Case Comment
© 1997-2004 Donald M. Cameron,
Ogilvy Renaultcitation(s): [1934] S.C.R. 570
Case Comment
© 1997-2004 Donald M. Cameron,
Ogilvy Renault
The action related to the infringement of one claim:
2. The combination with a plurality of thermionic repeaters connected in tandem, the first repeater of the series having a high-voltage output and the last repeater having a high-current output.
The inventor, Arnold, produced a memo for his superior officer, Colpitts. The memo related to the use of audions as amplifiers in circuits without transformers [p. 574]. The memo goes on to describe circuit arrangements "...such that a combination of audions can operate without the use of transformer ..." [p. 576]
The specification stated something similar:
"“It has been discovered that a combination of one or more of the aforementioned high-voltage output type of audions working into one of the high-current output type, will operate, without transformers, from a line of low impedance, for example, 250 ohms, into a like line with a resultant current much greater, fifty or more times greater, that would flow in the second circuit if it were directly connected to the first circuit. The present invention is directed to such combination of two different types of repeaters, preferably audions.” [p. 576]
An issue in the case was whether "... the absence of transformers is a characteristic and essential feature of the invention disclosed by the specification." [p. 577]
The memo reinforces what was stated in the patent: that Arnold meant to exclude transformers from the circuits:
The second construction issue related to the meaning of the phrase:
"The first repeater of the series having a high-voltage output and the last repeater of the series having a high-current output." [p. 580]
Arnold's memo referred to the fist as type "A" and the second as type "B":
"in the specification, where the description in the memorandum is virtually repeated, the denominations are changed. Type "A" becomes the "high-voltage output audion" and type "B" the "high-current output audion".
The terms "high-voltage output" and "high current output" were not terms of art:
“High-voltage output” and “high-current output” as applied to audions or thermionic repeaters do not appear, so far as the evidence discloses, to have been terms of art prior to Arnold’s invention. No witness says they were, and Arnold’s memorandum rather suggests that they were not, as we have seen." [at p. 580]
The Court found that The Defendant's Baldwin device was not an infringement:
I also agree with the view expressed by him [the trial judge] upon what is also a mixed question of fact and law, as I have already intimated, that neither the individual audions which constitute Baldwin's second repeater, nor the repeater as a whole, can be brought within the definition derived from Arnold's specification of high current output audion." [p. 591-592]
"I should add also that not only is the construction of the specification exclusively within the province of the court - but also it is for the court a question of law."
At p. 573-574::
"This is a case in which the specification, read as a whole, sheds a peculiarly revealing light upon the meaning of this claim. Moreover, we have the assistance of another document - a contemporary document - which, in view of the manner in which it was dealt with in the court below may properly be looked at for some purposes which will appear as I proceed.
It is necessary, however, I think, perhaps, to speak a word of caution with regard to such evidence. The duty of the inventor to disclose with certainty the nature of the invention for which he claims protection is a duty owing to the public, as Lord Halsbury observes, and that duty arises out of important public considerations. The protection afforded him by the grant is strictly limited to the invention disclosed and specified. He cannot enlarge his monopoly beyond that which he has specified, or that for which he has claimed protection (in such a manner as to make it clear to those to whom the document is addressed) by reference to supposed intention gathered from some contemporary document which is not part of the specification and has never been made known to the public. Such a document may establish or support a contention that the true nature of the invention has not been disclosed, or that the best manner known to the inventor of performing it has not been made known; and such matters may redound to the disadvantage of the patentee because it is a double condition of his right to a grant that he has invented a new manufacture and that he has disclosed completely his invention. But the rule limiting his monopoly right to what is clearly disclosed by the specification is a rule of substantive law, which it is the duty of the court, in the public interest, to enforce, and the application of it is quite independent of any question as to the admissibility in evidence of any particular document for some other purpose."
"And 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 actually in good faith invented, the court, as a rule, will endeavour to give effect to that construction."
"To revert to the definition of the combination to which, as the specification says, “the invention is directed,” it would be difficult to find any construction, consistent with the grammatical sense of the words, that would exclude the absence of transformers from the essential features of the combination in respect of which protection is claimed. First of all, he defines the “high-voltage output audion”; and an element of that definition is that “without the use of transformers” it will perform certain operations on the input current.
Then, there is a definition of the “high-current output audion” which does not explicitly make the absence of transformers an essential element, but which, as already indicated, appears very clearly to do so when it is read with the specification as a whole properly construed.
Then, after mentioning that the patentee has applied for patents in respect of these types of audions, he proceeds to describe the combination, and the combination, which is the invention for which he desires protection, is of
"one or more of the aforementioned high-voltage output type of audions”
(a type which, by definition, is of such a construction that it performs the function assigned to it in this circuit arrangement without the use of transformers) with one of the high-current output type.
This combination, he says in explicit terms will “operate without transformers”; and it is “such a combination” to which, he says, the “present invention is directed.”
This conception of the absence of transformers as characteristic and essential in the invention, essential, that it to say, for the purpose of efficiently securing the desiderata at which the inventor is aiming, indeed, pervades the whole specification as well as the whole memorandum addressed to Colpitts.
The specification is illustrated by figures and there is not in any one of these figures a suggestion of a transformer.
In finally summing up the advantages of his invention, he emphasizes the various fields, indicated in the memorandum and in the beginning of the specification, in which the invention is hoped to prove of the greatest service. All these fields are fields in which, he declares, more than once, it is desirable to exclude transformers; and, I think the fair conclusion from his memorandum is that by that he means it is necessary in these fields to exclude them in order to secure efficient, if not, indeed, “appreciable” amplification.
My conclusion is that the learned trial judge was right in holding that it is an essential feature of the invention, for which the specification claims protection, that it should be capable of efficient operation for the purpose of amplification in currents of low impedance and in the fields to which he draws special attention, without the use of transformers. Indeed, the inventor has not left us in doubt as to his own view of the relation between the absence of transformers and the efficiency of the circuit arrangements which he has designed. After describing the two types of audion and describing the discovery of the combination of the two types and its happy effects in amplification between lines of low impedance, and emphasizing the transcendent importance of this discovery for submarine cable circuits, he proceeds to say,
“An essential part of the system of amplification is the circuit whereby the several elements are interconnected without the use of transformers”.
The significance of this statement is brought into relief by the fact that, so far as I have been able to observe, this paragraph and the preceding paragraph in his memorandum are the only places where he makes any explicit statement as to what he regards as the essential parts of his system. In the preceding part of this paragraph he says,
“It must be admitted that the “B” type is not an essential to this scheme of operation but it is, however, necessary that audions of the “A” type must be used at the input.”
And then follows the sentence I have just quoted in which he declares that the exclusion of transformers is an essential part of the system."
"The specification seems to indicate that, as regards the high-voltage output audion, what Arnold has done is to give “audions of the usual type” a form of construction which provides certain effects that are essential to the operation of his circuit arrangements; while, as to the “high-current output audion,” he speaks of it in the specification as a “new type of audion”. As already mentioned, it apparently was patented in January, 1915.
In the specification, he says, referring to the “high-voltage output audion”,
‘this type of audion will, for convenience, be hereinafter referred to as the high-voltage output audion'.
Referring to the high-current output type, he says,
“This new type of audion will, for convenience, hereinafter referred to as the high-voltage output audion”.
The natural conclusion from all this is, that Arnold conceives himself to be assigning a denomination to a new type of audion designed by him for certain purposes, and a denomination to sa special construction of the usual type of audion designed by him for special p urposes; and that these denominations are assigned for the purposes of the exposition of his invention in the specification. The particular type is to be “hereinafter referred to” under its appropriate denomination.
As we proceed through the specification, at the very outset, we are met with a sentence in which he defines the combination to which, he says, the “invention is directed”, as
‘one or more of the aforementioned type of audions working into one of the high-current output type.’”
At p. 582:
"I do not believe that any member of the class of people to whom this specification is addressed could have much doubt that the specification is employing these phrases in the sense defined by the specification itself. As I have already said, there is no evidence that they were terms of art having a generally understood signification in the art at the date of the patent, and even if there had been such evidence, I should have regarded it as quite immaterial, because the inventor has made it plain that he is not using these phrases in any sense caught from the air, or from some general usage, but with a precise signification which he has defined in his specification."
At p. 586:
"Infringement is a mixed question of law and fact. First of all, it involves the construction of the specification and, if there is any dispute about that, the issue, let me repeat, is an issue of law for the Court."
"The essential fallacy of the argument seem to lie in the assumption that the phrase “high-current output audion” is to be construed by witnesses, and that the tribunal charged with interpreting the specification is bound to accept the opinions of witnesses as to the effect of these words.
I have already fully discussed this point of construction, and I will now repeat that the question of the meaning of these terms in the specification, and the construction of the claim with reference to these terms, is a matter exclusively within the province of the court; and the learned trial judge would have fallen into grave error if he had accepted, as binding upon him, the evidence of witnesses with reference to that matter as the appellants contend he ought to have done."
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