E. Misham & Sons, Inc. v. Supertek Canada Inc.
citation(s): 2014 FC 326 (F.C. per Hughes J.) online
copyright 2015 Donald M. Cameron, Bereskin & Parr LLP
 This is an action respecting the infringement and validity of some of the claims of Canadian Patent No. 2,779,882 entitled "Expandable and Contractible Hose". The subject matter is a garden hose which is quite compact when stored, but when water pressure is applied, the hose expands to about two and a half times its length and retracts to its original length when the pressure is removed. This hose has been promoted for sale, particularly through television spot commercials.
 For the reasons that follow, I find that the asserted claims of the patent are invalid for obviousness.
 The '882 patent contains 42 claims; but, by agreement between the parties, only claims 1, 15, 28, and 42 (through 32 back to 28) are at issue here in respect of both validity and infringement.
THE '882 PATENT IN DETAIL
 The '882 patent is entitled "Expandable and Contractible Hose" begins at paragraph 0001 with a statement of the "Field of the Invention":
 The present invention related to a hose for carrying fluid materials. In particular, a hose that automatically contracts to a contracted state when there is no pressurized fluid within the hose and automatically expands to an extended state when a pressurized fluid is introduced into the hose. In the contracted state the hose is relatively easy to store and easy to handle because of its relative short length and its relative light weight and in the extended state the hose can be located to where ever the fluid it required The hose is comprised of an elastic inner tube and a separate and distinct non-elastic outer tube positioned around the circumference of the inner tube and attached and connected to the inner tube only at both ends and is separated, unattached unbonded and unconnected from the inner tube along the entire length of the hose between the first end and the second end.
 At paragraphs 0002 to 0004 the patent provides a "Background of the Invention" in which a number of problems with current hoses are set out: hoses must be wrapped or coiled when not in use; fire hoses and the like can be stored flat but are impractical for homeowners. A solution is promised at paragraph 0004.
BACKGROUND OF THE INVENTION
 Hoses which are used to carry various fluids are known in the art. One of the problems encountered with these hoses is storage of the hose when it is not being used to transport the fluids. While current hoses are flexible and can be wrapped around a cylinder or drum for storage and transport, the length and width of the hose cannot be reduced. Another problem encountered with wrapped or coiled hoses is that they tend to kink when unwrapped or uncoiled. This problem is usually encountered by the average homeowner when using a garden hose to water their grass, plants, or wash their vehicles.
 Firefighters have a solution to the kinking problem. The hoses that they use collapse into a relatively flat state when the fluids are removed from the hoses. The hoses are then stored in layers which are formed by the hose being laid back and forth upon itself. When the firefighters use the hoses stored like this, they only have to pull at one end of the hose and it unfolds in a straight line without kinking. This is not a practical solution to a homeowner’s problem of the hose storage because garden hoses are relatively small in diameter, compared to fire hoses, and almost all garden hoses do not collapse into a flat condition when the water is emptied from the hose. Another problem with hoses known in the art is that they are heavy bulky and difficult to unravel when lying on the ground and also difficult to handle and drag around to the place where the fluid is needed both when they are filled with a fluid and are equally as difficult to handle and drag around when they are empty and needing to be returned to there original place of storage. Also, if the user does not have a device for winding the hose then he must try to place the hose on the ground in a way as to not entangle the hose within itself because if the hose does become entangled within itself this makes it difficult and frustrating to unravel the hose the next time the hose is used.
 Therefore, what is needed in the art is a hose that can be automatically contracted and reduced in length when not in use, and automatically expanded and extended to a length which is practical for use, and automatically returned to the reduced length when not in use. Also, a hose which is relatively light in weight will not kink when taken from storage and filled with fluid for use.
 From paragraphs 0005 to 00029 the patent lists some twenty-five prior patents providing a brief description as to each. A booklet containing all of the patents in full was filed in evidence at trial as Exhibit D-21. These patents describe a variety of hoses used to transport water, air and even gasoline. One of them, Ragner 6,948,527 is relied upon by the Defendants in arguing invalidity. Two other patents relied on by the Defendants, Many 1,220,661, and McDonald 6,948,527 are not listed. We do not know how the patents listed were located or by whom. Berardi, the named inventor, gave evidence that he did a prior art search before he turned the matter over to the patent attorney but we do not know if this list is the result of his search or otherwise. At paragraph 0065 the patent states that these patents are “indicative” of the prior art:
 All patents and publications mentioned in this specification are indicative of the levels of those skilled in the art which the invention pertains.
 At paragraphs 0030 to 0037 a "Summary of the Invention" is provided. I reproduce paragraph 0030:
SUMMARY OF THE INVENTION
 A hose which automatically expands longitudinally and automatically expands laterally upon the application of a fluid pressure within the hose is disclosed. The hose can automatically expand longitudinally up to six times its unexpanded or contracted length and can automatically expand laterally up to six times its unexpanded width. Upon release of the fluid pressure within the hose, the hose will automatically contract to a contracted condition. The hose includes an expandable inner tube made from an elastic material and a separate, distinct outer tube made from a non-elastic material, positioned around the outer circumference and length of the inner tube and secured to the inner tube only at first and second end and is unattached, unconnected, unbonded, and unsecured to the inner tube along the entire length of the inner tube between the first and the second end and is able to move freely with respect to the inner tube along the entire length of the inner tube between the first end and the second end.
 The drawings, Figures 1 through 8 are identified at paragraphs 0038 through 0045 and can be found at the last several pages of the patent.
 Commencing at paragraph 0046 through to paragraph 0063 a detailed description is provided for a hose. The experts seem to agree that the description is adequate such that a hose of this type can be constructed. However the patent makes it clear at paragraphs 0037, 0046 and 0066 and 0067 that the description is not intended to be limiting and that changes can be made. I repeat those paragraphs:
 Other objects and advantages of this invention will become apparent from the following description taken in conjunction with any accompanying drawings wherein are set forth, by way of illustration and example, certain embodiments of this invention. Any drawings contained herein constitute a part of this specification and include exemplary embodiments of the present invention and illustrate various objects and features thereof.
DETAILED DESCRIPTION OF THE INVENTION
 While the present invention is susceptible of embodiment in various forms, there is shown in the drawings and will hereinafter be described a presently preferred, albeit not limiting, embodiment with the understanding that the present disclosure is to be considered an exemplification of the present invention and is not intended to limit the invention to the specific embodiments illustrated.
 It is to be understood that while a certain form of the invention is illustrated, it is not to be limited to the specific form or arrangement herein described and shown. It will be apparent to those skilled in the art that various changes may be made without departing from the scope of the invention.
 One skilled in the art will readily appreciate that the present invention is well adapted to carry out the objectives and obtain the ends and advantages mentioned, as well as those inherent therein. The embodiments, methods, procedures and techniques described herein are presently representative of the preferred embodiments, are intended to be exemplary and are not intended as limitations on the scope. Changes therein and other uses will occur to those skilled in the art which are encompassed within the invention and are defined by the scope of the appended claims. Indeed, various modifications of the described modes for carrying out the invention which are obvious to those skilled in the art are intended to be within the scope of the following claims.
 Two particular comments have to be made in respect of the description given in the '882 patent. One has to do with the restrictor the other has to do with fluid.
 The evidence of the experts all is that certain pressure level must be maintained in the hose so that the hose remains in an expanded state when in use.
 The evidence is that, without any restriction at the end of the hose there would be insufficient pressure as to retain the hose in its expanded state. Fluid, such as water entering the hose from a faucet outside the house generally emerges at about 60 psig and falls off to zero psig at the end of a hose without restriction. A nozzle is one kind of restriction, depending on the flow through the nozzle a certain level of pressure is maintained in the hose at or near the nozzle so as to maintain the hose in an expanded state. As the nozzle is opened under the pressure so maintained drops.
 The restrictor is described at paragraph 0054 of the patent as anything that restricts the flow of the fluid within the hose:
A separate flow restrictor 37 is illustrated with coupler 16. Other types of flow restrictors, such as hose nozzles, sprayers, etc. can also be employed. Anything that restricts the flow of the fluid within the hose can be employed.
 The other matter that must be mentioned is the use of the word “fluid” in the patent. While the claims at issue are confined to water, the patent makes it clear that what is being described is a hose that can carry a broad range of fluids. At paragraph 0064 the patent makes this clear:
 The preferred embodiment of the present invention utilizes water to fill and expand the hose 10. However, other fluids can also be employed with the present invention. For example gases can be introduced into and transported through the hose 10. Liquids, which are not corrosive to the inner tube 14 can also be employed in the present invention. Flowable semisolids can also be employed with the present invention. The temperatures of the fluids employed in the present invention are lower than temperatures which will alter the physical and chemical properties of the materials used in the hose of the present invention. Also, because the inner tube is elastic is can expand if the water within the tube freezes. For example, if a garden hose of the present invention were left outside in the winter, the water contained therein would freeze. Normal garden hoses would split, but the present invention would expand when the water turns to ice because the inner tube is elastic.
 In summary, while the patent particularly describes a garden hose carrying water, the description is at pains to state that other fluids such as “gases” can be equally used and that “anything” that serves to restrict can be used. The patent is at pains to say that the description provided is illustrative and that a “person skilled in the art” can make “various changes” without departing from the scope of the invention.
 Claim 42 is written in dependent form such that it incorporates the wording of some of the earlier claims. The Plaintiffs are relying upon claim 42 as it depends on claim 32 which in turn depends on claim 28. The Defendants are attacking the validity of the claim as so written. Claim 42 as it depends on claim 32 as it depends on claim 28 can be written as follows:
Claim 42. A water hose assembly comprising: an outer tube assembly formed from a soft nonelastic based control material housing an inner tube member constructed from an elastic based material, said outer tube assembly and said inner tube member each having a first end attached together by a first coupler and a second end attached together with a second coupler wherein said second coupler is a male hose connector attached to said outlet of said inner tube member and said second end of said outer tube assembly wherein a water flow restrictor is placed within said male coupling whereby attaching said hose assembly in a contracted state to pressurized water allows water to flow through said inlet to said outlet, said water flow restrictor creating an increase in water pressure causing an expansion of said inner tube member thereby extending said outer tube to said expanded state as allowed by said control material.
 The last piece of prior art to be considered is US patent 6,523,539 (the '539 patent or McDonald patent) which was granted, hence published, February 25, 2003. This patent is entitled "Self-Elongating Oxygen Hose for Stowable Aviation Crew Oxygen Mask." In the "Field of Invention" at column 1 the following statement is made:
More particularly, the invention is concerned with such assemblies [aircraft supplemental oxygen masks] wherein a self-elongating gas hose which, when pressurized, axially expands to a significant extent.
 It is important to note that the evidence that I have, and I expect Birss J. in the United Kingdom trial did not have, is that a person skilled in the art would have found McDonald. Haubert at paragraph 27 of his first Report, Exhibit D44 says that a skilled person would search for, read and understand patents in the field of hoses:
27. The Skilled Person would have experience specifying appropriate hoses for particular uses and applications, and would have some ability to select from appropriate materials for a given hose application, and to search for, read and understand patents in the field of hoses. So, for example, when designing a hose a Skilled Person would be likely to refer to catalogues and patents to learn about hose existing hoses have been designed and manufactured.
 Haubert continues at paragraph 143 of his first Report, Exhibit D44 says:
I was able to locate the '539 patent in a search for "expandable hoses."
 Khubani testified that when he became aware of the Plaintiffs' XHose product he asked his attorneys to do a patent search. They came up with McDonald. They clearly did not come up with the Canadian patent application for the '882 or any patent application elsewhere since, at the time, the patent application had not yet been made public. Instructions were then given to Telebrand's manufacturer in China. They came up with the products at issue.
 In brief, McDonald was not only findable but found by those interested in expandable hoses. There is no evidence to the contrary.
VALIDITY - OBVIOUSNESS HAVING REGARD TO THE PRIOR ART AND IN PARTICULAR THE McDONALD PATENT
 The Supreme Court of Canada in Sanofi-Synthelabo Canada Inc. v Apotex Inc., 2008 SCC 61 and subsequent decisions in this Court and the Federal Court of Appeal such as Pfizer Canada Inc. v Apotex Inc., 2009 FCA 8; Apotex Inc. v Sanofi-Aventis Canada Inc., 2013 FCA 186 and Novartis Pharmaceuticals Canada Inc. v Cobalt Pharmaceuticals Co., 2013 FC 985 have identified the approach to be taken in determining whether a claimed invention was obvious. I re-iterate that obviousness is not a subjective test but rather is an objective test; the question is not whether the inventor thought that he or she made an invention rather the test is whether the notional skilled person would have thought that the invention was obvious or not.
 In determining obviousness the Court must:
a) Identify the national person skilled in the art;
b) Identify the relevant common general knowledge and prior art forming the state of the art;
c) Identify the inventive concept of the claims at issue;
d) Identify what, if any, differences exist between the state of the art and the inventive concept;
e) With respect to those differences was a degree of inventiveness required to arrive at the claimed inventor, questions may be asked such as:
Was it more or less self evident?
What effort, routine or not, was required?
What motive was there to find a solution?
 I have already identified the notional person skilled in the art.
 I have to some degree already reviewed the state of the art; it included the Roll A Hose which was a flat garden hose made up of a rubber inner tube and a non-elastic outer tube which was adapted to be rolled up flat on a reel. One end would be attached to a water source such as a faucet outside the house. The other end had a nozzle, sprinkler or the like attached. When the water was turned on the hose expanded radially but not axially, that is, it got fatter but not longer.
 The art also included the Ragner patent and its exemplification in the Micro Hose. That hose was formed using a long coiled spring sandwiched between two expandable layers of tubing. When water pressure was applied the hose grew longer, but not fatter, as the spring stretched. The hose returned to its original length when the water was turned off.
 Then we come to the McDonald patent. On the evidence before me, as previously set out, that patent would have been located by the notional person skilled in the art.
 The description set out in specification of the McDonald patent includes the following:
Column 1, lines 8 -18:
BACKGROUND OF THE INVENTION
1. Field of the Invention
The present invention is broadly concerned with supplemental gas assemblies such as supplemental oxygen units typically used in aircraft for supplying supplemental oxygen to aircraft crew in the event of a cabin depressurization or other emergency. More particularly, the invention is concerned with such assemblies wherein a self-elongating gas hose assembly is employed which, when pressurized, axially expands to a significant extent. This gives the user a relatively long effective hose length, while avoiding the problems of handling and stowage typical with conventional hoses.
Column 1, line 54 to Column 2, line 11:
SUMMARY OF THE INVENTION
The present invention overcomes the problems outlined above and provides supplemental gas (e.g., oxygen) assemblies including a mask adapted to fit over at least the nose and mouth of a wearer, with a flexible hose coupled with the mask and the hose are received within a stowage box. In accordance with the invention, the hose assembly comprises a length-expandable hose which, when a user grasps the mask and pulls it from the stowage box, will inflate and axially expand to a deployed length greater than the relaxed length thereof. In this way, the stowage requirements for the hose assembly are reduced, or alternately a hose having a substantially longer effective length can be used in a standard stowage box designed to accommodate a much smaller length conventional hose assembly.
In preferred forms, the hose assembly includes an inflatable elastomeric inner tube together with an exterior sheath formed of woven or braided material which in use restricts the radial expansion of the inner tube upon pressurization thereof, while allowing the tube to expand axially. The hose assemblies may have a deployed length of at least about 1.5 times the relaxed length thereof, and more preferably greater than about two times the relaxed length.
Column 2, line 61 to Column 3, line 14:
In more detail, the tube 30 may be formed of an elastomeric material, and particularly those selected from the group consisting of silicone rubber materials. The sheath on the other hand is preferably formed of "NOMEX (a synthetic resin fiber material commercialized by DuPont)" flexible fabric; the sheath could also be formed of other suitable materials such as KEVLAR (a synthetic resin fiber material commercialized by DuPont), NYLON (polyamide fiber), or monofilament. The sheath 36 has a length which is two to three times the length of the inner tube 30. As best seen in FIG. 2, in the relaxed condition of the assembly 14, the sheath 36 is in a gathered or shirred condition along the length of the unexpanded tube. However, as depicted in FIG. 3, when a pressurized gas such as oxygen is delivered into the tube 30, it expands in both radial and axial directions. However, the presence of the sheath 36 serves to inhibit and restrict the extent of radial expansion of the tube 30, but permits axial elongation thereof. Preferably, the deployed length of the hose assembly 14 is at least about 1.5 times the relaxed length thereof, and more preferably at least about two times the relaxed length.  Figure 2 of McDonald shows the hose in a contracted state with the outer hose wrinkled up over the inner hose; Figure 3 shows the hose in an expanded state:
 For comparison I show Figures 1, 2, 3 and 4 of the '882 patent also showing the hose in a contracted state with the outer hose wrinkled up over the inner hose (Figures 1 and 2) and in an expanded state (Figures 3 and 4):
 The differences between what is described in the McDonald patent and the '882 patent include:
The hose in the McDonald patent is intended to be used in conjunction with an auxiliary oxygen supply unit in an aircraft; the '882 patent hose is used to convey water such as in a garden hose.
The McDonald hose conveys oxygen or air, the '882 patent describes the conveyance of fluid, including gases such as air, but claims only water.
The McDonald hose has a regulator and a gas mask affixed to the free end, the '882 patent claims a restrictor.
 These differences become almost irrelevant when reading the description of the '882 patent which I have already reviewed in detail earlier. The '882 patent description tells the reader that the hose can convey "fluid" including water, gases and even flowable solids. The '882 patent also says that "anything that restricts the flow of fluid within the hose can be employed" as a restrictor.
 The Plaintiffs expert, Kuutti was in my opinion, pushing it too far when he says that a person skilled in the art would not readily see that the McDonald gas mask hose could be adapted for use as a water hose - it could, and too far when he said that the regulator and gas mask assembly was not a restrictor- it was.
 I prefer the evidence of Haubert in this regard. I repeat part of his testimony at trial as set out in Volume 4 of the transcript. At pages 648 and 649 of his direct testimony he gave the following answers:
Q. And again in summary, what is the
relevance of the McDonald patent in your view?
A. The McDonald patent is an example of
a hose that expands and contracts. It expands with fluid
pressure and it maintains its length during use.
Q. And what about the construction of
A. It's a flexible tube. It's separate
from the cover, which is inelastic.
Q. And what's the flexible tube made
Q. What comment do you have about the
fact that the hose in the McDonald patent is used in the
context of an oxygen mask for transporting oxygen?
A. Its method of operation is the same.
The pressure drives it to expand.
Q. What structures, if any, in the
McDonald patent would a skilled person recognize as a flow
A. The regulator is one and the other is
28 the end fitting that the regulator attaches to.
Q. Why would they see those as flow
A. The end fitting, as I described
before, has to be smaller than the ID of the --- or the
inside diameter of the hose and the regulator is also a
Q. What in your opinion would the
skilled person make, of the fact that the McDonald hose is
shown as being used on an airplane?
A. What's important is the expansion is
driven by pressure. No matter how long it is or what the
fluid is, it still expands when it's pressurized.
 At page 691 of the transcript he gave the following answers on cross-examination:
Q.Have you seen a physical embodiment
of the McDonald patent?
A.I would say that this is the same as
the '882 hose actually.
Q. I'm sorry, you have to speak up?
A. I would say it's the same as the '882
Q. So you're saying that you've seen an
embodiment of McDonald, it's there in the '882, or it's
there in the Pocket Hose? But you've not seen an
embodiment of McDonald in the cockpit of an airplane, have
Q. And this patent is directing the
person of skill in the art to imagine that the environment
for this invention to be the cockpit of an airplane?
A. The McDonald patent is a hose patent.
It's used --- happens to be used in the cockpit of an
airplane with a breathing mask.
Q. Nowhere in the patent of the McDonald
--- nowhere in the McDonald patent does it suggest that this
invention can be used anywhere else than in --- at the
cockpit of an airplane, isn't that right?
A. That's correct.
 At page 695 of the transcript he gave the following answers on cross-examination:
Q. And the breathing apparatus, the mask
which has this other regulator, it's a sophisticated piece
A. It's a flow restrictor.
Q. I said it's a sophisticated piece of
A. Not really. It's a regulator.
Q. Well, do you know whether any person
can calibrate and maintain regulators for firefighters or
for scuba divers or people like that?
A. Calibration requirements doesn't mean it's a sophisticated piece of equipment. It means you need to keep it calibrated because it's an important piece of equipment.
 I am satisfied that the skilled person would readily find and adapt the McDonald patent hose for use as a water hose such as a garden hose. That water hose would have a flexible inner tube and a constraining outer tube. The tubes would be connected only at the ends. One end would have a connector for a pressure source such as water; the other would have a restrictor. This adaptation would be, in my opinion, readily accomplished by the person skilled in the art.
 There are a number of secondary factors that have been raised. There was motivation to create a simple, inexpensive garden hose that could be promoted in the direct retail market by television advertising and the like. It was a commercial success. But motivation and success alone do not mean that there was, in the objective sense, an invention. Khubani testified to that when he referred to items such as amber sunglasses and dust mops that had been available for years but were great successes in the direct retail environment.
 I find that the claims at issue, 1, 15, 28 and 42 were obvious having regard to the state of the art and, in particular, the McDonald patent.
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