Federal Court of Appeal Decisions

     A-232-96

CORAM:      STRAYER J.A.

     LINDEN J.A.

     McDONALD J.A.

B E T W E E N:

     NUTRON MANUFACTURING LTD.

     Appellant

     Defendant

     " and "

     ALMECON INDUSTRIES LIMITED

     Respondent

     Plaintiff

HEARD at Toronto, Ontario on Thursday, February 6, 1997

JUDGMENT delivered from the Bench at Toronto, Ontario on Thursday, February 6, 1997.

REASONS FOR JUDGMENT BY:      STRAYER J.A.

     A-232-96

CORAM:      STRAYER J.A.

     LINDEN J.A.

     McDONALD J.A.

B E T W E E N:

     NUTRON MANUFACTURING LTD.

     Appellant

     Defendant

     " and "

     ALMECON INDUSTRIES LIMITED

     Respondent

     Plaintiff

     REASONS FOR JUDGMENT

     (Delivered from the Bench at Toronto,Ontario

     on Thursday, February 6, 1997)

STRAYER J.A.

     This is an appeal from a judgment of the Trial Division in which the appellant was found to have infringed the respondent's patent and the validity of that patent was upheld.

     The patent in question, number 1,220,134 which issued on April 7, 1987, is for a "topping and tamping plug" used in the oil exploration industry. It is inserted about 18 inches below ground surface, into a hole drilled for seismic testing, prior to the explosion. The tamping effect is to resist upward pressure from the explosion, thus better containing its impact. The topping effect is to support filling from above so as to leave an even ground surface.

     The appellant's plug found by the Trial Judge to have infringed patent 1,220,134 is called the Supergrip Plug. The respondent's plug, the King Plug, is the preferred embodiment of its patent. Both plugs have enjoyed great commercial success since 1984 or 1985 when they were put on the market.

     The appellant has presented here a broad array of arguments against the correctness of the Trial Judge's reasons. We have carefully considered the many points raised, but in spite of the comprehensive argument of counsel for the appellant we can find no reviewable error in the careful reasoning of the learned Trial Judge. We have perceived no errors of law nor any palpable errors of fact warranting our intervention. Where there were disputed facts or opinions it appears to us that there was evidence upon which he could decide as he did.

     It is unnecessary to recite all the arguments, or our conclusions thereon. Following is a brief summary of our views on the main issues. We will not attempt to deal specifically with points raised which we do not consider to warrant comment other than to indicate that we are not persuaded by them.

     We perceive the Trial Judge as having undertaken the construction of the claims with "a mind willing to understand". From claims 1 and 5 he was able to deduce that the plug described, being both for tamping and topping, would have to fill all or most of the hole. This function would have to be performed by the body, as the elongated members would not present a continuous blocking surface. We cannot say that he erred in law in going to the disclosures for further clarification as to whether both the body and the elongated members would contribute to the axial stability; a fair reading of the claim would be ensured in that way.¹ There was possible ambiguity at least in the words "said members" and "axial stability" in claim 1 which could be clarified by resort to the disclosures. The disclosures revealed how the plug would function, namely by the elongated members, referred to as "claws", being embedded into the walls of the hole upon explosion of the charge. This information, combined with the expert evidence as to what a skilled workman would understand from it, provided an adequate basis for the Trial Judge to conclude that relatively stiff claws would be required, and that the plug would function best if the body were nearly as large as the diameter of the hole. Thus he was able to construe the claims as he did.

     Much has been said about his interpretation of the term "axial stability" found in claim 1. It is said that he was inconsistent in his interpretation of this term, depending on whether he was applying it to test anticipation or infringement. We are unable to find any basic inconsistency in his conclusions. Some of the inconsistency of language, if there is any, comes from his quoting the views of others. But at page 27 of his reasons he states

It is clear that the phrase "axial stability" refers to the ability of the Almecon plug to maintain its alignment upon insertion into the bore hole, during shooting, and following the shot.

Taken with his understanding of the "tamping" purpose of the plug, this clearly indicates his functional understanding of the degree of stability intended and required for this plug to perform that purpose. He had evidence to indicate that the only relevant prior art could not be relied on to achieve this result and that the appellant's infringing Supergrip Plug did achieve it. Isolated phrases from the judgment, taken out of context, do not in our view detract from this basic conclusion.

     As to anticipation, we agree with the Trial Judge that the relevant and rigorous legal tests² have not been met to make out such a claim for invalidity. It was open to him to find that there was no anticipation by use of the appellant's earlier Permaplug, the structure of that plug and its functioning in the hole being significantly different. Certainly the Ovelson Patent did not teach the use of a tamping plug nor the use of elongated members outwardly and rearwardly arranged in relation to the body. The French patent does not deserve serious attention as its intended use was remote from that of a seismic plug and its design sufficiently different that it would not provide unmistakeable directions for the making of the plug depicted in the respondent's patent.

     As we understand it, the other prior art unsuccessfully argued before the Trial Judge as anticipations are not being pursued on appeal.

     With respect to obviousness as a grounds for invalidity, the appellant relies on its own Permaplug, used since 1971, as prior art for the respondent's plug designed in 1984 and for the appellant's Supergrip plug designed in 1984 or 1985. We believe the learned Trial Judge adopted the correct legal tests for obviousness. While the appellants contend that the Trial Judge misdescribed the relevant "workman skilled in the art" as the user, not the maker, of seismic equipment, we consider this essentially a question of fact for his determination. Given the fundamental artificiality of the concept of the "skilled workman" we are not prepared to elevate to a principle of law a requirement that such a workman must in all cases be a maker and not a user of equipment. What is important is that he be a person who understands, as a practical matter, the problem to be overcome, how different remedial devices might work, and the likely effect of using them.

     On the particular facts here, it was certainly open to the Trial Judge to find that a modification of the Permaplug, sufficient to result in the respondent's patent design, was not obvious. Apart from the different focus of the improvements in its Permaplug attempted by the appellant between 1971 and 1984, the fact is that no one until then " including the appellant " perceived the possibility of attaching to the Permaplug outwardly and backwardly inclined elongated members designed to achieve axial stability by embedding in the soil of the hole. The dramatic evidence of commercial success " both of the respondent's patented plug called the King Plug and the appellant's infringing Supergrip " attests to the novelty of this development. The appellant invokes the 1935 British case of British Celanese v. Courtalds³ as its sole authority for the proposition that if a claim may embrace embodiments of the patent which are not useful, proof of commercial success of one embodiment of the claim is not proof against obviousness. The appellant further asserts that claim 1, apart from covering the commercially successful King Plug with elongated members at both ends, also covers plugs with such members at only one end such as the respondent's Queen Plug. It is said that the Queen Plug is not usable or would not be commercially successful. Thus, by the British Celanese principle the commercial success of the King Plug cannot refute the allegation of obviousness of claim 1. In rejecting this argument we would offer only a few comments. Firstly, the observation of over 60 years ago in the British Celanese case seems unexplained in the case itself and, no cases were cited to us where it had been followed. It arose in a case where the House of Lords was not satisfied that commercial success could be attributed to any embodiment of the patent. In the present case, we are not satisfied that the Trial Judge had such evidence before him that he was obliged to find that claim 1 embraced useless embodiments: therefore even if British Celanese is good law he was not obliged to apply it and was justified in taking into account evidence of commercial success.

     It follows from what we have said earlier concerning construction of the patent that the Trial Judge was entitled to find infringement by the appellant's Supergrip plug based on his stated understanding of the nature and function of "axial stability". It also follows that the Trial Judge was entitled to read the patent as a whole and to reject the appellant's assertions of overclaiming and ambiguity. The minor variation of adding the tip to the front end of the Supergrip plug was properly held to offer no functional difference and was not a modification which the patentee would have seen as significant.

     For all of these reasons the appeal will be dismissed with costs.

    

                                 J.A.

     FEDERAL COURT OF APPEAL

     Court No. A-232-96

B E T W E E N:

     NUTRON MANUFACTURING LTD.

     Appellant

     Defendant

     -- and --

     ALMECON INDUSTRIES LIMITED

     Respondent

     Plaintiff

     -- REASONS FOR JUDGMENT --

__________________

1      See e.g. Consolboard Inc. v. MacMillan Bloedel [1981] S.C.R. 504 at 520-21.

2      See e.g. Beloit Canada v. Valmet Oy (1986) 8 C.P.R.(3d) 289 at 297 (F.C.A.).

3      (1935) 52 R.P.C. 171 at 194 (H. of L.).