Supreme Court of Canada
Metalliflex
Limited v. Rodi & Wienenberger Aktiengesellschaft, [1961] S.C.R. 117
Date:
1960-12-19
Metalliflex Limited (Defendant) Appellant;
and
Rodi & Wienenberger Aktiengesellschaft (Plaintiff)
Respondent.
1960: April 27, 28, 29; 1960: December 19.
Present: Kerwin C.J. and Taschereau, Fauteux, Abbott and
Judson JJ.
ON APPEAL FROM THE COURT OF QUEEN'S BENCH, APPEAL SIDE,
PROVINCE OF QUEBEC.
Patents—Alleged infringement—Patent claims—Whether
specifications should also be considered—Injunction—Claims for damages.
The plaintiff brought action for an injunction and damages for
an alleged infringement by the defendant of a patent relating to
"extensible chain bands" for use as wrist-watch straps or bracelets,
consisting of three parts: sleeves, U-shaped connecting bows and leaf springs.
The embodiments of the invention were defined in 3 claims. The defendant
pleaded that as the claims omitted the holding connection, the bracelet was an
inoperative device, and alternatively, that there had been no infringement. The
trial judge found that claims 1 and 2 were invalid
[Page 118]
for lack of utility and that claim 3 was valid but had not
been infringed. The Court of Appeal reversed this judgment as to claims 1 and
2, the plaintiff having abandoned its demand based on claim 3. The defendant
appealed to this Court.
Held: Claims 1 and 2 of the patent were valid and were
infringed by the defendant.
Claims must be construed with reference to the entire
specifications, but the patentee is not allowed to expand his monopoly
specifically expressed in the claims by borrowing from other parts of the
specifications. However, in the present case, the plaintiff was not seeking to
enlarge or expand its monopoly by reference to the specifications, but referred
to them to explain the obvious. The monopoly consisted of three elements, and
the particular means by which the parts were to be held together was
immaterial. The specifications proposed the use of a means, but it was not
essential that it should be that particular one.
As was held by the Court of Appeal, the device was operative
and useful and the claims were, therefore, valid. There was in the invention,
sufficient creative or inventive character and sufficient novelty to constitute
the subject-matter of the patent, and it was infringed by the defendant.
APPEAL from a judgment of the Court of Queen's Bench,
Appeal Side, Province of Quebec, reversing a judgment of Ralston J.
Appeal dismissed.
G. F. Henderson, Q.C., J. R. Hoffman and D.
Watson, for the defendant, appellant.
Christopher Robinson, Q.C., and S.
Godinsky, for the plaintiff, respondent.
The judgment of the Court was delivered by
Taschereau J.:—This
is an appeal from the judgment of the Court of Queen's Bench of the Province of
Quebec, reversing a judgment of the Superior
Court rendered by Mr. Justice Ralston.
In its statement of claim the plaintiff-respondent alleges
that it is the owner of a Canadian patent bearing no. 505,676, dated September
7, 1954, and that as such, had the exclusive rights, privilege and liberty of
making, constructing, using, and selling to others to be used in Canada, an
invention entitled "EXTENSIBLE CHAIN BANDS", and that the
appellant-defendant has infringed its patent, by manufacturing and selling to
others "Extensible Chain Bands" similar to those protected by its
patent.
[Page 119]
The appellant-defendant pleaded that the patent of the
respondent is invalid, and in the alternative, alleged that if the patent were
valid, which is denied, the extensible chain bands which it manufactured and
sold to the public are distinctive in all relevant elements both as to
structure and function, from those designated in the limitative provisions of
the three claims set forth in respondent's patent, hereafter recited at length,
and do not constitute in any way an infringement of the distinctive features of
the latter.
The learned trial judge dismissed the plaintiff's action
with costs, cancelled and annulled the interlocutory injunction previously
granted by Associate Chief Justice W.B. Scott. Mr. Justice Ralston held that
claims nos. 1 and 2, although not invalid for lack of invention and of novelty,
were invalid for lack of utility, that consequently there could be no
infringement thereof, and that claim no. 3, although valid, had not been
infringed.
The Court of Queen's Bench allowed the appeal, declared that
as between the parties claims nos. 1 and 2 of the Canadian patent no. 505,676
granted to the respondent were valid, and that they had been infringed by the
appellant. The Court of Queen's Bench did not deal with respondent's demands
based on claim no. 3, because they had been abandoned. The Court of Queen's
Bench further ordered that the interlocutory injunction granted by the Superior
Court of Montreal on December 13, 1956, be declared permanent, and that the
defendant-appellant cease to manufacture, produce, import, buy or sell
extensible chain bands similar to and in violation of plaintiff's patent and in
particular, the "Bandmaster" or "Metalliflex" type of
bracelets. The Court also condemned the present appellant to pay to the
plaintiff the sum of $551.05 as damages with costs.
The present action leading to this appeal, was instituted by
the respondent in December 1956, and deals with patent no. 505,676 issued to
the respondent on September 7, 1954.
After the issues were joined, the appellant filed a
supplementary plea on September 30, 1957, alleging that in August 1957, the
Commissioner of Patents issued in favour of the present appellant a patent
bearing no. 545,184 which
[Page 120]
granted to the appellant the exclusive right, privilege and
liberty of making, constructing, using and selling to others in Canada, its
invention referred to in the patent.
When the present action was instituted, the
plaintiff-respondent also sued Watchstraps Inc. for infringement of its patent
(no. 505,676) and claimed $27,795 in damages. It was then agreed that the
evidence in one case would be evidence in the other. The trial judge dismissed
the action against Metalliflex Ltd., but maintained it in part against
Watchstraps Inc. There was an appeal to the Court of Queen's Bench in both
cases, but the Watchstraps case did not proceed, and judgment was delivered
only in the present case. As I have stated, the Court allowed the appeal,
ordered that the interlocutory injunction granted by the Superior Court be
declared permanent, and that the defendant Metalliflex cease to manufacture,
produce, import, buy or sell "extensible chain bands" similar to and
in violation of Rodi's patent and, in particular, the "Bandmaster" or
"Metalliflex" type of bracelets. This Court is therefore not
concerned with the case against Watchstraps Inc.
To summarize the course of this litigation: the Court of
Queen's Bench reached the conclusion that claims 1 and 2 of respondent's patent
were valid, not only as regards invention and novelty, but also as regards
utility, and that Rodi's patent had been infringed. As to claim no. 3, it was
held valid by the trial judge, who also came to the conclusion that it had not
been infringed. In the Court of Queen's Bench, the appellant Rodi (now the
respondent) abandoned the demand based on claim no. 3, and restricted its
argument to claims 1 and 2, which it contended to be valid, and infringed by
the appellant Metalliflex.
It might be useful to state the embodiments of the invention
in which an exclusive property or privilege was claimed. They are
defined as follows:
Claim No. 1. An extensible self-retracting chain
band, comprising hollow links constituted by tubular sleeves arranged transversely
to the longitudinal direction of the chain band in two series, pairs of
connecting links constituted by U-shaped connecting bows arranged with one limb
of each pair of bows in engagement with a hollow link of one series and the
other limbs of said pair of bows in engagement with two links of the other
series so as to connect the hollow links together in an articulated manner in
two rows with the hollow links of one row of the retracted chain band staggered
in the longitudinal direction of the chain band with respect to those of
[Page 121]
the other row, the limbs of said connecting bows having a
greater width than their thickness and co-operating with spring means arranged
to hold the hollow links in the said relationship while permitting said links
to be pulled apart to extend the chain band, said spring means comprising a
leaf spring within each hollow link interposed between one wall thereof and the
limbs of the connecting bows in engagement with the link so as to force the
said limbs against the opposite wall of the link.
Claim No. 2. An extensible self-retracting chain
band, comprising hollow links constituted by tubular sleeves arranged
transversely to the longitudinal direction of the chain band in two series,
pairs of connecting links constituted by U-shaped connecting bows the limbs of
which are flat on the inside, said connecting bows being arranged with one limb
of each pair of bows in engagement with a hollow link of one series and the
other limbs of said pair of bows in engagement with two links of the other
series so as to connect the hollow links together in an articulated manner in
two rows with the hollow links of one row of the retracted chain band staggered
in the longitudinal direction of the chain band with respect to those of the other
row, and spring means arranged to hold the hollow links in the said
relationship while permitting said links to be pulled apart to extend the chain
band, said spring means comprising a leaf spring within each hollow link
interposed between one wall thereof and the inside of the limbs of the
connecting bows in engagement with the link so as to force the said limbs
against the opposite wall of the link.
Claim No. 3. An extensible self-retracting chain
band, comprising hollow inks constituted by tubular sleeves arranged
transversely to the longitudinal direction, of the chain band in two series,
pairs of connecting links constituted by U-shaped connecting bows on both sides
of the chain band and arranged with one limb of each pair of bows in engagement
with a hollow link of one series and the other limbs of each pair of bows in
engagement with two links of the other series so as to connect the hollow links
together in an articulated manner in two rows with the hollow links of one row
of the retracted chain band staggered in the longitudinal direction of the
chain band with respect to those of the other row, the limbs of said connecting
bows having a greater width than their thickness and having transverse grooves
on the inside, and spring means arranged to hold the hollow links in the said
relationship while permitting said links to be pulled apart to extend the chain
band, said spring means comprising a bent spring plate inserted in each hollow
link and extending lengthwise thereof, said spring plate having bent up ends
which engage in the transverse grooves in the limbs of the connecting bows on
the respective sides of the chain band.
The construction of this bracelet is simple. It consists of
three parts which are sleeves, U-shaped connecting bows and leaf springs, the
arrangement of which provides a relatively cheap and simple bracelet. It can be
more easily adjusted in length for different wrists than the other bracelets.
It is said on behalf of the appellant that although claims 1 and 2 cover a
combination, the elements of which are links, bows and springs, they omit the
holding connection, with the consequence that the bracelet is an inoperative
device, which must necessarily fall apart, and
[Page 122]
that the claims should therefore be held invalid as lacking
utility. The respondent's contention is that claims 1 and 2 should be construed
so that something to hold the parts in their specified relationship be included
as part of the normal routine of a person setting out to construct the
bracelet. It has been also argued, and the Court of Queen's Bench has adopted
this view, that it is not sufficient to consider only the wording of the
claims, but also the whole specifications, which have been described as the
"Dictionary" of the Claims.
The claims, of course, must be construed with reference to
the entire specifications, and the latter may therefore be considered in order
to assist in apprehending and construing a claim, but the patentee may not be
allowed to expand his monopoly specifically expressed in the claims "by
borrowing this or that gloss from other parts of the specifications".
Vide: Ingersoll Sergeant Drill Co. v. Consolidated Pneumatic Tool Co.
But here, the respondent does not seek to enlarge or expand
its monopoly by reference to the specifications, but refers to them to explain
the obvious. The monopoly applied for is the combination of three elements, and
the particular means by which the parts are to be held together is immaterial.
The appellant does not claim a holding means. This, of course, may be effected
in any practical way. In the specifications, a means proposed to be used by the
respondent was disclosed, but it is not essential that it should be that
particular one. It is beyond question that the parts have to be held together,
but the means to attain that purpose and hold together the combination, which
is the invention claimed in 1 and 2, is not material.
Thus, in The King v. Uhlemann, it
was held that the claims to a spectacle construction were valid, although it
was not specified how these straps "embracing" the edges of the
lenses would maintain the embrace. Vide also: Canadian Tire v. Samson.
In this latter case, the claims spoke of blades carried by a hub without
specifying any means to retain them in position during operation. In both cases
the claims were held to be valid.
[Page 123]
I have, therefore, come to the conclusion, as did Mr.
Justice Rinfret of the Court of Queen's Bench with whom Pratte and Owen JJ.
concurred, that the device, which is the subject-matter of this case, is
operative and useful and that, therefore, the claims are valid.
I also agree with the Court of Queen's Bench that there is
in the invention, sufficient creative or inventive character and sufficient
novelty to constitute the subject-matter of the patent, and that it has been
infringed by the appellant.
The appeal should be dismissed with costs.
Appeal dismissed with costs.
Attorney for the defendant, appellant: Kaufman,
Hoffman & Respitz, Montreal.
Attorneys for the plaintiff, respondent:
Greenblatt, Godinsky & Kingstone, Montreal.
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