T-2054-71
Farbwerke Hoechst Aktiengesellschaft, vormals
Meister Lucius & Bruning (Plaintiff)
v.
Halocarbon (Ontario) Limited, and Halocarbon
Products Corporation (Defendants)
Trial Division, Collier J.—Toronto, November
13-16,20,21,1973; Ottawa, May 27, 1974.
Patents—Infringement—Action successful against Canadi-
an company importing and using isohalothane—Action fail
ing against Canadian and American companies for produc
tion by Canadian company of halothane—Patent Act, R.S.C.
1970, c. P-4, ss. 36(1), 58.
The plaintiff, a German company and Canadian patentee,
sued for infringement of two process patents, against a
Canadian company (the first defendant) and an American
company (the second defendant).
Held, re isohalothane (patent claim 10), the plaintiff was
entitled to succeed against the Canadian defendant for
infringement of this claim. The defendants conceded that if
the process used in the United States to produce isohalo-
thane was used in Canada for the same purpose, there would
be infringement of the claim in issue. The Canadian defend
ant was liable on the basis that it imported into and used in
Canada a product made elsewhere by a process infringing
the patent rights of the plaintiffs. This defendant failed to
discharge the onus of proving, on the balance of probabili
ties, that the disclosure of previous authorities and experi
menters established the defence of want of novelty or
anticipation; or that the prior art supported the defence of
obviousness or lack of invention; or that there was immuni
ty under section 58 of the Patent Act. But, as against the
American defendant, the plaintiff failed to establish that this
company caused or directed the tortious act of the Canadian
defendant.
Held, re halothane (patent claim 2), the action based on
this claim must be dismissed, since the invention asserted in
the claim, having regard to the prior publications, lacked
inventive ingenuity.
Re Isohalothane Patent:
Union Carbide Ltd. v. Trans-Canadian Feeds Ltd.
[1966] Ex,.C.R. 884; Société des Usines Chimiques
Rhone-Poulenc v. Jules R. Gilbert Limited (1967) 35
Fox Pat. C. 174; aff'd. [1968] S.C.R. 950; Lovell Manu
facturing Co. v. Beatty Bros. Ltd. (1964) 41 C.P.R. 18;
Peterson Electronic Die Co. Inc. v. Plastiseal Inc.
(unreported, A-273-72), followed. Picard v. United Air-
craft (1942) 53 U.S.P.Q. 563; Burns & Russell of
Canada v. Day & Campbell Ltd. [1966] Ex.C.R. 673,
applied. Re Alsop's Patent (1907) 24 R.P.C. 733; Johns-
Manville Corporation's Patent [1967] R.P.C. 479; Brit-
ish Thomson-Houston Company Ltd. v. Sterling Acces
sories Ltd. (1924) 41 R.P.C. 311; Performing Right
Society v. Ciryl Theatrical Syndicate [1924] 1 K.B. 1;
Libbey-Owens-Ford Glass Co. v. Ford Motor Co. of
Canada Ltd. [1969] 1 Ex.C.R. 529; aff'd. [1970] S.C.R.
833, considered.
Re Halothane Patent:
Appliance Service Co. Ltd. v. Sarco Canada Limited
(unreported, T-339-71); Ernest Scragg & Sons Limited
v. Leeson Corporation [1964] Ex. C.R. 649; Hewlett-
Packard (Canada) Ltd. v. Burton Parsons Chemicals,
Inc. [1973] F.C. 405, considered.
ACTION.
COUNSEL:
H. Lorne Morphy and David Rogers, Q.C.,
for plaintiff.
Donald F. Sim, Q.C., and Roger T. Hughes
for defendants.
SOLICITORS:
Tory, Tory, DesLauriers & Binnington,
Toronto, for plaintiff.
Rogers, Bereskin & Parr, Toronto, for
plaintiff.
Donald F. Sim, Q.C., Toronto, for
defendants.
The following are the reasons for judgment
delivered in English by
COLLIER J.: This is an action for infringement
of two process patents. The plaintiff is a
German company and is the Canadian patentee.
Patent 692,039 (hereinafter "039" or "the
isohalothane patent") was issued August 4,
1964. The date of issue of the other Patent
652,239 (hereafter "239" or "the halothane pat
ent") is not important.
In the pleadings, the plaintiff alleged infringe
ment of Claims 1 to 12 of 0 1 39. At trial, it
restricted itself to Claim 10 only. Again in the
pleadings, the plaintiff alleged infringement of
Claims 1 to 3 of 239. At trial, it restricted itself
to Claim 2 only. The statement of claim alleged
infringement of a third Patent 650,600. That
part of the case was withdrawn or abandoned at
the opening of the trial.
The defendant Halocarbon (Ontario) Limited
(hereafter the "Canadian company") is an
Ontario corporation "formed" according to the
evidence on July 8, 1969. The other defendant
Halocarbon Products Corporation (hereafter the
"American company") is an American corpora
tion carrying on business in the State of New
Jersey.
I shall deal with the two patents and the
contentions put forward in respect of each
separately.
Patent 692 ,039—isohalothane
The invention asserted here, as I understand•
it, is a process whereby isohalothane is pro
duced by reacting in the liquid phase, a
"monomer" with hydrogen bromide. The reac
tion is carried out under radical forming condi
tions. I adopt Mr. Sim's words as an accurate
paraphrase of Claim 10:
A process for the manufacture of isohalothane which com
prises reacting monomer in the liquid phase under radical
forming conditions with hydrogen bromide and isolating the
isohalothane obtained.
The American company produces isohalo-
thane by such a process in its New Jersey
operations. It exports isohalothane so manufac
tured to the Canadian company; to put it the
other way round, and in the way it was put at
trial, the Canadian company imports isohalo-
thane into Canada. The Canadian company then
uses the isohalothane ("adduct") in a process to
manufacture halothane at its plant in Ontario. It
then markets its product—halothane. The
Canadian company, if not a subsidiary of the
American company, is directed in, and is given
its instructions and research data in respect of,
its manufacturing operations and processes by
the American company. According to the evi
dence before me, the two defendants are con
trolled by another American corporation, Halo-
carbon Laboratories Incorporated (Ferstandig's
discovery of April 11, 1972, ques. 17-21).
Prior to December 1962, the American
defendant had been manufacturing isohalothane
in the gaseous stage. In December 1962, it com
menced using a process in the liquid stage. The
Canadian company did not commence produc
tion of halothane, using the imported isohalo-
thane, until October 1970.
It is conceded by the defendants that if the
process used in the United States to produce
isohalothane was used in Canada for the same
purpose, there would be infringement of
Claim 10 .
The plaintiff says the Canadian defendant is
therefore liable on the basis it imported into and
used in Canada a product produced elsewhere
by a process which infringes its patent rights.
Reliance is placed on Union Carbide Canada
Ltd. v. Trans-Canadian Feeds Ltd. [1966]
Ex.C.R. 884 and Société des Usines Chimiques
Rhone-Poulenc v. Jules R. Gilbert Limited
(1967) 35 Fox Pat. C. 174'. In the Union Car
bide case, the President (now Chief Justice) said
at pp. 888-890:
I shall first dispose of the question of law as to whether
importation into Canada, and use or sale in Canada, of
goods that were made outside Canada in accordance with a
process that is the subject of a Canadian patent is an
infringement of that patent.
.. in The Auer Incandescent Light Manufacturing Com
pany v. O'Brien ((1897) 5 Ex.C.R. 243), Mr. Justice Bur-
bidge had to consider an application for an injunction based
upon a process patent where some of the infringements
complained of were with respect to importation and sale,
and some of them were with respect to manufacture (see
pages 262-3) and, after hearing argument on the question, at
page 292 he applied the two English cases to which I have
referred and held that articles made in a foreign country
pursuant to a process in respect of which a patent had been
granted under the Canadian statute cannot be imported for
use or sale in Canada without infringing the Canadian
monopoly.
' This decision was affirmed [1968] S.C.R. 950, but this
particular point was not discussed.
While I appreciate that the doctrine of stare decisis does
not have the same application in this Court, which has
jurisdiction in the Province of Quebec as well as the
common law provinces, as it does in a common law Court,
nevertheless, in my view, where a question has been decided
by this Court after argument, it is in the interest of the
orderly and seemly administration of justice that that deci
sion be followed when the same question arises subsequent
ly in this Court, in the absence of special circumstances, the
nature of which I am not prepared at this time to define. I
should also say that, as far as I have been able to ascertain,
there is no relevant difference between the Canadian legisla
tion that was under consideration in the Auer Incandescent
Light case and the present legislation.
While, as I see it, the question would be open for recon
sideration in the Supreme Court of Canada, I propose,
having regard to the views expressed above, to follow the
decision rendered by Mr. Justice Burbidge in 1897 so long
as its authority remains unimpaired by a decision of the
Supreme Court of Canada. In adopting this position, I do not
wish to be taken as expressing any opinion as to the course
that should be followed when a similar problem arises in this
Court at a time when this Court is differently constituted.
I was invited by Mr. Hughes to distinguish, on
a number of grounds, the Union Carbide case
and the cases referred to by Jackett P. I do not
see any reasonable grounds for so doing. I echo
the comments of Thurlow J. in the Rhone-
Poulenc case at pp. 221-222:
[This point] ... has been raised frequently in this Court
and has been decided against the defendants' contention on
a number of occasions, the latest of which was a judgment
of the President of this Court in Union Carbide Canada
Limited v. Trans-Canadian Feeds Limited, et al. where the
principle and the authorities on the question are discussed.
In the absence of any expression of opinion to the contrary
by the Supreme Court I would in any event regard the point
as settled in this Court and hold against the defendants'
contention.
Other defences are however raised as to the
validity of Claim 10: (a) want of novelty, or
anticipation; (b) obviousness, sometimes termed
lack of invention or subject-matter.
(a) Want of Novelty or Anticipation. The
general principles in respect of this defence
have been often stated, although in varying
words'. I need not burden the parties to this suit
with a lengthy repetition. They and their counsel
are quite conversant with them. The evidence
submitted here in support of the defence is a
prior publication in a scientific journal in 1954.
Both sides referred to it in the evidence as
"Haszeldine" who was one of the experiment
ers and authors. Haszeldine described an
experimental process wherein he reacted a
monomer with hydrogen bromide and exposed it
to ultra-violet light (page 3750 of the publica
tion). It is not disputed that exposure to ultra
violet light is carrying out the reaction "under
radical forming conditions". The controversy in
this case is whether Haszeldine's process was
carried out in the gaseous or liquid phase. Has-
zeldine does not expressly state one way or the
other. The patentee assumed Haszeldine's pro
cess was carried out in the gaseous phase. In an
obvious reference to Haszeldine in the disclo
sure, it is said: "It is, furthermore, known to
react fluoroethylenes with hydrogen bromide in
the gaseous zone with ultraviolet irradiation".
The patentee's opinion is, however, not conclu
sive. Another author and experimenter, referred
to in the evidence for convenience as Hudlicky,
assumed also, as I understand it, that Haszel-
dine had been carried out in the gaseous phase.
This publication was in 1964, after the priority
date claimed here, and is not part of the prior
art relied on in support of anticipation or obvi
ousness. It is, however, of some assistance in
determining what Haszeldine disclosed.
Dr. Schmutzler, an expert witness called on
behalf of the plaintiff, and Dr. Wright, an expert
witness called on behalf of the defendants, both
expressed their views as to what Haszeldine
disclosed to them, and as to their opinion as to
2 See Blanco White Patents for Inventions (3rd ed. 1962)
pp. 98-102; Fox Canadian Patent Law and Practice (4th ed.
1969) pp. 71-72, 101-102, 124, 126-130; Lovell Manufactur
ing Co. v. Beatty Bros. Ltd. (1964) 41 C.P.R. 18 at pp. 43-48
(Thorson P.).
whether that process was carried out in the
liquid or gaseous phase. While those opinions
are admissible and ought to be considered, it is
for the Court to say what Haszeldine discloses.
Dr. Schmutzler, while describing Haszeldine
as ambiguous on the point, felt the process had
been carried out in the gaseous phase. Dr.
Wright held the opposite view. Dr. Wright, in
my opinion, was swayed to a large extent by the
fact he had conducted experiments allegedly
duplicating Haszeldine, and had produced
isohalothane by reacting the monomer and
hydrogen bromide in the liquid stage. The evi
dence indicates that Dr. Wright did not dupli
cate Haszeldine's experiment in exact detail,
and that he had to make certain assumptions
and substitutions. I do not, therefore, accept as
valid his conclusion or opinion on this aspect of
the case.
This particular problem could be resolved by
merely relying on the clear fact that Haszeldine
nowhere specifically indicates the gaseous
phase or the liquid phase, and then applying the
rules regarding degree of proof. The onus is on
the defendants to establish, by a balance of
probabilities, that Haszeldine, in effect, dis
closes the plaintiff's invention; one is left, on
the evidence before the Court, to speculate as to
liquid or gaseous; a balance of probabilities has
not therefore been established. I feel I must,
however, go further. I am persuaded by the
evidence given by Dr. Schmutzler on this point
that Haszeldine probably was conducted in the
gaseous phase. The defence of anticipation fails.
(b) Obviousness, or Lack of Invention. A
great deal of learning was cited to me, for which
I am grateful, setting out the general principles
to be applied in respect of this defence. I do not
propose to embark upon an analysis of the
authorities'. Jackett C.J. of the Appeal Division
of this Court had this to say in Peterson Elec
tronic Die Co. Inc. v. Plastiseal Inc. (March 29,
1974, unreported, A-273-72):
I shall consider first the question of subject matter or
"invention". These two expressions, "subject matter" and
"invention", are both used to refer to an essential attribute
of patentability that is not expressed in the statutory defini
tion and that is quite separate from novelty or utility. Before
a process, product or machine may be patented, there must
have been a "degree of ingenuity" in its conception or
development which has so far escaped any precise defini
tion. It may safely be said, however, that such "degree of
ingenuity" does not exist when what is claimed as an
"invention" would have been obvious to a skilled workman
or other similar person having the advantage of knowing all
that was known about the particular "art".
The Chief Justice pointed out that "degree of
ingenuity" so far has "escaped any precise defi
nition". I am indebted to Mr. Sim for referring
me to the concurring opinion given by Frank J.
of the Second Circuit Court of Appeals in
Picard v. United Aircraft (1942) 53 U.S.P.Q.
563. In the present case, the prior art is relied
upon and the Court invited to conclude there
was no "invention" in carrying out the isohalo-
thane process in the liquid stage; that this pro
cess would have been, at the relevant time,
obvious to a person of ordinary skill in the art.
Frank J., in much better words than I can com
mand, illustrated the difficulties a court is usual
ly faced with in respect of this problem (p. 568
and p. 569):
The man on the street (or in the subway) would, I think,
believe, as did the trial judge, that Schink's patent embodies
an invention. Originally I was strongly inclined to join in
that view.
"Invention" for patent purposes, has been difficult to
define. Efforts to cage the concept in words have proved
almost as unsuccessful as attempts verbally to imprison the
concept "beautiful". Indeed, when one reads most discus
sions of "invention", one recalls Kipling's, "It's pretty, but
is it Art?" and the aphorism that there is no sense in
disputes about matters of taste: Anatole France once said
that literary criticism is the adventure of the critic's soul
3 The subject is generally considered and reviewed in
Blanco White Patents for Inventions (3rd ed. 1962) pp.
120-135, and Fox Canadian Patent Law and Practice (4th
ed. 1969) pp. 60-70, pp. 98-99.
among masterpieces. To the casual observer, judicial patent
decisions are the adventures of judges' souls among inven
tions. For a decision as to whether or not a thing is an
invention is a "value" judgment. So are many other judicial
judgments in other legal provinces, but "invention" is a
peculiarly elusive standard.
The prior art relied on by the defendants is as
follows, and I use the shortened descriptions
given at trial: Haszeldine (already referred to);
the Russian reference (Ex. 23, p. 9); Walling
(Ex. 23, p. 28); and Waters (Ex. 23, p. 127).
Using a paraphrase of the "Cripps
question"': Was it for all practical purposes
obvious to any skilled chemist in the state of
chemical knowledge existing at the date of the
invention, which consists of the chemical litera
ture available and his general chemical knowl
edge, particularly in the field of fluorine chemis
try, that he would successfully produce
isohalothane (assuming the monomer used here
and hydrogen bromide) in the liquid phase?
After consideration of the prior literature sub
mitted in evidence, the discussion of that prior
literature by the expert witnesses, and the help
ful analyses by counsel, I have concluded the
question must be answered "No".
As I indicated earlier, I am convinced the
Haszeldine process was carried out in the gase
ous phase, and there was nothing in that prior
publication to lead the skilled chemist to reason
ably say it was plain the process could equally
be carried out in the liquid phase. The Russian
reference, as I understand it, dealt with the
photochemically induced addition of hydrogen
bromide to halo-alkenes. The Russian experi
menters were not, in fact, producing isohalo-
thane, but a related product. I accept and adopt
4 The form of the question has been approved by the
English courts, but the text-writers indicate it does not
necessarily fit every case, and in any event the form may
have to be modified in individual cases: Blanco White
Patents for Inventions (3rd ed. 1962) pp. 126-127. Fox
Canadian Patent Law and Practice (4th ed. 1969) pp. 71-73.
Terrell on the Law of Patents (12th ed. 1971) paras. 307-8,
pp. 125-126. See also the comments of Gibson J. at pp.
681-682 of Burns & Russell of Canada Ltd. v. Day &
Campbell Ltd. [1966] Ex.C.R. 673.
Dr. Schmutzler's opinion (Dr. Wright went no
further on the Russian reference than the bare
statement found on page 14, subparagraph 2 of
his affidavit) that the Russian process was dif
ferent, and while it was carried out in the liquid
phase, the results were relatively unsatisfactory
and would have discouraged a skilled chemist
from considering the isohalothane reaction pro
cess of Haszeldine in the liquid phase. The
Walling statement relied on appears on page 294
in a section in his book headed "The Radical
Addition of Hydrogen Bromide to Olefins". In
my view, it is merely a generality that the reac
tions can be initiated in either the liquid or gas
phase. The author is not dealing specifically
with fluorine compounds in that context. Dr.
Schmutzler (again uncontradicted on this par
ticular point) says many reactions will take
place in either stage, but not necessarily both.
Mr. Sim sparred at some length with Dr.
Schmutzler, pressing-and exploring the hypothe
sis that the liquid phase process was, to the
skilled person, "worth a try". Using the magni
fying spectacles of hind-sight (a half-borrowed
phrase), it is easy to say that any experiment, if
time and expense are unlimited, in circum
stances such as those hypothesized here, is or
was worth a try. Taking the prior art as a
mosaic, in my view, it was not at the relevant
date of the invention here (July 15, 1961), for
all practical purposes, obvious that anyone
skilled in the art would successfully produce
isohalothane in the liquid phase. This particular
defence must also fail.
The defendants urge a further defence but,
before dealing with it, I should consider the
plaintiff's position at this stage. I have rejected
the attacks on the validity of Claim 10. I agree
'See: Re Alsop's Patent (1907) 24 R.P.C. 733; Johns-
Manville Corporation's Patent [1967] R.P.C. 479.
with the submission that the importation into
Canada and the use by the Canadian defendant
of the isohalothane is, (subject to what I shall
term the section 58 defence to be considered
shortly), infringement for which the Canadian
defendant is liable. The plaintiff says that the
Canadian defendant was formed and put into
operation by the American defendant, its execu
tive personnel who dictate and supervise its
operations are executive personnel with the
American defendant, that it caused the isohalo-
thane to be imported, that all its acts, including
the infringing one in this case, were directed and
controlled by the American defendant. The
plaintiff says the law stated in British Thomson-
Houston Company Ltd. v. Sterling Accessories
Ltd. (1924) 41 R.P.C. 311 at pp. 317, 318 is
applicable: 6
I apprehend that, where it is sought to fix a defendant
with liability for a tort, it must be established either that he
is himself the tort-feasor, or that he is the employer or
principal of the tort-feasor, in relation to the act complained
of, or, at any rate, the person on whose instructions the tort
has been committed.
This also has been made plain by the House of Lords
in Rainham Chemical Works v. Belvedere Fish Guano Co.
(L.R. [1921] 2 A.C. 465), where Lord Buckmaster, in criti
cising the view of one of the Lords Justices in the Court
below to the effect that it was possible to look behind the
company, states the position in this way at page 475: "It not
infrequently happens in the course of legal proceedings that
parties who find they have a limited company as debtor with
all its paid-up capital issued in the form of fully-paid shares
and no free capital for working suggest that the company is
nothing but an alter ego for the people by whose hand it has
been incorporated, and by whose action it is controlled. But
in truth the Companies Acts expressly contemplate that
people may substitute the limited liability of a company for
the unlimited liability of the individual, with the object that
by this means enterprise and adventure may be encouraged.
6 See also Performing Right Society v. Ciryl Theatrical
Syndicate [1924] 1 K.B. 1. Atkin L.J. referred to the Rain-
ham case and expressed the view that implied, as well as
express, direction by directors would impose liability.
A company, therefore, which is duly incorporated, cannot
be disregarded on the ground that it is a sham, although it
may be established by evidence that in its operations it does
not act on its own behalf as an independent trading unit, but
simply for and on behalf of the people by whom it has been
called into existence. In the case of Salomon v. Salomon &
Co. (L.R. [1897] A.C. 22), parties who sought to disregard
the existence of the company on these grounds were unable
to establish this fact, and they accordingly failed, but the
respondents urge that here the position is quite plain. It
seems to have been so regarded by Scrutton L.J. The Master
of the Rolls thought the same result was reached by consid
ering that the company was in fact under the sole control of
Messrs. Feldman and Partridge as governing directors, and
Atkin L.J. by the analogy of cases such as Penny v. Wimble-
don Urban District Council. I cannot accept either of these
views. If the company was really trading independently on
its own account, the fact that it was directed by Messrs.
Feldman and Partridge would not render them responsible
for its tortious acts unless, indeed, they were acts expressly
directed by them. If a company is formed for the express
purpose of doing a wrongful act or if, when formed, those in
control expressly direct that a wrongful thing be done, the
individuals as well as the company are responsible for the
consequences, but there is no evidence in the present case
to establish liability under either of these heads."
In this case, we are not dealing with the
liability of directors for the infringing act of a
company but with the question of liability of
one company for the infringing acts of another
company. I see no reason why there should be
any difference in principle but I see many dif
ficulties in respect of proof. I put aside, for the
moment, the problems of what remedies are
available, if any, against a foreign defendant. In
this case, I am of the view the plaintiff has not
established that the American defendant is, in
fact, the company which, for the purposes of
this argument, has caused and directed the "tor-
tious" act 7 . The evidence discloses that the
isohalothane was purchased by the Canadian
company from the American company. The per
7 I use that expression to cover patent infringement as
well. Director's liability has been discussed in several patent
cases. No point seems to have been made in those cases that
the rights protecting a plaintiff against infringement, today
at least, arise from statute and not necessarily from classical
tort theory. Counsel for the defendants did not suggest any
such distinction.
sonnel of the American company undoubtedly
are in complete control of the processes by
which the Canadian company produces halo-
thane. The evidence does not go so far as to
show, however, that the American defendant
exercises control in such a way as to attract the
legal responsibility urged in this case. I quote
from the examination for discovery of
Ferstandig:
Q. And I notice that you reside in New Jersey; what
portion of your time is spent with the Defendant
company which is located in the Toronto area, I
understand?
A. Well a small percentage, but I am in direct phone
contact with them.
Q. Physically, how frequently would you be in the
Toronto plant?
A. Oh, once a month, once in two months, maybe one day
a month.
Q. What other employment do you have other than as
Technical Director of the Defendant company?
A. I am also employed by Halocarbon Products
Corporation.
Q. And that is the parent company of the Defendant
company?
MR. SIM: Yes.
THE WITNESS: No, it is not. Actually there are several
companies involved, and I am employed by Halocar-
bon Products and its subsidiaries.
Q. MR. MORPHY: You are employed by Halocarbon Prod
ucts Corporation and its subsidiaries?
A. Yes.
Q. Do you receive any salary from the Defendant
company?
A. Not directly.
Q. You have the position, though, as Technical Director?
A. Right.
MR. MORPHY: Mr. Sim, does the Defendant company agree
to be bound by the answers of this witness?
MR. SIM: It agrees he is being examined as if he were an
officer, and whatever consequences of this examina
tion that would flow had he been an officer, will flow.
Q. MR. MORPHY: Now what is the corporate relationship
between the Defendant company and Halocarbon
Products Corporation?
MR. SIM: We can tell you that they are related companies,
and that they were both controlled by the same
corporation.
MR. MORPHY: What corporation is that?
MR. HUGHES: Halocarbon Laboratories Incorporated.
MR. MORPHY: And that is Halocarbon Laboratories Incor
porated? It, is incorporated under what law?
MR. HUGHES: It's a New York corporation.
MR. MORPHY: A public company?
MR. HUGHES: No.
MR. MORPHY: Is the Defendant company a wholly-owned
subsidiary of that New York company?
MR. SIM: Except for qualifying shares of directors, yes.
MR. MORPHY: And is Halocarbon Products Corporation a
wholly-owned subsidiary other than qualifying shares
of the New York company?
MR. SIM: I don't see how that can possibly be relevant to
the issues between the parties here; do you really want
that?
MR. MORPHY: Yes.
MR. SIM: Well, then, I will direct the witness not to answer.
MR. MORPHY: Are we waiving rulings?
MR. SIM: There is no procedure for rulings in the Federal
Court.
--Discussion off the record.
MR. MORPHY: You are advising your witness not to
answer?
MR. SIM: Yes.
That testimony is all there is before the Court
on this aspect of the case. In my view, it is
insufficient to warrant the imposition of liability
on the American company for the infringement
committed by the Canadian company.
The defendants contend that, in any event,
they fall within section 58 of the Patent Act,
R.S.C. 1970, c. P-4. Section 58 is as follows:
58. Every person who, before the issuing of a patent has
purchased, constructed or acquired any invention for which
a patent is afterwards obtained under this Act, has the right
of using and vending to others the specific article, machine,
manufacture or composition of matter patented and so pur
chased, constructed or acquired before the issue of the
patent therefor, without being liable to the patentee or his
legal representatives for so doing; but the patent shall not,
as regards other persons, be held invalid by reason of such
purchase, construction or acquisition or use of the invention
by the person first mentioned, or by those to whom he has
sold it, unless it was purchased, constructed, acquired or
used for a longer period than two years before the applica
tion for a patent therefor, in consequence whereof the
invention became public and available to public use.
The defendants plead (paragraph 8 of their
amended defence):
8. In the alternative to paragraph 7, above, if the process by
which the defendant Halocarbon Products Corporation
manufactures said isohalothane falls within the exclusive
rights granted to the plaintiff under any of claims 1 to 12
inclusive of Canadian Letters Patent No. 692,039, which is
not admitted but denied, then such process was acquired by
said defendant before the issuing of said patent, and, by
virtue of the provisions of section 58 of the Patent Act,
R.S.C. 1970, c. P-4, said defendant is entitled to use said
process and to vend the isohalothane thereby manufactured
to others for their use, including to the defendant Halocar-
bon (Ontario) Limited, without either defendant being liable
to the plaintiff for so doing. In particular, the defendant
Halocarbon Products Corporation has since on or about
December 17, 1962 and continuously thereafter, been manu
facturing isohalothane by said process at its manufacturing
facilities located at Hackensack, New Jersey, U.S.A.
It will be recalled that the American defend
ant has been using since December 1962, in the
United States, a process for producing isohalo-
thane which, if it had been used in Canada,
would have infringed Claim 10. The patent
issued on August 4, 1964. The Canadian
defendant did not commence importing and
using the American defendant's isohalothane
until October 1970.
I shall set out in a summary way the defend
ants' argument on section 58: The section
applies to a process and the products manufac
tured pursuant to it; the American defendant
had purchased, constructed or acquired this pro
cess prior to the plaintiff's patent in Canada of
this process; the American defendant is, by
section 58, entitled to sell its product in Canada
without liability for infringement to the plaintiff;
the protection granted by section 58 applies, in
effect, beyond Canadian borders. The Canadian
defendant is likewise protected; if there can be
infringement by importation of goods into
Canada, then section 58 must give protection
when those goods are obtained from a foreigner
who can bring himself within the ambit of the
section; it does not matter whether the isohalo-
thane used in Canada was manufactured before
or after the issue of the plaintiff's patent.
One cannot dismiss these arguments for want
of novelty. In view of my conclusion that the
American defendant cannot be visited with the
infringing sin of the Canadian defendant, it is
technically not necessary for me to deal with
the section 58 argument as directed to the
American defendant. In the section 58 defence
however, it is somewhat difficult to segregate
completely the two defendants, so I propose to
deal with the complete argument.
Section 58 has been considered in Libbey-
Owens-Ford Glass Co. v. Ford Motor Co. of
Canada Ltd. [1969J 1 Ex.C.R. 529; aff'd.
[1970 1 ] S.C.R. 833. This case was relied on, to
some extent, by the defendants. Thurlow J. held
that section 58 provides immunity not only in
respect of the tangible subject matter of a
patent but also in respect of the use of the
patented process. He went on to say at pp.
557-558:
While the section is worded somewhat clumsily, its mean
ing in this view would come to this:
Every person, who, before the issuing of a patent has
purchased, constructed or acquired any invention (i.e., any
new or useful art, process, machine, manufacture or com
position of matter) for which a patent is afterwards
obtained, under this Act, has the right of using and
vending to others the specific thing patented and so
purchased, constructed or acquired before the issue of the
patent therefor ... .
This interpretation is, I think, supported by the consider
ation that the word "invention" would not fit well with the
adjective "specific" in place of the several expressions used
in section 58 since the effect could be to authorize use of
the patented invention in more ways than had been practised
before the issue of the patent. The interpretation is also
supported by the consideration that there seems no reason
in principle why, when the section is applicable to every
person who has acquired any "invention" prior to the issue
of a patent therefor, the words "article, machine", etc.,
should not be regarded as intended to refer to anything
falling within the scope of patentable subject matter. Other
wise, it seems odd that the draftsman should not have used
the words "article, machine" etc., in the place where the
word "invention" first appears in the section, as well as in
the second place where the word "invention" appears.
Next there is the consideration that the reason for having
such a provision in the law seems to apply with as much
force in the case of a process or method invention as in that
of any other kind of invention. The grant of an exclusive
right to an invention for a limited period rewards a person,
who has made the invention and has disclosed it to the
public in the prescribed manner, for the benefit which
thereby accrues to other members of the public. However, a
member of the public who makes or acquires the invention,
or some part of it, by himself before it becomes available to
the public has, to that extent, no benefit to derive from the
publication, yet without a provision such as section 58, he
would be restrained from practising what he had learned and
done by himself before the publication by the person to be
rewarded for the information. MacLean P. expressed the
purpose of the section thus in Schweyer Electric & Mfg. Co.
v. N.Y. Central Railroad Co. ([1934] Ex.C.R. 31 at 65):
The section is confusing and its meaning should be clari
fied. This statutory provision appeared in Chap. 34 of the
Statutes of Canada for 1859, and also in Chap. 24 of the
Statutes of Canada for 1848-9; which statutes related to
patents, and the meaning and purpose of the provision
was, I think more clearly expressed in those statutes than
in sec. 50 of the Patent Act. It seems to me that section
means and was intended to mean, that if a person has
acquired in some way or other, something which was the
subject of an application for a patent by another who is
presumably the first inventor, but for which a patent had
not yet issued, he, the former, shall have a continuing
right to use and vend the same notwithstanding the issue
of the patent to the other person. That is the only interpre
tation I can put upon the section.
This consideration as well therefore inclines me to the
view that the expressions used in section 58 apply to the
whole scope of patentable subject matter both tangible and
intangible.
In the Libbey-Owens-Ford case, the defend
ant was carrying on business in Canada and had
developed and used its otherwise infringing
methods in Canada.
To my mind, in order to obtain the immunity
in Canada given by section 58, the person who
"purchased, constructed, or acquired" the
invention [prior to the issue of the patent in suit]
must have purchased, constructed, or acquired
the invention in Canada. He then has the right
of using and vending to others.
Turning to the particular facts here, if the
American defendant had acquired in Canada the
"invention" or process prior to August 4, 1964,
it could then use in Canada the process and
vend from Canada the products manufactured
by the process, with impunity. That is not the
factual situation in this case, and in my view,
the American defendant cannot invoke
section 58.
The Canadian defendant is, to my mind, in an
even weaker position. It did not itself, before
the issue of Patent 039, use the process in
Canada to manufacture isohalothane. It had not,
therefore, "purchased, constructed or acquired
... [the] ... invention" as those words are
used in the section. Buying the end result of the
process referred to from some third person is
not, to my mind, the same thing. I do not think I
need go further than that in rejecting the con
tention that the Canadian company is entitled to
immunity under section 58.
Patent 652 ,239—halothane
For convenience in referring to this patent, I
shall substitute the more common chemical
terms used at trial for the more technical terms
found in the patent:
Halothane (2 ,2 ,2-trifluoro-l-c hloro-1 -brome-
thane)
Isohalothane or adduct (1 ,1,2-trifluoro-2-
chloro- l -bromethane).
The specification begins by referring to a
known method of producing halothane (an
anaesthetic agent). It is common ground the
reference is to the Bayer patent (Ex. 23, p. 1
ff.). In Bayer, the invention claimed is the
preparation of halothane by intramolecular rear
rangement of isohalothane (adduct) by means of
aluminum bromide: The reaction is performed
at about 0°C. with the use of halothane as
solvent for the starting materials. The essence
of the Bayer process, as I see it for the purposes
of this case, is performing the reaction at about
0°C. In the Bayer disclosure, it is said:
"Undesirable side reactions occur at higher tem
peratures and lead to a [very?] considerable
decrease in yield even at 40°C."
The specification of the patent in suit then
goes on and I quote, with the substitutions I
indicated at the outset:
Now, we have suprisingly found that ... [halothane] .. .
can be prepared by intramolecular rearrangement of .. .
[isohalothane] ... by means of aluminum bromide even at a
temperature above 0°C, preferably at the boiling tempera
ture which is about 50°C for the starting compound as well
as for the final product.
That is what the patentee claims as the inven
tion; that is what I find to be the "invention",
assuming it meets the tests of patentability.
The disclosure then goes on to describe a way
in which the process can be conducted:
The reaction can be carried out in the way that aluminum
bromide is mixed while stirring with a small quantity of .. .
[halothane] ... previously prepared and the starting ma
terial ... [isohalothane] ... is slowly added dropwise. As a
result of the heat set free during the isomerization the
mixture boils. The addition of the starting material is adjust
ed in such a way that the operation is always performed
under reflux.
Another manner in which the process might
be carried out is then described. It is not ma
terial here.
Then two examples are given "to illustrate the
invention". I note, of course, they are mere
illustrations. I shall set out a portion of Example
1 because a number of references were made to
it in evidence and in argument:
Example 1:
To a suspension of 100 grams of aluminum bromide in
250 grams of ... [halothane] ... there are added dropwise
in the course of 1 } hours while stirring 5000 grams of .. .
[isohalothane] .... When starting the addition, spontaneous
heating of the reaction mixture sets in, causing the alumi
num bromide to dissolve in a red-brown solution. The speed
of the dropwise addition of ... [isohalothane] ... is so
adjusted that the reaction mixture boils spontaneously ... .
Claim 2 is the only claim now alleged to have
been infringed. Reference was made by counsel
to Claim 1 as well. I shall set them both out:
1) A process for the manufacture of ... [halothane] .. .
by rearrangement of ... [isohalothane] ... by means of
aluminum bromide wherein the ... [isohalothane] ... is
treated with aluminum bromide at a temperature in the range
of 0°C to about 50°C.
2) A process as claimed in claim 1 ... [for the manufac
ture of halothane by rearrangement of isohalothane by
means of aluminum bromide] ... wherein ... [isohalo-
thane] ... is slowly added dropwise to aluminum bromide
mixed with a small quantity of ... [halothane] ... previous
ly prepared, the rearrangement of ... [isohalothane] ... is
performed at its boiling temperature of about 50°C and the
reaction product is isolated.
The only question of construction of Claim 2
raised by the defendants is the word "small"
where it is used to describe the mix to which
isohalothane is added: aluminum bromide mixed
with a small quantity of halothane. Counsel for
the defendants contends "small" is equivocal in
meaning and one ought to turn to the disclosure,
and particularly Example 1, to arrive at the
meaning. If this is done, it is said, "small" must
be interpreted as 1 part of aluminum bromide to
24 parts of halothane. In Exhibit 5, a description
of the Canadian defendant's process for making
halothane which it carried on until late in 1971,
the proportions are 1 part of aluminum bromide
to 140 parts of halothane. That amount of halo-
thane, it is urged, is not "small" within the
meaning that ought to be give to Claim 2. I shall
deal with this point further when I come to the
question of infringement. In my view, "small",
as used here, must not be given an almost
mathematically proportionate meaning as sug
gested. It is, as I see it, used in a general and
relative sense. The object of the process is to
produce isohalothane. One would not reason
ably use a large or huge amount of the desired
end product for the initial mix. It is, I think,
obvious the main purpose of the initial halo-
thane is to dissolve the aluminum bromide. Dr.
Schmutzler said it had another function as well:
to control the heat generated. A specification
must set forth clearly the various steps in a
process "... as to enable any person skilled in
the art or science to which it appertains .. .
to ... use it" 8 . In my opinion, the addressee in
the patent in suit must be considered to be a
skilled chemist, probably in the fluorine field,
but certainly a professional with experience,
knowledge and skill in the mixing of chemical
compounds. I do not think such a person would
have difficulty with the use of the word "small"
in Claim 2.
I shall deal next with the defendants' attack
that Claim 2 is invalid for obviousness. In my
opinion, this defence succeeds: The invention
asserted in Claim 2, having regard to the prior
publications, lacks, to employ an often-used
phrase, inventive ingenuity. The prior art I refer
to is the Bayér patent (Ex. 23, p. 1) and what
was termed the Hoechst patent (Ex. 23, p. 7). In
Bayer, the intramolecular rearrangement of the
isohalothane is carried out with aluminum bro
mide as the catalyst at about 0°C. I quote again
what was said in the Bayer disclosure:
"Undesirable side reactions occur at higher tem
peratures and lead to a very considerable
decrease in yield at even 40°C."
The inventive step forward alleged by the
plaintiff over Bayer is the successful rearrange
ment process (with good yield and no undesir
able side effects) using aluminum bromide as a
8 See subsection 36(1) of the Patent Act.
catalyst at temperatures above 0°C, and prefer
ably at about 50°C. One can only conclude that
the temperature integer is, in the mind of the
patentee, an essential element of the invention.
The evidence before me, from the plaintiff's
expert, is that the temperature factor is not an
essential part of the invention or claim. Dr.
Schmutzler said the rate of reaction of the pro
cess was a function of temperature; at lower
temperatures the reaction is slower; somewhat
different cooling methods might be required for
different temperatures; a convenient way to dis
sipate heat is to operate at the boiling point. He
went on to say (and I summarize) that it is not
essential to carry out the plaintiff's process at
about 50°C; that there is no special temperature
at which this reaction should be run; 50°C. is
not exclusive in any way.
I accept Dr. Schmutzler's statements. I find
that the temperature over 0°C. and preferably
about 50°C. is not an essential of the invention
claimed. If the temperature asserted by the
plaintiff in the patent is not essential to the
alleged invention, then I am unable to see what
inventive ingenuity there was over Bayer.
Dr. Schmutzler, in paragraph 15 of his affida
vit, purported to point out advantages in the
technical process of the patent in suit over
Bayer. A good deal of the matters stated in this
paragraph was hearsay. Dr. Schmutzler's views
came from Dr. Kuhn, one of the inventors, and
were not based on any personal experience by
Dr. Schmutzler. I therefore attach little weight
to paragraph 15. (I might add at this point that
other portions of Dr. Schmutzler's affidavit,
particularly some dealing with Patent 039, were
based on hearsay information from Dr. Kuhn. I
attached little weight to those portions.)
The Hoechst patent discloses a process for
the production of halothane-ethane by a rear-
rangement of isohalothane using aluminum chlo
ride as the catalyst at about 50°C. (boiling
point). Aluminum bromide and aluminum chlo
ride, according to the evidence, have long been
known. They have often been used, before the
relevant date here, as catalysts, although not
necessarily interchangeably. Dr. Schmutzler val
iantly attempted to repel the defendants' attack
of obviousness by asserting he, with all his
qualifications, would not have considered trying
to manufacture halothane by rearranging
isohalothane at a temperature of about 50°C.,
using aluminum bromide as a catalyst—having
the fore-knowledge that success had been
achieved at that temperature by using aluminum
chloride as the catalyst. He said he had a
number of technical prejudices which would
have led him not to consider substitution. He
finally agreed, on cross-examinaiton, that he
would have considered aluminum bromide as a
catalyst at that temperature, along with other
catalysts. This concession was made, not only
with the Hoechst patent pre-knowledge, but his
own knowledge (which I take to represent gen
erally the knowledge of those versed in the art)
of the use, in the field, of aluminum chloride
and aluminum bromide as catalysts. I have ear
lier in these reasons referred to the "worth a
try" hypothesis. That hypothesis must ultimate
ly resolve itself into a question of fact.
Urie J. said in Appliance Service Co. Ltd. v.
Sarco Canada Limited (March 1, 1974 -
unreported - T-339-71):
That being the case I was urged by counsel for the Plaintiff
to accept the proposition that if a man with such knowledge
in 1954 when the Midgette patent application was filed were
given the task of improving existing thermodynamic traps, it
would have been logical for him to have tried a solid disc to
improve the steam loss characteristics of the traps. If that is
so then, he submitted, the Midgette patent is invalid and he
cited as authorities for this proposition several cases. An
excerpt from the judgment of Diplock L.J. in the Court of
Appeal in Johns-Manville Corporation's Patent [1967]
R.P.C. 479 at 493 illustrates the proposition:
The respondents' case was simply that "a person versed
in the art" of manufacturing asbestos cement pipes (which
nowadays means a hypothetical and highly qualified tech
nologist in the research department of asbestos cement
pipe manufacturers) would be likely to read the two
publications referred to, and that if he did so the informa
tion which they contained about polyacrylamides would
make him realise that here was a flocculating agent which
was well worth trying out in the filtration process used in
his own industry in order to see whether it would have
beneficial results. If that had been established, the
respondents in my view have made out their case that the
idea of using polyacrylamides as floucculating [sic] agents
in the manufacture of cement asbestos pipes was, at the
priority date "obvious and clearly did not involve any
inventive step."
I think, however, that this view must be tempered by the
kind of reasoning which is illustrated by the case of The
King y Uhlemann Optical Co. (1952) 15 C.P.R. 99, a judg
ment of the Supreme Court of Canada where Rinfret C.J. at
page 104 reviewed the relevant authorities on the question
of obviousness, as follows:
Whether there is invention in a new thing is a question of
fact "for the judgment of whatever tribunal has the duty
of deciding" (Lord Moulton's dictum, quoted by Terrell
on Patents, 7th ed., p. 71). The learned author adds: "It
would seem to be necessary to fix upon some definition of
invention, but this has never been done, and in my opinion
no definition of invention can be found which is of the
slightest assistance to anyone in a case of difficulty .. .
When you approach the dividing line it is so impossible to
get a test that it becomes, more or less, a matter of
personal opinion. Some of the elements of a combination
are altered so as to improve, but not essentially change its
working. Is that a new invention? If it is only the substitu
tion of mechanical elements which are notoriously the
equivalents of the old elements the law is clear, but in any
other case it is treated as being a question of fact for the
judgment of whatever tribunal has the duty of deciding."
As Tomlin J. (as he then was) said in Samuel Parkes & Co.
v. Cocker Bros. (1929), 46 R.P.C. 241 at p. 248: "Nobody,
however, has told me, and I do not suppose anybody ever
will tell me, what is the precise characteristic or quality
the presence of which distinguishes invention from a
workshop improvement. Day is day, and night is night, but
who shall tell where day ends or night begins? ... The
truth is that, when once it had been found, as I find here,
that the problem had waited solution for many years, and
that the device is in fact novel and superior to what had
gone before, and has been widely used, and used in
preference to alternative devices, it is, I think, practically
impossible to say that there is not present that scintilla of
invention necessary to support the Patent."
In Br. Westinghouse Elec. & Mfg. Co. v. Braulik (1910),
27 R.P.C. 209 at p. 230, Fletcher Moulton L.J. remarked
that "ex post facto analysis of invention is unfair to the
inventors, and in my opinion it is not countenanced by
English Patent Law".
This was approved by the House of Lords in Non-Drip
Measure Co. v. Stranger's Ltd. (1943), 60 R.P.C. 135 at p.
142, where Lord Russell of Killowen remarked: "Nothing
is easier than to say, after the event, that the thing was
obvious and involved no invention."
And Lord Macmillan said (p. 143): "It might be said ex
post facto of many useful and meritorious inventions that
they are obvious. So they are, after they have been
invented."
See, also, the remarks of Fletcher Moulton L.J. in Hick-
ton's Patent Syndicate v. Patents & Machine Improve
ments Co. (1909), 26 R.P.C. 339 at p. 347: "To say that
the conception may be meritorious and may involve
invention and may be new and original, and simply
because when you have once got that idea it is easy to
carry it out, that that deprives it of the title of being a new
invention according to our patent law, is, I think, an
extremely dangerous principle, and justified neither by
reason or authority."
As cautioned by Urie J., I have endeavoured
to temper my view of the "worth a try"
approach; I have also endeavoured to keep in
mind the admonitions reviewed by Thorson P.
on this question of inventiveness in Ernest
Scragg & Sons Limited v. Leesona Corporation
[1964] Ex.C.R. 649 at 737-744. Nevertheless,
endeavouring to put myself in the position of
one skilled in the art, and considering the prior
art, particularly Bayer and Hoechst, I conclude
there was no inventive ingenuity in respect of
the claim relied on here.
That conclusion is sufficient to dispose of
that part of the action based on Patent 239, but
in the circumstances I feel I should deal with
the other defence raised. It is contended Claim
2 is invalid for inutility, that the claim is wide
enough to embrace processes that will not work.
The claim refers to an initial mix of aluminum
bromide and a "small" quantity of halothane.
The claim does not specify the proportion of the
catalyst to the solvent. Dr. Wright, the expert
for the defence, conducted two experiments. In
the first, he used 36.5 grams of aluminum bro
mide, 5.625 grams of halothane and 0.625
grams of adduct. In the second, he used the
same quantity of aluminum bromide and 6.25
grams of adduct. Using those proportions, he
found no halothane produced. Dr. Wright was
admittedly seeking a process which would not
work. The proportions of catalyst used by Dr.
Wright are roughly 44 to 1. He conceded this
was an extreme amount for a skilled chemist to
use. He said (and I summarize) as a chemist he
would normally take a "small" quantity of cata
lyst; the proportions often used by chemists are
1 to 10 or 1 to 100. The case of Hewlett-Pac-
kard (Canada) Ltd. v. Burton Parsons Chemi
cals, Inc. [1973] F.C. 405 is relied on where
Jackett CJ. of the Appeal Division of this Court
stated the applicable law at pp. 409-410:
What subsection (1) of section 36 requires is that the
applicant for a patent fully describe his invention in the
specification in such a way that a person skilled in the art
may make use of it and that he particularly indicate and
distinctly claim "the part, improvement or combination"
that he claims as his invention. After the applicant has so
described his invention and has, as required by section
36(1), indicated and claimed the part, improvement or com
bination that he claims as his invention in the part of the
specification usually referred to as the disclosure, section
36(2) requires that he put at the end of the specification one
or more formal "claims" stating distinctly and in explicit
terms "the things or combinations" that he regards as new
"and in which he claims an exclusive property or privilege".
It is trite law that the formal claims put at the end of a
specification pursuant to section 36(2) define the ambit of
the monopoly to which the inventor becomes entitled when
a patent is granted to him. If those claims are so expressed
as to include less than the invention disclosed by the specifi
cation, the grant of the patent will give the patentee no
rights in what has been omitted from the claims. If, on the
other hand, one of those claims is so expressed as to include
something in addition to the applicant's invention as dis
closed by the specification, that claim will be invalid in its
entirety.
and again at page 415:
As I understand the law, even though a disclosure clearly
indicates a certain feature as being an essential feature of
the invention, if that feature is omitted from a claim, that
claim is invalid.
and again at page 417:
I have reviewed the authorities since the B.V.D. case and
I find no departure from the basic requirement that a claim
contain, in one way or another, all limitations necessary to
restrict it to the actual invention. In Minerals Separation
North American Corporation v. Noranda Mines Ld. (1952)
69 R.P.C. 81, Lord Reid restated the rule at page 95 in a
different context, as follows:
One other ground for excluding the cellulose xanthates
was urged at one stage in this case. It was said that for
various practical reasons no person skilled in the art
would ever attempt to use these xanthates for froth flota
tion, and therefore they could be disregarded. But Coun
sel before their Lordships did not attempt to maintain this
argument. It is well settled that, where the scope of a
claim includes some method which is useless, the claim
cannot be saved by showing that no skilled person would
ever try to use that method.
In the Hewlett-Packard case one of the com
ponents of the substance that was the subject
matter of the patent was an emulsified material
or an emulsion. It was sucessfully contended
that, in the claims, there was no limitation on
the emulsions that might 'be used and as certain
emulsions would not work, the claims were
invalid. The respondents' position in support of
the patent had been (pp. 411-412):
What the respondents say, as I understand it, is that the
words in the claims must be read with the disclosure and
that, when so read, it will be apparent to any person skilled
in the art, that the claims must be read as implying certain
limitations on the choice of type and concentration of emul
sified material to be employed. If that is the correct way of
reading the claims, and if the limitations on the choice of
type and concentration of emulsified material to be
employed are such as to require the choice of a type and
concentration that will produce only the invention disclosed
by the specification, there is a sufficient compliance with
section 36(2).
In the present case, there is no suggestion that
one of the components in the process includes
something that will not work. The quarrel is
with the failure to set out the amount of one
component to be used. In these circumstances, I
think the proper approach is: "... it is not in
practice enough to ask whether the claim
includes things that are not useful; it is neces-
sary to ask whether there is anything in the
language of the claim positively pointing to
some useless construction" 9 . There is nothing in
Claim 2 pointing to a useless construction, such
as in the Hewlett-Packard or the Minerals Sepa
ration cases. The examples in the disclosure,
while persuasive only, indicate a reasonable
proportion. The defendants agree that, in their
process, they have never encountered no or
unsatisfactory results because of misproportion.
In my view, one skilled in the art would use
reasonable proportions, and not the extreme
improbabilities of Dr. Wright. I conclude, there
fore, Claim 2 is not invalid for inutility.
I turn now to the question whether there has
been infringement by the Canadian defendant. I
shall assume the validity of Claim 2. In that
assumption, I of course include the hypothesis
that a temperature of about 50°C. is essential to
the invention or claim. Exhibit 5 essentially sets
out the process used by that defendant. Some
change was made in 1971 at about the time this
litigation was threatened or commenced. I do
not think the change to be a material one in
deciding this particular aspect of the case. The
process is started with 140 lbs. of halothane.
The expression used is a "heel" 10 . The halo-
thane is put in a reactor, then one pound of
aluminum bromide added. The next step is to
add the adduct (isohalothane) in increments
with further aluminum bromide added between
each increment. Temperatures are intermittently
recorded in the making of a batch. The change
made in 1971 to the process was to start by first
putting halothane into the reactor, then adding
an increment of adduct, then aluminum bro
mide. The evidence is clear that the order of
addition of the ingredients is, on the question of
infringement, not material.
9 Blanco White (supra) p. 155.
10 "Heel", in the parlance of consumers of alcoholic
fluids, may be susceptible of different meanings, depending
upon the condition, degree of thirst, and normal capacity of
the consumer.
The defendants argue that their halothane
process varies from Claim 2 in the following
respects:
(a) The initial mix is one pound of aluminum
bromide to 140 lbs of halothane. It is said this
is not a "small" amount of halothane. I have
little hesitation that it falls within a reasonable
interpretation of "small" when one compares
the amount of halothane used to the amount
of adduct subsequently added. I am con
vinced the substance of the claim and the
practical object of the mix is to secure disso
lution. The defendants' mix, in my view, is
substantially the same as the mix described in
Claim 2.
(b) The defendants, in their process, do not
add the isohalothane "dropwise", but in a
stream. That is technically so. The method of
addition of the adduct, in my opinion, is not
essential. The method of addition must
depend on the scale of the operation. Again
we must look at the substance of the claim.
By not adding the isohalothane dropwise does
not, in my view, mean that the defendants
have not taken the pith and marrow of the
invention.
(c) The defendants, in their process, add the
isohalothane by increments along with further
additions of aluminum bromide. It is said that
Claim 2 contemplates the addition of the
isohalothane all at once. I find no merit in this
variation. The substance of the matter is the
addition of isohalothane.
(d) The rearrangement by the defendants is
not performed at "its boiling temperature of
about 50°C." Mr. Ferstandig expressed his
view that approximately 5% only of the
defendants' rearrangement occurred at about
boiling point. In my view, the only reasonable
inference to draw from the logs is that the
precise point of rearrangement probably
occurs about 50°C. Mr. Ferstandig's view
was, he conceded, merely an educated guess.
I am not prepared, in an important matter
such as this, to heed educated guesses.
The Canadian defendant's process, when
viewed as a whole, and not dissected into tech
nical fragments, in my opinion, infringes the
substance, or the pith and marrow, of Claim 2.
Before concluding, I must once again refer to
the plaintiff's contention that if the Canadian
defendant is liable for infringement, then the
American defendant, on the grounds previously
urged, is equally liable. For the reasons I have
given in respect of Patent 039, I find against
that submission.
CONCLUSION
The plaintiff succeeds against the Canadian
defendant in its claim for infringement based on
Claim 10 of Patent 039. It is entitled to the
relief claimed. In the prayer for relief damages
in the amount of $100,000.00, or more, are
claimed, or an accounting of profits, as the
plaintiff might elect. There will be a reference in
that regard. The action, based on Patent 039, as
against the American defendant will be
dismissed.
The plaintiff's action, based on infringement
of Patent 239, will be dismissed as against both
defendants.
This disposition of the action obviously raises
problems on the question of costs. At trial,
submissions were made in respect of costs on
another aspect—the withdrawal of the case
based on Patent 650,600, and the abandonment
of a number of claims as having been infringed.
I therefore invite submissions as to costs.
I shall not, at this stage, issue a formal judg
ment pursuant to Rule 337(2)(a). I request coun
sel for the plaintiff to prepare the draft of an
appropriate judgment covering all matters but
costs. The draft is to be submitted to counsel
for the defendants. If agreement as to the terms
and form cannot be reached within 14 days of
the date of these reasons, then I shall settle the
formal judgment. I suggest counsel get in touch
with the Registry in respect of the submissions
on costs.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.