Mobil Oil Corporation et al. v.
Hercules Canada Inc.
citation(s): Federal Court of Appeal, Reasons for Judgment, September 27, 1995, unreported
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Mobil Oil Corporation et al. v.
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copyright 1997 Donald M. Cameron, Aird & Berlis
"But the construction of a patent is a matter for the judge, as this Court had occasion to repeat it again forcefully in its recent judgment in Nekoosa Packaging Corp. v. United Dominion Industries Ltd. supra, and his reading must prevail to that of experts unless clearly unacceptable."
"Referring to excerpts from the testimony of experts who stated that patent 1,150,590 would have been understood to refer to a film without slip agent, the respondent argued that the original patent was not defective but rather, it was simply limited to film that contained no slip agent. Consequently, the invention taught by the reissued patent is a different invention. The respondent also argued that there was nothing in the original patent itself that could be seen as having been the result of an accident or mistake and, furthermore, the inadvertence, accident or mistake invoked was not that of the inventors and had no connection with their intention regarding the invention as disclosed and claimed in the original patent. The trial judge rejected all of these arguments on the baseis of his finding that the inventors intended that claims equivalent to claims 4, 5, 6 and 7 of the U.S. patent be included in the Canadian patent and if these claims had been omitted, it was most probably due, as explained in the application for reissue, to the inadvertance of the American patent attorneys.
It is clear to me that the trial judge’s finding as to the invention of the inventors was a complete answer to the respondents’s arguments. It seems to me irrelevant that the original version of the patent was capable of disclosing the complete product if it failed to completely cover all that the inventors had intended it to cover. In Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning v. Commissioner of Patents, [1966] S.C.R. 604 at 614 the Supreme Court of Canada addressed the use of section 47 and stated that:
"A person relying upon a mistake under s.50 would have to establish that the patent which was issued did not accurately express the inventor’s intention with respect to the description or specification of the invention or with respect to the scope of the claims which he made."
The finding of the trial judge is precisely to that effect. The original patent was defective in that it did not reflect the complete invention that the inventors intended to disclose and cover. The mistake may not have been that of the inventors, which is not required (cf. Burton Parsons Chemicals Inc. v. Hewlett-Packard (Canada) Ltd., [1976] 1 S.C.R. 555 at 568-569; Curl-Master Manufacturing Co. Ltd. v. Atlas Brush Ltd., [1967] S.C.R. 514 at 531), but there was a clear connection between it and the patent as intended by them and both patents relate to essentially the same invention, that is to say and invention that solved the problem of poor adhesion of an oriented film substrate to a metallized coating.
...
"How can it be said that the trial judge should have resolved this question using the original patent alone since, obviously, the patent was missing these claims or the inventors would not have applied for reissue. Given the invention was first patented in the United States and that the American patent formed the basis for what was to become the Canadian patent, it only makes sense that the American patent be looked at in order to determine whether the inventors intended to include the claims in issue. Furthermore, it is the appellant’s position that the "mistake" was made due to a failure on the American attorneys to communicate the amendment to the Canadian patent agents. This "mistake" could only be demonstrated through a reading of the U.S. patent."
"...once the construction and scope of a patent are determined - and, in that respect, I already fully agree with the findings of the judgment a quo, - whether the defendant’s activities have infringed the patent’s territory is a question of fact."
"Surpisingly enough, the appellants have challenged the trial judge's finding that claims 12 and 15 were only substantially infringed, not textually. This criticism, however, appears to me to be devoid of any real meaning and consequences. I hasten to explain myself.
The distinction made by the trial judge is, of course, due to the fact that, in looking into the issue of infringement, he adopted the traditional twofold test according to which one should first inquire into whether the defendant's activities fall clearly within the words of the claims and, if not, then whether what the defendant has done has taken the substance of the invention defined by claims (see the comments on Professor Fox in his Treastise Canadian Patent Law and Practice (1969) at p. 324). I share the doubts expressed by Pratte J. in Eli Lily v. O'Hara Manufacturing Ltd. (1989), 26 C.P.R. (3d) 1(F.C.A.) with respect to such an approach.
The established law in Canada, as stated long ago by Thorson P. in McPhar Engineering Co. v. Sharpe Instruments Ltd. (1960), 35 C.P.R. 105 (Ex. Ct.), is "that if a person takes the substance of an invention he is guilty of infringement and it does not matter whether he omits a feature that is not essential to it or substitutes an equivalent for it". That being the case, I do not appreciate the utility of the traditional twofold test and even its relevance. No doubt a textual infringement will simplify the problem as it will put an immediate end to the inquiry. But its seems to me that the exercise may be useless in cases like this one where the distinction between textual and substantial infringement may be difficult to draw. For example, in claim 12, the trial judge held that there was no textual infringement because the respondent's film contained an additive. The appellants quite rightly point out that the additive does not cause the film to fall outside the specifications outlined in the claim. Consequently one is left to ask, does an additive of unknown function take something outside of the literal wording of a claim? What about impurities? Such an inquiry would require one to develop an entire body of rules to distinguish between literal infringement and substantial infringement. Similar reasoning applies to claim 15 wherein the trial judge found no literal infringement because the respondent added slip agent to the core layer. Siip agent is also an additive so the same issues apply. It is my opinion that one should not endeavour to create a distinction between a substantial and a literal infringement in a case such as this; one should construe the claims so as to determine what exactly lies within the scope of the inventor's rights. Once this has been determined, then one can consider the defendant's product to decide if it falls within the scope of the claim.
In any event, I see no reason to analyze any further the trial judge's incidential conclusion that there was no textual infringement since such a conclusion can have no effect in view of his unassailable final conclusion that there was substantial infringement."
Endnotes
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