Contempt Motion Dismissed on the Facts

DeepRoot Green Infrastructure, LLC v Greenblue Urban North America Inc 2022 FC 709 McDonald J

            2,552,348 / 2,829,599 / Integrated Tree Root and Storm Water System

DeepRoot’s 348 and 599 patents relate to a landscaping system to promote healthy urban trees using a subsurface structural cell system that supports the hardscape (eg sidewalk and paving), enables stormwater retention and filtration as well as allowing tree roots to grow in uncompacted soil. In DeepRoot v Greenblue 2021 FC 501 (see here) McDonald J held that DeepRoot’s patents were infringed by Greenblue’s RootSpace product. She consequently enjoined Greenblue from infringing. After this decision, Greenblue revised its product by adding the “Airform” component, in an attempt to design around the patents. In response, DeepRoot brought a contempt motion against Greenblue. McDonald J dismissed the motion in a decision that turned entirely on the facts, on the basis that DeepRoot had not proven beyond a reasonable doubt that GleenBlue’s revised system was infringing.

GreenBlue’s RootSpace system with the AirForm component is shown below. The structural cell provides support and is in-filled with earth so that roots can grow freely without soil. An essential element of the claims at issue was that “at least approximately 85% of the volume can be filled with soil.” McDonald J construed this as meaning greater than 84.5% [8]–[9].

 As I understand it, the AirForm component is the flat square on the right. The other components are the same as the system that was found to infringe [39]. The AirForm is inserted at the base of the RootSpace, thereby taking up space that would otherwise be filled with soil, with the intent of reducing the volume available to be filled with soil to below 84.5%.

The key question in the contempt hearing was whether the RootSpace AirForm system did in fact have less than 84.5% available volume. Since this was a contempt hearing, the burden was on DeepRoot to establish beyond a reasonable doubt that that the volume of the AirForm system was at least 84.5%. DeepRoot failed to discharge this burden.

There was an initial purely factual dispute as to the available volume just based on measurements. There was also a suggestion that the AirForm would deform under the weight of soil when in place, so that the available volume in use would be greater than when measured on the surface. DeepRoot did not establish either of these points beyond a reasonable doubt.

DeepRoot also argued that the AirForm component did not contribute to the structure. The factual dispute was whether the AirForm component contributed functionally to system (ie by increasing rigidity), or whether it was simply a spacer with the sole purpose of reducing the available volume. I must say that it is not entirely clear to me why this matters. Even if the sole purpose was to reduce the available volume to less than 85%, it’s not clear to me why that would affect the conclusion on infringement, so long as it actually did so. In any event, DeepRoot's argument on this point failed on the facts: the evidence was unclear and so the point was not established beyond a reasonable doubt [48].