Omark Industries, Inc. et al. v.
Sabre Saw Chain (1963) Ltd.
citation(s): (1976), 28 C.P.R. (2d) 119 (F.C.T.D. per Gibson, J.)
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Omark Industries, Inc. et al. v.
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copyright 1997 Donald M. Cameron, Aird & Berlis
In discussing the claims, the learned author states at pp. 86-8:
The general rule
The question of infringement of a valid claim in a specification is determined in the following manner. The claim must first be construed, according to the rules set out in Chapter 2, Part II. The thing or process the subject of the allegedly infringing act complained of must then be compared with the words of the claim. If it falls within them, there is infringement. If it does not, there is no infringement: "a claiming clause operates as a disclaimer of what is not specifically claimed." (Fellows v. Lench (1917) 34 R.P.C. 45 at 55 (H.L.); Marconi v. Mullard (1923) 40 R.P.C. 159 at 175 (C.A.).) Once the correct construction of the claim has been decided upon it is irrelevant to questions of infringement to consider what it is that the patentee has in fact invented. If that which is claimed has been taken (although for different reasons) there is infringement; if the inventor's discovery has been utilised in something outside his claim there is no infringement. For infringement involves the taking of what the patentee has actually claimed as distinct from what he "might have claimed if he had been well advised or bolder" (Nobel v. Anderson (1894) 11 R.P.C. 115 at 128 (per Romer J., upheld H.L. (1895) 12 R.P.C. 164).) there is no infringement of "the equity of a patent." (Dudgeon v. Thomson (1878) 3 App. Cas. 34 at 44 (H.L.).) The forbidden field is to be found in the language of the claims and not elsewhere."
"In Blanco White, Patents for Inventions, 4th ed. (1974), at p. 86 it is stated that a patentee to succeed in an infringement action must prove:
... that an act has been done that was:
I. Covered by a valid claim of his patent.
II. Of a sort reserved exclusively to patentees by the patent grant, and without the licence of the patentee.
III. Done by the defendant in the action.
In discussing the claims, the learned author states at pp. 86-8:
The general rule
The question of infringement of a valid claim in a specification is determined in the following manner. The claim must first be construed, according to the rules set out in Chapter 2, Part II. The thing or process the subject of the allegedly infringing act complained of must then be compared with the words of the claim. If it falls within them, there is infringement. If it does not, there is no infringement: "a claiming clause operates as a disclaimer of what is not specifically claimed." (Fellows v. Lench (1917) 34 R.P.C. 45 at 55 (H.L.); Marconi v. Mullard (1923) 40 R.P.C. 159 at 175 (C.A.).) Once the correct construction of the claim has been decided upon it is irrelevant to questions of infringement to consider what it is that the patentee has in fact invented. If that which is claimed has been taken (although for different reasons) there is infringement; if the inventor's discovery has been utilised in something outside his claim there is no infringement. For infringement involves the taking of what the patentee has actually claimed as distinct from what he "might have claimed if he had been well advised or bolder" (Nobel v. Anderson (1894) 11 R.P.C. 115 at 128 (per Romer J., upheld H.L. (1895) 12 R.P.C. 164).) there is no infringement of "the equity of a patent." (Dudgeon v. Thomson (1878) 3 App. Cas. 34 at 44 (H.L.).) The forbidden field is to be found in the language of the claims and not elsewhere."
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