Whirlpool Corp. v. Camco Inc. (2000), 263 N.R. 88 (SCC)
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Temp. Cite: [2000] N.R. TBEd. DE.017
Camco Inc. and General Electric Company (appellants) v. Whirlpool Corporation and Inglis Limited (respondents)
(27208; 2000 SCC 67)
Indexed As: Whirlpool Corp. et al. v. Camco Inc. et al.
Supreme Court of Canada
L’Heureux-Dubé, Gonthier, McLachlin, Iacobucci, Major, Bastarache and Binnie, JJ.
December 15, 2000.
Summary:
Plaintiffs sued for patent infringement, seeking damages, profits, declarations that their patents were valid and a permanent injunction. The plaintiffs also sought costs, including costs of a counterclaim which was withdrawn at the last minute. The counterclaim had advanced an allegation that the plaintiffs’ actions respecting their patent rights had resulted in damage to the defendants.
The Federal Court of Canada, Trial Division, in a decision reported 134 F.T.R. 161, declared that the patents were valid and that the defendants had infringed one of the plaintiffs’ patents. The court dismissed the counterclaim with costs. The defendants appealed. The appeal raised issues respecting the validity of the patent which the trial judge had held to have been infringed. The defendants also appealed the costs order.
The Federal Court of Appeal, in a decision reported at 236 N.R. 330, dismissed the appeal. The defendants appealed.
The Supreme Court of Canada dismissed the appeal.
Editor’s note: For a companion decision see [2000] N.R. Uned. 199.
Patents of Invention – Topic 1026
The specification and claims – Construction of a patent – General – The Supreme Court of Canada stated that the first step in a patent suit was to construe the claims using a purposive construction approach – The key to purposive construction was the identification by the court, with the assistance of a skilled reader, of the particular words or phrases in the claims that described what the inventor considered to be the invention’s “essential” elements – See paragraphs 42 to 49.
Patents of Invention – Topic 1026
The specification and claims – Construction of a patent – General – Plaintiffs sued for infringement of their ‘803 and ‘734 patents – Both patents were for an agitator for clothes washing machines – The newer ‘734 patent specified flexed vanes – The ‘803 patent referred to only “vanes” – The defendants asserted that the ‘803 patent included either flexed or rigid vanes and the ‘734 patent constituted double-patenting – The trial judge referred to the rest of the specification and drawing, relied on the plaintiffs’ expert and concluded that the ‘803 patent did not include flexed vanes – The Supreme Court of Canada refused to interfere with the trial judge’s construction – The court affirmed the judge’s use of the specification and drawing to understand the meaning of “vane”, but stated that such material could not be used to enlarge or contract the scope of the claim as written and thus understood – Although the judge erred in using the filing date rather than the date of issuance as the relevant time for construing the claim, the error did not effect his decision – See paragraphs 51 to 62.
Patents of Invention – Topic 1026
The specification and claims – Construction of a patent – General – Plaintiffs sued for infringement of their ‘803 and ‘734 patents – Both were for an agitator for clothes washing machines – The newer ‘734 patent specified flexed vanes – The ‘803 patent referred only to vanes – The defendants asserted that “vane” in the ‘803 patent was satisfied by either a flexed or a rigid vane and the ‘734 patent constituted double-patenting – The Agreed Statement of Facts stated that the defendants’ flexed vane machine infringed the ‘803 patent – The Supreme Court of Canada rejected an assertion that the agreed statement of facts foreclosed the trial judge from considering the “vane” issue – Claims construction was a matter of law for the trial judge and he was entitled to adopt a construction different than that put forward by the parties – See paragraph 62.
Patents of Invention – Topic 1026
The specification and claims – Construction of a patent – General – Plaintiffs sued for infringement of their patent for a washing machine agitator – The defendants called no evidence – The trial judge held that the patent’s “intermittent” auger claims and its “continuous” claims were neither inclusive or exclusive of each other and included a “continuously intermittent” motion – The trial judge relied on a videotape to conclude that the defendants’ machine infringed the “continuous” claims – The Supreme Court of Canada, while affirming that the patent had been infringed, held that the judge had misconstrued the claims – The only difference between two of the claims was the use of “intermittently” in one and “continuously” in the other and it had to be inferred on a purposive construction that they were intended to describe alternative drive systems – While the patent as a whole envisaged both drives, three of the claims could only be infringed by a machine with a continuously driven auger -However, on appeal, the Court of Appeal had concluded that the videotape supported the inference of a continuous drive and continuous rotation – Absent evidence to the contrary, it was open to the Court of Appeal to use that inference to find infringement – See paragraphs 76 to 85.
Patents of Invention – Topic 1030
The specification and claims – Construction of a patent – “Person skilled in the art” – What constitutes – In determining Whirlpool’s claim of patent infringement for a washing machine agitator, the trial judge accepted the evidence of a long term Whirlpool employee as a proxy for the “ordinary worker” skilled in the art to which the patent related – The Supreme Court of Canada held that the trial judge erred in accepting the employee’s evidence as a proxy for the “ordinary worker” – The court stated that “‘[o]rdinariness’ will, of course, vary with the subject matter of the patent. Rocket science patents may only be comprehensible to rocket scientists. The problem with [Whirlpool’s employee] is that he could not be a good guide to the common knowledge of ‘ordinary workers’ in the industry because his opinions were predicated on Whirlpool’s in-house knowledge …” – See paragraphs 71.
Patents of Invention – Topic 1030
The specification and claims – Construction of a patent – “Person skilled in the art” – What constitutes – Whirlpool sued for infringement of its patent for a dual action washing machine agitator – The trial judge held that the evidence of the defendants’ expert was insufficient to invalidate the patent’s claims where it was not supported by the level of practical understanding of dual action washing machines that had become common knowledge among skilled workers interested in that area – The Supreme Court of Canada affirmed the rejection of the evidence, stating that “[w]hile the hypothetical ‘ordinary worker’ is deemed to be uninventive as part of his fictional personality, he or she is thought to be reasonably diligent in keeping up with advances in the field to which the patent relates. The ‘common knowledge’ of skilled workers undergoes continuous evolution and growth.” – See paragraphs 74.
Patents of Invention – Topic 1503
Grounds of invalidity – General – Presumption of validity – Plaintiffs sued for infringement of their ‘803 and ‘734 patents -Both patents were for an agitator for clothes washing machines – The newer ‘734 patent specified flexed vanes – The ‘803 patent referred to only “vanes” – The defendants challenged the ‘734 patent, asserting that flexed vanes was an obvious and non-inventive variation that constituted double-patenting – The Supreme Court of Canada affirmed the trial judge’s and the Court of Appeal’s rejection of the assertion – Section 45 of the Patent Act created a presumption of validity – The burden was on the defendants to prove, on a balance of probabilities, that the patent was invalid – The trial judge and Court of Appeal concluded that the presumption was not displaced – There was no basis to interfere with those findings – See paragraphs 63 to 75.
Patents of Invention – Topic 1589
Grounds of invalidity – Lack of “inventive ingenuity” – Particular patents – Agitator for clothes washing machines – [See fourth
Patents of Invention – Topic 1026
and
Patents of Invention – Topic 1503
].
Patents of Invention – Topic 1590
Grounds of invalidity – Lack of “inventive ingenuity” – Evidence – Onus of proof – [See fourth
Patents of Invention – Topic 1026
and
Patents of Invention – Topic 1503
].
Patents of Invention – Topic 3505
Infringement actions – General – Approach used by court to determine if patent infringed – [See first and second
Patents of Invention – Topic 1026
].
Patents of Invention – Topic 8163
Practice – Appeals – Questions of law, fact or mixed fact and law – The Supreme Court of Canada, in the context of a patent infringement suit, stated that “[t]he issue of infringement is a mixed question of fact and law. Claims construction is a matter of law. Whether the defendant’s activities fall within the scope of the monopoly thus defined is a question of fact” – See paragraph 76.
Cases Noticed:
Catnic Components Ltd. v. Hill & Smith Ltd., [1982] R.P.C. 183 (H.L.), refd to. [para. 39].
Lilly (Eli) & Co. and Thomas Engineering Ltd. v. Novopharm Ltd. (1989), 99 N.R. 60; 26 C.P.R.(3d) 1 (F.C.A.), appld. [para. 39].
Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd., [1981] 1 S.C.R. 504; 35 N.R. 390; 122 D.L.R.(3d) 203; 56 C.P.R.(2d) 145, refd to. [para. 42].
Smit (J.K.) & Sons Inc. v. McClintock, [1940] S.C.R. 279, refd to. [para. 45].
McPhar Engineering Co. of Canada v. Sharpe Instruments Ltd., [1956-60] Ex. C.R. 467, refd to. [para. 46].
Marconi and Marconi’s Wireless Telegraph Co. v. British Radio-Telegraph and Telephone Co. (1911), 28 R.P.C. 181, refd to. [para. 47].
Birmingham Sound Reproducers Ltd. v. Collaro Ltd., [1956] R.P.C. 232 (C.A.), refd to. [para. 47].
Van Der Lely (C.) N.V. v. Bamfords Ltd., [1963] R.P.C. 61 (H.L.), refd to. [para. 47].
Dableh v. Ontario Hydro, [1996] 3 F.C. 751; 199 N.R. 57, refd to. [para. 49].
Lister v. Norton Brothers & Co. (1886), 3 R.P.C. 199 (Ch. D.), refd to. [para. 49].
Williams v. Box (1910), 44 S.C.R. 1, refd to. [para. 49].
Rizzo & Rizzo Shoes Ltd. (Bankrupt), Re, [1998] 1 S.C.R. 27; 221 N.R. 241; 106 O.A.C. 1, refd to. [para. 49].
White v. Dunbar (1886), 119 U.S. 47, refd to. [para. 51].
Western Electric Co. v. Baldwin International Radio of Canada, [1934] S.C.R. 570, refd to. [para. 52].
Metalliflex Ltd. v. Rodi & Wienenberger Aktiengesellschaft, [1961] S.C.R. 117, refd to. [para. 52].
Burton Parsons Chemicals Inc. et al. v. Hewlett-Packard (Canada) Ltd. et al., [1976] 1 S.C.R. 555; 3 N.R. 553, refd to. [para. 53].
Scragg (Ernest) & Sons Ltd. v. Leesona Corp. (1964), 26 Fox Pat. C. 1, refd to. [para. 55].
AT&T Technologies Inc. v. Mitel Corp. (1989), 28 F.T.R. 241; 26 C.P.R.(3d) 238 (T.D.), refd to. [para. 55].
Abbott Laboratories Ltd. et al. v. Nu-Pharm Inc. et al. (1998), 142 F.T.R. 48; 78 C.P.R.(3d) 38 (T.D.), refd to. [para. 55].
Free World Trust v. Electro Santé Inc. (2000), 263 N.R. 150 (S.C.C.), refd to. [para. 55].
Procter & Gamble Co. v. Beecham Canada Ltd. and Calgon Interamerican Corp. (1982), 40 N.R. 313; 61 C.P.R.(2d) 1 (F.C.A.), refd to. [para. 64].
Lovell Manufacturing Co. v. Beatty Brothers Ltd. (1962), 23 Fox Pat. C. 112, refd to. [para. 64].
Commissioner of Patents v. Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning, [1964] S.C.R. 49, refd to. [para. 66].
Beloit Technologies Inc. v. Valmet Paper Machinery Inc., [1997] R.P.C. 489 (C.A.), refd to. [para. 70].
Jamb Sets Ltd. v. Carlton (1963), 42 C.P.R. 65 (Ex. Ct.), affd. (1965), 46 C.P.R. 192 (S.C.C.), refd to. [para. 79].
Submarine Signal Co. v. Hughes (Henry) & Son Ltd. (1931), 49 R.P.C. 149 (C.A.), refd to. [para. 79].
Authors and Works Noticed:
Côté, Pierre-André, The Interpretation of Legislation in Canada (3rd Ed. 2000), p. 387 [para. 49].
European Patent Convention, Convention on the Grant of European Patents (October 5, 1973), art. 69 [para. 50].
Fox, Harold G., Editorial Comment on Lovell Manufacturing Co. v. Beatty Brothers (1962), 23 Fox Pat. C. 112, pp. 116, 117 [para. 64].
Fox, Harold G., The Canadian Law and Practice Relating to Letters Patent for Inventions (4th Ed. 1969), pp. 185, 203 [para. 53]; 206, 207 [para. 55]; 220 [para. 54].
Hayhurst, William L., The Art of Claiming and Reading a Claim, in Henderson, G.F., Patent Law of Canada (1994), pp. 190 [paras. 52, 54]; 193 [para. 39]; 194 [para. 49]; 198 [para. 79].
Henderson, G.F., Patent Law of Canada (1994), pp. 190 [para. 52]; 193 [para. 39]; 194 [para. 49]; 198 [para. 79].
Hitchman, Carol V.E., and MacOdrum, Donald H., Don’t Fence Me In: Infringement in Substance in Patent Actions (1990), 7 C.I.P.R. 167, p. 202 [para. 49].
Vaver, David, Intellectual Property Law (1997), p. 140 [para. 53].
Counsel:
James D. Kokonis, Q.C., Dennis S.K. Leung and Ronald E. Dimock, for the appellants.
Christopher J. Kvas and Peter R. Everitt, for the respondents.
Solicitors of Record:
Smart & Biggar, Ottawa, Ontario; Dimock Stratton Clarizio, Toronto, Ontario, for the appellants.
Barrigar & Moss, Toronto, Ontario, for the respondents.
This appeal was heard on December 14, 1999, before L’Heureux-Dubé, Gonthier, McLachlin, Iacobucci, Major, Bastarache and Binnie, JJ., of the Supreme Court of Canada. The judgment was delivered for the court by Binnie, J., on December 15, 2000, in both official languages.
