Justice Barnes released the trial decision in ABB Technology AG et al. v. Hyundai Heavy Industries Co., Ltd., 2013 FC 947, a patent infringement action relating to medium voltage gas-insulated switchgear. The two patents at issue were held to be obvious after contentious claim construction.

The decision, ABB Technology AG et al. v. Hyundai Heavy Industries Co., Ltd., 2013 FC 947 (PDF) related to two patents, and certain switchgear assemblies sold to BC Hydro by Hyundai Heavy Industries. The proceeding took approximately 2 years to trial, with the Statement of Claim filed in April 2011 and the trial held in June 2013 (T-735-11).

• 2,567,781 – “Gas-Insulated Switchgear Assembly Having a Switch-Position Inspection Window”
• 2,570,772 – “Gas-Insulated Medium-Voltage Switchgear”

781 Patent

Claim Construction (paras 25 to 49): One point in contention regarding the ‘781 patent was meaning of “a moveable switch-contact element”:

[37] One important point of construction controversy that arises from the evidence is whether the reference in the claims to “a moveable switch-contact element” is limited to a sliding contact switch or would be understood to include what is conventionally known as a knife blade switch. ABB argues that the patent claims are directed at the problem of viewing sliding contact switches for which the use of windows was apparently unknown. The Defendant says that the term would be understood by a person of skill to include knife blade switches. This difference is significant because, as ABB acknowledges, the prior art disclosed the use of viewing windows in medium voltage and high voltage GIS to observe the positions of knife blade switches.

Justice Barnes rejected ABB’s argument on the basis that patent’s description does not differentiate between ‘linear-travel switches’ and ‘knife switches’ and instead employed a generic reference to a moveable contact.

Obviousness (para 50 to 60): Based on the construction of the claims of the ‘781 patent, Justice Barnes found that the patent was obvious, the “problem of viewing switch positions in GIS applications had been solved” [54] in the prior art.

Infringement (para 61 to 68): Certain ‘guide pins’ in the devices, it was argued by ABB, could be used as visual indicators required in the claims but the Court stated that “No user of this system, mindful of the dangers involved, would use these guide pins as positioning references. They are not designed for that purpose, they are not promoted by Hyundai to be used in this way and they are inadequate and unreliable proxies for determining switch positions. [at 66]”.

772 Patent

The Court described this patent as addressing “the problem of adapting a medium voltage GIS assembly to comply with a North American market imperative that requires grounding of the outgoing section of the circuit (i.e. below the circuit breaker).” [at 70] ABB argued that “the isolator on the outgoing section side and the ground conductor on the outgoing section side” refer to a single component [76]. The Court rejected this argument on the basis that the description clearly refers to “two additional devices” [78].

The Court suggested that the inventors “likely misunderstood the North American grounding requirements” when drafting the application:

The interpretation of patent claims should not be influenced by errors of this magnitude. The person of skill would assume the correctness of the inventor’s material assertions and would interpret the claims accordingly. Here the inventor represented that cable grounding was required and included that component without reservation into Claim 1. If cable grounding was not an essential feature of Claim 1 there was no need to mention it.[81]

Obviousness (para 82 to 98): The Court summarized the claimed solution of putting all the switchgear in a single compartment as a “well-known design expedient”. [92]

Infringement (para 99): The Court found that even if the patent was valid, there was no infringement.

Disposition (para 100 and 101): The Court declared the patents invalid and dismissed the plaintiffs’ action. The Court will hear submissions on costs later.