Case Comment Case Comment
Crila Plastic Industries Ltd. v. Ninety-Eight Plastic Trim Ltd.
(1986) 10 C.P.R. (3d) 226 (F.C.T.D. per Strayer J.) at 236
[affd (1987) 18 C.P.R. (3d) 1 (F.C.A.)]
copyright 1997 Donald M. Cameron
The "Pliable Edge Protector" in question is largely used for the purpose of protecting car door edges although it may be used on other thin edges on cars, boats, furniture, etc. The principal demand for the type of product in question here, whether made by the plaintiff or the defendant, appears to be in the "after-market" in respect of cars: that is, it is sold to private owners of cars for adding to their vehicles, rather than to manufacturers for installation as original equipment.
The claims of patent No. 1,081,733 are as follows:1. A pliable edge protector comprising:
(a) an elongated extruded channelar member formed of pliable material, said extruded channelar member having a bight portion and a pair of spaced-apart flange portions projecting therefrom to form an interior throat therebetween;
(b) a decorative elongated strip of thin material, said decorative elongated strip having two major surfaces and two minor edge surfaces extending along the length of the decorative strip, one of said major surfaces covering the exterior surface of said extruded channelar member and extending over the projecting ends of said flange portions to thereby dispose said minor edge surfaces within said interior throat...
The question remains, however, as to whether by putting together all of these well-known elements the applicants for the patent had produced a "combination" which was inventive. The defendant argues that this was merely an "aggregation" of known elements, each of which continued to perform its well- known function without any new result flowing from the interaction of two or more known elements. I respectfully adopt the legal tests applied by my colleague Collier J. in Domtar Ltd. v. MacMillan Bloedel Packaging Ltd. et al. (1977), 33 C.P.R. (2d) 182. After reviewing the established authorities on the subject he stated at pp. 189-90:
Mere juxtaposition of parts is insufficient for patentability. The elements must combine for a unitary result. If any element in the arrangement gives its own result, without any result flowing from the combination, then there is no invention.
After reviewing the elements said to form the invention, he concluded at p. 191:
In my opinion the elements I have above outlined perform essential independent functions. They do not collate to produce a new but common result. If any one of them were removed, the others, to my mind, would continue to perform their own individual function. There is here an aggregation, not a combination.
I believe that is the situation in the present case. The U-shaped moulding continues to be a means of covering an edge. The more pliable it is the more easily it follows the contours of the edge. The decorative layer continues to decorate, and the "wrap-around" feature of it continues to protect it. The adhesive inside continues to attach one object to another. While there was some suggestion in evidence and argument of the advantage of the closed throat in keeping glue from drying before installation, and of the combined effect of the shape of the moulding, the wrap-around feature and the glue in keeping out water after installation, these advantages are not claimed by the patent.
I considered carefully the possibility that the use of a moulding that is pliable (thus enabling it to follow the contours, but reducing its gripping power) is made more feasible by the use of glue (providing the gripping effect which is lost through greater pliability), and that these two features together could amount to a combination. This advantage is neither specifically disclosed nor claimed in the patent. Moreover, I have concluded that all this "combination" really amounts to is a decision to use glue to stick something which otherwise would not grip. It involves the workman deciding that "if it won't stay in place, we should put some glue on it". This hardly seems to me to be the "scintilla of inventiveness" which is the minimum requirement for an invention. Nor do I think a decision as to the location of the glue, moving the "bead" from the flanges to the bight, for example, is even a small flash of inventive genius. The glue itself was a commonly known product.
I therefore conclude that the claims of the patent do not disclose an invention.
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