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Is a General Idea Enough?
Diana Mansour
A dispute regarding the ownership of a U.S. patent and whether
there was a breach of confidence were considered by the
Alberta Court of Appeal in Aram Systems Ltd. v. NovAtel Inc.[1]
The patent at issue was a U.S. patent granted on October 3,
2006 to NovAtel Inc., a company which designs and manufactures
customized global positioning system (GPS) devices for
incorporation by its customers into specialized equipment.
Patrick Fenton (chief technology officer of NovAtel) was the
named inventor.
Aram Systems Ltd., a company
which designs and manufactures seismic data acquisition
equipment, claimed that NovAtel wrongfully derived the patent
from Aram's employee, David Heidebrecht. Specifically, after
reading an article about the use of GPS in Emergency 911
situations (E911), Heidebrecht had the idea of adapting the
concept of E911 or assisted GPS to seismic data acquisition,
such that a base GPS receiver would be located in an area
having a clear view of the sky, with assisting “slave”
receivers in the field where signals might be weakened.
Heidebrecht described this concept as “neighbour assist”.
Aram claimed its idea was
communicated by Heidebrecht to NovAtel, including Fenton
during technology development discussions between the parties
on June 18, 2003, giving rise to the claim that Heidebrecht is
the inventor or co-inventor of the patent. Aram further
claimed that NovAtel breached a non-disclosure agreement (NDA)
entered into by the parties at the June meeting as well as its
duty of confidentiality. NovAtel counterclaimed in respect of
both the patent ownership and alleged breach of the NDA by
Aram.
Inventorship
In affirming the lower court’s decision, the Albert Court of
Appeal applied the U.S. legal tests for inventorship
determining that Heidebrecht was neither an inventor nor a
co-inventor of the patent. Based on the trial judge’s
findings of fact, Aram did not clearly demonstrate that
Heidebrecht had: (1) prior conception of the invention (i.e.,
the inventive concept of “assisted GPS”); and (2) communicated
this conception to NovAtel.
In the U.S., as in Canada, conception is complete when an idea
is so clearly defined in the inventor’s mind that only
ordinary skill would be necessary to reduce the invention to
practice, without extensive research or experimentation. To
merely suggest an idea of a result to be
accomplished, rather than the means of accomplishing it,
is insufficient to establish either sole or joint inventorship.
Although the court found that Heidebrecht did come up with the
general idea of assisted GPS in the context of seismic
data acquisition, Heidebrecht’s idea was not clearly enough
defined such that he could have reduced it to practice without
extensive research or experimentation. Heidebrecht did not
have sufficient knowledge of GPS to have a definite and
permanent idea for a complete and operative invention.
Breach of Confidence
With regard to Aram’s claim that NovAtel breached its
common law duty of confidence and the terms of the NDA
executed at the June meeting, the following three elements
were considered in order to determine whether there had been a
breach of confidence under Canadian common law: (1) did the
disclosure of information have a quality of confidence about
it; (2) did the communication of the information occur under
circumstances in which an obligation of confidence arose; and
(3) was there an unauthorized use of the information by the
confidee to the confidor’s detriment. (Lac Minerals Ltd. v.
International Corona Resources Ltd., [1989] 2 S.C.R.
574)
The Alberta Court of Appeal affirmed the trial judge's finding
that the information disclosed by Heidebrecht at the June
meeting was not confidential information under the NDA.
Accordingly, there was no breach of confidence. Specifically,
Heidebrecht acknowledged discussing his ideas with other GPS
suppliers for the purpose of ascertaining whether a low cost
receiver was available on the market; the E911 concept had
been in the public domain since at least 2002; and Heidebrecht
had authorized the use of the information that had been given
at the June Meeting.
With regard to NovAtel’s counterclaim that Aram’s patent
filings arising from the interactions between the companies
constituted breaches of confidence, the Alberta Court of
Appeal affirmed the trial judge's finding. Aram and
Heidebrecht were in breach of confidence and in breach of the
NDA. An employee of Aram acknowledged that he relied upon
Fenton’s proposal to draft Aram’s continuation-in-part
application without seeking the consent of NovAtel,
notwithstanding the existence of the NDA and the notations on
the Fenton proposal that it was the proprietary information of
NovAtel.
[1]
2008 ABQB 441, 68 C.P.R. (4th) 92;
aff’d 2009 ABCA 262, 76 C.P.R.
(4th) 175; leave to appeal refused Jan 28, 2010, SCC
No. 33351.
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