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Design-Around-the-Rosie: Federal Court Dismisses Contempt Claim for Patent Infringement

June 22, 2022


In DeepRoot Green Infrastructure, LLC v GreenBlue Urban North America Inc, 2022 FC 709 the Federal Court (the “Court”) dismissed DeepRoot Green Infrastructure, LLC’s (“DeepRoot”) allegations of contempt against the defendant, GreenBlue Urban North America Inc. (“GreenBlue”).

The Court held that the plaintiff failed to demonstrate that GreenBlue’s tree root and storm water management system was in contempt of the Court’s prior injunction granted in relation to a similar patent infringement suit -- DeepRoot Green Infrastructure, LLC v GreenBlue Urban North America Inc, 2021 FC 501 (the “Injunction Decision”).


DeepRoot and GreenBlue are landscape design companies operating in a niche urban market for the management of tree roots and storm water runoff.

In the Injunction Decision, dated May 28, 2021, the Court held that GreenBlue’s RootSpace structural cells infringed upon claims in DeepRoot’s 348 and 599 patents, and enjoined GreenBlue from infringing upon them. The dispute in this case was over the defendant’s RootSpace AirForm Package – a tree root and storm water management system that was said to be a “design-around” of the 348 and 599 patents intended to avoid the Court’s injunction.

DeepRoot’s 348 and 599 patents have the same field of invention: the use of integrated cells in a structural system that enables tree root growth and the infiltration of storm water while preventing hard scape damage. Key to both patents is that the structural cells comprise of a base, a top, and structural members positioned such that 84.5% or greater of the volume can be filled with soil and the structural cell can bear the substantial load of the hardscape and traffic.

The Court’s Decision

What is the Available Volume of the RootSpace AirForm?

The Court held that the plaintiff failed to conclusively establish that the measurement of the available volume for soil and storm water of the RootSpace AirForm was “at least approximately 85%” – an essential element of the 348 and 599 patents.

DeepRoot’s expert witness reported that the available volume in the RootSpace AirForm is likely over 85% when the void space around the AirForm insert and the weight of the soil is considered. GreenBlue’s expert performed volume measurements and concluded that the Available Volume for the tested AirForm System modules ranged from 82% - 83%, and therefore raised doubt about whether the product infringes the 348 and 599 patents.

Does the RootSpace AirForm Contribute to the Structure?

DeepRoot alleged that that the only difference between the infringing RootSpace Structural Cells and the RootSpace AirForm System is that GreenBlue now provides the RootSpace AirForm as an additional component. DeepRoot argued that without this component GreenBlue would be in contempt of the Court’s underlying judgement.

The Court concluded that the evidence on whether the AirForm adds an element to the structural cell remains unclear, leaving GreenBlue with the benefit of the doubt. This conclusion came after GreenBlue’s experts testified that the AirForm helps with installation and should be considered a part of the system’s structure since it contributes to lateral and vertical loads in the overall system.

Is there Photographic Evidence of GreenBlue Inducing Infringement?

Even if GreenBlue did not directly contravene the Court’s injunction, the Court could have found GreenBlue in contempt of the Injunction Decision if it induced infringement according to the test set out in Corlac Inc v Weatherford Canada Inc, 2011 FCA 228. DeepRoot introduced photographic evidence depicting partial installation of the RootSpace AirForm system, arguing that every assembly of the RootSpace AirForm constitutes an assembly of the RootSpace structural cell and is thus an act of infringement of at least the 599 patent.

The Court held that, while there was evidence of the sale and assembly of the RootSpace AirForm package, there was no evidence of the sale or assembly of the original RootSpace product and no evidence that GreenBlue has marketed or promoted the original RootSpace product since the Judgment.

For businesses adopting a “design-around” patent strategy, the Court’s decision raises important considerations about how products can be modified when reacting to patent infringement claims.


Authors: Eyitayo Kunle-Oladosu and Sarah Stothart


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