Arctic Cat Inc. v. Bombardier Recreational Products Inc.

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)

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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

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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

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(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

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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

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lineage back to the 1940s with the first “autoneige” designed 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-centre” or “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 patterns” based 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 center” and ''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 Invention” in 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

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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

11.5

13.0

15.0

19.0

20.0

22.0

24.0

20

10

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

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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 dimensional” in 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

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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 patterns” must exist; out of that plurality of basic ignition patterns one will be selected

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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 claims” in 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.

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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

“technology” was 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 button” on 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. “EFI” designates electronic fuel injection, while “EXT” designates 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 “R” designates 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 system” selected 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 “confusing” Suzuki.

[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 “optimize” refers, 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, “optimize” referred 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 “technology” of selecting ignition patterns based on

measured exhaust gas temperature for better engine control was the 2001 model year 500 ZR.

The pipe sensor “technology” was 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,

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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 “system” which 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 temperature” is 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 “preheat” map 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

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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 “GPSTP” input 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

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map” are 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

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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

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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.

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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.

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[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

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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

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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

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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

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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.

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[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

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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.

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[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

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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

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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),

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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 art” is 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

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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

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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

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university degree with some years of experience but concludes that a substitute could be at least

ten years of “appropriate” experience. What constitutes that “appropriate” experience 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” means 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, 2^nd

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

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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.

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[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?

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[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).

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[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

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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 “determined” by exhaust gas temperature alone.

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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, but I would like him as part of

the team of people if I’m going to do it on a new project. He has

more experience on setting up engine controls and doing the tests

on the equipment that he uses than I do. I have more experience on

developing new equipment you need for measuring something that

just hasn’t been done before.

(Transcript, p162, lines 18 to 28 and p 163, line 1)

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[164] Finally, I was also concerned by what appeared to be the motivation behind the class as

defined by Dr. Checkel to qualify as a Posita. At paragraph 15 of his second report (P-60), Dr.

Checkel suggests that “[m]any of the practitioners of the art involved in this field would fall

outside of Dr. Bower’s definition and it is important to consider the common general knowledge

and state of the art from view-point of such a person.” It is not completely clear what is meant by

Dr. Checkel. If that means that the experience, information and methods available to solve

problems are added as the person with appropriate experience working on engine control projects

is part of a team, as proposed by Dr. Bower, that would evidently be acceptable. The common

general knowledge would be the accumulation of the common knowledge of the persons coming

from different disciplines that are complimentary. I am not convinced, however, that the

statement made by Dr. Checkel is not for the purpose of limiting the common general knowledge

and prior art. We should not define the Posita with a particular result in mind, with 20-20

hindsight. If there is a lack of knowledge to understand fully the patent, then it would be difficult

to conclude that he or she is in fact the patent’s intended audience. That seems to be a description

endorsed by the Supreme Court in Free World Trust v Électro Santé Inc, 2000 SCC 66, [2000] 2

SCR 1024 (Free World Trust):

The courts have traditionally protected a patentee from the effects