Lovell Manufacturing Co. v.
copyright 1997 Donald M. Cameron, Aird & Berlis
At p. 47
"It is also important to consider the kind of prior publication that should not be regarded as an anticipation of such an invention. Thus it is established that a publication that disclosed an inoperable device cannot be an anticipation of a subsequent invention. In the light of the test laid down by Viscount Dunedin to which I have referred the correctness of this principle is manifest. How could a person such as the man referred to by Viscount Dunedin who had only in his hand a patent that disclosed an inoperable device say - That gives me what I wish? The question answers itself in the negative."
At p. 70-71
"It is elementary that so far as a patent is a contract it is subject to the same rules of construction as would be applicable to a document embodying the terms of a contract.
Moreover, it is established that the construction of a patent specification is a matter of law and as such exclusively within the province of the Court."
"The first duty of the Court in a patent infringement action is to construe the claims in suit according to the recognized canons of construction, for it is in the claims and only in the claims that the monopoly for which the patent was granted is defined."
"And extrinsic evidence is inadmissible for the purpose of construing a patent specification."
"Likewise, his basic contention that the claims in suit must be construed in such a way as to limit the application of each to an invention of one of the specific wringer constructions described in patent No. 480,899 must be rejected. The statements of Lord Russell of Killowen in the Electric and Musical Industries v. Lissen case (supra) are applicable and demonstrate beyond the possibility of dispute that the contention is erroneous. There is no support for the submission that the substance of the patented invention consists of the four specific wringer constructions described in the specification. They may respectively come within the scope of one or other of the claims in suit but the ambit of the invention is not limited to them. Its limits are fixed by the claims, for they and they alone define the plaintiff's monopoly. Effect must, therefore, be given to them, unless it is shown that they are invalid. It is not permissible by reference to the specification to alter the boundaries of the plaintiff's property fixed by the claims or to limit the ambit of the invention defined in them to any of the specific wringer constructions referred to."
Lovell Manufacturing Company v. Beatty Bros. Limited (1962) 23 Fox Pat. C. 112 (Ex. Ct.), per Thorson P.
At p.122-134 see esp. 131-132 and 134
"It follows from the basic principles referred to that a statement made by the agent of a patentee in the course of the prosecution of his application for a patent, whenever it was made, whether in the United States for his United States patent or elsewhere or in Canada for the Canadian patent, is inadmissible for the purpose of construing the claims in the patent granted to him or limiting the ambit of the invention defined in them. It follows, accordingly, that the United States file wrappers covering the prosecutions in the United States Patent Office of the plaintiff's applications for its United States patents said to correspond with the patents in suit and also the Canadian Office of the plaintiff's applications for the patents in suit are inadmissible for the purpose of construing the claims in suit or limiting the ambit of invention defined in them.
The reason for this is sound. When the patent has been issued it is a public document. The claims appearing in it define the invention for which the patent was granted and as such define the extent of the patentee's monopoly. As Lord Russell of Killowen said, it is their function "to define clearly and with precision the monopoly claimed, so that others may know the exact boundaries of the area within which they will be trespassers." It is to the claims alone that the members of the public must look to ascertain the boundaries of the patentee's property on which they must not trespass, for, as Lord Russell said, "the forbidden field must be found in the claims and not elsewhere." Moreover, the claim in a patent fulfills a distinct function for, as Lord Russell also said, "It and it alone defines the monopoly." The members of the public have no knowledge of what may have been told to the examiners in the course of the prosecution of the application for the patent in the Canadian Patent Office and, certainly, no knowledge of what may have been said in the course of the prosecution of an application for a patent in another country, and they are not affected by any such statement or concerned with it. They are entitled to know that the forbidden field is defined by the language of the claims of the patent and that they need not look elsewhere."
It would, therefore, be contrary to fundamental principles to allow the defendant to use statements made by the plaintiff's patent agent whether in the course of its prosecutions of its applications for its United States patents or, for that matter, in the course of its prosecution of its applications for the patents in suit for the purpose of restricting the meaning of the words of the claims in suit and limiting the ambit of the invention defined in them. And, since the prime purpose of counsel for the defendant in tendering the United States and Canadian file wrappers was to use statements said to be contained in them for the purpose submitted their admission for such purpose would be contrary to fundamental principles. I have no hesitation, therefore, in ruling that they were inadmissible.
Indeed, I cannot think of any grounds on which the file wrappers in question should be received in evidence. They have nothing to do with any of the issues between the parties.
Thus, the attempt by counsel for the defendant to construe the claims in suit and limit the ambit of invention defined in them or to defeat the plaintiff's patents by resort to the file wrappers fails."
At p. 162
"If the alleged infringement falls within the express terms of a claim in suit, as construed according to the recognized canons of construction, that is the end of the matter for the defendant is clearly guilty of the charge of infringement."
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