Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd., [1981] 1 SCR 504

SUPREME COURT OF CANADA

Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd., [1981] 1 S.C.R. 504

Date: 1981-03-19

Consolboard Inc. (Plaintiff) Appellant; and

MacMillan Bloedel (Saskatchewan) Limited (Defendant) Respondent.

1980: April 28, 29; 1981: March 19.

Present: Laskin C.J. and Martland, Ritchie, Dickson and Estey JJ.

ON APPEAL FROM THE FEDERAL COURT OF APPEAL

Patents — Infringement — Validity — Specification — Anticipation — Novelty — Double patenting and required division of original application — Patent Act, R.S.C. 1970, c. P-4, ss. 2, 28(1)(a),(b),(c), 36(1),(2), 38, 45(1)(a),(b), 63(1)(b).

Appellant, the owner of two Canadian letters patent, alleged infringement by respondent. The patents, one for "waferboard" and the other for "wafers", concerned the production of moulded products, especially fibre board, from fibrous elements in flakes or wafers derived from wood. Although a single application had originally been submitted, the application dealing with "waferboard" was severed from the original application which later issued in respect of "wafers" because of a request by the Commissioner of Patents. Respondent, after acquiring a plant that had produced a waferboard product under licence but not the licence, continued to produce the product without a licence. Respondent denied any allegation of infringement and challenged the validity of the patents.

At trial, most claims were upheld and some found to be infringed. The Court of Appeal set aside that judgment for non-compliance with s. 36(1) of the Patent Act and dismissed the cross-appeal seeking to establish the validity of the claims that were struck down. Both courts denied appellant an accounting of profits.

Respondent contended that the patents were invalid for a number of reasons. Firstly, the specifications in the patents in suit failed to comply with s. 36(1) of the Patent Act. Further, the invention allegedly had been on sale in Canada for more than two years before the filing of the application contrary to s. 28(1)(a). Then, too, contrary to ss. 28(1)(a) and 63(1)(b), the invention allegedly had been previously known or used by inventors filing an earlier application for a patent that was co-pending with the application of the patents in suit. These patents also allegedly lacked novelty or inventive

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ingenuity over prior art. It also was contended that the "wafer" patent was the same invention as the "waferboard" patent. Respondent maintained that its product and process did not infringe the patents in suit and argued that appellant had failed to prove title to the patents.

Held: The appeal should be allowed.

A number of issues were decided in the course of the hearing. Consolboard, firstly, proved title to the two patents in suit. These patents were not invalid because of the invention's being on sale in Canada for more than two years before the filing of the application, contrary to s. 28(1)(a) of the Patent Act. In addition, the trial judge properly refused to grant an accounting of profits as an alternative to damages on the main ground that appellant did not commence litigation until 1974. Finally, the question of infringement was one of fact and respondent did not show any substantial ground on which the trial judge's finding of infringement should be overturned.

The patents in issue were not invalid for non-compliance with s. 36 of the Patent Act. What s. 36 called for in the specification (which included both the "disclosure" and the "claims") was a description of the invention and the method of producing or reconstructing it, coupled with a claim or claims stating those novel features in which the applicant wanted an exclusive right. The specifications had to define the precise and exact extent of the exclusive property and privilege claimed. Section 36(1) did not exact different standards of disclosure for different parts of the section; indeed, it was contrary to established law to do so. The only test was whether the specification adequately described the invention for a person skilled in the art, though in the case of patents of a highly technical and scientific nature, that person would be someone possessing a high degree of expert scientific knowledge and skill in the particular branch of the science to which the patent related. Section 36(1) did not require a distinct indication of the real utility of the invention in question, and its concluding words did not require the inventor to describe in his disclosure or claims how the invention was new or useful. The inventor was required to describe what it was he claimed to have invented, but not to extol its effect or advantage if he described the invention so as to produce it. The requirement in s. 36(1) that the specification disclose the "use" to which the inventor conceived the application could be put related to disclosure and was independent of the requirement in s. 2 that

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an invention be new and "useful" as a condition precedent to an invention.

The patents in suit did not describe substantially the same invention as was described in an earlier patent held by the inventor and a co-inventor. Section 28, which permitted an individual a patent for an invention if that invention was not "known or used by any other person before he invented it", was not violated.

The applicant did not fail to claim "distinctly" how the inventions in the patents in suit differed from the earlier and similar patent. The true test was simply that "a man had to distinguish what was old from what was new by his claim but he did not have to distinguish what was old from what was new by his claim". If the specification described an invention that was in fact new, and if the description was sufficient for an ordinary workman skilled in the art to understand it, the patent specification was valid.

The allegation that the patents in suit were invalid because of anticipation and lack of inventive ingenuity raised a factual issue involving assessment of the common knowledge and prior art existing at the date of the invention. The claims in suit did more than merely read on the disclosure of the prior documents. Such disclosure did not contain clear instructions to do or make something that would infringe the patents in suit if carried out after the grant.

The rule against double-patenting, that only one patent could issue for a given invention, was not violated. The appellant had originally filed a single patent application but had been required to divide the application by the Commissioner of Patents. A patentee was not to be prejudiced by enforced divisional applications.

The re-examination of the evidence, as required by appellant's submission that certain claims in a patent were valid contrary to the trial judge's findings, was not a proper appellate function.

Baldwin International Radio Company of Canada, Limited v. Western Electric Company Incorporated, and Northern Electric Company, Limited, [1934] S.C.R. 94; Noranda Mines Limited v. Minerals Separation North American Corporation, [1950] S.C.R. 36 reversing [1947] Ex. C.R. 306; Western Electric Company, Incorporated, and Northern Electric Company v. Baldwin International Radio of Canada, [1934] S.C.R. 570;

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Hinks & Son v. Safety Lighting Company (1876), 4 Ch. D. 607; Sandoz Patents Limited v. Gilcross Limited, formerly Jules R. Gilbert Limited, [1974] S.C.R. 1336; Burton Parsons Chemicals, Inc. et al. v. Hewlett-Packard (Canada) Ltd. et al., [1976] 1 S.C.R. 555; Monsanto Company v. Commissioner of Patents, [1979] 2 S.C.R. 1108; Tubes, Ld. v. Perfecta Seamless Steel Tube Company, Ld. (1902), 20 R.P.C. 77; Rodi & Wienenberger A.G. v. Metalliflex Limited (1959), 19 Fox Pat. C. 49; Unifloc Reagents, Ld. v. Newstead Colliery. Ld. (1943), 60 R.P.C. 165; R. v. American Optical Company et al. (1950), 11 Fox Pat. C. 62; Foxwell v. Bostock and Others (1864), 4 De G.J. & S. 298; 46 E.R. 934; British United Shoe Machinery Company Ld. v. A. Fussell & Sons Ld. (1908), 25 R.P.C. 631; Canadian General Electric Co., Ld. v. Fada Radio Ld. (1930), 47 R.P.C. 69; R. v. Uhlemann Optical Company (1949), 10 Fox Pat. C. 24 affirmed [1952] 1 S.C.R. 143; Lovell Manufacturing Company et al. v. Beatty Bros. Limited (1962), 23 Fox Pat. C. 112; Lightning Fastener Company Limited v. Colonial Fastener Company, Limited et al., [1933] S.C.R. 377; General Tire and Rubber Company v. Firestone Tyre and Rubber Company Limited and Others, [1972] R.P.C. 457; Xerox of Canada Ltd. v. IBM Canada Ltd. (1977), 33 C.P.R. (2d) 24 (F.C.C.); Commissioner of Patents v. Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning, [1964] S.C.R. 49; J. R. Short Milling Company (Canada) Limited v. George Weston Bread and Cakes Limited et al., [1941] Ex. C.R. 69 affirmed [1942] S.C.R. 187, referred to.

APPEAL from a judgment of the Federal Court of Appeal[1], allowing an appeal from a judgment finding most patent claims valid and infringement of some but dismissing cross-appeal seeking both the establishment of the claims ruled invalid and an accounting of profits. Appeal allowed.

G. Alexander Macklin and Bruce E. Morgan, for the appellant.

D. F. Sim, Q.C., and K. D. McKay, for the respondent.

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The judgment of the Court was delivered by

DICKSON J.—The appellant, Consolboard Inc. is the owner of Canadian Letters Patent 565,618 for "waferboard" and Canadian Letters Patent 569,813 for "wafers". Consolboard alleges that the respondent, MacMillan Bloedel (Saskatchewan) Limited, has infringed the patents. In reply, the respondent challenges the validity of the patents and denies the allegation of infringement.

Both inventions are concerned with the production of moulded products, particularly fibre board and the like, from fibrous elements in the form of flakes or wafers. These flakes and wafers are derived from wood including wood waste from the lumber industry. The strength of dense fibre board, known as hardboard, is determined primarily by the intrinsic strength of the individual fibres and fibrous elements of which it is composed. The process by which waferboard is made is complex and technical. In simple terms, however, it may be said that the product is usually produced by preparing what is known as a "felt" from the fibres, adding a binder of resin and consolidating the felt by the application of heat and substantial pressure. Strong lateral adhesive forces are thus developed between the fibrous elements.

The wafer patent speaks of "cross-cut" fibrous elements, formed by cutting woody materials across the grain, as distinguished from planer action, so that the grain is parallel to and extends along the length of the wafer. An object of the invention is to preserve the intrinsic strength of the fibres. In planer shavings the fibre bundles are frequently damaged or broken; in the wafers the fibre bundles are preserved substantially undamaged. They are smooth, have tapered ends, and good board-making properties, requiring very little added binder. Resin is an expensive commodity and economy in its use is highly desirable. The wafers have a thickness within the range of 0.002-0.065 inch and a length at least ten times the thickness but less than five inches.

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The waferboard patent provides for a plurality of such wafers, the wafers being interfelted and aligned with the broad faces lying substantially in the same plane. A thermosetting resinous binder integrates the wafers into a composite structure. Flakes or wafers having ends tapered in thickness, according to the patent, give a stronger and considerably smoother surfaced board than do flakes or wafers having blunt ends. Tapering of the ends permits a thicker flake or wafer to be used than if the ends were not tapered. In consequence, the specific surface of the fibrous material is reduced and, equally, the quantity of resinous binder necessary to make a board having a required strength. The finished product is a strong and relatively inexpensive board, for interior or exterior use. It has largely supplanted the more expensive "plywood" as a sheeting product.

Dr. James d'A. Clark, the inventor, is a scientist and well-known expert in the pulp and paper industry. He filed in Canada a single patent application on June 25, 1953. Pursuant to a requirement by the Commissioner of Patents, acting under s. 38 of the Patent Act, R.S.C. 1970, c. P-4, the application for Canadian Patent 565,618 (waferboard) was divided from the original application which issued as Canadian Patent 569,813 (wafer).

I

The respondent, MacMillan Bloedel (Saskatchewan) Limited manufactures waferboard at its plant in Hudson Bay, Saskatchewan, and sells its products under the trademark Aspenite. The plant was constructed about twenty years ago by a Saskatchewan company, Wizewood Ltd. Wizewood manufactured waferboard under licence from Changewood Corporation, a company which had obtained ownership of the two patents in suit from Dr. Clark. Dr. Clark assisted in the start-up of the Wizewood plant. The plant was operated by Wizewood from 1961 to 1965 and royalties were paid pursuant to the licensing agreement. Wizewood, however, encountered financial difficulties

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following a serious fire and management of the company was taken over by a creditor, the Saskatchewan government.

Later, the assets of Wizewood, not including the licence, were sold to MacMillan Bloedel in 1965. Between 1965 and the commencement of this action in 1974, representatives of Changewood and its successor, Consolboard, attempted, without success, to have the respondent company or its parent company, MacMillan Bloedel Limited, acknowledge an obligation for the payment of royalties. The respondent continued to produce waferboard at its plant in Saskatchewan. It took the position, and has continued to take the position, that it has not infringed the patents and, in any event, the patents are invalid.

Pursuant to an order of the Federal Court the action for infringement proceeded to trial without any evidence as to the extent of the alleged infringement. The question as to damages flowing from alleged infringement, and as to profits arising from any alleged infringement, was to be the subject of further discovery and a reference after trial.

II

The trial judge, Collier J., in a judgment now reported in (1979), 39 C.P.R. (2d) 191, held certain claims of each of the two patents to be invalid. With respect to the waferboard patent an essential element of the invention was that the wafers be "crosscut". Claims 2, 8, 9 and part of claim 10 omitted mention of this term, were therefore broader than the invention made or described and invalid. With respect to the wafer patent an essential element of the invention was that the wafers have tapered ends. Failure to mention this feature resulted in claims 3 and 4 of the wafer patent being struck down, the claims being broader than the invention made or described.

Mr. Justice Collier rejected all other claims of invalidity advanced by the respondent. He held that the description contained in the specifications

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satisfied the statutory requirements established in s. 36(1) of the Patent Act. He rejected a claim that Consolboard had failed to prove its title to the patents in question. He also rejected arguments based on anticipation, lack of novelty or ingenuity, and ‘double patenting'.

Having upheld, in part, the validity of the patents, the judge proceeded to find that the respondent had infringed claim 2 of the wafer patent and claims 7 and 10 (in so far as it included 7) of the waferboard patent. He refused to direct an accounting of profits as requested by Consolboard. He limited his order to an award of damages.

III

MacMillan Bloedel appealed. Consolboard cross-appealed, seeking to establish the validity of the claims which had been struck down at trial and the right to an accounting of profits. The Federal Court of Appeal granted the appeal, and set aside the judgment at trial, for failure to comply with s. 36(1) of the Patent Act, as construed by the Federal Court of Appeal. The cross-appeal of Consolboard was dismissed.

Before the Court of Appeal and before this Court, the respondent, in addition to arguing the invalidity of the patents in suit for failure to comply with s. 36(1) of the Patent Act, argued that the Consolboard action should be dismissed on the following grounds: (i) that Consolboard had failed to prove its title to the patents in suit; (ii) that the patents in suit were invalid in that, contrary to the provisions of s. 28(1)(c) of the Patent Act, the "invention" thereof had been on sale in Canada more than two years before the filing of the application therefor; (iii) that the patents in suit were invalid in that contrary to the provisions of ss. 28(1)(a) and 63(1)(b) of the Patent Act, the "invention" thereof was previously known or used by the inventors named in Canadian Patent 621,795 and that the application therefor was filed earlier than and was co-pending with the application resulting in the patents in suit; (iv) that

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Canadian Patent 569,813 (wafer patent) was invalid as being for the same "invention" as that of Canadian Patent 565,618 (waferboard patent); (v) that the patents in suit were not infringed by the respondent's product and process; (vi) that the patents in suit were invalid as lacking novelty or inventive ingenuity over the prior art; (vii) that the trial judge erred in refusing leave to the respondent to plead, on the last day of trial, the provisions of the Saskatchewan Limitation of Actions Act, R.S.S. 1965, c. 84.

IV

Before addressing the question as to whether the Court of Appeal was right in holding both patents in suit invalid for failure to comply with the requirements of s. 36(1) of the Patent Act it will be convenient to mention but briefly and then put aside, a number of the issues canvassed during argument. In the course of the hearing this Court decided:

(a) Consolboard has proven its title to the two patents in suit. While Collier J. conceded that the evidence establishing the chain of title was "not as satisfactory as one would wish" there was nevertheless some evidence upon which he could find, as he did, that Consolboard had met the onus of showing good title. The main complaint was that the inventor Clark was not called to prove an assignment from him to a predecessor in title to Consolboard. Dr. Clark lived not far from Vancouver, where the trial was held, but he was of advanced years. The assignment was proved by one Carey whose credentials were attacked by the respondent. The trial judge, however, was entitled to treat this as he wished, much depending upon the credibility of Mr. Carey. This Court decided not to interfere with the judge's decision.

(b) The patents in suit were not invalid on the ground that, contrary to the provisions of s. 28(1)(c) of the Patent Act the "invention" thereof

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had been on sale in Canada for more than two years before the filing of the application therefor. This point arose from the fact that between Christmas 1950 and New Years 1951, Dr. Carl Hallonquist, then head of the Research Department of the respondent, visited Dr. Clark, in Longview, Washington. It was contended that during the course of the visit Dr. Clark disclosed to Dr. Hallonquist, and demonstrated, every element of the claims of the patents in suit, and offered rights in the invention for Western Canada to the respondent. The trial judge held that Dr. Clark's offer of licensing rights could not be equated with the proposed sale of an invention. In support of his conclusion, it is important to note that the terms of any licence or sale were not discussed by Dr. Clark and Dr. Hallonquist; the conversations took place in the United States of America and not in Canada; and it is clear that Dr. Clark's work was still at the experimental or "pilot plant" stage. The discussions related to a board product produced by Dr. Clark in his laboratory in the basement of his home.

(c) That respondent would not have leave to amend its statement of defence to plead The Limitation of Actions Act of the Province of Saskatchewan. Counsel for the respondent abandoned this point during argument.

(d) That Collier J. was correct in refusing to grant an accounting of profits as an alternative to damages on the main ground that the appellant did not commence litigation until 1974. The appellant claims that Collier J. was wrong in finding delay on its part in bringing the action. It was urged that Consolboard had continued negotiations with MacMillan Bloedel until 1972 in an effort to make MacMillan Bloedel recognize its rights and it was only after the ultimate failure of these negotiations that Consolboard felt compelled to bring action in February 1974. This may well be correct. The discretion exercised by Collier J. involved, however, a whole complex of factual matters, beside delay. Thus, in the view of this Court, the conclusion of the trial judge on the matter of an accounting of profits should be maintained.

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There is a further issue which might be disposed of at this time, the question of infringement. The respondent manufactures a woody wafer falling within the dimensional limitations of the wafer patent 569,813 and claim 2 thereof. The Aspenite waferboard manufactured by the respondent, save for the 3/4 inch variety, falls within the size and composition parameters of the waferboard patent 565,618 and claims 7 and 10 thereof. The respondent argues that its wafers are not "tapered" on a proper construction of that term as found in the patents, and hence did not infringe the appellant's patents. The trial judge accepted, for the purposes of the construction of the patents in suit, the definition of taper as "a feathering or gradual reduction of thickness of the wafers at the ends of the long dimension". He rejected the more restricted definition of taper offered by the respondent's witness, Mr. Johanson, namely, "a regular reduction in thickness achieved by a cutting tool [of some means] ". The judge found that the respondent's wafers were "tapered".

A great deal of evidence was directed to the infringement issue during the course of the 20 day trial. The question is essentially one of fact and the respondent has not in my opinion shown any substantial ground on which the finding of infringement should be overturned. The finding of the trial judge should be left undisturbed.

V

Although the respondent had a whole battery of defences, the principal issue in the present appeal is whether the Federal Court of Appeal was in error in finding the two patents invalid on the ground of failure to comply with s. 36 of the Patent Act. The section reads:

36. (1) The applicant shall in the specification correctly and fully describe the invention and its operation or use as contemplated by the inventor, and set forth clearly the various steps in a process, or the method of constructing, making, compounding or using a machine, manufacture or composition of matter, in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which it appertains, or

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with which it is most closely connected, to make, construct, compound or use it; in the case of a machine he shall explain the principle thereof and the best mode in which he has contemplated the application of that principle; in the case of a process he shall explain the necessary sequence, if any, of the various steps, so as to distinguish the invention from other inventions; he shall particularly indicate and distinctly claim the part, improvement or combination which he claims as his invention.

(2) The specification shall end with a claim or claims stating distinctly and in explicit terms the things or combinations that the applicant regards as new and in which he claims an exclusive property or privilege.

Chief Justice Jackett, speaking for the Federal Court of Appeal, placed emphasis upon the opening words and the concluding words of s. 36(1):

The applicant shall in the specification correctly and fully describe the invention and its operation or use as contemplated by the inventor, . . .; he shall particularly indicate and distinctly claim the part, improvement or combination which he claims as his invention.

In a portentous footnote, marked "N.B.", the learned Chief Justice states that the words "in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which its appertains or with which it is most closely connected", appearing midway through s. 36(1), apply only to the requirement that the applicant shall "set forth clearly the various steps in a process, or the method of constructing, making, compounding or using a machine, manufacture or composition of matter ... to make, construct, compound or use it". He then made reference to the definition of "invention" found in s. 2 of the Patent Act, namely:

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

[…]

"invention" means any new and useful art, process, machine, manufacture or composition of matter, or

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any new and useful improvement in any art, process, machine, manufacture or composition of matter;

The Chief Justice held that an invention must in the case of a product, (which he considered to be involved here) by virtue of the definition of "invention" be "useful . . . composition of matter, or any .. useful improvement in any ... composition of matter". Having affirmed that the trial judge had correctly described the "invention" the Chief Justice said:

In our view, having regard to the obvious object of section 36 of making "patent" to the public (as a consideration for the monopoly) all aspects of the invention (in the sense defined by section 2 of the Patent Act) and particularly its utility, there is no compliance with that section unless the applicant in his specification distinctly claims the "part, improvement or combination which he claims" having "correctly and fully" described, inter alia, its utility.

He continued:

After studying the "specification" and in the light of a long argument and references to the voluminous evidence, it would seem that the utility of the invention consists of the fact that, if particles of wood created by crosscutting and tapered at the ends are used within the sizes mentioned, for the making of fibre boards, they will produce a relatively inexpensive board strong enough for construction purposes because there has been a minimization of the damage to the fibres and the tapering at the ends of the particles reduces the amount of the relatively expensive bonding resin required and, by virtue of the overlapping resulting from such tapering, results in a stronger board.

and concluded:

In our view, while the reduction in damage to the wood fibres, as a utility to be achieved by the "invention", is "distinctly" claimed by the patent (see page 1 of the printed copy), the utility of the combination of the crosscutting whereby that is achieved and the tapering of the ends of the particles is only to be discovered by an intensive study of the patent, if at all. The main reference to it is in Column 8 (out of 16 columns) in a discussion of a particular application of the "invention". In our view, this is not a distinct indication of the real utility of the invention in question by which the public would be made aware of the invention in the manner required by section 36; and the Patent Act does not, therefore, authorize a monopoly for the invention.

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The appellant submits that the Court of Appeal made seven fundamental errors: (i) in failing to recognize that a patent specification is not addressed to the public at large but to workmen of ordinary skill in the art; (ii) in confusing the attributes of an "invention" contained in s. 2 of the Patent Act, the definition section, with the requirement that s. 36(1) of the Act that the applicant correctly and fully describe the invention and its operation or use as contemplated by the inventor; (iii) in wrongly construing s. 36(1) to require that the attributes of the patentability be set forth in the patent specification, i.e. novelty, inventive step and utility; (iv) in confusing the "utility" of an invention with the theory or effect of the invention; (v) in failing to consider the specification as a whole in determining whether it complied with s. 36(1); (vi) in taking an unduly technical approach to the specification in considering whether it complied with s. 36(1) of the Act; (vii) in failing to consider the evidence of persons skilled in the art respecting the sufficiency of the specification.

VI

Section 36 of the Patent Act lies at the heart of the whole patent system. The description of the invention therein provided for is the quid pro quo for which the inventor is given a monopoly for a limited term of years on the invention. As Fox points out in Canadian Patent Law and Practice (4th ed.), p. 163, the grant of a patent is in the nature of a bargain between the inventor on the one hand and the Crown, representing the public, on the other hand. The consideration for the grant is twofold: "first, there must be a new and useful invention, and secondly, the inventor must, in return for the grant of a patent, give to the public an adequate description of the invention with sufficiently complete and accurate details as will enable a workman, skilled in the art to which the invention relates, to construct or use that invention when the period of the monopoly has expired". The "description" to which Fox refers is that required by s. 36 of the Patent Act.

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It cannot be said that s. 36 of the Act is happily phrased. It gives the impression of a mélange of ideas gathered at random rather than an attempt to enunciate, clearly and concisely, a governing principle or principles. This is perhaps understandable in that the section is the product of amendment over a period of many years. The language simply does not lend itself to a tight, literal interpretation. It is, and should be treated as, a parliamentary pronouncement, in general terms, of that which must be set forth by the applicant to the world before being qualified to receive the grant of monopoly under a patent.

All later patent legislation is based upon The Patent Act of 1869, 1869 (Can.), c. 11, which in turn followed generally the United States statute of 1836 (5 Stat. 117). The 1869 Act required (s. 14) the specification to describe, correctly and fully, the mode or modes of operating contemplated by the applicant and to state clearly the contrivances and things which he claimed as new, and for the use of which he claimed an exclusive property and privilege. The opening words of the present s. 36(1) and the requirements of s. 36(2) are in much the same language. A new statute was enacted in 1872, amended from time to time, consolidated in 1886, and again in 1906, but with little change in what is now s. 36. In 1923 a new Act was brought into force which adopted the exact words now found at the commencement of s. 36(1). It required the inventor to set forth clearly the various steps in a process and to end the specification with a claim or claims stating distinctly the things or combination of things which the applicant regarded as new and in which he claimed an exclusive property and privilege. There was thus established a distinction between the "claims" and the body of the specification.

In 1935 another Patent Act was enacted, s. 35 of which is virtually the same as the present s. 36. Two changes were made, of particular relevance in the present inquiry: (i) it was required that the explanatory steps be addressed to a person skilled in the art—this merely gave statutory recognition to what had always been the common law—and (ii) the concluding words of subs. (1), central to

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this appeal, were added, namely "He shall particularly indicate and distinctly claim the part, improvement or combination which he claims as his invention".

It is not entirely clear what was intended to be achieved by the addition of the quoted words. They may have been added ex abundante cautela, seeking greater particularity of description, but they appear to be little more than pleonasm, when read with s. 36(2) and the definition of "invention". It is not readily apparent that anything of substance was added in 1935 to that which had been required since 1869. I am therefore of the view that the law laid down by this Court in Baldwin International Radio Company of Canada, Limited v. Western Electric Company Incorporated, and Northern Electric Company, Limited[2] is still good law, notwithstanding the changes in the Patent Act made in 1935. In Baldwin Rinfret J., as he then was, speaking for the Court, referred to s. 14 of the Patent Act, (now s. 36) and then said:

The section requires that: The specification shall

(a) correctly and fully describe the invention and its operation or use as contemplated by the inventor;

(b) set forth clearly the various steps in a process, or the method of constructing, making or compounding, a machine, manufacture, or composition of matter;

(c) end with a claim or claims stating distinctly the things or combinations which the applicant regards as new and in which he claims an exclusive property and privilege.

What is required, therefore, under our law, is that the applicant should give a full and correct description of the invention and its operation or use. If the invention is a new process, he should set forth clearly the various steps in the process; if a machine, manufacture, or composition of matter, the specification should explain the method of constructing, making or compounding the same. Then, in every patent, the claim or claims must state distinctly what the applicant regards as new and in which he claims an exclusive property and privilege. If the invention be a new thing, or the improvement of a thing, he must so state; but where the invention consists merely in the new combination of old elements or

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devices, such combination is sufficiently described if the elements or devices of which it is composed are all named and their mode of operation given and the new and useful result to be accomplished pointed out (Compare: Bates v. Coe, (1878) 98 U.S. 31). It is only if the applicant desires to claim invention for a subordinate element per se that it is necessary for him to claim the element separately, if he wishes to secure in it an exclusive property and privilege. [at p. 105]

In essence, what is called for in the specification (which includes both the "disclosure", i.e. the descriptive portion of the patent application, and the "claims") is a description of the invention and the method of producing or constructing it, coupled with a claim or claims which state those novel features in which the applicant wants an exclusive right. The specifications must define the precise and exact extent of the exclusive property and privilege claimed.

Section 36(1) seeks an answer to the questions: "What is your invention? How does it work?" With respect to each question the description must be correct and full in order that, as Thorson P. said in Minerals Separation North American Corporation v. Noranda Mines, Limited[3]:

... when the period of monopoly has expired the public will be able, having only the specification, to make the same successful use of the invention as the inventor could at the time of his application. [at p. 316]

We must look to the whole of the disclosure and the claims to ascertain the nature of the invention and methods of its performance, (Noranda Mines Limited v. Minerals Separation North American Corporation[4]), being neither benevolent nor harsh, but rather seeking a construction which is reasonable and fair to both patentee and public. There is no occasion for being too astute or technical in the matter of objections to either title or specification for, as Duff C.J.C. said, giving the judgment of the Court in Western Electric Company, Incorporated,

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and Northern Electric Company v. Baldwin International Radio of Canada[5], at p. 574, "where the language of the specification, upon a reasonable view of it, can be so read as to afford the inventor protection for that which he has actually in good faith invented, the court, as a rule, will endeavour to give effect to that construction". Sir George Jessel spoke to like effect at a much earlier date in Hinks & Son v. Safety Lighting Company[6]. He said the patent should be approached "with a judicial anxiety to support a really useful invention".

In light of the foregoing I turn again to the judgment of the Federal Court of Appeal. With great respect, in my opinion that Court erred in two fundamental respects in overturning the judgment of Collier J. The Court reversed, as I understand the judgment, for the reason that the applicant had not made distinctly clear (1) to the public (2) the utility of the invention. In his reasons for judgment, Chief Justice Jackett stated in a passage which I repeat for ease of reference:

In our view, having regard to the obvious object of section 36 of making "patent" to the public (as a consideration for the monopoly) all aspects of the invention (in the sense defined by section 2 of the Patent Act) and particularly its utility, there is no compliance with that section unless the applicant in his specification distinctly claims the "part, improvement or combination which he claims" having "correctly and fully" described, inter alia, its utility. [The underlining is my own.]

In my view it is a well established principle that a patent specification is addressed, not to the public generally, but to persons skilled in the particular art. I am further of the opinion that s. 36(1) does not impose upon a patentee the obligation of establishing the utility of the invention.

The first error, therefore, which I believe the Court committed in interpreting s. 36(1) involves the adoption of different standards of disclosure for different parts of the section; in other words, a double standard of disclosure. The Appeal Court

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interpreted s. 36(1) as falling into two distinct parts, the first part involving the "various steps in a process, or the method of constructing, making, compounding or using a machine, manufacture or composition of matter ...". In the footnote to which I have referred, the Court holds that this portion of the specification is directed toward someone skilled in the art. The second part of the specification, involving a distinct claim of "the part, improvement or combination which he claims as his invention" is directed, in the view of the Court, toward a member of the ordinary public. In short, Jackett C.J. split s. 36(1) into two parts: (i) the setting forth of the various steps in a process, where the test is whether a person skilled in the art would understand it; (ii) the claims, where the test is whether a member of the public would understand it.

Jackett C.J. attempted to distinguish Sandoz Patents Limited v. Gilcross Limited, formerly Jules R. Gilbert Limited[7] on the ground that in Sandoz this Court was concerned with (i) above, and hence the "skilled artisan" test applied. This is a razor-sharp distinction, which I do not think is borne out by the broad language of Mr. Justice Pigeon in Sandoz. Pigeon J. was clearly opposed to the striking out of the patents on technical grounds. In Sandoz he said at p. 1347:

It does not appear to me that a patent should be invalidated on account of such a technicality and I do not think that s. 36(1) so requires. A specification is addressed to persons skilled in the art and, therefore, is to be construed by the standard of what such a person would understand on reading it.

An even clearer statement is made by him in Burton Parsons Chemicals, Inc. et al. v. Hewlett-Packard (Canada) Ltd. et al.[8] at p. 563:

While the construction of a patent is for the Court, like that of any other legal document, it is however to be done on the basis that the addressee is a man skilled in

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the art and the knowledge such a man is expected to possess is to be taken into consideration.

See also Pigeon J. in Monsanto Company v. Commissioner of Patents[9], at p. 1113, referring to his previous judgment in Sandoz. These statements are simply not compatible with the approach of the Federal Court of Appeal.

It is, in my view, contrary to the spirit of these judgments to split up s. 36(1) into parts and require a different standard for each part. To quote Fox, ibid, at p. 204:

The persons to whom the specification is addressed are "ordinary workmen", ordinarily skilled in the art to which the invention relates and possessing the ordinary amount of knowledge incidental to that particular trade. The true interpretation of the patent is to be arrived at by a consideration of what a competent workman reading the specification at its date would have understood it to have disclosed and claimed.

The rule had been explicitly endorsed by this Court in the earlier case of Western Electric Co. v. Baldwin International Radio of Canada, supra. Chief Justice Duff referred with approval at p. 571 of the report to the statement by Lord Halsbury in Tubes, Ld. v. Perfecta Seamless Steel Tube Company, Ld.[10] at pp. 95-6 as follows:

*** if one has to look at first principles and see what the meaning of the specification is *** why is a specification necessary? It is a bargain between the State and the inventor: the State says, "If you will tell what your invention is and if you will publish that invention in such a form and in such a way as to enable the public to get the benefit of it, you shall have a monopoly of that invention for a period of fourteen years." That is the bargain. The meaning which I think, in my view of the patent law, has always been placed on the object and purpose of a specification, is that it is to enable, not anybody, but a reasonably well informed artisan dealing with a subject-matter with which he is familiar, to make the thing, so as to make it available for the public at the end of the protected period.

and

The question here is whether that has been done. Now it appears to me that the mode in which one ought to

[Page 524]

face that question is to look—and I should say so not only of the specification of a patent, but of every instrument—at the whole of the instrument to see what it means—not to take one isolated passage out of it and make that inconsistent with the general invention, but to see substantially what the inventor really means, and when you arrive at that, then see whether the language is within the test that 1 have suggested as the proper test to apply to such a specification and is such as will enable a typical workman to give the public the benefit of the invention. [Emphasis added.]

Thorson P., an authority in these matters, provided ample support for the above in Minerals Separation North American Corporation v. Noranda Mines Limited, supra:

When it is said that a specification should be so written that after the period of monopoly has expired the public will be able, with only the specification, to put the invention to the same successful use as the inventor himself could do, it must be remembered that the public means persons skilled in the art to which the invention relates, for a patent specification is addressed to such persons. In the present case, the specification is addressed to such persons as skilled metallurgists and chemists engaged in the art of froth flotation concentration of ores. It should, therefore, be looked at through their eyes and read in the light of the common knowledge which they should possess. [at pp. 317-8]

The Exchequer Court decision was overturned on other grounds in this Court [1950] S.C.R. 36, and that disposition was confirmed by Privy Council, but the above statement has never been doubted.

Indeed, the respondent accepts in his factum that the specification is addressed to a workman skilled in the art. In discussion of another issue (the alleged overlap between the patents owned by the appellant and Canadian Patent 621,795) the respondent states that the "proper question" is whether Patent 621,795, "to a person skilled in the art", is clearly distinguishable from the patents in suit (at p. 17). To the extent that the Federal Court of Appeal held that s. 36(1) of the Patent Act requires a disclosure of the invention, including its utility, to the public as unskilled or uninformed laymen, such finding, in my view, is contrary to law. There is but a single test, and that test is whether the specification adequately

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describes the invention for a person skilled in the art, though, in the case of patents of a highly technical and scientific nature, that person may be someone possessing a high degree of expert scientific knowledge and skill in the particular branch of science to which the patent relates. It might be added that there was no evidence by the respondent as to any respect in which the specifications of the two patents in issue would have been considered deficient by a workman of ordinary skill in the art.

In my respectful opinion the Federal Court of Appeal erred also in holding that s. 36(1) requires distinct indication of the real utility of the invention in question. There is a helpful discussion in Halsbury's Laws of England, (3rd ed.), vol. 29, at p. 59, on the meaning of "not useful" in patent law. It means "that the invention will not work, either in the sense that it will not operate at all or, more broadly, that it will not do what the specification promises that it will do". There is no suggestion here that the invention will not give the result promised. The discussion in Halsbury's Laws of England, ibid., continues:

.. the practical usefulness of the invention does not matter, nor does its commercial utility, unless the specification promises commercial utility, nor does it matter whether the invention is of any real benefit to the public, or particularly suitable for the purposes suggested. [Footnotes omitted.]

and concludes:

. . it is sufficient utility to support a patent that the invention gives either a new article, or a better article, or a cheaper article, or affords the public a useful choice. [Footnotes omitted.]

Canadian law is to the same effect. In Rodi & Wienenberger A.G. v. Metalliflex Limited[11], (affirmed in this Court [1961] S.C.R. 117) the Quebec Court of Appeal adopted at p. 53 the

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following quotation from the case of Unifloc Reagents, Ld. v. Newstead Colliery, Ld.[12] at p. 184:

If when used in accordance with the directions contained in the specification the promised results are obtained, the invention is useful in the sense in which that term is used in patent law. The question to be asked is whether, if you do what the specification tells you to do, you can make or do the thing which the specification says that you can make or do.

Although (i) s. 36(1) requires the inventor to indicate and distinctly claim the part, improvement or combination which he claims as his invention and (ii) to be patentable an invention must be something new and useful (s. 2), and not known or used by any other person before the applicant invented it (s. 28(1)(a)), I do not read the concluding words of s. 36(1) as obligating the inventor in his disclosure or claims to describe in what respect the invention is new or in what way it is useful. He must say what it is he claims to have invented. He is not obliged to extol the effect or advantage of his discovery, if he describes his invention so as to produce it.

As Thorson P. stated in R. v. American Optical Company et al.[13] at p. 85:

Nor is it any objection to the sufficiency of the disclosures that the advantages of the invention as enumerated by Professor Price were not set out in the specification . . . If an inventor has adequately defined his invention he is entitled to its benefit even if he does not fully appreciate or realize the advantages that flow from it or cannot give the scientific reasons for them. It is sufficient if the specification correctly and fully describes the invention and its operation or use as contemplated by the inventor, so that the public, meaning thereby persons skilled in the art, may be able, with only the specification, to use the invention as successfully as the inventor could himself.

The respondent contends that the issue here is not the utility of the patentee's invention but the statutory requirement that the patentee in his specification correctly and fully describe the invention

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and (i) distinguish the invention from other inventions and (ii) particularly indicate and distinctly claim the part or improvement which he claims as his invention. Point (i) only arises in the case of a "process" invention. The trial judge found that neither of the patents in suit related to a "process" invention and I am prepared to accept that finding. The Court of Appeal found that what was involved here was a "product" and "composition of matter" or improvement. Point (ii) rests on the submission that compliance with s. 36(1) includes the requirement of a clear and distinct recitation of the utility and novelty of the invention as part of the specification. The respondent relies upon Noranda Mines Limited v. Minerals Separation North American Corporation, supra. In that case Thorson J. referred to the specification being "so written that after the period of monopoly has expired the public will be able, with only the specification, to put the invention to the same successful use as the inventor himself could do" but I do not find support in the case for the proposition in support of which the case is cited by the respondent.

With respect, I agree with the submission of counsel for the appellant that the Federal Court of Appeal has confused the requirement of s. 2 of the Patent Act defining an invention as new and "useful", with the requirement of s. 36(1) of the Patent Act that the specification disclose the "use" to which the inventor conceived the invention could be put. The first is a condition precedent to an invention, and the second is a disclosure requirement, independent of the first.

VII

Having concluded that the Federal Court of Appeal erred in overturning Collier J. on the "utility" ground, it will be necessary to consider two alternative defences put forward by the respondent. The first arises from ss. 28 (1)(a) and 63(1)(b) of the Patent Act which read:

[Page 528]

28. (1) Subject to the subsequent provisions of this section, any inventor or legal representative of an inventor of an invention that was

(a) not known or used by any other person before he invented it,

[…]

may, on presentation to the Commissioner of a petition setting forth the facts (in this Act termed the filing of the application) and on compliance with all other requirements of this Act, obtain a patent granting to him an exclusive property in such invention.

63. (1) No patent or claim in a patent shall be declared invalid or void on the ground that, before the invention therein defined was made by the inventor by whom the patent was applied for, it had already been known or used by some other person, unless it is established either that

[…]

(b) such other person had, before the issue of the patent, made an application for patent in Canada upon which conflict proceedings should have been directed, or that

In addition to the two patents in suit, Dr. Clark had earlier filed an application for "Defibering Woody Materials and Apparatus Therefor". The application was filed as No. 621,795 on April 19, 1950, and Dr. Clark and one Arthur Mottet were said to be the inventors of the product. As the trial judge found, there is an "obvious kinship" between the 795 patent and the patents in suit. The 795 patent describes a procedure whereby fibrous woody products are manufactured by crosscutting and then reduced by a secondary milling procedure. The ‘thin slices or wafers' are later consolidated into a product called ‘hardboard'.

The respondent contends that the invention disclosed by 621,795 is identical with the inventions disclosed by 813 and 618. Therefore, it is urged, (i) the patents in suit violate s. 28 of the Patent Act and are invalid; (ii) the specifications in the two patents in suit are insufficient and accordingly the patents are invalid.

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Section 28(1) of the Patent Act requires, in part, that an individual may only obtain a patent for an invention if that invention was not "known or used by any other person before he invented it". Section 63(1) of the Act limits the meaning of the phrase "known or used by any other person".

Section 63(1)(6) applies only in cases where "conflict proceedings should have been directed". Section 45(1) states the standard to be applied by the Commissioner of Patents in determining whether a conflict exists:

45. (1) Conflict between two or more pending applications exists

(a) when each of them contains one or more claims defining substantially the same invention, or

(b) when one or more claims of one application describe the invention disclosed in the other application.

The respondent contends that Patent 795 is for ‘substantially the same invention' as Patents 618 and 813. The application for Patent 795 was filed a full three years before the applications for the latter two patents. Thus the inventions in these latter two patents were known or used by some other person prior to their invention, this ‘other person' being Arthur Mottet, the co-applicant for Letters Patent 795.

The same argument was raised at trial and rejected by the trial judge. In accordance with the statutory provisions just outlined, Collier J. compared the claims of the three patents in order to determine whether the claims defined or described ‘substantially the same invention'. He dismissed the argument with these words:

Patent 621,795 describes a method of cutting or producing woody materials, first by crosscutting, then separating the product into fine and coarse fractions, then milling the coarse fractions to reduce their size without excessive breaking across their length. The size (thickness, length, width, etc.) of the fibrous material or flakes (whatever they might be called) are not described or specified. There is no reference at all to the use of resin or what amounts of binder might be required to produce boards.

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When the claims of these three patents are examined, I am not persuaded there are one or more claims in each, describing or defining substantially the same invention. (at p. 1986)

The respondent, in argument before this Court, mounted an attack on this passage in the reasons of Collier J. It was contended that the patents in suit added nothing of practical value to the teachings of Patent 621,795.

I cannot accept this contention. My examination of both the specifications and the evidence adduced at trial indicates that the conclusion of the trial judge on the point was correct. Patent 621,795 appears to relate to a highly consolidated high density (specific gravity 1.0) hardboard made from defibred and reduced wood fibres. The flakes are milled to break them along the natural cleavage plane. The larger flakes are then put through a second milling operation, all for the purpose of producing fine fibre material, of unspecified thickness. Patents 565,618 and 569,813, while describing a product of some similarity, in addition prescribe the method for producing a consolidated medium density (specific gravity 0.75) board made from intact relatively thick wood flakes or wafers having tapered ends and not further reduced.

Dr. Marra, appellant's witness, testified (at p. 1241) that: "patent No. 621,795 is directed to the production of milled flakes for the manufacture of high density hard board, and that patent No. 565,618 and patent No. 569,813 is [sic] directed to thick crosscut woody wafers, tapered ends, and to medium density boards with such wafers with low resin content".

Mr. Young, respondent's witness, testified:

Q. But to get back to my question, Mr. Young, it is fact, is it not, that possibly one of the things that was added, one and only possibly one, of the things that was added of practical value by the 618 and 813 patents, is that you don't reduce the elements, these cross-cut elements. You don't put them through this milling operation. You use those

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large wood elements to produce boards. Do you understand the question?

A. Yes. I am just checking—565,618 down in column 2 in the last paragraph—may be made from thin slices from the starting material by means of cutting the edges substantially to the fibres and thereafter reducing the slivers to flakes, wafers or the like by cutting such slivers along the planes—

Q. But that is quite a different matter, isn't it?

A. Yes, you are right. [at pp. 1127-8]

and later (at p. 1129):

I will admit that he doesn't say he contemplated an application such as that board that I see in front of me here. He doesn't say that. So in that sense I suppose you could say it is something of practical value but a very fine distinction.

In my view the patents in question do not describe substantially the same invention and thus there has been no violation of s. 28.

The alternative submission of the respondent on this issue is based on the final words of s. 36(1). As already noted, the section requires that the applicant "indicate and distinctly claim the part, improvement or combination which he claims as his invention". Thus, according to the respondent, even assuming that the inventions described in patents 618 and 813 are different from the invention described in patent 795, this distinction only becomes apparent after a close and detailed examination of the respective specifications. The applicant has failed to claim ‘distinctly' how the inventions in the patents in suit differ from the invention in Patent 795.

As I have indicated, the final sentence of s. 36(1) was added to the statute in 1935, but earlier statutes and the common law had always contained the requirement that the applicant distinctly indicate what he claims as new. At one time this requirement was interpreted quite literally by the courts. In other words, it was not sufficient for an applicant to describe in precise terms what it was he had invented, he was required in addition to indicate how it was new or different from what had gone before. (See Foxwell v. Bostock and

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Others[14].) But such a requirement imposed an impossible burden on the patentee. Suppose he was not aware of another invention that was very similar to his own. If he failed to specify the differences between the two inventions, the patent would be invalid notwithstanding that his invention was new and different. The law would thus penalize inventive genius for failure to keep abreast of the knowledge and progress of others. The impossible and unwarranted nature of such a burden was explicitly identified by Fletcher-Moulton L.J. in British United Shoe Machinery Company Ld. v. A. Fussell & Sons Ld.[15], at p. 652:

But to say that he must also ascertain, under the penalty of his Patent being bad, everything that preceded his invention, every approach from every side that persons have made to it, and must correctly indicate the little step which he has made in addition to these, most of which he never knew, would be to require something of him which would be perfectly idle, so far as regards utility to the public, and grossly unjust so far as the patentee is concerned. I say more. I say it is an absolutely impossible task, because in almost all cases these inventions have been approached from many sides.

In British United Shoe, the Court held that 'distinguishing old from new' did not require an explicit statement of how the invention was different or novel. The true test was simply that "a man must distinguish what is old from what is new by his Claim, but he has not got to distinguish what is old and what is new in his Claim" (at p. 651). In short, if the specification describes an invention that is in fact new, and if the description is sufficient so that an ordinary workman skilled in the art can understand it, the patent specification is valid. "There is no obligation to go further, and to state why it is novel, or what in it is novel" (at p. 651).

The submission of the respondent is an attempt to resurrect the line of reasoning that was discredited in the British United Shoe case over 70 years

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ago. It attacks the specifications in the patents in suit, not on the basis that they do not disclose new inventions, but rather on the grounds that this novelty is not ‘distinctly claimed'. I would reject that interpretation of s. 36(1) on the grounds earlier discussed and for the reasons so cogently expressed by Fletcher-Moulton L.J. in the British United Shoe judgment.

I agree with the words of the trial judge in the following passage from his judgment:

The wafer patent is, it seems to me, essentially a product and a method invention. The waferboard patent is essentially a product invention. Patent 621,795 is, as I read it, a method and apparatus invention. None of them are, to my mind, "process" inventions. The requirement in ss. 36(1) that an applicant distinguish his invention from other inventions, comes into play only in respect of a process. That portion of the subsection has, in my opinion, no applicability here.

Accordingly, I find that Patent 621,795 does not render the patents in suit invalid.

VIII

The defendant also attacked the patents in suit on the basis of anticipation and lack of inventive ingenuity. In addition to what was said to be the common general knowledge of the art, a number of prior publications existing on the filing date of the patents in suit were referred to, including a British patent of 1856, a French patent published in 1951, four United States patents and an article published by one Elmendorf in 1949. It was contended that knowledge of the art prior to the date of "invention" was such that every element of each claim in suit was within common knowledge or public knowledge. The issue here is basically factual, involving assessment of the mosaic common knowledge and prior art existing at the date of the invention. The judge reviewed the prior art relied upon and concluded:

It is often fairly easy for a defendant in an infringement suit, in hindsight, to thoroughly search and selectively unearth pieces of prior art in various fields, interfelt them with common knowledge, then say it was all very plain: an ordinary skilled workman would easily

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and readily have been led to what the "inventor" of the patent in suit now asserts.

The defendant has not, in my view, established, on a balance of probabilities, there was lack of inventive ingenuity in respect of these claims.

The respondent submits that, properly construed, as of the date of the alleged invention in 1953, by the notional skilled person in the art, armed with the common general knowledge of the art, the claims of the patents in suit were anticipated by any one of the three United States patents and by the Elmendorf article and, a fortiori, fail to display any inventive ingenuity over the combination of those references with the early British patent and two other United States patents.

The trial judge held that none of the prior publications met the test of anticipation as propounded in Canadian General Electric Co., Ld. v. Fada Radio Ld.[16]; R. v. Uhlemann Optical Company[17] and Lovell Manufacturing Company et al. v. Beatty Bros. Limited[18]. The judge held that the information given in the prior publications was not equal to that disclosed by the prior publications.

I agree that the information in the prior publications is not, for purpose of practical utility, equal to that given in the patents in suit. The respondent contends that the proper test of an "anticipation" is that the claim in suit "cover" or "read on" what the prior document would have taught as of the date of the invention to one skilled in the art; "what infringes if later, anticipates if earlier"; as Rinfret J. delivering the judgment of the Court in Lightning Fastener Company Limited v. Colonial Fastener Company, Limited et al.[19] said at p. 381:

[Page 535]

But what amounts to infringement, if posterior, should, as a general rule, amount to anticipation, if anterior.

In my view the claims in suit do more than merely read on the disclosure of the prior documents. Such disclosure does not contain clear instructions to do or make something that would infringe the patents in suit if carried out after the grant. Dr. Clark was doing more than simply following along old tracks. This is apparent from the evidence of Dr. Marra, at p. 1178:

My objectives were quite similar to Clark's as I perceived them at that time, that is 1954, 1955, and I noticed that Clark was after a highstrength board and I had been trying to do this since 1951 myself and encountering many technical problems, some of which I considered not solvable and for that reason began to—I had to change my direction.

It is said that the trial judge erred in law in setting and applying a higher test, i.e. that the information given be equal to that disclosed by the patent in suit and that he misdirected himself as to the effect of the judgments relied upon by him. The impugned words must, however, be read with the judge's further comment: "Nor is the solution averred by Dr. Clark already asserted in any previous publication. None of these prior inventors or writers were, to my mind ‘clearly shown to have planted his flag at the precise destination before the patentee' ". (General Tire and Rubber Company v. Firestone Tyre and Rubber Company Limited and Others[20] at p. 486.)

I think that when the entire passage is read it will be found that the judge is saying little more than was said by Rinfret C.J. in R. v. Uhlemann Optical Company, supra, at p. 151—" ... no anticipation had been established because none of these anterior patents, for purposes of practical utility, were equal to that given by the patent in suit". I do not believe the trial judge erred in

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finding that no anticipation had been established.

IX

That brings me to the allegation of "double patenting". The respondent alleges that the two patents in suit are, for all intents and purposes, identical. The waferboard patent relates to the production of ‘consolidated structures' composed of wafers. The wafer patent relates to the production of wafers "adapted for use in a consolidated structure". Citing the well-known rule that only one patent may issue for a given invention, the respondent claims that there is really only one invention and thus the second patent must be invalid. Collier J. merely said that "claims 2, 3, and 4 of the later patent are not precisely coterminous with the relevant claims in the earlier grant" and quoted his own judgment in Xerox of Canada Ltd. v. IBM Canada Ltd.[21] as authority for this test.

In response to this argument, the respondent cites the judgment of this Court in Commissioner of Patents v. Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning[22], the main authority on double patenting. In that case the applicant had already patented an anti-diabetic medicine. It now wished to patent a second one composed of that medicine plus an inert carrier. Judson J. for the Court said that the second process involved no novelty or ingenuity, and hence the second patent was unwarranted.

This case is somewhat different in that the second process of transforming the woody flakes into fibreboard is much more complicated than the simple dilution of medicine in Hoechst.

As I noted earlier, the appellant originally filed a single patent application for letters patent, but was required by the Commissioner of Patents to

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divide his application into two parts. It may be open to question whether the Commissioner of Patents should have split off the wafers and treated them as the subject of a separate patent but in my view a patentee is not to be prejudiced by enforced divisional applications. If patents are granted on divisional applications directed by the Patent Office, none of them should be deemed invalid, or open to attack, by reason only of the grant of the original patent. (See J. R. Short Milling Company (Canada) Limited v. George Weston Bread and Cakes Limited et al.[23] at p. 82; Fox Canadian Patent Law and Practice, supra, at p. 270. Accordingly, this challenge to the validity of the patents fails.

X

I turn now to the submissions of the appellant with respect to the trial judgment. The appellant submits that claims 2, 8, and 9 of Canadian Letters Patent 565,618 are valid. It is contended that these claims are directed to cross-cut wafers, contrary to the finding of the trial judge. The judge reached a conclusion adverse to the appellant after hearing a great deal of expert evidence. While this Court has in the past re-examined the evidence and on occasion reversed or modified findings of fact at trial, this is not normally regarded as a proper appellate function. It has the effect of increasing the length and expense of patent litigation and makes the forum a place of resort for the stronger participant. The present litigation, for example, commenced with a lengthy trial and has spread over a period of six years. Fact finding should have ended long ago. I therefore would not disturb the finding of the trial court with respect to the question whether claims 2, 8 and 9 (and 10, in so far as it relates to 8 and 9) of Patent 565,618 are directed to cross-cut wafers.

XI

In the result, I would allow the appeal and set aside the judgment of the Federal Court of

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Appeal. I would declare that claim 2 of Canadian Letters Patent 569,813 and claim 7 and claim 10 (in so far as claim 10 includes claim 7) of Canadian Letters Patent 565,618 are valid. I would further declare that (except as to the 3/4 inch boards made or produced by the respondent) such claims have been infringed by the respondent by the manufacture at Hudson Bay, Saskatchewan, and the sale, of a board product known as waferboard.

I would direct a reference to determine the amount of damages sustained by the appellant by reason of such infringement and further direct that the damages so determined be paid by the respondent to the appellant forthwith after determination thereof.

The appellant should have its costs in this Court and in the Federal Court of Appeal. I would affirm the order of the trial court that neither party recover costs against the other in that Court.

Appeal allowed with costs.

Solicitors for the appellant: Gowling and Henderson, Ottawa.

Solicitor for the respondent: Donald F. Sim, Toronto.