ONTARIO
SUPERIOR COURT OF JUSTICE
COURT FILE NO.: CV-08-00355689
DATE: 20150813
BETWEEN:
ORTHOARM INCORPORATED
Plaintiff
– and –
GAC INTERNATIONAL, LLC
Defendant
Gary Luftspring and Andrea Sanche, for the Plaintiff
J. Alan Aucoin and Tariq Remtulla, for the Defendant
HEARD: January 12,13,14 and 16, 2015
REASONS FOR JUDGMENT
JUSTICE W. MATHESON
[1] This action arises from an alleged breach of the obligation to pay royalties under a Licence Agreement. The plaintiff OrthoArm has a patent on a type of bracket used for orthodontic braces. The patented self-ligating bracket represented a major step forward in its time. Since 2000, the defendant GAC marketed and sold orthodontic brackets covered by the OrthoArm patent under a Licence Agreement with OrthoArm.
[2] It was a profitable relationship for both parties. However, OrthoArm alleges and GAC denies that new orthodontic brackets marketed and sold by GAC commencing in 2007 – the In-Ovation L, In-Ovation LMTM and In-Ovation SL Buccal Tubes (the “Accused Products”) – are also covered by OrthoArm’s patent. If they are, royalties are payable under the Licence Agreement between them.
[3] There is a related action, Court File No. CV-14-497387, which is at an early stage (the “GAC action”). As a result of a motion to consolidate the GAC action with this action, Justice Corbett made an order, dated October 23, 2014, that the trial of this action would address certain issues and other issues would be determined at a later stage. Pursuant to that order, the issues being determined now are as follows:
(a) whether the defendant’s In-Ovation SL Buccal Tube (Molar) and In-Ovation L (Lingual) brackets are covered by the plaintiff’s patent, US Patent No. 5,630,715, and are therefore covered by the Licence Agreement between the parties;
(b) the amount of the sales made by the defendant of the In-Ovation SL Buccal Tube (Molar) and In-Ovation L (Lingual) brackets, on which royalty payments should have been made to the plaintiff, if covered by the patent and therefore the Licence Agreement;
(c) the amount of punitive and aggravated damages that should be awarded, if any, relating to the decisions in (a) and/or (b); and,
(d) costs of this proceeding as the trial judge sees fit.
[4] Justice Corbett ordered that the issue of whether the royalty payments owing, if any, should be 5% or 10%, and the issue of whether the defendant is entitled to set-off amounts owing to the plaintiff, will be determined along with the other issues raised by and in the parties’ pleadings in the GAC action. The question of whether the GAC action should be tried by the same judge as this action, or another judge, was left to the trial judge in this action.
Patent at issue
[5] OrthoArm is the owner of United States Patent 5,630,715 (the “715 Patent”) entitled “Orthodontic Bracket with an Engagement Mechanism for Retaining an Archwire”.
[6] An orthodontic bracket is a device that is attached to a patient’s tooth to hold a wire called an archwire that conforms to the dental arch in the patient’s mouth. The brackets and archwire combine to exert force on the teeth in order to align the teeth.
[7] The 715 Patent relates to certain orthodontic brackets that have a mechanism for retaining an archwire without the need for elastic bands. At the time of the invention, elastic bands were commonly used to secure the archwire to each bracket on each tooth. Problems with the use of elastic bands included frequent need for replacement, lengthy patient chair time, counter-productive friction and increased attraction of contaminating substances that in turn increased the chances for the transmission of disease and decreased overall oral hygiene.
[8] Dr. John Voudouris is the inventor of the invention captured in the 715 Patent. He is a long-time practicing Toronto orthodontist. He also teaches in the Faculty of Dentistry at the University of Toronto and elsewhere, publishes scientific articles and has a number of other patented inventions related to orthodontic devices. Dr. Voudouris testified at trial.
[9] The 715 Patent was issued to Dr. Voudouris on May 20, 1997, and was subsequently assigned in its entirety to his company, OrthoArm. There is no corresponding Canadian patent. In the ordinary course, the 715 Patent expired on May 20, 2014.
Events giving rise to action
[10] Dr. Voudouris built the first models of his self-ligating bracket out of wood in his garage. He then approached a company called American Orthodontics to produce and market a product based upon his invention. However, after initial development work, American Orthodontics decided not to proceed.
[11] Dr. Voudouris next approached GAC. GAC is a New York corporation now owned by Dentsply International, which is a Delaware corporation. Most of the orthodontic products distributed by GAC are supplied, designed and/or manufactured by Tomy Incorporated of Japan.
[12] Ultimately, OrthoArm and GAC entered into an agreement effective December 1997 (the “Licence Agreement”). The product, called “In-Ovation”, was launched in 2000.
[13] Early on, both OrthoArm and GAC became involved in litigation with American Orthodontics with respect to its development costs. As a result of the resolution of that litigation and related disputes, OrthoArm and GAC entered into another agreement dated July 19, 2001 (the “Settlement Agreement”).
[14] Pursuant to the Licence Agreement, as confirmed in the Settlement Agreement, OrthoArm licensed to GAC the worldwide right to manufacture, have manufactured, use and sell the “Licensed Product”, including the right to grant sublicenses. “Licensed Product” was defined to include all products covered by the 715 Patent.
[15] Under the Licence Agreement, OrthoArm was entitled to receive regular sales reports and be paid royalties based on net sales. Dr. Voudouris testified at trial that about 32 million brackets were sold under the Licence Agreement for which over $50 million in royalties were paid. These brackets were called In-Ovation R and In-Ovation C brackets.
[16] As early as 2003, Dr. Voudouris suggested to GAC that they manufacture and sell a lingual and buccal tube or molar bracket, based on his design. Over the years, he expressed an interest in designing such a bracket based on the 715 Patent.
[17] In or around 2005, unbeknownst to Dr. Voudouris, GAC and Tomy began working on the development of lingual and buccal tube molar brackets. GAC did not involve Dr. Voudouris in the design or development of what became the Accused Products.
[18] GAC began selling the Accused Products in 2007. Dr. Voudouris became aware of the Accused Products at that time.
[19] After learning about the Accused Products, Dr. Voudouris contacted GAC. He expressed concern that these brackets were simply an extension of his invention. GAC was not paying him with respect to these products, claiming that they were developed by Tomy in accordance with another patent held by Tomy – U.S. Patent 6776613.
[20] There was then lengthy correspondence between the parties’ U.S. counsel with respect to the Accused Products’ alleged violation of the 715 Patent. The issue could not be resolved and this action was commenced.
[21] One of the issues for this trial, issue (b), is no longer disputed. The parties have stipulated the net sales of the Accused Products in the relevant period. They total $15,058,450.42, as follows:
• In-Ovation L sales of $5,521,674.61
• In-Ovation LMTM sales of $3,502,312.84
• In-Ovation Buccal Tubes sales of $6,034,462.97
[22] Trial witnesses included not only Dr. Voudouris, but also John Piervencenti and Steven Jenson of Dentsply. Since the 715 Patent is a U.S. patent, the trial evidence also included expert evidence regarding U.S. patent law. Two expert witnesses were called: Marguerite Ethier, called by the plaintiff, and Lawrence Goodwin, called by the defendant. Both experts are well-qualified and they agreed on the relevant US patent law principles. They disagreed, however, on the proper construction of the 715 Patent, and the resulting application of the 715 Patent to the Accused Products.
Relevant U.S. patent law
[23] A patent is a grant of a statutory monopoly. The “claims” set out in the patent define the scope of that monopoly. In this case, the 715 Patent contains 44 claims. Of those claims, the plaintiff alleges that the Accused Products are covered by the following independent claims: 1, 4, 12, 14, 20, 29, 31, 32 and 33. If any of the Accused Products are covered by even one of these claims, that product is a “Licensed Product” under the Licence Agreement and royalties are payable.
[24] The analysis of whether the Accused Products are covered by the 715 Patent is the same as the analysis of whether the Accused Products infringe that patent. As a result, both parties focused on the legal principles under which infringement is determined under U.S. law.
[25] Patent infringement is defined in 35 U.S.C. §271(a) as follows:
Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.
[26] Only “claims” are infringed, not the patent as a whole. Infringement occurs when every element of a claim (or its equivalent) is found in an accused product. Conversely, if one constituent element within a claim is missing from an accused product, the claim is not infringed.
[27] Infringement is determined by comparing the patent claims (not the patentee’s commercial embodiment of the product) to the accused product. The burden of proving patent infringement rests on the patentee.
[28] Patent claims can be infringed in one of two ways – either literally or under the “doctrine of equivalents.” In this case, the plaintiff alleges literal infringement. A court will find literal infringement when each and every element of a claim is found in the accused product. In contrast, the doctrine of equivalents allows a court to find a party liable for patent infringement even though the infringing product does not fall within the literal scope of a patent claim. It applies where the accused product performs the same function as the product of the claim, in substantially the same way, to yield substantially the same result.
[29] Prior to conducting an infringement analysis, the claims at issue must be construed. Under U.S. law, claim construction is a matter of law.
[30] In the U.S., claim construction is typically done in a “Markman hearing”, a pre-trial hearing during which the judge hears both evidence and submissions from the parties on the appropriate meanings of the relevant words used in the claims of the patent and reaches a decision about the proper construction of the claims at issue. The application of the properly construed claims to the accused product then proceeds as a separate step, for the trier of fact. In the U.S., the trier of fact may be a jury.
[31] The parties agree that in this action, I am called upon to undertake the analysis that would be done at a Markman hearing, reach a decision about the construction of the relevant claims and then apply the properly construed claims to the Accused Products to determine whether there is infringement.
[32] With respect to the proper construction of the claims at issue, the parties agree that the opinions of the two expert witnesses about construction are in the nature of the submissions they would make to a U.S. judge, as if they were the counsel appearing at a Markman hearing. Thus, although those submissions are introduced as expert evidence, it is ultimately for me to construe the claims having regard for counsels’ submissions.
[33] The claims are construed with respect to intrinsic evidence, which consists of the patent itself and the prosecution history of the patent. Intrinsic evidence also includes any “prior art” or background material that is referred to in the patent. Extrinsic evidence may also be considered, but is of lesser importance. Extrinsic evidence may include inventor testimony, dictionaries and expert evidence with respect to the meaning of claim terms.
[34] The legal principles that govern the construction of a patent claim term are well-settled:
(i) the court must follow, first and foremost, the words of the patent claim itself;
(ii) the court may neither add words to nor subtract words from the claims in the process of construing them;
(iii) there is a presumption that the words of a claim carry their ordinary and customary meaning, unless the patentee demonstrates a clear intent to deviate from that meaning or otherwise disavow a claim’s scope;
(iv) the ordinary and customary meaning is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention;
(v) in some cases, the ordinary meaning of claim language as readily understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in those cases involves little more than the application of the widely accepted meaning of commonly understood words;
(vi) the claims must be read in view of the “specification,” which is the entirety of the patent;
(vii) if the claim term is unambiguous and no further inquiry is required, the claim construer need not look to the specification, but it is common practice to do so in any event;
(viii) the specification is highly relevant and usually dispositive – it is the single best guide to the meaning of a disputed term;
(ix) the importance of the specification derives from its statutory role – the specification should describe the invention in full, clear and concise terms sufficient to enable a person of skill in the art to make the invention; and,
(x) the figures form part of the specification and would be considered as part of the construction process, though they will not provide a definition.
[35] Certain of the claim elements in the 715 Patent are drafted in “means-plus-function” form. A claim element that contains the word “means” and recites a function is presumed to be drafted in means-plus-function form. Claim elements drafted in means-plus-function form must be construed under 35 U.S.C. § 112(f), which states:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”
[36] Therefore, the literal scope of a properly construed means-plus-function limitation does not extend to all means for performing a certain function. Rather, the scope of such claim language is limited to the structure disclosed in the specification and its equivalents.
[37] The specification is usually the primary basis for construing claims. It allows the court to apply common sense to its construction. The court must “strive to capture the scope of the actual invention, rather than strictly limit the scope of claims to disclosed embodiments or allow the claim language to become divorced from what the specification conveys is the invention”: Retractable Technologies, Inc. v. Becton, Dickinson and Company, 653 F.3d 1296, 1305 (Fed Cir. 2011).
[38] In this case, there is no particular importance assigned to the prosecution history. With respect to extrinsic evidence, Dr. Voudouris has skill in the art and he testified about the meaning of certain terms from that standpoint.
[39] Lastly, the 715 Patent has previously been construed in a Markman hearing: Orthoarm, Inc. v. Forestadent USA Inc. at al, Case No 4L06-CV-730 CAS. However, different claim terms were at issue and the decision is therefore of limited relevance.
Discussion
Issue (a) – whether covered by Licence Agreement
[40] In response to the plaintiff’s allegation that the Accused Products are covered by certain of the claims in the 715 Patent, the defendant has identified four elements of those claims that it submits are not found in the Accused Products. Again, if even one element of a claim is not found in an accused product, the product does not infringe that claim.
[41] The four elements that are alleged to be points of distinction are as follows:
(1) an occlusal-gingivally extending opening;
(2) a slidable locking shutter;
(3) a locking recess in the labial face; and,
(4) an archwire slot in the labial faces of the tie wings.
[42] By way of example, claim 29 is as follows, with the disputed elements underlined:
An edgewise orthodontic bracket for attaching an archwire to a tooth comprising: a bracket member including a base for attachment to the tooth, said base having an occlusal-gingivally extending opening, at least two sets of spaced apart occlusal and gingival tie wings extending from said base, each set of tie wings having a labial face which has a centrally disposed mesiodistally extending archwire slot segment, the segments of the tie wing sets combining to define an archwire slot of the bracket member for receiving the archwire, and one of the occlusal or gingival tie wings of each set having a notch in the labial face, the other of the occlusal or gingival tie wings having a deflection recess slot, wherein said deflection recess slots are rectangularly shaped; and a slidable locking shutter coacting with the bracket member to selectively open and close the archwire slot for placing and locking an archwire in the slot and unlocking and removing the archwire from the slot, said shutter including a guide bar slidably received in said occlusal-gingival opening, a locking body for engaging said notches and said deflection recess slots, and an extension arm connecting said guide bar to said locking body and movable between said sets of tie wings…
[43] The plaintiff’s position is that the four elements, properly construed, are found in the Accused Products.
Occlusal-gingivally extending opening
[44] As shown in claim 29, above, the base of the bracket must have an “occlusal-gingivally extending opening.” It is agreed that “occlusal” refers to the bite side or bite surface and “gingival” refers to the gum side or gum surface. Assuming the patient is sitting upright, the words “occlusal-gingivally” are generally up and down.
[45] These two figures from the 715 Patent are embodiments that illustrate an occlusal-gingivally extending opening. The yellow and red do not form part of the figures but highlight the motion to open and close the locking shutter (shown in yellow) in these embodiments:
[46] There are two disputes regarding the construction of this element of the claims:
(1) the defendant submits that the “occlusal-gingivally extending opening” must be absolutely vertical; and,
(2) the defendant submits that there must be a two-ended opening.
[47] These submissions are consistent with the above two figures, but I do not look to those figures in isolation to construe the words of the claims. They are but two embodiments within the specification, and do not provide definitions. As well, another figure, figure 39, shows an embodiment where the opening is not completely vertical.
[48] Beginning with the directional issue, there is no question that the specification does not expressly say that the opening must be “absolutely vertical”. Nor does it say, as pointed out by Mr. Goodwin, that the opening must be “somewhat” occlusal-gingivally extending. However, Mr. Goodwin did concede in his testimony that some degrees off vertical would not be material.
[49] Many of the claims in the specification contain directional terms such as occlusal and gingival. In practice, the actual direction may depend on whether the bracket is placed on an upper or a lower tooth. It may also depend on the condition of the patient’s teeth. Both Dr. Voudouris and Mr. Piervencenti testified that people’s teeth differ and sit in the mouth at different angles, especially before orthodontic treatment. Thus, the actual direction when placed on a tooth varies. As well, the use of the form “gingivally” rather than “gingival” suggests a more general directional requirement.
[50] In this context, the phrase “occlusal-gingivally extending” is more consistent with a general, not a rigid, directional requirement. I conclude that the opening must be more up and down than not, and need not be absolutely vertical. I conclude that the defendant is attempting to introduce a limitation into the claims that is not supported by the words of the claims, the specification or the extrinsic evidence.
[51] On the second point, I find that a two-ended opening is not required. The ordinary meaning of “opening” does not call for a two-ended opening. Ordinarily, it simply refers to a space or gap allowing for access to something. And there is nothing in the specification that calls for a departure from that ordinary meaning, nor is there any extrinsic evidence that does so. I have considered all of the figures as part of the specification, and recognize that those embodiments do have two openings, but they do not determine the construction of the claim term.
[52] The defendant relies on the word “extending” in support of its position that there must be an opening at both ends. But the use of “extending” does not require that interpretation. It merely conveys the directional message that the opening must extend occlusal-gingivally.
[53] Applying this construction to the Accused Products, I conclude that they are covered by this aspect of the claims. They have an opening. It is pie-shaped. The locking shutter moves in and out of that opening.
[54] Not surprisingly, the defendant points to the wall of the opening that gives the greatest angle off the vertical in support of its directional argument. That wall is at an angle of 45° or 60° off the vertical, depending on which part of the base is treated as the vertical. On the trial evidence, with the proper orientation that wall is 45° off the vertical. The above diagram is therefore not properly oriented for the consideration of this issue. Properly oriented, the other wall of the pie-shaped opening is actually right on the vertical. Further, a mid-point would still be significantly more up and down than not, even if oriented as shown in the diagram. As illustrated by Dr. Voudouris in his testimony, the opening goes up through the bottom of the bracket and is directionally occlusal-gingival.
[55] I therefore conclude that this element of the patent claims does not exclude the Accused Products from the 715 Patent.
Slidable locking shutter
[56] The claims at issue use the word “slidable” or a variation of it to describe the opening/closing movement of the locking shutter. By way of example, claim 1 provides, in part, as follows:
A twin edgewise orthodontic bracket for attaching an archwire to a tooth comprising: …; and a slidable locking shutter movable between open and closed positions having a guide bar slidably received in said occlusal-gingival opening, a locking body for engaging said locking recess without covering the labial or lingual faces of the sets of occlusal and gingival tie wings when in closed position, and an extension arm connecting said guide bar to said locking body and movable between said sets of tie wings, wherein said locking shutter is slidably mounted on said bracket between open and closed positions, ... [Emphasis added.]
[57] Thus, this claim requires “a slidable locking shutter movable between open and closed positions ... wherein said locking shutter is slidably mounted on said bracket between open and closed positions ...”. Every claim in the 715 Patent includes this or similar language, either explicitly or by operation of 35 U.S.C. § 112(f).
[58] The plaintiff submits that it is sufficient that there is some sliding motion even if there is also a rotating motion. The defendant submits that the shutter must slide from the open to the closed position, not just for a minor part of that movement.
[59] Definitions for a number of relevant words are found in the specification. The “locking shutter” includes a guide bar or arm, an extension arm and a locking body. It is generally U-shaped. Figures 7 and 8 depicted above show the locking shutter in that embodiment in yellow, for example. In the “open position,” the locking shutter allows for placement of the archwire in the archwire slot and removal of it from the archwire slot. In the “closed position,” the locking shutter prevents the archwire from being displaced.
[60] The ordinary, common sense construction of this aspect of the claims, as used in the claims and in the specification, requires a sliding motion from the open position to the closed position, not just for part of the movement between the open to the closed position. In the phrase “slidable locking shutter movable between open and closed positions,” the word “slidable” ordinarily relates to the word “moveable”. There are numerous other references in the claims and specification to the slidable motion. For example, claims also refer to the locking shutter being “slidably mounted on said bracket between open and closed positions,…” and “a locking means slidably carried by the bracket member between open and closed positions… and said locking means being slidable between open and closed positions,…”. The other words used, and the figures, are consistent with the conclusion that the sliding motion must take the locking shutter from the open to the closed position and back again. The only thing in the claims, or the entire patent for that matter, that gives the locking shutter the ability to slide between the open and closed positions is the guide bar sliding in the occlusal-gingival opening.
[61] I therefore do not accept the plaintiff’s position that the locking shutter movement need not be entirely a sliding motion.
[62] Applying this construction to the Accused Products, I conclude that they are not covered by this aspect of the claims. There is a small sliding action when the locking shutter is moved in the Accused Products within the occlusal-gingival opening but, for the most part, the locking shutter moves from open to closed position and back through a rotating motion as illustrated in this annotated diagram:
[63] This is not a case where the main movement is a sliding motion but there is a minor deviation from that sliding motion, quite the opposite.
[64] All of the claims of the 715 Patent include this claim element and therefore none of the claims are infringed by the Accused Products for this reason alone. However, I will briefly address the remaining two points of distinction argued at trial.
Locking recess and archwire slot in labial face
[65] A number of the claims at issue include an element that there must be a “locking recess” in the labial face or faces. Claims also refer to a “locking recess in labial face of said tie wings” or “recess in the labial faces said occlusal tie wings” or a “deflection recess notch in the labial face of each tie wing,” for examples.
[66] Prior to trial, there was a dispute between the parties about what was meant by being “in the labial face” in this context. However, that disagreement did not survive the trial. Ultimately, the experts agreed that the labial face is the face that you see as you look at the device on the side opposite from that which affixes to the tooth. In other words, it is the face you see as you look at the device when the base of the device is facing away from you.
[67] The question then became whether the Accused Products had a recess or slot in the labial face. As shown in the diagrams above, the back of the Accused Products is not flat. It has two parts, one at a 15° angle off the vertical. However, on the evidence, when the correct portion of the back of the device is considered, there is a need for a 15° adjustment to the orientation of the device as you look at it. When that orientation is used, the recess or archwire slot is on the labial face, as admitted by Mr. Goodwin in his testimony. The plaintiff relies on this admission.
[68] Further, all of the relevant claims of the 715 Patent do not require that the recess slot be on the labial face. Independent claims 14 and 29 do not contain this requirement. In addition, the plaintiff submits that in any event, it is sufficient that the recess slot be adjacent to the labial face. The embodiment in Figures 23-26 expressly illustrates and states “the recess slot 104 in each of the gingival tie wings adjacent the labial faces”. I conclude that the recess slot need only be adjacent to the labial faces, but it is in the labial faces in the Accused Products.
[69] These elements of the patent claims therefore do not exclude the Accused Products from the 715 Patent.
Issue (a) – conclusion
[70] In conclusion, in answer to issue (a), the Accused Products are not covered by the 715 Patent, and are therefore not covered by the Licence Agreement.
Issue (b) – sales figures
[71] These figures are now agreed, as set out in paragraph 21, above.
Issue (c) – aggravated/punitive damages
[72] Issue (c) asks what amount of punitive and aggravated damages should be awarded, if any. At trial, the plaintiff focused on aggravated damages, seeking $25,000.
[73] Because I have found that the Accused Products are not covered by the Licence Agreement, I award no aggravated damages. However, I observe that the trial evidence does not suggest to me that those damages would be appropriate even if I had found that the Accused Products were covered by the 715 Patent.
[74] The plaintiff relied on the recently released decision in Bhasin v. Hrynew, 2014 SCC 71, [2014] 3 S.C.R. 494, in which the Supreme Court of Canada held that there is a general duty of honesty in contractual performance. This means that the parties must not lie or otherwise knowingly mislead each other about matters directly linked to the performance of the contract: Bhasin, at para. 73. It does not impose a duty of loyalty or of disclosure and must be applied consistently with the freedom of contracting parties to pursue their individual self-interest: Bhasin, at paras. 70 and 73.
[75] In support of the claim for aggravated damages, the plaintiff relied on the defendant withholding royalties under the Licence Agreement at the outset of the relationship, which related to the litigation with American Orthodontics launched against not only OrthoArm but also GAC. However, that dispute was settled early on. The plaintiff further relied on the defendant’s failure to pay royalties on the Accused Products. Even if those products were covered by the 715 Patent, the course of events suggests that the defendant was relying on its reasoned position that they were not covered, rather than that the defendant was being untruthful or deceitful.
[76] Lastly, the plaintiff contends that GAC, in bad faith, failed to disclose a contract with Tomy that limited the sales of the In-Ovation products and “undermined” the License Agreement. This allegation is distinct from the alleged breach of contract determined in this trial, which was based upon the construction of the 715 Patent. If this alleged bad faith conduct gives rise to a cause of action, it is not asserted in the pleadings. I conclude that this alleged misconduct falls outside the scope of this trial.
Issue (d) – costs
[77] I thank all counsel for their capable and efficient conduct of the trial. If the parties are unable to agree on costs, the defendant shall make its submissions by delivering brief written submissions together with a bill of costs by September 8, 2015. The plaintiff may respond by delivering brief written submissions by September 30, 2015. This timetable may be modified on agreement between the parties provided that I am notified of the new timetable by September 8, 2015.
Summary of answers to issues
[78] In summary, the issues for trial have been answered as follows:
(a) the defendant’s In-Ovation SL Buccal Tube (Molar) and In-Ovation L (Lingual) brackets are not covered by the 715 Patent and are therefore not covered by the Licence Agreement;
(b) the amount of the sales made by the defendant of the In-Ovation SL Buccal Tube (Molar) and In-Ovation L (Lingual) brackets have been agreed as set out above;
(c) no punitive or aggravated damages are awarded; and,
(d) costs will be the subject of written submissions on the above timetable.
GAC action
[79] In final argument, neither side objected to the suggestion that as the trial judge for this action, it would be efficient if I also conducted the trial of the GAC action, should it go to trial. This makes eminent sense, given the considerable jargon used in the evidence. In answer to the final question raised by Justice Corbett, either party may request that I conduct the trial in the
GAC action at the pre-trial of that action and the trial office will determine whether or not that arrangement can be made.
Justice W. Matheson
Released: August 13, 2015
COURT FILE NO.: CV-08-00355689
DATE: 20150813
ONTARIO
SUPERIOR COURT OF JUSTICE
BETWEEN:
ORTHOARM INCORPORATED
Plaintiff
– and –
GAC INTERNATIONAL, LLC
Defendant
REASONS FOR JUDGMENT
Justice Matheson
Released: August 13, 2015 ORTHOARM INCORPORATED
Plaintiff
– and –
GAC INTERNATIONAL, LLC
Defendant