[2001] 1 F.C. 172
T-999-97
Stamicarbon B. V. (Plaintiff)
v.
Urea Casale S.A. (Defendant)
Indexed as: Stamicarbon B.V. v. Urea Casale S.A. (T.D.)
Trial Division, McKeown J.—Ottawa, July 5 and 27, 2000.
Patents — Patent Act, s. 47(1) permitting Commissioner to issue new patent on “surrender” of original patent deemed defective because of error arising from inadvertence, accident, mistake — S. 47(2) providing upon surrender reissued patent replacing original patent, original patent inoperative; surrender of original patent resulting in abatement of existing causes of action at time of action except to extent reissued patent containing claims identical to original patent — “Identical” meaning “exactly same in every detail” — Defendant admitting claim 22 in reissued patent new, not identical to claim 15 in original — Cause of action based on claim 15 abated — Original claim 14 altered to replace words “said method being characterized in that it comprises” with “said method comprising” — In claim language “characterized in that” separating old from new, inventive — Words following “characterized in that” essential to invention — Deletion of “characterized in that” changing scope of claim as suggesting following features no longer essential — Reissue premised on admission patent claiming more or less than entitled to as new — In amending claim 14 defendant admitting scope of claim 21 different from scope of original claim — As claims not identical, no basis to continue counterclaim — Summary judgment granted dismissing counterclaim.
Practice — Judgments and orders — Summary judgment — Motion for summary judgment to dismiss defendant’s counterclaim — Federal Court Rules, 1998, rr. 213, 216 governing summary judgments — Purpose to allow Court to summarily dispose of cases where no genuine issue to be tried, or if only genuine issue question of law — Counterclaim seeking damages only with respect to alleged infringement of original patent, not reissued patent — Damages could be awarded on original patent if claims under original, reissued patent “identical” pursuant to Patent Act, s. 47(2) — Claims not identical — No remaining issues for trial — Summary judgment granted dismissing counterclaim.
Practice — Costs — On solicitor and client basis — Patent issued in January 1997 — Action for declaration invalid as anticipated, rendered obvious by Japanese patent — Counterclaim alleging infringement — Defendant subsequently applying for reissue of patent in view of Japanese patent without notifying plaintiff — Summary judgment granted dismissing counterclaim with costs to plaintiff on solicitor-client basis, although not with respect to action — Solicitor-client costs awarded on ground of misconduct connected to litigation, where party causing substantial, unnecessary difficulty or expense for another party in prosecuting, defending action, or requiring party to be involved in unnecessary proceedings — Defendant should not have proceeded with counterclaim in light of knowledge of Japanese patent, failure to notify plaintiff of application for reissue of patent — Defendant awarded costs with respect to all matters related to breach of 1992 agreement on which plaintiff relied to claim ownership of patent from commencement of action to September 1998 — If costs awarded to plaintiff exceeding those awarded to defendant, plaintiff entitled to payment of excess from monies paid into Court as security for defendant’s costs.
This was a motion for summary judgment to dismiss the counterclaim with costs on a solicitor and client basis; for permission to discontinue the action; and for an order for payment out of $5,000 paid into court as security for the defendant’s costs. The defendant’s patent issued in January 1997. The plaintiff commenced an action in May 1997 seeking a declaration that the patent was void and that it was the owner of the patent or that certain activities carried out by it did not infringe the patent. One of the grounds of impeachment was that the invention disclosed and claimed in the patent was anticipated or rendered obvious by a Japanese patent. The statement of defence and counterclaim alleged infringements of the invention claimed in claims 14 and 15. In November 1997 the defendant instructed its agent to apply for a reissue of the patent in view of the Japanese patent. On December 16, 1998 the defendant filed the reissue application without giving notice to the plaintiff. The patent was reissued on October 12, 1999.
Patent Act, subsection 47(1) permits the Commissioner to issue a new patent on “surrender” of a patent which was deemed defective or inoperative by reason of error arising from inadvertence, accident or mistake, without any fraudulent or deceptive intention. Subsection 47(2) provides that the surrender takes effect on the issue of the new patent, and in so far as the claims of the original and reissued patents are “identical”, the surrender does not affect any action pending at the time of reissue or abate any cause of action then existing, and the reissued patent, to the extent that its claims are identical with the original, constitutes a continuation thereof and has effect continuously from the date of the original patent.
In order to ascertain the effect of the reissued patent on the claims with respect to the counterclaim, it was necessary to determine the meaning of “identical” in subsection 47(2).
Held, the motion should be allowed.
The counterclaim sought damages with respect to alleged infringement of claims 14 and 15 of the original patent, not the reissued patent. Therefore, damages could be awarded on the original patent only if the claims under the original patent and the reissued patent were identical as provided under subsection 47(2).
To the extent that claims 21 and 22 on the reissued patent were not identical to claims 14 and 15 in the original patent, the defendant no longer had a cause of action that it could maintain against the plaintiff for the infringement of claims 14 and 15. As the defendant admitted that claim 22 in the reissued patent was new and not identical to claim 15 in the original patent, the defendant’s cause of action based on claim 15 was abated.
The only remaining issue then was whether claim 14 of the original patent was identical to claim 21 of the reissued patent. The original claim 14 was altered to replace the words “said method being characterized in that it comprises” with “said method comprising”. The word “comprising”, which is common to both claims, has a meaning in claim language similar to that of “includes”. According to the Oxford Dictionary, two things are “identical” where they are “exactly the same in every detail”. The defendant did not establish that the claims in question in the original and reissued patent were “identical”, and the plaintiff did establish that claims 20 and 14 are not “identical” under subsection 47(2). In claim language, the words “characterized in that” separates that which comes before these words, which is admitted to be old, from that which follows these words, which is considered to be new and inventive. Accordingly, the presence of those words indicates those features described in the passage following the words “characterized in that” are essential to the invention, since these are the features which are new and inventive. In deleting the words “characterized in that” the defendant altered the scope of the claim, since such a deletion suggested that these features may no longer be essential. Further, in filing its reissue application, the defendant voluntarily chose to amend claim 14. Pursuant to section 47, a reissue is premised on the admission by the patentee that a patent is defective or inoperative by reason of inter alia the patentee claiming “more or less than he had a right to claim as new”. Accordingly, in seeking to make the amendments to claim 14, the defendant admitted that the scope of the claim as amended is different from the scope of the original claim. If the defendant felt it needed to correct mere technical errors which did not alter the scope of the claims, its only option was to seek to have those amendments made under the clerical error provision of section 8.
There were no remaining genuine issues for trial. The purpose of the summary judgment provisions in Federal Court Rules, 1998, rules 213 and 216 is to allow the Court to summarily dispose of cases which ought not to proceed to trial because there is no genuine issue to be tried. If the only genuine issue is a question of law, the Court may determine the question and grant summary judgment accordingly. Since the defendant’s claims were not identical, it had no basis to continue its counterclaim, and summary judgment was granted dismissing the counterclaim. The plaintiff’s action sought to impeach only the original patent, not the reissued patent. It was also permitted to discontinue its action.
Solicitor-client costs are generally awarded only on ground of misconduct connected to the litigation and in particular where a party has caused substantial unnecessary difficulty or expense for another party in prosecuting or defending an action, or has required a party to be involved in unnecessary proceedings. The defendant should not have proceeded with its counterclaim in light of its knowledge of the Japanese patent and its failure to communicate about the application for reissue of the patent until December 10, 1999. Costs were, therefore, awarded on a solicitor-client scale to the plaintiff with respect to the defendant’s counterclaim. However, solicitor-client costs were not awarded with respect to the plaintiff’s own action, which was in part based on the plaintiff’s view that it owned the patent as a result of a 1992 agreement and the breach of that agreement by use of confidential information. The plaintiff did not abandon its position with respect to confidential information until September 24, 1998, nor did it abandon its claims to seek a declaration that all claims under the original patent were invalid until the present time. The plaintiff took no steps other than asking from time to time whether an application had been made for reissue of the patent. Accordingly, the defendant was awarded costs with respect to all matters related to the breach of the 1992 agreement for the period from the commencement of the action until September 24, 1998. No costs were awarded with respect to the balance of the plaintiff’s action. If the costs awarded to the plaintiff exceeded those awarded to the defendant, the plaintiff shall be entitled to the payout of the amount owing.
STATUTES AND REGULATIONS JUDICIALLY CONSIDERED
Federal Court Rules, 1998, SOR/98-106, rr. 213, 216.
Patent Act, R.S.C. 1952, c. 203, s. 50(2).
Patent Act, R.S.C. 1970, c. P-4, s. 50(2).
Patent Act, R.S.C., 1985, c. P-4, ss. 8 (as am. by S.C. 1993, c. 15, s. 27), 47(1),(2).
CASES JUDICIALLY CONSIDERED
APPLIED:
Burton Parsons Chemicals, Inc. v. Hewlett-Packard (Canada) Ltd., [1976] 1 S.C.R. 555; (1974), 54 D.L.R. (3d) 711; 17 C.P.R. (2d) 97; 3 N.R. 553.
CONSIDERED:
Detroit Fuse & Manufacturing Coy. v. Metropolitan Engineering Coy. of Canada Ltd. (1922), 21 Ex. C.R. 276; 63 D.L.R. 179; Continental Can. Co. of Canada Ltd. v. Wainberg (1969), 61 C.P.R. 159 (Ex. Ct.); Warner-Lambert Co. v. Wilkinson Sword Canada Inc. (1988), 21 C.P.R. (3d) 145 (F.C.T.D.); Rothmans, Benson & Hedges Inc. v. Imperial Tobacco Ltd. (1993), 47 C.P.R. (3d) 188; 152 N.R. 292 (F.C.A.); affg (1991), 35 C.P.R. (3d) 417; 42 F.T.R. 68 (F.C.T.D.); Curl-Master Mfg. Co. Ltd. v. Atlas Brush Ltd., [1967] S.C.R. 514; (1967), 52 C.P.R. 51; Hewlett-Packard (Canada) Ltd. v. Burton Parsons Chemicals, Inc., [1973] F.C. 405; (1973), 10 C.P.R. (2d) 126 (C.A.); Slimfold Mfg. Co., Inc. v. Kinkead Industries, Inc., 810 F.2d 1113 (Fed. Cir. 1987).
AUTHORS CITED
Compact Edition of the Oxford English Dictionary, London: Oxford University Press, 1971.
Delbridge, Robert F. “Preparation and Prosecution of Canadian and Foreign Patent Applications” (1969), 58 C.P.R. 251.
Fox, Harold G. The Canadian Law and Practice Relating to Letters Patent for Inventions, 4th ed. Toronto: Carswell, 1969.
Johnson, D. S. “The Language of the Claim” (1955), 23 C.P.R. 76.
MOTION for summary judgment to dismiss the counterclaim with costs on a solicitor and client basis, for permission to discontinue the action, and for payment out of Court of monies paid in as security for the defendant’s costs. Motion allowed.
APPEARANCES:
A. David Morrow and Steven B. Garland for plaintiff.
Douglas N. Deeth for defendant.
SOLICITORS OF RECORD:
Smart & Biggar, Ottawa, for plaintiff.
Deeth Williams Wall, Toronto, for defendant.
The following are the reasons for order rendered in English by
[1] McKeown J.: The plaintiff brings this motion for summary judgment to dismiss the defendant’s counterclaim with costs to the plaintiff on a solicitor and client basis. The plaintiff also seeks an order permitting it to discontinue its action. The plaintiff further seeks an order that the amount of $5,000 paid into Court by the plaintiff as security for the defendant’s costs be paid out to the plaintiff along with any applicable interest.
[2] The issues before the Court are the meaning of “surrender” in subsection 47(1) of the Patent Act, R.S.C., 1985, c. P-4, and the meaning of “identical” in subsection 47(2) of the same Act.
FACTS
[3] The present action was commenced by the plaintiff by way of statement of claim filed on May 16, 1997. In the statement of claim, the plaintiff alleges, inter alia, that the defendant’s patent number 2141886 is invalid on numerous grounds. The Canadian Patent Application No. 2141886 was filed on February 6, 1995. On February 9, 1995, the defendant wrote the plaintiff, indicating that it had applied for a patent and informing the plaintiff of the subject-matter of the patent. On April 7, 1995, the plaintiff replied and referred to a January 24, 1992 agreement between the plaintiff and the defendant. In this letter the plaintiff told the defendant it was in breach of the agreement by using information received under the agreement and that the plaintiff would be looking for damages. The patent was issued on January 28, 1997. On May 16, 1997, the plaintiff instituted an action to impeach the original patent and seeking a declaration that certain activities carried out by the plaintiff in Canada did not infringe the original patent. One of the grounds of impeachment alleged was that the invention disclosed and claimed in the patent was anticipated or rendered obvious by Japanese patent No. 38813. The plaintiff alleged that two persons named in the patent are not the inventors of the alleged invention described in the patent and that they learned of the alleged invention from the plaintiff well before the priority date of the patent of May 11, 1994. It further alleged that the alleged invention is obvious. It sought a declaration that the patent is, and always has been, invalid, void and of no effect. In the alternative, the plaintiff sought a declaration that it is the proper owner of the patent, or further in the alternative, a declaration that the plaintiff’s activities do not constitute infringement of the patent to the extent that the patent may be found valid.
[4] On October 10, 1997, the defendant filed a statement of defence and counterclaim denying the allegations raised by the plaintiff and further alleging infringements of the patent by the plaintiff, in particular, with respect to two projects in Canada after March 1995 but before October 1997. And furthermore, since and after March 6, 1995, the defendant alleged that the plaintiff made, used and offered for sale the invention in claims 14 and 15 of the patent. The plaintiff filed a reply and defence to counterclaim on November 12, 1997. The plaintiff filed further amended statements of claim September 8, 1998 and August 10, 1999.
[5] On November 7, 1997, the defendant’s patent agent, M. S. Schmidt, was instructed by the defendant to proceed with a reissue application of the patent in view of, inter alia, Japanese patent No. 38813. In December 1997 and early 1998, the defendant and defendant’s counsel and patent agent discussed the reissue of the patent. In September 1998, the defendant’s representative, Mr. Zardy, was asked in discovery if any application for reissue, reexamination or disclaimer of the patent involved in the suit had been filed. Mr. Zardy informed him that this had not happened. The defendant’s counsel refused to ask whether there was a reissue application and/or preparation. The plaintiff’s counsel then asked defendant’s counsel “alright, if and when you do file any such application, will you advise us?” The answer by defendant’s counsel “I’ll consider that”.
[6] On December 16, 1998, the defendant filed the reissue application for the patent and no notice was given to the plaintiff or plaintiff’s counsel. On August 13, 1999, the defendant and defendant’s counsel were informed by their patent agent that the reissue application will be allowed. The plaintiff’s counsel, in July, September and October, requested the defendant to answer the outstanding questions from discovery and received no reply. On October 12, 1999, the patent was reissued. On November 15, 1999, the defendant and defendant’s counsel were informed by M. S. Schmidt, the patent agent, by letter and e-mail, that the reissue of the patent has issued. On December 10, 1999, the defendant indicated for the first time to the plaintiff “an application for reissue has been filed”.
[7] On January 11, 2000, the plaintiff obtained from the Canadian Patent Office a copy of the reissue application filed by the defendant and related correspondence in the Patent Office. These documents showed that the application for reissue was filed on December 16, 1998 and that the patent was reissued on October 12, 1999.
ANALYSIS
[8] The law relating to summary judgment proceedings in the Federal Court is governed by rules 213 and 216 of the Federal Court Rules, 1998 [SOR/98-106]. The purpose of the summary judgment provisions is to allow the Court to summarily dispose of cases which ought not to proceed to trial because there is no genuine issue to be tried. Furthermore, if the only genuine issue is a question of law, the Court may determine the question and grant summary judgment accordingly.
[9] As I stated earlier, the only allegation made in the defendant’s counterclaim, relates to the alleged infringement by the plaintiff of claims 14 and 15 of the original patent. The patent was reissued on October 12, 1999. The defendant has stated in its written submissions that there is no claim that the plaintiff has carried out any activities in Canada after October 1999 that would infringe either the original or the reissued patent. I must determine what the effect of the reissue of the patent is on the claims with respect to the counterclaim of the defendant. In order to do this I must review subsections 47(1) and (2) of the Patent Act which deal with the issue of new or amended patents and the effect of the new reissued patent.
47. (1) Whenever any patent is deemed defective or inoperative by reason of insufficient description and specification, or by reason of the patentee’s claiming more or less than he had a right to claim as new, but at the same time it appears that the error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention, the Commissioner may, on the surrender of the patent within four years from its date and the payment of a further prescribed fee, cause a new patent, in accordance with an amended description and specification made by the patentee, to be issued to him for the same invention for the then unexpired term for which the original patent was granted.
(2) The surrender referred to in subsection (1) takes effect only on the issue of the new patent, and the new patent and the amended description and specification have the same effect in law, on the trial of any action thereafter commenced for any cause subsequently accruing, as if the amended description and specification had been originally filed in their corrected form before the issue of the original patent, but, in so far as the claims of the original and reissued patents are identical, the surrender does not affect any action pending at the time of reissue or abate any cause of action then existing, and the reissued patent to the extent that its claims are identical with the original patent constitutes a continuation thereof and has effect continuously from the date of the original patent.
[10] I must determine the meaning of “surrender” as used in subsection 47(1) and the word “identical” in subsection 47(2). The plaintiff submits that the surrender means that the original patent has gone and that no action can be pursued under it except to the extent that the claims are identical in the original patent and the reissued patent. Harold G. Fox, in The Canadian Law and Practice Relating to Letters Patent for Inventions, 4th ed., 1969, states at pages 339 and 340:
Where a patent has been surrendered and reissued a judgment for infringement of the surrendered patent is inoperative and cannot be enforced by process of contempt after the surrender of the original patent, except in so far as identical claims are concerned.
He continues:
The present statute provides that, in so far as the claims of the original and reissued patents are identical, the surrender of the original patent shall not affect any action pending at the time of reissue nor abate any cause of action then existing, and the reissued patent to the extent that its claims are identical with the original patent shall constitute a continuation thereof and have effect continuously from the date of the original patent.
[11] Dr. Fox relies on the Detroit Fuse & Manufacturing Coy. v. Metropolitan Engineering Coy. of Canada Ltd. (1922), 21 Ex. C.R. 276, where Justice Audette states at pages 279-280:
Giving effect to what appears to be the plain language of the statute, the new, the re-issued patent would seem to have taken the place of the original one which from the issue of a new patent disappears and is replaced by the re-issue. The original patent being extinguished from the date of the re-issue, the judgment that was obtained by consent upon the original could only be said to be an accessory to such patent. If the original patent is the principal,—the objective of the judgment—the judgment, being only an accessory thereto, must disappear and be extinguished when the patent goes and must thereby become inoperative, ….
The general similarity of the patent law between the Canadian and the American Statutes,—as stated by Patterson, J. in Hunter v. Carrick ([1884] 10 O.A.R. 449, at p. 468), will be a justification to seek support upon that ground from the American authorities. In re Allen v. Culp ([1897] 166 U.S. 501, at p. 505) it was held that “when a patent is thus surrendered (for a re-issue) there can be no doubt that it continues to be a valid patent until it is re-issued, when it becomes inoperative.”
[12] In Continental Can Co. of Canada Ltd. v. Wainberg (1969), 61 C.P.R. 159 (Ex. Ct.), the plaintiff sought an order declaring a patent that had been surrendered to be and always have been void and invalid. The Court found that since [at page 160]:
… the sole conclusion of the present suit is for a declaration of the invalidity of the original patent, which no longer exists, it appears to me that there would no longer be any logical purpose to pursue the present action even if some of the claims in the re-issued patent may be or are similar to some of the claims in the original patent and, may I add, notwithstanding the language used in subsection (2) of section 50 of the Patent Act….
It read the same as subsection 47(2) of the existing Act. Noel J. felt that if the claims at issue in the litigation of the original and reissued patents are identical, the continuation of actions contemplated in subsection 50(2) [R.S.C. 1952, c. 203] (now subsection 47(2)) could only apply in a suit for infringement or where the plaintiff can obtain at least a part of the remedy claimed. This cannot be the case where all the plaintiff seeks is a declaration that the patent was void. As a result of Noel J.’s suggestion, the subsequent motion to dismiss the action on the ground that the patent impeached had been surrendered was filed and the application was dismissed by the Court. Noel J., in the course of his reasons, stated at page 162:
If the plaintiff, of course, as pointed out in the judgment of the Court in this file dated March 17, 1969, merely sued to impeach the original patent without asking for a declaration as to infringement and there appeared to be no useful purpose in merely attacking a surrendered patent, there would, of course, be no reason to pursue the action.
The defendant submitted that as a result of the foregoing statement, Noel J. was recognizing that an action for damages would be in a different position from an action for a declaration. However, Justice Noel made it clear that subsection 50(2) would apply in such a case provided that the claims of the original and reissued patents are identical. The defendant by counterclaim in the matter before me is only seeking damages with respect to the original patent and not the reissued patent. Furthermore, the plaintiff in its action is seeking only to impeach the original patent and not the reissued patent.
[13] In Warner-Lambert Co. v. Wilkinson Sword Canada Inc. (1988), 21 C.P.R. (3d) 145 (F.C.T.D.), Associate Senior Prothonotary Giles took the same view of subsection 50(2) [R.S.C. 1970, c P-4]. He stated at page 147:
It is quite apparent that whatever relief with respect to a surrendered patent is provided by s-s. 50(2) it is dependent upon the existence of identical claims in the patent and reissued patent.
He also pointed out that:
In the view I take of the effect of s. 50, it is not necessary at this time to decide whether the action should continue under the final provision of s-s. 50(2) as an action on the original patent or as an action on the reissued patent.
The defendant takes issue with the first statement of the Associate Senior Prothonotary and states that the second statement shows that you can have an action on the original patent. I cannot agree since the action on the original patent would still require, in any event, that the action be dependent upon the existence of identical claims in the patent and reissued patent. The defendant submitted several cases which show that the Court referred to the two actions, one under the original patent, and the second action under the reissued patent. However, in no case were damages awarded under the original patent and, in my view, damages could only be awarded on the original patent if the claims under the original patent and the reissued patent were identical as provided under subsection 47(2).
[14] In Rothmans, Benson & Hedges Inc. v. Imperial Tobacco Ltd. (1993), 47 C.P.R. (3d) 188 (F.C.A.); affg (1991), 35 C.P.R. (3d) 417 (F.C.T.D.), there were two actions. It is noteworthy in that case that the plaintiff alleged that the defendant, by its manufacture and sale of its product, infringed upon the rights of the plaintiff as patentee, both under the original patent and the reissued patent. The Trial Judge found that the defendants had infringed the plaintiff’s patent and provided injunctive relief from infringing the reissued patent. However, the judgment showed the relief as an injunction from infringing the original patent. This was cleared up on appeal and the Court found that the proper injunction was against infringement of the reissued patent. There is a statement by the Court of Appeal at page 196 which has caused some confusion. This statement reads:
The original patent remains as an issue for damages only.
The context of the quotation shows that this statement is a recitation of the appellant’s submissions, and is not a statement by the Court.
[15] In Curl-Master Mfg. Co. Ltd. v. Atlas Brush Ltd., [1967] S.C.R. 514, the Supreme Court of Canada dealt with a case in which the appellant sued the respondent in respect of alleged infringement of an original and reissued patent and sought a declaration as between the parties that the former patent was valid up to the date of reissuance and that the latter was a valid patent. The respondent’s counterclaim was for a declaration that both patents were invalid. The Supreme Court found that the reissued patent was a valid and subsisting patent. Martland J. went on at pages 533-534 to state:
I am not prepared to accede to the appellant’s submission that claim 4 of the original patent is identical with claim 3 of the reissue patent so as to enable the appellant to take advantage of the provision in subs. 2 of s. 50 that “the reissued patent to the extent that its claims are identical with the original patent constitutes a continuation thereof and has effect continuously from the date of the original patent” and so that the surrender of the patent does not “abate any cause of action then existing”.
In the result, the appellant is entitled to claim in respect of infringements of the reissue patent occurring after it was issued.
The Supreme Court accordingly did not have to consider the original patent and made no comment as to whether damages might have been collected if the result had been different.
[16] My view pursuant to subsection 47(1) is that upon reissue on October 12, 1999, the original patent was surrendered. Upon surrender of the original patent the reissued patent replaces the original patent and the original patent becomes inoperative. The dictionary meaning of “surrender” does not assist me in the fact of determining the effect of the surrender. The dictionary meaning is to give it up or to abandon it. The surrender of the original patent results in the abatement of any existing causes of action at the time of surrender except to the extent that the reissued patent contains claims that are identical to the original patent. Therefore, to the extent that claims 21 and 22 on the reissued patent are not identical to claims 14 and 15 in the original patent, the defendant no longer has a cause of action that it can maintain against the plaintiff for the infringement of claims 14 and 15. The defendant has admitted that claim 22 in the reissued patent is new and is not identical to claim 15 in the original patent, therefore, the defendant’s cause of action based on claim 15 is abated. The only remaining issue then is whether claim 14 of the original patent is identical to claim 21 of the reissued patent.
[17] Original claim 14 reads as follows:
14. Method for in-situ modernization of a reactor for two-phase reactions of the type wherein a co-current flow of a gaseous phase and a liquid phase takes place, comprising a vertical tubular shell in which is supported a plurality of superimposed horizontal perforated plates in mutually spaced relationship and at least one opening being defined between a perimetric edge of each of said plates and an internal wall of said shell, said method being characterized in that it comprises the step of partially obstructing the respective openings associated with at least two adjacent perforated plates by means of baffles with said baffles defining mutually offset openings for liquid flow.
[18] Reissued claim 21 reads as follows:
21. Method for in-situ modernization of a reactor for two-phase reactions of the type wherein a co-current flow of a gaseous phase and a liquid phase takes place, comprising a vertical tubular shell in which is supported a plurality of superimposed horizontal plates in mutually spaced relationship and at least one opening being defined between a perimetric edge of each of said plates and an internal wall of said shell, said method comprising the step of partially obstructing the respective openings associated with at least two adjacent perforated plates by means of baffles with said baffles defining mutually offset openings for liquid flow.
[19] From the foregoing it can be seen that original claim 14 has been altered to replace the words “said method being characterized in that it comprises” with “said method comprising”. The word “comprising”, which is common to both claims, has a meaning in claim language similar to that of the word “includes”. See: Burton Parsons Chemicals, Inc. v. Hewlett-Packard (Canada) Ltd., [1976] 1 S.C.R. 555, at page 566. The Supreme Court expressly disagrees with Chief Justice Jackett’s definition of the word “comprising”. He had stated at page 420 of [1973] F.C. 405 (C.A.):
The word “comprising” separates the part of the claim that performs the “fencing” function from the part of the claim that indicates what the function of the invention is. If the words of promise in the first part of the claim can be taken to limit the ambit of the invention defined, the public can be, by that device, completely deprived of the protection to which it is entitled under section 36(2).
Pigeon J. states at page 563:
With respect, I cannot agree that Claim 17 is invalid because the words “compatible with normal skin” are found before “comprising” instead of after, so that it would be valid, it seems, if the words were rearranged as follows: ….
He then stated at page 566, with respect to the word “comprising”: “It is no vaguer than ‘includes’.”
[20] According to the Oxford Dictionary, two things are “identical” where they are “exactly the same in every detail”. See: The Compact Edition of the Oxford English Dictionary (London: Oxford University Press, 1971).
[21] The defendant has not met the requirement that the claims in question in the original and reissued patent be “identical”. The defendant referred to an American case as authority for the proposition that an original and a reissued claim are identical if the reissued patent’s claim did not change the original in a substantial way. See: Slimfold Mfg. Co., Inc. v. Kinkead Industries, Inc., 810 F.2d 1113 (Fed. Cir. 1987). In my view, this is not the state of the law in Canada, as it extends the meaning of the word “identical” beyond what is contemplated by the word “identical”. It should be remembered that subsection 47(2) states that the surrender does not affect any action pending at the time of reissue or abate any cause of action then existing in the reissued patent to the extent that its claims are identical with the reissue patent, and constitute a continuation of the original claims. I must determine if the plaintiff has established that claim 20 and claim 14 are not identical. The only evidence filed in connection with this question was a statement from the defendant’s patent agent that it was her intent that the reissue claim be identical in scope to the original claim.
[22] It has been noted that in claim language, the words “characterized in that” separates that which comes before these words, which is admitted to be old, from that which follows these words, which is considered to be new and inventive. Accordingly, the presence of those words indicates those features described in the passage following the words “characterized in that” are essential to the invention, since these are the features which are new and inventive. See: D. S. Johnson, “The Language of the Claim” (1955), 23 C.P.R. 76, at pages 79-81 and Robert F. Delbridge, “Preparation and Prosecution of Canadian and Foreign Patent Applications” (1969), 58 C.P.R. 251, at pages 258-259. The authors note that these words are used in English and German practice and have approved them in effect for use in Canada. In deleting the words “characterized in that” the defendant has altered the scope of the claim, since such a deletion suggests that these features may no longer be essential. Further, in filing its reissue application, the defendant voluntarily chose to amend claim 14. Pursuant to section 47, a reissue is premised on the admission by the patentee that a patent is defective or inoperative by reason of inter alia the patentee claiming “more or less than he had a right to claim as new”. Accordingly, in seeking to make the amendments to claim 14, the defendant admitted that the scope of the claim as amended is different from the scope of the original claim. If the defendant felt it needed to correct mere technical errors which did not alter the scope of the claims, its only option was to seek to have those amendments made under the clerical error provision of section 8 [as am. by S.C. 1993, c. 15, s. 27] of the Patent Act. While I recognize that there are perhaps some de minimis exceptions, the word “identical” is used in subsection 47(2). The two claims are thus not identical under that subsection.
[23] There are no remaining genuine issues for trial. The meaning of the word “identical” does not require any further canvassing. The interpretation of claims 14 of the original patent, 20 of the reissue patent, need no further review. If the defendant believed that an expert witness was required it could have submitted an affidavit of expert witness to defend this motion for summary judgment to dismiss its counterclaim. The issue with respect to whether there was an infringement of the original patent is decided by the interpretation of section 47. There is no question of validity outstanding. If the counterclaim is dismissed on summary judgment the plaintiff has agreed to withdraw all its claims in its cause of action. Again there is no remaining issue of ownership if the plaintiff’s cause of action is dismissed. In view of the fact that the defendant’s claims are not identical, it has no basis to continue its counterclaim and summary judgment is granted dismissing the defendant’s counterclaim. The plaintiff is also permitted to discontinue its action.
[24] I must now determine whether the plaintiff is entitled to solicitor and client costs as requested for both its action and the defendant’s counterclaim. Pursuant to the Federal Court Rules, 1998, I have discretionary power over the amount of allocation of costs. Solicitor-client costs are generally awarded only on ground of misconduct connected to the litigation and in particular where a party has caused substantial unnecessary difficulty or expense for another party in prosecuting or defending an action, or has required a party to be involved in unnecessary proceedings. In March 1997, M. S. Schmidt, the defendant’s patent agent provided a validity opinion by letter dated March 6, 1997, concluding that some of the claims of the original patent are invalid in view of Japanese patent no. 38813. The plaintiff commenced its impeachment action with respect to the original patent in May of 1997. On October 10, 1997, the defendant filed and served a statement of defence and counterclaim. In November 1997, M. S. Schmidt was instructed by the defendant by letter dated November 7, 1997, to proceed with the reissue application in view of, inter alia, Japanese patent no. 38813. In my view it is clear that the defendant should not have proceeded with its counterclaim in light of its knowledge of the Japanese patent and its failure to communicate this information about the application for reissue of the patent until December 10, 1999. I therefore award costs on a solicitor-client scale to the plaintiff with respect to the counterclaim of the defendant. However, I am not prepared to award the plaintiff solicitor-client costs with respect to their own action. This action was based not only on seeking a declaration of invalidity of the original patent, but it was also based on the plaintiff’s own view that it owned the patent as a result of a 1992 agreement and the breach of that agreement by use of confidential information. The plaintiff did not abandon its position with respect to confidential information until September 24, 1998, nor did it abandon its claims to seek a declaration that all claims under the original patent were invalid until the present time. The plaintiff took no steps other than asking from time to time as to whether an application had been made for reissue of the patent. No motions were brought to force disclosure. Accordingly, I award the defendant costs with respect to all matters related to the breach of the 1992 agreement for the period from the commencement of the action until September 24, 1998. I award no costs with respect to the balance of the plaintiff’s action. If the amount of costs awarded to the plaintiff with respect to the counterclaim exceeds the amount of costs awarded to the defendant on the part of the action that I granted costs to the defendant, the plaintiff shall be entitled to the payout of the amount of $5,000 with any applicable interest to the extent that this amount is owing.