Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd.

Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd.
Collection
Supreme Court Judgments
Date
1981-03-19
Report
[1981] 1 SCR 504
Judges
Laskin, Bora; Martland, Ronald; Ritchie, Roland Almon; Dickson, Robert George Brian; Estey, Willard Zebedee
On appeal from
Federal Court of Appeal
Subjects
Intellectual property
Decision Content
SUPREME COURT OF CANADA
Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd., [1981] 1 S.C.R. 504
Date: 1981-03-19
Consolboard Inc. (Plaintiff) Appellant; and
MacMillan Bloedel (Saskatchewan) Limited (Defendant) Respondent.
1980: April 28, 29; 1981: March 19.
Present: Laskin C.J. and Martland, Ritchie, Dickson and Estey JJ.
ON APPEAL FROM THE FEDERAL COURT OF APPEAL
Patents — Infringement — Validity — Specification — Anticipation — Novelty — Double patenting and required division of original application — Patent Act, R.S.C. 1970, c. P-4, ss. 2, 28(1)(a),(b),(c), 36(1),(2), 38, 45(1)(a),(b), 63(1)(b).
Appellant, the owner of two Canadian letters patent, alleged infringement by respondent. The patents, one for "waferboard" and the other for "wafers", concerned the production of moulded products, especially fibre board, from fibrous elements in flakes or wafers derived from wood. Although a single application had originally been submitted, the application dealing with "waferboard" was severed from the original application which later issued in respect of "wafers" because of a request by the Commissioner of Patents. Respondent, after acquiring a plant that had produced a waferboard product under licence but not the licence, continued to produce the product without a licence. Respondent denied any allegation of infringement and challenged the validity of the patents.
At trial, most claims were upheld and some found to be infringed. The Court of Appeal set aside that judgment for non-compliance with s. 36(1) of the Patent Act and dismissed the cross-appeal seeking to establish the validity of the claims that were struck down. Both courts denied appellant an accounting of profits.
Respondent contended that the patents were invalid for a number of reasons. Firstly, the specifications in the patents in suit failed to comply with s. 36(1) of the Patent Act. Further, the invention allegedly had been on sale in Canada for more than two years before the filing of the application contrary to s. 28(1)(a). Then, too, contrary to ss. 28(1)(a) and 63(1)(b), the invention allegedly had been previously known or used by inventors filing an earlier application for a patent that was co-pending with the application of the patents in suit. These patents also allegedly lacked novelty or inventive ingenuity over prior art. It also was contended that the "wafer" patent was the same invention as the "waferboard" patent. Respondent maintained that its product and process did not infringe the patents in suit and argued that appellant had failed to prove title to the patents.
Held: The appeal should be allowed.
A number of issues were decided in the course of the hearing. Consolboard, firstly, proved title to the two patents in suit. These patents were not invalid because of the invention's being on sale in Canada for more than two years before the filing of the application, contrary to s. 28(1)(a) of the Patent Act. In addition, the trial judge properly refused to grant an accounting of profits as an alternative to damages on the main ground that appellant did not commence litigation until 1974. Finally, the question of infringement was one of fact and respondent did not show any substantial ground on which the trial judge's finding of infringement should be overturned.
The patents in issue were not invalid for non-compliance with s. 36 of the Patent Act. What s. 36 called for in the specification (which included both the "disclosure" and the "claims") was a description of the invention and the method of producing or reconstructing it, coupled with a claim or claims stating those novel features in which the applicant wanted an exclusive right. The specifications had to define the precise and exact extent of the exclusive property and privilege claimed. Section 36(1) did not exact different standards of disclosure for different parts of the section; indeed, it was contrary to established law to do so. The only test was whether the specification adequately described the invention for a person skilled in the art, though in the case of patents of a highly technical and scientific nature, that person would be someone possessing a high degree of expert scientific knowledge and skill in the particular branch of the science to which the patent related. Section 36(1) did not require a distinct indication of the real utility of the invention in question, and its concluding words did not require the inventor to describe in his disclosure or claims how the invention was new or useful. The inventor was required to describe what it was he claimed to have invented, but not to extol its effect or advantage if he described the invention so as to produce it. The requirement in s. 36(1) that the specification disclose the "use" to which the inventor conceived the application could be put related to disclosure and was independent of the requirement in s. 2 that an invention be new and "useful" as a condition precedent to an invention.
The patents in suit did not describe substantially the same invention as was described in an earlier patent held by the inventor and a co-inventor. Section 28, which permitted an individual a patent for an invention if that invention was not "known or used by any other person before he invented it", was not violated.
The applicant did not fail to claim "distinctly" how the inventions in the patents in suit differed from the earlier and similar patent. The true test was simply that "a man had to distinguish what was old from what was new by his claim but he did not have to distinguish what was old from what was new by his claim". If the specification described an invention that was in fact new, and if the description was sufficient for an ordinary workman skilled in the art to understand it, the patent specification was valid.
The allegation that the patents in suit were invalid because of anticipation and lack of inventive ingenuity raised a factual issue involving assessment of the common knowledge and prior art existing at the date of the invention. The claims in suit did more than merely read on the disclosure of the prior documents. Such disclosure did not contain clear instructions to do or make something that would infringe the patents in suit if carried out after the grant.
The rule against double-patenting, that only one patent could issue for a given invention, was not violated. The appellant had originally filed a single patent application but had been required to divide the application by the Commissioner of Patents. A patentee was not to be prejudiced by enforced divisional applications.
The re-examination of the evidence, as required by appellant's submission that certain claims in a patent were valid contrary to the trial judge's findings, was not a proper appellate function.
Baldwin International Radio Company of Canada, Limited v. Western Electric Company Incorporated, and Northern Electric Company, Limited, [1934] S.C.R. 94; Noranda Mines Limited v. Minerals Separation North American Corporation, [1950] S.C.R. 36 reversing [1947] Ex. C.R. 306; Western Electric Company, Incorporated, and Northern Electric Company v. Baldwin International Radio of Canada, [1934] S.C.R. 570; Hinks & Son v. Safety Lighting Company (1876), 4 Ch. D. 607; Sandoz Patents Limited v. Gilcross Limited, formerly Jules R. Gilbert Limited, [1974] S.C.R. 1336; Burton Parsons Chemicals, Inc. et al. v. Hewlett-Packard (Canada) Ltd. et al., [1976] 1 S.C.R. 555; Monsanto Company v. Commissioner of Patents, [1979] 2 S.C.R. 1108; Tubes, Ld. v. Perfecta Seamless Steel Tube Company, Ld. (1902), 20 R.P.C. 77; Rodi & Wienenberger A.G. v. Metalliflex Limited (1959), 19 Fox Pat. C. 49; Unifloc Reagents, Ld. v. Newstead Colliery. Ld. (1943), 60 R.P.C. 165; R. v. American Optical Company et al. (1950), 11 Fox Pat. C. 62; Foxwell v. Bostock and Others (1864), 4 De G.J. & S. 298; 46 E.R. 934; British United Shoe Machinery Company Ld. v. A. Fussell & Sons Ld. (1908), 25 R.P.C. 631; Canadian General Electric Co., Ld. v. Fada Radio Ld. (1930), 47 R.P.C. 69; R. v. Uhlemann Optical Company (1949), 10 Fox Pat. C. 24 affirmed [1952] 1 S.C.R. 143; Lovell Manufacturing Company et al. v. Beatty Bros. Limited (1962), 23 Fox Pat. C. 112; Lightning Fastener Company Limited v. Colonial Fastener Company, Limited et al., [1933] S.C.R. 377; General Tire and Rubber Company v. Firestone Tyre and Rubber Company Limited and Others, [1972] R.P.C. 457; Xerox of Canada Ltd. v. IBM Canada Ltd. (1977), 33 C.P.R. (2d) 24 (F.C.C.); Commissioner of Patents v. Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning, [1964] S.C.R. 49; J. R. Short Milling Company (Canada) Limited v. George Weston Bread and Cakes Limited et al., [1941] Ex. C.R. 69 affirmed [1942] S.C.R. 187, referred to.
APPEAL from a judgment of the Federal Court of Appeal[1], allowing an appeal from a judgment finding most patent claims valid and infringement of some but dismissing cross-appeal seeking both the establishment of the claims ruled invalid and an accounting of profits. Appeal allowed.
G. Alexander Macklin and Bruce E. Morgan, for the appellant.
D. F. Sim, Q.C., and K. D. McKay, for the respondent. The judgment of the Court was delivered by
DICKSON J.—The appellant, Consolboard Inc. is the owner of Canadian Letters Patent 565,618 for "waferboard" and Canadian Letters Patent 569,813 for "wafers". Consolboard alleges that the respondent, MacMillan Bloedel (Saskatchewan) Limited, has infringed the patents. In reply, the respondent challenges the validity of the patents and denies the allegation of infringement.
Both inventions are concerned with the production of moulded products, particularly fibre board and the like, from fibrous elements in the form of flakes or wafers. These flakes and wafers are derived from wood including wood waste from the lumber industry. The strength of dense fibre board, known as hardboard, is determined primarily by the intrinsic strength of the individual fibres and fibrous elements of which it is composed. The process by which waferboard is made is complex and technical. In simple terms, however, it may be said that the product is usually produced by preparing what is known as a "felt" from the fibres, adding a binder of resin and consolidating the felt by the application of heat and substantial pressure. Strong lateral adhesive forces are thus developed between the fibrous elements.
The wafer patent speaks of "cross-cut" fibrous elements, formed by cutting woody materials across the grain, as distinguished from planer action, so that the grain is parallel to and extends along the length of the wafer. An object of the invention is to preserve the intrinsic strength of the fibres. In planer shavings the fibre bundles are frequently damaged or broken; in the wafers the fibre bundles are preserved substantially undamaged. They are smooth, have tapered ends, and good board-making properties, requiring very little added binder. Resin is an expensive commodity and economy in its use is highly desirable. The wafers have a thickness within the range of 0.002-0.065 inch and a length at least ten times the thickness but less than five inches. The waferboard patent provides for a plurality of such wafers, the wafers being interfelted and aligned with the broad faces lying substantially in the same plane. A thermosetting resinous binder integrates the wafers into a composite structure. Flakes or wafers having ends tapered in thickness, according to the patent, give a stronger and considerably smoother surfaced board than do flakes or wafers having blunt ends. Tapering of the ends permits a thicker flake or wafer to be used than if the ends were not tapered. In consequence, the specific surface of the fibrous material is reduced and, equally, the quantity of resinous binder necessary to make a board having a required strength. The finished product is a strong and relatively inexpensive board, for interior or exterior use. It has largely supplanted the more expensive "plywood" as a sheeting product.
Dr. James d'A. Clark, the inventor, is a scientist and well-known expert in the pulp and paper industry. He filed in Canada a single patent application on June 25, 1953. Pursuant to a requirement by the Commissioner of Patents, acting under s. 38 of the Patent Act, R.S.C. 1970, c. P-4, the application for Canadian Patent 565,618 (waferboard) was divided from the original application which issued as Canadian Patent 569,813 (wafer).
I
The respondent, MacMillan Bloedel (Saskatchewan) Limited manufactures waferboard at its plant in Hudson Bay, Saskatchewan, and sells its products under the trademark Aspenite. The plant was constructed about twenty years ago by a Saskatchewan company, Wizewood Ltd. Wizewood manufactured waferboard under licence from Changewood Corporation, a company which had obtained ownership of the two patents in suit from Dr. Clark. Dr. Clark assisted in the start-up of the Wizewood plant. The plant was operated by Wizewood from 1961 to 1965 and royalties were paid pursuant to the licensing agreement. Wizewood, however, encountered financial difficulties following a serious fire and management of the company was taken over by a creditor, the Saskatchewan government.
Later, the assets of Wizewood, not including the licence, were sold to MacMillan Bloedel in 1965. Between 1965 and the commencement of this action in 1974, representatives of Changewood and its successor, Consolboard, attempted, without success, to have the respondent company or its parent company, MacMillan Bloedel Limited, acknowledge an obligation for the payment of royalties. The respondent continued to produce waferboard at its plant in Saskatchewan. It took the position, and has continued to take the position, that it has not infringed the patents and, in any event, the patents are invalid.
Pursuant to an order of the Federal Court the action for infringement proceeded to trial without any evidence as to the extent of the alleged infringement. The question as to damages flowing from alleged infringement, and as to profits arising from any alleged infringement, was to be the subject of further discovery and a reference after trial.
II
The trial judge, Collier J., in a judgment now reported in (1979), 39 C.P.R. (2d) 191, held certain claims of each of the two patents to be invalid. With respect to the waferboard patent an essential element of the invention was that the wafers be "crosscut". Claims 2, 8, 9 and part of claim 10 omitted mention of this term, were therefore broader than the invention made or described and invalid. With respect to the wafer patent an essential element of the invention was that the wafers have tapered ends. Failure to mention this feature resulted in claims 3 and 4 of the wafer patent being struck down, the claims being broader than the invention made or described.
Mr. Justice Collier rejected all other claims of invalidity advanced by the respondent. He held that the description contained in the specifications satisfied the statutory requirements established in s. 36(1) of the Patent Act. He rejected a claim that Consolboard had failed to prove its title to the patents in question. He also rejected arguments based on anticipation, lack of novelty or ingenuity, and ‘double patenting'.
Having upheld, in part, the validity of the patents, the judge proceeded to find that the respondent had infringed claim 2 of the wafer patent and claims 7 and 10 (in so far as it included 7) of the waferboard patent. He refused to direct an accounting of profits as requested by Consolboard. He limited his order to an award of damages.
III
MacMillan Bloedel appealed. Consolboard cross-appealed, seeking to establish the validity of the claims which had been struck down at trial and the right to an accounting of profits. The Federal Court of Appeal granted the appeal, and set aside the judgment at trial, for failure to comply with s. 36(1) of the Patent Act, as construed by the Federal Court of Appeal. The cross-appeal of Consolboard was dismissed.
Before the Court of Appeal and before this Court, the respondent, in addition to arguing the invalidity of the patents in suit for failure to comply with s. 36(1) of the Patent Act, argued that the Consolboard action should be dismissed on the following grounds: (i) that Consolboard had failed to prove its title to the patents in suit; (ii) that the patents in suit were invalid in that, contrary to the provisions of s. 28(1)(c) of the Patent Act, the "invention" thereof had been on sale in Canada more than two years before the filing of the application therefor; (iii) that the patents in suit were invalid in that contrary to the provisions of ss. 28(1)(a) and 63(1)(b) of the Patent Act, the "invention" thereof was previously known or used by the inventors named in Canadian Patent 621,795 and that the application therefor was filed earlier than and was co-pending with the application resulting in the patents in suit; (iv) that Canadian Patent 569,813 (wafer patent) was invalid as being for the same "invention" as that of Canadian Patent 565,618 (waferboard patent); (v) that the patents in suit were not infringed by the respondent's product and process; (vi) that the patents in suit were invalid as lacking novelty or inventive ingenuity over the prior art; (vii) that the trial judge erred in refusing leave to the respondent to plead, on the last day of trial, the provisions of the Saskatchewan Limitation of Actions Act, R.S.S. 1965, c. 84.
IV
Before addressing the question as to whether the Court of Appeal was right in holding both patents in suit invalid for failure to comply with the requirements of s. 36(1) of the Patent Act it will be convenient to mention but briefly and then put aside, a number of the issues canvassed during argument. In the course of the hearing this Court decided:
(a) Consolboard has proven its title to the two patents in suit. While Collier J. conceded that the evidence establishing the chain of title was "not as satisfactory as one would wish" there was nevertheless some evidence upon which he could find, as he did, that Consolboard had met the onus of showing good title. The main complaint was that the inventor Clark was not called to prove an assignment from him to a predecessor in title to Consolboard. Dr. Clark lived not far from Vancouver, where the trial was held, but he was of advanced years. The assignment was proved by one Carey whose credentials were attacked by the respondent. The trial judge, however, was entitled to treat this as he wished, much depending upon the credibility of Mr. Carey. This Court decided not to interfere with the judge's decision.
(b) The patents in suit were not invalid on the ground that, contrary to the provisions of s. 28(1)(c) of the Patent Act the "invention" thereof had been on sale in Canada for more than two years before the filing of the application therefor. This point arose from the fact that between Christmas 1950 and New Years 1951, Dr. Carl Hallonquist, then head of the Research Department of the respondent, visited Dr. Clark, in Longview, Washington. It was contended that during the course of the visit Dr. Clark disclosed to Dr. Hallonquist, and demonstrated, every element of the claims of the patents in suit, and offered rights in the invention for Western Canada to the respondent. The trial judge held that Dr. Clark's offer of licensing rights could not be equated with the proposed sale of an invention. In support of his conclusion, it is important to note that the terms of any licence or sale were not discussed by Dr. Clark and Dr. Hallonquist; the conversations took place in the United States of America and not in Canada; and it is clear that Dr. Clark's work was still at the experimental or "pilot plant" stage. The discussions related to a board product produced by Dr. Clark in his laboratory in the basement of his home.
(c) That respondent would not have leave to amend its statement of defence to plead The Limitation of Actions Act of the Province of Saskatchewan. Counsel for the respondent abandoned this point during argument.
(d) That Collier J. was correct in refusing to grant an accounting of profits as an alternative to damages on the main ground that the appellant did not commence litigation until 1974. The appellant claims that Collier J. was wrong in finding delay on its part in bringing the action. It was urged that Consolboard had continued negotiations with MacMillan Bloedel until 1972 in an effort to make MacMillan Bloedel recognize its rights and it was only after the ultimate failure of these negotiations that Consolboard felt compelled to bring action in February 1974. This may well be correct. The discretion exercised by Collier J. involved, however, a whole complex of factual matters, beside delay. Thus, in the view of this Court, the conclusion of the trial judge on the matter of an accounting of profits should be maintained. There is a further issue which might be disposed of at this time, the question of infringement. The respondent manufactures a woody wafer falling within the dimensional limitations of the wafer patent 569,813 and claim 2 thereof. The Aspenite waferboard manufactured by the respondent, save for the 3/4 inch variety, falls within the size and composition parameters of the waferboard patent 565,618 and claims 7 and 10 thereof. The respondent argues that its wafers are not "tapered" on a proper construction of that term as found in the patents, and hence did not infringe the appellant's patents. The trial judge accepted, for the purposes of the construction of the patents in suit, the definition of taper as "a feathering or gradual reduction of thickness of the wafers at the ends of the long dimension". He rejected the more restricted definition of taper offered by the respondent's witness, Mr. Johanson, namely, "a regular reduction in thickness achieved by a cutting tool [of some means] ". The judge found that the respondent's wafers were "tapered".
A great deal of evidence was directed to the infringement issue during the course of the 20 day trial. The question is essentially one of fact and the respondent has not in my opinion shown any substantial ground on which the finding of infringement should be overturned. The finding of the trial judge should be left undisturbed.
V
Although the respondent had a whole battery of defences, the principal issue in the present appeal is whether the Federal Court of Appeal was in error in finding the two patents invalid on the ground of failure to comply with s. 36 of the Patent Act. The section reads:
36. (1) The applicant shall in the specification correctly and fully describe the invention and its operation or use as contemplated by the inventor, and set forth 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; in the case of a machine he shall explain the principle thereof and the best mode in which he has contemplated the application of that principle; in the case of a process he shall explain the necessary sequence, if any, of the various steps, so as to distinguish the invention from other inventions; he shall particularly indicate and distinctly claim the part, improvement or combination which he claims as his invention.
(2) The specification 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.
Chief Justice Jackett, speaking for the Federal Court of Appeal, placed emphasis upon the opening words and the concluding words of s. 36(1):
The applicant shall in the specification correctly and fully describe the invention and its operation or use as contemplated by the inventor, . . .; he shall particularly indicate and distinctly claim the part, improvement or combination which he claims as his invention.
In a portentous footnote, marked "N.B.", the learned Chief Justice states that the words "in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which its appertains or with which it is most closely connected", appearing midway through s. 36(1), apply only to the requirement that the applicant shall "set forth clearly the various steps in a process, or the method of constructing, making, compounding or using a machine, manufacture or composition of matter ... to make, construct, compound or use it". He then made reference to the definition of "invention" found in s. 2 of the Patent Act, namely:
2. In this Act, and in any rule, regulation or order made under it,
[…]
"invention" means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter;
The Chief Justice held that an invention must in the case of a product, (which he considered to be involved here) by virtue of the definition of "invention" be "useful . . . composition of matter, or any .. useful improvement in any ... composition of matter". Having affirmed that the trial judge had correctly described the "invention" the Chief Justice said:
In our view, having regard to the obvious object of section 36 of making "patent" to the public (as a consideration for the monopoly) all aspects of the invention (in the sense defined by section 2 of the Patent Act) and particularly its utility, there is no compliance with that section unless the applicant in his specification distinctly claims the "part, improvement or combination which he claims" having "correctly and fully" described, inter alia, its utility.
He continued:
After studying the "specification" and in the light of a long argument and references to the voluminous evidence, it would seem that the utility of the invention consists of the fact that, if particles of wood created by crosscutting and tapered at the ends are used within the sizes mentioned, for the making of fibre boards, they will produce a relatively inexpensive board strong enough for construction purposes because there has been a minimization of the damage to the fibres and the tapering at the ends of the particles reduces the amount of the relatively expensive bonding resin required and, by virtue of the overlapping resulting from such tapering, results in a stronger board.
and concluded:
In our view, while the reduction in damage to the wood fibres, as a utility to be achieved by the "invention", is "distinctly" claimed by the patent (see page 1 of the printed copy), the utility of the combination of the crosscutting whereby that is achieved and the tapering of the ends of the particles is only to be discovered by an intensive study of the patent, if at all. The main reference to it is in Column 8 (out of 16 columns) in a discussion of a particular application of the "invention". In our view, this is not a distinct indication of the real utility of the invention in question by which the public would be made aware of the invention in the manner required by section 36; and the Patent Act does not, therefore, authorize a monopoly for the invention. The appellant submits that the Court of Appeal made seven fundamental errors: (i) in failing to recognize that a patent specification is not addressed to the public at large but to workmen of ordinary skill in the art; (ii) in confusing the attributes of an "invention" contained in s. 2 of the Patent Act, the definition section, with the requirement that s. 36(1) of the Act that the applicant correctly and fully describe the invention and its operation or use as contemplated by the inventor; (iii) in wrongly construing s. 36(1) to require that the attributes of the patentability be set forth in the patent specification, i.e. novelty, inventive step and utility; (iv) in confusing the "utility" of an invention with the theory or effect of the invention; (v) in failing to consider the specification as a whole in determining whether it complied with s. 36(1); (vi) in taking an unduly technical approach to the specification in considering whether it complied with s. 36(1) of the Act; (vii) in failing to consider the evidence of persons skilled in the art respecting the sufficiency of the specification.
VI
Section 36 of the Patent Act lies at the heart of the whole patent system. The description of the invention therein provided for is the quid pro quo for which the inventor is given a monopoly for a limited term of years on the invention. As Fox points out in Canadian Patent Law and Practice (4th ed.), p. 163, the grant of a patent is in the nature of a bargain between the inventor on the one hand and the Crown, representing the public, on the other hand. The consideration for the grant is twofold: "first, there must be a new and useful invention, and secondly, the inventor must, in return for the grant of a patent, give to the public an adequate description of 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". The "description" to which Fox refers is that required by s. 36 of the Patent Act. It cannot be said that s. 36 of the Act is happily phrased. It gives the impression of a mélange of ideas gathered at random rather than an attempt to enunciate, clearly and concisely, a governing principle or principles. This is perhaps understandable in that the section is the product of amendment over a period of many years. The language simply does not lend itself to a tight, literal interpretation. It is, and should be treated as, a parliamentary pronouncement, in general terms, of that which must be set forth by the applicant to the world before being qualified to receive the grant of monopoly under a patent.
All later patent legislation is based upon The Patent Act of 1869, 1869 (Can.), c. 11, which in turn followed generally the United States statute of 1836 (5 Stat. 117). The 1869 Act required (s. 14) the specification to describe, correctly and fully, the mode or modes of operating contemplated by the applicant and to state clearly the contrivances and things which he claimed as new, and for the use of which he claimed an exclusive property and privilege. The opening words of the present s. 36(1) and the requirements of s. 36(2) are in much the same language. A new statute was enacted in 1872, amended from time to time, consolidated in 1886, and again in 1906, but with little change in what is now s. 36. In 1923 a new Act was brought into force which adopted the exact words now found at the commencement of s. 36(1). It required the inventor to set forth clearly the various steps in a process and to end the specification with a claim or claims stating distinctly the things or combination of things which the applicant regarded as new and in which he claimed an exclusive property and privilege. There was thus established a distinction between the "claims" and the body of the specification.
In 1935 another Patent Act was enacted, s. 35 of which is virtually the same as the present s. 36. Two changes were made, of particular relevance in the present inquiry: (i) it was required that the explanatory steps be addressed to a person skilled in the art—this merely gave statutory recognition to what had always been the common law—and (ii) the concluding words of subs. (1), central to this appeal, were added, namely "He shall particularly indicate and distinctly claim the part, improvement or combination which he claims as his invention".
It is not entirely clear what was intended to be achieved by the addition of the quoted words. They may have been added ex abundante cautela, seeking greater particularity of description, but they appear to be little more than pleonasm, when read with s. 36(2) and the definition of "invention". It is not readily apparent that anything of substance was added in 1935 to that which had been required since 1869. I am therefore of the view that the law laid down by this Court in Baldwin International Radio Company of Canada, Limited v. Western Electric Company Incorporated, and Northern Electric Company, Limited[2] is still good law, notwithstanding the changes in the Patent Act made in 1935. In Baldwin Rinfret J., as he then was, speaking for the Court, referred to s. 14 of the Patent Act, (now s. 36) and then said:
The section requires that: The specification shall
(a) correctly and fully describe the invention and its operation or use as contemplated by the inventor;
(b) set forth clearly the various steps in a process, or the method of constructing, making or compounding, a machine, manufacture, or composition of matter;
(c) end with a claim or claims stating distinctly the things or combinations which the applicant regards as new and in which he claims an exclusive property and privilege.
What is required, therefore, under our law, is that the applicant should give a full and correct description of the invention and its operation or use. If the invention is a new process, he should set forth clearly the various steps in the process; if a machine, manufacture, or composition of matter, the specification should explain the method of constructing, making or compounding the same. Then, in every patent, the claim or claims must state distinctly what the applicant regards as new and in which he claims an exclusive property and privilege. If the invention be a new thing, or the improvement of a thing, he must so state; but where the invention consists merely in the new combination of old elements or devices, such combination is sufficiently described if the elements or devices of which it is composed are all named and their mode of operation given and the new and useful result to be accomplished pointed out (Compare: Bates v. Coe, (1878) 98 U.S. 31). It is only if the applicant desires to claim invention for a subordinate element per se that it is necessary for him to claim the element separately, if he wishes to secure in it an exclusive property and privilege. [at p. 105]
In essence, what is called for in the specification (which includes both the "disclosure", i.e. the descriptive portion of the patent application, and the "claims") is a description of the invention and the method of producing or constructing it, coupled with a claim or claims which state those novel features in which the applicant wants an exclusive right. The specifications must define the precise and exact extent of the exclusive property and privilege claimed.
Section 36(1) seeks an answer to the questions: "What is your invention? How does it work?" With respect to each question the description must be correct and full in order that, as Thorson P. said in Minerals Separation North American Corporation v. Noranda Mines, Limited[3]:
... when the period of monopoly has expired the public will be able, having only the specification, to make the same successful use of the invention as the inventor could at the time of his application. [at p. 316]
We must look to the whole of the disclosure and the claims to ascertain the nature of the invention and methods of its performance, (Noranda Mines Limited v. Minerals Separation North American Corporation[4]), being neither benevolent nor harsh, but rather seeking a construction which is reasonable and fair to both patentee and public. There is no occasion for being too astute or technical in the matter of objections to either title or specification for, as Duff C.J.C. said, giving the judgment of the Court in Western Electric Company, Incorporated, and Northern Electric Company v. Baldwin International Radio of Canada[5], at p. 574, "where the language of the specification, upon a reasonable view of it, can be so read as to afford the inventor protection for that which he has actually in good faith invented, the court, as a rule, will endeavour to give effect to that construction". Sir George Jessel spoke to like effect at a much earlier date in Hinks & Son v. Safety Lighting Company[6]. He said the patent should be approached "with a judicial anxiety to support a really useful invention".
In light of the foregoing I turn again to the judgment of the Federal Court of Appeal. With great respect, in my opinion that Court erred in two fundamental respects in overturning the judgment of Collier J. The Court reversed, as I understand the judgment, for the reason that the applicant had not made distinctly clear (1) to the public (2) the utility of the invention. In his reasons for judgment, Chief Justice Jackett stated in a passage which I repeat for ease of reference:
In our view, having regard to the obvious object of section 36 of making "patent" to the public (as a consideration for the monopoly) all aspects of the invention (in the sense defined by section 2 of the Patent Act) and particularly its utility, there is no compliance with that section unless the applicant in his specification distinctly claims the "part, improvement or combination which he claims" having "correctly and fully" described, inter alia, its utility. [The underlining is my own.]
In my view it is a well established principle that a patent specification is addressed, not to the public generally, but to persons skilled in the particular art. I am further of the opinion that s. 36(1) does not impose upon a patentee the obligation of establishing the utility of the invention.
The first error, therefore, which I believe the Court committed in interpreting s. 36(1) involves the adoption of different standards of disclosure for different parts of the section; in other words, a double standard of disclosure. The Appeal Court interpreted s. 36(1) as falling into two distinct parts, the first part involving the "various steps in a process, or the method of constructing, making, compounding or using a machine, manufacture or composition of matter ...". In the footnote to which I have referred, the Court holds that this portion of the specification is directed toward someone skilled in the art. The second part of the specification, involving a distinct claim of "the part, improvement or combination which he claims as his invention" is directed, in the view of the Court, toward a member of the ordinary public. In short, Jackett C.J. split s. 36(1) into two parts: (i) the setting forth of the various steps in a process, where the test is whether a person skilled in the art would understand it; (ii) the claims, where the test is whether a member of the public would understand it.
Jackett C.J. attempted to distinguish Sandoz Patents Limited v. Gilcross Limited, formerly Jules R. Gilbert Limited[7] on the ground that in Sandoz this Court was concerned with (i) above, and hence the "skilled artisan" test applied. This is a razor-sharp distinction, which I do not think is borne out by the broad language of Mr. Justice Pigeon in Sandoz. Pigeon J. was clearly opposed to the striking out of the patents on technical grounds. In Sandoz he said at p. 1347:
It does not appear to me that a patent should be invalidated on account of such a technicality and I do not think that s. 36(1) so requires. A specification is addressed to persons skilled in the art and, therefore, is to be construed by the standard of what such a person would understand