Bridgeview Manufacturing Inc. (Bridgeview) and Highline
Manufacturing Ltd. (Highline) brought an action against Duratech
Industries International, Inc. (Duratech) et al. for
infringement of claims 1, 2 and 4 of Canadian Patent No. 2,282,334
(the 334 patent) relating to bale processors, machines designed to
disintegrate or break up large bales of straw, hay or other crop
material. Duratech denied infringement and counterclaimed alleging
invalidity of the 334 patent. The judge dismissed Bridgeview's
claim and allowed Duratech's counterclaim, finding that the 334
patent was invalid for obviousness. This was an appeal of that decision.
The invention disclosed in the 334 patent is embodied in a bale
processor known as the "Bale King", manufactured by
Bridgeview, and a bale processor named "Bale Pro",
manufactured by Highline. Duratech manufactured and sold the
"Balebuster 2650", a bale processor inspired by the Bale
King and with knowledge of the 334 patent. The alleged inventive
step of the 334 patent is a "right hand discharge" that
enables the operator of a tractor to more easily monitor and
Claim 1 (the independent claim of the 334 patent), claimed,
"A crop material processor for disintegrating baled crop
material comprising", among other things, a
"manipulator" and "a discharge opening at the bottom
of the right side wall to discharge material for the right side of
the processor." The trial judge accepted the evidence of
Duratech's expert that the use of the word
"manipulator" referred only to a particular kind of
manipulator with one roller on each side, as opposed to
manipulators of every kind typical of bale processors of the time.
In addition, the judge accepted a more literal view of the nature
of the discharge opening. On appeal, Bridgeview relied on the
Supreme Court's decision in Whirlpool v. Camco
Inc., asserting that while the disclosure
portion of the patent specification could be used to understand the
meaning of words in the claim, it could not be used as a basis for
narrowing or enlarging the scope of the claims as written and thus
understood – in this case narrowing the scope of claim 1.
Justice Sharlow of the Federal Court of Appeal rejected
Bridgeview's argument, however, and upheld the "soundly
reasoned" approach adopted in construing the claim. Although
the accepted construction tended to make claim 5 redundant,
"that by itself cannot overcome a purposive interpretation of
the specification." Given this finding, there was no basis
upon which to intervene with the judge's conclusion on
Bridgeview was more successful in contesting the findings with
respect to obviousness. Bridgeview argued that, as a combination
invention, it was not fair to break the combination down into its
parts, and find that, because each part was well known, the
combination was necessarily obvious. Justice Sharlow agreed, and
stated, "The question the judge should have asked, but did
not, is whether the common general knowledge that he identified
would have led the skilled but uninventive person to come directly
and without difficulty to the particular combination of elements of
the invention disclosed in the 334 patent, as construed by the
judge." A review of the prior art showed that the trial judge
erred in his conclusion on obviousness, and the appeal was
therefore allowed in respect of validity of the 334 patent.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).