[1] The principal appeal is from an order dated February 26, 2003, in which the Trial Division found Canadian Letters Patent No. 2,184,205 as reissued (the "Patent") to be valid and not infringed. In view of her finding of non-infringement, Layden-Stevenson J. did not find it necessary to deal with the respondent's contention that a licensing agreement dated November 15, 1993, had not vested any right in the appellant Canamould Extrusions Ltd. to exploit the patented invention.

[2] The other appeal is from a judgment dated May 20, 2003 by which the Trial Judge awarded the respondent 50% of its costs. The parties agree that the award of costs should be varied if this Court finds that the respondent infringed the Patent. Otherwise, the award should remain unchanged.

[3] The validity of the Patent is not under appeal. The main issue before this Court is whether the Trial Judge erred at law in construing the claims of the Patent, and if so, whether she erred in finding that the Patent was not infringed. As construction of patent claims is "a matter of law" (Whirlpool Corp. v. Camco Inc., [2000] 2 S.C.R. 1067, 2000 SCC 67">2000 SCC 67, at paragraph 61), the standard of review is that of correctness (Housen v. Nikolaisen, [2002] 2 S.C.R. 235, 2002 SCC 33">2002 SCC 33, at paragraph 8. Infringement of a patent, on the other hand, is "a mixed question of fact and law" (Whirlpool, supra, at paragraph 76), which calls for the standard of palpable and overriding error (Housen, supra, at paragraph 31). The order under appeal must be reviewed with these standards in mind.

FACTUAL BACKGROUND

The Patent

[4] The Patent, issued January 27, 1998, is in respect of a "Method and Apparatus for Manufacturing Decorative Mouldings". Although the Patent was reissued September 7, 1999, the slight change made therein is not material to the present appeals. Claims 1 through 8 of the Patent relate to methods of manufacturing elongate decorative mouldings, while claims 9 through 18 describe devices to be used for manufacturing such mouldings.

The patented invention

[5] The decorative mouldings are typically three dimensional in design to include a decorative surface, a desired cross-sectional profile and a flat surface. The mouldings are mounted to a wall or ceiling after treating the flat surface with an adhesive. Prior to the invention, the mouldings were made by applying several layers of coating material to foam cores by either spraying or trowelling. This was time consuming, labour intensive, and the quality of the finished product was not always consistent.

[6] Mr. Ned Santarossa, the inventor, began working in the construction industry in 1984 when he applied stucco exteriors to houses and commercial buildings. He soon discovered on-site production of decorative mouldings to be expensive. As a result, he began to explore the possibility of developing an automated system for pre-coating the mouldings. Early attempts proved unsuccessful. Mr. Santarossa persisted and pursued the concept to a successful conclusion in July 1994. His invention is described in the Patent. It calls for the coating of pre-shaped solid foam cores of variable length often composed of expanded polymer such as polystyrene or polyurethane. The foam core may be used as is, but the decorative surface may also be covered by a mesh such as fibreglass prior to coating. The invention was a departure from earlier methods in that it comprised an automated system with a stationary coating containment chamber which applied the coating material more evenly and consistently and reduced the processing time.

[7] On August 28, 1995, Mr. Santarossa applied for patent protection in the United States. On August 27 of the following year, he successfully applied for the Patent which was subsequently reissued to the numbered company. It has been exploited by Canamould Extrusions Ltd. purportedly pursuant to the November 15, 1993 licence. The mouldings produced in accordance with the invention were an immediate commercial success world-wide.

[8] Claims 1 and 9 of the Patent read as follows:

1. A method of manufacturing an elongate decorative moulding having a decorative surface, comprising the steps of:

(a) placing a flat surface of an elongate foam moulding core on an input portion of a flat elongate table, the foam core comprising a flexible resilient expanded polymer foam solid having: said flat surface on one side; a decorative surface on another side and a cross-sectional profile, the cross sectional profile of the core being proportionally smaller than the desired cross sectional profile of the finished decorative moulding, the table including a smooth continuous planar top surface and a longitudinal axis;

(b) aligning the foam core on said longitudinal axis of the table;

(c) sliding the foam core on the top surface of the table forwardly along the axis through a coating containment chamber, the coating chamber: having a bottom surface defined by the top surface of the table; having a rearward opening larger than the core profile; side walls and a forward wall which includes a die, the die having a die opening with a profile proportionally larger than the cross sectional profile of the moulding core, the die opening having a profile conforming a desired cross sectional profile;

(d) applying a liquid coating material to the decorative surface of the moulding core as the foam core slides through the coating chamber, the flat surface of the core slidingly engaging the top surface of the table thus being shielded from coating material;

(e) passing the coated moulding core through the die opening on to an output portion of the table top surface; and

(f) curing the coating material after the moulding has passed the die.

...

9. A device for manufacturing an elongate moulding having a flat surface on one side, a decorative surface on another side and a cross-sectional profile, the device comprising:

table means, having a smooth continuous elongate planar top surface, a longitudinal axis, an input portion, a midportion and an output portion, for supporting a flexible foam moulding core on said flat surface thereof as the core slides along the longitudinal axis;

alignment means, on said input portion, for aligning the foam core on the longitudinal axis;

a first coating containment chamber on said midportion having: a bottom surface defined by the top surface of the table; having a rearward opening larger than the core profile; side walls and a forward wall which includes a first die, the first die having a die opening with a profile proportionally larger than the cross sectional profile of the moulding core, the die opening having a profile conforming a desired cross sectional profile; and

driving means for driving the foam core through the coating chamber, the flat surface of the core slidingly engaging the top surface of the table thus being shielded from coating material, and for passing the first coated core through the first die opening onto the output portion of the table top surface.

[9] Claims 1 and 9 are at the heart of this litigation. Claim 1 describes the patented method. It is an independent claim. According to its terms, the operator places a piece of foam core on the input portion of a "flat elongate table" which includes a "smooth continuous planar top surface and a longitudinal axis". The foam core is aligned and slid along the longitudinal axis of the table through a coating containment chamber. The chamber has "a bottom surface defined by the top surface of the table" and a forward wall which includes a die having a die opening with the desired cross-sectional profile. A liquid coating material is applied to the decorative surface of the foam core as the core slides through "the coating chamber, the flat surface of the core slidingly engaging the top surface of the table thus being shielded from coating material". Claim 9 describes the patented device. It too is an independent claim. It calls, among other things, for a "table means, having a smooth continuous elongate planar top surface"; an alignment means located on the input portion of the table; a coating containment chamber with "a bottom surface defined by the top surface of the table" and a forward wall which includes a die having a die opening with the desired cross-sectional profile; and a "driving means for driving the foam core through the coating chamber, the flat surface of the core slidingly engaging the top surface of the table thus being shielded from coating material".

The respondent's device

[10] Mr. Angelo Rao, the president of the respondent, became acquainted with decorative mouldings in 1994 while employed with KML Engineered Homes, a manufacturer of pre-modular or pre-finished homes. At about this time, he met Mr. Vic Nonis who was a principal of both KML Engineered Homes and Lido Wall Systems. The latter company was a large stucco contractor in the Toronto area and a purchaser of the invented product. While the idea of forming the respondent company to mass-produce pre-coated decorative mouldings originated with Mr. Nonis, Mr. Rao was left to conduct the required analysis. He soon set about to develop a piece of hardware that would produce the mouldings. In the course of doing so, he consulted with contractors and architects in the industry with a view to learning of their requirements with respect to the use of an automated process. In the end, he designed the device which allegedly infringes the Patent. Put generally, that device consists of a table, an alignment means, a coating containment chamber and a driving means. The alignment means consists of a dovetail shaped rail running the entire length of the table. The chamber has a forward wall that includes a die. It is bolted onto the table top and is fitted with two dams or wipers which are transposed in a trough. The driving means consists of a spike belt adjacent to the dovetail rail to convey the core over the table top. Before the foam core is coated, a fibreglass mesh is applied to its decorative surface and a "V" groove is cut into the flat surface of the core so as to allow it to ride on the dovetail rail in order to maintain the desired alignment. The coating operation commences when the foam core is placed on the input portion of the table where it is pushed by an operator until it is engaged by the spike belt which conveys it through the chamber. While being coated, the core slides over the edges of the dams or wipers which prevent coating material from bleeding onto the flat surface of the core. After emerging onto the output portion of the table, the mouldings are carried forward over water wells and, finally, placed in drying racks for curing.

THE TRIAL JUDGMENT

[11] In construing claims 1 and 9, the Trial Judge paid close attention to the recent decisions of the Supreme Court of Canada in Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R. 1024, 2000 SCC 66">2000 SCC 66 and Whirlpool, supra. These cases teach that patent claims are to be construed in an informed and purposive fashion and that excessive literalism is to be avoided.

[12] The Trial Judge heard the evidence of Mr. Santarossa and Mr. Rao as well as the expert evidence of Mr. Kevin Day on behalf of the appellants and Mr. Sab Ravelli on behalf of the respondent. She expressed no difficulty with the testimony of either Mr. Santarossa or Mr. Rao. With respect to the expert witnesses, the Trial Judge noted that Mr. Day had "considerable experience and expertise" related to the technology in issue and that Mr. Ravelli's credentials did not extend to the same technology. Although Mr. Day was found "somewhat over-zealous in his efforts to ensure that the patent be construed in a manner most favourable to the plaintiff's position", the Trial Judge found that he "testified in a forthright manner". She found Mr. Ravelli to be "most impressive as a witness" despite being "left with the distinct impression that he had difficulty relating to the knowledge level of a person skilled in the art with respect to the production of decorative mouldings". Ultimately, the Trial Judge found that both experts provided the Court with "invaluable assistance".

[13] The Trial Judge heard expert evidence with respect to the meaning of the words "flat", "continuous", "elongate" and "planar" as used in claims 1 and 9. These words are not defined in the Patent. Mr. Ravelli drew their meaning from a dictionary which defined "continuous" as "unbroken, uninterrupted". The meaning so attributed was put to Mr. Day in cross-examination. He agreed that the table was "continuous" in this dictionary sense along the longitudinal axis (transcript, vol. II, p. 327, l. 20 to p. 328, l. 7).

[14] The appellants argued before the Trial Judge that the terms "smooth continuous elongate planar" in claim 9 are used to "mean a surface that is flat, planar and smooth for the sliding, shielding and supporting of the flexible foam core and is continuous so that there is no interruption of the motion of the foam and the supporting and shielding occurs throughout the motion of the foam core." The respondent argued that the table must be completely flat, smooth, continuous and planar, and as a result, projections and interruptions would not be tolerated anywhere on the table. The Trial Judge found the appellants' proposed construction to be "too expansive" and the respondent's "overly restrictive". The Trial Judge also noted that the claims of the Patent require the bottom of the coating chamber to be "defined by the surface of the table" and also that while being coated, the flat surface of the core slidingly engages the top surface of the table. She concluded that the claims require an uninterrupted surface of the portion of the table that supports the foam core from the input portion of the table through to and including the exit of the foam core from the coating containment chamber. As she put it at paragraph 48:

I conclude that the "table" construed in a purposive and contextual way is flat, smooth, continuous and planar, as those words are commonly understood, with respect to the portion of the table top that supports the foam core from the input portion of the table through to and including the exit of the foam core from the coating containment chamber. In other words, that portion of the table is uninterrupted. This construction applies equally to claims 1 and 9.

[15] Having so concluded, the Trial Judge proceeded to compare the respondent's device with the invention described in claims 1 and 9 with a view to determining whether that device infringed the Patent. Her conclusion that no infringement had occurred appears in paragraph 53, where she stated:

The significant differences identified in the evidence between the Driangle table and the Canamould table are the dovetail shaped rail placed longitudinally through the centre of the table, the spike belt used in combination with the dovetail to move the mouldings along the table, the trough and the wipers or dams in the midportion of the tabletop, the water wells in the output portion of the table and the further spike belt on the output portion of the table. In my view, the issue of infringement can be determined solely on the basis of the trough and wipers. The bottom surface of the coating containment chamber in the Driangle device is not defined by the top of the table. There is a well or trough underneath. The trough operates in conjunction with two dams or wipers that are placed at the bottom of the coating containment chamber. As the foam core moves through the coating chamber, it moves over the top of the wipers or dams. The foam core is supported by the wipers or dams on its path through the coating chamber and the wipers and trough shield the flat surface of the foam from the coating material. Given the construction of the word "table" contained in paragraph 48, the Driangle table does not infringe an essential element of either claim 1 or claim 9. Since there is no infringement of these claims, there can be no infringement of the dependant claims 2, 3, 6, 10, 11, 14, 15, 16 and 17. Because this finding is dispositive with respect to the issue of infringement, I refrain from expressing any opinion as to whether the dovetail and spike belts are merely "bells and whistles".

ISSUES

[16] To reiterate, the issues in the principal appeal are whether the Trial Judge erred in construing claims 1 and 9 of the Patent and, second, whether she erred in determining that the Patent was not infringed.

ANALYSIS

Principles of construction

[17] Subsection 27(4) of the Patent Act, R.S.C. 1985, c. P-4, as amended, requires that the claims define "distinctly and in explicit terms the subject-matter of the invention for which an exclusive privilege or property is claimed."

[18] As Binnie J. observed in Free World Trust, supra, at paragraph 14, the claims of a patent "are frequently analogized to 'fences' and 'boundaries', giving the 'fields' of the monopoly a comfortable pretense of bright line demarcation." He described the task facing a court in construing a patent in this way, at paragraph 15:

In reality, the "fences" often consist of complex layers of definitions of different elements (or "components" or "features" or "integers") of differing complexity, substitutability and ingenuity. A matrix of descriptive words and phrases defines the monopoly, warns the public and ensnares the infringer. In some instances, the precise elements of the "fence" may be crucial or "essential" to the working of the invention as claimed; in others the inventor may contemplate, and the reader skilled in the art appreciate, that variants could easily be used or substituted without making any material difference to the working of the invention. The interpretative task of the court in claims construction is to separate the one from the other, to distinguish the essential from the inessential, and to give to the "field" framed by the former the legal protection to which the holder of a valid patent is entitled.

[19] It is a basic principle of patent law that the monopoly granted to a patentee be limited to that which is claimed under the patent. To allow the patentee to expand the scope of a claim in order to encompass more than what is claimed would be unfair. Binnie J. provided a useful discussion of this basic principle in Free World Trust, supra at paragraphs 32, 41, 43 and 51:

...the ingenuity of the patent lies not in the identification of a desirable result but in teaching one particular means to achieve it. The claims cannot be stretched to allow the patentee to monopolize anything that achieves the desirable result.

...

The scope of patent protection must not only be fair, it must be reasonably predictable.

...

Predictability is achieved by tying the patentee to its claims; fairness is achieved by interpreting those claims in an informed and purposive way.

...

The words chosen by the inventor will be read in the sense the inventor is presumed to have intended, and in a way that is sympathetic to accomplishment of the inventor's purpose expressed or implicit in the text of the claims. However, if the inventor has misspoken or otherwise created an unnecessary or troublesome limitation in the claims, it is a self-inflicted wound. The public is entitled to rely on the words used provided the words used are interpreted fairly and knowledgeably.

[20] The decisions in Free World Trust, supra, and Whirlpool, supra, rejected the so-called "two-step" approach to patent construction whereby courts first considered whether on a literal construction the allegedly infringing device embodied the patented invention and, if not, whether that device embodied the "pith and marrow" or "substance" of the invention. The single-step or purposive approach was preferred because, as Binnie J. explained in Free World Trust at paragraph 50, "the greater the level of discretion left to courts to peer below the language of the claims in search for 'the spirit of the invention', the less the claims can perform their public notice function, and the greater the resulting level of unwelcome uncertainty and unpredictability." That approach, as enunciated by Lord Diplock in Catnic Components Ltd. v. Hill & Smith Ltd.,[1982] R.P.C. 183 (H.L.), calls for a "purposive construction" of a patent. It was applied by this Court in Eli Lilly & Co. v. O'Hara Manufacturing Ltd. (1989), 26 C.P.R. (3d) 1 (F.C.A.). As Binnie J. explained in Free World Trust, at paragraph 50: "'Purposive construction' does away with the first step of purely literal interpretation but disciplines the scope of 'substantive' claims construction in the interest of fairness to both the patentee and the public."

[21] In Catnic, supra, Lord Diplock articulated the purposive construction approach in the following way, at pages 242-43:

My Lords, a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. "skilled in the art"), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so-called "pith and marrow" of the claim. A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked.

The question, of course, does not arise where the variant would in fact have a material effect upon the way the invention worked. Nor does it arise unless at the date of publication of the specification it would be obvious to the informed reader that this was so. Where it is not obvious, in the light of then-existing knowledge, the reader is entitled to assume that the patentee thought at the time of the specification that he had good reason for limiting his monopoly so strictly and had intended to do so, even though subsequent work by him or others in the field of the invention might show the limitation to have been unnecessary. It is to be answered in the negative only when it would be apparent to any reader skilled in the art that a particular descriptive word or phrase used in a claim cannot have been intended by a patentee, who was also skilled in the art, to exclude minor variants which, to the knowledge of both him and the readers to whom the patent was addressed, could have no material effect upon the way in which the invention worked.

[22] As Binnie J. explained in Whirlpool, supra, at paragraph 45, after quoting the first of the above paragraphs from Catnic, supra, the "key to purposive construction is therefore the identification by the court, with the assistance of the skilled reader, of the particular words or phrases in the claims that describe what the inventor considered to be the 'essential' elements of his invention." Binnie J. added the following at paragraph 48:

In Catnic, as in the earlier case law, the scope of the monopoly remains a function of the written claims but, as before, flexibility and fairness is achieved by differentiating the essential features ("the pith and marrow") from the unessential, based on a knowledgeable reading of the whole of the specification through the eyes of the skilled addressee rather than on the basis of "the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge".

[23] In Free World Trust, supra, at paragraph 55, Binnie J. noted the unfairness that would result from allowing "a patent monopoly to be breached with impunity by a copycat device that simply switched bells and whistles, to escape the literal claims of the patent." However, he went on to explain:

Thus the elements of the invention are identified as either essential elements (where substitution of another element or omission takes the device outside the monopoly), or non-essential elements (where substitution or omission is not necessarily fatal to an allegation of infringement). For an element to be considered non-essential and thus substitutable, it must be shown either (i) that on a purposive construction of the words of the claim it was clearly not intended to be essential, or (ii) that at the date of publication of the patent, the skilled addressees would have appreciated that a particular element could be substituted without affecting the working of the invention, i.e., had the skilled worker at that time been told of both the element specified in the claim and the variant and "asked whether the variant would obviously work in the same way", the answer would be yes:...In this context, I think "work in the same way" should be taken for our purposes as meaning that the variant (or component) would perform substantially the same function in substantially the same way to obtain substantially the same result.

[24] At paragraph 31 of the same case, Binnie J. enumerated several propositions with respect to the construction of patent claims. These include proposition (e), which has particular relevance to the construction issues raised by this appeal. That proposition is further explored by Binnie J. as follows at paragraphs 50, 51, 54, 57 and 60:

(e) The Claims Language Will, on a Purposive Construction, Show that Some Elements of the Claimed Invention Are Essential While Others Are Non-essential. This Allocation Will Be Made in the Following Manner:

(i) On the Basis of the Common Knowledge of the Worker Skilled in the Art to Which the Patent Relates

...

(ii) What Constitutes an "Essential" Element Is to Be Interpreted in Light of the Knowledge of the Art at the Date of the Publication of the Patent Specification

...

(iii) Regard Is to Be Had to Whether It Was Obvious at the Time the Patent Was Published that Substitution of a Different Variant Would Make a Difference to the Way in Which the Invention Works

...

(iv) According to the Intent of the Inventor Expressed or Inferred from the Claims of the Patent

...

(v) Based on the Patent Specification Itself Without Resort to Extrinsic Evidence

[25] At paragraph 55 of Free World Trust supra, in discussing whether the substitutability of an element would be obvious to a skilled reader, Binnie J. referred to a "series of three concise questions" that were drawn by Hoffman J. (as he then was) in Improver Corp. v. Remington Consumer Products Limited, [1990] F.S.R. 181 from Lord Diplock's analysis in Catnic, supra. Binnie J. added that these questions, although not exhaustive, "encapsulate the heart of Lord Diplock's analysis". The questions posed by Hoffman J., as they appear at page 189, are:

(1) Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no -

(2) Would this (i.e. that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art. If no, the variant is outside the claim. If yes -

(3) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention. If yes, the variant is outside the claim.

Hoffman J. added the following perspective on these questions at page 190:

It is worth noticing that Lord Diplock's first two questions, although they cannot sensibly be answered without reference to the patent, do not primarily involve questions of construction: whether the variant would make a material difference to the way the invention worked and whether this would have been obvious to the skilled reader are questions of fact. The answers are used to provide the factual background against which the specification must be construed. It is the third question which raises the question of construction and Lord Diplock's formulation makes it clear that on this question the answers to the first two questions are not conclusive. Even a purposive construction of the language of the patent may lead to the conclusion that although the variant made no material difference and this would have been obvious at the time, the patentee for some reason was confining his claim to the primary meaning and excluding the variant. If this were not the case, there would be no point in asking the third question at all.

[26] In construing the claims of a patent, regard may be had to the whole of the specification including the drawings and the disclosure: [1937] S.C.R. 251">Smith Incubator Company v. Seiling, [1937] S.C.R. 251; [1976] 1 S.C.R. 555">Burton Parsons Chemicals, Inc. v. Hewlett-Packard (Canada) Ltd. [1976] 1 S.C.R. 555; Whirlpool, supra, at paragraph 52. However, as has been held "the Claim must state, either by express words or by plain reference, what is the invention for which protection is demanded": Ingersoll Sergeant Drill Company v. Consolidated Pneumatic Tool Company Ld. (1908), 25 R.P.C. 61 (H.L.) at page 83; Electric & Musical Industries Ld. v. Lissen Ld. (1939), 56 R.P.C. 23 (H.L.). Moreover, as Binnie J. stated in Free World Trust, supra, at paragraph 51, the "involvement in claims construction of the skilled addressee holds out to the patentee the comfort that the claims will be read in light of the knowledge provided to the court by expert evidence on the technical meaning of the terms and concepts used in the claims."

[27] The onus is on the patentee to show that, to a skilled reader, a claimed feature of the invention was obviously substitutable. This was explained by Binnie J. who wrote at paragraph 57 of Free World Trust, supra:

In my view, Catnic, supra, and O'Hara, supra, were correct to put the onus on the patentee to establish known and obvious substitutability at the date of publication of the patent. If the patentee fails to discharge that onus, the descriptive word or expression in the claim is to be considered essential unless the context of the claims language otherwise dictates.

[28] The task of a trial judge is to determine, on a purposive construction of the patent, which of the elements of the claimed invention were crucial or "essential" and which ones were not. Having properly stated the principles of claim construction at paragraphs 30 through 36 of her decision, it is clear that the Trial Judge appreciated the task that was before her. She was to purposively construe the Patent through the eyes of a skilled reader as of the date of publication. Assisted by the expert evidence, the context to the claims provided by the disclosure and figures, and the purposes served by the top surface of the table under the Patent, it was open to the Trial Judge to adopt a construction of the claims that was different from that put forward by the parties (Whirlpool, supra at paragraph 61).

Construction

[29] The Trial Judge purposively construed claims 1 and 9 and concluded that it was essential that an area of the top surface of the table be "uninterrupted". She defined that area as "the portion of the table top that supports the foam core from the input portion of the table through to and including the exit of the foam core from the coating containment chamber". That area clearly includes the top surface of the table in the pathway of the foam core located within the coating containment chamber.

[30] The appellants contend that the Trial Judge erred in construing the claims. They raise two points in this connection. The first is that the patentee clearly indicated by the language of the Patent an intention to allow "interruptions" to the top surface of the table. The second is that it would have been obvious to a skilled reader on the date of publication of the Patent that contact with the top surface of the table was necessary only at the outside edges of the foam core to achieve the dual purpose of supporting and shielding required under the Patent. These points will be addressed in turn.

[31] With respect to the first point, the appellants rely on a passage at page 9 of the disclosure which reads:

Outfeed conveyors...are optionally provided to guide and pull the moulding core through the chamber, but of course the contact between outfeed conveyors and finished surface must be limited to hardened or non-coated areas. For example, the output conveyors...may be surface mounted flush with the table...top to contact only the flat surface of the moulding core.

[32] They argue from this that the patentee contemplated "interruptions" in the top surface of the table across the width of the foam core. As well, the appellants argue that since claim 9 calls for an "alignment means" to be located on the table means, and since the figures of the Patent show and the disclosure describes belt drives, alignment pins and a coating containment chamber located on the top surface of the table, the patentee has expressed a clear intention to allow interruptions in the top surface of the table. They argue that the "claims do not identify any particular portion of the table as being 'uninterrupted' or continuous" and, as a result, the Trial Judge erred by adopting a construction that is not suggested by the language of the claims. The respondent counters this argument in part by maintaining that reliance on the passage from the disclosure is impermissible because it would have the effect of expanding the scope of the invention as defined by the claims.

[33] It would seem, however, that the construction adopted by the Trial Judge is wholly consistent with the passage relied upon by the appellants. Although the disclosure may suggest that interruptions may be tolerated in the output portion of the table, the Trial Judge did not find it essential that the top surface of the table be continuous in that area. Furthermore, neither the belt drives, nor the alignment pins or the walls of the coating containment chamber are located in the pathway of the foam core within the chamber. Consequently, the appellants' argument on this point is not persuasive.

[34] With respect to the second point, the appellants argue that it was obvious to a skilled reader on the date of publication of the Patent that contact of the foam core with the top surface of the table was necessary only at the outside edges of the foam core to achieve the supporting and shielding as required under the Patent. They argue, therefore, that the Trial Judge did not have sufficient regard to the purpose of the Patent which is to combine a driving means with an alignment means to consistently move a foam core through a stationary coating containment chamber having removable dies. According to the appellants, claim 9 of the Patent describes the top surface of the table means in the following functional manner:

table means, having a smooth continuous elongate planar top surface...for supporting a flexible foam moulding core on said flat surface thereof as the core slides along the longitudinal axis; and

the flat surface of the core slidingly engaging the top surface of the table thus being shielded from coating material.

[35] In addressing this point it is necessary to have regard to the specification as a whole and to the expert evidence. It is to be noted that at line 21 of page 8 of the Patent, the patentee wrote: "In both methods of producing the coated moulding, the flat surface of the moulding is shielded or covered so that it is not coated with the coating material. This creates a finished product having a coated decorative surface, and a non-coated flat surface." In addition, the patentee discusses Figure 3 of the Patent at the bottom of page 8 and the top of page 9, and states that the "flat surface of [the] moulding core...is in contact with the top surface of [the] table". At the top of page 10, the patentee states: "A variety of methods of applying the coating material to the surface of the moulding can be used including spraying or pouring." Lines 10 through 15 on the same page read: "Flat surface...is not coated with the coating material because it is shielded by close contact with the top surface of [the] table... . In some cases it has been found necessary to use rollers to press down on the foam core...to maintain contact with the table top, however where input conveyors...have a rubber surface, the friction with the conveyor holds the foam core down." At line 15 of page 12, the patentee writes that as "best shown in Figure 3, the device preferably includes separate input and output conveyors..., with independent drives. The surface of the conveyor belts...are rubber or other resilient frictional material to hold the core...against the flat table...surface and drive the core through the coating chamber".

[36] In his report dated October 25, 2002, Mr. Day commented, inter alia, on the phrase in claim 1(c), "sliding the foam core on the top surface of the table forwardly along the axis through a coating containment chamber, the coating chamber: having a bottom surface defined by the top surface of the table, thus being shielded from coating material". Mr. Day wrote, at page 14:

...the foam core would be placed upon the input portion of the table, slid along the surface of the table from the input side, through the chamber to the output side. Since the foam core is flexible to some degree, the continuity of the tabletop from the input to the output portions provides a continuous support for the foam core to slide along. Therefore, the table extends from each side of the chamber, starting from the input side of the chamber, running through the chamber as well, and extending to the output side of the chamber.

Mr. Day went on in his report to comment on a further phrase in claim 1(d), "applying a liquid coating material to the decorative surface of the moulding core as the foam core slides through the coating chamber, the flat surface of the core slidingly engaging the top surface of the table thus being shielded from coating material." He stated at page 15:

This specifically describes that the coating is to be applied only to the decorative profile of the foam core, and the flat surface moves along the table maintaining contact, thereby preventing the coating from being applied to the flat surface.

He testified to the same general effect at trial (transcript, vol. I, p. 196, l. 1 to p. 199, l. 22).

[37] The evidence does not demonstrate that it was obvious to a skilled addressee reading the Patent on the date of publication that contact of the foam core with the top surface of the table was necessary only at the outside edges of the foam core. As the disclosure illustrates and as Mr. Day opined, "the continuity of the tabletop from the input to the output portions provides continuous support for the foam core to slide along" and "the flat surface moves along the table maintaining contact, thereby preventing the coating material from being applied to the flat surface." In short, the appellants' argument on this aspect of the appeal is not convincing.

[38] In summary, the Patent teaches that an essential element of the invention is a table that is "continuous" (i.e. uninterrupted) across the width of the foam core from the input portion through to and including the exit of the core from the coating containment chamber. Nothing in the context of the claims or in the expert evidence indicates that the patentee was aware of or intended to claim variants of that element. Furthermore, the essential nature of that element is supported by the purposes of the table as specified under the Patent. It may be that the patentee could have done without a "continuous" table as that word was construed by the Trial Judge or that the invention would have worked just as well without having the bottom surface of the coating containment chamber "defined by the top surface of the table." However, the language of the claims cannot be ignored. The care with which such language is crafted has been stressed by courts, most recently by the Supreme Court of Canada in Free World Trust, supra, at paragraph 51, where Binnie J. stated that "if the inventor has misspoken or otherwise created an unnecessary or troublesome limitation in the claims, it is a self-inflicted wound." The appellants have not shown that the Trial Judge incorrectly construed claims 1 and 9 of the Patent.

Infringement

[39] If a method or device comprises "all of the essential elements" of a patented invention there is infringement, but there is no infringement "if an essential element is different or omitted" (Free World Trust supra, at paragraphs 68, 31).

[40] The Trial Judge did not err in finding that the issue of infringement could be determined solely on the basis that the respondent's device had a top surface that was interrupted by a trough and dams or wipers. By incorporating a trough and dams or wipers into its device, the respondent omitted an essential element of both claims 1 and 9, i.e. a table top that was "continuous". Consequently, the Trial Judge found that there was no infringement of those claims or of any of the dependent claims, and rightly dismissed the action.

[41] Although the foregoing is sufficient to dispose of the principal appeal, it is noted that the Trial Judge went further to find that the respondent's method and device differed in at least three ways from the invention claimed under the Patent. Firstly, she found that in the respondent's device the foam core is supported by wipers or dams, whereas under claim 9 the foam core is supported by the top surface of the table. Secondly, she found that the flat surface of the foam core is shielded by a trough and wipers or dams, whereas under claims 1 and 9 shielding is provided by the top surface of the table. Thirdly, the Trial Judge noted that the bottom surface of the coating containment chamber of the respondent's device is "not defined by the top of the table. There is a well or trough underneath." In contrast, claims 1 and 9 of the Patent require that the bottom surface of the chamber be "defined by the top surface of the table." These findings add force to the Trial Judge's conclusion that infringement had not occurred. It follows that the Trial Judge did not commit a palpable and overriding error in coming to that conclusion.

[42] In view of the above conclusion on the issue of infringement, this Court should refrain from expressing an opinion as to whether the dovetail rail and spike belt have any effect on the determination of infringement. Also, given the Trial Judge's finding on infringement, it was not necessary for her to determine whether Canamould is a licensee that may "claim under" the Patent pursuant to subsection 55(1) of the Act. For the same reason, it is not necessary for this Court to address that issue.

[43] For the foregoing reasons, the appeals should be dismissed with costs.

"A.J. STONE"

J.A.

"I agree

J. Edgar Sexton J.A."

"I agree

Sharlow J.A."

FEDERAL COURT OF APPEAL

NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET: A-162-03, A-178-03

STYLE OF CAUSE: CANAMOULD EXTRUSIONS LTD. ET AL

Appellant

and

DRIANGLE INC.

Respondent

PLACE OF HEARING: TORONTO, ONTARIO

DATE OF HEARING: DECEMBER 17, 2003

REASONS FOR JUDGMENT: STONE J.A

CONCURRED IN BY: SEXTON J.A.

SHARLOW J.A.

DATED: FEBRUARY 12, 2004

APPEARANCES: Mr. Bruce Stratton FOR THE APPELLANT Mr. Michael Crinson

Mr. Trent Horne

Mr. Stephen Lane FOR THE RESPONDENT

SOLICITORS OF RECORD: Bruce Stratton and Michael Crinson

Toronto, Ont.

FOR THE APPELLANT

Trent Horne and Stephen Lane

Toronto, Ont.

FOR THE RESPONDENT

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Canamould Extrusions Ltd. v. Driangle Inc., 2004 FCA 63

Citations2004 FCA 63

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2004 FCA 63