Free World Trust v. Électro Santé Inc.

Free World Trust v. Électro Santé Inc.
Collection
Supreme Court Judgments
Date
2000-12-15
Neutral citation
2000 SCC 66
Report
[2000] 2 SCR 1024
Case number
26406
Judges
L'Heureux-Dubé, Claire; Gonthier, Charles Doherty; McLachlin, Beverley; Iacobucci, Frank; Major, John C.; Bastarache, Michel; Binnie, William Ian Corneil
On appeal from
Quebec
Subjects
Intellectual property
Notes
SCC Case Information: 26406
Decision Content
Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R. 1024
Free World Trust Appellant
v.
Électro Santé Inc., Paul Demers and Noël Desjardins Respondents
and
Promotion R.A.S. (1992) Inc. and Électronique SEM Inc. Plaintiffs before
the Superior Court
and
Procter & Gamble Inc. Intervener
Indexed as: Free World Trust v. Électro Santé Inc.
Neutral citation: 2000 SCC 66.
File No.: 26406.
1999: December 14; 2000: December 15.
Present: L’Heureux‑Dubé, Gonthier, McLachlin, Iacobucci, Major, Bastarache and Binnie JJ.
on appeal from the court of appeal for quebec
Patents – Infringement – Validity – Scope and ambit of patent owner’s monopoly – Anticipation by publication – Extent to which patent monopoly protects “substance” of invention – Whether claims patented sufficiently elastic to catch competitor’s machine.
The appellant is the owner of two patents of invention issued in 1981 and 1983 which relate to an apparatus that bombards different parts of the human body with low frequency electro-magnetic waves. The system discovered by the appellant was for a new method of controlling the amplitude and frequency of the electro‑magnetic waves by “circuit means”. The respondent company developed and marketed an apparatus which achieved similar therapeutic purposes, but employed somewhat different technology, using instead a “microcontroller”. The appellant acknowledged the difference, but argued that the end result was the same and therefore its patent monopoly was infringed. The trial judge ruled the patents anticipated and thus invalid. The Court of Appeal reversed the finding of invalidity but found there was no infringement.
Held: The appeal should be dismissed.
The interpretive task of the court in claims construction is to separate and distinguish the essential from the inessential and to give to the “field” of the monopoly framed by the essential elements of the claims the legal protection to which the holder of a valid patent is entitled. The essential elements common to the claims of both patents in suit include a control to regulate the peak amplitude and frequency of electro‑magnetic waves by “circuit means”. The claimed invention effected an ingenious combination rather than a mere aggregation of previously known components. The invention was not anticipated by a prior publication that did not address the technical problems dealt with in these patents.
The more difficult issue is how best to resolve the tension between “literal infringement” and “substantive infringement”. The Patent Act seeks both fairness and predictability. Its objective of promoting research and development would be undermined if competitors fear to tread in the vicinity of the patent because its scope lacks a reasonable measure of precision and certainty. Predictability is achieved by tying the patentee to its claims and fairness is achieved by interpreting those claims in an informed and purposive way.
The greater the level of discretion left to courts to peer below the language of the claims in a search for the “spirit of the invention”, the less the claims can perform their public notice function, and the greater the resulting level of unwelcome uncertainty and unpredictability. “Purposive construction” does away with a purely literal interpretation but disciplines the scope of the “substantive” claims construction in the interest of fairness to both the patentee and the public. Some elements of a claimed invention are essential while others are non‑essential. These are identified, on the basis of the common knowledge of the worker skilled in the art to which the patent relates as of the date the patent is published (under the current provisions of the Patent Act the date of publication is the “laid open” date). There is no infringement if an essential element is different or omitted in the allegedly infringing device, but there may still be infringement if non‑essential elements are substituted or omitted. For an element to be considered non‑essential and thus substitutable, it must be shown either that on a purposive construction of the words of the claim it was clearly not intended to be essential, or that at the date of publication of the patent, the skilled addressee would have appreciated that a particular element could be substituted or omitted without affecting the working of the invention.
Based on the foregoing principles, the respondents' device does not infringe. The ingenuity of these patents lay not in their identification of a desirable result but in teaching particular means to achieve it. The claims cannot be stretched to allow the patentee to monopolize anything that achieves the desirable result. The respondents' device differs both structurally and operationally from the device contemplated in the claims. The use of a “microcontroller” substituted a totally different technology and was fatal to the appellant's allegation of infringement.
Cases Cited
Referred to: Clothworkers of Ipswich Case (1653), Godb. 252, 78 E.R. 147; Minerals Separation North American Corp. v. Noranda Mines, Ltd., [1947] Ex. C.R. 306; Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd., [1981] 1 S.C.R. 504; General Tire & Rubber Co. v. Firestone Tyre & Rubber Co., [1972] R.P.C. 457; Beloit Canada Ltd. v. Valmet OY (1986), 8 C.P.R. (3d) 289; The King v. Uhlemann Optical Co., [1952] 1 S.C.R. 143; Domtar Ltd. v. MacMillan Bloedel Packaging Ltd. (1977), 33 C.P.R. (2d) 182; Grip Printing and Publishing Co., of Toronto v. Butterfield (1885), 11 S.C.R. 291; Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950); Electrolier Manufacturing Co. v. Dominion Manufacturers Ltd., [1934] S.C.R. 436; Smith Incubator Co. v. Seiling, [1936] S.C.R. 251; J. K. Smit & Sons, Inc. v. McClintock, [1940] S.C.R. 279; Gillette Safety Razor Co. of Canada v. Pal Blade Corp., [1933] S.C.R. 142; Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997); Clark v. Adie (1873), L.R. 10 Ch. 667; Electric & Musical Industries Ld. v. Lissen Ld. (1939), 56 R.P.C. 23; Catnic Components Ltd. v. Hill & Smith Ltd., [1982] R.P.C. 183; Interpress Associates Ltd. v. Pacific Coilcoaters Ltd. (1994), 29 I.P.R. 635; Smale v. North Sails Ltd., [1991] 3 N.Z.L.R. 19; Populin v. H.B. Nominees Pty. Ltd. (1982), 59 F.L.R. 37; Rhone-Poulenc Agrochimie SA v. UIM Chemical Services Pty. Ltd. (1986), 68 A.L.R. 77; Multotec Manufacturing (Pty.) Ltd. v. Screenex Wire Weaving Manufacturers (Pty.) Ltd., 1983 (1) SA 709; Sappi Fine Papers (Pty.) Ltd. v. ICI Canada Inc. (Formerly CIL Inc.), 1992 (3) SA 306; Improver Corp. v. Raymond Industrial Ltd., [1991] F.S.R. 233; Eli Lilly & Co.v. O'Hara Manufacturing Ltd. (1989), 26 C.P.R. (3d) 1; R. v. Nova Scotia Pharmaceutical Society, [1992] 2 S.C.R. 606; R.C.A. Photophone, Ld. v. Gaumont-British Picture Corp. (1936), 53 R.P.C. 167; Western Electric Co. v. Baldwin International Radio of Canada, [1934] S.C.R. 570; Mobil Oil Corp. v. Hercules Canada Inc. (1995), 63 C.P.R. (3d) 473; Computalog Ltd. v. Comtech Logging Ltd. (1992), 44 C.P.R. (3d) 77; Feherguard Products Ltd. v. Rocky's of B.C. Leisure Ltd. (1995), 60 C.P.R. (3d) 512; Cutter (Canada) Ltd. v. Baxter Travenol Laboratories of Canada Ltd. (1983), 68 C.P.R. (2d) 179; Johnson Controls, Inc. v. Varta Batteries Ltd. (1984), 80 C.P.R. (2d) 1; Whirlpool Corp. v. Camco Inc., [2000] 2 S.C.R. 1067, 2000 SCC 67; Whirlpool Corp. v. Maytag Corp., [2000] 2 S.C.R. 1116, 2000 SCC 68; Improver Corp. v. Remington Consumer Products Ltd., [1990] F.S.R. 181; Biogen Inc. v. Medeva PLC, [1997] R.P.C. 1; Dyson Appliances Ltd. v. Hoover Ltd., [2000] E.W.J. No. 4994 (QL); AT & T Technologies, Inc. v. Mitel Corp. (1989), 26 C.P.R. (3d) 238; Lovell Manufacturing Co. v. Beatty Bros. Ltd. (1962), 23 Fox Pat. C. 112; P.L.G. Research Ltd. v. Jannock Steel Fabricating Co. (1991), 35 C.P.R. (3d) 346; Foseco Trading A.G. v. Canadian Ferro Hot Metal Specialties, Ltd. (1991), 36 C.P.R. (3d) 35; Incandescent Gas Light Co. v. De Mare Incandescent Gas Light System, Ld. (1896), 13 R.P.C. 301.
Statutes and Regulations Cited
Convention on the Grant of European Patents (European Patent Convention), October 5, 1973.
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], 27(1), 28(2), 34, 44, 55(2) [rep. & sub. c. 33 (3rd Supp.), s. 21 ; rep. & sub. 1993, c. 15, s. 48].
Statute of Monopolies (1623).
Authors Cited
Annand, Ruth E. “Infringement of Patents — Is “Catnic” the Correct Approach for Determining the Scope of a Patent Monopoly Under the Patents Act 1977?” (1992), 21 Anglo-Am. L. Rev. 39.
Boudreau, Jean-Claude. “AT&T Technologies: A Contribution to the Purposive Construction Approach for Patent Infringement Analysis in Canada” (1998-99), 15 C.I.P.R. 323.
Fox, Harold G. The Canadian Law and Practice Relating to Letters Patent for Inventions, 4th ed. Toronto: Carswell, 1969.
Goldsmith, Immanuel. Patents of Invention. Agincourt, Ont.: Carswell, 1981.
Hitchman, Carol V. E., and Donald H. MacOdrum. “Don't Fence Me In: Infringement in Substance in Patent Actions” (1990-91), 7 C.I.P.R. 167.
Sajewycz, Mark. “Patent Claim Interpretation as It Should Be: Promoting the Objects of the Patent Act ” (1996-97), 13 C.I.P.R. 173.
Scott, David W. “The Record of Proceedings in the Patent Office in Canada & Foreign Countries as Evidence in Infringement & Validity Contests” (1985-86), 2 C.I.P.R. 160.
Solov'eva, G. R. “Instrumentation and Applications of Low-Frequency Magnetotherapy” (1975), 8 Biomedical Engineering 166.
Sotiriadis, Bob H. “Purposive Construction in Canadian Patent Infringement Cases Since O'Hara” (1996), 11 I.P.J. 111.
Takenaka, Toshiko. “Doctrine of Equivalents after Hilton Davis: A Comparative Law Analysis” (1996), 22 Rutgers Computer & Tech. L.J. 479.
Terrell on the Law of Patents, 15th ed. By S. Thorley, R. Miller, G. Burkill and C. Birss. London: Sweet & Maxwell, 2000.
Turner, Jonathan D. C. “Purposive Construction: Seven Reasons Why Catnic is Wrong” (1999), 21 E.I.P.R. 531.
APPEAL from a judgment of the Quebec Court of Appeal[1997] R.J.Q. 2907, 81 C.P.R. (3d) 456, [1997] Q.J. No. 3479 (QL), allowing in part the appellant’s appeal from a judgment of the Superior Court, holding that the appellant’s patents were invalid and that they had not been infringed by the respondents. Appeal dismissed.
Louis Masson and Nathalie Vaillant, for the appellant.
No one appeared for the respondents.
Bruce W. Stratton and Dino P. Clarizio, for the intervener.
The judgment of the Court was delivered by
1 Binnie J. – The principal question that arises on this appeal is the extent to which a patent monopoly protects “the substance” or “the spirit” of an invention, as distinguished from what is literally described in the written claims, and whether on the facts of this case the claims patented by the appellant are sufficiently elastic to catch the electro-magnetotherapy machine of the respondent Électro Santé Inc.
2 More specifically, the appellant concedes that the respondents' machine, which is used in the treatment of such bodily ills as rheumatism and arthritis, is not precisely as described in the written claims of its patents. It says, however, that the respondents have stolen the substance of its invention and claims an injunction plus compensatory and punitive damages.
3 The appeal thus raises important questions about the scope and ambit of a patent owner's monopoly. Too much elasticity in the interpretation of the scope of the claims creates uncertainty and stifles competition. Too little protection robs inventors of the benefit they were promised in exchange for making a full and complete disclosure of the fruits of their ingenuity. The Quebec Court of Appeal held that the respondents' machines took neither the letter nor the substance of the appellant’s patents. I think this conclusion was correct, although I get there by a somewhat different route. The appeal must therefore be dismissed.
I. Facts
4 The appellant, Free World Trust, is the owner of two patents of invention numbered 1,113,156 (the “'156 patent”) and 1,150,361 (the “'361 patent”) issued in 1981 and 1983 respectively. The patents relate to an apparatus that bombards different parts of the human body with low frequency electro-magnetic waves. Electro-magnetotherapy is not new, but the appellant persuaded the Commissioner of Patents that it had discovered a new method of controlling the amplitude and frequency of the electromagnetic waves by “circuit means” with desirable and beneficial effects. The appellants put the invention described in these patents on the market in the form of an apparatus called Rhumart, which was a commercial success. In 1991, the appellant sold 3,525 Rhumart systems for a total of $13,683,240.
5 On March 4, 1992, the respondent Paul Demers, one of the appellant’s sales representatives, quit his employ with the appellant and started the respondent company for the purpose of developing and marketing electro-magnetotherapy machines in competition with his former firm. Within approximately six months of Demers' departure from the appellant company, the “new” product was on sale. The respondent Noël Desjardins, formerly an independent distributor for the Rhumart system, joined Demers to provide distribution and marketing expertise.
6 The respondents' apparatus (which it called “Électro-Santé”) achieved similar therapeutic purposes, but employed somewhat different technology. The present controversy revolves around these differences, and whether they are sufficiently substantial to put the respondents outside the appellant's monopoly. Of particular importance is the fact that the appellant's patents teach the use of “control circuits” to regulate the magnetic field of waves or pulses whose frequency, orientation and amplitude are critical to therapy. Its Rhumart apparatus employed such “control circuits”. The respondents' Électro-Santé machines, on the other hand, used a “microcontroller” which, according to the appellant's own expert, is a [translation] “highly versatile element, similar to an IBM PC computer or the like”. He acknowledged that this method of regulating the magnetic field is different from what is contemplated in the claims of the patent. The appellant's position, however, is that the end result was the same and that its monopoly was thereby infringed.
II. Judgments
1. Trial Judgment (Quebec Superior Court -- Bergeron J.)
7 The trial judge ruled against the validity of the patents obtained by the appellant. The Patent Act, R.S.C., 1985, c. P-4 , provides that a patent cannot be granted for an invention in a publication printed in Canada or in any other country more than two years prior to the patent application (ss. 27(1) and 28(2) ). In Bergeron J.'s view, the invention described in the patent claims was anticipated by a 1975 article authored by G. R. Solov'eva, entitled “Instrumentation and Applications of Low-Frequency Magnetotherapy”. The Solov'eva article, he concluded, conveys all of the fundamental elements needed to produce the claimed invention, thereby rendering the patents anticipated and thus invalid:
[translation] In my view, the Solov'eva article discloses all of the fundamental elements necessary to allow a person skilled in the art or science of the relevant field to make or construct the invention. We find present in this article all the essential characteristics described in the patent claims. This is a publication that describes the invention that is the subject of patents 1,113,156 and 1,150,316.
In light of this conclusion, Bergeron J. dismissed the action without expressing an opinion on the issue of patent infringement. The allegation of unfair competition on the part of the respondents Demers and Desjardins was also rejected.
2. Court of Appeal (Rousseau-Houle J.A. for the Court) (1997), 81 C.P.R. (3d) 456
8 Rousseau-Houle J.A. cited the provision of the Patent Act which creates a presumption in favour of the validity of a patent. The burden of proving the invalidity of the appellant's patents on a balance of probabilities rested on the respondents. The respondents failed to discharge this onus. The Solov'eva article did not contain all of the essential elements of the patent claims and a reading of it would not provide a person skilled in the art the information necessary to build, without risk of error, the patented device. Rousseau-Houle J.A. also rejected the arguments of lack of ingenuity and inventiveness. Accordingly, the trial finding of invalidity was reversed and patents '156 and '361 were declared valid.
9 On the issue of infringement, Rousseau-Houle J.A. considered the principles applicable to claims construction and noted that the appellant's case rested on an allegation of “substantive” infringement. Rousseau-Houle J.A. identified certain differences and similarities between the Électro-Santé and Rhumart systems and concluded that there were sufficient differences to distinguish the Électro-Santé device and therefore rejected the allegation of infringement. The appeal with respect to an injunction and damages was therefore dismissed.
10 The respondents' trustee in bankruptcy elected not to participate in the appeal to this Court. However, Procter & Gamble Inc. successfully applied to intervene in support of the correctness of the outcome arrived at by the Quebec Court of Appeal.
III. Relevant Statutory Provisions
11 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 27(1). [Application for Patents]
Subject to this section, any inventor or legal representative of an inventor of an invention that was
(a) not known or used by any other person before he invented it,
(b) not described in any patent or in any publication printed in Canada or in any other country more than two years before presentation of the petition hereunder mentioned, and
(c) not in public use or sale in Canada for more than two years prior to his application in Canada,
may, on presentation to the Commissioner of a petition setting out the facts, in this Act termed the filing of the application, and on compliance with all other requirements of this Act, obtain a patent granting to him an exclusive property in the invention.
Section 28(2). [Limitation of Two Years]
No patent shall be granted on an application for a patent for an invention that had been patented or described in a patent or publication printed in Canada or any other country more than two years before the date of the actual filing of the application in Canada, or had been in public use or on sale in Canada for more than two years prior to that filing.
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 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.
12 The relevant amended provisions 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.
Section 55. [Liability for Patent Infringement]
(1) A person who infringes a patent is liable to the patentee and to all persons claiming under the patentee for all damage sustained by the patentee or by any such person, after the grant of the patent, by reason of the infringement.
(2) Liability damage before patent is granted–A person is liable to pay reasonable compensation to a patentee and to all persons claiming under the patentee for any damage sustained by the patentee or by any of those persons by reason of any act on the part of that person, after the application for the patent became open to public inspection under section 10 and before the grant of the patent, that would have constituted an infringement of the patent if the patent had been granted on the day the application became open to public inspection under that section.
IV. Analysis
13 Patent protection rests on the concept of a bargain between the inventor and the public. In return for disclosure of the invention to the public, the inventor acquires for a limited time the exclusive right to exploit it. It was ever thus. Even before the Statute of Monopolies (1623), the Crown rewarded an inventor with a limited monopoly in exchange for public disclosure of “a new invention and a new trade within the kingdom ... or if a man hath made a new discovery of any thing”: Clothworkers of Ipswich Case (1653), Godb. 252, 78 E.R. 147, at p. 148, where the court went on to say that the effect of an unjustified monopoly was “to take away free-trade, which is the birthright of every subject”. The argument for the respondents is that the appellant has failed to live up to its side of the bargain in two ways. In the first place, it did not make a new discovery of anything. The appellant's patents teach nothing that was not well known beforehand. Its patents are therefore invalid. Secondly, even if the patents are valid, the appellant overreaches its bargain with the public by now asserting a monopoly over devices that are in no way disclosed, taught or claimed in its patents. The appellant is trying to get something for nothing. The appellant has given no consideration for the patent protection it now seeks. That is the argument.
1. The Claims in Suit
14 Patent claims are frequently analogized to “fences” and “boundaries”, giving the “fields” of the monopoly a comfortable pretence of bright line demarcation. Thus, in Minerals Separation North American Corp. v. Noranda Mines, Ltd., [1947] Ex. C.R. 306, Thorson P. put the matter as follows, at p. 352:
By his claims the inventor puts fences around the fields of his monopoly and warns the public against trespassing on his property. His fences must be clearly placed in order to give the necessary warning and he must not fence in any property that is not his own. The terms of a claim must be free from avoidable ambiguity or obscurity and must not be flexible; they must be clear and precise so that the public will be able to know not only where it must not trespass but also where it may safely go.
15 In reality, the “fences” often consist of complex layers of definitions of different elements (or “components” or “features” or “integers”) of differing complexity, substitutability and ingenuity. A matrix of descriptive words and phrases defines the monopoly, warns the public and ensnares the infringer. In some instances, the precise elements of the “fence” may be crucial or “essential” to the working of the invention as claimed; in others the inventor may contemplate, and the reader skilled in the art appreciate, that variants could easily be used or substituted without making any material difference to the working of the invention. The interpretative task of the court in claims construction is to separate the one from the other, to distinguish the essential from the inessential, and to give to the “field” framed by the former the legal protection to which the holder of a valid patent is entitled.
16 The issue in this case turns on the construction of claim 1 in each of the two patents (as the other claims incorporate and build on claim 1, they need not be considered at length).
(a) The '156 Patent
17 1. An electro-magnetic low frequency therapeutic system comprising a magnetization coil, said magnetization coil being stationary during a magnetic field treatment, for creating a preselected therapeutic magnetic field in response to preselected coil energizing-current waveforms whereby said magnetic field has desired treatment characteristics, said magnetic field having an adjustable intensity set by adjustable control means, said control means also having:
(i) circuit means for controlling the peak amplitude of the said magnetic field for achieving a specific modulation of said peak amplitude in a given time;
(ii) means to select the orientation and/or direction of the therapeutic magnetic field with respect to a tissue to be treated;
(iii) circuit means to select the frequency of interruption of the coil energizing-current to obtain a selected one of different therapeutic magnetic field time patterns;
(iv) means to select a desired treatment time; automatic demagnetizing means responsive to a preselected demagnetizing time and mode for attenuating said field in a desired manner to terminate a magnetic field treatment.
(b) The '361 Patent
18 Claim 1 of the '361 patent offers certain improvements to the '156 patent; the major innovations lie in a more detailed treatment of the control means. Though it does not refer to a “stationary” coil, it requires “means to secure said coil in a predetermined fixed position” and repeats the requirement of a “control circuit means” to control amplitude and frequency. The broad monopoly asserted in claim 1 reads:
1. An electro-magnetic low-frequency therapeutic system comprising a magnetization coil for creating an electro-magnetic field, means to secure said coil in a predetermined fixed position, generator means for feeding said coil with predetermined treatment signals to obtain a desired magnetic field characteristic, control circuit means for selecting desired characteristics of said treatment signals, said control circuit means having (i) circuit control means for controlling the peak intensity of said desired magnetic field, (ii) frequency control means to select the frequency of said treatment signals to obtain a selected type of a plurality of treatment signals, (iii) adjustment means to preset the duration time of said treatment signals and said electro-magnetic field, said desired magnetic field characteristics being predetermined from a magnetic field pattern chart representative of the parameters of the field of said magnetization coil in the surrounding environment of said coil whereby to obtain a desired range of intensity of said field and a desired orientation thereof relative to a position of said coil.
19 This appeal raises questions of both validity and infringement. The task of claims construction is antecedent to both inquiries.
2. Claims Construction
20 Based on the expert evidence given at trial as to the meaning of the terms used, and the understanding that these terms would convey at the date of the patent to an ordinary worker skilled in the art of electro-magnetotherapy devices and possessing the common knowledge of people engaged in that field, it appears that while some of the elements of the '156 and '361 patents are essential if the devices are to work as contemplated and claimed by the inventor, others are non-essential. The non-essential elements may be substituted or omitted without having a material effect on either the structure or the operation of the invention described in the claims.
(a) The Essential Elements
21 The essential elements common to the claims of both the '156 and '361 patents include at least the following:
1. a control to regulate the peak amplitude and frequency of interruption of the current which “energizes” the coil;
2. such control to be provided by “circuit means”.
22 For purposes of this appeal, it is unnecessary to detail the other features of the invention. The argument is that a device which does not include these essential elements is clearly “outside the fence” of the claimed monopoly.
(b) The Non-essential Elements
23 The '156 patent includes a number of additional claims dependent on claim 1. Thus, for example, claims 4 and 5 claim a “repeatedly discharged capacitor” that fires an electric current through a damping resistor into a magnetization coil and can be wired to break the current up into pulses (“pulsatile” wave forms) to produce magnetic fields. The appellant argues that any such apparatus would infringe its patent. However, the evidence is that much of this equipment is commonly used in university science laboratories and in other settings involving the production of magnetic fields using electric currents through coiled wires. They are included in the patent only because of their use in conjunction with “essential” elements of the invention described in claim 1. In the case of some of these specific components, anyone skilled in the art reading the patent at the date of its publication would immediately have appreciated that there existed different commonly known substitutes or mechanical equivalents that would do the job just as well. The claims of the '361 patent also contemplate a number of interchangeable components that do not constitute part of the essential invention. Thus, claims 5, 14 and 20 of the '361 patent refer to the use of switches in conjunction with the device described in claim 1. These components themselves were not patented on their own – indeed, they could not be patented since they represent equipment commonly known and used by persons skilled in electrical engineering. They came to be included in the claim as an element of an ingenious combination. Substitution of one type of switch for another in this case would not strike at the essentials of the invention.
3. Validity of the Patents in Issue
24 The trial judge declared the patents to be invalid because he agreed with the respondents that the inventions described in the '156 and '361 patents were fully anticipated by the publication of the article in 1975 by Solov'eva. The “invention” was thus considered to have been described “in a . . . publication printed in Canada or any other country more than two years” before the filing of the patent application and thus unpatentable by virtue of s. 28(2) of the Act.
25 Anticipation by publication is a difficult defence to establish because courts recognize that it is all too easy after an invention has been disclosed to find its antecedents in bits and pieces of earlier learning. It takes little ingenuity to assemble a dossier of prior art with the benefit of 20-20 hindsight. In this case, the respondents contended that all of the essential elements of the appellant's alleged inventions were disclosed in a single publication, the Solov'eva article, which predated the patent application by almost 4 years. If this is correct, the patent would be invalid.
26 The Solov'eva article was drawn to the respondents' attention by the appellant who cited it as prior art in the specification of the '361 patent itself. The legal question is whether the Solov'eva article contains sufficient information to enable a person of ordinary skill and knowledge in the field to understand, without access to the two patents, “the nature of the invention and carry it into practical use without the aid of inventive genius but purely by mechanical skill” (H. G. Fox, The Canadian Law and Practice Relating to Letters Patent for Inventions (4th ed. 1969), at pp. 126-27). In other words, was the information given by Solov'eva “for [the] purpose of practical utility, equal to that given in the patents in suit”? (Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd., [1981] 1 S.C.R. 504, per Dickson J. at p. 534), or as was memorably put in General Tire & Rubber Co. v. Firestone Tyre & Rubber Co., [1972] R.P.C. 457 (Eng. C.A.), at p. 486:
A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.
The test for anticipation is difficult to meet:
One must, in effect, be able to look at a prior, single publication and find in it all the information which, for practical purposes, is needed to produce the claimed invention without the exercise of any inventive skill. The prior publication must contain so clear a direction that a skilled person reading and following it would in every case and without possibility of error be led to the claimed invention.
(Beloit Canada Ltd. v. Valmet OY (1986), 8 C.P.R. (3d) 289 (F.C.A.), per Hugessen J.A., at p. 297)
27 It is clear, with respect, that the Solov'eva article does not address, let alone solve, the technical problems dealt with in the patents in suit. It is nothing more than a four-page overview of the history of electro-magnetotherapy. It describes some of the various systems available in 1975 in Europe and Japan. The appellant, it must be appreciated, does not claim to have invented electro-magnetotherapy. It obtained a patent for a particular means. Although the various components were earlier known to persons skilled in the art, the inventor brought the elements together to achieve what the Commissioner of Patents considered a new, useful and ingenious result. The claimed invention effected an ingenious combination rather than a mere aggregation of previously known components (The King v. Uhlemann Optical Co., [1952] 1 S.C.R. 143, per Rinfret C.J., at p. 150; Domtar Ltd. v. MacMillan Bloedel Packaging Ltd. (1977), 33 C.P.R. (2d) 182 (F.C.T.D.), at pp. 189-91). The ingenious combination was neither taught nor anticipated in the Solov'eva publication. None of the other arguments against validity are convincing. The patentee lived up to its side of the bargain by disclosing an invention. The patents are valid.
4. Infringement Issues
28 The appeal in this Court was essentially directed to the infringement issues. It has been established, at least since Grip Printing and Publishing Co. of Toronto v. Butterfield (1885), 11 S.C.R. 291, that a patent owner has a remedy against an alleged infringer who does not take the letter of the invention but nevertheless appropriates its substance (or “pith and marrow”). This extended protection of the patentee is recognized in Anglo-Canadian law, and also finds expression in modified form in the United States under the doctrine of equivalents, which is said to be available against the producer of a device that performs substantially the same function in substantially the same way to obtain substantially the same result: Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950), at p. 608.
29 It is obviously an important public policy to control the scope of “substantive infringement”. A purely literal application of the text of the claims would allow a person skilled in the art to make minor and inconsequential variations in the device and thereby to appropriate the substance of the invention with a copycat device while staying just outside the monopoly. A broader interpretation, on the other hand, risks conferring on the patentee the benefit of inventions that he had not in fact made but which could be deemed with hindsight to be “equivalent” to what in fact was invented. This would be unfair to the public and unfair to competitors. It is important that the patent system be fair as well as predictable in its operation.
30 The argument for the respondents is that even if the patents are valid, the appellant is not sticking to the bargain it made. It is pushing the envelope of the doctrine of “substantive infringement” beyond anything disclosed or claimed in its patent specifications. The inventor brought together known components to achieve a useful and ingenious result, but now attacks the respondents' device which brings together different components to achieve a comparable result.
31 The appeal thus raises the fundamental issue of how best to resolve the tension between “literal infringement” and “substantive infringement” to achieve a fair and predictable result. There has been considerable discussion of this issue in Canada and elsewhere, which I will discuss briefly in support of the following propositions:
(a) The Patent Act promotes adherence to the language of the claims.
(b) Adherence to the language of the claims in turn promotes both fairness and predictability.
(c) The claim language must, however, be read in an informed and purposive way.
(d) The language of the claims thus construed defines the monopoly. There is no recourse to such vague notions as the “spirit of the invention” to expand it further.
(e) The claims language will, on a purposive construction, show that some elements of the claimed invention are essential while others are non-essential. The identification of elements as essential or non-essential is made:
(i) on the basis of the common knowledge of the worker skilled in the art to which the patent relates;
(ii) as of the date the patent is published;
(iii) having regard to whether or not it was obvious to the skilled reader at the time the patent was published that a variant of a particular element would not make a difference to the way in which the invention works; or
(iv) according to the intent of the inventor, expressed or inferred from the claims, that a particular element is essential irrespective of its practical effect;
(v) without, however, resort to extrinsic evidence of the inventor's intention.
(f) There is no infringement if an essential element is different or omitted. There may still be infringement, however, if non-essential elements are substituted or omitted.
32 Based on the foregoing principles, I conclude that the appellant's arguments must be rejected. As stated, the ingenuity of the patent lies