Uview Ultraviolet Systems Inc. v. Brasscorp Ltd.

Uview Ultraviolet Systems Inc. v. Brasscorp Ltd.
Court (s) Database
Federal Court Decisions
Date
2009-03-03
Neutral citation
2009 FC 58
File numbers
T-824-04
Decision Content
Date: 20090303
Docket: T-824-04
Citation: 2009 FC 58
Ottawa, Ontario, March 3, 2009
PRESENT: The Honourable Mr. Justice O'Keefe
BETWEEN:
UVIEW ULTRAVIOLET SYSTEMS INC.
Plaintiff
and
BRASSCORP LTD.
(d.b.a. CLIPLIGHT MANUFACTURING COMPANY)
Defendants
REASONS FOR THE
JUDGMENT OF DECEMBER 23, 2008
AND AMENDED JUDGMENT
O’KEEFE J.
[1] This is an action brought by Uview Ultraviolet Systems Inc. (the plaintiff) against Brasscorp Ltd. (defendant) for infringement of Canadian Patents 2,235,673 (‘673 Patent) and 2,224,024 (‘024 Patent). The defendants on the action have counterclaimed.
[2] With respect to the original action, the plaintiff requests the following relief:
a) a declaration as between the plaintiff and the defendant that the ‘673 Patent and the ‘024 Patent are owned by the plaintiff and are valid and subsisting;
b) a declaration that the defendant has infringed claims 1, 2, 3, 4, 7, 8, 9, 10, 14, 15 and 16 of the ‘673 Patent and claims 1, 2, 3, 4, 5, 6, 7, 9, 10, 11, 12, 13, 14, 15, 17, 18, 19, 20, 21 and 38 of the ‘024 Patent and has induced and procured the infringement of claims 1, 2 and 3 of the ‘673 Patent and claim 9 of the ‘024 Patent by others;
c) interim, interlocutory and permanent injunctions to restrain the defendant by itself or by its shareholders, directors, officers, agents, servants, employees, affiliates, subsidiaries, or any other entity under its authority or control from:
i) directly or indirectly infringing any claims of the ‘673 Patent or the ‘024 Patent; and
ii) inducing or procuring others to infringe claims of the ‘673 Patent or the ‘024 Patent;
d) an order directing the defendant to forthwith deliver up to the plaintiff all articles in its possession or power, used, made or being made in infringement of the said ‘673 Patent or the ‘024 Patent, or that such articles be destroyed;
e) damages in an amount to be ascertained;
f) or, in the alternative to the order sought in (e), an accounting of the profits made by the defendant as a result of its unlawful activities;
g) reasonable compensation for acts on the part of the defendant after the applications for the ‘673 Patent or the ‘024 Patent became open to public inspection and before the grant of the said patents, that would have constituted an infringement of the respective patents if they had been granted on the day the application became open to public inspection;
h) pre-judgment and post-judgment interest; and
i) its costs of this action on a solicitor and client basis plus GST.
[3] With respect to the counterclaim, the defendant requests the following relief:
a) a declaration that the claims of the ‘673 Patent and the ‘024 Patent are and always have been, invalid and void;
b) an interim, interlocutory and permanent injunction restraining the plaintiff, its officers, directors, agents, employees and all those over whom it exercises control, either directly or indirectly, from making false or misleading statements tending to discredit the business, wares and services of the defendant, contrary to subsection 7(a) of the Trade-marks Act, R.S.C. 1985, c. T-13;
c) pre- and post-judgment interest on any and all monetary relief or costs at a rate exceeding the prevailing consumer lending rate; and
d) costs on a solicitor client scale or at the high end of Column V of Tariff B of the Federal Courts Rules, SOR/98-106.
Background
[4] Uview Ultraviolet Systems Inc. (the plaintiff, defendant in the counterclaim) is a corporation incorporated under the laws of Ontario that manufactures and distributes air-conditioning leak detection systems. The plaintiff is the owner of the ‘673 Patent and the ‘024 Patent.
[5] The ‘673 Patent was laid open to public inspection on March 26, 1998 and was granted to the plaintiff on August 13, 2002 for an invention entitled Method and Apparatus for Charging Pressurized Systems. The claims of the ‘673 Patent includes a method, apparatus and canister used in charging a closed, pressurized air-conditioning system with a secondary fluid as per the invention. The ‘673 Patent grants the plaintiff the exclusive right, privilege and liberty of making, constructing, using and vending to others to be used in Canada, the invention as described in the specification of the ‘673 Patent.
[6] The ’024 Patent was laid open to public inspection on June 8, 1999 and was granted to the plaintiff on November 21, 2006 for an invention entitled Apparatus and Process for Charging a Pressurized System. The claims of the ‘024 Patent includes an apparatus, a canister and a method used in charging a closed, pressurized air conditioning system with a secondary fluid. The ‘024 Patent grants the plaintiff exclusive right, privilege and liberty of making, constructing, using and vending to others to be used in Canada, the invention as described in the specification of the ‘024 Patent.
[7] Brasscorp Ltd. (the defendant, plaintiff in the counterclaim) carries on business as Cliplight Manufacturing Company. The defendant makes, constructs and/or vends to others to be used in Canada an apparatus and cartridges for charging a closed pressurized air conditioning system with a dye under the name THE CLIPLIGHT REVOLVER UV DYE SYSTEM. The defendant also makes, constructs and/or vends to others, two apparatuses to be used in Canada, for charging a closed pressurized air conditioning system, one with a dye sold under the brand, THE DYE STICK, and one with an oil sold under the brand, THE RETRO STICK.
Prior Art
[8] Infusion methods were the most common way to inject secondary fluids into pressurized air conditioning or refrigeration (AC) systems prior to the filing of the ‘673 Patent. Infusion methods used pressurized refrigerant to carry fluid into the AC systems. The 701 infusion system which is exhibit 9 is an example of an infusion device.
[9] Paragraphs 5 to 7 of the plaintiff’s closing argument summarizes the other prior art. These paragraphs read as follows:
5. Prior to the filing of the ‘673 patent, the most common methods used to inject secondary fluids into AC systems were infusion methods that used pressurized refrigerant to carry fluid into the AC systems. The 701 infusion system (Exhibit 9) is an example of such an infusion device.
6. the prior art also includes three hand operated mechanical injector implements adapted for injecting secondary fluids into AC systems. US patent 4,467,620 (“Bradley”) which issued August 28, 1984 disclosed a hand operated tool for injection of oil into AC systems in respect of which there is no evidence of any commercialization. In the early to mid-1990’s, two mechanical injectors for injecting fluids into AC systems were introduced in the market. The Quest injector was a patented disposable “Do It Yourself” hand operated mechanical injector prefilled with red non-fluorescing dye that saw limited distribution in Canada, and that has been discontinued as a listed product by its manufacturer. The Classic injector was a reusable, hand operated mechanical injector that required filling of a reservoir prior to each use. The Plaintiff’s predecessor P & F Technologies (“P&F”), distributed the Classic tool in Canada for a short time and did not find it to be a commercially successful product. Notwithstanding introduction of the Quest and Classic products, infusion devices that used pressurized gas remained the most commonly used AC fluid injection methods for carrying secondary fluids into AC systems.
7. Bradley, Quest and Classic are all unitary or one-piece injectors, comprising:
· a housing for containing a secondary fluid
· a piston in the housing, and
· a threaded ram engaged with threads in the housing to drive
the piston.
In each case, the ram is rotated to drive the piston into the housing to expel fluid from the housing. Bradley provides a cross bar and Classic provides a hand grip to enable manual rotation of the ram. Quest differs from Bradley and Classic in that a wrench is required to facilitate rotation of the ram. Bradley and Classic were refillable and Quest was disposable.
[10] The president of Uview Ultraviolet Systems and the sole inventor named on the plaintiff’s patents in issue (the ‘673 Patent and ‘024 Patent), Phil Trigiani, was trained and worked as an automotive mechanic and has experience in servicing automotive air conditioners. He also has a masters degree in business administration. Mr. Trigiani and his cousin, Tony Ferraro, who is also an experienced automotive technician, established P & F Technologies to manufacture refrigerant recovery implements. The business expanded to include recovery and recycling implements and the distribution of other automotive servicing equipment and materials.
[11] There were concerns about the depletion of the ozone layer in the 1980s. This resulted in the adoption of the Montréal Protocol in the early 1990s. This resulted in a requirement for the phasing out and eventual elimination of refrigerants released into the atmosphere. As a result, before an AC system could be topped up to enable it to function properly, the system had to be checked for leaks and the leaks repaired.
[12] As well, the existing coolant R12 was replaced with a coolant known as R134. The R134 had a smaller molecule than the R12 coolant. This made leak detection more difficult. As a result, the demand for effective leak detection tools and methods increased. In response to this demand, the use of UV fluorescing dye as a leak detection method in pressurized AC systems became popular (see paragraphs 6 and 7 of the agreed statement of facts).
[13] Mr. Trigiani and Mr. Ferraro formed the plaintiff, Uview Ultraviolet Systems Inc., and began to design, develop and blend their own dyes and manufacture their own UV lights and injection devices.
[14] In an effort to develop a better injector product, Mr. Trigiani states that he thought of a device which was an injector product which would have a disposable container that could be prefilled with a fluid that could be injected into an AC system. He would need to invent some type of mechanical advantage to overcome the pressure of the AC system instead of the infusion method.
[15] In or around March 1996, Mr. Trigiani and Mr. Ferraro applied for US patent protection.
[16] Mr. Trigiani continued to make changes to his idea which resulted in a prototype injector being produced in the summer of 1996. His US patent attorney told him the US application would not cover the prototype injector. As a result, the ‘673 priority application was prepared.
[17] In 1996, two more prototypes were produced and although they worked, they were too expensive to be a viable commercial product.
[18] After more thought, Mr. Trigiani decided to replace his prototype injector with a commercial caulking gun. The commercial caulking gun he adapted had sufficient power to overcome the pressure of the AC system so as to allow the dye to be injected into the system.
[19] In late 1996, the design of the prefilled cartridges to be used with the caulking gun injector was completed.
[20] A European patent was also obtained for the caulking gun injector.
[21] The plaintiff named its caulking gun injector the “SPOTGUN”.
[22] Paragraph 11 of the agreed statement of facts describes the SPOTGUN and when it was first sold:
11. The Plaintiff first sold its commercial product under the SPOTGUN brand on February 4, 1997. The injector was a modified caulking gun style injector; the cartridge included a threaded nozzle; and the charging conduit included a connector adapted to engage the threaded nozzle, a check valve at the connection to the nozzle and a connector having a valve adapted to open upon engagement with and close upon disengagement from charge ports on AC systems.
[23] Paragraph 12 of the agreed statement of facts states:
12. The Plaintiff’s SPOTGUN product was recognized by Motor magazine as one of the “Top 20 Tools That Rule” in the September 1997 edition.
[24] The plaintiff’s SPOTGUN was adopted by General Motors within a year of its commercial launch. Every General Motors dealer in North America was provided with the SPOTGUN for injection into AC units.
[25] Around the same time as the plaintiff started to sell SPOTGUN, a product called the ROBINAIR injector was marketed. The ROBINAIR injector was a plastic syringe connected to a conduit for connection to AC systems through a two piece metal nozzle containing an anti-back flow valve attached through the end of the syringe barrel.
[26] Also around this same time, the defendant tried to develop a prototype injector that used a separate injector and cartridge. Part of the cartridge had a foil top that was punched in the injector to open communication with a nozzle on the injector that included an anti-back flow valve. No evidence was presented to show that the drawings or any prototype was disclosed to the public by the defendant.
[27] Paragraphs 14, 16, 18, 19, 20, 24, 27, 28, 29 and 30 of the agreed statement of facts outline the defendant’s products and its activities. These paragraphs read as follows:
14. On November 4, 1997 the Defendant filed U.S. provisional application No. 60-064,172 (the provisional application) entitled precision liquid injection system with the USPTO.
. . .
16. On November 3, 1998 the Defendant filed Canadian patent application No. 2,252,329 (the ‘329 application) in the Canadian Patent Office claiming priority to the provisional application filed November 4, 1997. The ‘329 application was open to public inspection on May 4, 1999 and was allowed on February 29, 2008.
. . .
18. The Defendant commenced marketing and sales of its DYE STICK and THE RETRO STICK products in 1998.
19. The Defendant has sold its DYE STICK injector separately and as part of kits including hoses, lights, and related apparatus. The Defendant has marketed its DYE STICK injector as a disposable dye injector for use to inject dye through a hose into an air-conditioning system and as working with SPOTGUN hoses.
20. The Defendant has sold its RETRO STICK injector separately and as part of kits including hoses in Canada and internationally. The Defendant markets the RETRO STICK for use in injecting conditioning oil into a closed air-conditioning system through a hose.
. . .
24. The Defendant commenced sales of the REVOLVER dye injection system in Canada about 2003. The Defendant sells REVOLVER injectors, cartridges and hoses separately, and as part of kits that may also include UV lights, adapters and other related items, for the express purpose of injecting a UV dye into a closed pressurized AC system.
. . .
27. On June 6, 2006 the Defendant entered into an agreement entitled “Supply Agreement” with Spectronics (“the Spectronics Agreement”). Prior to execution of the Spectronics agreement the Defendant obtained the components for its REVOLVER dye injection system directly from specified suppliers and assembled and filled the cartridges with dye itself.
28. Pursuant to the Spectronics Agreement, Spectronics purchases REVOLVER injectors and components for cartridges from “Cliplight’s Suppliers”. These suppliers are the same suppliers the Defendant previously obtained its products from, and continue to manufacture the products and components using tooling owned by the Defendant. Spectronics assembles the cartridges and fills them with dye supplied by Spectronics. Aside from the dye, the REVOLVER injectors and cartridges supplied by Spectronics are identical to the REVOLVER injectors and cartridges that the Defendant sold prior to entering into the Spectronics Agreement. The Defendant does not obtain the hoses it sells for the REVOLVER dye injection system from Spectronics.
29. The REVOLVER injectors and dye cartridges supplied through Spectronics are identical in form and structure to those sold by the Defendant prior to entering into the Spectronics Agreement.
30. On November 7, 2007, the Defendant provided Spectronics with a written request for indemnification in this litigation pursuant to paragraph 5.3 of the Spectronics Agreement.
[28] The plaintiff’s dealings with Spectronics is summarized in paragraphs 21, 22 and 23 of the agreed statement of facts which state:
21. In May 2000, the Plaintiff commenced discussions with Spectronics Corporation (“Spectronics”) to address infringement of the Plaintiff’s patent rights by Spectronics, a leading manufacturer of mobile AC service tools. On October 13, 2000, the Plaintiff entered into a confidential license agreement with Spectronics providing Spectronics a license under the Plaintiff’s patents.
22. Canadian Patent Nos. 2,235,673 and 2,224,024 are covered by the definition of Licensed Patents in the license granted to Spectronics.
23. The license to Spectronics is a valid and subsisting license.
Plaintiff’s Other Enforcement
[29] The plaintiff initiated a patent infringement action against Bright Solutions Inc. in the United States to restrain the sale of infringing products. As a result, the plaintiff and Bright Solutions Inc. signed a confidential settlement agreement in May 2001.
[30] The plaintiff, in paragraphs 36, 37 and 38 of its closing argument outlines three further enforcement efforts by it:
36. The Plaintiff commenced a patent infringement action seeking to restrain the sale of infringing products by R.J. Doran & Company Ltd. (R.J. Doran) in the United Kingdom in 2004. The Plaintiff alleged infringement of products sold by R.J. Doran, including the Defendant’s REVOLVER dye injection system that was purchased from the Defendant and sold by R.J. Doran as a private branded product. The Plaintiff entered into a confidential Settlement Agreement in January 2005 settling the dispute with R.J. Doran.
37. In late 2002, the Plaintiff alleged that certain products sold by Supercool Tire Seal Inc. infringed the Plaintiff’s patents. In response to the Plaintiff’s complaint, Supercool agreed to discontinue sales of its cartridge based injection system in November 2002.
38. As a result of the Plaintiff’s enforcement efforts, the Plaintiff entered into supply agreements with two infringers.
[31] The plaintiff called as expert witnesses, Tony Ferraro who is a co-owner of the plaintiff and Jerome Lemon.
[32] The defendant called Professor Thomas Brown and Dr. Peter Frise as expert witnesses. The defendant also called Jonathan Cooper and James Ferris as witnesses.
[33] The defendant has filed a counterclaim against the plaintiff, the nature of which is stated in paragraph 26 of the agreed statement of facts:
26. On February 14, 2006, the Plaintiff issued a press release advising that it was prosecuting an action in the Federal Court of Canada against the Defendant and that allegations included that REVOLVER dye injection system products infringe one or more claims of the ‘673 patent. The Defendant claims the Plaintiff breached s. 7(1) of the Trade-marks Act as a result of the press release and claims damages in the Counterclaim in these proceedings.
[34] The plaintiff summarized the issues as follows:
1. Who is the person skilled in the art?
2. Does the REVOLVER product as sold by the Defendant, and/or used in the manner directed by the Defendant, infringe any of claims 1, 2, 3, 4, 7, 8, 9, 10, 14, 15 or 16 of the ‘673 patent and/or any of claims 1, 3, 5, 6, 7, 9, 17, 19, 20 or 38 of the ‘024 patent?
3. Does the DYE STICK product as sold by the Defendant, and/or used in the manner directed by the Defendant, infringe any of claims 1, 2, 3, 4, 7, 8, 9, 10, 14, 15 or 16 of the ‘673 patent and/or any of claims 1, 2, 3, 5, 6, 7 or 9 of the ‘024 patent?
4. Does the RETRO STICK product as sold by the Defendant, and/or used in the manner directed by the Defendant incorporate the invention claimed in any of claims 1, 3, 4, 8, 9 or 10 of the ‘673 patent?
5. Does the agreement between the Defendant and Spectronics provide the Defendant with a defence to infringement of the ‘673 or ‘024 patent in respect of the REVOLVER injectors and REVOLVER cartridges obtained from suppliers by Spectronics and then provided by Spectronics to the Defendant pursuant to the terms of the agreement?
6. Are any of claims 1, 2, 3, 4, 7, 8, 9, 10, 14, 15 or 16 of the ‘673 patent invalid on the basis that:
(a) The claim is anticipated by the Quest reference;
(b) Claim 14 is anticipated by the Bradley, Classic or Robinair references respectively;
(c) The claim is obvious as a result of the references and common general knowledge identified by the Defendant’s experts;
(d) The claim is over broad or lacking utility as a result of the failure to specify a means for retaining the piston in the cylinder;
(e) the application that issued into the ‘673 patent failed to comply with section 37 due to a lack of drawings in the specification;
(f) The Plaintiff failed to comply with section 73(1)(a) of the Patent Act in view of the fact that the Plaintiff filed minutes from a hearing before the EPO in respect of the corresponding European application; or
(g) The ‘673 patent is void pursuant to s. 53(1) of the Patent Act on the basis that:
the petition contains an untrue material allegation, namely that Michael Kroll and Phil Trigiani were the owners of the invention; or
as a result of the omission of drawings of the apparatus in the specification, it contains more or less than is necessary for obtaining the end for they purported to be made.
7. Are any of claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 17, 18, 19, 20, 21 or 38 of the ‘024 patent invalid on the basis that:
(a) The subject-matter defined by the claim is not patentably distinct from the subject-matter defined by any of the claims in the ‘673 patent;
(b) In respect of any of claims 1, 5, 6, 7 or 9, the claim was anticipated by Canadian patent application no. 2,252,329;
(c) In respect of any of claims 1, 4, 5, 6, 7, 9, 17, 20, 21 or 38, the subject-matter defined by the claim was anticipated by the Quest, Classic or Robinair references respectively;
(d) The claim is obvious as a result of the references and common general knowledge identified by the Defendant’s experts;
(e) The claim is ambiguous as a result of the use of the term “release valve”?
8. Is the Defendant liable for infringement or inducing infringement of the identified claims of the ‘673 patent or the ‘024 patent?
9. Is the Plaintiff liable for making false and misleading statements contrary to section 7(a) of the Trade-marks Act?
[35] Issue 1
Who is the person skilled in the art?
In order to construe a patent, there must be a review of the patent specification through the eyes of an “ordinary person skilled in the art”. Mr. Justice Binnie put it this way in Whirlpool Corp. v. Camco (2000), 9 C.P.R. (4th) 129 at 153 (S.C.C):
53. A second difficulty with the appellants' dictionary approach is that it urges the Court to look at the words through the eyes of a grammarian or etymologist rather than through the eyes and with the common knowledge of a worker of ordinary skill in the field to which the patent relates. An etymologist or grammarian might agree with the appellants that a vane of any type is still a vane. However, the patent specification is not addressed to grammarians, etymologists or to the public generally, but to skilled individuals sufficiently versed in the art to which the patent relates to enable them on a technical level to appreciate the nature and description of the invention: H. G. Fox, The Canadian Law and Practice Relating to Letters Patent for Inventions (4th ed. 1969), at p. 185. The court, writes Dr. Fox, at p. 203, must place itself
· in the position of some person acquainted with the surrounding circumstances as to the state of the art and the manufacture at the time, and making itself acquainted with the technical meaning in that art or manufacture that any particular word or words may have. . . .
[36] The ‘673 patent is directed to devices which are used to inject fluids such as dye into pressurized AC systems and the method to do so.
[37] The ‘024 patent is directed to an apparatus and process for injecting a fluid such as dye into a pressurized system such as a pressurized AC system and the method to do so.
[38] Put another way, the claims in this case are whether the cartridge and cartridge/injector combination and method of using this apparatus is novel. I would agree that the method claims are addressed to users of the apparatus such as automotive service technicians with experience in relating to pressurized automotive AC systems. The apparatus claim would be addressed to persons who could make the apparatus.
[39] I am of the opinion that the person with the common knowledge of a worker of ordinary skill in the field to which this patent relates would be a mechanical/manufacturing engineer or a technician with experience in the field of automotive air-conditioning.
Patent Construction
[40] In Whirlpool above, Mr. Justice Binnie, speaking for the Court, stated at pages 145 to 148:
1. The Principles of Patent Claims Construction
42. The content of a patent specification is regulated by s. 34 of the Patent Act. The first part is a "disclosure" in which the patentee must describe the invention "with sufficiently complete and accurate details as will enable a workman, skilled in the art to which the invention relates, to construct or use that invention when the period of the monopoly has expired": Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd., [1981] 1 S.C.R. 504, at p. 517. The disclosure is the quid provided by the inventor in exchange for the quo of a 17-year (now 20-year) monopoly on the exploitation of the invention. The monopoly is enforceable by an array of statutory and equitable remedies and it is therefore important for the public to know what is prohibited and where they may safely go while the patent is still in existence. The public notice function is performed by the claims that conclude the specification and must state "distinctly and in explicit terms the things or combinations that the applicant regards as new and in which he claims an exclusive property or privilege" (s. 34(2))". An inventor is not obliged to claim a monopoly on everything new, ingenious and useful disclosed in the specification. The usual rule is that what is not claimed is considered disclaimed.
43. The first step in a patent suit is therefore to construe the claims. Claims construction is antecedent to consideration of both validity and infringement issues. The appellants' argument is that these two inquiries -- validity and infringement -- are distinct, and that if the principles of "purposive construction" derived from Catnic are to be adopted at all, they should properly be confined to infringement issues only. The principle of "purposive construction", they say, has no role to play in the determination of validity, and its misapplication is fatal to the judgment under appeal.
44. It is true that in Catnic itself there was no attack on the validity of the patent. The litigation turned on issues of infringement. The patent in issue dealt with galvanized steel lintels for use in building construction. Lintels are structural members placed over openings such as doors and windows to support the building above. The patent taught an ingenious new type of lintel of sheet metal bent into a box-like "lazy Z" shape that was light to handle and inexpensive to manufacture. The defendant knew of the plaintiff's product but was not familiar with the plaintiff's patent. The claims (of which they were unaware) taught that the lintel must have "a second rigid support member extending vertically from or from near the rear edge of the first horizontal plate" (underlining added; italics in original deleted). Vertical alignment would maximize the load-bearing capacity. For reasons unrelated to patent avoidance, the rigid support member in the defendant's product was inclined about eight degrees off vertical. The trial judge concluded that there was no literal infringement because the support did not extend precisely "vertically", but that, since there was no material difference in function of the component part, there was, viewing the defendant's lintel as a whole, infringement of the "pith and marrow" of the plaintiff's invention. The trial judge was reversed by a majority in the Court of Appeal but was subsequently avenged by restoration of his judgment by a unanimous House of Lords. Lord Diplock's description of purposive construction was as follows, at pp. 242-43:
My Lords, a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. "skilled in the art"), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so-called "pith and marrow" of the claim. A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked. [Emphasis in original.]
45. The key to purposive construction is therefore the identification by the court, with the assistance of the skilled reader, of the particular words or phrases in the claims that describe what the inventor considered to be the "essential" elements of his invention. This is no different, I think, than the approach adopted roughly 40 years earlier by Duff C.J. in J. K. Smit & Sons, Inc. v. McClintock, [1940] S.C.R. 279. The patent in that case related to a method of setting diamonds in devices such as rotary drill bits for earth boring. Duff C.J., citing the earlier jurisprudence, put the focus on the inventor's own identification of the "essential" parts of his invention, at p. 285:
Obviously, the invention, as described by the inventor himself, involves the use of air suction to hold the diamonds in place while the molten metal is being introduced into the mold. There can be no doubt, in my mind, that as the inventor puts it, that is an essential part of his process. That part of his process is clearly not taken by the appellants. Adapting the language of Lord Romer, it is not the province of the court to guess what is and is not of the essence of the invention of the respondent. The patentee has clearly indicated that the use of air suction at that stage of the process is an essential, if not the essential, part of the invention described in the specification. [Emphasis added.]
46. To the same effect is the judgment of Thorson P. in McPhar Engineering Co. of Canada v. Sharpe Instruments Ltd., [1956-60] Ex. C.R. 467, at p. 525:
Thus it is established law that if a person takes the substance of an invention he is guilty of infringement and it does not matter whether he omits a feature that is not essential to it or substitutes an equivalent for it. [Emphasis added.]
47. The "essential" elements approach was established in earlier English cases such as Marconi v. British Radio Telegraph and Telephone Co. (1911), 28 R.P.C. 181 (Ch. D.), at p. 217, referred to by Duff C.J. in J. K. Smit, supra, and more recent pre-Catnic decisions in that country such as Birmingham Sound Reproducers Ltd. v. Collaro Ltd., [1956] R.P.C. 232 (Eng. C.A.), and C. Van Der Lely N.V. v. Bamfords Ltd., [1963] R.P.C. 61 (H.L.), where Lord Reid, dissenting on the result, said at p. 76: "you cannot avoid infringement by substituting an obvious equivalent for an unessential integer" (emphasis added).
48. The Catnic analysis therefore was not a departure from the earlier jurisprudence in the United Kingdom or in this country. It is no disrespect to Lord Diplock to suggest that at least to some extent he poured some fine old whiskies into a new bottle, skilfully refined the blend, brought a fresh clarity to the result, added a distinctive label, and voilà "purposive construction". In Catnic, as in the earlier case law, the scope of the monopoly remains a function of the written claims but, as before, flexibility and fairness is achieved by differentiating the essential features ("the pith and marrow") from the unessential, based on a knowledgeable reading of the whole specification through the eyes of the skilled addressee rather than on the basis of "the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge" (Catnic, supra, p. 243).
49. As stated, the Federal Court of Appeal applied the "purposive construction" approach to claims construction in O'Hara, supra, and, with respect, I think it was correct to do so. The appellants' argument that the principle of purposive construction is wrong or applies only to infringement issues must be rejected for a number of reasons: . . .
Thus, a purposive construction is to be used. The construction of a patent claim is a question of law for the Court.
[41] It is important to note that when applying a purposive construction, the Court must, with the assistance of the skilled person, identify the particular words or phrases in the clause that describe what the inventor considered to be the “essential” elements of his invention. The construction given by the Court must be consistent with the text of the claims. A court must interpret the claims and not redraft them.
[42] The construction of a patent is a question of law and is to be done on the basis that the addressee is a person skilled in the art.
[43] The language of a patent should be construed as of the date of publication.
[44] A patent cannot be construed with an eye on the allegedly infringing device in respect of infringement.
[45] The defendant set out the following principles pertaining to claim construction at paragraph 51 of its memorandum of fact and law:
51. The Supreme Court of Canada has identified the following principles pertaining to claim construction:
(1) The Patent Act and purposive construction promote adherence to the claims, which in turn promotes fairness and predictability
(2) Canadian Courts have adopted the “peripheral claiming” approach, which emphasizes the language of the claims as identifying the legal boundary of the state-conferred monopoly
(3) The claims perform a public notice function by setting out the scope of the monopoly, so that the public may know where it may go with impunity
(4) The goals of the patent system or promoting research and competition are undermined if the scope of the monopoly lacks precision and certainty
(5) The ingenuity of a patent does not normally lie in the identification of a desirable result, but in the teaching of a particular means to achieve it
(6) The claims cannot be stretched to allow the patentee to monopolize anything that achieves the desired result
(7) The claim language must be read in an informed and purposive way
(8) Claim interpretation is neither literal nor based on vague notions such as the “spirit of the invention”. The more scope for searching for the “spirit of the invention”, the less the claims can perform their public notice function
(9) A patent falls within the definition of “regulation” in the Interpretation Act, and as such merits construction that best assures attainment of its objects
(10) The inventor’s intention is manifested in the patent claims as interpreted by a person skilled in the art
(11) The knowledge of the ordinary worker should be brought to bear on the interpretation
(12) A claim contains essential and non-essential elements. The task of the court is to separate the essential from the non-essential elements of the monopoly claimed by the patentee
(13) In identifying the essential and non-essential elements, the inventor’s intention is preferred over the understanding of the addressee
(14) The identification of essential and non-essential elements is made on the basis of the common knowledge of the worker skilled in the art to which the patent relates, as the date the patent was published
(15) The words chosen by the inventor will be read in the sense the inventor is presumed to have intended at the date the patent was published, and in a way that is sympathetic to the accomplishment of the inventors’ purpose expressed or implicit in the claims
(16) The public is entitled to rely on the words used, provided they are interpreted fairly and knowledgeably; a mistake or unnecessary limitation in the claims is unfortunate, but a “self-inflicted wound” on the part of the inventor
(17) There is no resort to extrinsic evidence of the inventor’s intention. Allowing extrinsic evidence for the purpose of defining the monopoly would undermine the public notice function of the claims, and is inconsistent with a purposive construction, which focuses on the claim language
(18) An element is essential if the inventor’s intention, as discerned from the claims, is that the element is essential irrespective of its practical effect
(19) An element is considered non-essential if the patentee can show:
(a) That on a purposive construction of the words of the claim the element was clearly not intended to be essential; or
(b) At the date of publication of the patent, it would have been known to be obvious to a skilled reader that a particular element could be substituted without affecting the working of the invention; in other words, that the variant would perform substantially the same function in substantially the same way to obtain substantially the same result
(20) The onus is on the patentee to establish known and obvious substitutability at the date of publication of the patent. If the patentee fails to discharge that onus, the descriptive word or expression in the claim is to be considered essential unless the context of the claims language otherwise dictates
[46] The claims in issue in the ‘673 Patent are:
1. A method of charging a closed, pressurized air conditioning or refrigeration fluid system with a secondary fluid comprising the steps of:
a. sealably and releasably connecting to said system a closed, unpressurized container containing a predetermined amount of said secondary fluid, said container having a piston sealably disposed therein and having two ends, a first end of said container being sealably secured to a first end of a charging conduit with a second end of said charging conduit being sealably and releasably connected to said system.
b. mechanically forcing said secondary fluid out of said container through said conduit and into said fluid system via displacement of said piston within said container
c. disconnecting said container from said system,
characterized in that said container is a cylindrical cartridge received by a cartridge receiver having piston driving means and in that said piston driving means is mechanically operated to drive said piston through said cartridge and thus force said secondary fluid into said system.
2. A method according to claim 1 characterized in that said secondary fluid comprises a dye.
3. A method according to claim 1 or 2 characterized in that said secondary fluid comprises an oil.
4. An apparatus for performing the method according to one of the claims 1-3 comprising:
a. a closed, unpressurized container containing a predetermined amount of said secondary fluid, said container having two ends and having a piston sealably