Thomas BaileyOyen Wiggs Green & Mutala LLP

Phone: 604 669 3432E-mail: tbailey@patentable.com

http//www.patentable.com

Patents – Lecture 4

Course Materials

• Handouts– PowerPoint Slides– http://www.patentable.com/lectures/

Lecture Outline

1. Novelty - test for anticipation

2. Obviousness

3. Utility

4. Patent Specifications

Lecture Outline

5. Ownership

6. Infringement

Baker Petrolite case(Casebook , pp. 125 - 135)

• This case deals with anticipation by prior use or sale• There is very little jurisprudence interpreting Section

28.2(1)(a) of the Patent Act• The Federal Court of Appeal held that an “enabling”

disclosure is required• If a product is made available without restriction to even

one member of the public, and if a person skilled in the art would be able to discover the claimed invention without the use of inventive skill (such as by reverse engineering the product), then the invention may be found to be anticipated

Baker Petrolite case(Casebook , pp. 125 - 135)

• The amount of time and work involved in conducting the reverse engineering analysis is not determinative of whether a skilled person could discover the invention

• In this case the Court held that a person skilled in the art and using data and techniques available at the relevant time, and without the exercise of inventive skill, would have been led inevitably to the subject matter of the patent claims, namely the extraction of hydrogen sulphide from natural gas by contact with triazine (or its starting components)

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Concealed Use

• Some “black box” inventions are concealed or undetectable in normal use

• Query whether the sale of such inventions makes them “available to the public” within the meaning of Section 28.2(1)

• Canadian law now clearly requires an “enabling disclosure”, namely a disclosure by which information sufficient to enable a person skilled in the art to practice the invention has been “made available to the public”

Obviousness

“[The issue of obviousness] is as fugitive, impalpable, wayward, and vague a phantom as exists in the whole paraphernalia of legal concepts.”

Judge Learned Hand,

Harries v. Air King Products Co. (1950) 183 F.2d 158, 162, CA2, N.Y.

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139

Ernest Scragg case(Casebook , pp. 140 - 142)

• The courts apply an objective test - whether the alleged invention would have been obvious to a person of ordinary skill in the art

• A “mere scintilla” or slightest trace of an inventiveness is sufficient

• Workshop improvements are not patentable• “Hindsight analysis” should be avoided - many

important inventions may seem obvious once the solution to a particular problem has been shown

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CANADIAN PATENT

Henry H. Schweitzer, Pacific Palisades, California, U.S.A.and James R. Drake, Santa Monica, California, U.S.A.

No. OF CLAIMS 10

54 WIND-PROPELLED APPARATUS

ISSUED Oct. 24, 197245

52 CLASS 114-12C.R. CL.

CA No. 91292111

21 APPLICATION No. 061,852

30 PRIORITY DATE

22 FILED Sep. 12, 1969

• All of the component elements of the invention were known in the prior art

• The Plaintiff obtained a patent on the basis that the invention was a new and inventive combination

• The trial court held that the invention was obvious in view of a Darby sailboard which was described in a 1965 article in Popular Science magazine

• The Darby sailboard included a mast which could swivel in a socket, but it did not include a Marconi rig (i.e. a triangular sail) or a wishbone boom

Windsurfing case(Casebook , pp. 142 - 151)

• The trial judgment was overturned on appeal• Urie J. held that the advantages of the Marconi rig were

not obvious to the inventor of the Darby sailboard who the court considered to be someone skilled in the art

• Urie J. also considered the commercial success of the invention (i.e. a “secondary consideration”)

• In the result, claims 5 and 10 of the patent were found to be valid

Windsurfing case(Casebook , pp. 142-151)

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150

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Claims

The embodiments of the invention in which an exclusive property or privilege is

claimed are defined as follows:

1. Wind-propelled apparatus comprising body means adapted to support a user and

wind-propulsion means pivotally associated with said body means and adapted to receive

wind for motive power for said apparatus, said propulsion means comprising a mast, a joint

for mounting said mast on said body means, a sail and means for extending said sail laterally

from said mast, the position of said propulsion means being controllable by said user, said

propulsion means being substantially free from pivotal restraint in the absence of said user,

said joint having a plurality of axes of rotation whereby said sail free falls along any of a

plurality of vertical planes upon release by said user.

2. The apparatus of Claim 1 wherein said propulsion means is adapted to be hand-

held by said user but is otherwise substantially free from pivotal restraint.

3. The apparatus of Claim 1 including means for said user to hold said sail.

4. The apparatus of Claim 1 wherein said sail extending means comprises a boom

laterally disposed on said mast to hold said sail taut and adapted to provide a hand-hold for

said user.

5. The apparatus of Claim 1 including means adapted to enable said user to grasp

either side of said sail.

6. The apparatus of Claim 1 adapted as a watercraft.

7. The apparatus of Claim 6 including water stabilizing means associated with said

body means.

7

5

10

15

20

25

30

1. Wind-propelled apparatus comprising body means adapted to support a user and

wind-propulsion means pivotally associated with said body means and adapted to receive

wind for motive power for said apparatus, said propulsion means comprising a mast, a joint

for mounting said mast on said body means, a sail and means for extending said sail laterally

from said mast, the position of said propulsion means being controllable by said user, said

propulsion means being substantially free from pivotal restraint in the absence of said user,

said joint having a plurality of axes of rotation whereby said sail free falls along any of a

plurality of vertical planes upon release by said user.

7

5

10

5. The apparatus of claim 1 including means adapted to enable said user to grasp either side of said sail.

10. The apparatus of claim 4 wherein said boom comprises a pair of boom members arcuately connected athwart said mast and securing said sail there-between.

Sanofi case(Casebook , pp. 151-160)

• This case also deals with the test for obviousness• The Court adopted the four-step Windsurfing/Pozzoli

approach• An invention may be “obvious to try” if it is more or less

self-evident that what is being tried ought to work• However, a mere possibility of finding an invention is

not enough• It was not self-evident from the “875 patent or common

general knowledge that the selected isomer ought to work, i.e. that it would be more effective and less toxic

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Conor Medsystems v. Angiotech Pharmaceuticals

• University College London• Innovation Seminar - 23 November 2011 • Moot court before the Supreme Patent

Court (Justice Rothstein of the SCC)• http://www.ucl.ac.uk/laws/ibil/index.shtml?

events_past

• An invention is not useful if will not operate at all or, more broadly, if it will not do what the patent specification promises it will do

• In this case the applicant sought patent protection for a “death ray” which allegedly used a path of photo-ionized air produced by a laser beam as a channel for the transmission of a very high voltage

• The Federal Court of Appeal upheld the judgment of the Patent Appeal Board which refused the application on the basis that the invention was not useful since it was inoperable for the purpose for which it was designed

X v. Commissioner of Patents(Casebook , pp. 161 - 162)

161-162

162

Apotex v. Wellcome Foundation (Casebook , pp. 163 - 178)

• This case deals with the “doctrine of sound prediction”• AZT was a known compound which had been

synthesized and tested in the 1960s as a possible anti-cancer agent

• In 1984 the respondents Glaxo/Wellcome began to test AZT in mice as a drug candidate for treating retroviral infections such as HIV

• On March 16, 1985 Glaxo/Wellcome filed its initial patent application although scientific tests had not yet been completed

Apotex v. Wellcome Foundation (Casebook , pp. 163 - 178)

• Binnie J. held that when the 1985 patent application was filed Glaxo/Wellcome had sufficient information about AZT and its activity against HIV to make a sound prediction that AZT would be clinically useful in the the treatment and prophylaxis of HIV/AIDS in human beings

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BREADTH OF PATENT CLAIMS

• The inventor devised an improved concrete extruder during the course of his employment

• However, it was not part of the inventor’s employment duties to create new products and innovations

• According to the common law, if a person creates an invention as part of his or her employment duties, then ordinarily the employer is entitled to claim ownership of any resulting patent

• Otherwise, the ownership rights remain with the inventor (subject to the terms of any employment agreement or other contract)

Spiroll case(Casebook , pp. 181 - 184)

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42. Every patent granted under this Act shall containthe title or name of the invention, with a reference tothe specification, and shall, subject to this Act, grantto the patentee and the patentee's legal representativesfor the term of the patent, from the granting of thepatent, the exclusive right, privilege and liberty ofmaking, constructing and using the invention andselling it to others to be used, subject to adjudicationin respect thereof before any court of competentjurisdiction.

Infringement - Statutory Provisions

43. (2) After the patent is issued, it shall, in theabsence of any evidence to the contrary, be valid andavail the patentee and the legal representatives of thepatentee for the term mentioned in section 44 or 45,whichever is applicable.

54. (1) An action for the infringement of a patentmay be brought in that court of record that, in theprovince in which the infringement is said to haveoccurred, has jurisdiction, pecuniarily, to the amountof the damages claimed and that, with relation to theother courts of the province, holds its sittings nearestto the place of residence or of business of thedefendant, and that court shall decide the case anddetermine the costs, and assumption of jurisdiction bythe court is of itself sufficient proof of jurisdiction.

(2) Nothing in section impairs the jurisdiction ofthe Federal Court under section 20 of the FederalCourt Act or otherwise.

55. (1) A person who infringes a patent is liable to the patenteeand to all persons claiming under the patentee for all damagesustained by the patentee, or by any such person, after the grant ofthe patent, by reason of the infringement.

(2) A person is liable to pay reasonable compensation to apatentee and to all persons claiming under the patentee for anydamage sustained by the patentee or by any of those persons byreason of any act on the part of that person, after the applicationfor the patent became open to public inspection under section 10and before the grant of the patent, that would have constituted aninfringement of the patent if the patent had been granted on theday the application became open to public inspection under thatsection.

55.01 No remedy may be awarded for an act of infringementcommitted more than six years before the commencement of theaction for infringement.

57. (1) In any action for infringement of a patent, the court, or any judge thereof, may, on the application of the plaintiff or defendant, make such order as the court or judge sees fit,

(a) restraining or enjoining the opposite party from further use, manufacture, or sale of the subject-matter of the patent, and for punishment in the event of disobedience of that order, or

(b) for and respecting inspection or account, and

generally, respecting the proceedings in the action.

58. When, in any action or proceeding respecting apatent that contains two or more claims, one or moreof those claims is or are held to be valid but anotheror others is or are held to be invalid or void, effectshall be given to the patent as if it contained only thevalid claims or claims.

59. The defendant, in any action forinfringement of a patent may plead as matter ofdefence any fact or default which by this Act or bylaw renders the patent void, and the court shall takecognizance of that pleading and of the relevant factsand decide accordingly.

Infringement

“The function of the claims is to define clearly and with precision the monopoly claimed, so that others may know the exact boundaries of the area within which they will be trespassers….What is not claimed is disclaimed.”

Electric & Musical Industries, Ltd. v. Lissen Ltd. (1939), 56 R.P.C. 23 (H.L.) at 39 (Casebook, p. 179)

Infringement

“It is seldom that the infringer does the thing, the whole thing, and nothing but the thing claimed by the Specification. He always varies, adds, omits and the only protection the Patentee has in such a case lies… in the good sense of the tribunal which has to decide whether the substance of the invention has been pirated.”

Incandescent Gas Light Co. Ltd. V. De Mare Incandescent Gas Light System Ltd. (1896) 13 R.P.C. 301 at 330

• Thorson P. sets out the traditional two-fold test of patent infringement

• “Literal” or “textual” infringement occurs where the defendant’s apparatus or activity includes all of the limitations set forth in the claim under consideration

• “Substantive” infringement occurs where the defendant’s apparatus or activity differs from the claimed invention in minor respects but is otherwise substantially the same as the claimed invention (i.e. the defendant may have omitted a non-essential element and replaced it with a functional equivalent)

McPhar Engineering case(Casebook , pp. 187 - 193)

• In the United States the concept of substantive infringement is referred to as the “doctrine of equivalents”

• In Graver Tank & Manufacturing Co. v. Linde Air Products Co. 85 USPQ 328 (1950) the U.S. Supreme Court said that the accused device is “equivalent” to the claim under consideration if the accused device “performs substantially the same function in substantially the same way to obtain substantially the same result”

McPhar Engineering case(Casebook , pp. 187 - 193)

• Thorson P. held that it was not an “essential” feature of claim 8 of the subject patent that the transmitter coil “hang freely”

• The Defendants were therefore found liable for substantive infringement

McPhar Engineering case(Casebook , pp. 187- 193)

McPHAR v. SHARPE

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• Whirlpool is the owner of three patents relating to dual action agitators for washing machines

• Whirlpool initiated an action claiming infringement of two of the patents

• At trial, one issue was whether one of the patents was invalid due to “double patenting”. In order to decide that issue the Court needed to consider the test for construing patent claims

• Claims construction is antecedent to consideration of both validity and infringement issues

Whirlpool v. Camco(Casebook , pp. 194 - 202)

• The Supreme Court endorsed the Catnic “purposive construction” approach to claims construction

• In Catnic the House of Lords repudiated the dichotomy between “textual infringement” and infringement of the “substance” of the invention

• Binnie J. concluded that the Catnic analysis was not a substantive departure from earlier case law (such as McPhar v. Sharpe)

Whirlpool v. Camco(Casebook , pp. 194 - 202)

• Extrinsic evidence is not admissible to construe the claims - the purpose of the inventor must be determined from a reading of the patent specification itself

• In the result, the Court held that the claims construction adopted by the trial judge was reasonable

Whirlpool v. Camco(Casebook , pp. 194 - 202)

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• The patent claims in issue related to a “circuit means” for controlling electro-magnetotherapy (used to treat various maladies, such as arthritis)

• The Supreme Court considered the proper test for patent infringement - i.e how best to resolve the tension between “literal infringement” and “substantial infringement”

• The Supreme Court endorsed the “one stage” Catnic purposive construction approach to claims interpretation rather than the traditional “two stage” approach

Free World Trust case(Casebook , pp. 202 - 214)

• When determining whether a particular feature in a claim is “essential” or “non-essential” the Court suggested that it is permissible to consider either the intent of the inventor or whether a person skilled in the art would appreciate that a particular element could be substituted without affecting the working of the invention (i.e the invention would perform substantially the same function in substantially the same way to produce substantially the same result)

Free World Trust case(Casebook , pp. 202 - 214)

• The Supreme Court borrowed the “function, way result” language from leading U.S. cases relating to the “doctrine of equivalents”

• The Court held that the appellant failed to establish that the respondent’s system included all of the essential elements set forth in the patent claims when construed in an informed and purposive manner; the appeal was therefore dismissed

Free World Trust case(Casebook , pp. 202 - 214)

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• The claims in issue related to the combination of preformed armour rods wound around a stranded electrical transmission line

• The armour rods were sold by the Defendants to utility companies, such as B.C. Hydro, who installed the rods on their transmission lines

• The Defendants could not be sued for direct infringement since they did not make, use or sell the patented combination per se

Slater Steel case(Casebook , pp. 215-220)

• The Plaintiffs claimed that the Defendants were liable for indirect infringement by inducing or procuring the utility companies to infringe the patent

• The Court held that the Plaintiffs failed to prove that the utility companies were in fact induced or procured by the Defendants to embark on a course of wrongdoing

Slater Steel case(Casebook , pp. 215-220)

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• The patent in issue related to a combination of different components

• The Defendant argued that it was not liable for patent infringement since it sold the components in a disassembled form - the end user assembled the components to create the patented combination

• An instruction sketch accompanied the product when sold

• Urie J. held that consumers were clearly induced by the Defendant to assemble the components together to form the patented combination

Windsurfing case(Casebook , pp. 220 - 221)

• Court suggested that inducement may be found more readily in over-the-counter merchandise sales than in cases involving sophisticated corporate users (such as B.C. Hydro in the Slater Steel case)

Windsurfing case(Casebook , pp. 220 - 221)

220-221

6. Nick obtained a patent in Canada on June 28, 1997for an all-terrain baby stroller which he invented. The strollerhas four large wheels mounted on a light-weight aluminumframe. The stroller may be quickly folded to a collapsedconfiguration for storage or transport by (a) dismounting therear pair of wheels from the frame after removing two quick-release pins; and (b) folding the rear axle tube of the frameinwardly. The front pair of wheels remain bolted to the framein the collapsed configuration. Nick's Canadian patent issuedwith a single claim covering the assembled stroller. The claimincludes the limitation that "the rear wheels are dismountablewithout the aid of tools to allow the stroller frame to fold tothe collapsed position". The application describes the quickrelease pins and the folding mechanism in detail and 'includesa drawing of the stroller in the collapsed configurationshowing the front wheels bolted to the frame.

Nick has recently discovered that BJCorporation is manufacturing an all-terrainstroller in Seattle, Washington and importingit into Canada for sale in competition withNick's product. The BJ stroller replicates allthe features of Nick's stroller except that onlythe front wheels are dismountable. The rearwheels remain fixed in place in the collapsedconfiguration.

5 (a) Nick has retained you to assess whetherhe has good grounds for suing BJCorporation for patent infringement.Advise your client.

2 (b) Would your advice to Nick be anydifferent if the "DetailedDescription" portion of his patentincluded the following statement?

"As should be apparent to someoneskilled in the art, in an alternativeembodiment of the invention thefront pair of wheels may also includequick-release pins".

2 (c) Assume BJ Corporation introduces asecond line of strollers whichreplicates Nick's design exactly.Could BJ Corporation avoidinfringement of Nick's patent byimporting such strollers into Canadain a disassembled form together withdetailed assembly instructions?

• A plaintiff prevailing in a patent infringement action is entitled to elect between the remedies of damages or an accounting of profits

• Damages may be calculated based on the principle of restoration (i.e. to return the patentee to the position it would have been in had the infringing activity not occurred) and/or on the principle of price or hire (i.e. to compensate the patentee for violation of its exclusive rights on the theory that it should have received a reasonable royalty for the unauthorized activity)

Feldstein case(Casebook , pp. 221-226)

• Depending on the circumstances, the loss sustained by the patentee may be calculated based on lost sales of the patented article alone or lost sales of a complete article of which the patented invention forms a part

• In this case, the patented invention was a posture support for children’s cribs.

• The Court considered whether damages should be calculated based on lost sales of the entire crib or lost sales of the posture support only

Feldstein case(Casebook , pp. 221-226)

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• The equitable remedy of accounting of profits is expressly provided for in Section 57(1)(b) of the Patent Act

• Accounting of profits is a discretionary remedy• In this case, the Court of Appeal upheld the decision of

the trial judge not to grant an accounting of profits in view of the complexity and length of the proceedings

• Excessive delay and misconduct are other circumstances where the remedy may be refused

Beloit case(Casebook , pp. 227-228)

227-228

• The Plaintiffs sought an interlocutory injunction restraining the Defendant, until trial, from producing and marketing cookies in Canada

• The Court followed the American Cyanamid test for determining whether an interlocutory injunction should be granted

• According to this test, the Court first determines whether there is a fair question to be tried and then examines the balance of convenience, including whether either party will suffer irreparable harm which cannot be compensated in monetary damages

Procter & Gamble case(Casebook , pp. 229 - 234)

• Collier J. held that any damages suffered by the Plaintiffs could be compensated by money and hence the Plaintiff’s harm was not irreparable

• The Defendant was ordered to keep an account of sales and profits pending the trial

• The parties ultimately settled the action

Procter & Gamble case(Casebook , pp. 229 - 234)