citation(s): (1977) 33 C.P.R. (2d) 24 (per Collier, J.)
Case Comment © 1997-2004 Donald M. Cameron, Ogilvy Renault
"Finally, as I understand the law, the ultimate question of anticipation or no is one of fact - a jury question, if there were a jury."
"In my view there should be no difference between civil and criminal matters, as to the limits of expert opinion. If expert testimony on ultimate issues is admissible where guilt or innocence, imprisonment or liberty, are at stake, then opinions on ultimate issues in civil suites, including patent litigation, should be equally be admissible. But the trier of fact alone (whether Judge or jury) must still determine all ultimate issues. Expert opinion on questions such as anticipation or obviousness (to use two examples in this case) can be very helpful. It is, of course, not binding in any way. The tribunal may, however, after weighing the evidence, adopt any opinion or any part, as its own.
The expert witnesses here gave evidence as to the state of the prior art; what the specifications of the patents in suit disclosed to them; what the prior art references (including prior patents) meant or revealed to them; whether an ordinary skilled workman in the relevant art, at a particular date, would, in trying to solve a problem, have found precisely what he needed in a particular prior publication, use, etc. (anticipation); whether in the light of the common knowledge and the "prior art" an ordinary skilled and uninventive workman would, in trying to resolve a particular problem, have easily and readily arrived at the same solution found by the "inventor" of the patent in suit (obviousness).
In respect of the use of those tendered opinions, I endeavored to instruct myself in the way juries are instructed in respect of evidence put before them by non-expert and expert witnesses. As a trier of fact I am entitled to accept the whole or part of the evidence of one witness, and to reject all or other parts. Equally in the case of the expert witnesses the trier of fact may accept or reject the beliefs or opinions tendered, or any part of those beliefs or opinions. Always, opinion evidence must be scrutinized with great care."
At p. 43:
I have been guided, in my approach to the patents in suit and in construing the claims, by the excellent monograph written by Whitford, J., in American Cyanamid Co. v. Berk Pharmaceuticals Ltd.,  R.P.C. 231 at p. 234:
"The first task in any patent action is to decide exactly what monopoly the patentee has been granted. Today all patents end with claims. The function of the claims is to define the monopoly.
An understanding of the claims, a determination as to their scope - what lawyers call the construction of the claims - is necessarily the first task to be undertaken, and it must be done dispassionately."
"A Court should not, as I understand it, be too astute or technical when construing claims, particularly in the areas of insufficiency or description. I refer to the admonitions of the Supreme Court of Canada in Sandoz Patents Ltd. v. Gilcross Ltd. et al (1972), 8 C.P.R. (2d) 210 at pp. 217-8, 33 D.L.R. (3d) 451,  S.C.R. 1336 at pp. 1346-7:
Here, however, the alleged deficiency was only in the description of the various steps involved in carrying out the invented process and, in effect, it consisted solely in the omission of an explicit statement that those steps could be the same as for the chloro-ethane process, the use of which was fully described. In my view, the proper inference from the evidence in this case is that a person skilled in the art would not need to be told that this was so.
The objection is therefore purely technical. The specification in effect fully describes not only the invention, as the teamed trial Judge found, but also its operation or use. Although, in terms, the various steps are described only for the chloro-ethane process, in fact the sanae steps are involved when using the bromo-ethane starting material and any person skilled in the art knows that this is what should be expected in the absence of any mention of an anomaly in the behavior of the bromo-ethane compound. It does not appear to me that a patent should be invalidated on account of such a technicality and I do not think that s. 36(l) so requires. A specification is addressed to persons skilled in the art and, therefore, is to be construed by the standard of what such a person would understand on reading it. The evidence is clear that a competent chemist reading the specification and setting out to prepare thioridazine by the bromo-ethane process would understand that the same steps are to be taken as for the chloro-ethane process."
At p. 53:
"...The form of question occasionally used at this trial was to this effect: Would an ordinary skilled workman (at the relevant date) have been led directly and without difficulty to...? That inquiry, I think, embraces the essence of the test formulated by Maclean, J."
At pp. 61-62:
"It is contended it is not sufficient, after proving what was common knowledge in the field at the relative time, merely to lay, in addition, before the Court a selected piece (or pieces) of available public knowledge ("prior art"), then through evidence of "skilled" witnesses, or by argument, or both, demand a finding of obviousness. It is said the attacker must adduce all the relevant public knowledge which was available, whether it pointed to or away from the impugned invention; the field of the prior art researched and explored must be adequately disclosed to the Court; the ease or difficulty experienced or encountered in unearthing the prior art relied on must be testified to; the time and resources so expended must be described; the particular researchers into the prior art, and their skills, must be revealed; evidence must be led as to how readily available, or otherwise, the piece or pieces of prior art would have been to the hypothetical skilled, but unimaginative workman."
"There is considerable force in Mr. Sim's submissions. I think some basis for support, at least as to his over-all criticism of presenting an unqualified and relatively unexplained mosaic of prior art, can be found in some of the more recent English decisions. I do not think it necessary to express any final opinion on the nature and extent of Mr. Sim's "onus" (if any) on one who asserts obviousness. I am prepared to go this far. The absence of testimony on some of the matters listed by Mr. Sim is something which the Court ought to consider and weigh in assessing whether obviousness would have followed from knowledge of prior publication, or a mosaic. Great caution must be exercised by the Court:
Quite plainly when an attack on obviousness has been launched there may be very great dangers indeed in deciding the question of obviousness adversely to a patentee if all that can be brought forward is some possibly antique and, so far as anybody knows, unconsidered document which has to be associated with yet another document of similar antiquity, equally unlikely to have been considered by anybody before it was looked up in the search for material to attack a later granted patent.
Whitford, J., at p. 817 of the Dow Chemical case ( R.P.C. 804)."
"To half-borrow from the General Tire case, the route to obviousness must be a flagstone path, plainly perceptible in either the dark or the light."
"Mr. Becker gave uncontradicted testimony that the original of the exhibit was prepared on a typewriter. He agreed in cross-examination the particular copy in evidence, and others conceivably like it, might have all been reproduced by an offset process. Again the defendant has not shown, to my mind, by a preponderance of evidence, that this document was "printed". I confine my decision on this point to the state of printing and reproducing methods in 1953. I do not think, having regard to the state of the copying art in 1953, that ex. 185 would qualify as "printed": see Re Tenney et al" (1958), 732 O.G. (U.S.) 4 at p. 7. Without deciding, I would suggest that today a run of so called "photostatic copies" might well be held to be "printed".
"In my view, in Canadian patent law, the question of obviousness must be decided as of the date of the making of the invention. The question in Canada is whether, at the date the inventor "made" his invention (in the light of the common knowledge and prior art a skilled workman had at the date the alleged solution was found), that solution would have been, at that point in time, very plain. If the prior art did not come into existence until considerably later, then, of course, it cannot be part of the evidence on which the question must be answered."
"It is said by the defendant that, because there is no description or assistance given in the claim, ... the claim is invalid for ambiguity or obscurity.
The defendant argues that the skilled addressee in trying to put claim 1 to use, or in trying to determine the boundaries which another method would not infringe, is given insufficient or obscure direction.
I agree, Claim 1 is invalid."
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