Whirlpool Corp. v. Camco Inc.

Whirlpool Corp. v. Camco Inc.
Collection
Supreme Court Judgments
Date
2000-12-15
Neutral citation
2000 SCC 67
Report
[2000] 2 SCR 1067
Case number
27208
Judges
L'Heureux-Dubé, Claire; Gonthier, Charles Doherty; McLachlin, Beverley; Iacobucci, Frank; Major, John C.; Bastarache, Michel; Binnie, William Ian Corneil
On appeal from
Federal Court of Appeal
Subjects
Intellectual property
Notes
SCC Case Information: 27208
Decision Content
Whirlpool Corp. v. Camco Inc., [2000] 2 S.C.R. 1067
Camco Inc. and General Electric Company Appellants
v.
Whirlpool Corporation and Inglis Limited Respondents
Indexed as: Whirlpool Corp. v. Camco Inc.
Neutral citation: 2000 SCC 67.
File No.: 27208.
1999: December 14; 2000: December 15.
Present: L’Heureux‑Dubé, Gonthier, McLachlin, Iacobucci, Major, Bastarache and Binnie JJ.
on appeal from the federal court of appeal
Patents – Claims construction – Whether “purposive construction” proper approach to claims construction for both validity and infringement issues.
Patents – Validity – Double patenting – Whether patent should be invalid as double patenting.
In the 1970s the respondent Whirlpool developed an ingenious dual action agitator for clothes washing machines that utilized the bottom portion of the shaft for the usual oscillating motion back and forth but added an upper sleeve that was designed to work as a helical auger. The auger rotated only in one direction like a post‑hole digger, and propelled water and clothing downwards onto the oscillating vanes of the lower agitator to produce more uniform scrubbing. This development work resulted in three Canadian patents. In the first patent the dual agitator was powered by a drive shaft. A second patent (“'803 patent”) substituted a clutch mechanism for the drive shaft. The trial judge concluded that both of these patents required that the vanes on the lower agitator be rigid. Under a third patent (“'734 patent”) flexible vanes were substituted for rigid vanes. The '734 patent also offered a choice of drive modes, one where the upper auger was driven “intermittently” and the other where it was driven “continuously”. The trial judge held the '734 patent to be valid and infringed.
On appeal to the Federal Court of Appeal the centerpiece of the attack on the validity of the '734 patent was that it constituted “double patenting” because the invention set out in its intermittent drive claims corresponded with the invention set out in the claims of the earlier '803 patent. Alternatively, it was said that the use of flex vanes was well understood in the washing machine business from the 1960s onward, and even if the '803 patent contemplated (as held by the trial judge) only rigid vanes on the lower oscillator, the use of flexible vanes was an obvious and non‑inventive variation that did not warrant patent protection. Further the appellants denied infringement of the continuous drive claims. The Federal Court of Appeal dismissed the appeal.
Held: The appeal should be dismissed.
The first step in a patent suit is to construe the claims. The “purposive construction” approach is adopted for both validity and infringement issues. This requires the identification by the court, with the assistance of the skilled reader, of the particular descriptive words or phrases in the claims that describe the “essential” elements of the invention. Purposive construction properly directs itself to the words of the claims interpreted knowledgeably and in the context of the specification as a whole; it advances the objective of an interpretation of the patent claims that is reasonable and fair to both patentee and public.
It was open to the trial judge to conclude, having regard to the expert evidence, that the claims of the '803 patent, properly construed, did not include flexible vanes. The appellants “dictionary” approach to claims construction was rightly rejected. It was permissible for the trial judge to look at the rest of the specification, including the drawing, to understand what was meant by the word “vane” in the claims, but not to enlarge or contract the scope of the claim as written and thus understood. The patent specification was not addressed to grammarians, etymologists or to the public generally, but to skilled workers 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. The trial judge, reading the claims with the knowledge and insight into the technical terms provided by the rest of the specification, and by the concession of the appellants’ own expert, concluded that rigid vanes were essential to the '803 invention as claimed. No basis had been shown to reverse that conclusion.
The prohibition against double patenting involves a comparison of the claims rather than the disclosure, because it is the claims that define the monopoly. The question is how “identical” the claims must be in the subsequent patent to justify invalidation. The first branch of the prohibition is sometimes called “same invention”
double patenting. Given the claims construction adopted by the trial judge it cannot be said that the subject matter of the '734 patent was the same or that the claims were “identical or conterminous” with those of the '803 patent.
There is, however, a second branch of the prohibition which is sometimes called “obviousness” double patenting. This is a more flexible and less literal test that prohibits the issuance of a second patent with claims that are not “patentably distinct” from those of the earlier patent. On this point, the trial judge was wrong to have accepted the evidence of a long-time employee of the respondent Whirlpool Corporation as a proxy for the “ordinary worker”. His opinions were predicated on Whirlpool's in-house knowledge. On the other hand the trial judge was entitled to reject the evidence of the appellants' expert whose testimony was not supported by the level of practical understanding of dual action washing machines that by 1981 was common knowledge among the skilled workers interested in this end of the washing machine business. In the end, the trial judge concluded that he had not been given sufficient proof by the appellants to displace the presumption of validity in s. 45 of the Patent Act . The Federal Court of Appeal agreed, and there is no basis on which this Court could properly interfere with the concurrent factual findings thus the validity of the '734 patent is affirmed.
Claims construction is a matter of law but whether a defendant's activities fall within the scope of the monopoly thus defined is a question of fact. The trial judge erred in basing his finding of infringement of the continuous drive claims by conflating them to encompass the intermittent drive claims. The error in claims construction was corrected by the Federal Court of Appeal. The evidence of infringement was not very satisfactory. The appellants declined to call a witness to describe the drive means utilized in the accused General Electric washing machines, preferring to sit back and argue that the respondents had not made sufficient proof. Both the trial judge and the Federal Court of Appeal were obliged to fall back principally on a video showing a rotating General Electric auger under a “medium or light wash load”. Unsatisfactory as the evidence was, the Federal Court of Appeal concluded that it supported the inference of a continuous drive as well as the observed continuous rotation. In the absence of any evidence to the contrary, it was open to that court to find, as a fact, infringement of the continuous drive claims. The appellants, having elected not to call any evidence on this point, were not well placed to argue that the Federal Court of Appeal made a palpable error in reaching the factual conclusion that it did.
Cases Cited
Applied: Catnic Components Ltd. v. Hill & Smith Ltd., [1982] R.P.C. 183; O’Hara Manufacturing Ltd. v. Eli Lilly & Co. (1989), 26 C.P.R. (3d) 1; referred to: Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd., [1981] 1 S.C.R. 504; J. K. Smit & Sons, Inc. v. McClintock, [1940] S.C.R. 279; McPhar Engineering Co. of Canada v. Sharpe Instruments Ltd., [1956‑60] Ex. C.R. 467; Marconi v. British Radio Telegraph and Telephone Co. (1911), 28 R.P.C. 181; Birmingham Sound Reproducers Ld. v. Collaro Ld., [1956] R.P.C. 232; C. Van Der Lely N.V. v. Bamfords Ltd., [1963] R.P.C. 61; Dableh v. Ontario Hydro, [1996] 3 F.C. 751; Lister v. Norton Brothers and Co. (1886), 3 R.P.C. 199; Williams v. Box (1910), 44 S.C.R. 1; Rizzo & Rizzo Shoes Ltd. (Re), [1998] 1 S.C.R. 27; White v. Dunbar, 119 U.S. 47 (1886); Western Electric Co. v. Baldwin International Radio of Canada, [1934] S.C.R. 570; Metalliflex Ltd. v. Rodi & Wienenberger Aktiengesellschaft, [1961] S.C.R. 117; Burton Parsons Chemicals, Inc. v. Hewlett-Packard (Canada) Ltd., [1976] 1 S.C.R. 555; Ernest Scragg & Sons Ltd. v. Leesona Corp. (1964), 26 Fox Pat. C. 1; AT&T Technologies, Inc. v. Mitel Corp. (1989), 26 C.P.R. (3d) 238; Abbott Laboratories, Ltd. v. Nu-Pharm Inc. (1998), 78 C.P.R. (3d) 38; Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R. 000, 2000 SCC 66; Beecham Canada Ltd. v. Procter & Gamble Co. (1982), 61 C.P.R. (2d) 1; Lovell Manufacturing Co. v. Beatty Bros. Ltd. (1962), 23 Fox Pat. C. 112; Commissioner of Patents v. Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning, [1964] S.C.R. 49; Beloit Technologies Inc. v. Valmet Paper Machinery Inc., [1997] R.P.C. 489; Jamb Sets Ltd. v. Carlton (1963), 42 C.P.R. 65, aff’d (1965), 46 C.P.R. 192; Submarine Signal Co. v. Henry Hughes & Son, Ld. (1931), 49 R.P.C. 149.
Statutes and Regulations Cited
Convention on the Grant of European Patents (European Patent Convention), October 5, 1973, art. 69.
Interpretation Act, R.S.C., 1985, c. I-21, ss. 2(1) “regulation”, 12.
Patent Act, R.S.C. 1970, c. P-4, s. 10.
Patent Act, R.S.C., 1985, c. P-4, ss. 10 [rep. & sub. c. 33 (3rd Supp.), s. 2 ; rep. & sub. 1993, c. 15, s. 28], 34, 36(1), 44, 45, 46.
Authors Cited
Côté, Pierre-André. The Interpretation of Legislation in Canada, 3rd ed. Scarborough, Ont.: Carswell, 2000.
Fox, Harold G. The Canadian Law and Practice Relating to Letters Patent for Inventions, 4th ed. Toronto: Carswell, 1969.
Hayhurst, William L. “The Art of Claiming and Reading a Claim”, in G. F. Henderson, ed., Patent Law of Canada. Scarborough, Ont.: Carswell, 1994.
Hitchman, Carol V. E., and Donald H. MacOdrum. “Don't Fence Me In: Infringement in Substance in Patent Actions” (1990), 7 C.I.P.R. 167.
Vaver, David. Intellectual Property Law: Copyright, Patents, Trade-marks. Concord, Ont.: Irwin Law, 1997.
APPEAL from a judgment of Federal Court of Appeal (1999), 236 N.R. 330, 85 C.P.R. (3d) 129, [1999] F.C.J. No. 84 (QL), dismissing the appellants’ appeal from a decision of the Federal Court, Trial Division (1997), 76 C.P.R. (3d) 150, [1997] F.C.J. No. 1086 (QL), holding that patents 1,095,734 and 1,049,803 were valid, that patent 1,095,734 was infringed and that patent 1,049,803 was not infringed. Appeal dismissed.
James D. Kokonis, Q.C., Dennis S. K. Leung and Ronald E. Dimock, for the appellants.
Christopher J. Kvas and Peter R. Everitt, for the respondents.
The judgment of the Court was delivered by
1 Binnie J. – In 1975, the respondent Whirlpool Corporation announced to the world an advance in clothes washing technology which the trial judge described as “entirely new”. The nub of the improvement was to replace the traditional one-piece “agitator” in the wash tub with a two-piece agitator consisting of a lower oscillating spindle with a rotating “auger” attached to the top. By all accounts the two-piece “dual action” agitator produced a more effective wash (“uniform scrubbing”). Whirlpool introduced these useful machines onto the North American market in the 1970s, and over the years sold millions of units to the clothes washing public. General Electric (“GE”) and Maytag were somewhat envious of this invention, but moved quickly on expiry of the U.S. patents in 1995 to put their own dual action agitators on the market. Between 1995 and the date of trial, GE had sold in excess of 750,000 dual action machines. The respondents’ complaint is that the appellants' machines were not only marketed in the United States but some of them were sold in Canada where the relevant patents had not yet expired.
2 The development work at Whirlpool resulted in three patents. Each, when issued, gave Whirlpool a 17-year monopoly on manufacturing and marketing washing machines that incorporated the inventions as respectively claimed. The consumer market for large appliances is immense and this appeal brought together some of the major competitors for the purpose of alternatively denouncing or upholding the relevant patents owned by Whirlpool. The appellants say that the first two patents to issue covered the invention, and that the monopoly was improperly extended by the issuance of the third patent (which at trial they were held to have infringed). The third patent, the appellants say, ought for the most part never to have been granted and is to that extent invalid.
3 The practical impact of this argument is that if the most recent patent is invalid, the period of infringement is reduced by more than two years, and the compensation payable to Whirlpool would be greatly diminished. The appeal raises some important legal issues concerning the interpretation, validity and infringement of patents, but in the end, the appellants' case largely comes apart on the evidence (or lack of it) and the appeal must therefore be dismissed.
I. Facts
4 In the late 1960s, GE and its Canadian subsidiary, Camco marketed a range of washing machines across Canada that utilized what was known as a single action agitator, that is to say a single spindle sitting in a tub of water rotating its vanes back and forth to scrub the clothes. Similar machines were marketed by the respondents Whirlpool and Inglis, and by the appellants in the companion appeal, Maytag Corporation and its Canadian subsidiaries. The U.S. laboratories of the parent companies were at work trying to develop products that would give what advertising agencies call a “new and improved wash” to heavy household loads. Progress was uneven. Much research was done at Whirlpool and other manufacturers on the benefits of rigid vanes on the agitator versus flexible vanes (sometimes called “flex vanes”). In the late 1960s, Whirlpool built a washer with flexible vanes for development purposes that mauled the clothes so badly it became known as the “Golden Gobbler”. Maytag however developed a “flex vane” unitary action machine in the late 1960s and the trial judge noted the evidence that “[i]t's been nothing but a satisfactory device” over the next 30 years ((1997), 76 C.P.R. (3d) 150, at p. 182). It did not tangle clothes unduly and was a great commercial success. By the end of the 1960s, the clothes washing machine trade in North America was thus familiar with one-piece agitators featuring rigid or flexible vanes, and understood that the “yield” in the flex vanes could deliver an extra push to the laundry load to produce a better scrub. Indeed, the evidence was that Maytag obtained a 50 percent increase in wash loads by using flexible vanes rather than rigid vanes.
5 Eventually, Whirlpool came up with an ingenious dual action agitator that utilized the bottom portion of the shaft for the usual oscillating motion back and forth in the wash cycle, but added an upper sleeve that was designed to work as a helical auger. The auger rotated only in one direction like a post-hole digger, and propelled water and clothing downwards onto the oscillating vanes of the lower agitator which sent the laundry into a rollover tumble across the floor of the tub, upward along the side wall, thence back across the surface to the agitator (the “toroidal motion”).
1. Invention Dates
6 Whirlpool's initial invention of the dual action agitator was made in 1972 and resulted in Canadian patent 1,045,401 (the “'401 patent”). It contemplated that both the upper and lower portions of the agitator would be powered by a drive shaft. No claim was made against the appellants under the '401 patent.
7 In March 1973, a Whirlpool researcher, Ernest Ruble, came up with various ingenious improvements to the dual action agitator, including a new drive means that could be utilized to rotate the upper auger intermittently using a clutch that engaged when the lower agitator rotated forward and disengaged when it rotated backward. The agitator sleeve itself was designed to be removable. These advances resulted in a further application that eventually became Canadian patent 1,049,803 (the “'803 patent”). The prototype washing machine had rigid vanes on the lower oscillating unit and when it went to the Whirlpool product development group for testing in mid to late 1973, it came under the eyes of Mr. John Pielemeier, an engineer with many years' experience. Mr. Pielemeier was called as an expert at trial by Whirlpool. His affidavit explained that:
My personal involvement with dual action agitators commenced in the middle to late portion of 1973 when I was an engineer in product engineering in the Whirlpool Laundry Engineering Division. At that time Clark Platt presented to me, for the first time, a dual action agitator that had rigid vanes on its lower base.
8 The tests conducted by the product engineering group disclosed serious problems with the '803 technology. It tangled up the clothes even worse than had the Golden Gobbler. Counsel referred us to the following passage in Mr. Pielemeier's evidence:
It was the worst tangling I have ever seen in a machine. As a matter of fact I had to stand on a chair to get the whole thing [i.e., the laundry test load] out of the machine.
9 Mr. Kurt Werner, another Whirlpool engineer who joined the company somewhat later, described the problem to the trial judge thusly:
What we had done was taken this new clothes washing agitator that had this unidirectional motion and we were starting to see garments having a three-dimensional tangling condition, where garments were actually rotating around in the basket and actually rotating in the load and causing a roping effect within the load.
10 Mr. Clark Platt was assigned to come up with a solution to the “3-D tangle” problem which he did by proposing the substitution of flex vanes for rigid vanes “at least as early as June 5, 1974" (trial judgment, at p. 154). This work ultimately resulted in the third of the three patents, Canadian patent 1,095,734 (the “'734 patent”). The “roping effect” was greatly reduced by making the vanes sufficiently flexible to yield and deflect the moving mass of water and laundry. The benefit, apparently, lay in the ability of flex vanes to yield rather than in their ability to push, as disclosed in the '734 patent as follows:
This unloading of the vanes tends to avoid tangling of fabrics on the agitator which might otherwise lead to increased agitator shaft torque, increased motor wattage, reduced rollover as well as unbalanced spin loads and generally tangled clothes loads.
11 The trial judge considered the 3-D tangling problem associated with “dual action” washers to be “qualitatively” different from the tangling experienced with such “unitary action” machines as the Golden Gobbler (at p. 183):
I would also note that, even after counsel's description of 3-D tangling and manual demonstration of what 3-D tangling is supposed to be, I remain unclear as to what this concept really means. I am, however, prepared to accept that the tangling produced by dual action agitation is qualitatively different from that produced by unitary action agitation.
12 Whirlpool also discovered that by use of gears and pinions the oscillating lower portion of the agitator could be made to rotate the upper auger continuously. The '734 patent thus offered a choice of drive modes. In one embodiment, the upper auger was driven “intermittently”; in another, it was driven continuously.
13 The respondent Whirlpool Corporation applied for the U.S. equivalent of the '803 patent on November 23, 1973, despite Mr. Pielemeier's worry about the 3-D tangle problem. By the time the Whirlpool Corporation filed an application for Canadian patent '803 on November 12, 1974, Whirlpool had come up with the solution of using flex vanes instead of rigid vanes, but did not in the '803 specification disclose the 3-D tangling problem. Nor did Whirlpool disclose the flex vane solution that had been discovered five months before the Canadian '803 patent was applied for.
14 The claims of the '803 patent specify “vanes” but do not further specify whether the vanes are to be flexible or rigid. Whirlpool's position is that flex vanes were not included. The appellants argue the contrary.
15 Whirlpool waited until June 16, 1976 to apply for what became the U.S. equivalent of the '734 patent for the dual agitator with flex vane and continuous drive claims. The Canadian '734 patent was applied for on May 27, 1977. Undoubtedly experimental and product development work continued between 1973 and 1976, but the result of the delay was to position a third patent to issue several years after the '401 and '803 patents. Ultimately the result, if the '734 patent is valid, was to prolong the monopoly in Canada on the better type of dual action agitators from March 5, 1996 to February 16, 1998. For ease of reference the relevant dates are as follows:
Canadian
Patent No.
1,045,401
1,049,803
1,095,734
Applied For
Nov. 12, 1974
Nov. 12, 1974
May 27, 1977
Issued
January 2, 1979
March 6, 1979
February 17, 1981
Expired
January 1, 1996
March 5, 1996
February 16, 1998
16 It is of significance that all three patents were co-pending before the Commissioner of Patents for a period of almost two years between May 27, 1977, when the last of the three patent applications was filed with the Canadian Patent Office, and January 2, 1979, when the first of the three patents issued. This is worth noting for two reasons. Firstly, the 3-D tangle problem had in fact been disclosed in the '734 specification to the Commissioner of Patents, who was therefore in a position to consider any concern that the '803 technology lacked utility because of the 3-D tangle problems before the issuance of the '803 patent. The '803 invention was nevertheless pronounced new, ingenious and useful and the '803 patent issued. Secondly, s. 10 of the old Patent Act, R.S.C. 1970, c. P-4, provided that the contents of a patent specification are disclosed to the public only after a patent is issued. The disclosure of “dual action” technology in the first two patent applications was not in the public domain until after the third patent had been applied for, and did not therefore constitute “prior art” to feed the appellants' “obviousness” attack on the '734 invention.
2. The Claims in Suit
17 The '803 patent taught a double action agitator with a drive system which the trial judge described as “unique”. There was no drive shaft. The upper part of the agitator was driven off the lower part by means of a clutch. Claim 1 sets out the broad description of the claimed monopoly as follows:
1. An agitator for a washing machine having a driven oscillating shaft, said agitator comprising: first agitator portion capable of being mounted on said shaft by means of a locked, non-rotating connection and having an upper part, and a lower part provided with outwardly extending substantially vertically oriented vanes; a second agitator portion in the form of a sleeve having at least one outwardly extending, inclined vane, said sleeve being rotatably mounted on the upper part of the first agitator portion; and a one-way clutch located between the first and second agitator portions, the first agitator portion being adapted to drive said clutch and the second agitator portion being adapted to be driven by said clutch so that the rotation of the first agitator portion gives a positive rotation to the second agitator portion in only one direction of rotation of the first agitator portion, said inclined vane being inclined upwardly with respect to the direction of positive rotation of the second agitator portion, and at least the lower parts of said vertically oriented vanes extending radially outwardly by a greater amount than said at least one inclined vane. [Emphasis added.]
18 The abstract of the patent refers to an “accessory comprising a sleeve which is securable to the barrel of the agitator . . . having a vane means attached thereto” (emphasis added). Further, a portion of the '803 disclosure talks about an “agitator accessory . . . easily removable from the agitator itself” (emphasis added). However, the claims themselves do not refer to the agitator sleeve as being either “securable” or removable, and it is the claims, not the rest of the specification, that define the monopoly.
19 At trial, the respondents and appellants were agreed that the GE machines with flex vanes were covered by the '803 patent. They agreed that the only unresolved infringement issue under the '803 patent was whether or not “the element identified as a 'sleeve'” was removable. As will be seen, the trial judge disagreed with both sides on the issue of claims construction. He concluded that the '803 technology as claimed employed rigid vanes only.
20 The appellants were also accused of infringing the '734 patent which explicitly stated that the vanes of the lower oscillator of the dual action agitator were flexible rather than rigid. The '734 patent disclosed the new “continuous drive” claims. Claim 1 set out the broad monopoly claim as follows:
1. An agitator assembly for a clothes washing machine comprising:
a first agitator element,
a second agitator element,
drive means for driving said first agitator element in an oscillatory motion and for concurrently driving said second agitator element in an unidirectional rotary motion, said first and second agitator elements cooperating to circulate the contents of the machine in a toroidal rollover pattern within the washing machine, and means associated with said second agitator element for forcing articles adjacent thereto into the oscillatory path of said first agitator element and into said rollover pattern, said first agitator element having formed thereon flexible vanes which are free to flex in response to oscillatory motions of the agitator element, thereby to yieldingly engage fabrics deflected downwardly and lessening high impact loading of the first agitator element. [Emphasis added.]
3. The Litigation
21 The appellants challenged the validity of both patents but adopted the fall-back position that if any infringement occurred, it was under the '803 patent. This allowed them to argue that the '803 patent included the flex vanes and that (apart from the continuous drive claims) there was nothing “patentably distinct” to nourish the grant of the '734 patent. It argued that the intermittent drive claims in the '734 patent constituted an illegitimate effort to prolong the monopoly by an unjustified two additional years.
22 A similar action was subsequently initiated against Maytag and its Canadian subsidiaries. The claims against GE included both the “intermittent” drive claims and the “continuous” drive claims. The action against Maytag asserted only the intermittent claims.
23 The GE action proceeded to trial, it being agreed that the outcome of the GE action would govern the Maytag action as well, including all findings of fact and law at trial. The appeals were heard concurrently in the Federal Court of Appeal and in this Court.
II. Judicial History
1. Federal Court, Trial Division (1997), 76 C.P.R. (3d) 150
(a) The '803 Patent
24 As stated, the parties had agreed in advance that infringement of the '803 claims, as they interpreted them, turned on whether the agitator “sleeve” was removable. The respondents claimed that it was and the appellants denied it. This issue was addressed by the experts, including a video of the Whirlpool expert attempting to remove the GE sleeve with power tools, apparently with limited success. Cullen J. found that the sleeve was not removable but went on to hold that this was not the essence of the '803 invention. In his view, the essence of the '803 patent was the unique drive mechanism connecting the lower agitator to the upper auger without the use of a drive shaft. The trial judge noted that the '803 patent was not attacked until some 16 years after it was issued and therefore the "onus on the defendant to prove invalidity ought to be a heavy one because the patent has been honoured for so long as valid" (p. 166). He rejected the various attacks on the validity of the patent including over-breadth, covetousness and obviousness. He held the '803 patent to be valid.
25 Cullen J. ruled that there was no infringement however because, in his view, rigid vanes were an essential component of the '803 invention as claimed. The accused GE machines used flex vanes. Accordingly, Cullen J. held the '803 patent to be valid but not infringed. If he had found infringement, it would have ceased with expiry of the '803 patent on March 5, 1996.
(b) The '734 Patent
26 As to validity, the trial judge concluded that the '734 patent was for a new and different invention than the '803 patent, because it addressed specifically the superiority of flex vanes over rigid vanes for the oscillating agitator, an invention that he thought was not rendered obvious and therefore non-patentable by the '803 patent. So construed, the '734 patent did not violate the prohibition on “double patenting”. With respect to the intermittent and continuous drive claims, Cullen J. held, at p. 176, that:
These two claims seem to describe two different, possible embodiments of the drive means of the invention. According to this analysis, both intermittent and continuous drive means are envisaged. It is even possible to include in this equation a drive means that is both intermittent and continuous. That is, one may have a “continuously intermittent” motion, where during the operation of the machine, the motion of the upper auger may continuously be driven or rotated in intermittent pauses or spurts. [Emphasis in original.]
27 With respect to infringement, the trial judge concluded that the appellants' machines did infringe the flex vane monopoly including both the intermittent drive claims and the “continuous drive” claims. As to whether the upper auger was made to rotate continuously in the GE tub, he said, at p. 176:
. . . I do not believe that the plaintiffs' argument about the motion of the upper portion of the defendants' agitator goes to the heart of the matter. It is not necessary to show that the drive in the medium or light load is strictly continuous. As long as the movement is not sporadic, it may very well have been contemplated to fall within the scope of the claims of the invention. To my mind, this is the type of motion – and not a strictly continuous motion – that was demonstrated in Mr. Werner's videotaped evidence.
28 Accordingly, he held the continuous drive claims to be infringed. In the result, he gave judgment for Whirlpool with an injunction against the appellants' future infringement of the '734 patent plus compensation for past infringement by way of damages or an accounting of profits, as the respondents may elect.
2. Federal Court of Appeal (1999), 85 C.P.R. (3d) 129
29 The appellants did not appeal the dismissal of its claim for a declaration of invalidity of the '803 patent, and specifically disclaimed in its notice of appeal any challenge to Cullen J.'s ruling that the '803 patent was not infringed. No cross-appeal was taken by the respondents on the '803 infringement ruling. Accordingly, the only issues in play were the validity and infringement of the '734 patent.
30 With respect to onus, Stone J.A. noted the trial judge had erred in saying that passage of time without challenge created a "heavy onus" on the party attacking the validity of a patent. However, in reading the trial judgment as a whole, he accepted that the trial judge had in fact applied the proper civil standard on a balance of probabilities.
31 With respect to the validity of the '734 patent, Stone J.A. rejected the attack based on double patenting. He held that double patenting requires that the claims of the later patent be conterminous with the claims in the earlier patent, or that the latter is an obvious and uninventive extension of the former. Neither was the case here. He also rejected the attacks based on covetousness and affirmed the validity of the '734 patent.
32 Stone J.A. upheld the trial judge's finding that the flexible vanes fitted to the agitators of the GE machines infringed the '734 patent. With respect to infringement of the "continuous drive" claims, he was puzzled by the trial judge's finding, at p. 194, that "the upper auger can be continuously rotated, albeit in intermittent pauses, in one direction". The members of the Federal Court of Appeal viewed the videotaped evidence of the dual action agitator in operation and concluded that “the motion of the upper element of the appellants' product while working under medium and light load conditions was continuous” (pp. 141-42). Notwithstanding the equivocal conclusion reached by the trial judge, Stone J.A. said (at p. 142) that “the motion shown on the exhibit speaks for itself”. In the result, the trial judgment was upheld and the appeal dismissed.
III. Relevant Statutory Provisions
33 As the patents in suit were issued prior to October 1, 1989, the provisions of the former Patent Act apply. The relevant sections of the Patent Act, R.S.C., 1985, c. P-4 , provide as follows:
Section 34. [Specification]
(1) An applicant shall in the specification of his invention
(a) correctly and fully describe the invention and its operation or use as contemplated by the inventor;
(b) set out clearly the various steps in a process, or the method of constructing, making, compounding or using a machine, manufacture or composition of matter, in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most closely connected, to make, construct, compound or use it;
(c) in the case of a machine, explain the principle thereof and the best mode in which he has contemplated the application of that principle;
(d) in the case of a process, explain the necessary sequence, if any, of the various steps, so as to distinguish the invention from other inventions; and
(e) particularly indicate and distinctly claim the part, improvement or combination that he claims as his invention.
(2) Claims to be stated distinctly – The specification referred to in subsection (1) shall end with a claim or claims stating 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.
Section 36. [Patent for One Invention Only]
(1) A patent shall be granted for one invention only but in an action or other proceeding a patent shall not be deemed to be invalid by reason only that it has been granted for more than one invention.
Section 44. [What Patent Shall Contain and Confer]
Every patent granted under this Act shall contain the title or name of the invention, with a reference to the specification, and shall, subject to the conditions prescribed in this Act, grant to the patentee and his legal representatives for the term therein mentioned, from the granting of the patent, the exclusive right, privilege and liberty of making, constructing, using and vending to others to be used the invention, subject to adjudication in respect thereof before any court of competent jurisdiction.
Section 45 . [Presumption of Validity]
Every patent granted under this Act shall be issued under the signature of the Commissioner and the seal of the Patent Office, shall bear on its face the date on which it is granted and issued and shall thereafter, in the absence of any evidence to the contrary, be valid and avail the grantee and his legal representatives for the term mentioned therein.
Section 46. [Term of Patent]
The term limited for the duration of every patent issued by the Patent Office under this Act shall be seventeen years from the date on which the patent is granted and issued.
34 The relevant amended provision of the Patent Act, R.S.C., 1985, c. P-4 , as amended by S.C. 1993, c. 15, provide as follows:
Section 10 . [Inspection by the Public]
(1) Subject to subsections (2) to (6) and section 20, all patents, applications for patents and documents filed in connection with patents or applications for patents shall be open to public inspection at the Patent Office, under such conditions as may be prescribed.
(2) Confidentiality period – Except with the approval of the applicant, an application for a patent, or a document filed in connection with the application, shall not be open to public inspection before a confidentiality period of eighteen months has expired.
(3) Beginning of confidentiality period – The confidentiality period begins on the filing date of the application or, where a request for priority has been made in respect of the application, it begins on the earliest filing date of any previously regularly filed application on which the request is based.
IV. Analysis
35 A dispute over the internal workings of a washing machine is unlikely to fire everyone’s imagination but, as with many intellectual property disputes, raises important legal issues and significant financial stakes.
36 Counsel for the respondents claims that his clients produced works of great ingenuity “if not genius”, and that the three patents were properly given in exchange for disclosure of these meritorious inventions. Counsel for the appellants suggest that while “dual action” washing machines represented a useful advance on the prior art, Whirlpool was properly rewarded for its invention by the award of the '401 and '803 patents. Award of a third patent was excessive.
37 It is common ground that the bargain between the patentee and the public is in the interest of both sides only if the patent owner acquires real protection in exchange for disclosure, and the public does not for its part surrender a more extended monopoly than the statutory 17 years from the date of the patent grant (now 20 years from the date of the filing of the patent application). A patentee who can "evergreen" a single invention through successive patents by the expedient of obvious or uninventive additions prolongs its monopoly beyond what the public has agreed to pay. The issue is whether Whirlpool's '734 patent falls into that condemned category.
38 The centrepiece of the attack by the appellants on the validity of the '734 patent is that the '734 patent constitutes “double patenting” because the invention set out in its intermittent drive claims corresponds with the invention set out in the claims of the earlier '803 patent. Alternatively, it was said that the use of flex vanes was well understood in the washing machine business from the 1960s onward, and even if the '803 patent contemplated (as held by the trial judge) only rigid vanes on the lower oscillator, the use of flexible vanes was an obvious and non-inventive variation that did not warrant patent protection. Either way, they say, the '734 patent is invalid.
39 The source of the error in the courts below, according to the appellants, is the approach to claims construction which the Federal Court has developed based initially on a misunderstanding and misapplication of the “purposive construction” approach formulated by the House of Lords in Catnic Components Ltd. v. Hill & Smith Ltd., [1982] R.P.C. 183. The appellants say the Catnic decision “has had a detrimental impact throughout the Commonwealth jurisdictions, a