Dableh v. Ontario Hydro

citation(s): (1996) 68 C.P.R. (3d) 129 (F.C.A. per Strayer J.) (Linden and Robertson J.J.A. concurring)

copyright 1997 Donald M. Cameron, Ogilvy Renault LLP




The Decision

At p. 142-143:

"The appellant maintains that in construing claim 1 by reference to prior art and the concept of obviousness the Trial Judge has confused the task of determining a patent's validity with that of claim construction. We agree. Whether a claim is invalid for obviousness or lack of novelty is irrelevant to its proper construction. Claim construction must be done before, and independent of, assessing whether the defense of invalidity is sustainable."

At p. 144 - 145:

The proper construction of claim 1 hinges on the meaning of two terms: "varying electric current" and "electromagnetic coil". The Trial Judge held that the former term is not broad enough to embrace an AC current and, therefore, must be limited to a DC current. With respect to the latter term, the Trial Judge found it to be limited to a sturdy, heavy coil akin to a Bitter coil of the kind that Dr. Dableh had used. (See Reasons at 308.) In reaching both conclusions, the Trial Judge made recourse to the Patent's disclosure and in particular the preferred embodiment described and depicted by diagram therein; that is to say the device that Dr. Dableh had actually built. At this point claim 1 bears repeating:

1. In a fluid-cooled nuclear reactor having a calandria comprising an array of longitudinally extending calandria tubes each housing a coolant tube extending coaxially therethrough, each coolant tube being spaced from its associated calandria tube by annular spacers seated therebetween, a method of repositioning a selected one of said spacers in situ by displacing it longitudinally from an initial position to a required position, which method comprises advancing an electromagnetic coil interiorly along the coolant tube to a position adjacent the spacer and passing a varying electric current through the coil, the position of the coil relative to the spacer and the magnitude and rate of change of current being such as to exert an electromagnetic repulsive force on the spacer in the direction of the required displacement and sufficient to overcome static friction at the seating of the spacer between the tubes. [Emphasis added.]"

It is a matter of settled law that recourse to the disclosure portion of the specification is: (1) permissible to assist in understanding the terms of the claims; (2) unnecessary where the words are plain and unambiguous; and (3) improper to vary the scope or ambit of the claims. (See Beecham Canada Ltd. V. Procter & Gamble Co. (1982), 61 C.P.R. (2d) 1 at 11 (F.C.A.), per Urie, J.A. leave to appeal to the Supreme Court of Canada refused, 63 C.P.R. (2d) 260n; and more recently see Unilever PLC v. Procter & Gamble Inc. (1995), 61 C.P.R. (3d) 499 (F.CA.), per Stone J.A.; as to cases in which a term in a claim was found to be ambiguous and resort to the disclosure was necessary, see TRW Inc. v. Walbar of Canada Inc. (1991), 39 C.P.R. (3d) 176 (F.C.A.) and Nekoosa Packacking Corp. v. AMCA International Ltd. (1994), 56 C.P.R. (3d) 470 (F.C.A.).) It is equally clear that where the words used in the claims are clear nad umambiguous, they must not be narrowed or limited to a patent's preferred embodiment. (See Electric & Musical Industries, Ltd. v. Lissen, Ltd. (1939), 56 R.P.C. 23 (H.L.) at 41-2, per Lord Russell; Lovell Manufacturing Co. v. Electric & Bros. Ltd. (1962), 23 Fox Pat. C. 112 at 134, 41 C.P.R. 18(Ex. Ct.); and Molins and Molins Machine Co. Ltd. v. Industrial Machinery Co. Ltd. (1938), 55 R.P.C. 31 at 39 (C.A.), per Greene, M.R.)

"Against this legal framework, the issue is whether the terms "varying electric current" and "electromagnetic coil" were found to be ambiguous and, therefore, the Trial Judge was justified in resorting to the disclosure to resolve any ambiguity. In our view, the evidence clearly establishes that no ambiguity existed and that claim 1 is worded broadly enough to cover an AC source of electricity and coils other than Bitter or near Bitter coils.

"We note that on appeal the respondent did not argue that the term "varying electric current" was ambiguous, but only that the Trial Judge was entitled to have recourse to the entire specification for purposes of claim construction. (See Respondent's Memorandum of Fact and Law at para, 22) Of greater relevance is the fact that none of the respondent's witnesses perceived any ambiguity in the meaning and scope of the term in question. As stated by Dr. Laithwaite, a witness for Ontario Hydro "[an] alternating current is a varying electric current": Laithwaite, cross-examination, Trial Transcript, Vol. 9 at 1525; see also Laithwaite affidavits, Trial Exhibit 72, Appeal Book, Vol. 7 at 1156; Lavers Affidavits reproduced in Reasons at 309; Ford Discovery, Trial Exhibit 2, Appeal Book, Vol. 1 at 104. The Trial Judge rejected the evidence of the appellant's expert witnesses for lack of credibility."

Re use of experts at p. 145:

It is a matter of accepted law that the task of construing a patent's claim lies within the exclusive domain of the trial judge. In strict legal theory it is the role of expert witnesses, that is those skilled in the art, to provide the judge with the technical knowledge necessary to construe a patent as though he or she were so skilled. Where the experts disagree, it is incumbent on the Trial Judge to make a binding determination. (See Nekoosa, supra, at 476-77.) But in cases such as the one under appeal, where there is no disagreement among the witnesses as to the meaning of a technical term a finding to the contrary by a Trial Judge must be seen as being made without regard to the evidence.

Re teachings of the patent at p. 146-147:

"We are also cognizant of the fact that the Trial Judge's finding that the disclosure warns against the use of a AC current might be perceived as undermining the position adopted by the parties and their respective witnesses. Given the significance attached to this finding by the Trial Judge it warrants further consideration. The Trial Judge's conclusion on this part is found at page 345 of his Reasons:

"Whenever in this patent "a varying electric current." is expressed, it does not mean or include AC. The specific reference to AC line source is hereby interpreted to teach that alternating current is not to be used for purposes of the alleged invention...

"The portion of the disclosure which the Trial Judge interpreted to warn against the use of an AC line current reads (See Reasons at 297):

"The primary current may be supplied by AC line source, but in practice, to avoid possible overheating of the coil 19, an oscillatory current of short duration and finite energy more in the nature of a pulse may be used, as in particular embodiments described below. [Emphasis added.]

"Standing by itself, we do not believe that that sentence justifies such an interpretation, particularly when regard is had to the following passage also contained within the disclosure (See Reasons at 297-298):

"The current pulse to be applied to the electromagnetic coil 19 may be obtained from any suitable source, for example a homopolar generator, but the applicant has been most successful in obtaining the necessary current pulse from a single discharge of a capacitor bank charged to a suitable energy level."[Emphasis added.]

"Reading these passages together, it is apparent that even if resort to the disclosure were proper for purposes of interpreting claim 1, it does not warn against the use of an AC source, but rather warns that the use of an AC source can lead to problems with over-heating. Although the disclosure suggests that the appellant's preferred DC embodiment is one means of avoiding the over-heating problem, it is implicit that if the problem can be otherwise over-come, AC is also a viable current source. In effect, the creators of the SLAR system heeded Dr. Dableh's warning. The SLAR system attempts to overcome the over-heating problem and make the use of an AC source viable by incorporating coils with a large number of turns and with ferromagnetic cores. This allows the desired electromagnetic effect to be created with markedly smaller current magnitude and frequency.

"This brings us to the question of the proper construction of "electromagnetic coil" in claim 1. In his construction of that claim, the Trial Judge determined that the coil referred to is that which is illustrated in figures 3-5, 7-10, and 12 of the Patent. (See Reasons at 301.) As a result, he construes the term to mean coil that is "of heavy construction as if machine-cut from a block, or billet, of copper." The Trial Judge finds that Dr. Dableh's choice of "heavy, sturdy air coil" is an essential feature of the Patent, and limits the scope of the Patent accordingly. (See Reasons at 308.) There is no indication in the Reasons that the Trial Judge found the term electromagnetic coil to be ambiguous. Nor does the respondent argue that it is. The respondent, nonetheless, submits that the term must be construed by reference to the disclosure. We do not agree. As with the term varying electric current, the Trial Judge has erroneously narrowed the scope of the claim to what Dr. Dableh had built (the preferred embodiment or example) as opposed to what is claimed. Certainly, there is no indication that the coils used in the SLAR are not electromagnetic coils.

"In summary, the Trial Judge erred in construing the meaning of the terms varying electric current and electromagnetic coil by reference to the embodiments illustrated and described in the disclosure of the Patent. The terms are not ambiguous, and on their face encompass AC current and coils other than the type used by the appellant. In doing so he committed an error in law. We are also of the view that there is no need to pursue the arguments advanced with respect to the construction of the remaining claims in issue. As is discussed below, claim 1 is as broad a claim as one is likely to find in any patent and it if has been infringed, it is unnecessary to construe the others. We turn now to the perfunctory exercise of deciding the infringement issue.

At p. 148:

"We have in effect found that, assuming the validity of the Patent, actual use of the invention could infringe claim 1.

Re experimental use at p. 149:

"The law does not regard testing to be an infringing use, Jessel M.R. summarized the law's perspective on the use of patented technology for testing purposes in Frearson v. Loe (1878), 9 Ch. D. 48 at 67 (Ch.):

"Patent rights were never granted to prevent persons of ingenuity exercising their talents in a fair way. But if there be neither using nor vending of the invention for profit, the mere making for the purpose of experiment, and not for a fraudulent purpose, ought not to be considered within the meaning of the prohibition, and if it were, it is certainly not the subject for an injunction.

"This perspective has been accepted by the Supreme Court of Canada. In Micro Chemicals Limited v. Smith Kline & French Inter-American Corporation, [1972] S.C.R. 506 at 520, 2 C.P.R. (2d) 193 (S.C.C.), Hall J. stated:

"The use Micro was making of the patented substance here was not for profit but to establish the fact that it could manufacture a quality product in accordance with the specification disclosed in respondent's application for patent No. 612204 ...Micro's experiments ...were not carried out for the purpose of improving the process but to enable Micro to produce it commercially as soon as the licence it had applied for could be obtained. I cannot see that this sort of experimentation and preparation is an infringement."

Re scope of licence at p. 150-151:

"In our view, the development of a workable LIM tool for relocating spacers, whether on the respondent's own initiative or in conjunction with others, is clearly within the scope of the respondent's business and undertakings. Actual use of the tool in the respondent's own reactors is also within its business and undertakings. However, to protect under the respondent's licence the use of the tool by Hydro Quebec or New Brunswick power in their respective reactors would extend the scope of the licence too far. Such as interpretation would unduly undermine the appellant's patent rights as it would allow the royalty-free use of his invention in any reactor in Canada. The respondent's business and undertakings cannot be construed so broadly as to encompass the business and undertakings of others. Accordingly, the respondent's licence is no defense to an action for inducement."

Quia timet injunction at p. 152:

"Therefore, a permanent injunction will be issued preventing the respondent from inducing the use, other than in its own business and undertakings, of the LIM apparatus as part of a SLAR or any similar apparatus whose use would constitute infringement by a non-licensed user of the Patent."

Judgment at p. 153:

"In conclusion, we are of the opinion that this appeal must be allowed and the judgment of the Trial Division set aside. The appellant is entitled to an injunction enjoining the respondent from inducing the use by Hydro Quebec or New Brunswick Power of the LIM component of the SLAR. The appellant is also entitled to his costs here and in the Trial Division. The cross appeal is dismissed without costs."


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