Hoechst v. Halocarbon (Ontario) Ltd. et al., [1979] 2 SCR 929

Supreme Court of Canada

Hoechst v. Halocarbon (Ontario) Ltd. et al., [1979] 2 S.C.R. 929

Date: 1979-06-21

Farbwerke Hoechst Aktiengesellschaft vormals Meister Lucius & Bruning Appellant;

and

Halocarbon (Ontario) Limited and Halocarbon Products Corporation Respondents.

1978: May 9, 10; 1979: June 21.

Present: Martland, Spence, Pigeon, Dickson, Beetz, Estey and Pratte JJ.

ON APPEAL FROM THE FEDERAL COURT OF APPEAL

Patents—Inventive ingenuity—Obviousness—“Cripps question”—Essence of invention.

Appellant, a German company and Canadian patentee, took an action for the infringement of two of its patents, both process patents pertaining to the production of halothane, a fluorinated anaesthetic. The first patent (no. 692,039) was for the production of isohalothane by reacting in the liquid phase what was called the “monomer” with hydrogen bromide. This process was carried on by Halocarbon Corp. in New Jersey which supplied the isohalothane to Halocarbon (Ontario) which used it to manufacture halothane using the process in the other patent (no. 652,239). The only remaining issue of substance was as to the validity of the patents. The trial judge found the first patent valid, the second invalid, but held that there was infringement only by Halocarbon (Ont.) since the U.S. company did not have such control over it as to make it liable for the infringement. The Court of Appeal concurred in the trial judge’s conclusion as to the absence of “inventive ingenuity” in the second patent and did not find it necessary to express any view as to the correctness of his reasoning except with regard to his conclusions on “Obviousness, or Lack of Invention” with reference to the first (isohalothane) patent. The trial judge had concluded that “Taking the prior art as a mosaic… it was not at the relevant date here (July 15, 1961)… obvious that anyone skilled in the art would successfully produce isohalotane in the holding liquid phase”. The Court of Appeal differed in its conclusion, holding that “the requirement of ‘inventive ingenuity’ is not met in the circumstances of the claim in question where the ‘state of the art’ points to a process and all that the alleged inventor had done is ascertain whether or not it will work successfully”.

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Held (Martland, Dickson and Estey JJ. dissenting): The appeal should be allowed against Halocarbon (Ontario) Limited, the judgment at trial should be restored in so far as it holds patent no. 692,039 valid and infringed and referred back for disposition by the trial judge concerning patent no. 652,239.

Per Spence, Pigeon, Beetz and Pratte JJ.: The statement by the Federal Court of Appeal of the requirement of inventive ingenuity puts it much too high. Very few inventions are unexpected discoveries and practically all research work is done by looking in directions where the “state of the art” points. The “Cripps question” is the true test: “Was it obvious to any skilled chemist…?” The fact that a published paper had mapped out, in a general way, this sort of reaction was very far from “giving the same knowledge” or “clear and unmistakeable directions”. The trial judge correctly held that the defence of anticipation failed, and there was confirmation of this in the undisputed fact that Halocarbon Corp. at first carried out the reaction in the gaseous phase.

As to the second patent the trial judge misapprehended part of the evidence as to the temperature at which the reaction should be carried out. He thought it meant that “temperature over 0°C, and preferably about 50°C was not an essential of the invention and therefore that there was no inventive ingenuity and the patent was invalid. A reading of the whole evidence however shows clearly that what was said was that the reaction can be carried out at temperatures other than 50°C and not that carrying it out at temperatures around 50°C was not an essential feature of the invention. The essence of the Hoechst invention was the discovery that the desired reaction could be obtained more readily and more economically at temperatures around 50°C instead of at 0°C as previously “taught”.

Per Martland, Dickson and Estey JJ. Dissenting: The appellant’s submission was that the application of the “Cripps question” [Sharpe & Dohme v. Boots Pure Drug Co. (1928), 45 R.P.C. 153] in the field of chemistry implies inventive ingenuity whenever a specific reaction has not been actually conducted before unless the prior art would lead a skilled chemist to predict a successful result to that reaction. That would mean that in the instant case as the previous disclosure did not clearly indicate the reaction of the monomer with hydrogen bromide in the liquid phase, inventive ingenuity had to be implied when the patentee successfully conducted the reaction in the liquid phase. The Court of Appeal took the position that this did not follow and refused to

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recognize the trial judge’s application of the Cripps question as a universal rule. Its conclusion that inventive ingenuity was not established where the state of the art pointed to a process and all that the alleged inventor had to do was as certain whether the process would work was a conclusion on the question of fact before it and did not constitute a reversible error. As to the second patent the trial judge reached his conclusion of fact after a review of the relevant authorities not merely on the basis of the disclosure in one earlier patent but on both patents constituting the prior art. His finding as to the absence of inventive ingenuity was confirmed in the Court of Appeal. There were therefore concurrent findings of fact in the Courts below and there was no justification for interfering with them.

[Laboratoire Pentagone v. Parke, Davis & Co., [1968] S.C.R. 307; American Cyanamid Co. v. Berk Pharmaceuticals Ltd., [1976] R.P.C. 231; Pope Appliance Corporation v. Spanish River Pulp and Paper Mills, [1929] A.C. 269; Martin and Biro Swan Ld. v. H. Millwood Ld., [1956] R.P.C. 125; Canadian General Electric Co. v. Fada Radio Ld., [1930] A.C. 97; Technograph Printed Circuits Ltd. v. Mills & Rockley (Electronics) Ltd., [1972] R.P.C. 346 referred to.]

APPEAL from a judgment of the Federal Court of Appeal[1] allowing an appeal and dismissing a cross-appeal from a judgment of Collier J.[2] in the matter of two chemical process patents. Appeal allowed, against Halocarbon (Ontario) Limited, Martland Dickson and Estey JJ. dissenting, judgment at trial restored in so far as it holds patent no. 692,039 valid and infringed and referred back for disposition by the trial judge concerning patent no. 652,239.

H. Lorne Morphy, Q.C., David M. Rogers, Q.C., and Marilyn L. Pilkington, for the appellant.

Donald F. Sim, Q.C., and Roger T. Hughes, for the respondents.

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The judgment of Martland, Dickson and Estey JJ. was delivered by

MARTLAND J. (dissenting)—This appeal arises out of an action for the infringement of two patents issued to the appellant, namely, patent number 692,039 issued on August 4, 1964, and patent number 652,239 issued on November 13, 1962. The claims which were in issue at the trial were Claim 10 of the former patent and Claim 2 of the latter patent.

Claim 10

Claim 10 asserted a process for the production of isohalothane which comprised reacting what is called the “monomer” in the liquid phase under radical forming conditions with hydrogen bromide and isolating the isohalothane obtained. The alleged inventive aspect of this process is the use of the monomer in the liquid, as opposed to the gaseous phase.

Various defences were raised by the respondents in answer to the claim for infringement of Claim 10, but the substantial defence considered at trial and in the Federal Court of Appeal was that the invention claimed in Claim 10 lacked inventive ingenuity. It was not disputed by the appellant that whether or not a discovery is inventive is a question of fact.

In considering the question of inventive ingenuity, the following facts are of importance:

1. The substance, isohalothane, is not new. The appellants do not claim invention of the substance but rather a process for its production.

2. This process for manufacturing isohalothane, which comprised reacting a monomer under radical forming conditions with hydrogen bromide and isolating the isohalothane obtained, was not new because, in 1954, R.N. Haszeldine and B.R. Steele had disclosed that the same monomer could be reacted with the same bromide to produce the same product.

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3. The only possible invention in Claim 10 was the production of isohalothane in the “liquid phase”. Both Courts below agreed that whether or not this involved inventive ingenuity was the real issue in the case.

4. The paper of Haszeldine and Steele did not specify that the reaction must be in a particular phase, gaseous or liquid. Considerable attention was paid at the trial to whether the Haszeldine process had been carried out in the liquid or the gaseous phase. The experts disagreed. The trial judge concluded that it had probably been carried out in the gaseous phase.

5. There were no problems encountered or to be solved in running the reaction in the liquid phase.

On this issue the trial judge found in favour of the appellant. He said this:

Using a paraphrase of the “Cripps question”: Was it for all practical purposes obvious to any skilled chemist in the state of chemical knowledge existing at the date of the invention, which consists of the chemical literature available and his general chemical knowledge, particularly in the field of fluorine chemistry, that he would successfully produce isohalothane (assuming the monomer used here and hydrogen bromide) in the liquid phase? After consideration of the prior literature submitted in evidence, the discussion of that prior literature by the expert witnesses, and the helpful analyses by counsel, I have concluded the question must be answered “No.”.

The “Cripps question” was originally propounded by Sir Stafford Cripps, as counsel, in his argument in the case of Sharpe & Dohme v. Boots Pure Drug Co.[3] at p. 162, as follows:

…“Was it for all practical purposes obvious to any skilled chemist in the state of chemical knowledge existing at the date of the patent, which consists of the chemical literature available… and his general chemical knowledge, that he could manufacture valuable therapeutic agents by making the higher alkyl resorcinols…?”

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The question as propounded in that case did not include the word “successfully” which appears in the passage from the judgment at trial above quoted.

The courts in England have on several occasions tested obviousness by applying this question, but the submission of counsel for the appellant virtually amounts to a proposition that this question should be elevated into a rule of law which must be applied in all cases in determining whether or not an invention is invalid because of lack of inventive ingenuity.

This overlooks the fact that the “Cripps question” was formulated in argument in relation to the circumstances of a particular case and did no more than to reduce the question “was the invention obvious” into the context of that case. It did not set any standard or test by which “obviousness” (in the English context) or “inventive ingenuity” (in the Canadian context) should be judged. The answer to a paraphrase of that question is not determinative in deciding as to the existence of inventive ingenuity on the facts of any particular case.

The Court of Appeal allowed the appeal of the respondents from the judgment at trial respecting Claim 10. The reasons for so doing are set forth in the following passage from the reasons of Chief Justice Jackett:

It is common ground here that Claim 10 in Patent 692,039, which was granted in 1964, may be expressed as a “process” for the manufacture of isohalothane, which comprises “reacting” a substance (referred to as a matter of convenience as “monomer”) in the “liquid phase” under radical-forming conditions with hydrogen bromide and isolating the isohalothane obtained. The only question in issue is whether the “liquid phase” aspect of this process involved “inventive ingenuity”. It is also common ground that, in 1954, R.N. Haszeldine and B.R. Steele disclosed that the same “monomer” could be reacted with the same bromide under the same conditions to produce the same product. It appears that such a reaction might be carried out in what might be described as a “gaseous phase” or it might be carried out in what might be described as a “liquid phase”; but their paper did not specify that such reaction must be in any particular phase—“liquid” or “gaseous”. Prima facie, it seems to me that the Haszeldine disclosure is

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such a clear-cut indication of a “process” for making “isohalothane” by reacting the “monomer” with hydrogen bromide that there cannot be said to be any “inventive ingenuity” involved in discovering that the reaction can be brought about in the “liquid phase”. (There is no suggestion that, once it was decided to try the reaction in the “liquid phase”, there were difficulties encountered in accomplishing the reaction in the “liquid phase” that could only be overcome by “inventive ingenuity”.

The learned Trial Judge appears to have proceeded upon the assumption that the requirement of “inventive ingenuity” is satisfied unless the “state of the art” at the time of the alleged invention was such that it would have been obvious to any skilled chemist “that he would successfully produce isohalothane (assuming the monomer used here and hydrogen bromide) in the liquid phase’.” (The italics are mine.) I do not think that the learned Trial Judge’s assumption is correct as a universal rule. I would not hazard a definition of what is involved in the requirement of “inventive ingenuity” but, as it seems to me, the requirement of “inventive ingenuity” is not met in the circumstances of the claim in question where the “state of the art” points to a process and all that the alleged inventor has done is ascertain whether or not the process will work successfully.

I have not overlooked the detailed references to the evidence of the experts but, as it seems to me, that evidence was to a large extent directed to the question how the Haszeldine work was actually accomplished and in no way negates the fact that a fair reading of the 1954 paper maps out, in a general way, the sort of reaction that was ultimately made, in a more specific manner, the subject matter of Claim 10.

The appellant’s submission is to the effect that the application of the “Cripps question” in the field of chemistry implies inventive ingenuity wherever a specific reaction has not been actually conducted before unless the prior art would lead a skilled chemist to predict a successful result to that reaction. In the circumstances of this case, that means that, as the Haszeldine disclosure did not clearly indicate the reaction of the monomer with hydrogen bromide in the liquid phase, inventive ingenuity had to be implied when the patentee successfully conducted the reaction in the liquid phase.

The position of the Court of Appeal is that this does not follow since the process had been defined already by Haszeldine and Steele and all that was

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required was to ascertain whether that process did work successfully in the liquid phase. What the patentee did was to verify the application of the process in the liquid phase. Chief Justice Jackett put it this way in a footnote to his reasons:

The respondent’s argument, if I correctly appreciated it, was that, owing to the special nature of chemistry, where a chemical reaction is tried with useful results, inventive ingenuity is to be implied as long as that particular reaction has never actually been tried before. Even if that generalization is correct (a matter concerning which I have doubt), I have not been persuaded that the same thing can be said about trying an old reaction in a “phase” in which it had not previously been tried.

The task before the Courts below in the present case was to determine, as a question of fact, whether the invention claimed by the appellant in Claim 10 showed inventive ingenuity. The trial judge was of the opinion that his paraphrase of the “Cripps question” (which included the word “successfully”) should be asked and that a negative answer to that question resolved the question of inventive ingenuity. The Court of Appeal refused to recognize this as a universal rule. It did not seek to evolve a definition of inventive ingenuity, but concluded that inventive ingenuity was not established where the state of the art pointed to a process and all that the alleged inventor had to do was to ascertain whether the process would work. I do not find any error of law in this conclusion.

The Court of Appeal reached a conclusion on the question of fact which was before it which could be supported by the evidence. I am not prepared to hold that their conclusion constituted a reversible error.

Claim 2

Claim 2 of patent 652,239 asserts the following invention which is a process for production of halothane from isohalothane:

a process causing the intramolecular arrangement of isohalothane wherein at its boiling temperature of 50°C. isohalothane is slowly added dropwise to aluminum bromide mixed with a small quantity of halothane previously prepared and the halothane produced is isolated.

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The alleged inventive aspect in this process is the use of the high temperature integer with aluminum bromide as catalyst.

Farbenfabrikin Bayer Aktiengesellschaft in 1958 was granted a German patent (“the Bayer patent”) for the same process using a temperature integer of 0°C. The appellant itself, in 1958, had been granted a German patent (“the Hoechst patent”) for a process using the same temperature integer of 50°C. and aluminum chloride as catalyst.

It was not in dispute that, except for the appellant’s specification of a special temperature, the appellant’s process is the same as that described in the Bayer patent. It is also of some significance that Claim 1 of Patent 652,239, which is not in issue in this appeal, claimed a process similar to Claim 2, but “at a temperature in the range of 0°C. to about 50°C”.

The Bayer and the Hoechst patents constituted the prior art which the trial judge considered in determining whether Claim 2 involved inventive ingenuity. He concluded that Claim 2 lacked inventive ingenuity and his judgment, on this issue, was sustained by the Court of Appeal. He stated his view with respect to the effect of the Bayer patent as follows:

I shall deal next with the defendants’ attack that Claim 2 is invalid for obviousness. In my opinion, this defence succeeds: The invention asserted in Claim 2, having regard to the prior publications, lacks, to employ an often-used phrase, inventive ingenuity. The prior art I refer to is the Bayer patent and what was termed the Hoechst patent. In Bayer, the intramolecular rearrangement of the isohalothane is carried out with aluminum bromide as the catalyst at about 0°C. I quote again what was said in the Bayer disclosure: “Undesirable side reactions occur at higher temperatures and lead to a very considerable decrease in yield at even 40°C.”.

The inventive step forward alleged by the plaintiff over Bayer is the successful rearrangement process (with good yield and no undesirable side effects) using alumi-

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num bromide as a catalyst at temperatures above 0°C., and preferably at about 50°C. One can only conclude that the temperature integer is, in the mind of the patentee, an essential element of the invention. The evidence before me, from the plaintiff’s expert, is that the temperature factor is not an essential part of the invention or claim. Dr. Schmutzler said the rate of reaction of the process was a function of temperature; at lower temperatures the reaction is slower; somewhat different cooling methods might be required for different temperatures; a convenient way to dissipate heat is to operate at the boiling point. He went on to say (and I summarize) that it is not essential to carry out the plaintiffs process at about 50°C.; that there is no special temperature at which this reaction should be run; 50°C. is not exclusive in any way.

I accept Dr. Schmutzler’s statements. I find that the temperature over 0°C. and preferably about 50°C. is not an essential of the invention claimed. If the temperature asserted by the plaintiff in the patent is not essential to the alleged invention, then I am unable to see what inventive ingenuity there was over Bayer.

For the appellant it was contended that the trial judge had misapprehended the evidence of Dr. Schmutzler. The appellant’s statement of its position is as follows:

…It is acknowledged that Dr. Schmutzler agreed that it is possible to make halothane by reacting monomer with aluminum bromide at temperatures ranging from 0°C. to 50°C., and that it is not necessary to perform the process at 50°C. It was known prior to the Appellant’s invention that halothane could be made at 0°C. pursuant to the Bayer patent. The essence of the Appellant’s invention is that, despite discouraging comments in the Bayer patent, the Appellant discovered a process whereby it was able to produce a higher yield of halothane with fewer by-products at 50°C. Accordingly, it is submitted that the fact that the reaction can be conducted at lower temperatures does not imply that the temperature factor is not the essence of the Appellant’s invention.

With respect to this contention, it should be pointed out that the trial judge went on to consider

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the impact of the prior art as disclosed in the Hoechst patent:

The Hoechst patent discloses a process for the production of halothane-ethane by a rearrangement of isohalothane using aluminum chloride as the catalyst at about 50°C. (boiling point). Aluminum bromide and aluminum chloride, according to the evidence, have long been known. They have often been used, before the relevant date here, as catalysts, although not necessarily interchangeably. Dr. Schmutzler valiantly attempted to repel the defendants’ attack of obviousness by asserting he, with all his qualifications, would not have considered trying to manufacture halothane by rearranging isohalothane at a temperature of about 50°C., using aluminum bromide as a catalyst—having the fore-knowledge that success had been achieved at that temperature by using aluminum chloride as the catalyst. He said he had a number of technical prejudices which would have led him not to consider substitution. He finally agreed, on cross-examination, that he would have considered aluminum bromide as a catalyst at that temperature, along with other catalysts. This concession was made, not only with the Hoechst patent pre‑knowledge, but his own knowledge (which I take to represent generally the knowledge of those versed in the art) of the use, in the field, of aluminum chloride and aluminum bromide as catalysts. I have earlier in these reasons referred to the “worth a try” hypothesis. That hypothesis must ultimately resolve itself into a question of fact.

The trial judge then considered the judgment of Urie J., in Appliance Service Co. Ltd. v. Sarco Canada Limited[4], in which a number of cases were reviewed dealing with the matter of inventive ingenuity, some of which support the observation made by Lord Russell of Killowen in Non-Drip Measure Co. v. Stranger’s Ltd.[5] at p. 142:

…Nothing is easier than to say, after the event, that the thing was obvious and involved no invention.

The trial judge then went on to say:

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As cautioned by Urie J., I have endeavoured to temper my view of the “worth a try” approach; I have also endeavoured to keep in mind the admonitions reviewed by Thorson P. on this question of inventiveness in Ernest Scragg & Sons Limited v. Leesona Corporation [1964] Ex. C.R. 649 at 737-744. Nevertheless, endeavouring to put myself in the position of one skilled in the art, and considering the prior art, particularly Bayer and Hoechst, I conclude there was no inventive ingenuity in respect of the claim relied on here.

The trial judge reached his conclusion of fact after considering the relevant authorities, not merely on the basis of the disclosure in the Bayer patent, but on both the Bayer and Hoechst patents. The latter, as has been noted earlier, disclosed a process for the production of halothane-ethane by a rearrangement of isohalothane using aluminum chloride as the catalyst at about 50°C. (boiling point).

The trial judge’s conclusion on the issue of fact as to the absence of inventive ingenuity in Claim 2 was confirmed by the Court of Appeal. We thus have concurrent findings of fact in the Courts below and I am not disposed to interfere with them.

I would dismiss the appeal with costs.

The judgment of Spence, Pigeon, Beetz and Pratte JJ. was delivered by

PIGEON J.—By leave of this Court appellant (“Hoechst”) appeals from the judgment of the Federal Court of Appeal ([1976] 2 F.C.R. 468) reversing the judgment of Collier J. ([1974] 2 F.C.R. 266) allowing in part its action for patent infringement against respondent Halocarbon (Ontario) Limited (“Halocarbon Ont.”). The action had been instituted against both respondents but it was allowed only against the Canadian company, (“Halocarbon Ont.”), it was dismissed against the other defendant a United States company (“Halocarbon Corp.”). Halocarbon Ont. appealed and Hoechst cross-appealed.

There are two patents in suit, both pertaining to the production of halothane, a fluorinated anes-

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thetic. The first patent (no. 692,039) is for a process of production of isohalothane by reacting in the liquid phase what is called the “monomer” with hydrogen bromide. This process is carried on by Halocarbon Corp. at its plant in New Jersey and the isohalothane thus produced is supplied to Halocarbon Ont. which imports it into Canada and then uses it to manufacture halothane at its plant in Ontario using a process covered by the other patent in suit (no. 652,239). Hoechst is the Canadian patentee in both cases. It is no longer denied that the patented process is used in both cases and the only issue of substance is as to the validity of the patents. At the hearing in this Court, counsel for the respondent raised the contention that the importation of a product manufactured outside Canada did not infringe a Canadian patent for the process whereby it is manufactured elsewhere, but counsel for the appellant was informed that no reply to that submission was required. It will therefore not be dealt with.

The trial judge found the first patent valid, the second invalid. However, he held that there was infringement only by Halocarbon Ont. being of the opinion that the United States company did not have such control over it as would make it liable for the infringement. This conclusion concerning Halocarbon Corp. was hardly disputed and nothing more need be said about it.

The important issues concerning the validity of the first patent, the isohalothane patent, are those which are dealt with by the trial judge under the headings “Want of Novelty or Anticipation” and “Obviousness and Lack of Invention”.

The production of isohalothane involves the reaction of the monomer with hydrogen bromide under ultra-violet irradiation. These chemicals are gases under ordinary temperature and pressure conditions. The reaction can be effected in the gaseous phase but it is much better done in the liquid phase. This is effected by putting at the start in the reactor vessel a certain quantity of previously prepared isohalothane. All air is then removed and the two gases being introduced dissolve into the liquid which is irradiated thus pro-

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moting the reaction. The reactor vessel is allowed to fill up gradually and kept nearly full. This is what reacting in the liquid phase means and what is covered by the first patent. The reaction in the gaseous phase is not covered and could not be because it was previously known. In respect of anticipation, the trial judge says (at pp. 271-2):

…The evidence submitted here in support of the defence is a prior publication in a scientific journal in 1954. Both sides referred to it in the evidence as “Haszeldine” who was one of the experimenters and authors. Haszeldine described an experimental process wherein he reacted a monomer with hydrogen bromide and exposed it to ultra‑violet light (page 3750 of the publication). It is not disputed that exposure to ultra‑violet light is carrying out the reaction “under radical forming conditions”. The controversy in this case is whether Haszeldine’s process was carried out in the gaseous or liquid phase. Haszeldine does not expressly state one way or the other…

Dr. Schmutzler, an expert witness called on behalf of the plaintiff, and Dr. Wright, an expert witness called on behalf of the defendants, both expressed their views as to what Haszeldine disclosed to them, and as to their opinion as to whether that process was carried out in the liquid or gaseous phase. While those opinions are admissible and ought to be considered, it is for the Court to say what Haszeldine discloses.

Dr. Schmutzler, while describing Haszeldine as ambiguous on the point, felt the process had been carried out in the gaseous phase. Dr. Wright held the opposite view…

This particular problem could be resolved by merely relying on the clear fact that Haszeldine nowhere specifically indicates the gaseous phase or the liquid phase, and then applying the rules regarding degree of proof. The onus is on the defendants to establish, by a balance of probabilities, that Haszeldine, in effect, discloses the plaintiff’s invention; one is left, on the evidence before the Court, to speculate as to liquid or gaseous; a balance of probabilities has not therefore been established. I feel I must, however, go further. I am persuaded by the evidence given by Dr. Schmutzler on this point that Haszeldine probably was conducted in

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the gaseous phase. The defence of anticipation fails.

Concerning obviousness, the trial judge also found in favour of the plaintiff saying (at pp. 274‑5):

Using a paraphrase of the “Cripps question”: Was it for all practical purposes obvious to any skilled chemist in the state of chemical knowledge existing at the date of the invention, which consists of the chemical literature available and his general chemical knowledge, particularly in the field of fluorine chemistry, that he would successfully produce isohalothane (assuming the monomer used here and hydrogen bromide) in the liquid phase? After consideration of the prior literature submitted in evidence, the discussion of that prior literature by the expert witnesses, and the helpful analyses by counsel, I have concluded the question must be answered “No”.

As I indicated earlier, I am convinced the Haszeldine process was carried out in the gaseous phase and there was nothing in that prior publication to lead the skilled chemist to reasonably say it was plain the process could equally be carried out in the liquid phase…

Mr. Sim sparred at some length with Dr. Schmutzler, pressing and exploring the hypothesis that the liquid phase process was, to the skilled person, “worth a try”. Using the magnifying spectacles of hind-sight (a half-borrowed phrase), it is easy to say that any experiment, if time and expense are unlimited, in circumstances such as those hypothesized here, is or was worth a try. Taking the prior art as a mosaic, in my view, it was not at the relevant date of the invention here (July 15, 1961), for all practical purposes, obvious that anyone skilled in the art would successfully produce isohalothane in the liquid phase. This particular defence must also fail.

On this point the Federal Court of Appeal reached a different conclusion, Jackett C.J. saying (at p. 471):

The learned Trial Judge appears to have proceeded upon the assumption that the requirement of “inventive ingenuity”, is satisfied unless the “state of the art” at the time of the alleged invention was such that it would have been obvious to any skilled chemist “that he would

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successfully produce isohalothane (assuming the monomer used here and hydrogen bromide) in the ‘liquid phase’.” (The italics are mine.) I do not think that the learned Trial Judge’s assumption is correct as a universal rule. I would not hazard a definition of what is involved in the requirement of “inventive ingenuity” but, as it seems to me, the requirement of “inventive ingenuity”, is not met in the circumstances of the claim in question where the “state of the art” points to a process and all that the alleged inventor has done is ascertain whether or not the process will work successfully.

In my view this statement of the requirement of inventive ingenuity puts it much too high. Very few inventions are unexpected discoveries. Practically all research work is done by looking in directions where the “state of the art” points. On that basis and with hindsight, it could be said in most cases that there was no inventive ingenuity in the new development because everyone would then see how the previous accomplishments pointed the way. The discovery of penicillin was, of course, a major development, a great invention. After that, a number of workers went looking for other antibiotics methodically testing whole families of various microorganisms other than penicillium notatum. This research work was rewarded by the discovery of a number of antibiotics such as Chloromycetin obtained from streptomyces venezuelae as mentioned in Laboratoire Pentagone v. Parke, Davis & Co.[6], tetracycline as mentioned in American Cyanamid Co. v. Berk Pharmaceuticals Ltd.[7] where Whitford J. said (at p. 257): “A patient searcher is as much entitled to the benefits of a monopoly as someone who hits upon an invention by some lucky chance or an inspiration”. I cannot imagine patents obtained for antibiotics and for various processes for their production being successfully challenged on the basis that the discovery of penicillin pointed the way and there was no inventive ingenuity in the search for other antibiotics and in the testing and the development of processes. In my view, the true doctrine was clearly stated by the Privy Council in Pope Appliance Corporation v. Spanish River Pulp and Paper

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Mills[8], where Viscount Dunedin said (at pp. 280-1):

…After all, what is invention? It is finding out something which has not been found out by other people. This Pope in the present patent did. He found out that the paper would so stick, and the practical problem was solved. The learned judges below say that all this might have been done by any one who experimented with “doctors” and air blasts already known. That is that some one else might have hit upon the invention. There are many instances in various branches of science of independent investigators making the same discovery. That does not prevent the one who first applies and gets a patent from having a good patent,…

The same result will be obtained by putting, as the trial judge did (at p. 274), the “Cripps question” as to which Viscount Simon said in Martin and Biro Swan Ld. v. H. Millwood Ld.[9], at pp. 133-4:

…Your Lordships at least have the opportunity of affirming that the law on this matter is as stated by Jenkins, L.J., in Allmanna Svenska Elektriska A/B v. Burntisland Ship Building Coy. Ld. (1952) 69 R.P.C. 63, and that the proper question to ask is that which was formulated by Sir Stafford Cripps as counsel in Sharpe & Dohme Inc. v. Boots Pure Drug Coy. Ld. (1928) 45 R.P.C. 153 at p. 163:

“Was it obvious to any skilled chemist in the state of chemical knowledge existing at the date of the patent that he could manufacture valuable therapeutic agents by making the higher resorcinols by the use of the condensation and reduction processes described. If the answer is ‘No’ the patent is valid, if ‘Yes’ the patent is invalid.” (I have underlined the law.)

In Canadian General Electric Co. v. Fada Radio Ld.[10] at p. 101 the Privy Council said:

The law on this subject is, in their Lordships’ opinion, accurately summarized by Maclean J. in his judgment. His statement is as follows: “There must be a substantial exercise of the inventive power or inventive genius, though it may in cases be very slight. Slight alterations or improvements may produce important results, and

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may disclose great ingenuity. Sometimes it is a combination that is the invention; if the invention requires independent thought, ingenuity and skill, producing in a distinctive form a more efficient result, converting a comparatively defective apparatus into a useful and efficient one, rejecting what is bad and useless in former attempts and retaining what is useful, and uniting them all into an apparatus which, taken as a whole, is novel, there is subject-matter. A new combination of well known devices, and the application thereof to a new and useful purpose, may require invention to produce it, and may be good subject-matter for a patent”.

I would also draw attention to the following words of Lord Diplock in Technograph Printed Circuits Ltd. v. Mills & Rockley (Electronics) Ltd.[11] at p. 362:

…Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention that he claims in his specification if he started from something that was already known. But it is only because the invention has been made and has proved successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention. It may be that taken in isolation none of the steps which it is now possible to postulate, if taken in isolation, appears to call for any inventive ingenuity. It is improbable that this reconstruction a posteriori represents the mental process by which the inventor in fact arrived at his invention, but, even if it were, inventive ingenuity lay in perceiving that the final result which it was the object of the inventor to achieve was attainable from the particular starting point and in his selection of the particular combination of steps which would lead to that result.

Although professedly dealing only with the question of inventive ingenuity, Jackett C.J. seems to me to have considered also the question of anticipation because he went on to say (at pp. 471-2):

I have not overlooked the detailed references to the evidence of the experts but, as it seems to me, that evidence was to a large extent directed to the question how the Haszeldine work was actually accomplished and in no way negates the fact that a fair reading of the 1954 paper maps out, in a general way, the sort of

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reaction that was ultimately made, in a more specific manner, the subject matter of Claim 10.

adding in a footnote:

Out of fairness to the learned Trial Judge, it should be said that a leisurely study of the relevant testimony and discussion during the course of the trial, with the aid of a transcript of the proceedings that was presumably not available to him, reveals, in my view, that it was directed to the question of what was in fact done by Haszeldine and his colleague in a manner that was calculated to divert attention from the real question (i.e., what was “taught” by the Haszeldine paper and the other prior art).

With respect, the words I have underlined indicate a wrong test. It is quite true that the real question on anticipation was whether Haszeldine “taught” the subject matter of the invention. However, this question could not properly be answered affirmatively on the basis that Haszeldine’s paper did “map out, in a general way, the sort of reaction, that was ultimately made, in a more specific manner, the subject matter of Claim 10” (i.e. the invention). The proper test of anticipation is that which was stated in Pope Appliance Corporation v. Spanish River Pulp and Paper Mills, by Viscount Dunedin (at pp. 275-6):

…The test of anticipation has been dealt with in many cases. They were enumerated in the very recent case of British Thomson Houston Co. v. Metropolitan Vickers Electrical Co. 45 R.P.C. 1. A passage in the judgment Ibid. 23, runs thus: “In Otto v. Linford (1882) 46 L.T. 35, 46. Holker L.J. expresses himself thus: “We have it declared in Hill v. Evans (1862) 4 D.F. & J. 288, as the law, and it seems very reasonable, that the specification which is relied upon as the anticipation of an invention must give you the same knowledge as the specification of the invention itself.” And in Flour Oxidising Co. v. Carr & Co. (1908) 25 R.P.C. 428, 457, Parker J. (afterwards Lord Parker) says: “Where the question is solely a question of prior publication, it is not, in my opinion, enough, to prove that an apparatus described in an earlier specification could have been used to produce this or that result. It must also be shown that the specification contains clear and unmistakable directions so to use it.” And the remarks of Lord Dunedin in Armstrong, Whitworth & Co. v. Hardcastle (1925) 42 R.P.C. 543, 555, are quite in line with these dicta.” In the same case the test is stated (45 R.P.C. 1, 22), and

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turning the particular instance to the general may be expressed thus: Would a man who was grappling with the problem solved by the patent attacked, and having no knowledge of that patent, if he had had the alleged anticipation in his hand, have said, “That gives me what I wish?”

To “map out, in a general way, the sort of reaction” is very far from “giving the same knowledge” or “clear and unmistakeable directions”. On the application of any proper test it cannot be said that Haszeldine’s paper contained clear directions for a process for the preparation of isohalothane in the liquid phase. In fact, no one contended at the trial that this was clearly taught.

It therefore appears to me that the trial judge was correct in holding that the defence of anticipation failed, because he was unable to find that it had been shown on a balance of probabilities that Haszeldine’s paper disclosed the carrying out of the reaction in the liquid phase. I find strong confirmation of this conclusion in the undisputed fact that Halocarbon Corp. at first carried out the reaction in the gaseous phase. As stated by its plant manager, the witness O’Donnell, it made isohalothane by the gaseous phase method before December 1962, but once they had started using the process in the liquid phase they never went back to the old one “because it (the liquid phase) was better”. In my view, this same fact also serves to disprove the notion that the liquid phase process was obvious. Seeing that it is admittedly better, why was it not used sooner, if obvious?

The evidence does not disclose for how long the gaseous phase process was used by Halocarbon Corp. However, here is the chronology:

Haszeldine’s paper: 1954.

The invention (trial judge at p. 275): July 15, 1961.

Start of use of liquid phase process by Halocarbon Corp. (O’Donnell): December 17, 1962.

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Patent issued: August 4, 1964.

In my opinion the Federal Court of Appeal erred in law in reversing the trial judge and I would restore his decision on the isohalothane patent.

The second patent covers the process used by Halocarbon Ont. for converting isohalothane into halothane. This is effected by molecular rearrangement in the presence of a catalyst again under the influence of ultra-vilolet irradiation. In a patent obtained by one Bayer, this very reaction was described as performed at about 0°C. In the disclosure it was said: “Undesirable side reactions occur at higher temperatures and lead to a considerable decrease in yield even at 40°C”. As to the Hoechst patent the trial judge said (at p. 284):

The specification of the patent in suit then goes on and I quote, with the substitutions I indicated at the outset:

Now, we have surprisingly found that… (halothane)… can be prepared by intramolecular rearrangement of… (isohalothane)… by means of aluminum bromide even at a temperature above 0°C, preferably at the boiling temperature which is about 50°C for the starting compound as well as for the final product.

That is what the patentee claims as the invention; that is what I find to be the “invitation”, assuming it meets the tests of patentability.

The reason for which this patent was adjudged invalid is stated as follows (at pp. 286-7):

The inventive step forward alleged by the plaintiff over Bayer is the successful rearrangement process (with good yield and no undesirable side effects) using aluminum bromide as a catalyst at temperatures above and 0°C, preferably at about 50°C. One can only conclude that the temperature integer is, in the mind of the patentee, an essential element of the invention. The evidence before me, from the plaintiff’s expert, is that the temperature factor is not an essential part of the invention or claim. Dr. Schmutzler said the rate of reaction of the process was a function of temperature; at lower temperatures the reaction is slower; somewhat different cooling methods might be required for differ-

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ent temperatures; a convenient way to dissipate heat is to operate at the boiling point. He went on to say (and I summarize) that it is not essential to carry out the plaintiffs process at about 50°C; that there is no special temperature at which this reaction should be run; 50°C. is not exclusive in any way.

I accept Dr. Schmutzler’s statements. I find that the temperature over 0°C, and preferably about 50°C. is not an essential of the invention claimed. If the temperature asserted by the plaintiff in the patent is not essential to the alleged invention, then I am unable to see what inventive ingenuity there was over Bayer.

With respect, I must say that in my view the trial judge misapprehended Doctor Schmutzler’s statement. Having carefully read the whole evidence and paid special attention to every passage mentioned by counsel on either side, I am sure that the only statement by Doctor Schmutzler which could possibly be relied on to support the above finding is in the following answer to counsel for the plaintiff:

MR. MORPHY: Q. TO one skilled in the art is it essential that the entire process in the Hoechst patent be carried out at 50 degrees?

A. No, it is not essential to carry it out at 50 degrees because, as the Bayer patent has shown, the rearrangement does occur at zero degrees, but under very undesirable circumstances. If you increase the temperature above zero degrees, the situation becomes even more undesirable there is a build-up of by-products which reduces your yield and may create separation problems too. So I think that is the answer, that there is no particular, or no special temperature at which this reaction should be run and all I can repeat and stress time and time again, is that the 50 degree temperature, or thereabouts, is a particularly convenient temperature to run the reaction at for the reasons which I have explained, but it is in no way necessary to carry out the reaction at exactly that temperature, which must really be obvious to anybody who is familiar with carrying out Friedel-Crafts rearrangements at that time, which happen to be exothermic reactions. It is a matter of temperature control.

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This clearly means that the reaction can be carried out at temperatures other than 50°C and not that carrying it out at temperatures around 50°C was not an essential feature of the invention. This is borne out by the following statement made by Doctor Schmultzer in dealing with questions as to what does the Bayer patent “teach”:

…It teaches that the use of aluminum bromide at zero degrees is feasible in halothane as a medium—is a feasible method of rearranging iso-halothane to halothane. It also teaches that employing temperatures in excess of zero degrees leads to the formation of undesired by-products and a decrease in yield, and even at a temperature of only 40 degrees there is a very considerable decrease in yield. So, this constitutes a very strong prejudice against trying this very reaction at temperature higher than 40 degrees, which is exactly the technical advance in the Hoechst patent, because against this prejudice, the Hoechst people have employed a higher temperature, namely 50 degrees, have carried out this rearrangement of iso-halothane to halothane in a halothane medium, using aluminum bromide as a catalyst at 50 degrees. [My emphasis]

In my view, it is abundantly clear that the essence of the Hoechst invention was the discovery that the desired reaction could be obtained more readily and more economically at temperatures around 50°C instead of having to be done at 0°C. It was the same reaction as described in the Bayer patent but that patent taught that it had to be done at about 0°C and that undesirable side reactions occurred at higher temperatures. The discovery was that better results without undesirable side reactions were obtained at about 50°C and Doctor Schmultzer explained:

…you are in for the unforseeable with fluorine compounds and I think that is all there is to it.

The only relief asked for by the appellant in respect of the second patent is that the case be referred back to the trial judge.

For those reasons I would allow the appeal against respondent Halocarbon (Ontario) Limited with costs in this Court and in the Court of Appeal, set aside the judgment of the Federal Court of Appeal, restore the judgment at trial in so far as it holds that Claim 10 of Canadian

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Patent 692,039 is valid and has been infringed by Halocarbon (Ontario) Limited but set aside said judgment concerning Claim 2, of patent 652,239, and refer back this part of the case to the trial judge for disposition on a proper interpretation of what constitutes the essence of the invention.

Judgment accordingly, MARTLAND, DICKSON and ESTEY JJ. dissenting.

Solicitors for the appellant: Rogers, Beveskin & Parr, Toronto.

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