Hershkovitz v. Tyco Safety Products Canada Ltd.

Hershkovitz v. Tyco Safety Products Canada Ltd.

Recorded disclaimers were invalid because they did not comply with prescribed form and introduced new undisclosed inventive matter; patentee's conduct and admissions (that original specification was 'too broad') meant the original claims could not subsist; independently, the asserted claims (as disclaimed or prior...

Source-derived case information.

Citation
2009 FC 256
Parties
Plaintiff: Shmuel Hershkovitz; Plaintiff (exclusive Licensee): Systèmes de Sécurité Paradox Ltée - Paradox Security Systems Ltd.; Plaintiff (inventor): Pinhas Shpater; Defendant (plaintiff by Counterclaim): Tyco Safety Products Canada Ltd.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
12 March 2009
Procedural Posture
Patent Infringement and Validity (canadian Patents Nos. 2,169,670 and 2,273,148) / Judgment (reasons for Judgment Delivered)
Outcome
Action dismissed; counterclaim allowed; recorded disclaimers declared invalid; patents declared invalid.
Legal Topics
Infringement, Validity, Anticipation, Obviousness, Disclaimer, Claim Construction, Unpatentable Aggregation, Inducement, Accounting of Profits
Source Language
english
Intellectual Property Patent Law Civil Litigation Administrative/patent Office Procedure Infringement Validity Anticipation Obviousness +5 more

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Parties

Shmuel Hershkovitz

Plaintiff

Systèmes de Sécurité Paradox Ltée - Paradox Security Systems Ltd.

Plaintiff (exclusive Licensee)

Pinhas Shpater

Plaintiff (inventor)

Tyco Safety Products Canada Ltd.

Defendant (plaintiff by Counterclaim)

Procedural Posture

Patent Infringement and Validity (canadian Patents Nos. 2,169,670 and 2,273,148) / Judgment (reasons for Judgment Delivered)

Legal Issues

  1. 1 Validity of disclaimers filed under s.48 Patent Act
  2. 2 Validity (novelty/anticipation and obviousness) of patents 2,169,670 and 2,273,148
  3. 3 Proper purposive construction of the claims

Ratio Decidendi

Recorded disclaimers were invalid because they did not comply with prescribed form and introduced new undisclosed inventive matter; patentee's conduct and admissions (that original specification was 'too broad') meant the original claims could not subsist; independently, the asserted claims (as disclaimed or prior to disclaimer) were anticipated and/or obvious in light of prior art (notably DSC 4000, Pascom, Agbaje‑Anozie and related references), therefore the patents are invalid and the plaintiffs' action is dismissed while the defendant's counterclaim is allowed.

Court Disposition

Action dismissed; counterclaim allowed; recorded disclaimers declared invalid; patents declared invalid.

Orders

  • The action is dismissed and the counterclaim is allowed as specified herein.
  • The disclaimer filed and recorded on December 5, 2003 against Canadian patent no. 2,169,670 is invalid, null, void and of no force and effect.