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Supreme Court of Canada

Patent—Infringement—Apparatus acquired prior to issue of patent—Immunity under s. 58 of the Act—Immunity in respect of apparatus and its use—Patent Act, R.S.C. 1952, c. 203, ss. 2(d), 23, 38(1), 58, 60.

The trial judge held that the respondent had infringed the appellant’s patent, but concluded that it was not liable to the appellant because of the provisions of s. 58 of the Patent Act, R.S.C. 1952, c. 203. The respondent had acquired its tacker and de-air machines, used to press curved glass windshields, prior in time to the date of the appellant’s patent. On appeal to this Court, the appellant contended that the trial judge erred in holding that the expression “specific article, machine, manufacture or composition of matter” included intangible things.

Held: The appeal should be dismissed with costs.

The trial judge was right in holding that s. 58 was a complete defence to the appellant’s action for infringement. It is not necessary to determine if the word “article” in s. 58 included “process” because the respondent had acquired the specific apparatus prior to the issue of the appellant’s patent. The patent in suit includes apparatus claims under which the respondent is entitled to the benefit of s. 58. The immunity in respect of that specific apparatus necessarily includes immunity to use the apparatus under such method or process claims as may be included in a patent subsequently obtained for the apparatus. “Using” a patented article includes the manufacture of goods to be vended. The contention that infringement of the process claims should be considered apart from the infringement of the apparatus claims, should be rejected. The appellant has in no way shown that the method claims constitute a separate

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invention distinct from the apparatus claims. On the view that there is but one invention in the patent, the respondent is entitled to rely on the specification as a whole to show that its machine is an “invention” for which the patent was obtained. Section 58 does not apply only when the acquisition of the invention prior to the issue of the patent has been with the consent of the patentee.

APPEAL from a judgment of Thurlow J. of the Exchequer Court of Canada[1], dismissing an action for infringement of a patent. Appeal dismissed.

Gordon F. Henderson, Q.C., and C. Ross Carson, for the appellant.

Donald F. Sim, Q.C., and R. T. Hughes, for the respondent.

The judgment of the Court was delivered by

HALL J.—This is an appeal from a judgment by Thurlow J. in the Exchequer Court1 in which he held that the respondent was not liable for infringement of appellant’s Canadian Patent No. 653277 issued December 4, 1962.

The facts which are of a technical nature are fully set out in the reasons of Thurlow J.

The action proceeded to trial on the assumption that Patent No. 653277 was valid. At the hearing the controversy developed around three questions:

1. Whether and in what respects infringement by the defendant of all or any of the patent claims relied on by the plaintiff should be taken as admitted.

2. Whether, and how far, if not admitted, infringement has been established.

3. Whether and how far section 58 of the Patent Act affords a defence.

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The learned trial judge found as follows:

In summary I find that, except during the period in September 1963 when the rocking mechanisms of both machines were not operated but maintained in a fixed position while the machines were in operation,

(1) the use of the defendant’s tacker unit in conjunction with a load conveyor from the date of the patent to September 1964 infringed all the claims relied on except claim 18;

(2) the use of the defendant’s tacker apparatus since September 1964 in conjunction with a load stand infringed claims 11, 12, 13, 14, 15, 16, 17 and 20 but not any of the other claims relied on;

(3) the use of the defendant’s de-air apparatus since the grant of the patent in conjunction with a load stand infringed claims 11, 12, 13, 14, 15, 16, 17, 18 and 20 of the patent

but not any of the other claims in suit. With respect to the operation of the tacker apparatus from September 1964 to the commencement of the action the second of the above findings is in conflict with the prima facie meaning of the admission of the defendant’s letter of August 8, 1968 that claim I was also infringed thereby but on reading the letter in the light of the finding I do not think it is necessarily inconsistent therewith. However, even if it is, the finding, as I view the matter, must prevail.

But having so found, he concluded that the respondent was not liable to the appelant because of the provisions of s. 58 of the Patent Act. The effect of s. 58 was the only issue argued in this Court and it is the only question dealt with by the appellant in its factum. Section 58 reads:

58. Every person who, before the issuing of a patent has purchased, constructed or acquired any invention for which a patent is afterwards obtained under this Act, has the right of using and vending to others the specific article, machine, manufacture or composition of matter patented and so purchased, constructed or acquired before the issue of the patent therefor, without being liable to the patentee or his legal representatives for so doing; but the patent shall not, as regards other persons, be held invalid by reason of such purchase, construction or

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acquisition or use of the invention by the person first mentioned, or by those to whom he has sold it, unless it was purchased, constructed, acquired or used for a longer period than two years before the application for a patent therefor, in consequence whereof the invention became public and available to public use. 1935, c. 32, s. 56.

Having quoted s. 58 and s. 2(d) which reads:

2. In this Act, and in any rule, regulation or order made under it,

* * *

(d) “invention” means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter;

Thurlow J. found as follows:

Turning now to the facts in the present case on the evidence I see no reason to doubt that the defendant’s tacker and de-air machines had been purchased and installed by the end of March 1961 and, notwithstanding Mr. Henderson’s submissions to the contrary, I find that these machines were in fact used to press curved glass windshields from June 1, 1961 onward and were being used for that purpose on a considerable scale at the time of the grant of the patent. As there has been no change in the defendant’s de-air apparatus or in the method of its operation since that time it appears to me to follow from what I have held with respect to section 58 that that section would afford a defence to the plaintiff’s claim both in respect of the apparatus itself, even if contrary to what I have found it does infringe the apparatus claims of the patent, and in respect of the method used as well. The same conclusions also appear to me to follow with respect to the defendant’s tacker apparatus and its operation in conjunction with a feed conveyor from the time of the issue of the patent until the removal of the feed conveyor in September 1964 and its replacement by a load stand. If, contrary to what I have held, the operation of the combination consisting of the tacker presser and load stand infringes the apparatus claims I do not think section 58 would afford a defence to the plaintiff’s claim insofar as it was based on infringement of the apparatus claims since it is not established that this particular combination, including a load stand, making up the tacker apparatus was acquired prior to the issue of the patent but in view of my

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conclusion on the question of infringement of these claims there is no necessity for the defendant to resort to section 58 for its defence to that particular aspect of the plaintiff’s claim. The infringement of the method claims, however, does not depend on the precise combination of apparatus used and even though the tacker combination differed after the introduction of the load stand from what it had been before that the elements of the methods used, whose presence brought its operation within the method claims of the patent, as I see it, were the same both before and after the removal of the feed conveyor and the substitution of the load stand. To this aspect of the plaintiff’s claim in respect of the operation of the tacker apparatus after the introduction of the load stand, therefore, section 58, in my opinion, affords a defence.

It will be seen that respondent acquired its tacker and de-air machines prior in time to the date of appellant’s patent and, accordingly, was a person who, before the issuing of a patent, had acquired an invention for which a patent was afterwards obtained. Thurlow J.’s approach to the interpretation of s. 58 was:

In the view I take the proper approach to the interpretation of section 58 is to first read its wording, coupled with that of section 2(d), in an effort to ascertain its meaning therefrom without reference to preconceived notions generated by knowledge of how the comparable but different sections of earlier acts read and without reference to expressions of opinion by text writers or by the Courts of other countries thereon. Vide S. & S. Industries Inc. v. Rowell (1966) S.C.R. 419 per Martland J. at page 425, Bank of England v. Vagliano Brothers (1891) A.C. 107 per Lord Herschell at page 144, and Wilkinson Sword (Canada) Ltd. v. Juda (1968) 2 Ex. C.R. 137 per Jackett, P. at page 161.

So reading section 58 the first observation to be made, as I see it, is that the first part of the section applies to “every person who has purchased, constructed or acquired any invention for which a patent is afterwards obtained”. In this context the word “invention” appears to me to be broad enough to embrace any patentable subject matter, whether tangible or intangible, that would fall within what

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the word “invention” is defined by section 2(d) to mean, that is to say, “any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter”. The verbs “purchase” and “construct” would not go well with the objects “art” or “process” nor would the verb “construct” go well with the object “manufacture” but it appears to me that the verb “acquire” is broad and versatile enough to comprehend any process of acquisition whether it be by purchase, gift, invention or discovery and, in its sense of gaining for oneself by ones own efforts, to be capable of applying as well to the acquisition of an art or process by invention or discovery or by learning, however, obtained, or by the practice of it, as to any of the tangible items comprehended by the expressions “machine, manufacture or composition of matter”.

To my mind as well the acquisition which this portion of the section appears to be directed to is that of the subject matter of the invention itself rather than that of the right which accrues to the first inventor to obtain patent protection therefor or that of such rights as the inventor of a patentable but unpatented invention can confer on another. In short it appears to me to embrace everyone who has somehow come by the subject matter of an invention before a patent therefor was obtained. There are no doubt cases wherein a person is disqualified by his own dishonest conduct from asserting a right under the section but these, as I see it, depend on principles of equity rather than on principles of statutory interpretation.

Next, the word “invention” appears later in the section in a context in which it is associated with the words “purchase, construction or acquisition”, which are related by the word “such” to the earlier words “purchased, constructed or acquired”, and is associated as well with the word “use”. Here again the word “invention” appears to me to have the same connotation as it has in the opening words of the section. This latter portion of section 58 is directed to protecting the inventor against effects which such purchase, construction, acquisition or use might otherwise have on his right to a patent and to my mind the significant feature of it is that the protection so provided is not confined to patentable subject matter of any particular nature or kind but applies to any kind of patentable subject matter whether tangible or intangible.

The appellant’s main contention was that on a proper construction of s. 58 the word “article”

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did not include “process”. He urged that the word “article” must relate to an object and that the learned trial judge erred in holding that the expression “specific article, machine, manufacture or composition of matter” included intangible things.

In my opinion Thurlow J. was right in holding that s. 58 was a complete defence to the appellant’s action for infringement. It is not necessary in this appeal to determine if the word “article” in s. 58 includes “process” because the respondent here had acquired the specific apparatus in issue in this litigation prior to the issue of appellant’s patent. The patent in suit includes apparatus claims under which the respondent is entitled to the benefit of s. 58. The immunity in respect of that specific apparatus necessarily includes immunity to use the apparatus under such method or process claims as may be included in a patent subsequently obtained for the apparatus.

The extent of the protection afforded by s. 58 of the Patent Act is described by the words “the right of using and vending to others the specific article, machine, manufacture or composition of matter patented and so purchased, constructed or acquired before the issue of the patent therefor,…”.

The question in this case is with respect to the extent of the meaning of “using” and it arises because with respect to “vending” the right of the owner of the specific machine or other thing is expressed as that of vending it, not as that of vending its output. However, it is obvious that in the case of a machine designed for the production of goods, there would really be no worthwhile protection allowed by s. 58 if the owner could not put it to the only use for which it is usable without being liable for infringement.

Some indication that, in the Patent Act, “using” a patented article includes the manufacture of goods to be vended is found in s. 23 reading as follows:

23. No patent shall extend to prevent the use of any invention in any ship, vessel, aircraft or land

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vehicle of any other country, entering Canada temporarily or accidentally, if such invention is employed exclusively for the needs of the ship, vessel, aircraft or land vehicle, and not so used for the manufacture of any goods to be vended within or exported from Canada.

Counsel for appellant contends that infringement of the process claims should be considered apart from the infringement of the apparatus claims. He refers to the decision of the House of Lords in Ingersoll Sergeant Drill Co. v. Consolidated Pneumatic Tool Co.[2], in which, at p. 82, Lord Loreburn said: “Each Claim in a Specification is independent.” This does not mean that each claim is to be considered as having reference to a distinct invention. In effect, what was said there is nothing else than a short statement of the rule in s. 60 of the Patent Act.

60. When in any action or proceeding respecting a patent that contains two or more claims, one or more of such claims is or are held to be valid, but another or others is or are held to be invalid or void, effect shall be given to the patent as if it contained only the valid claim or claims.

By virtue of that rule, a patentee may found an action for infringement on any of the claims. In the instant case, the appellant would undoubtedly have been entitled to bring an action claiming infringement of the method or process claims only. But this does not mean that no consideration would then have to be given to the apparatus whereby the process is carried out. The claims though independent from one another cannot be read apart from the description of the invention in the specification. By virtue of s. 38(1), a patent is granted for one invention only.

38. (1) A patent shall be granted for one invention only but in an action or other proceeding a

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patent shall not be deemed to be invalid by reason only that it has been granted for more than one, invention.

The established practice of the Patent Office of allowing both apparatus and process claims or process and substance claims in a single patent indicates that process claims are apt to be considered, in a proper case, as being only different aspects of a single invention covering either an apparatus or a substance. With an infringement of either kind of claim will give rise to a right of action, this does not mean that such a patent covers two inventions. Although it is expressly provided that a patent is not rendered void by reason of the fact that it contains more than one invention, this is certainly not to be presumed. In the present case, appellant has in no way shown that the method claims constitute a separate invention distinct from the apparatus claims.

It should also be noted that s. 58 provides protection with respect to the “invention” and also refers to the “patent”. I fail to see on what basis this should be read otherwise than as relating to the invention as a whole and to the patent as a whole. Nothing indicates that this should rather be read as relating to each particular claim or to each particular group of claims instead.

I cannot agree with appellant’s submission that, because respondent’s machine was found not to infringe the apparatus claims in suit, it should be treated as not coming within the terms of s. 58. On the view that there is but one invention in the patent, respondent is entitled to rely on the specification as a whole to show that its machine is an “invention” for which the patent in suit was obtained. Although this was not considered by the trial judge in view of the basis on which he decided the case, it was properly urged in this Court as an issue arising out of the pleadings in which respondent specifically invoked s. 58.

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The appellant argued further that the immunity given by s. 58 applied only when the acquisition of the invention, prior to the issue of the patent, was with the consent of the patentee. I agree with Thurlow J. on this point when he said:

A further submission put forward by counsel for the plaintiff was that section 58 applies only when the acquisition of the invention prior to the issue of the patent has been with the consent of the patentee but this to my mind is not sustainable. There appears to me to be nothing in the wording of section 58 to support it and the judgment of the Ontario Court of Appeal in Victor Sporting Goods Co. v. Harold A. Wilson Company (1904) 7 O.L.R. 570 which applied the reasoning of the Supreme Court of the United States in Andrews v. Hovey, (1899) 124 U.S. 694, is against it.

I would, accordingly, dismiss the appeal with costs.

Appeal dismissed with costs.

Solicitors for the appellant: Gowling, MacTavish, Osborne and Henderson, Ottawa.

Solicitors for the respondent: McCarthy and McCarthy, Toronto.

 



[1] [1969] 1 Ex. C.R. 529, 57 C.P.R. 155, 40 Fox Pat. C. 149.

[2] (1907), 25 R.P.C. 61.

 

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