Case Comment

Procter & Gamble Inc. and The Procter & Gamble Company v.
Unilever PLC, and Lever Brothers Limited

citation(s): (1995), 61 C.P.R. (3d) 499 (F.C.A. per Stone J.A.)

copyright 1997 Donald M. Cameron, Aird & Berlis




The Decision

At p. 515

"In American Cyanamid, supra, an issue of validity was raised. The case involved an action for infringement of a method of producing an antibiotic. At pages 257-258, Whitford J. referred to a line of cases which hold that a patentee who has discovered a new principle is entitled to claim all modes of carrying it into effect. The principle is illustrated by Pearson J. in Badische Anllin und Soda Fabrik v. Levinstein (1883), 24 Ch. D. 156, in a passage which was recited by Whitford J. at page 258:

But when a patent is taken out for a new result not known before, and there is one process described in the patent which effectual for the purpose of arriving at the new result at the time when the patent is taken out, the patentee is entitled to protection against all other processes for the same result, and no person can, without infringing upon his patent, adopt simply a different process for arriving at the same result. That is stated in a great number of cases and in great detail.

In another passage from the same case recited by Whitford J. at the same page, Pearson J. continued:

And in a later case before Lord Westbury, Lord Westbury with his usual terseness, states the matter in a manner still more pointed. I am referring now to the case of Curtis v. Platt. I am reading it from Mr. Goodeve's book at page 102. He says:

"It is extremely desirable that when a beneficial idea has been started by one man, he should have the benefit of his invention, and that it should not be curtailed or destroyed by another man simply improving upon that idea; but if the idea be nothing in the world more than the discovery of a road to attain a particular end, it does not at all interfere with another man discovering another road to attain that end, any more than it would reasonable to say that if one man has a road to go to Brighton by Croydon another man shall not have a road to go to Brighton by Dorking.

"By claiming "a distributing agent", without more, the appellants say that the patentee has in effect tried to monoplise all "roads to Brighton" and thereby had indulged in covetousness."

At pp. 517-518

"I agree with the Trial Judge's view, at page 74 of his reasons, that a reading of the Patent as a whole does make clear the kinds of substances which the inventors had in mind in order to work or practice the invention. It is not disputed that SMS falls within the term "nonionic compounds". These are further described in the Patent by the words "which are molten or softened at drier temperatures, and, moveover, because of their surface active characteristics, tend to promote spreading". I agree in particular with the use he made of the specification including the full passage I have just recited from pages 3-4 thereof. As he put it, at page 76:

Given the examples set out in the patent, the notion of claiming everything-under-the-sun is diminished and restricted. Indeed the compostion is further restricted by the above recited characteristics: "*** innocuous substances which after formulation [with the described adjuvant, as is made clear over on p. 4], are meltable, sublimable, soluble or softenable [i.e. not all of the foregoing, but one or some thereof], or otherwise spreadable at the temperatures encountered in the drier," [i.e. in order from 20 to 95C] This disclosure is not unspecific. It is appropriate for the patent's specification, which ends with the claims, among which are those alleged to be infringed. A person skilled in the art will, or should, know how, and with what, to go about obtaining the formulation which works as the inventors describe, with its included, mixed-in, distributing agent, a physical mixture and not a new chemically bonded substance.

The trial judge found support for his conclusions in Burton Parsons, supra and Monsanto, supra, decisions of the Supreme Court of Canada, as well as in Cabot Corp. et al v. 318602 Ontario Ltd. et al (1988), 20 C.P.R. (3d) 132 (F.C.T.D.). Another case not mentioned in the judgment below but relied upon by the respondents is Henriksen, supra, a decision of the House of Lords. In Burton Parsons the claim for an "electrocardiograph cream ... comprising a stable aqueous emulsion that is anionic, cationic or non-ionic and containing sufficient highly ionizable salt to provide good electrical conductivity". In Monsanto the claim was for a method of "inhibiting premature vulcanization of vulcanizable diene rubber containing a vulcanizing agent and an organic vulcanization accelerating agent" and incorporating "an amount effective to inhibit premature vulcanization a compound" of a stated formula. In Cabot, the claim was for an "earplug of generally cylindrical shape" having a stated diameter and composed of a "resilient polymeric foam" having a given rate of recovery and a stated equilibrium pressure. The claim in Henriksen was for a fountain pen of the ball tip type comprising a tubular ink reservoir with a ball tip at one end and an air inlet at the opposite end "in which there is disposed between the column of ink and the reservoir and the air inlet a liquid or a viscous or paste-like mass which does not mix with the ink and forms a plug which moves with the service of the ink column and prevents air from contacting the surface of the ink."

At pp. 518-519

"Although the invention in Henriksen was not a chemical compound, that case indicates that a patent will be good if it contains sufficient information to enable a person skilled in the art to make the invention claimed. The evidence was that the pens in question were sold in jumbo size as well as capillary size and it was clear that the first claim applied to both sizes. Lord Reid, with whom three of the remaining four law Lords concurred, rejected the contention of invalidity at page 443, where he stated:

I can now return to what I have called the cruical question. Claim 1 applies to jumbo as well as to capillary tubes. One must approach its construction with the knowledge of the skilled man that a liquid can form a satisfactory plug in thea capillary tube but that no liquid can do so in a jumbo tube. There a paste-like mass is required. If the patentee has asserted or represented that even for a jumbo tube of liquid can be used (if the right one is chosen) then the claim is invalid and it is not saved by the fact that the skilled man knows that that is untrue. But if he has merely asserted that the addressee must chose a suitable liquid or viscous or paste-like mass as the case may be according to the kind of tube he wants to make then the objections of inutility and false representation disappear. Applying the oridinary methods of construction I have no doubt that the latter is the true meaning.

In summary, it seems to me that the Trial Judge was quite correct in construing the Patent as he did in light of the expert evidence which he found acceptable. I am in the view that the claims in issue are not invalid for covetousness."

At p.519

"In Natural Colour Kinematograph Co. Ltd. v. Bioschemes Ld. (1915). 32 R.P.C. 256 (H.L.), Lord Loreburn, in a well-spoken passage, forcefully condemned ambiguity in a patent claim. In the course of doing so he stated, at page 266:

It is the duty of the patentee to state clearly and distinctly, either in direct words or by clear and direct reference, the nature and limits of what he claims. If he uses language which, when fairly read, is avoidably obscure or ambiguous, the Patent is invalid, whether the defect be due to design, or to carlessness or to want of skill. Where the invention is difficult to explain, due allowance will, of course, be made for any resulting difficulty in the language. But nothing can excuse the use of ambiguous language when simple language can easily be employed, and the only safe way is for the patentee to do his best to be clear and intelligible. It is necessary to emphasize this warning."

Procter & Gamble Inc. and The Procter & Gamble Company v. Unilever PLC, and Lever Brothers Limited, Federal Court of Appeal, June 28, 1995, unreported

At p. 7

"When the construction of a patent is for the court, it is not initially to be undertaken simply in the manner a court would construe an ordinary contract or a statute, for example, but with the knowledge of the skilled artisan to the extent that such knowledge is revealed by expert evidence accepted at trial."

At p. 9

"... comments indicate either confusion on the part of the Trial Judge with some of the evidence or difficulty in sorting out the evidence of experts with respect to some of the chemical evidence. The record does suggest that the Trial Judge encountered some difficulty in following evidence at one stage of the trial. The Trial Judge seemed to make only a plea - not unusual for any trial judge - that the evidence in question be put in in a manner that would make it understandable to him. "Please attempt to educate the court", he said. The mention in the reasons for judgment of a difficulty in sorting out the chemical evidence is not in itself conclusive that in the end the Trial Judge failed to understand it and, in my view, it does not warrant blanket criticism. It is evident from the reasons themselves that there was considerable delay - which was explained - before the Trial Judge could begin to draft his reasons but again this by itself, while perhaps regrettable, does not show that he failed to comprehend the evidence. The question of whether he did or did not must be answered, in my view, by examining the written reasons in the light of the evidence adduced at trial."

At p.16-17

"The significance that others should know the boundaries of the exclusive privilege, it seems, is not only so they will not trespass on the invention but so that their own inventive genius will be allowed to flourish in their individual interest and in the interest of the public at large. If the boundaries of a patented invention cannot be ascertained "with some measure of exactness" there is risk that others will stray across the line or be discouraged from seeking new or better inventions."


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