copyright 1997-2004 Donald M. Cameron, Ogilvy Renault
E.1 Introduction
E.2.3 at the date of invention
E.4 The wrong tests
E.5 Evidence and expert witnesses
"Necessity is the mother of invention."
Jonathan Swift
"Necessity may be the mother of invention, but play is certainly the father."
Roger von Oech
"I don't think necessity is the mother of invention - invention ... arises directly from idleness, possibly also from laziness. To save oneself trouble."
Agatha Christie
E. OBVIOUSNESS
The third requirement for a patentable invention is that the invention be "inventive" or "non-obvious". Obviousness is not the same as anticipation. Anticipation is when it can be said "your invention is clever, but its already been done." Obviousness is when it can be said "any fool could have done that."(1)
E.1 Introduction
Originally, the requirement that a patentable invention be "inventive" (or its counterpart: "non-obvious") was judge-created. Without it, anything "new" and "useful" would be patentable, even if it was merely a routine improvement. In the Crosley Radio case, the Supreme Court of Canada adopted the standard previously adopted by the House of Lords which required "a degree of ingenuity" to be present.(2)
But how do you define that "extra something"? It is not based on simplicity: some of the best inventions are simple.(3)
It has been difficult for the Court to express a test for "inventiveness". Sometimes it was defined as a quantum leap over the prior art, without quantifying the quantum. Inventiveness has been described as a "scintilla"(4), a "spark"(5) or an inventive step(6).
Some have differentiated on the basis of whether the concept is "proper subject matter", for example, combinations are patentable but aggregations are not:
Was the invention a new combination of steps or ideas, or simply a collocation of old ones?(7)
Other tests have focused on the mental process or the mind that creates the improvement. For example:
Did the invention lie so much out of track with what was known at the time that it would not have suggested itself to someone who turned their mind to the problem?(8)
Was this normal industrial trial and error or the result of an inventive experiment?(9)
Was it the creation of an inventive mind?(10)
The test that has been generally accepted for inventiveness or non-obviousness is a negatively phrased, convoluted hypothetical. It is the corollary of "Was it created by an inventive mind?", phrased in the negative. The "Cripps Question" (discussed in more detail below) is:
"Would a non-inventive mind have thought of it?"
If the answer is "No", then the invention is inventive or non-obvious and patentable.
Obviousness is a question of fact.(11) It used to be left to a jury to say whether the step is obvious and although one Court said it is not a matter for evidence or expert witnesses,(12) much effort and time is spent by experts on that question.
The principal test for obviousness is named after the English barrister who suggested it in the 1920's: Sir Stafford Cripps.
"The real question is: was it for all practical purposes obvious to any skilled chemist in the state of chemical knowledge existing at the date of the patent ... that he could manufacture valuable therapeutic agents by making the high alkyl resorcinols."(13)
In some respects, the test begs the question: What is meant by "obvious"? Some courts have described "obvious" as "very plain"(14) or something arrived at "directly and without difficulty".(15)
E.2.1 The notional skilled worker
The hypothetical non-inventor of the Cripps question is no ordinary person. He or she (the skilled worker on the Clapham omnibus of Patent Law)(22) has been deemed by the Courts to have certain skills and lack others, to have certain knowledge, and access to other knowledge.
The Court must first determine to whom the patent is addressed. The court must first examine and understand the prior art. Then they must ask, based on this, to whom would the invention be obvious?(16) Of course, it would be addressed to some skilled worker in the art of the patent.
It would not make sense to ask if the invention would have been obvious to an inventor, because they are, by definition, inventive.(17) Nor does it make sense to ask whether the invention would be obvious to the judge today.(18)
The Court, in considering the issue of obviousness, should place itself in the position of the notional technician, skilled in the art, who might have been trying to solve the problem prior to the alleged invention.(19)
This hypothetical skilled person should:
- be ordinary(20)
- lack imagination(21), inventiveness or intuition(22)
- have no benefit of foresight and no assurance of success(23) He has merely a sense of what possibilities may hold better potential for yielding results.(24)
Mr. Justice Hugessen summarized this person's characteristics most poetically in the Beloit case:
"The classical touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right. The question to be asked is whether this mythical creature (the man in the Clapman omnibus of patent law) would, in the light of the state of the art and common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent. It is a very difficult test to satisfy."(25)
E.2.2 having common general knowledge and the prior art
The notional skilled worker is deemed to have certain information available:
A. "common general knowledge" - the normal skill and knowledge that workers in the field or fields of the patent ought to know based on their general training and experience.(26)
B. "public knowledge" - publicly available information that may not be generally known but which could be found by the public.
This information is plugged into the question: Does the information that was available to the inventor at the time make the invention obvious in the circumstances?(27)
When dealing with obviousness, it is permissible to "mosaic" the prior art, that is, to combine prior art references to create the invention. For example, where A and B are prior art:
A + B = the invention
Caution must be exercised by someone attacking a patent to limit the number of prior art references that need to be combined: the more that are necessary, the less obvious and less direct the path to the invention.
The uninventive skilled technician is supposed to be able to assimilate the contents of scores of specifications,(28) however the Court can question the ease with which the references would be found or how relative importance would be applied to them. (See "accessibility", below).
Although mosaicing is permitted, it is not always persuasive, particularly
where features of the invention can be found in the prior art, but never in one
place nor combined in a way suitable for the invention.(29)
the knowledge the worker possesses
The notional skilled worker is considered to possess the "common general knowledge". It is by the standards of the common general knowledge of someone skilled in the art that one tests whether the invention was obvious or not.(30)
What does the literature teach about attempts to try the invention before or to use the patented method towards the intended solution? If there is no evidence that anyone had tried this before, then there is no evidence that there is common general knowledge which would have made the invention obvious to the relevant worker.(31)
The skilled worker is not to be considered to have knowledge of every publication affecting the relevant branch of industry or art simultaneously in his or her mind. The person skilled in the art should be presumed to know what a real person competently skilled would know without burdening him with constructive notice of other things.(32)
Common general knowledge can include, among other things, patent specifications and widely read publications. Patent specifications generally are not common knowledge unless they are unusually well-known in the relevant industry.(33)
For something to be common general knowledge, it is not enough that it appear in a scientific journal, be widely circulated, or even be widely read by the relevant community. It must also be generally regarded as a good basis for further action.(34)
The state of common general knowledge at the relevant time is a question of fact based on evidence. The burden of adducing this evidence is upon the party attacking the patent.(35)
The notional skilled workman may also possess "public knowledge": all publications that would have been available to the public at the time of the invention. This "universal library" is a two-edged sword: damaging prior art combined with the "common general knowledge" can destroy the inventiveness of an invention, even if the inventor never has access to the specific prior art. At the same time, the Courts can view with skepticism the likelihood that the notional skilled worker would find and apply the specific prior art reference out of the mountain of information available.
can't focus on selected prior art in isolation
The prior art will contain the chaff as well as the relevant art.
One cannot assess obviousness in light of only a selected group of publications rather than the whole of the relevant prior art. The entire prior art may suggest a different result that would the carefully selected prior art having the invention in mind.(36)
A defendant attacking a patent will try to limit the prior art to a few publications. A plaintiff defending a patent should point to other (equally accessible) prior art which teaches the reader away from the direction taken by the invention and to all other information dredged up by the defendant in efforts to find the selected prior art.
In the case of "public knowledge", weight can be given to it according to its accessibility and the efforts expended to find it. The notional worker is expected to have access to information available as the result of reasonably prudent searches of public archives.(37)
It seems bizarre that the notional skilled worker would have available every publicly available document, however old, in whatever language, and wherever located. It seems a contradiction to assume that a discarded scrap of paper buried in some archive should render an invention obvious.(38) It is somewhat artificial to assume that each patent specification for the last 50 years resting on a dusty patent office shelf in any country is part of the relevant public knowledge.(39) Nevertheless, that is the test.
The test is based on what was available to the unimaginative skilled technician at the time. If prior activities were not publicly available, such as experiments performed by individuals that were not made public, they would not form part of the knowledge of the competent addressee.(40)
The search would be like those done by research groups employed by large-scale concerns. The extent of the appropriate search is a question of fact in each case.(41)
paper patents are viewed with skepticism
The disclosure must be known and accepted generally by those who are engaged in the art to which the disclosure relates.(42) They should have been a "good basis for further action".(43)
It cannot be assumed that, in looking for references in the prior art, the notional skilled technician would go outside the art at issue to consider art in other fields.(44)
When assessing an attack based on obviousness, the Court is entitled to consider the absence of testimony on:
all the relevant prior art, whether it pointed to or away from the impugned invention;
the field of prior art researched and explored;
the ease or difficulty experienced or encountered in unearthing the prior art;
the time and resources expended in the search;
the particular researchers into the prior art and their skill;
how readily available or otherwise the piece or pieces of prior art would have been to the notional skilled worker.(45)
E.2.3 at the date of invention
Under the "first to invent" system, the relevant date for obviousness was the "date of invention". Under the "first to file" system, the relevant date is the "claim date" (essentially, the priority filing date).
The knowledge of the notional skilled technician with the characteristics noted above is to be assessed as of the date of the invention. Art arising after the date of invention is not relevant.(46) It is the art predating the patent that is relevant.(47)
In 1993, the Patent Act was amended to introduce the concept of a "claim date" which was the earlier of the actual filing date in Canada or the filing date of a previously regularly filed application (such as the priority date).
Section 28.2(1)(b) provides that the subject matter of a claim must not have been disclosed before the claim date by a third party in such a manner that the subject-matter became available to the public in Canada or elsewhere.
E.2.4 led directly and without difficulty to the solution
In order to be obvious, the route to the invention must be a flagstone path, plainly perceptible in either the dark or the light.(48) One should be led to the invention directly and without difficulty.(20)(22)
If a thing is obvious, you can go straight to it. If the expectation of success is sufficiently predictable, and the effort involved is not very great, it may well not be patentable. Where the expectation of ultimate success is doubtful and the effort is great, there is an invention.(49)
The prior art should not bias the notional worker away from exploring the chances of using the patented solution. If selected pieces of prior art lead to the invention, but the common general knowledge bias one away from the invention, then the invention is not obvious.(50)
Just because a solution is "worth a try" does not make it obvious.(51) The unimaginative skilled technician would be expected to try out all obvious modifications or combinations of the methods which seemed to him worth trying.(52)
Once the kernel of the invention is conceived, how much experimentation is permissible for the invention to still be obvious? The authorities seem to be somewhat divided: some experimentation is permitted so long as it does not rise to the level of "inventive" experiments. The General Tire(53) case implies that "run of the mill type of trial and error" experiments are permitted and will still render an invention obvious whereas the J.R. Short Milling(54) case states that in order for something to be obvious, it must occur to the notional skilled worker directly, without having to do any experimenting or research, whether the research be in the laboratory or amongst the literature.(55)
The best question to ask in cross-examination of an expert witness who has stated that the invention would have been obvious, is: "If it was so obvious, then why didn't you think of it?".(71)
Where there was a long felt need and the invention met with commercial success and acceptance, it is difficult to argue that it was not an invention. If it was so obvious and others were seeking to solve the same problem, why was it not done earlier by someone else? Where something has become successful, so as to replace the item or method employed before, it is difficult to argue that it was obvious.(56) For a contrary view to the need for a long felt want, see the Quantel case.(57)
Marketplace success is not conclusive proof of ingenuity, for it may have been due to marketing or sales ingenuity rather than inventive ingenuity. Nevertheless, it is compelling evidence.(58) At the very least, commercial success shows practical utility.(59)
Commercial success around the world is relevant(60) and if the defendant's device or process is infringing, then its commercial success is relevant as well. Even if the issues of profits or damages have been severed from the trial issues of liability by, for example a Federal Court Rule 480 order, one can learn of the defendant's sales and gain an idea of the potential damages or profits available on discovery on the issues of liability.
The conclusion that a product was a commercial success may be reasonably drawn from facts in evidence which tend to show that:
1. The product had good sales.(61)
2. The product was widely adopted.(62)
E.4.1 dissection of combinations
It is not proper to dissect the combination into its parts and ask whether the use of each of the constituent elements was obvious. The invention claimed is the combination. Normally, it is the combination that is the inventive concept. Once that is created, the fact the constituent elements were obvious in suggesting themselves to the inventor cannot invalidate the patent.(63)
Where the invention lies in a particular combination, it is not permissible to "mosaic in the matter of inventiveness", a dissection of constituent elements is not the proper approach.(64) A invention can be created, that when dissected, may consist of individual items all of which formed part of the public knowledge.(65)
The individual stages of conversion of one device to the other may, disaggregated, appear obvious, but is must be remembered that it is the whole leap that is to be judged.(66)
E.4.2 ex post facto - 20/20 hindsight
Nothing is so easy as to say after the fact that the thing was obvious and required no invention.(67) 20-20 hindsight is a common commodity.(68)
It is somewhat unfair to fasten upon one or two of a large number of prior art documents, from which it is said the invention can be easily found, when you know exactly what you are looking for.(69)
Ex post facto analysis of an invention is not sound.(70) This is particularly so where an expert in the field has been hired for the purpose of testifying. In that case, infallible hindsight is particularly suspect. Every invention is obvious after the fact, and to no one more so than to an expert in the field. Before weight can be given to an experts assertion that, "I could have done that", the question, "why didn't you?" must be satisfactorily answered.(71)
E.5 Evidence and expert witnesses
For a plaintiff trying to disprove obviousness (support inventiveness) the most convincing expert witness is not the notional worker who did not think of it but rather the inventive expert who did not think of it.(72) If it was not obvious to the expert, it would not have been obvious to a mere unimaginative but skilled technician in the art.
Experts help the Court understand what would have been available to the notional worker and what would have been obvious to that worker. However, the issue of obviousness is a decision for the court, and it cannot abdicate this responsibility to the witnesses. A witness cannot merely instruct the court as to whether the invention is obvious or not.(74)
The issue is not whether it would be obvious to the witness, particularly if the witness is an expert in the area. After all, the test is what would have been obvious to a skilled addressee and not necessarily an expert with multiple patents of their own.(75)
Mr. Justice Muldoon of the Federal Court of Canada has expressed his frustration as a lay judge having to determine technical issues between debating experts.(76) However his complaint is based on the supposition that there is a "scientific verity" or absolute truth, and therefore one expert who disagrees with another must not be telling the truth and the matter resolves itself to one of credibility. In fact, there is no such thing as a "scientific verity". There are only models or explanations of varying utility. When a model is useful, it is used; when it breaks down it is discarded and a better model is used. Most issues in patent cases revolve around the meaning of the terms in the patent rather than on what is happening with the technology - "pure technical issues" are quite rare. Compare Mr. Justice Muldoon's analysis with the approach of Madam Justice Barbara Reed:
"In my view the best expert witnesses are good teachers. They are able to explain their opinion, and why they hold it in simple terms to somebody who has no expertise in the area.
I operate from the assumption that it doesn't matter how complex a matter may be, it can be made simple enough that I can understand it. It can be explained in terms without using jargon. If that doesn't happen, I jump to the conclusion that the side that is putting forward the inarticulate expert is trying to snow me and doesn't have a good case."(77)
E.6 Foreign decisions are decided on different evidence
Different outcomes as to the obviousness of a patent can occur in different countries. A decision in another country is persuasive evidence, but certainly not binding on a Canadian Court.(78)
1. Beloit Canada Ltd. v. Valmet OY (1986), 8 C.P.R. (3d) 289 (F.C.A. per Hugessen, J.A.) at p. 293.
2. Crosley Radio Corp. v. Canadian General Electric Co., [1936] S.C.R. 551 (S.C.C. per Rinfret J.) at p. 555-556.
3. Electrolier Manufacturing Company Ltd. v. Dominion Manufacturers Limited [1934] S.C.R. 436 (per Rinfret, J.) at p. 441.
4. Samuel Parkes & Co. Ltd. v. Crocker Bros. Ltd. (1929) 46 R.P.C. 248 (per Tomlin J.) at p. 248.
5. Martinray Industries v. Les Fabricants National Dagendor (1991), 41 C.P.R. (3d) 1 (F.C.T.D.) at p. 30.
6. Canadian Gypsum Co. Ltd. v. Gypsum, Lime & Alabastine Canada Ltd. [1931] Ex. C.R. 180 (Ex. Ct. per Maclean J.) at p. 187.
7. General Tire & Rubber Co. v. Firestone Tyre & Rubber Co., Ltd. [1972] R.P.C. 457 at pp. 497-498.
8. Savage v. Harris & Sons (1896) 13 R.P.C. 364 (per Lopes, L.J.) at p. 370.
9. General Tire & Rubber Co. v. Firestone Tyre & Rubber Co., Ltd. [1972] R.P.C. 457 at pp. 497-498.
10. Canadian Gypsum Co. Ltd. v. Gypsum, Lime & Alabastine Canada Ltd. [1931] Ex. C.R. 180 (Ex. Ct. per Maclean J.) at p. 187.
11. General Tire & Rubber Co. v. Firestone Tyre & Rubber Co., Ltd. [1972] R.P.C. 457 at pp. 504.
12. Technograph Printed Circuits Ltd. v. Mills & Rockley (Electronics) Ltd. [1969] R.P.C. 395 (C.A. per Harman, L.J.) at pp. 404-405.
13. Sharp and Dohme Inc. v. Boots Pure Drug Co. Ltd. (1928) 45 R.P.C. 153 at p. 173.
14. General Tire & Rubber Co. v. Firestone Tyre & Rubber Co., Ltd. [1972] R.P.C. 457 at pp. 497-498.
15. Xerox of Canada Ltd. et al v. IBM Canada Ltd., (1977), 33 C.P.R. (2d) 24 (F.C.T.D. per Collier J.) at p. 53.
16. Rado v. Tye [1969] F.S.R. 563 (Lord Upjohn) at p. 565-6.
17. Beloit Canada Ltd. v. Valmet Oy (1986), 8 C.P.R. (3d) 289 (F.C.A. per Hugessen J.A.) at 294.
18. Eli Lilly & Co. v. Marzone Chemicals Ltd. (1977) 37 C.P.R. (2d) 3 (F.C.T.D. per Gibson J.) at pp. 32-33; aff'd 37 C.P.R. (2d) 37 (F.C.A.).
19. Eli Lilly & Co. v. Marzone Chemicals Ltd. (1977) 37 C.P.R. (2d) 3 (F.C.T.D. per Gibson J.) at pp. 32-33; aff'd 37 C.P.R. (2d) 37 (F.C.A.).
20. Xerox of Canada Ltd. et al v. IBM Canada Ltd.(1977) 33 C.P.R. (2d) 24 (per Collier, J.) at p. 53.
21. Beecham Canada Ltd. v. Procter & Gamble Co. (1982), 61 C.P.R. (2d) 1 (F.C.A. per Urie J.A.) at 27.
22. Beloit Canada Ltd. v. Valmet Oy (1986), 8 C.P.R. (3d) 289 (F.C.A. per Hugessen J.A.) at 294.
23. Eli Lilly & Co. v. Marzone Chemicals Ltd. (1977) 37 C.P.R. (2d) 3 (F.C.T.D. per Gibson J.) at pp. 32-33; aff'd 37 C.P.R. (2d) 37 (F.C.A.).
24. Eli Lilly & Co. v. Marzone Chemicals Ltd. (1977) 37 C.P.R. (2d) 3 (F.C.T.D. per Gibson J.) at pp. 32-33; aff'd 37 C.P.R. (2d) 37 (F.C.A.).
25. Beloit Canada Ltd. v. Valmet Oy (1986), 8 C.P.R. (3d) 289 (F.C.A. per Hugessen J.A.) at p. 294
26. The General Tire & Rubber Company v. The Firestone Type and Rubber Company Limited and Others [1972] R.P.C. 457 at pp. 499-500.
27. Sakharam D. Mahurkar v. Vas-cath of Canada Limited et al (1988) 18 C.P.R. (3d) 417 (F.C.T.D. per Strayer J.) at p. 432.
28. Technograph Printed Circuits Ltd. v. Mills & Rockley (Electronics) Ltd. [1972] R.P.C. 346 (per Lord Reid) at p. 355.
29. Sakharam D. Mahurkar v. Vas-cath of Canada Limited et al (1988) 18 C.P.R. (3d) 417 (F.C.T.D. per Strayer J.) at p. 435.
30. General Tire & Rubber Co. v. Firestone Tyre & Rubber Co., Ltd. [1972] R.P.C. 457 at pp. 481-482.
31. Technograph Printed Circuits Ltd. v. Mills & Rockley (Electronics) Ltd. [1969] R.P.C. 395 (per Sachs, L.J.) at pp. 407-408.
32. General Tire & Rubber Co. v. Firestone Tyre & Rubber Co., Ltd. [1972] R.P.C. 457 at pp. 499-500.
33. General Tire & Rubber Company v. Firestone Tyre & Rubber Company Limited [1971] F.S.R. at pp. 439-440.
34. The General Tire & Rubber Company v. The Firestone Type and Rubber Company Limited and Others [1972] R.P.C. 457 at pp. 482-483.
35. The General Tire & Rubber Company v. The Firestone Type and Rubber Company Limited and Others [1972] R.P.C. 457 at p. 484.
36. General Tire & Rubber Company v. Firestone Tyre & Rubber Company Limited and Others [1971] R.P.C. 173 (per Graham, J.) at pp. 245-246.
37. Technograph Printed Circuits Ltd. v. Mills & Rockley (Electronics) Ltd. [1969] R.P.C. 395 (per Sachs, L.J.) at p. 355, 408.
38. Technograph Printed Circuits Ltd. v. Mills & Rockley (Electronics) Ltd. [1969] R.P.C. 395 (per Sachs, L.J.) at p. 355, 408.
39. The General Tire & Rubber Company v. The Firestone Tyre and Rubber Company Limited and Others [1972] R.P.C. 457 at p. 482.
40. Beecham Canada Ltd. et al v. Procter & Gamble Co. (1982) 61 C.P.R. (2d) 7 at p. 27.
41. The General Tire & Rubber Company v. The Firestone Tyre and Rubber Company Limited and Others [1972] R.P.C. 457 at p. 463.
42. British Acoustic Films 53 R.P.C. 221 at p. 250 quoted in General Tire & Rubber Co. v. Firestone Tyre & Rubber Co., Ltd. [1972] R.P.C. 457 at pp. 482-483.
43. General Tire & Rubber Co. v. Firestone Tyre & Rubber Co., Ltd. [1972] R.P.C. 457 at pp. 482-483.
44. Eli Lilly & Co. v. Marzone Chemicals Ltd. (1977) 37 C.P.R. (2d) 3 per Gibson J. at 34-35 (F.C.T.D.), aff'd 32 C.P.R. (2d) 37 (F.C.A.).
45. Xerox of Canada Ltd. v. IBM Canada Ltd. (1977), 33 C.P.R. (2d) 24 (F.C.T.D. per Collier J.) at pp. 61-62.
46. Xerox of Canada Ltd. v. IBM Canada Ltd. (1977), 33 C.P.R. (2d) 24 at p.86
47. Imperial Chemical Industries, Ltd. (Haggis') Application [1975] R.P.C. 403 at pp. 415-416.
48. Xerox of Canada Ltd. v. IBM Canada Ltd. (1977), 33 C.P.R. (2d) 24 at p. 62
49. Xerox of Canada Ltd. et al v. IBM Canada Ltd. (1977) 33 C.P.R. (2d) 24 (per Collier, J.) at p. 54.
50. General Tire & Rubber Co. v. Firestone Tyre & Rubber Co., Ltd. [1972] R.P.C. 457 at pp. 505-506.
51. Farbewerke Hoechst A.G. v. Halocarbon (Ontario) Ltd. (1979) 42 C.P.R. (2d) 145 (S.C.C. per Pigeon J.) at p. 155.
52. Technograph Printed Circuits Ltd. v. Mills & Rockley (Electronics) Ltd. [1972] R.P.C. 346 (per Lord Reid) at p. 355.
53. General Tire & Rubber Co. v. Firestone Tyre & Rubber Co., Ltd. [1972] R.P.C. 457 at pp. 504.
54. J.R. Short Milling Co. Ltd. v. Geo. Weston Bread & Cakes Ltd. [1940] 4 D.L.R. 579 (Maclean, J.) at p. 598.
55. J.R. Short Milling Co. Ltd. v. Geo. Weston Bread & Cakes Ltd. [1940] 4 D.L.R. 579 (per Maclean, J.) at p. 598.
56. Technograph Printed Circuits Ltd. v. Mills & Rockley (Electronics) Ltd. [1969] R.P.C. 395 (per Harman, L.J.) at p. 404.
Mahurkar v. Vas-Cath of Canada Ltd. (1988), 18 C.P.R. (3d) 417 (F.C.T.D. per Strayer J.) at p. 436.
57. Quantel Ltd. v. Spaceward Microsystems Ltd. [1990] R.P.C. 83 (Patents Court per Falconer J.) at p. 137, l. 50-52.
58. The King v. Uhlemann Optical Co. (1949) 10 Fox's Pat. C. 24 per Thorson P. at 44 and 46.
59. Cutter (Canada) Ltd. v. Baxter Travenol Laboratories of Canada Ltd. et al (1983) 68 C.P.R. (2d) 179 at p.191.
60. Kramer et al v. Lawn Furniture Inc. (1974) 13 C.P.R. (2d) 231 (F.C.T.D. per Addy, J.) at p. 237. **add 237 quote to case
61. Eli Lilly & Co. v. Marzone Chemicals Ltd. (1977), 37 C.P.R. (2d) 3 (F.C.T.D per Gibson J.) at p. 21 and 36.
62. Beloit Canada Ltd. v. Valmet Oy, (1986) 8 C.P.R. (3d) 289 (F.C.A. per Hugessen J.A.) at 296.
63. Albert Wood and Amcolite v. Gowshell, Ltd. (1937), 54 R.P.C. 37 at p. 40.
64. Omark Industries (1960) Ltd. v. Gouger Saw Chain (1964), 45 C.P.R. 169 (Ex.Ct. per Noel J.) at 218, 219.
65. General Tire & Rubber Co. v. Firestone Tyre & Rubber Co., Ltd. [1972] R.P.C. 457 at p. 504.
66. Van Der Lely (c.) N.V. v. Bamfords Ld. [1960] 7 R.P.C. 169 (High Ct. Chancery per Lloyd-Jacob J.) at p. 19
67. Reading & Bates Construction Co. v. Gaz InterCite Quebec Inc., (1988) 18 C.P.R. (3d) 180 (F.C.A.) per Stone J.A. at 188.
68. Eli Lilly and Co. et al v. Marzone Chemicals Ltd. et al (1977) 37 C.P.R. (2d) 3 (F.C.T.D., per Gibson, J.) at pp. 33-34.
69. Keller and Richter's Patents [1975] R.P.C. 75 at pp. 90-91.
70. The King v. Uhleman Optical Company (1949) 10 Fox P.C. 24 (Ex.Ct. per Thorson, P.) at p. 43.
71. Beloit v. Valmet Oy (1986) 8 C.P.R. (3d) 289 (F.C.A. per Hugessen J.A.) at p. 295.
72. See, for example, Dr. Beal, the inventor's thesis supervisor in Control Data Canada Ltd. v. Senstar Corp., (1989), 23 C.P.R. (3d) 449 (F.C.T.D. per Cullen J.) at pp. 464-465.
73. Mahurkar v. Vas-Cath of Canada Ltd. (1988), 18 C.P.R. (3d) 417 (F.C.T.D. per Strayer J.) at p. 432-433.
74. General Tire & Rubber Co. v. Firestone Tyre & Rubber Co., Ltd. [1972] R.P.C. 457 at pp.497-498.
75. General Tire & Rubber Co. v. Firestone Tyre & Rubber Co., Ltd. [1972] R.P.C. 457 at pp. 504.
76. Unilever PLC et al v. Procter & Gamble Inc. et al (1993), 47 C.P.R. (3d) 479 (F.C.T.D. per Muldoon J.) at p. 488-9.
77. "Preparing to be an Expert Witness"; Canada Law Book video; 1996.
78. Johnson Controls, Inc. v. Varta Batteries Ltd. (1984) 80 C.P.R. (2d) 15 at pp. 16-17.
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