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Patent Infringement Claim Dismissed after Summary Trial - Cascade Corporation v. Kinshofer GmbH et al., 2016 FC 1117.

October 18, 2016

By Alain Alphonse


This case is an example of how the Federal Court’s summary trial rule can be used to allow the Court to construe a patent and adjudicate a patent infringement claim efficiently and effectively in the face of a genuine issue of claims construction. The case involved a patent for a “quick coupler” for attaching buckets and other implements to the arm of an excavator. The quick coupler at issue includes a safety lock for retaining the front pin of the implement in addition to a main hydraulic locking mechanism for locking the back pin of the implement.  At issue was the meaning of the limitation that the safety lock be released “using a hydraulic circuit which operates independently of the hydraulic locking mechanism of the mounting portion.”

Through cooperation between counsel, a summary trial procedure and schedule were agreed upon and submitted to the Court for approval after documentary discovery but before any oral examinations for discovery were conducted. Issues regarding damages were bifurcated. The Court fully accommodated the parties requested procedure and schedule:

  • The procedure and schedule provided for the fact evidence to be adduced by way of affidavits in chief and cross-examinations out of Court.  As the fact witnesses were located in Germany, the United States, Australia and New Zealand, in order to avoid having counsel travel around the world, the cross-examinations were conducted by video-conference over fast video links and transcripts of the cross-examinations were filed for use on the summary trial.
  • The expert evidence was adduced at a two-day hearing before Justice Southcott at which the expert witnesses explained their expert reports by way of viva voce testimony in chief and were cross-examined.  The expert reports were also taken as read.
  • A few weeks after the two-day hearing, written arguments were exchanged and filed, and a week later the parties returned to make oral argument.

The agreed upon procedure allowed Justice Southcott to adjudicate the dispute by way of summary trial:

[35]     In a motion for summary trial, Rule 216(6) provides that, if the Court is satisfied that there is sufficient evidence for adjudication, regardless of the amounts involved, the complexities of the issues and the existence of conflicting evidence, the Court may grant judgment either generally or on an issue, unless the Court is of the opinion that it would be unjust to decide the issues on the motion. In determining whether summary trial is appropriate, the Court should consider factors such as the amount involved, the complexity of the matter, its urgency, any prejudice likely to arise by reason of delay, the cost of taking the case forward to a conventional trial in relation to the amount involved, the course of the proceedings, and any other matters that arise for consideration (see Louis Vuitton Malletier S.A. v Singga Enterprises (Canada) Inc., 2011 FC 776).

[36]     Cascade argues that the present matter is one suitable for summary trial, given that the amount involved (while not yet quantified) is expected to be nominal because Kinshofer’s X-LOCK product has only recently entered the Canadian market. Cascade submits that an early decision through summary trial will adjudicate the dispute prior to further market penetration and that the cost of taking this matter to trial as a regular action that could well exceed the amount of any damage or profit claim that would have accrued to date. Most significantly, the parties have worked cooperatively to reduce complexity and narrow the issues in this dispute to focus largely on the construction of a single element of claim 1 of the Patent. Particularly given that, with the exception of the issue of inducement or procurement of infringement, the parties agree that this matter is one suitable for summary trial, I have little difficulty agreeing with this position.

Construing claim 1, the Court found it was an essential element of the claim that the hydraulic circuit which released the front pin operated independently of the back pin hydraulic locking mechanism. Furthermore, the court found that the back pin hydraulic locking mechanism included the mechanical components of the back pin lock and the hydraulic components that actuated these mechanical components.

Weighing the evidence, including the evidence of the experts and the wording of the patent specification itself, the Court concluded that Kinshofer’s coupler did not infringe the patent, as Kinshofer’s coupler employed a hydraulic circuit to release the front pin lock that did not operate independently of the back pin hydraulic locking mechanism.

Companies doing business in Canada have a strong interest in seeing patent litigation in Canada conducted as efficiently and effectively as possible, and the Federal Court and the patent bar in Canada are working toward this goal.  This decision will provide support for those parties who wish to use the Federal Court’s summary trial procedures to obtain rulings on the merits in suitable patent infringement cases in Canada.

Adam Bobker and Christopher Bury of Bereskin & Parr LLP acted for Kinshofer in this case.

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Alain Alphonse Alain Alphonse
B.A.Sc. (Elec Eng.), J.D.
514.871.2912  email Alain Alphonse