Rothmans, Benson & Hedges Inc. v. Imperial Tobacco Ltd.
A-398-91
Desjardins J.A.
12/2/93
26 pp.
Appeal from Trial Division's decision ((1991), 35 C.P.R. (3d) 417) granting injunction preventing appellant from infringing respondents' patent-Patent concerning fine-cut tobacco used in rolling or making of cigarettes-Appellant and respondent Rothmans, Benson & Hedges Inc. manufacturing and selling similar product composed of unsmokable preformed tobacco rods for use in making one's own cigarettes together with preformed cigarette paper tubes-Respondent's patent re-issued as claims 1, 19 and 26 not sufficiently limited to clearly distinguish patent from Netherlands patent application published in 1968 (Velasques)-Appeal restricted to re-issued patent-Trial Judge concluding respondents' invention not obvious as of February 1984-Anticipation and obviousness different concepts-Prior art may be used in application of both tests but differently-Tobacco rod claimed by respondents new by comparison to Velasques document-No palpable or overriding error in Trial Judge's conclusion respondents' invention not anticipated-Obviousness question of fact-Trial Judge's findings as to obviousness should not be disturbed lightly-Efka's patent not obvious, level of inventiveness described in Hoechst v. Halocarbon (Ontario) Ltd. et al., [1979] 2 S.C.R. 929 met-Commercial success only one of many factual considerations to be assessed in determining inventiveness-Proper evaluation of evidence by Trial Judge-Success of respondents' product largely due to uniqueness of product-Appeal dismissed-Patent Act, R.S.C., 1985, c. P-4, ss. 2, 47, 55.