Guest Post: Green IP Litigation in the Great White North


A recent decision in the Federal Court of Canada spotlights green IP litigation in Canada.

On October 5, 2007 Hollick Solar Systems Limited (Hollick) and Conserval Engineering Incorporated (Conserval), which specializes in solar air heating technology, commenced a patent and trade-mark infringement proceeding against several parties, including Matrix Energy Incorporated, a distributor of renewable energy equipment.

Hollick and Conserval claimed infringement of claims 1 and 10 of Canadian Letters Patent 1,326,619, entitled “Method and apparatus for preheating ventilation air for a building” (‘619 Patent).

As to the trade-mark, Hollick and Conserval alleged infringement and depreciation of the value of the goodwill of their trade-mark SOLARWALL® by the sale of the Matrixair system and the use of “mur solaire” and passing off by Matrix for the systems of Conserval.

The ‘619 Patent is directed to a method of preheating ventilation air and an apparatus for preheating ventilation air by solar means. 

More particularly, according to the Abstract of the ‘619 Patent, ventilation air for a building is preheated by providing on a wall of the building a solar-energy absorbent collector panel with a plurality of air-inlet openings which communicate with air collection channels behind the panel.


Outside air passing upwardly along the panel is heated by the heat of the panel, which itself is heated by a combination of solar radiation and heat being lost from the interior of the building.

The case focused on whether the term describing the location of the inlet “at the top” was an essential element of the claims at issue. 

Matrix asserted non-infringement of claims 1 and 10 of the ‘619 Patent because the inlet of the accused system was at the bottom, or at least not at the top.

Matrix also contended non-infringement of the trade-mark SOLARWALL® on the ground that the trade-mark was outside the scope of a distribution agreement between Matrix and Hollick.

The Federal Court, in construing the claims at issue, concluded:

the location of the inlet in the Matrix system (at the bottom or at least below the midpoint) had a material effect upon the way the invention worked and did not perform essentially the same as the invention of the ‘619 Patent;

that it would have been obvious to an expert in the field that drawing air from the bottom or at least below the midpoint of the panel would have a material effect upon the invention; and

the person skilled in the art would have understood that strict compliance with the term “at the top” was an essential element of the invention.

The court further noted the contradictory testimony of an expert for Hollick and Conserval, whose statements in another case directly conflicted with his testimony in this case.

The court also determined non-infringement of the trade-mark because Hollick and Conserval failed to prove loss of sales from use of the trade-mark by Matrix.

Marcelo König Sarkis, P. Eng., FIPIC, is a Senior Patent Agent and Professional Engineer with Heenan Blaikie LLP.  He is a member of Heenan Blaikie’s Intellectual Property as well as Climate, Cleantech and Sustainability Groups.

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Eric Lane

Eric Lane, the founder and principal of Green Patent Law, is an intellectual property lawyer and registered U.S. patent attorney in New York and is a member of the bar in New York and California. Eric has more than two decades of experience working with wind, solar PV, CSP, biofuels, and geothermal, energy storage technologies, carbon capture and sequestration, medical devices, data communications, mechanical, chemical, internet and software.