it remained unclear what the impact of the invention had, or could have  
had, on the profitability of the accused snowmobiles. This is a vital feature of a case on damages.  
That is largely a function of the lack of information that was generated on the basis of a patent  
such as the 738 Patent. Mr. Carter, who was relying on his view of the profitability of the AC  
snowmobile, not the accused engines, never offered how the AC snowmobile was practicing the  
invention, including what systems were directly influenced by the said Patent. Instead, he fell  
back on the vague notion of the contribution margin between snowmobiles. As is well known, it  
is only the damages that are incurred by reason of the infringement(subsection 55(1) of the  
Patent Act) that can be compensated. Mr. Carter had to contend with an invention that consisted  
of the use of exhaust gas temperature in order to adjust the ignition timing to optimize the  
performance of a snowmobile engine, which includes increasing power, making adjustments for  
fuel, incorrect carburation or fuel delivery and, generally speaking, avoid damage to the engine.  
However, the Patent does not indicate how the exhaust gas temperature is to be used in order to  
Page: 57  
attain such goals and the evidence does not show whether any of those goals were attained by  
either the AC engine or the accused engine. AC did not lead evidence on the use it made of its  
invention. In other words, what was the value generated by the invention? It is, therefore,  
unsurprising that the experts on damages were attempting to be creative to establish some basis  
for the awarding of damages. The paucity of information resulted in their testimony lacking a  
strong foundation.  
[133] In the end, this is a case where the experts provided the Court with as much assistance as  
they could muster in view of the Patent-in-suit. There should not be any undue reflection on their  
testimony. In my view, AC’s contention against both Dr. Bower and Dr. Ugone is no more than a  
disagreement with the views expressed by these two experts. As put by the Supreme Court in  
White Burgess Langille Inman, above, this is the reality of the adversary system of justice that  
experts, even when well qualified, may well reach conclusions that are not consistent with one  
another. It is for the trial judge to use the expertise offered to decide which view carries more  
weight. In a patent case, we have at least the benefit of the text of the patent which is elucidated  
with the assistance of experts.  
[134] Counsel for AC put it appropriately in their memorandum of facts and law when stating  
that [t]he patent agent is free to draft in this manner with the hope of drafting one claim that is  
valid and of sufficient scope to protect the invention(para 82). The point was captured by  
Pigeon J. in Burton Parsons Chemicals, Inc v Hewlett-Packard (Canada) Ltd, [1976] 1 SCR 555  
[Burton Parsons]:  
It is stressed in many cases that an inventor is free to make his  
claims as narrow as he sees fit in order to protect himself from the  
Page: 58  
invalidity which will ensue if he makes them too broad. From a  
practical point of view, this freedom is really quite limited because  
if, in order to guard against possible invalidity, some area is left  
open between what is the invention as disclosed and what is  
covered by the claims, the patent may be just as worthless as if it  
was invalid. Everybody will be free to use the invention in the  
unfenced area. It does not seem to me that inventors are to be  
looked upon as Shylock claiming his pound of flesh. In the present  
case, there was admittedly a meritorious invention and Hewlett-  
Packard, after futile attempts to belittle its usefulness, brazenly  
appropriated it.  
[135] Here, AC was faced with the same kind of dilemma. If the claims must be construed with  
the ignition pattern being central to the invention that leaves potentially an unfenced area where  
someone avoids using ignition patterns in the manner described in the claims. On the other hand,  
if the ignition pattern is to be read down, if not outright ignored, there is prior art that will be  
invoked to argue that the claims are invalid. That was the context in which the two experts  
testified. That was the conundrum faced by the Plaintiffs.  
VII. Person of skill in the art  
[136] As with other patent cases, this case requires that the person of skill in the art (Posita) be  
defined, that is the hypothetical person who will consider the patent and to whom it is addressed.  
[137] It would seem that the definition of the Posita, given by the Canadian group of the  
Association internationale pour la protection de la propriété intellectuelle (AIPI), received a  
measure of attention. Hughes J., of this Court, referred to it in Merck & Co v Pharmascience Inc,  
2010 FC 510, 85 CPR (4th) 179. Stratton in his Annotated Patent Act (Bruce Stratton, Carswell),  
 
Page: 59  
gives it as the definition of the term in the section called Words and Phrases Judicially  
Considered. It reads:  
In Canada, the person of ordinary skill in the artis the  
hypothetical person to whom the patent is addressed. This may be  
a single individual or a group representing different disciplines,  
depending on the nature of the invention. The person of ordinary  
skill in the art is deemed to be unimaginative and uninventive, but  
at the same time is understood to have an ordinary level of  
competence and knowledge incidental to the field to which the  
patent relates (i.e. the common general knowledge) and to be  
reasonably diligent in keeping up with advances. The common  
general knowledge is that knowledge generally known by persons  
skilled in the relevant art at the relevant time. Accordingly, it can  
include knowledge passed amongst people in the field, including  
information that is not in published form. Likewise, not everything  
that has been published is within the common general knowledge.  
[138] That same hypothetical person has been described, in the context of the kind of person for  
whom an invention would be obvious, in a more colourful way in Beloit Canada Ltd v Valmet  
Oy (1986), [1986] FCJ No 87 (CA) at p 294:  
The test for obviousness is not to ask what competent inventors did  
or would have done to solve the problem. Inventors are by  
definition inventive. The classical touchstone for obviousness is  
the technician skilled in the art but having no scintilla of  
inventiveness or imagination; a paragon of deduction and  
dexterity, wholly devoid of intuition; a triumph of the left  
hemisphere over the right. The question to be asked is whether this  
mythical creature (the man in the Clapham omnibus of patent law)  
would, in the light of the state of the art and of common general  
knowledge as at the claimed date of invention, have come directly  
and without difficulty to the solution taught by the patent. It is a  
very difficult test to satisfy.  
[139] I do not wish to suggest that the definitions are to be applied without any nuance and in  
an overly rigid fashion. But the basic idea is that a person, or group representing possibly  
different disciplines, has an ordinary level of competence and knowledge, which includes  
Page: 60  
reasonable diligence in keeping up with developments in the field. That person, or team, is said  
to be unimaginative and uninventive, neither a genius nor an idiot, just an ordinary competent  
person (see Mailman v Gillette Safety Razor Co of Canada, [1932] SCR 724).  
[140] Although the parties do not disagree on the general description of who may constitute the  
Posita, including that the notion could include a small team, they disagree on what would be the  
qualifications of the Posita in the case at hand.  
[141] By requiring less formal education, AC would end up with a class where education is  
replaced by at least ten years of appropriate experience working on engine control projects. It is  
not so much that the mechanic with ten years' experience is part of a team as the experience is  
presented as a substitute for the formal training and experience.  
[142] In his initial report (June 15, 2015, exhibit P-2), Dr. Checkel, the expert retained by AC,  
stated that [t]he person skilled in the art would be expected to have mechanical engineering and  
knowledge of basic electrical circuity, before requiring further familiarity with how electronic  
control devices (typically a microprocessor) could be programmed and interfaced with sensors  
and control systems.(para 28). Unexpectedly, Dr. Checkel would broaden the class in his last  
sentence at paragraph 29, dealing precisely with the person skilled in the art by stating that the  
required skills could also have been developed with less formal education and more years (likely  
at least ten years) of appropriate experience working on engine control projects.In his second  
report (August 26, 2015, exhibit P-60), Dr. Checkel took issue with the definition of the Posita  
given by Dr. Bower, the expert retained by BRP, who would require, as part of the team, that  
Page: 61  
there be someone with formal education and experience, i.e. a bachelor's degree in mechanical  
engineering with two to three years of experience in the development, design and performance of  
two-stroke engine control systems (Exhibit D-40, June 15, 2015).  
[143] It seems that Dr. Checkel's criticism stems in part from his desire to be inclusive. Thus,  
he writes that [t]he definition is overly restrictive because it does not allow for the possibility of  
persons with less formal education and more practical experience(P-60, para 14). His focus is  
on people commonly found in the engine development and calibration departments of medium  
size companies that manufacture off-road and recreational vehicles, as well as in the smaller  
companies that specialize in developing engine controls and in adapting or calibrating engines  
for specific applications (P-60, para 14). However, it is not so much that Dr. Bower excludes  
from the team those who would have less formal education; rather he advances that the formal  
education is needed on the team. Dr. Checkel seems to acknowledge that the Posita would  
likely have an appropriate university or college degree and two to four years of experience(P-2,  
para 29), yet he contends that someone with less formal education would not only be part of the  
team Dr. Bower is relying on, but more years appropriate experience working on engine control  
project(P-2, para 29) would suffice.  
[144] It is not easy to follow Dr. Checkel in his justification for having a Posita without formal  
training. He argues for inclusiveness, which is not excluded by Dr. Bower, because it is  
important to consider the common general knowledge and the state of the art from the view point  
of such a person(P-60, para 15). However, this cannot justify excluding the degreed mechanical  
engineer. In his first report, Dr. Checkel accepts that the Posita would likely have an appropriate  
Page: 62  
university degree with some years of experience but concludes that a substitute could be at least  
ten years of appropriateexperience. What constitutes that appropriateexperience remains  
unknown. In his second report, he argues for inclusiveness, which is a red-herring, and justifies  
his choice by stating that the common general knowledge and the prior art must be considered  
from the view point of the person of experience, but without formal training. This is considering  
the issue upside down.  
[145] With respect, what is being described by Dr. Checkel is not the hypothetical person to  
whom the patent is addressed. It is trite to point out that a patent is for an invention, and that an  
invention is defined precisely in the Patent Act:  
invention”  
invention”  
inventionmeans any new  
and useful art, process,  
machine, manufacture or  
composition of matter, or any  
new and useful improvement  
in any art, process, machine,  
« invention » Toute réalisation,  
tout procédé, toute machine,  
fabrication ou composition de  
matières, ainsi que tout  
perfectionnement de l’un  
d’eux, présentant le caractère  
manufacture or composition of de la nouveauté et de l’utilité.  
matter;  
[146] Stephen J. Perry and Andrew Currier capture well in their Canadian Patent Law, 2nd  
Edition, Lexis Nexis, the connexion between the knowledge required of the Posita in relation  
with the invention:  
§15.7 It is therefore incumbent upon the court, when construing a  
patent, to do so from the perspective of the person skilled in the  
art. The person skilled in the art has been identified as a person to  
whom the patent specification is specifically addressed and who is  
likely to have a practical interest in the subject matter of the  
invention, and as a person with practical knowledge and  
experience of the kind of work in which the invention was  
intended to be used. It has been held in at least one case that  
Page: 63  
knowledge can be gained through practical experience or  
education.  
[Emphasis in the original]  
[147] Repeatedly during his testimony, Dr. Checkel was referring to the Posita as the one  
setting up the controls for new engines (see for example, at pages 3016 and 3025). The 738  
Patent is concerned with an inventive concept, something new, and not merely what is needed  
from an experienced technician to set up the controls, to calibrate the engine. Indeed, limiting the  
experience to snowmobiles would not be appropriate as the Patent is directed to two-cycle  
internal combustion engines and their operation.  
[148] In effect, it would seem that AC contends that the Posita is the person who sets up the  
controls and calibrates the engine. The invention, they say, is using the exhaust gas temperature  
to optimize the ignition timing of a two-stroke engine. The optimization is presented as getting  
the best power, although the 738 Patent does not profess such limitation. As the Background of  
the Invention states, as one example the optimum point of ignition during acceleration can  
differ from that of a normal running operation.  
[149] The difficulty with the contention is that the 738 Patent is proposing more than simply  
calibrating an engine to optimize its power. It is certainly true that the Patent states that the  
optimum operation of the engine may require different optimum points of ignition during  
acceleration. However, the Patent goes well beyond acceleration and power.  
Page: 64  
[150] The optimization may relate to the engine operating shortly after start-up, where the  
engine is still cold, requiring different relationships between ignition timing and engine speed.  
[151] In fact, the Patent is concerned with the fact that [d]ifferent engine operating conditions  
may result in different ignition patterns being desirable. The exhaust gas temperature is to be  
used to evaluate operating conditions(Pages 3 and 4 of the 738 Patent). The sensed gas  
temperature could be used to indicate the kind of fuel used, setting the ignition timing pattern  
accordingly. The Patent goes on to state that the adjusted timing pattern would avoid damage to  
the engine.  
[152] Actually, the Patent speaks even in terms of the gas temperature being useful in  
indicating some problems in engine performance, e.g. incorrect carburetion or fuel delivery. (p  
5)  
[153] As can be seen, performance is not limited to acceleration or power. In order to be that  
person to whom the Patent is addressed, there is a need to determine what the exhaust gas  
temperature is indicating, what is the diagnosis that comes in order to address the problems in  
engine performance, to avoid damages to the engine. The appropriate calibration follows the  
diagnosis. It depends on what needs to be accomplished. Is the gas temperature to be used in  
indicating engine performance such as carburation or fuel delivery? Is the sensed temperature  
indicative of the type of fuel used? Should the temperature be used to evaluate the operating  
conditions?  
Page: 65  
[154] The 738 Patent is silent as to how the exhaust gas temperature can be used to identify  
problems. It is also silent as to how that information is used to solve the problems. What timing  
pattern is appropriate to avoid incorrect carburation or fuel delivery is not described. How such  
problem is detected using sensed exhaust gas temperature is left to the person skilled in the art.  
That is, it seems to me, a further indication that a mechanical engineer is needed to practice the  
invention. This Patent is addressed to someone who does more than the calibration of engines  
which entails deciding on the values needed for ignition timing at different engine speeds. It is  
the knowledge needed to be the addressee that is missing to the Posita proposed by AC.  
[155] It is one thing to develop engine controls, to « be aware of the structures and mechanisms  
involved in operating two-stroke engines » (P-60); it is quite another to appreciate and  
understand that which purportedly is new and useful art, process, machine, manufacture or  
composition of matter. Dr. Bower’s point of view, expressed more fully at paragraph 14 of his  
response to Dr. Checkel’s infringement report (Exhibit D-45, August 28, 2015), is more  
conversant with the 738 Patent. The formal training would bring with it knowledge broader than  
experience acquired while working on certain types of engines.  
[156] Reacting to the report of Dr. Bower (P-40) where he requires that the team include  
someone with a bachelor’s degree in mechanical engineering with two or three years of  
experience in the development, design and performance of two-stroke engine control systems  
(para 55), Dr. Checkel suggests, as indicated earlier, that Dr. Bower’s definition is overly  
restrictive because it does not allow for the possibility of persons with less formal education and  
more practical experience(exhibit P-40, para 14).  
Page: 66  
[157] Dr. Checkel’s wish to be inclusive is certainly laudable. Thomas Alva Edison had  
thousands of patents in his name and he did not benefit from formal education. However, no one  
will dispute that he was the exception, not the rule. He is the mechanical genius of the Gillette  
case. Actually, Dr. Bower does not exclude from the team those with less formal education: he  
wants for someone on the team to have the mechanical engineering degree.  
[158] I accept Dr. Bower’s evidence that formal training, which evidently carries the theoretical  
bases in the field, will assist in having the proper understanding of injection timing, injection  
quantity, admission of air, and configuration of the tuned pipe. The 738 Patent, if it is to be  
practiced as indicated in its disclosure, requires someone with a mechanical engineering degree.  
[159] This is not to suggest that it would be impossible for someone with many years’  
experience, who would be self-taught, some sort of autodidact, to fully understand the 738  
Patent. Dr. Checkel wants to allow for the possibility that these be included. However, such is  
not the test. It is not an attempt to include people who work generally in the area that must guide  
the Court, but rather a determination of the person to whom the Patent is addressed. This is a  
Patent that is concerned with the logic used to operate a two-stroke engine and, as we saw  
throughout the trial, this is not an easy area to master. As captured nicely in the Annotated Patent  
Act of Bruce Stratton, the notional skilled person should be a person who understands, as a  
practical matter, the problem to be overcome, how different remedial devices might work and the  
likely effect of using them. (Annotation under section 28.3, at page 1-200.11). It seems to me  
that what is required here is not so much someone who could produce calibration, for instance,  
but rather someone who can fully appreciate the specifications and work with them. In  
Page: 67  
Consolboard Inc v MacMillan Bloedel (Saskatchewan) Ltd, [1981] 1 SCR 504, Dickson J. wrote  
at page 523:  
The persons to whom the specification is addressed are ordinary  
workmen, ordinarily skilled in the art to which the invention  
relates and possessing the ordinary amount of knowledge  
incidental to that particular trade. The true interpretation of the  
patent is to be arrived at by a consideration of what a competent  
workman reading the specification at its date would have  
understood it to have disclosed and claimed.  
[160] The 738 Patent does not claim calibration. An appropriate calibration would result from a  
proper use of the Patent, but it will result from an appropriate understanding of what the  
invention is about. The testimony of Mr. Troy Halvorson, an employee of AC, can illustrate  
somewhat the difficulty encountered if one is tempted to go to a lower denominator in order to  
define the class of persons to whom the 738 Patent could be addressed without having the formal  
education included on the team.  
[161] My view that the Posita needs to have an engineering degree is strengthened by the  
comment made by Dr. Checkel in his report responding to the allegations of invalidity made by  
BRP (P-60). As Dr. Checkel was discussing as normal operating conditions which could be  
remedied, he reckoned that many factors would have to be taken into account:  
73.  
I disagree with Dr. Bower’s opinion that the 738 Patent is  
indefinite relative to the term a first ignition pattern. In  
Paragraphs 74 to 83, the Bower report examines claim language  
related to using the exhaust gas temperature to sense undesired  
operation conditions or undesired engine operation. At paragraphs  
81-82, Dr. Bower points out that, using exhaust temperature alone,  
it could be difficult to tell whether operation was normal or  
abnormal. I agree that using exhaust temperature alone is not  
adequate for diagnosing abnormal operation. However, the  
Detailed Description of the 738 Patent does not say the abnormal  
conditions will be determinedby exhaust gas temperature alone.  
Page: 68  
Instead, the Detailed Description, (at page 5, lines 21-30), uses the  
phrases “… sensed exhaust gas temperature may be indicative …”  
and “… sensed exhaust temperature also may be useful in  
indicating …” This distinction illustrates that the exhaust gas  
temperature is to be used as one factor along with the other  
measurements in determining when an abnormal operating  
condition exists that can be accommodated or alleviated by  
selecting an alternate ignition pattern.  
[My emphasis]  
[162] Surely, even a good calibrator would need to follow the lead of a mechanical engineer to  
produce the appropriate diagnosis. The issue is not so much that the good calibrator should be  
excluded as it is that the skills of the mechanical engineer with some experience must be part of  
the team. These skills cannot be replaced.  
[163] That same point was made by Dr. Checkel in his testimony-in-chief (Transcript, pp 160  
to 162). Dr. Checkel appears to be satisfied for the experienced person to set up engines controls.  
However, once something new appears, where repetition is not an asset, he seems to agree that  
the engineering degree is preferable:  
For that, it’s still useful to be a Cambridge-educated research  
experienced engineer. So I wouldn’t get the guy who has done a  
series of re-calibrations on new product lines for the same V8  
engine, but a different intake manifold every year. I wouldn’t ask  
him to do that without advising him,