A-215-74
Halocarbon (Ontario) Limited (Appellant)
v.
Farbwerke Hoechst Aktiengesellschaft, vormals
Meister Lucius & Bruning (Respondent)
Court of Appeal, Jackett C.J., Heald and Urie
JJ.—Toronto, April 27, 28 and 29, 1976.
Patents—Infringement--Action successful against Canadian
company importing and using isohalothane—Action failing
against Canadian and American companies for production by
Canadian company of halothane—Requirement of "inventive
ingenuity" not met—Appeal allowed.
Respondent, a German company and Canadian patentee,
sued for infringement of two process patents against a Canadi-
an company (appellant) and an American company. The Trial
Division [[1974] 2 F.C. 266] found that respondent was entitled
to succeed against appellant for infringement of Claim 10
(isohalothane). Appellant was held liable in that it imported
into and used in Canada a product made elsewhere by a process
infringing the patent rights of respondent. But, as against the
American company (Halocarbon Products Corporation),
respondent failed to establish that this company caused or
directed the tortious act in question. As to Claim 2 (halothane)
the action was dismissed, since the invention asserted in the
claim, having regard to the prior publications, lacked inventive
ingenuity. Appellant appealed the judgment against it for
infringement of Claim 10 (isohalothane), and respondent cross-
appealed from that portion of the judgment dismissing an
action against appellant for infringement of Claim 2 (halo-
thane) and dismissing an action for infringement of both claims
against Halocarbon Products Corporation (the second defend
ant in the original action).
Held, allowing the appeal and dismissing the cross-appeal, it
is unnecessary to express any view as to the correctness of the
Trial Judge's reasoning, except with regard to the conclusion he
expressed under the heading "Obviousness, or Lack of Inven
tion" with reference to the isohalothane patent. "Inventive
ingenuity" is one of the essential attributes of "patentability."
The only question here was whether the "liquid phase" aspect
of the process (Claim 10) for manufacturing isohalothane
involved "inventive ingenuity." It is common ground that in
1954, it was discovered that the same "monomer" could be
reacted with the same bromide to produce the same product; it
was not specified that such reaction must be in either a "liquid"
or "gaseous" stage. This disclosure is so clear-cut an indication
of a "process" that there cannot be said to be any "inventive
ingenuity" involved in discovering that the reaction can be
brought about in the "liquid phase." The requirement of
"inventive ingenuity" is not met in the circumstances of the
claim where the "state of the art" points to a process and all
that the alleged invention has done is to ascertain whether or
not it will work successfully.
Commissioner of Patents v. Farbwerke Hoechst Aktien-
gesellschaft [1964] S.C.R. 49, applied.
APPEAL.
COUNSEL:
D. F. Sim, Q.C., and R. T. Hughes for
appellant.
D. M. Rogers, Q.C., for respondent.
SOLICITORS:
Donald F. Sim, Q.C., Toronto, for appellant.
Rogers, Bereskin & Parr, Toronto, for
respondent.
The following are the reasons for judgment
delivered orally in English by
JACKETT C.J.: This is an appeal by the appel
lant (one of two defendants in the Trial Division)
from a judgment against it for infringement of
Claim 10 in one patent (Canadian Patent 692,039)
and a cross-appeal from that portion of the judg
ment in the same action that dismissed an action
against the appellant for infringement of Claim 2
in another patent (Canadian Patent 652,239) and
dismissed an action for infringement of both
claims as against a second defendant.
After having heard counsel for both sides on the'
question whether Claim 10 in Patent 692,039 is
invalid by reason of anticipation or lack of "inven-
tive ingenuity", we concluded that the appeal must
be allowed.
After having heard counsel for the respondent
on the question whether the judgment should be
varied on the cross-appeal, we concluded, without
calling on counsel for the appellant, that the cross-
appeal should be dismissed. We were not persuad
ed that the learned Trial Judge erred in holding
that Claim 2 in Patent 652,239 was invalid for
lack of "inventive ingenuity".
[1974] 2 F.C. 266.
We have also formed the view, subject to hear
ing counsel on the question, that the appellant
should have its costs to be taxed both in this Court
and in the Trial Division.
It is unnecessary to express any view as to the
correctness of the reasoning of the learned Trial
Judge with reference to any of his conclusions
except the conclusion that he expresses under the
heading, "Obviousness, or Lack of Invention" with
reference to Patent 692,039.
That "inventive ingenuity" is one of the essen
tial attributes of "patentability" under the Canadi-
an Patent Act was finally settled by the Supreme
Court of Canada in Commissioner of Patents v.
Farbwerke Hoechst Aktiengesellschaft Vormals
Meister Lucius & Bruning.' See Judson J. (deliv-
ering the judgment of the Court) at pages 52-3.
It is common ground here that Claim 10 in
Patent 692,039, which was granted in 1964, may
be expressed as a "process" for the manufacture of
isohalothane, which comprises "reacting" a sub
stance (referred to as a matter of convenience as
"monomer") in the "liquid phase" under radical-
forming conditions with hydrogen bromide and
isolating the isohalothane obtained. The only ques
tion in issue is whether the "liquid phase" aspect
of this process involved "inventive ingenuity". It is
also common ground that, in 1954, R. N. Haszel-
dine and B. R. Steele disclosed that the same
"monomer" could be reacted with the same bro
mide under the same conditions to produce the
same product. It appears that such a reaction
might be carried out in what might be described as
a "gaseous phase" or it might be carried out in
what might be described as a "liquid phase"; but
their paper did not specify that such reaction must
be in any particular phase—"liquid" or
"gaseous". 3 Prima facie, it seems to me that the
Haszeldine disclosure is such a clear-cut indication
of a "process" for making "isohalothane" by react
ing the "monomer" with hydrogen bromide that
there cannot be said to be any "inventive ingenui-
2 [1964] S.C.R. 49.
3 That being so, I am not inclined to disagree with the
learned Trial Judge when he holds that the Haszeldine disclo
sure does not constitute an anticipation of Claim 10.
ty" involved in discovering that the reaction can be
brought about in the "liquid phase". 4 (There is no
suggestion that, once it was decided to try the
reaction in the "liquid phase", there were difficul
ties encountered in accomplishing the reaction in
the "liquid phase" that could only be overcome by
"inventive ingenuity".)
The learned Trial Judge appears to have pro
ceeded upon the assumption that the requirement
of "inventive ingenuity" is satisfied unless the
"state of the art" at the time of the alleged
invention was such that it would have been obvious
to any skilled chemist "that he would successfully
produce isohalothane (assuming the monomer used
here and hydrogen bromide) in the' liquid phase'."
(The italics are mine.) 5 I do not think that the
learned Trial Judge's assumption is correct as a
universal rule. I would not hazard a definition of
what is involved in the requirement of "inventive
ingenuity" but, as it seems to me, the requirement
of "inventive ingenuity" is not met in the circum
stances of the claim in question where the "state of
the art" points to a process and all that the alleged
inventor has done is ascertain whether or not the
process will work successfully.
I have not overlooked the detailed references to
the evidence of the experts but, as it seems to me,
that evidence was to a large extent directed to the
question how the Haszeldine work was actually
accomplished and in no way negates the fact that a
fair reading of the 1954 paper maps out, in a
general way, the sort of reaction that was ulti
mately made, in a more specific manner, the sub
4 The respondent's argument, if I correctly appreciated it,
was that, owing to the special nature of chemistry, where a
chemical reaction is tried with useful results, inventive ingenui
ty is to be implied as long as that particular reaction had never
actually been tried before. Even if that generalization is correct
(a matter concerning which I have doubt), I have not been
persuaded that the same thing can be said about trying an old
reaction in a "phase" in which it had not previously been tried.
5 I have no doubt that, if the state of the art had shown that
it could be successfully done, there would be no inventive
ingenuity. It does not, in my view, however, necessarily follow
that, if the state of the art did not teach that it could be done
successfully, there was "inventive ingenuity" involved in adopt
ing that process.
ject matter of Claim 10. 6
For the above reasons, I concluded that Claim
10 in Patent 692,039 was invalid for lack of
"inventive ingenuity".
We are of opinion that the appeal should be
allowed and that the cross-appeal should be dis
missed; that the judgment of the Trial Division
should be set aside; that the action of the respond
ent against the appellant and its co-defendant
should be dismissed; and, subject to hearing argu
ment on the question, that the respondent should
pay to the appellant the costs of the appeal to this
Court, and should pay to the appellant and its
co-defendant the costs of the action in the Trial
Division.
* * *
HEALD J. concurred.
* * *
URIE J. concurred.
6 Out of fairness to the learned Trial Judge, it should be said
that a leisurely study of the relevant testimony and discussion
during the course of the trial, with the aid of a transcript of the
proceedings that was presumably not available to him, reveals,
in my view, that it was directed to the question of what was in
fact done by Haszeldine and his colleague in a manner that was
calculated to divert attention from the real question (i.e., what
was "taught" by the Haszeldine paper and the other prior art).
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.