Four Important Canadian Inventions

John Vrana and the Centrifugal Diffuser

Within six months of my starting date of November 5, 1963, Ed Morrice gave me a file to draft a patent application for Pratt & Whitney Canada[1]. The inventor was John Vrana, and the invention was directed to a diffuser for a centrifugal compressor designed for the PT-6 turbine engine.
               

Fig. 3 of US patent 3,333,762; a cross section of a portion of the impeller and the diffuser

The drawings had previously been made by Mr. Deschamps, so he was able to explain what he knew about the diffuser. John Vrana, on the other hand, was never available and I never met him or spoke to him on the phone. He was also a professor at McGill University in Montréal, so with travelling between a classroom at McGill and his office at Pratt, he had little time for a patent application on an invention that had, at the time, not found its usefulness. I went ahead and drafted the description and prepared the claims, somewhat in the dark.

 I sent a first draft to Mr. Vrana, and he returned it promptly with whole paragraphs crossed out, but without notes or explanations. I revised the description several times and each time the draft was returned to me with fewer paragraphs crossed out. After a few months, Gerry Gagnon, an engineer, and the liaison officer at Pratt & Whitney Canada, came in to meet with Ed Morrice to go over several files that Mr. Morrice had been working on. Ed Morrice called me in to introduce me to Mr. Gagnon and to discuss the Vrana application. Mr. Gagnon declared that the patent application had been approved by John Vrana, but that the patent committee had decided not to file the application for lack of interest. I was shocked. I managed to calmly tell Mr. Gagnon that the firm would have to charge Pratt for the full cost of preparing the application and they would only save on the filing fees. Mr. Gagnon replied that they would reconsider and get back to us.

A few days later, Ed Morrice had heard back from Gerry Gagnon, and we now had instructions to file the application in the USA, Canada, the UK and Germany[2], but nowhere else.

The application was filed in the United States of America on November 12, 1964. About 18 months later, Charlie Warren, a US patent attorney and head of the patent department at Pratt & Whitney in Hartford, Connecticut, flew up to Montréal to meet us. The centrifugal diffuser had become very important to head office. We discussed the application and he said that he wanted to take over the prosecution of the American application and he proceeded to file a continuation-in-part application on November 16, 1966. The patent was granted on August 1, 1967, as US patent 3,333,762.

The centrifugal diffuser was copied by General Electric to be incorporated into an engine built for the US military. There was much secrecy around the development of the General Electric engine, but Pratt & Whitney Canada eventually sued the US government[3] for infringement. Much mystery surrounded the litigation. I heard of documents being stolen from Pratt’s lawyers’ offices, in New York.

Note to the non-technical readers. You may wish to advance to the paragraph beginning with “In plain language…”.

In drafting the claims, I set up a geometric formula in the claims.

Claim 1 reads:

In a centrifugal compressor of the type having a rotary impeller, a diffuser comprising an annular member having an inner circumference closely surrounding the impeller, a plurality of intersecting passages in said annular member extending outwardly from said inner circumference, each of said passages being substantially straight from the inner end of the passage to a point downstream of its intersection with adjacent passages, said passages being curvilinear in transverse section, the centre lines of the substantially straight portions of the said passages being tangent to a common tangency circle having approximately the same diameter as the impeller, said centre lines being also adapted to intersect the centre lines of adjacent passages at a distance outward from said common circle having a length less than one half the maximum transverse dimension of the passage measured at a point near the intersection of the adjacent passages.

The passages intersected at a point spaced from the inner circumference of the diffuser. So, claim 2 that was dependent on claim one, read in part:

… and define at their intersections a substantially sharp dividing wall having a curvilinear leading edge that is swept back in the direction of flow through the diffuser.

Claim 4. A centrifugal compressor as in claim 2 in which the passages are circular and the leading edge of the dividing wall is substantially elliptical.

In plain language, this solid annular metal ring had bores or passages drilled through with each bore at an angle so that the bores were tangent to the circumference of the impeller, and they intersected each other to create an elliptical leading edge between each bore. This happened to be the ideal aerodynamic profile for a diffuser. Previously, diffusers were fabricated from many metallic sheets. The Vrana diffuser was made from a single metal ring.

If you visit the Pratt & Whitney Canada plant in Longueuil, Quebec, you can see this diffuser in a glass case in the lobby of the factory. Some two decades later, I was invited by Jeff Astle, the then head of the IP department, to attend one of the annual lunches arranged to honour company employees for whom patents had been granted in the year. Elvie Smith, a former CEO of Pratt & Whitney Canada, gave a speech in which he mentioned that, but for three major patented inventions made at the company, the Canadian operation would have been moved back to Hartford[4]. The centrifugal diffuser, invented by John Vrana, was one of the three major inventions mentioned by Elvie Smith. Pratt & Whitney Canada and its parent company, United Technologies, remained clients of the firm beyond my retirement in 2005.

Rudy Vit and the Advent of Mechanized Forestry Equipment

In 1967, Rudy Vit came to see us with an invention in the field of forestry machinery. At that time, machinery in the wood harvesting industry included the iconic chain saw, vehicles for dragging felled trees to the roadside, called skidders and other transport type vehicles. Rudy Vit was quite excited. He had just landed a job at Sicard Inc., a manufacturer of snow blowing equipment in St. Thérèse, Quebec. The company was interested in diversifying its manufacturing, since snowblowers were seasonal. On the other hand, forestry machinery was in its infancy.

I went to the plant several times to see the new mobile equipment they were building that appeared to me like large monsters to tackle the forest. Rudy Vit showed me a new machine that he had designed that included a boom mounted on a vehicle on which he had mounted a vertical grapple with a cutting blade at the bottom. The grapple would surround a standing tree and cut it at its stump. Then, the boom and grapple would transfer the felled tree to a platform on the rear of the vehicle. This machine was to be the first Feller Buncher.

Prior to drafting the patent application, we conducted a patent search in the United States Patent & Trademark Office (USPTO), to determine what other inventions in this category of mechanics had been patented. The search, much to our surprise, turned up US patent 3,074,447 to the same invention, in the name of Joseph A. Bombardier, the iconic inventor of the snowmobile.

US 3,074,447 Fig. 1

It turned out that, while at the University of Laval in the City of Québec, Rudy Vit had accepted a summer job at Mr. Bombardier’s shop in Valcourt, Quebec. While there he had described some of his ideas to Joseph Bombardier, who insisted he build a prototype of the Feller Buncher while at the shop. This project was the subject of Rudy Vit’s master’s thesis. Mr. Bombardier had appropriated Rudy Vit’s invention.

I was at the Sicard offices with Mr. Vit discussing the search report, so we sought out the CEO to explain this delicate situation. He called Laurent Beaudoin, the then CEO at Bombardier, to explain what we had found and suggesting that Rudy Vit was the actual inventor. Mr. Beaudoin called back to suggest that we should ignore that patent and proceed to do what we wanted to do. Many years later, I visited the Bombardier Museum in Valcourt with my family and there was a mock-up of the Feller Buncher, with a note identifying Rudy Vit as the inventor.

I obtained a US patent 3,498,347 and Canadian patent 888,564, for Rudy Vit’s much refined version of the Feller Buncher assigned to Sicard Inc. Unfortunately for Rudy Vit, Sicard, Inc. was sold in 1967–1968 to Pacific Car and Foundry, now PACCAR, the manufacturer of Kenworth trucks. The plant is still in St. Thérèse, Québec, and has quadrupled in size, but Kenworth trucks are the only products being manufactured there. The patents to the forestry machinery were transferred back to Rudy Vit from Pacific Car and Foundry. Rudy continued to invent forestry machinery, and, as a client of Alan Swabey & Co.

Bauer Skates

An important client at that time was Canstar Sports, later bought by Bauer Hockey Corp.   Initially, Philip Chiarella, a former football player in the Continental Football League, came to see me with a mockup of a molded plastic hockey skate boot. At the time his company was Micron Sports Products. We filed industrial design applications for Micron on the skate boot.   His company merged into Gamebridge Inc., and then Warrington Inc., Canstar Inc. and eventually Bauer.

The company had two prolific inventors, namely René Bourque and Icaro Olivieri, that were the mainstay of hockey skate development. René Bourque was a down-to-earth French-Canadian engineer who developed many of the hockey skate boots, especially those with composite materials including plastic materials. I enjoyed chatting with René, especially when I went to the Bauer plant in St-Jerome, Quebec, to review the latest inventions made by René and others, like Ken Hall and a consultant Tom Hoshizaki, a professor at McGill.

Icaro Olivieri was a turbo-charged businessman and an Italian citizen with a manufacturing plant in Treviso, Italy. He also had a home in Westmount, Quebec, and whenever we met, he had a small notebook in which he continually made sketches and notes while he spoke. Icaro, at one time, was part owner of Gamebridge and Warrington. In 1988 he then bought out Warrington with an investment group and named the company Canstar. In 1995 Nike bought Bauer/Canstar.

The important innovation in hockey skates in the early ’80s was the blade fixed in a molded plastic holder called the Tuuk blade, designed by Crow Smith. George Wooley and Icaro Olivieri improved the Tuuk blade with a series of inventions for which patents were obtained. Bauer had since purchased the rights to the Tuuk blade.

Fig. 1 of US patent 5,088,749

Icaro Olivieri, inventor

I enjoyed working for Bauer and seeing the cutting edge of fast-moving ice skate technology. However, in 1989, the firm Swabey, Mitchell, Houle, Marcoux and Sher was negotiating with Ogilvy Renault, as will be discussed further, to enter a business alliance. Ogilvy Renault represented CCM, the main competitor of Bauer. Nelson Landry was the lawyer representing CCM, and so, after discussion, I agreed to withdraw from the Bauer/Nike files. I had to agree not to be involved with CCM (set up of a Chinese wall) for two years, after the alliance with Ogilvy Renault was completed.

Fieldturf

In 1997, I was introduced to Jean Prevost and John Gilman, who had started a company to make artificial turf for tennis courts and other playing fields. They had obtained a licence agreement from Frederick Haas, an inventor from Louisiana, for innovative artificial turf. His patents included US 3,995,079 issued on November 30, 1976. The invention described in the patent comprised a carpet of a pile fabric with granular material on the top of the carpet with grass like pile elements sticking above the granular material.

At the time, AstroTurf was the only major synthetic grass manufacturer. The AstroTurf system placed a soil like material or resilient pad, as a cushion on the concrete foundation and the synthetic carpet above the material. In the late 1980s, AstroTurf was the only synthetic system replacing natural grass on sports playing fields, such as the newly covered stadium in Houston, Texas. However, incidents of injuries from “grass burn” were on the increase. According to an article in Inc. magazine written by Edward O. Welles, dated February 1, 2000, “In a 1995 survey of 965 NFL players, 93% said they believed AstroTurf caused more injuries than grass.”

John Gilman was already trying to market the Fieldturf version of the licensed Haas system, as improved by Jean Prevost. John and Jean were confident that the Fieldturf version was protected by the Haas patent.

The problem with that strategy was that the latest Haas patent would expire in 2000. It was important that Fieldturf obtain patent protection on its improvements. At a meeting with Jean Prevost, I proposed that we look at all the differences between the Haas product and the Prevost improvements. Evidently, the Haas patent was prior art citable against any patent application filed on the Prevost version. I suggested examining details like in a “kitchen sink” approach. Jean and I spent several hours analyzing everything that had been added or subtracted from the Haas product.

One important improvement made by Jean Prevost was to mix small rubber particles with sand to replace the granular material of the Haas version. Another was to extend the length of the pile elements or ribbons so that the exposed portion of the ribbons, when laid down, would cover the space between the rows of ribbons. Since the pile fabric carpet was made on a carpet machine, the pile elements extended in regularly spaced rows The spacing between the rows could be adjusted. This became another improvement by Jean Prevost that resulted in US pat 6,723,412 Prevost 2004[5]. This patent was typical of several patents that were born from the original US pat 6,338,885.

Claim 1 of the 6,723,412 patents reads as follows:

1. A synthetic surface having a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other from between 5/8 inch and 2¼ inches, and the length of the ribbons, extending upwardly from the backing member, is at least twice the dimension of the spacing between the rows of ribbons, the surface including a relatively thick layer of particulate material on the backing member supporting the ribbons in a relatively upright position relative to the backing member, wherein the particulate layer has a thickness of substantially two thirds the length of the ribbons.

3 Backing member; 5 rows of ribbons; 7 ribbons; 9 particulate materials

According to the patent, the advantage of such an arrangement was that the longer ribbons could lay over the particulate material between the rows. The longer ribbons allow a thicker layer of particulate material to be used, which can eliminate the need for a resilient pad and make the installation of the surface simpler and cheaper.

The thicker layer of particulate material or infill promotes better drainage because of the higher water head created by water on the synthetic grass. The longer ribbons can provide more ribbon material above the infill for certain sport surfaces, creating a more realistic grass-like surface that, in combination with the wider spacing of the ribbon rows, that allows a player’s cleats to penetrate the surface for traction. The player’s cleats can move the ribbons and infill material sideways to allow easier release.

The original patent application was filed on October 9, 1997, and patent 6,338,885 was granted on January 15, 2002. During the examination of the patent application, an official action (examination report) was received where all the claims were rejected in view of earlier patents. Jean Prevost and I travelled to Washington, D.C., to interview the examiner at the US Patent and Trademark Office. Before arriving, the examiner, Wendy Boss, called me to ask if her supervisor, Deborah Jones, could attend the interview. Jean and I sat on one side of a narrow desk. I presented our arguments and I sensed that the dialogue was sympathetic to our position.

We received a Notice of Allowance shortly thereafter, and then the patent. Before the patent was issued, however, we filed divisional applications, one of which resulted in the US 6,723.412. We filed for divisional applications because we had claims related to other features that the examiner considered to be directed to different inventions and therefore different patents.

AstroTurf was stuck with a product that was obsolete, in view of the many injuries that were reported and the superiority of the Fieldturf concept. AstroTurf decided to design a surface that resembled the Fieldturf product. In fact, AstroTurf took the initiative to ask the USPTO to recall US patent 6,723,412 and filed a re-examination procedure against the patent. The patent was delayed for five years while the re-examination procedure ran its course. At the end, the Patent Office confirmed that the original claims were valid as granted and a re-examination certificate on the patent.

Fieldturf then sued AstroTurf under the ’412 patent. A decision was delivered by the United States District Court Eastern District of Michigan Southern Division, December 10, 2010[6]. Fieldturf was the winner, and I understood that the damages to be paid by AstroTurf were in the area of $25,000,000.

John Gilman was determined to file patent application in many corners of the world. I remember dealing with associates in several African countries. In fact, Fieldturf filed an action in the courts in Australia against a local enterprise. The trial was scheduled for somewhere in the spring of 2013. John asked me to go to Melbourne to attend the trial. The lawyer handling the case for Fieldturf was Griffith Hack. Tony Ward of the firm had reserved tickets to an Australian football game for the day I was scheduled to arrive. The first leg of my flight left Montréal for Los Angeles. On the way to Los Angeles, I received a call from Fieldturf’s Montréal lawyers informing me that negotiations to settle the case were going on between the parties in Australia and I should expect instructions, once I landed in Los Angeles. The flight to Melbourne was to leave at midnight, LA time. I had my boarding pass when I received a call that the case was settled. The airline had to get my luggage off the plane. I got a room in a hotel at the airport, and I flew back to Montréal the next day.

John and Jean sold Fieldturf to Targett, a French company that Fieldturf was suing in France.

 ***

Robert E. Mitchell C.M.

3033 rue Sherbrooke Ouest​ 

Appt. 202

Westmount (Québec) H3Z 1A3

[1]  United Aircraft of Canada Limited, in 1964

[2] This was 15 years before the introduction of the Europe Patent Convention, so patent applications had to be filed in individual European countries.

[3] Fourteen Cl. Ct. 268 (1988); 17Cl.Ct.777 (1989)

[4] The Canadian facility was established during WW2 for the purpose of manufacturing aircraft engines for Great Britain without affecting the neutrality of the USA (prior to December 7, 1941).

[5] A patent granted from a divisional application issued as US pat 6,338,885, which was originally filed on October 9, 1997.

[6] Civil Action No. 2 :10-cv-12492-SJM-MJH, Hon. Stephen J. Murphy III; Magistrate Judge Michael J. Hluchaniuk. No appeal.