Mobil Oil Corp. et al. v. Hercules Canada Inc., (1994) 82 F.T.R. 211 (TD)

• Judge: Wetston, J.
• Court: Federal Court (Canada)
• Case Date: September 21, 1994
• Jurisdiction: Canada (Federal)
• Citations: (1994), 82 F.T.R. 211 (TD)

Mobil Oil Corp. v. Hercules Can. Inc. (1994), 82 F.T.R. 211 (TD)

MLB headnote and full text

Mobil Oil Corporation and Mobil Chemical Canada Ltd. (plaintiffs) v. Hercules Canada Inc. (defendant)

(T-2138-87)

Indexed As: Mobil Oil Corp. et al. v. Hercules Canada Inc.

Federal Court of Canada

Trial Division

Wetston, J.

September 21, 1994.

Summary:

The plaintiffs had a patent for a biaxially oriented polypropylene film substrate and its method of manufacture. The plaintiffs sued the defendant for patent infringement, alleging that the defendants heat sealable polypropylene metallizable film infringed the plaintiffs' patent. The defendant counterclaimed, seeking to have the action dismissed and a declaration that the patent was invalid.

The Federal Court of Canada, Trial Division, allowed the defendant's counterclaim, declaring that the patent was invalid. The court opined however that certain of the defendant's activities substantially infringed the claims in the plaintiffs' patent.

Patents of Invention - Topic 1006

The specification and claims - Interpretation of - [See all three Patents of Invention - Topic 1026 ].

Patents of Invention - Topic 1026

The specification and claims - Construction of a patent - General - The Federal Court of Canada, Trial Division, held that the relevant date for construing a patent and determining what the claims and specification meant to a person skilled in the art was the patent application date - See paragraphs 11 to 14.

Patents of Invention - Topic 1026

The specification and claims - Construction of a patent - General - The Federal Court of Canada, Trial Division, stated that the contract doctrine of contra proferentum, "is not a principle which has found favour in patent law and, ... it is one which runs directly contrary to the principles of patent interpretation. To apply this contract law doctrine to a patent specification would be to apply too strict a standard to a document meant to be interpreted more generously ..." - See paragraph 63.

Patents of Invention - Topic 1026

The specification and claims - Construction of a patent - General - The Federal Court of Canada, Trial Division, stated that "the construction of a patent is a question of law. The claims define the monopoly of the patent and the court must interpret the claims without considering the underlying questions of infringement or invalidity. The disclosure portion of the specification may be used to assist in understanding the terms of the claim, but where the language of the claim is plain and unambiguous, resort should not be had to the disclosure. The court must also not use the descriptions to alter or vary the scope of the claims ... Lastly, the court should take a purposive approach in interpreting the claims and not one which is unduly technical or literal ..." - See paragraph 16.

Patents of Invention - Topic 1032

The specification and claims - Construction of a patent - Particular patents - The plaintiffs had a patent for a biaxially oriented polypropylene film substrate and its method of manufacture - The Federal Court of Canada, Trial Division, interpreted the claims in the plaintiffs' patent - See paragraphs 9 to 26.

Patents of Invention - Topic 1128.1

The specification and claims - The description - Sufficiency of description of invention - The plaintiffs had a patent respecting a biaxially oriented polypropylene film substrate - The defendant challenged the validity of the patent under s. 34 of the Patent Act, arguing that the specification of the patent was insufficient to support certain of the claims, the claims were ambiguous and avoidably obscure, the claims were broader than any invention disclosed in the specification and each of the claims extended to methods or products which were not useful - The Federal Court of Canada, Trial Division, held that the patent was invalid because there was an insufficiency in the disclosure and ambiguity in the claims - The court held that the claims were not too broad, nor was the patent invalid for inutility - See paragraphs 44 to 71.

Patents of Invention - Topic 1130

The specification and claims - The description - Claims for more than what was invented - [See Patents of Invention - Topic 1128.1 ].

Patents of Invention - Topic 1251

Reissue of patents - General - Section 47 of the Patent Act governed the reissue of patents - The Federal Court of Canada, Trial Division, stated that "the purpose of s. 47 is to allow a patentee an opportunity to correct any deficiencies in the patent in order to properly disclose the invention, as was intended at the time of the invention. It is not to allow the patentee an opportunity to alter the subject matter of the patent, so that it is outside the limits of the intended invention ... Further, s. 47 allows for the exercise of discretion on the part of the Commissioner of Patents in deciding whether to grant the reissue" - See paragraph 28.

Patents of Invention - Topic 1279

Reissue of patents - Validity of reissue - Where original patent defective - In 1983 the plaintiffs were issued a patent - In 1987 the patent was reissued under s. 47 of the Patent Act - The defendant claimed that the plaintiffs' patent was invalid, arguing that the reissue should not have been granted because: (1) the original patent was neither inoperative nor defective; (2) if there was an error in the original patent, it did not arise from inadvertence, accident or mistake; and (3) the reissued patent was not for the same invention as the original patent - The Federal Court of Canada, Trial Division, rejected the defendant's argument, holding that there was a valid reissue under s. 47 - See paragraphs 27 to 43.

Patents of Invention - Topic 2888

Infringement of patent - Acts constituting an infringement - Particular patents - The plaintiffs had a patent for a biaxially oriented polypropylene film substrate and its method of manufacture - The plaintiffs sued the defendant for patent infringement, alleging that the defendants heat sealable polypropylene metallizable film infringed the plaintiffs' patent - The Federal Court of Canada, Trial Division, held that the plaintiffs' patent was invalid, but opined that the defendant substantially infringed the patent claims.

Cases Noticed:

Burton Parsons Chemicals Inc. et al. v. Hewlett-Packard (Canada) Ltd. et al., [1976] 1 S.C.R. 555; 3 N.R. 553; 17 C.P.R.(2d) 97, refd to. [para. 13].

Minerals Separation North American Corp. v. Noranda Mines Ltd. (1952), 15 C.P.R. 133; 12 Fox Pat. C. 123; 69 R.P.C. 81 (P.C.), refd to. [para. 13].

AT & T Technologies Inc. v. Mitel Corp. (1989), 28 F.T.R. 241; 26 C.P.R.(3d) 238 (T.D.), refd to. [para. 14].

Procter & Gamble Co. v. Kimberly-Clark of Canada Ltd. (No. 4) (1991), 49 F.T.R. 31; 40 C.P.R.(3d) 1 (T.D.), refd to. [para. 14].

Hi-Qual Manufacturing Ltd. et al. v. Rea's Welding & Steel Supplies Ltd. (1994), 74 F.T.R. 99 (T.D.), refd to. [para. 14].

Procter & Gamble Co. v. Beecham Canada Ltd. and Calgon Interamerican Corp. (1982), 40 N.R. 313; 61 C.P.R.(2d) 1 (F.C.A.), refd to. [para. 16].

Catnic Components Ltd. v. Hill & Smith Ltd., [1981] F.S.R. 60; [1982] R.P.C. 183 (H.L.), refd to. [para. 16].

Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd., [1981] 1 S.C.R. 504; 35 N.R. 390; 122 D.L.R.(3d) 203; 56 C.P.R.(2d) 145, refd to. [para. 16].

Northern Electric Co. v. Photo Sound Corp., [1936] Ex. C.R. 75, affd. [1936] S.C.R. 649, refd to. [para. 28].

Auer Incandescent Light Manufacturing Co. v. O'Brien (1897), 5 Exch. C.R. 243, refd to. [para. 28].

Farbwerke Hoechst Aktiengessellschaf v. Commissioner of Patents, [1966] S.C.R. 604, refd to. [para. 36].

Curl-Master Manufacturing Co. v. Atlas Brush Ltd., [1967] S.C.R. 514; 36 Fox Pat. C. 84, refd to. [para. 39].

Diversified Products Corp. and Brown Fitzpatrick Lloyd Patent Ltd. v. Tye-Sil Corp. (1991), 125 N.R. 218; 35 C.P.R.(3d) 350 (F.C.A.), refd to. [para. 44].

Pioneer Hi-Bred Ltd. v. Commissioner of Patents, [1989] 1 S.C.R. 1623; 97 N.R. 185; 60 D.L.R.(4th) 223; 25 C.P.R.(3d) 257, refd to. [para. 46].

Cabot Corp. and Cabot Canada v. 318602 Ontario Ltd. and 502078 Ontario Ltd. (1988), 17 F.T.R. 54; 20 C.P.R.(3d) 132 (T.D.), refd to. [para. 51].

Hsiung's Patent, Re, [1992] R.P.C. 497 (Eng. C.A.), refd to. [para. 52].

Burns & Russell of Canada Ltd. v. Day & Campbell Ltd., [1966] Ex. C.R. 673, not folld. [para. 62].

Mullard Radio Valve Co. v. Philco Radio and Television Corp. of Great Britain Ltd. (1936), 53 R.P.C. 323 (H.L.), refd to. [para. 65].

Wellcome Foundation Ltd. et al. v. Apotex Inc. (No. 1) (1991), 47 F.T.R. 81; 39 C.P.R.(3d) 289 (T.D.), refd to. [para. 66].

Gilbert (Jules R.) Ltd. v. Sandoz Patents Ltd. (1970), 64 C.P.R. 14 (Ex. Ct.), refd to. [para. 73].

Beloit Canada Ltée/Ltd. v. Valmet Oy (1984), 78 C.P.R.(2d) 1 (F.C.T.D.), refd to. [para. 74].

Rothmans, Benson & Hedges Inc. et al. v. Imperial Tobacco Ltd. (1991), 42 F.T.R. 68; 35 C.P.R.(3d) 417 (T.D.), refd to. [para. 74].

Western Electric Co. v. Baldwin International Radio of Canada Ltd., [1934] S.C.R. 570; [1934] 4 D.L.R. 129, refd to. [para. 77].

Allied Signal Inc. v. DuPont Canada Inc. and Complax Corp. (1993), 68 F.T.R. 17; 50 C.P.R.(3d) 1 (T.D.), refd to. [para. 77].

Eli Lilly and Co. and Thomas Engineering Ltd. v. Novopharm Ltd. (1989), 99 N.R. 60; 26 C.P.R.(3d) 1 (F.C.A.), refd to. [para. 84].

O'Hara Manufacturing Ltd. v. Eli Lilly & Co. - see Eli Lilly and Co. and Thomas Engineering Ltd. v. Novopharm Ltd.

Martinray Industries Ltd. et al. v. Fabricants National Dagendor Manufacturing Ltd. et al. (1991), 49 F.T.R. 81; 41 C.P.R.(3d) 1 (T.D.), refd to. [para. 84].

Statutes Noticed:

Patent Act, R.S.C. 1985, c. P-4, sect. 34 [para. 10]; sect. 47, sect. 54 [para. 1].

Authors and Works Noticed:

Black's Law Dictionary (6th Ed. 1990) [para. 62].

Fox, Harold, The Canadian Law and Practice Relating to Letters Patent for Inventions (4th Ed. 1969), p. 171 [para. 50].

Hughes, Roger T. and Woodley, John H., Patents (1984), p. 409 [para. 57].

Counsel:

G. Alexander Macklin, Q.C., Anthony Greber and Gordon Thompson, for the plaintiff;

James D. Kokonis, Q.C., Glenn Tremblay and Steven Garland, for the defendant.

Solicitors of Record:

Gowling, Strathy & Henderson, Ottawa, Ontario, for the plaintiff;

Smart & Biggar, Ottawa, Ontario, for the defendant.

This action was heard in Ottawa, Ontario, on June 6 to 10 and 13 to 16, 1994, before Wetston, J., of the Federal Court of Canada, Trial Division, who delivered the following judgment on September 21, 1994.