1164 R.C. de 1'É. COUR DE L'ÉCHIQUIER DU CANADA [1966] Ottawa 1965 BETWEEN : M 10-14, THE GENERAL TIRE & RUBBER COMPANY 17-21, 27-28, 31, PLAINTIFF; June 1-4, 8-11, AND June 16 DOMINION RUBBER COMPANY LIMITED and PHILLIPS PETROLEUM COMPANY DEFENDANTS. (by original action) AND BETWEEN : The said PHILLIPS PETROLEUM COMPANY PLAINTIFF ; AND The said THE GENERAL TIRE & RUBBER COMPANY and The said DOMINION RUBBER COM- PANY LIMITED DEFENDANTS. (by counterclaim) AND BETWEEN : PHILLIPS PETROLEUM 'COMPANY ... . PLAINTIFF; AND DOMINION RUBBER COMPANY LIMITED and THE 'GENERAL TIRE & RUBBER COMPANY DEFENDANTS. (by original action) AND BETWEEN : The said THE GENERAL TIRE & RUBBER COM- PANY PLAINTIFF ; AND The said PHILLIPS PETROLEUM COMPANY and The said DOMINION RUBBER COMPANY LIM- ITED DEFENDANTS. (by counterclaim) Patents—Infringement—Priority of invention—Validity determining meaning of claims—Construing the claims of a patent—Verification of plaintiff's product as embodying the claims of the patent—Prior art to be compared with claims of the patent not with plaintiff's prod-
Ex. C.R. EXCHEQUER COURT OF CANADA [1966] 1165 uct—Definition in claims of patent—Novelty—Anticipation—Obvious-1965 ness—Lack of invention—Prima facie validity of the patent does not GENERAL extend beyond application date—Burden of proving earlier date TIRE & of invention—Unpatentable claim—Allowance made pursuant to RUBBER Co. s. 45(7), s. 45(1)(a), 8. 45(3), s. 28(1)(a), Patent Act, R.S.C. 1952, V. c. 203, s. 45(8). DOMINION RUBBER Co. This is a conflict proceeding under subsection (8) of s. 45 of the Patent L. Act, R.S.C. 1952, c. 203, as amended, to determine the respective rights et al. of the parties on their applications for a patent or patents containing claims which are numbered in these actions as C-4, C-5 and C-6. The decision of the Commissioner of Patents in this matter was made on January 26, 1961, by which all of the subject conflict claims were awarded to Dominion. In all of the claims it is provided that cold rubber be prepared by emulsion polymerization, so that the polymerization be completed before the latex resulting be co-coagulated with the latex of oil softener. In other words, the alleged inventions in each of the claims call for the addition of the oil softener by a particular method, namely, by latex masterbatching. The issues to be determined in this action are, firstly: "What was invented?" and secondly "Who was first in respect of each of the claims C-4, C-5 and C-6?". The evidence showed that Dominion, through Howland the inventor, by the 12th of December 1947, had conceived and disclosed the idea of combining cold high Mooney rubber and oil by incorporating it through this method of co-coagulation; and that it would be obvious to Howland or to any other person skilled in the art that the scope of this invention would extend to any amount of oil loading by latex masterbatching to high Mooney rubber of anywhere from 75 to 200. The evidence also disclosed that so-called cold rubber became generally available in the period 1946 and 1947; and that every other element of claims C-4, C-5 and C-6 in 1947 were part of the prior art. Held: A. 1. That it is clear on the evidence that Dominion was first in respect of each of the claims C-4, C-5 and C-6; and therefore is entitled as against General and Phillips to the issue of a patent including claims C-5 and C-6. 2. That there is nothing inventive in the selection of the precise amounts of either oil or Mooney measurements. 3. That claim C-4 is not inventively distinguishable from claim C-5 therefore it contains "substantially the same invention" and is "so nearly identical" with claim C-5 within the meaning respectively of s. 45(1)(a) and s. 45(3) of the Patent Act, and therefore claim C-4 is unpatentable. 4. That the proposed substitute claim C-9 submitted by General in the preliminary proceedings to this trial is also unpatentable because it is not inventively distinguishable from claim C-5. B. That in respect to A-1178 the action of Phillips is therefore dismissed. C. That the counterclaim of Dominion is allowed. D. That the counterclaim of General is dismissed.
1166 R C. de l'É. COUR DE L'ÉCHIQUIER DU CANADA [ 19661 1965 ACTION for infringement of patent. GENERAL TIRE & Christopher Robinson, Q.C. and James D. Kokonis for RUBBER CO v , The General Tire & Rubber Company. DOMINION Co' RUBBER Gordon F. Henderson, Q.C. and David Watson for et al. Dominion Rubber Company Limited. Hon. C. H. Locke, Q.C. and Ross G. Gray, Q.C., for Phillips Petroleum Company. GIBSON J.:—This is a conflict proceeding under subsection (8) of section 45 of the Patent Act, R.S.C. 1952, chapter 203, as amended, to determine the respective rights of the parties on their applications for a patent or patents containing claims which are numbered in these actions C-4, C-5 and C-6. The General Tire & Rubber Company (hereinafter referred to as "General") is a corporation having its principal place of business in the City of Akron in the State of Ohio, one of the United States of America. Dominion Rubber Company Limited (hereinafter referred to as "Dominion") is a company incorporated under the laws of Canada having its head office in the City of Kitchener in the Province of Ontario. Phillips Petroleum Company (hereinafter referred to as "Phillips") is a corporation incorporated under the laws of the State of Delaware, one of the United States of America, having its principal office in the City of Bartlesville in the State of Oklahoma. General is the owner by assignment of an alleged invention made jointly by Emert S. Pfau, Gilbert H. Swart, and Kermit W. Weinstock which relates to the manufacture of pneumatic tires of the type suitable for use on various types of motor vehicles, airplanes and the like, particularly relating to pneumatic tires having extruded tread portions of an exceedingly tough synthetic rubber. Dominion is the owner by assignement of an alleged invention made by Louis H. Howland relating to improvements in the compounding of synthetic rubber. Phillips is the owner by assignment of an alleged invention made jointly by Walter A. Schulze and William B.
Ex. C.R. EXCHEQUER COURT OF CANADA [1966] 1167 Reynolds relating to elastomer compounding; relating in 1965 another of its more specific aspects to an improved method GENERAL for compounding synthetic elastomers for high raw Mooney Ru T BSER Co. polymers; and in another of its more specific aspects relat- DOMimoN ing to a method for producing an increased volume of RUBBER Co. vulcanizable elastomers; and in another of its more specific etn aspects relating to improved vulcanizable synthetic elas- Gibson J. tomers. The following is the relevant chronology in this case: 1. Date of Invention—Dominion, October 1947; Phillips, January 19, 1948; General, no earlier than April 1949. 2. United States Filing Dates Dominion—November 9, 1951; Phillips—April 6, 1951; Serial #255,747 Serial 1:219,766 General—November 20, 1950; Serial #196,584 3. Canadian Filing Dates Dominion—September 10, 1952; Serial #636,139 Phillips—February 5, 1952; Serial #626,519 General—February 14, 1951; Serial #611,684 There were entered as exhibits at the trial the relevant applications which were filed in Canada and in the United States and also the applications of each of the parties in the form or condition each was at the date of the conflict decision by the Commissioner of Patents, namely: 1. Canadian Applications as Filed: Exhibit G-31 Exhibit D-32 General—Serial #611,684 Dominion—Serial #636,139 Filed—February 14, 1951. Filed—September 10, 1952 Exhibit P-1 Phillips—Serial #626,519 Filed—February 5, 1952 2. United States Convention Applications: Exhibit G-32 Exhibit D-31 General—Serial #196,584 Dominion—Serial 1$255,747 Filed—November 20, 1950 Filed—November 9, 1951 Exhibit P-34 Phillips—Serial #219,766 Filed—April 6, 1951
1168 R.C. de 1'É.' COUR DE L'ÉCHIQUIER DU CANADA [19661 1965 3. Applications as of Date of Conflict Decision ~-r GENERAL Exhibit G-1 Exhibit G-2 TIRE & General—Serial #611,681 Dominion—Serial #636,139 RUBBER v. Co. Exhibit G-3 DOMINION Phillips—Serial #626,519 RUBBER Co. • The decision of the Commissioner of Patents in this et al. matter was made on January 26, 1961, by which all of the Gibson J. subject conflict claims were awarded to Dominion. On July 27, 1961, General instituted against Dominion the action in this Court which is numbered A-169. General did not join Phillips as a party. In March of 1963 Phillips' instituted its own action naming both General and Dominion as Defendants, which action in this Court is numbered A-1178. Subsequent proceedings were taken whereby Phillips was made a party Defendant in the first action and the plead-ings in each of the actions were amended so that in essence the same issues are raised in each and whereby it was ordered that these two actions be tried together. Both these actions, as a result, were tried together. In my view the course of action adopted here was legally incorrect. By reason of section 45(8) of the Patent Act, it was incumbent upon General to have joined all persons who were parties to the conflict proceedings in the Commissioner of Patent's office at the time the Commissioner made his allowance pursuant to the provisions of section 45, subsection (7) of the Patent Act. As a result, in my view the first action commenced by General numbered A-169 is a nullity. In the proceedings taken before this trial, General also sought to have certain substitute claims adjudicated upon at this trial, which substitute claims were not in the conflict proceedings before the Commissioner of Patents. The first of these two substitute claims numbered C-7 and C-8 were struck out of the pleadings of General on April 1, 1965; and on April 5, 1965 General sought to amend its counterclaim in action A-1178 by asserting substitute claim C-9 which the Court refused to permit. Appeals from the adjudication of this Court in respect to each of these matters taken by General to the Supreme Court of Canada were dismissed.
Ex. C.R. EXCHEQUER COURT OF CANADA [1966] 1169 The proposed substitute claim, C-9, differs from claim 1965 C-4, which is in issue in this trial, in two respects only GE R AL namely, in that the range of hydrocarbon softener is ex- TIRE & RUBBER Co. pressed as being from 20 to 50 parts instead of from 15 to v. 50 parts and the words "mineral oir are inserted to qualify RU B RI CO. the words "hydrocarbon softener" as they appear in claim LTD. et al. C-4. Gibson J. Claim C-4 and the proposed substitute claim C-9 are set out hereunder from which it will be clear wherein the difference between them lies: C4. The method of making a mass of polymeric material vulcanizable to a rubber-like state comprising forming an emulsion of monomeric material comprising at least one conjugated diolefin; polymerizing said monomeric material in said emulsion at a temperature below 15°C.; the resulting polymer having a raw Mooney value (ML-4) of at least 90; adding to a latex of said polymer a hydrocarbon softener as a dispersion in water, said softener being added in an amount of between 15 and 50 parts by weight per 100 parts by weight of rubber; and recovering resulting softened polymer C9. The method of making a mass of polymeric material vulcanizable to a rubber-like state comprising forming an emulsion of monomeric material comprismg at least one conjugated diolefin; polymerizing said monomeric material in said emulsion at a temperature below 15°C.; the resulting polymer having a raw Mooney value (ML-4) of at least 90; adding to a latex of said polymer a hydrocarbon mineral oil softener as a dispersion in water, said softener being added in an amount of between 20 and 50 parts by weight per 100 parts by weight of rubber; and recovering resulting softened polymer. Note: Changes from claim C4 underlined. Also set out hereunder are the other conflict claims C-5 and C-6. C5. The process of making a mixture comprising a synthetic rubber and a processing oil which comprises coagulating and drying the coagulum of an aqueous mixture containing dispersed particles of a rubber processing oil and a synthetic rubber latex which has been emulsion polymerized at a temperature between —40°F. and +60°F. and the rubber content of which has an ML-4 Mooney viscosity in the range of 75 to 200. C6. A mixture of a low temperature, viz , —40°F. to +60°F. aqueous emulsion polymerized synthetic rubber having an ML-4 Mooney viscosity in the range of 75 to 200, and a rubber processing oil, said processing oil having been co-coagulated with the synthetic rubber from a mixture comprising an aqueous dispersion of particles of the processing oil and synthetic rubber latex. As is apparent, claims C-4 and C-5 and the proposed substitute claim C-9 are method or process claims and claim C-6 is a composition of matter claim in respect to the process claim set out in claim C-5.
1170 R.C. de l'É. COUR DE L'ÉCHIQUIER DU CANADA [1966] 1965 Claims C-4, C-5 and C-6 may be conveniently broken GENERAL clown in their constituent parts in this way: TIRE & RUBBER Co. V. CLAIM 4 DOMINION RUBBER Co. METHOD CLAIM LTD. et al. —METHOD OF MAKING A MASS OF SOFTENED POLYMER CAPABLE OF VULCANIZATION Gibson J. CO-COAGULATION —POLYMERIZED MONOMENIC MATERIAL COMPRISING AT LEAST ONE CONJUGATED DIOLEFIN —COLD RUBBER —EMULSION POLYMERIZED —MOONEY AT LEAST 90 ML 4 —A HYDROCARBON SOFTENER AS A DISPERSION IN WATER — 15-50 PTS SOFTENER TO 100 PTS RUBBER CLAIM 5 PROCESS CLAIM —FOR MAKING A MIXTURE OF A SYNTHETIC RUBBER AND A PROCESSING OIL —CO-COAGULATION 1. RUBBER PROCESSING OIL IN THE FORM OF AQUEOUS DISPERSION 2. SYNTHETIC RUBBER LATEX A. COLD RUBBER B. EMULSION POLYMERIZATION C. MOONEY 75-200 DRY THE COAGULUM CLAIM 6 COMPOSITION OF MATTER CLAIM MIXTURE —SYNTHETIC RUBBER —COLD RUBBER —EMULSION POLYMERIZATION —MOONEY 75-200 — RUBBER PROCESSING OIL IN THE FORM OF AN AQUEOUS DISPERSION CO-COAGULATION In all these conflict claims the relevant synthetic rubber is what is known as cold rubber. This is a product that became generally available in the latter part of 1946 or early 1947. Prior to that, the synthetic rubber that was generally used, was what is known as GRS rubber by which is meant Government Rubber Styrene, a synthetic product produced by a hot process.
Ex. C.R. EXCHEQUER COURT OF CANADA [1966] 1171 In all the said conflict claims the cold rubber employed is 1965 the synthetic rubber produced as a result of an emulsion GENERAL polymerization carried out at a temperature of 41°F or RUBBERCo. below, having a Mooney viscosity of 75 to 200. v• DOMIN ION In all the said conflict claims also, an aqueous dispersion RUBBER Co. of oil is employed, and the oil is a rubber processing oil e a which is called, among other synonyms, a softener. Gibson J. In all the said conflict claims also it is provided that — there be two emulsions which are co-coagulated so that the oil is incorporated into the coagulum when the co-coagulation has been completed, so that in the result a unitary product is obtained, the oil remaining within the rubber, having been dispersed within it. In all of the said conflict claims also, after the co-coagulation, the final step provided for is to cause the co-coagulent to dry which is done by mechanical means in an oven at 180°F. In process claim C-5 and in the composition of matter claim C-6, there is no limitation as to the quantity of the processing oil or softener that may be used in terms of the amount of rubber, whereas in claim C-4 there is prescribed precise amounts of oil and precise Mooney measurements. However, the main distinction between claims C-4 and C-5 is the reference to the amounts of softener. In all the claims it is provided that the cold rubber be prepared by emulsion polymerization, and that the polymerization be completed before the latex resulting be co-coagulated with the latex of oil softener. In other words, the alleged inventions in each of the claims calls for the addition of the oil softener by a particular method namely, by latex masterbatching. This was a well known process at all material times as were the other three known methods of incorporating oil into synthetic rubbers namely, by milling incorporation, by Banbury incorporation, and by solution incorporation. It was well known and a practice followed at all material times also to incorporate oil softeners in the synthetic rubber GRS but such incorporation was done mainly by milling incorporation and by Banbury incorporation and not by latex emulsion or masterbatching since there were certain disabilities resulting from incorporation of the oil softener by the latter.
1172 R.C. de l'É. COUR DE L'ÉCHIQUIER DU CANADA [1966] 1965 The submission of Dominion is that claims C-5 and C-6 GENERAL are claims for a combination invention. It concedes that TIRE & RUBBER CO. such describe the application of a known method namely, V. latex masterbatching to a known material namely, cold DOMINION RUBBER~ CO. rubber. But it submits that this method had not been L T T ,,, D , . et al. previously applied to this known material, and it was not obvious to combine at any material time. Gibson J. The submission of both Phillips and General in essence is that the invention lies in the concept of incorporating large amounts of oil softener into cold high Mooney rubber, and that the method of incorporation namely, by way of latex masterbatching is not necessarily a part of the invention. The background of these alleged inventions which gives rise to these conflict claims may be briefly stated. In the period 1940 to 1941, as a result of the worldwide war activity, rubber raw material from its natural sources, for the United States and Canada became unavailable. To provide a substitute product for rubber became the concern of the governments of the United States and Canada. As a result, both governments embarked on a programme of experiment and investigation with a view to developing synthetic rubber for use in motor vehicle and other vehicle tires, among other things. In these reasons, only the programme in the United States is relevant. In the United States of America under the Reconstruction Finance Corporation, there was set up an agency known as the Rubber Reserve which carried on its activities until the end of 1954 or the beginning of 1955. Through this agency all of the major rubber companies by mutual agreement were detailed to carry out certain specified research and development programmes. These programmes were in many instances suggested by the individual rubber companies to Rubber Reserve, but once they were approved, then each of these programmes was financed and paid for by the United States Government through Rubber Reserve agency. In other words, every company which embarked on any of these programmes was reimbursed by Rubber Reserve through Reconstruction Finance Corporation for all its costs and expenses incurred in carrying out any approved project.
Ex. C.R. EXCHEQUER COURT OF CANADA [19667 1173 Phillips, General and U.S. Rubber Company (by 19 65 whom Howland the assignor to Dominion was employed) GENERAL engaged in this programme of research and development of Ru Co. synthetic rubber for tires. v. Donzixiox It is admitted by Phillips and Dominion that it was in RUBER Co. the course of carrying out this programme that the named eta . employees who are the respective alleged inventors of Gibson J. Phillips and Dominion made the inventions which are the — subject of the claims in this conflict action. In the case of General, however, it alleges that the named employees who had knowledge at the material times of what is alleged to have been invented, obtained such knowledge outside the work they were doing in the Rubber Reserve programme. General, however, does not allege that in law it is the inventor of the subject matter of claims C-4, C-5 or C-6. General submits that in respect of claims C-5 and C-6, that they are not patentable because of obviousness, and that in respect to C-4, it admits it is an invention namely, "a method as defined in the said claim in which the hy- drocarbon softener is a mineral oil and is added in various amounts between 15 and 50 parts by weight per 100 parts by weight of rubber, which was known by inventors named in General's said application" before such invention was invented by the inventors of Phillips, but that in respect to the claim in so far as it relates to the hydrocarbon softener being added in an amount of between 15 and 20 parts by weight per 100 parts by weight of rubber, General is not entitled to a patent containing claim C-4, because General's application did not disclose this narrow range of softener between 15 and 20 parts. Dominion submits that claims C-5 and C-6 are for a patentable process claim and composition of matter claim respectively as a combination invention. Phillips submits that claim C-4 is in respect to a patenta- ble process which is "substantially" different from claim C-5 within the meaning of section 45 (1) (a) of the Patent Act and also that claim C-4 is not "so nearly identical" to C-5 to be unpatentable within the meaning of section 45(3) of the Patent Act.
1174 R.C. de l'É. COUR DE L'ÉCHIQUIER DU CANADA [1966] 1965 The issues to be determined in this action are, firstly, GENERAL what was invented, and secondly, who was first in respect TIRE & RUBBER Co. of each of the claims C-4, C-5 and C-6. v. DOMINION Section 28(1) (a) of the Patent Act prescribes that the RULER Co. LTD. invention must not be known or used by any otherperson et al. before the alleged inventor invented it; and the jurispru- Gibson J. dence in respect to the issues herein prescribe that the inventor must describe his invention either orally or in writing, so as to afford the means of making that which was invented, but that he need not necessarily state at that material time all the examples within the scope of his invention or all the effects and advantages of his invention. The evidence discloses, as previously mentioned, that so-called cold rubber became generally available in the period 1946 and 1947. The evidence also discloses that every other element of claims C-4, C-5 and C-6 in 1947 were part of the prior art. The evidence as to what was done in 1947 by the parties is most conclusive. Phillips, in the period 13 October to 17 November, 1947, in Tire Test 123 which was the last practical tire test made prior to the alleged invention of Dominion, employed all the elements set out in all the conflict claims, and the specific amounts of the alleged important elements of conflict claim C-4 (namely, high Mooney cold rubber mixed with amounts of oil softener in excess of 15 parts per 100 parts of rubber) and incorporated the same in a Banbury, but not by latex masterbatching. It probably did this, it may be inferred from the evidence, because incorporating softener into GRS rubber up to that material time had proved to have disadvantages. It is therefore a reasonable inference from this evidence alone that those skilled in the art employed by Phillips, which personnel had very considerable capacity, did not consider it obvious to incorporate the oil into this new rubber namely, cold rubber, by way of latex masterbatching. Dominion's alleged inventor, Howland, however, at least as early as the 12th of December, 1947, had conceived and
Ex. C.R. EXCHEQUER COURT OF CANADA [1966] 1175 disclosed the idea of combining cold high Mooney rubber 1965 ~ and oil by incorporating it through this method of co-GENERAL Tin & coagulation. He did this and he prepared a report which RUBBER CO. was sent to Rubber Reserve and circulated it among the v. DOM1NION participants in the Rubber Reserve programme. This report RUBBER CO. LTD. was filed as Exhibit D-42 at the trial of this action. et al. It is true that this report only discloses one example of Gibson J. how this alleged combination patent was carried out namely, a single 600 gram batch employing 125 Mooney rubber and 7 parts of paraflux resulting in a compound Mooney of 160. But, in my opinion, it would be obvious to Howland or to any other person skilled in the art that the scope of this invention would extend to any amount of oil loading by latex masterbatching to high Mooney rubber of anywhere from 75 to 200. The example given produced the maximum advantages as the evidence discloses and it would be obvious to any person skilled in the art at that material time that the addition of more oil would cause all properties of this synthetic rubber to go down, and it would also be obvious to such persons that, because high Mooney cold rubber of 75 to 200 was employed, it could stand such diminution of properties and notwithstanding the resultant product would still be as good or better than the then available synthetic hot rubbers. In my opinion, the concept of using high amounts of softener and incorporating the same in high Mooney cold rubber, was not inventive. Instead, as stated, what was inventive was the idea at the material time to combine the softener with the high Mooney cold rubber in a particular way, namely, by latex masterbatching. In this, clearly on the evidence, Dominion, through Howland, was first. In my opinion, therefore, Dominion is entitled as against General and Phillips to the issue of a patent including claims C-5 and C-6. It was submitted that claim C-4 in any event was inven-tively distinguishable from claim C-5. 92720-15
1176 R.C. de l'É. COUR DE L'ÉCHIQUIER DU CANADA [1966] 1965 To find that this is so, it must be determined that the GENERAL reference to specific amounts of oil and precise Mooney Ru ss ER C o. measurements, but mainly the former, describes an inven- v. DOMINION tive step. RUBBE ID R Co. LI D. In m y opinion, there is nothing inventive in the selection et al. of these precise amounts of either oil or Mooney measure- Gibson J. ments. I am therefore of opinion that claim C-4 is not inventively distinguishable from claim C-5 and therefore it contains "substantially the same invention" and is "so nearly identical" with claim C-5 within the meaning respectively of section 45 (1) (a) and section 45 (3) of the Patent Act. Claim C-4 is unpatentable therefore, in my opinion. I am also of the opinion that the proposed substitute claim C-9 submitted by General in the preliminary proceedings to this trial is also unpatentable, because it also is not inventively distinguishable from claim C-5. In respect to A-1178, the action of Phillips is therefore dismissed and the counterclaim of Dominion, in so far as these reasons extend, is allowed, and the counterclaim of General is dismissed. Dominion, in respect to A-1178, is to have its costs against both Phillips and General. In respect to action A-169, General is to pay to both Phillips and Dominion all costs which were necessitated by reason of General having brought that action.
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.