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2010 – PAPER D

The exam consists of Parts A and B Part A consists of Questions A1-A6 Part A includes Attachments 1 and 2 Part B consists of Questions B1-B9

PART A: OPINION

IMPORTANT NOTE: PLEASE DO NOT PROVIDE A DETAILED REVIEW OF THE LAW OF PATENT INFRINGEMENT. HOWEVER, PLEASE INCORPORATE THE RELEVANT LEGAL PRINCIPLES INTO YOUR ANSWER. Background information

Your client is a large blueberry producer in Manitoba, who frequently seeks your advice on IP matters. Their latest marketing initiative is to place a coupon in each container of blueberries they sell, which can be redeemed for a free blueberry press (plus $4.99 for shipping and handling), which is intended to squeeze the healthful blueberry juice out of the berries. Their blueberry containers include a mixture of blueberry types. The blueberry press was designed for them by a marketing consultant they retained, who told them that he invented the press on behalf of your client. The press will be manufactured in China and shipped to your client’s plant in Manitoba, from where they will be shipped to customers. Their customers are located worldwide, and they expect to ship the presses to customers in Canada and a number of other countries. They also have a branch plant in Jamaica. While they could in principle ship products from this plant, it is more convenient for them to ship the presses from their Manitoba operation. They will call the new press the “Presser.” The contract they signed with the consultant includes a number of terms which attract your attention. For one, the consultant agreed that the product was designed exclusively for your client. For another, he stated that the press he designed did not infringe any intellectual property rights of any other person. You perform a careful patent search for your client to determine whether there are any in-force patents that might stand in your client’s way. You discover that the consultant has applied for a Canadian patent for the Presser, in his own name (it was published early under a “special order”). The examiner has cited prior art, including a patent from 1945 that disclosed a very similar press. However, the consultant successfully argued that his invention had some important differences over this prior art. The examiner has also cited another Canadian patent (No. 2,xxx,xxx), which is still in force. The ‘xxx patent is

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owned by an individual living in California. Your research shows that this individual never commercialized his invention in Canada or elsewhere. The consultant was able to convince the examiner that his invention is novel and non-obvious over this patent as well. As a result, a notice of allowance has recently issued for the consultant’s patent application. You also determine that presses that are essentially identical to your client’s are being sold in Canada by a number of other distributors. Finally, the consultant has also developed an alternative version of the Presser (the “Easy Presser”), which your client might distribute if you advise that there are insurmountable patent problems with the first version. Your client is very concerned that the Presser or the Easy Presser might infringe the ‘xxx patent. They would like your advice as to whether the owner of this patent could sue them for infringement. They also want your advice on several related issues, listed below. Your client asks that you be creative in your approach. They are interested in any solution that permits them to proceed with their marketing scheme. Please identify any missing information that might assist you in your response. You may make reasonable assumptions in the absence of specific information, but please identify any such assumption. Attachment 1 is a description and drawings of the proposed products (the Presser and the Easy Presser). Figures 1-3 of Attachment 1 illustrate the Presser and Figures 4 and 5 illustrate the Easy Presser. Attachment 2 is a copy of the ‘xxx patent.

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Please prepare a letter of advice to your client and advise them of the following: A1. [35 Marks] Discuss whether the Presser infringes any of claims 1-7 of the ‘xxx patent. [20 marks for claim 1, 5 marks for claim 4, 2 marks each for all remaining claims] A2. [10 marks] Discuss whether the Easy Presser infringes any of claims 1-7 of the ‘xxx patent. A3. [10 marks] What defences against an infringement action does the above fact scenario suggest? A4. [10 marks] Assuming your client proceeds with their proposed scheme and they are found to infringe the patent, what remedies might be available to the owner of the ‘xxx patent? Bear in mind that your client will be giving their product away for free. A5. [5 marks] Discuss possible causes of action or remedies your client could seek against the consultant. A6. [5 marks] What steps could your client take to avoid infringement, while still pursuing their marketing plan?

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PART B: SHORT ANSWER QUESTIONS

B1. [2 Marks] Your client is sued for infringement of a reissued patent. You learn that the claims were amended in the reissue petition to cover your client’s product after the patentee became aware of your client’s product. What defense does this suggest?

B2. (a) [2 Marks] Define “exhaustion” as it applies to patent law.

(b) [2 Marks] What is the test for “inducement to infringe”?

B3. [2 marks] What is the distinction between “public knowledge” and “common general knowledge”?

B4. Your client has obtained a (new Act) patent based on a Convention filing. The patent claims a cleaning composition and an optional additive which can be added to the composition to improve its performance. The two substances do not chemically combine or react; they simply mix together. When they are combined, they can be used as a laundry detergent. The composition without the additive can only be used as hand cleaner. The only use for the additive is for combining with the composition.

The claim date for the composition claims is the priority filing date while the claim date for the additive claims is the Canadian filing date.

Beginning before the priority filing date and continuing up to the Canadian filing date a manufacturer independently had been producing and stockpiling the cleaning composition and the additive. The manufacturer is now combining these two ingredients and offering the mixture for sale as laundry detergent. Your client learns of this activity.

(a) [3 Marks] What defence, if any, does the manufacturer have with respect to its production and sale of:

(i) the composition

(ii) the additive

(iii) the combined composition and additive

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(b) [3 Marks] How would your answer to (a) change if the manufacturer had bought and paid for the composition and additive from a supplier before the above dates, but the supplier did not release these products to the manufacturer until after the Canadian filing date because the products did not meet the supplier’s strict quality control requirements?

B5. [2 Marks] Your client is aware that a product patent of a competitor is expiring within the next year. Regulation of sale of the product is within the jurisdiction of an Italian government ministry.

(a) On what basis, if any, would small scale production of the product now to satisfy themselves that a product of vendible quality can be made, avoid infringement?

(b) On what basis, if any, would production of the product now, in small batches for purposes of submission to the regulatory body, avoid infringement?

B6. [2 Marks] Your client has developed a household product with innovative functional and decorative features. You conduct a freedom to operate search and turn up a patent and a registered industrial design which are of concern. On what basis, if any, can your client bring a legal proceeding to ensure that they do not infringe the patent and the industrial design?

B7. [2 Marks] What was the holding in Belzberg v. Canada, 2009 FC 657 concerning the Commissioner of Patent’s authority after an appeal of a Final Action?

B8. (a) [1 Mark] What is the Patent Prosecution Highway?

(b) [2 Marks] Name four patent offices with which Canada has a Patent Prosecution Highway Pilot Program.

B9. (a) [1 Mark] What is the relief sought by the Applicant in an Application filed under the Patented Medicines (Notice of Compliance) Regulations?

(b) [1 Mark] What is the difference in consequence between a finding of invalidity in an Application filed under the Patented Medicines Notice of Compliance Regulations and a Federal Court Action?

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ATTACHMENT 1 Presser™ blueberry press The Presser ™ blueberry press has several benefits over conventional fruit presses: - it rests on the rim of a mixing or salad bowl, so as to permit the user to operate it with one hand. - there are dual fruit pressing chambers, for fast operation - it has a decorative appearance - the respective members are wide and shallow, which provides large surfaces to rest on the bowl and for the user to press. - the floors of the pressing chambers have a wave-like shape, which makes cleaning easier than the conventional flat shape. Version 1: Presser A first version of the Presser™ blueberry press, seen in Figures 1-3, consists of a lower member 1 which rests on the rim of a mixing bowl. The lower member has a pressing chamber 2 which extends downwardly from the lower face of the member. Pressing chamber 2 is located about one third of the way in from a first end of member 1. The floor of pressing chamber 2 is perforated to discharge the squeezed blueberry juice. The floor of the pressing chamber has a wave-like shape. The upper member 3 is engaged to the lower member 1. Upper member 3 is somewhat shorter in length than lower member 1. The engagement between the respective members 1 and 3 is formed by opposing square recesses 4 and 5 within the respective members, opening laterally towards each other. Recesses 4 and 5 fit one within the other. A peg 6 protrudes laterally from the base of recess 4 of lower member 1, which fits within a hole 7 within the recess 5 of upper member 3. The members 1 and 3 are easily joined together by fitting peg 6 into hole 7 to permit members 1 and 3 to rotate relative to each other. The members may be disassembled for cleaning. Upper member 3 has a pressing chamber 8 similar to that of the lower member, but located adjacent to its first end. This pressing chamber also includes a perforated floor to discharge the crushed blueberry juice. Both pressing chambers protrude downwardly into the bowl when the press is positioned on the rim of the bowl. The upper and lower members both include a plunger 10 and 11 respectively, configured and located so as to fit into the pressing chamber of the opposing member so as to press blueberry or other food which has been placed in the pressing chambers. In configuration, the pressing chambers and plungers are similar to a conventional fruit press, namely substantially rectangular or oval, with the plungers fitting snugly within the pressing chambers so as to squeeze all of the food through the perforations with minimal leakage at the sides. The lower surface of the plungers has a wave-like shape that matches the floor of the corresponding pressing chamber.

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Figure 3 is an enlarged view of the pressing chamber and plunger, showing in particular the wave-like shape of these parts. This configuration makes it easier to clean the device. Version 2: Easy Presser A second version, called the “Easy Presser™”, is seen in Figures 4 and 5. This version consists of upper and lower members 20 and 21. These members are not connected in any manner – they are simply brought together during the pressing operation. However, the members are shaped to permit the user to hold them together at one end to allow the upper member to pivot relative to the lower member for greater leverage. This is assisted by a rounded portion 30 which extends downwardly from the upper member 20, which can rest within a somewhat shallower depression 32 within the lower member. Lower member 21 is configured to rest on the rim of a salad bowl, as in the first version. Upper member 20 can be somewhat shorter. Lower member 21 includes 2 (or more) pressing chambers 23 and 24 which can be spaced apart as seen in Figure 3, or directly adjacent to each other. Pressing chambers 23 and 24 have a perforated floor. Upper member 21 includes plungers 25 and 26 configured and spaced to enter into pressing chambers 23 and 24, to effectively squeeze blueberry or other food items within the pressing chambers, through the perforations in the respective floors of the pressing chambers. An advantage of the Easy Presser over the Presser is that the respective members of the Easy Presser can be more easily separated from each other for cleaning. As well, the simplified construction makes this version cheaper. The chambers and plungers have matching wave-like cross-sectional configurations, like the first version.

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ATTACHMENT 2 5

Canadian Intellectual Patent CA 2,XXX,XXX Property Office Priority date: 11.01.1999 10 Application Date: 10.01.2000 Issue Date: 20.10.2002 (72) Smith, George (US) 15 (73) George Smith RR 1 Petaluma CA USA

Hand-operated press for disintegrating vegetables or fruit into a plurality of particle sizes 20

A hand-operated press for treating vegetables or fruit comprises two levers, which are connected by an articulated joint and in at least part of their length constitute handles. The material to be treated is forced through at least two holding chambers, which are located on one of the levers. Each holding chamber provided on one lever has associated with it a ram provided on the other lever. As the handles are forced toward each other, 25 each ram enters the associated holding chamber and forces the material to be treated through openings in the bottom defining the holding chamber. An essential feature of the invention is that the holding chambers have different shaped or sized openings, for example in one chamber the openings are square and in the other chamber, the openings are elongated so that the hand-operated press may be used to disintegrate the fruit or 30 vegetables into both disc-shaped and prismatic pieces as the fruit or vegetable is forced through the two sets openings.

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FIELD 5

The present invention relates to kitchen and cooking implements, in particular a hand-operated press for disintegrating fruits and vegetables.

BACKGROUND

The fruit or vegetable press is found in some well-equipped kitchens. Typically, it comprises two handles or arms, a chamber to receive the fruit or vegetable pieces and a 10 ram or plunger which compresses the fruit or vegetable. The chamber has openings to discharge the pressed matter. Hand-operated presses of this kind are mainly used for disintegrating a variety of fruits or vegetables. U.S. Pat. No. 1,762,031 describes a press of the above-mentioned kind, in which one 15 lever has a holding chamber, and the other lever has a press or ram. U.S. Pat. No. 1,840,182 discloses a fruit press, in which a manually operable lever is provided, which is pivoted to a container, and a ram is provided, which is pivotally connected to the lever by an arm. The fruit to be treated, e.g., an orange, is placed into the 20 holding chamber.

German Patent Publication No. 1,255,877 discloses an implement which is made of plastic and serves to cut and squeeze fruit and vegetables. That implement comprises a base and a pressure-applying lever pivoted to said base. That lever carries a pressure-applying plate, which during an operation of the pressure-applying lever moves in a 25 frame provided in the base toward an inserted cutting plate or perforated plate detachably mounted in said frame. One drawback of known implements is that these process a fruit or vegetable only into particles or pieces having a single size and shape. It has been found that particles or 30 pieces differing in size or shape are desired for different foods, in dependence on the manner in which they have been prepared--grilled, cooked, roasted etc.--in the treatment of different fruits or vegetables (in most cases smaller particle sizes for some types of fruit or vegetable and coarser particle sizes for others such as onions, so that two different presses were previously required), and in dependence on the use of the disintegrated 35 material, e.g., as a spice, garnish etc. Another drawback resides in the provision of but a single chamber, which makes the procedure relatively time consuming.

SUMMARY In one aspect, the invention relates to a hand-operated press for treating vegetables or 40 fruit which comprises two levers, which may be connected by an articulated joint and are provided with at least two holding chambers and with presses or rams fitting said holding chambers. The bottom defining each holding chamber is provided with through openings, which have different cross-sections in different bottoms. The pressure-applying surfaces of the rams may be formed with elevations, which enter the openings of the bottoms and 45

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clean said openings at the end of the pressure-applying operation and when the levers are 5 pivotally moved opposite to the sense in which pressure is applied. It is an object of the present invention to provide a hand-operated press which avoids the disadvantages of the known implements and by which material can be disintegrated to a small and/or large particle size at the same time or in any desired sequence. 10

It is a further object to provide a hand-operated press that provides multiple pressing chambers for processing a food, thereby providing a variety of benefits to the chef. In order to permit cleaning of the openings provided in the bottoms of the holding chambers, a further feature of the invention resides in that at least one of the levers is 15 provided with cleaning pins, which may be provided in a plurality of sets, each of which corresponds to the openings of one set thereof. In this arrangement a pivotal movement of the levers opposite to the direction in which pressure is applied will cause the pins to enter the openings of the holding chamber which has been used. 20 Further details of the invention will be explained more fully with reference to the drawing showing a plurality of illustrative embodiments of the hand-operated press in accordance with the invention.

BRIEF DESCRIPTION OF THE DRAWINGS 25 FIG. 1 shows a first embodiment of the hand-operated press in an extended position. FIG. 2 is a longitudinal sectional view showing the press of FIG. 1. FIG. 3 shows another embodiment of the hand-operated press. 30 FIG. 4 is a sectional view taken on lines VII--VII in FIG. 3. FIG. 5 is a sectional view taken on lines VIII--VIII in FIG. 3. 35 FIG. 6 is a top plan view showing the hand-operated press of FIGS. 3-5. FIGS. 7 and 8, respectively, are a longitudinal sectional view and a bottom view showing another embodiment of a hand-operated press having one-armed levers. 40 FIGS. 9 to 11 show another embodiment of the hand-operated press comprising one-armed levers and juxtaposed holding chambers, FIG. 9 being a sectional view taken on line XII--XII of FIG. 10, FIG. 10 is a top plan view and FIG. 11 is a bottom view of the hand-operated press.

FIG 12 is a sectional view of another embodiment of the press, which is provided with 45 knives, bars or the like within the pressing chambers.

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5 FIG. 13 shows a cross-sectional view of the embodiment shown in Figure 12.

FIG. 14 is an enlarged view of a portion of the press shown in Fig. 12, showing in particular a cross-sectional view of the knives.

DETAILED DESCRIPTION 10

The hand-operated press in accordance with the invention is shown in FIGS. 1 and 2 and comprises two one-armed levers 1, 2, which are connected at one end by a hinge 5. Levers 1 and 2 have upper and lower faces that taper towards each other away from hinge 5, giving each arm a generally triangular configuration when viewed from the side. The 15 pivotal connection joins together the respective levers in a fashion which is sufficiently robust to permit the respective levers to be drawn together, while crushing fruit or vegetables between the levers in the manner described below.

In the first embodiment, lever 2 is provided with two holding chambers 12, 12', which are disposed next to hinge 5 and arranged one behind the other and defined by respective 20 bottoms 7 and 7'. Bottoms 7 and 7’ include sieves 4, 4’. Sieve 4 has openings or holes 10 which are larger than holes 10’ of sieve 4’.

Hinge 5 permanently joins levers 1 and 2 together, such that they will not inadvertently separate during use, cleaning, storage or otherwise.

Lever 1 is provided with presses, rams, plungers or the like 6, 6', which are opposite to 25 the holding chambers 12, 12', respectively, and enter the latter as the two levers are moved toward each other. On the outside or back of the lever 1, remote from the rams, plungers or the like 6, 6’, lever 1 is provided with respective sets of pins 14 and 14' for cleaning the openings 10 and 10', respectively. When the levers 1 and 2 are turned round about the hinge 5, pins 14, 14' enter the openings from the outside of the bottoms 7, 7' 30 and force the residues back into the holding chambers 12 and 12'. The holding chambers 12, 12' may also be adjacent to each other.

In the embodiment of FIGS. 3-6, the bottoms 7, 7' may be provided at the end of lever 2, and may extend over two adjacent holding chambers, which are separated by a partition. In that case the openings associated with the respective chambers may differ in size. In 35 this embodiment the lever 1 provided with one or more rams 3, 3' is hinged to the top edge of a frame 15, which surrounds the bottoms 7, 7' and which is preferably rectangular, e.g., square. Bottoms 7, 7’ include sieves 4, 4’. Frame 15 is carried by the lever 2. The ram may be formed with a slot, which receives the partition 8' during the working stroke so that each part of the ram enters the associated holding chamber 12 or 40 12'. In this embodiment the rams 3 and 3' are provided with pins 14 and 14’ (only pins 14’ are shown), which enter the holes 10 and 10'. Alternatively, as in the embodiments described before, said pins may be provided on the back of the lever 1 so that they enter

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the holes 10, 10' from the outside. 5 The ram may be designed as desired, e.g., as a member which is hinged to the lever 1. Such an embodiment is shown in FIGS. 7 and 8. In this embodiment the ram is hinged to the lever 1 at 5' in spaced relationship to the lever hinge 5 and comprises two closely adjacent integral plungers 6, 6', which are separated by the slot 16, which receives the 10 partition 17 as the plungers 6, 6' enter the holding chambers 12, 12' as a unit. Chambers 12, 12’ are within lever 2, and include bottoms 7, 7’ which are provided with sieves 4, 4’. If the hinges 5, 5' are properly located, pins for cleaning the holes 10, 10' may be provided on the back of the lever 1. 15 In the embodiment shown in FIGS. 9 to 11 the holding chambers 12, 12' are adjacent and cooperate with respective plungers 6, 6'. Chambers 12, 12’ are defined in part by wall 17, and comprise sieves 4, 4’. Pins for cleaning the openings 10, 10' from the outside may be provided on the back of the lever 1. Also within the scope of the invention the plunger may be adjustably mounted on the lever 1. Levers 1 and 2 are joined by hinge 5. 20

In the embodiment shown in FIGS. 12 to 14, lever 1 is provided with three holding chambers 12, 12', 12", which are arranged one behind the other next to hinge 5 and defined by respective bottoms 7, 7', 7". Bottom 7 consists of an array of regularly spaced knives 21, which extend in one direction, in the present case in the transverse direction, and the other bottom 7' consists of an array of knives 20', 21' extending in the 25 longitudinal and transverse directions. The third bottom 7’’ is provided with sieve holes 22". Slot-like interstices 22 are defined in the holding chamber 12 by the knives 21 and square interstices 22' are defined in the holding chamber 12' by the knives 20', 21' so that the material is treated into slices or prismatic pieces, whereas juice is expressed in the holding chamber 12". The lever 2 is provided with a plurality of rams, plungers or the 30 like 3, 3', 3", which register with the holding chambers 12, 12', and 12", respectively. Each of said rams, plungers or the like has either a smooth outside surface or those of said rams, plungers or the like which are associated with the bottoms 7 and 7' are formed with elevations 23, 23', which are indicated in FIG. 12 and are indicated in section in FIG. 13. Said elevations 23, 23' are in register with and match respective interstices 22 35 and 22' and enter the interstices 22 and 22' and force the compressed material out of said interstices during the working stroke. As is apparent from FIG. 13, the lever 2 is provided on its rear, remote from the ram 3", with elevations 24". When the lever 2 has been turned around the hinge 5 in the direction 40 indicated by the arrow C in FIG. 13, said elevations enter the holes 22" to free the latter from residual fruit or vegetable material. It will be understood that corresponding elevations may be provided on the back of the lever 2 for an additional cleaning of the interstices 22 and 22'.

FIG 14 shows knives 21 in closer detail to more clearly show their cross-sectional 45 configuration.

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The selection of the number and arrangement of the holding chambers and of the 5 associated rams is at the discretion of the designer of the hand-operated press. They may be provided in any desired pattern and number one beside the other and/or one behind the other, and the handle levers 1, 2 may be one-armed or two-armed. Alternatively, each of the two levers may be provided with at least one holding chamber 10 and with at least one ram for cooperating with the holding chamber of the other lever. Moreover, in the embodiments comprising rams, plungers or the like 3 or 3' for disintegrating the fruit or vegetable material into prismatic pieces or slices the pressure-applying surface of said rams, plungers or the like 3 or 3' may be smooth. But in that case 15 the provision of the above-mentioned cleaning pins or cleaning ribs will be desirable.

In addition, the press can be used to prepare a mixture of different fruits, vegetables or other foods that can be pressed through the device. In this aspect, the user can place different types of product within the separate chambers. When the press is operated, a mixture of the pressed foods is thereby generated. 20

The present invention has been described in the foregoing by reference to particular embodiments. However, those skilled in the art will recognize that the invention is not limited in scope to the foregoing description. The full scope of the invention will be understood by the present specification as a whole, including the accompanying claims.25

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CLAIMS: 5

1. A hand-operated press for disintegrating vegetables or fruit comprising two opposing levers, which along at least part of their length serve as arms, wherein one of said levers is provided with a first pressing chamber which serves to receive the material to be treated and is defined at least in part by a bottom wall formed with through 10 openings, and the other of said levers is provided with a first pressing member, which during a pivotal movement of the levers is adapted to enter the first pressing chamber, and wherein a second pressing chamber is provided, said chambers being separated from each other by a wall and being defined at least in part by bottom walls formed with through openings to process a piece of vegetable or fruit into smaller pieces, and wherein 15 a second pressing member is provided for entering said second pressing chamber. 2. The hand-operated press according to claim 1, wherein the bottom walls defining said first and second pressing chambers comprise spaced apart lands, bars or knives 20 extending in at least one direction. 3. The hand-operated press according to claim 2, wherein said first and second pressing members are provided with spaced projecting elevations which match the cross-section of said lands, bars or knives. 25 4. A hand-operated press for treating vegetables or fruit, comprising two levers which are in pivotal relationship and which in at least part of their length serve as arms, first and second pressing chambers associated with said levers which serve to receive the material to be treated, each chamber being defined at least in part by a bottom wall 30 formed with through openings, and a pressing member which, as said levers are drawn together, enters said pressing chambers, wherein said chambers have different openings for discharging the vegetable or fruit. 5. The hand-operated press according to claim 4, wherein the two levers are 35 pivotally connected to one another by a pivotal connection adjacent an end thereof. 6. The hand-operated press according to claim 1, wherein said pressing members form adjacent integral parts, in spaced relationship to a pivotal connection of the levers to one another, and wherein the pressing members are movable into their respective 40 pressing chambers as a unit. 7. A method for disintegrating fruits or vegetables comprising the steps of: 45 a) providing a press comprising two opposing arms, at least two pressing chambers incorporated into said arms, said chambers having through openings, and corresponding pressing members adapted to enter into said pressing chambers,

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b) placing fruit or vegetable matter into said chambers, and 5 c) simultaneously pressing said fruit or vegetable matter through said openings with said pressing members, wherein a different fruit or vegetable is placed within respective ones of said chambers to produce a mixture of said fruits or vegetables in disintegrated form. 10

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