Whirlpool and Free World Trust - Claim Construction and the Test for Patent Infringement

For the first time in almost 20 years, the Supreme Court of Canada heard and decided on patent claim construction and infringement. The two decisions in Whirlpool² and Free World Trust³ were released on December 15, 2000. The Court’s reasons clarify a number of issues relating to claim construction and infringement, and it is expected that these two decisions will quickly become the most cited patent cases in Canada.

In the Whirlpool case, the Supreme Court dealt with claim construction, and in Free World Trust, the Court laid down the test for determining infringement. As well, the Court further expanded on claim construction.

What follows is a summary of these two decisions and how they can be applied in the future. The cases not only have implication in patent litigation, but also affect how patent applications ought to be drafted and prosecuted.

1. Claim Construction - The Whirlpool Case

In Whirlpool, the Plaintiff asserted two patents relating to agitators for automatic washing machines. The first patent (the ‘803 Patent) claimed a “dual action” agitator with “outwardly extending substantially vertically oriented vanes”. The second patent (the ‘734 Patent) also claimed a dual action agitator, but with the vanes specified to be flexible.

Mr. Justice Binnie, who wrote the reasons on behalf of the Court, describes the inventions as:

“an advance in clothes washing technology which the trial judge described as "entirely new". The nub of the improvement was to replace the traditional one-piece "agitator" in the wash tub with a two-piece agitator consisting of a lower oscillating spindle with a rotating "auger" attached to the top. By all accounts the two-piece "dual action" agitator produced a more effective wash ("uniform scrubbing").” ⁴

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A figure from each of the patents illustrates the agitators:

A dual action agitator increases the toroidal movement of the clothes in the wash tub (indicated by the arrows in Fig. 2). This increased toroidal movement results in a better cleaning of the clothes.

The issue before the Supreme Court was whether the claims of the first patent also covered flexible vanes; if so, then the second patent would be invalid under the doctrine of double patenting. The lower courts had held that the claims of the first patent were restricted to rigid vanes only, and that the use of flexible vanes on a dual action agitator was inventive. Hence, the second patent was found valid and infringed. The Supreme Court agreed.

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Binnie J. reviewed the principles of claim construction, and accepted as law in Canada, the decision of the British House of Lords in Catnic⁵. He held that the claims of a patent must be given a “purposive construction”, rather than a literal or acontextual interpretation. Throughout his reasons, Binnie J. set out a number of principles that are to be used in construing patent claims:

1. The Patent Act requires that the claims of a patent must state distinctly and in explicit terms the things or combinations that the applicant regards as new and in which he claimed an exclusive property or privilege. The Court re-affirmed the usual rule that what is not claimed is considered disclaimed.⁶

2. The first step in any patent suit is to construe the claims. Claim construction is antecedent to a consideration of both the validity and infringement issues.⁷

3. The scope of the monopoly granted by a patent is a function of the written claims. However, there must be flexibility and fairness, and this is achieved by differentiating the essential features (“the pith and marrow”) from the unessential features of the claims. This is done based on a knowledgeable reading of the whole specification through the eyes of the skilled addressee rather than on the basis of “the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge”.⁸

4. A patent cannot be construed with an eye on the allegedly infringing device; claim construction cannot be allowed to become the result-oriented interpretation of the claim.⁹

5. It is a fundamental rule of claim construction that the claims receive one and the same interpretation for all purposes (validity and infringement).¹⁰

6. The key to purposive construction is the identification by the court, with the assistance of the skilled reader, of the particular words or phrases in the claims that describe what the inventor considered to be the “essential” elements of the invention.¹¹

7. A patent must be read with a mind willing to understand, not by a mind desirous of misunderstanding. This requires that the court pay close attention to the purpose and intent of the inventor, as expressed in the patent itself.¹²

8. A patent must be given an interpretation that “best ensures the attainment of its objects”. The intention of the inventor is to be found in the words and drawings of the patent specification only.¹³

9. The words of the claims must be interpreted in the context of the specification as a whole, and must be given a “purposive construction”. The court “must look to the whole of the disclosure and the claims to ascertain the nature of the invention and methods of its performance”.¹⁴

10. When interpreting the claims, it is permissible for a court to look at the rest of the specification, including the drawings, to understand what is meant by a word or phrase used in the claims. However, the court cannot enlarge or contract the scope of the claim as written and understood by a person skilled in the art.¹⁵

11. Where one claim differs from another in only a single feature, it is difficult to argue that the differing feature is not essential to that claim.¹⁶

12. The claims of a patent must be construed on the date of publication of the patent. Under the old Patent Act, this was on the date the patent issued, whereas under the new Patent Act, it is the date of publication of the application.

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In the case of the patents in suit in the Whirlpool case, the Supreme Court held that the first patent must be read as limited to a dual action agitator with rigid vanes only. The phrase “outwardly extending substantially vertically oriented vanes” did not encompass flexible vanes. Therefore, the use of flexible vanes on such an agitator was considered inventive; hence there was no double patenting.¹⁷

Binnie J. agreed with the findings of the trial judge that the claims, when read with the knowledge and insight into the technical terms provided by the rest of the specification and by Mr. Mellinger's concession¹⁸ (Camco’s expert), should be construed so that rigid vanes were essential to the '803 invention as claimed. The ‘803 patent did not show nor disclose flexible vanes, but the figures, and Figure 2 in particular, disclosed rigid vanes. On this basis, the term “outwardly extending substantially vertically oriented vanes” includes within its scope rigid vanes only.¹⁹

What is "Purposive Construction"?

In Whirlpool, Binnie J. said that an issued patent is an enactment falling within the definition of a “regulation” in subsection 2(1) of the Interpretation Act. A patent must, consequently, be interpreted according to section 12 of the Interpretation Act, which provides:

“Every enactment is deemed remedial, and shall be given such fair, large and liberal construction and interpretation as best ensures the attainment of its objects.”

Binnie J. placed emphasis on the phrase “as best ensures the attainment of its objects.”

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The words of a patent claim must be put in the context in which they are used, and the purpose of the invention is an important element of the context.²⁰ The Supreme Court’s decision in Rizzo & Rizzo Shoes Ltd. (Re)²¹ was cited as authority for interpreting statutes purposively. In Rizzo, the Court had said:

“Elmer Driedger in Construction of Statutes (2nd ed. 1983) best encapsulates the approach upon which I prefer to rely. He recognizes that statutory interpretation cannot be founded on the wording of the legislation alone. At p. 87 he states:
Today there is only one principle or approach, namely, the words of an Act are to be read in their entire context and in their grammatical and ordinary sense harmoniously with the scheme of the Act, the object of the Act, and the intention of Parliament.”²²

The Supreme Court recently interpreted an article of the Civil Code of Quebec in the same way:

“Article 2930 C.C.Q. must be interpreted broadly so that its purpose can be achieved; the legislature's intention when it enacted the article was clearly to put an end to the injustices that resulted from the notice requirement in s. 585 C.T.A.”²³

The clear decision by Binnie J. that patent claims are to be given a purposive construction, and his reference to the interpretative principles of section 12 of the Interpretation Act, has overruled the law set out in Beecham v. Procter & Gamble.²⁴ In Beecham the Court of Appeal had held that

“in construing the claims in a patent recourse to the remainder of the specification is (a) permissible only to assist in understanding terms used in the claims; (b) unnecessary where the words of the claim are plain and unambiguous; and (c) improper to vary the scope or ambit of the claims.”

With purposive construction, the court must always look to the disclosure, and must interpret the claims in a way that “best ensures the attainment of its objects”. The intention of the inventor is to be found in the words and drawings of the patent specification as whole.

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2. The Test for Patent Infringement – The Free World Trust Case

In the Free World Trust case, two patents were in issue. The inventions were described by Binnie J. (who again wrote the reasons for the Court) as follows:

“The patents relate to an apparatus that bombards different parts of the human body with low frequency electro-magnetic waves. Electro-magnetotherapy is not new, but the appellant persuaded the Commissioner of Patents that it had discovered a new method of controlling the amplitude and frequency of the electromagnetic waves by "circuit means" with desirable and beneficial effects.”²⁵

Fig, 1 of one of the patents in suit illustrates the technology:

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Binnie J. described the differences between the parties’ devices in these terms:

“The respondents' apparatus (which it called "Électro-Santé") achieved similar therapeutic purposes, but employed somewhat different technology. The present controversy revolves around these differences, and whether they are sufficiently substantial to put the respondents outside the appellant's monopoly. Of particular importance is the fact that the appellant's patents teach the use of "control circuits" to regulate the magnetic field of waves or pulses whose frequency, orientation and amplitude are critical to therapy. Its Rhumart apparatus employed such "control circuits". The respondents' Électro-Santé machines, on the other hand, used a "microcontroller".

At trial in the Quebec Superior Court, the patents were invalidated as being anticipated by a prior publication. The Quebec Court of Appeal reversed this finding of invalidity, but held the claims were not infringed because there were sufficient differences to distinguish the Defendants’ device.

The issue in the Free World Trust case was the test for infringement. Binnie J. held that the test turns on determining what are the essential and non-essential elements of the patent claims. In formulating the test, he was particularly concerned with achieving fairness to the inventor and to the public. At the very beginning of his reasons, Binnie J. acknowledged the importance of expressing a test that achieves this balance:

“The appeal thus raises important questions about the scope and ambit of a patent owner's monopoly. Too much elasticity in the interpretation of the scope of the claims creates uncertainty and stifles competition. Too little protection robs inventors of the benefit they were promised in exchange for making a full and complete disclosure of the fruits of their ingenuity.”²⁶

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Binnie J. expanded on this later in the reasons when he began formulating the test:

“It is obviously an important public policy to control the scope of "substantive infringement". A purely literal application of the text of the claims would allow a person skilled in the art to make minor and inconsequential variations in the device and thereby to appropriate the substance of the invention with a copycat device while staying just outside the monopoly. A broader interpretation, on the other hand, risks conferring on the patentee the benefit of inventions that he had not in fact made but which could be deemed with hindsight to be "equivalent" to what in fact was invented. This would be unfair to the public and unfair to competitors. It is important that the patent system be fair as well as predictable in its operation.”²⁷

He then provided the following “propositions” relating to the infringement test:

“(a) The Patent Act promotes adherence to the language of the claims.

(b) Adherence to the language of the claims in turn promotes both fairness and predictability.

(c) The claim language must, however, be read in an informed and purposive way.

(d) The language of the claims thus construed defines the monopoly. There is no recourse to such vague notions as the "spirit of the invention" to expand it further.

(e) The claims language will, on a purposive construction, show that some elements of the claimed invention are essential while others are non-essential. The identification of elements as essential or non-essential is made:

(i) on the basis of the common knowledge of the worker skilled in the art to which the patent relates;

(ii) as of the date the patent is published;

(iii) having regard to whether or not it was obvious to the skilled reader at the time the patent was published that a variant of a particular element would not make a difference to the way in which the invention works; or

(iv) according to the intent of the inventor, expressed or inferred from the claims, that a particular element is essential irrespective of its practical effect;

(v) without, however, resort to extrinsic evidence of the inventor's intention.

(f) There is no infringement if an essential element is different or omitted. There may still be infringement, however, if non-essential elements are substituted or omitted.”²⁸

The first, and overriding, proposition in the infringement analysis is the “adherence to the claims language”, or described later in the reasons as “primacy of the language of the claims”.²⁹ With this proposition, Binnie J. has done away with any law that suggested there could be infringement of the “substance” of the invention, even if it was outside the boundaries of the claims³⁰. The claims language alone, given a purposive construction, governs whether there is infringement.

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Summary Of The Infringement Test:

The test in Free World Trust requires a determination of which elements of the claim are essential and which are not. This is a matter of claim construction for the court. There will be infringement if the defendant’s device includes all the essential elements of the claim, even though one or more non-essential elements are omitted or substituted. There will not be infringement, however, if an essential element is omitted or substituted.

How is the court to determine whether elements are essential or not? Although Binnie J. does not provide a succinct summary of the test, I have attempted to do so. With the “primacy of the language of the claims” as the overriding principle, the test to determine if an element is essential or not requires answering two questions, although not necessarily in this order:

Q1. Is it the intention of the inventor as expressed or implied in the claims language that the element be essential? If yes, then the element is essential.³¹

Q2. If no, then:

a) Has the patentee shown on a purposive construction of the words of the claim that the element was clearly not intended to be essential? or

b) Would the skilled worker have appreciated that the element could be substituted without affecting the working of the invention?³²

If yes to either (a) or (b), then the element is not essential. If no to (a) and (b), then the element is essential.

Paragraph 57 of the Judgment puts the onus on the patentee to show that question 2(b) should be answered in the affirmative. If the patentee cannot discharge that onus, the element is considered essential, "unless the context of the claims language otherwise dictates". In other words, if the claims language does not "dictate" or "clearly" show that the element is non-essential, then the court should consider part (b) of question 2. But there is no need to get to question 2(b) if the claims language expresses or infers that the element is essential (question 1) or if the claim language makes it clear the element is non-essential (question 2(a)).

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As mentioned, these two questions do not necessarily have to be asked and answered in the order presented above. Indeed, Binnie J. in his reasons discussed question 2 before discussing question 1. If the order of the questions is inverted, they become:

Q1.
a) Has the patentee shown on a purposive construction of the words of the claim that the element was clearly not intended to be essential? or

b) Would the skilled worker have appreciated that the element could be substituted without affecting the working of the invention?

If no to (a) and (b), then the element is essential. If yes to either (a) or (b), then the element is not essential, unless the answer to Q2 is yes.

Q2. Is it the intention of the inventor as expressed or implied in the claims language that the element be essential?

If yes, then the element is essential.

Another way to express the test is to use the following logic statements:

1. The element is essential if:
   1. the claims language expressly or impliedly says it is essential, or

   2. it is not clear from the claims language that the element is not essential and the skilled reader did not appreciate substitutability.

2. The element is non-essential if:
   1. the claims language clearly shows it is non-essential, or

   2. the claims language does not expressly or impliedly show that the element is essential and the skilled reader appreciated substitutability.

Whichever way the test is formulated, the primacy of the claims language is always the starting point. It will be difficult to show that an element of the claim is not essential considering the particular wording used by Binnie J. An element is essential if it is “expressed or inferred” from the claims language that the inventor intended it to be essential. Thus, it is sufficient for the claims to imply that the element is essential. In contrast, for an element to be non-essential, the claims language must show that it was “clearly” not intended to be essential; in other words, the claims language must “otherwise dictate”, unless the patentee proves that it would have been obvious to the skilled reader that the element could be substituted.

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Examples of Essential and Non-Essential Elements:

Here are some examples of how the test in Free World Trust is applied:

• Where the claim language, interpreted purposively, makes it clear the element is essential, then it is.

• Where the claim language, interpreted purposively, makes it clear the element is not essential, then it is not.

• Where the skilled reader’s understanding of the essentiality of the element is the same as the claims language, a determination of what is essential or non-essential is relatively clear. Where the experience of a person skilled in the art fits with the expressed intention of the inventor, the essentiality of a recited element will be apparent.

• If it is unclear from the claims language whether the inventor intended the element to be essential or not, then the skilled reader’s understanding is assessed. If the patentee proves that the substitutability of the element was obvious to the skilled reader, the element is not essential. If on the other hand the patentee cannot show that the skilled reader would not have known to substitute, the element is essential.

In his reasons, Binnie J. provides a few examples of essential and non-essential elements. He agrees with the decision in O’Hara³³ that "exhaust inlet flexibly biased” requires that the inlet be flexible. A device with a fixed exhaust did not infringe this claim.

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Binnie J. also used the patent in suit in Free World Trust as a further example of a claim expressly making an element essential:

“Claim 1 of the '156 patent stipulates the ‘said magnetization coil being stationary’ during treatment. Whether the magnetization coil is stationary may or may not affect the way the device works, but the inventor has explicitly so stipulated.”³⁴

Also at issue in the Free World Trust case was whether the “circuit means” recited in the claims was essential. Binnie J. held this was an essential element because the Appellant:

“failed to establish that a skilled reader would have understood in 1981 and 1983, when these patents were published, that (i) the inventions as contemplated were intended to include departures (or variants) from the specified circuit technology, (ii) that it would have been obvious to such a skilled reader that substituting variants for the specified "circuit means" would perform substantially the same function in substantially the same way to produce substantially the same result, and (iii) that when the inventor specified "circuit means" he didn't really mean the description to be taken literally. Had the appellant been able to establish these points, its patents would probably have been declared invalid for covetous claiming”.³⁵

Since the Respondent’s device did not use “circuit means” (it used a microprocessor instead), there was no infringement.

As an example of a non-essential element, Binnie J. agreed with Lord Diplock’s decision in Catnic. In that case, the claim recited a lintel with "a second rigid support member extending vertically from or from near the rear edge of the first horizontal plate". Lord Diplock held that “vertically”, on a purposive construction, was not an essential element of the invention claimed, but rather the claim was to be interpreted to extend to something close to “extending vertically”. The purpose of that invention would be achieved even if the member was not perfectly vertical.

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Other Propositions Set Out in Free World Trust:

Throughout the reasons in Free World Trust, Binnie J. stated a number of propositions relating to claim construction and infringement. They include the following:

1. Patent claims are frequently analogized to “fences” and “boundaries”, giving the field of the monopoly a comfortable pretence of bright line demarcation. In reality, the fences often consist of complex layers of definitions of different elements of deferring complexity, substitutability, and ingenuity. A matrix of descriptive words and phrases defines the monopoly, warns the public and ensnares the infringer.³⁶

2. It is important that the patent system be fair, as well as predictable in its operation. A purely literal application of the text of the claims would allow a person skilled in the art to make minor and inconsequential variations in the device, and thereby to appropriate the substance of the invention with a copycat device while staying just outside of the monopoly. A broader interpretation of the claims, on the other hand, risks conferring on the patentee, the benefit of inventions that he had not in fact made, but which could be deemed with hindsight to be “equivalent” to what in fact was invented. This would be unfair to the public and unfair to competitors.³⁷

3. Predictability is achieved by tying the patentee to its claims; fairness is achieved by interpreting those claims in an informed and purposive way.³⁸

4. In some cases, the words and phrases used in a claim are essential to the working of the invention as claimed, and in other cases, they are not essential and variants can easily be used or substituted without making any material difference to the working of the invention. The interpretive task of the court in claims construction is to separate the one from the other to distinguish the essential from the inessential, and to give the field framed by the former, the legal protection to which the holder of a valid patent is entitled.³⁹

5. The Patent Act promotes adherence to the language of the claims.⁴⁰

6. Adherence to the language of the claims in turn promotes both fairness and predictability.⁴¹

7. Claim language must, however, be read in an informed and purposive way.⁴²

8. The language of the claims thus construed defines the monopoly. There is no recourse to such vague notions as the spirit of the invention to expand it further.⁴³

9. The claims language will, on a purposive construction show that some elements of the claimed invention are not essential while others are non-essential. The identification of elements as essential or non-essential is made:
   1. On the basis of the common knowledge of a worker skilled in the art to which the patent relates;

   2. As of the date the patent is published;

   3. Having regard to whether or not it was obvious to the skilled reader at the time the patent was published that a variant of a particular element would not make a difference to the way in which the invention works; or

   4. According to the intent of the of the inventor, expressed or inferred from the claims, that a particular element is essential irrespective of its practical effect;

   5. Without, however, resort to intrinsic evidence of the inventor’s intention.⁴⁴

10. There is no infringement if an essential element is different or omitted. There may still be infringement, however, if non-essential elements are substituted or omitted.⁴⁵

11. The court rejected the notion that there are two approaches to infringement, literal and substantive infringement. Rather, infringement is a “single cause of action” approach in that the claims are construed purposively, and then the court determines whether the Defendant’s activity takes all the essential elements of the claim.⁴⁶

12. Purposive construction does away with the first step of purely literal interpretation, but disciplines the scope of substantive claims construction in the interest of fairness to both the patentee and the public.⁴⁷

13. It is important that the words chosen by the inventor in the claims must be read in the sense the inventor is presumed to have intended, and in a way that is sympathetic to accomplishment of the inventor’s purpose, expressed or implicit in the text of the claims. However, if the inventor has misspoken or otherwise created an unnecessary “troublesome limitation” in the claims, it is a “self-inflicted wound”. The public is entitled to rely on the words used provided the words used are interpreted fairly and knowledgeably.⁴⁸

14. It would be unfair to allow a patent monopoly to be breached with impunity by a copycat device that simply switched bells and whistles, to escape the literal claims of a patent. Therefore, the court must identify the essential elements of the claim and the non-essential elements. To identify what is essential and what is non-essential, reference can be made to (a) what the reader of the patent understands from the words of the patent, to which the reader brings his or her knowledge as one skilled in the art, and (b) what the inventor clearly intended to be essential or non-essential is determined by the words in the text of the patent.⁴⁹

15. In terms of onus, the court made it clear that the onus is on the patentee to establish that it would have been obvious to a person skilled in the art that an element was non-essential and could be substituted at the date of publication of the patent. If the patentee cannot discharge that onus, then the element will be considered essential, unless the “claims language otherwise dictates”.⁵⁰

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3. Date of Construction

As mentioned above, the Supreme Court held that the relevant date for construing the patent claims is the date of publication of the specification.⁵¹ Under the old Patent Act (applications filed prior to October 1989), the specification was not published until the patent issued. Therefore, for old Act patents, the relevant date for construction is the issue date.

Under our new Patent Act, all applications filed after October 1989 are published eighteen months after the priority date. For new Act patents, the relevant date for construction is the publication date.

Therefore, when considering the issue of novelty or obviousness, two different dates are now relevant. When interpreting the claims of a patent, the relevant date is the date of publication, but when assessing novelty and obviousness the relevant date is the “claim date”. Claim date is defined in the Patent Act as either the filing date of the application in Canada, or the priority date if the priority application supports the subject matter of the claim. Thus, in proceedings to invalidate a patent, the parties will have to seriously consider introducing expert evidence regarding the state of the art as of the claim date and also expert evidence on the meaning of the claim language as of the publication date.

Another interesting effect of the Supreme Court’s decision on the relevant date for construction is that information that becomes public knowledge between the priority date and the publication date can, presumably, be used to interpret the claims. For example, under the old Patent Act, it was not uncommon for a patent to issue 5-10 years after its filing date. Thus, any information that became publicly available in those intervening years is now relevant to the issue of interpreting the claims of the patent.⁵²

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4. The Proxy for the Person Skilled in the Art

In the Whirlpool case, a colleague of one of the inventors testified at trial as to his knowledge of the state of the art. Binnie J. held that it was wrong to accept the evidence of this long time employee of the Plaintiff as a proxy for the ordinary person skilled in the art. The witness was too directly connected with the Plaintiff and he was burdened with “inside information” relating to the Plaintiff’s research activities.⁵³

On the issue of who is a person skilled in the art, Binnie J. accepted a statement Dickson J. in Consolboard⁵⁴ that “the persons to whom the specification is addressed are ‘ordinary workmen’, ordinarily skilled in the art to which the invention relates and possessing the ordinary amount of knowledge incidental to that particular trade. The true interpretation of the patent is to be arrived at by considering what a competent workman reading the specification at its date would have understood it to have disclosed and claimed. ‘Ordinariness’ will, of course, vary with the subject matter of the patent.”⁵⁵

5. File Wrapper

It was argued in the Free World Trust case by the intervener Procter & Gamble, that the court should have regard to the file wrapper to determine the inventor’s intention in the infringement test. The Supreme Court decided that the inventor’s intention as to whether an element is essential or non-essential is to be deciphered from a reading of the patent specification only. References to the inventor’s intention in the infringement test are to an objective manifestation of the intent in the patent claims, as interpreted by a person skilled in the art, and do no contemplate extrinsic evidence such as statements or admissions made in the course of patent prosecution. Binnie J. wrote that to allow such extrinsic evidence for the purpose of defining the monopoly would undermine the public notice function of the claims and increase uncertainty. Thus, the emphasis on purposive construction of the claims keeps the focus on the language of the claims only, interpreted in light of the patent specification, but does not include file wrapper estoppel.⁵⁶

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¹ My sincere thanks go to my partners Ron Dimock and Bruce Stratton for their patience and time in discussing these two cases with me, and to Ron for commenting on a draft of this paper.

² Whirlpool v. Camco 2000 SCC 67. Whirlpool v. Maytag 2000 SCC 68 is a companion case released at the same time – the reasons refer to those in Whirlpool v. Camco.

³ Free World Trust v. Electro Sante, 2000 SCC 66

⁴ Whirlpool at para. 1.

⁵ Catnic Components Ltd. v. Hill & Smith Ltd., [1982] R.P.C. 183

⁶ Whirlpool at para. 42

⁷ Whirlpool at para. 43

⁸ Whirlpool at para. 48, quoting from Catnic at p. 243

⁹ Whirlpool at para. 49(a)

¹⁰ Whirlpool at para. 49(b)

¹¹ Whirlpool at para. 45

¹² Whirlpool at para. 49(c), quoting from Lister v. Norton Brothers and Co. (1886), 3 R.P.C. 199 at p. 203

¹³ Whirlpool at para. 49(e)

¹⁴ Whirlpool at para. 49(f) and (g), quoting from Noranda Mines Limited v. Minerals Separation North American Corporation, [1950] S.C.R. 36

¹⁵ Whirlpool at para. 52

¹⁶ Whirlpool at para. 79

¹⁷ Whirlpool at para. 54-56

¹⁸ The concession was that the only vanes disclosed in the first patent were rigid vanes (Whirlpool at para. 58).

¹⁹ Whirlpool at para. 62

²⁰ Whirlpool at para. 49(e)

²¹ [1998] 1 S.C.R. 27

²² Rizzo at para 21.

²³ Doré v. Verdun (City) [1997] 2 S.C.R. 862 at para 39. See also R. v. Pare [1987] 2 S.C.R. 618 at 626

²⁴ 61 CPR (2d) 1 at 11 (FCA).

²⁵ Whirlpool at para. 4

²⁶ Free World Trust at para 3.

²⁷ Free World Trust at para 29.

²⁸ Free World Trust at para 31.

²⁹ Free World Trust at paras 39 and 40.

³⁰ For example, McPhar Engineering v. Sharpe Instruments (1960), 35 CPR 105, and cases that have followed it.

³¹ Question 1 is set out in paras. 31 and 58-61.

³² Questions 2(a) and (b) come from paras 55 and 57.

³³ O'Hara Manufacturing Ltd. v. Eli Lilly & Co. (1989), 26 C.P.R. (3d) 1

³⁴ Free World Trust at para 60.

³⁵ Free World Trust at para 72

³⁶ Free World Trust at paras 14 and 15.

³⁷ Free World Trust at para 29.

³⁸ Free World Trust at para 43.

³⁹ Free World Trust at para 15.

⁴⁰ Free World Trust at para 31(a).

⁴¹ Free World Trust at para 31(b).

⁴² Free World Trust at para 31(c).

⁴³ Free World Trust at para 31(d).

⁴⁴ Free World Trust at para 31(e).

⁴⁵ Free World Trust at para 31(f).

⁴⁶ Free World Trust at para 50.

⁴⁷ Free World Trust at para 50.

⁴⁸ Free World Trust at para 51.

⁴⁹ Free World Trust at para 55.

⁵⁰ Free World Trust at para 57.

⁵¹ Free World Trust at paras 31(e) and 52-54.

⁵² In the Whirlpool case, the respondents brought a motion for a rehearing arguing that the fact Whirlpool had its dual action agitator with flexible vanes on the market for 4 years prior to the patent issuing meant that a person skilled in the art would know that flexible vanes could be used on such an agitator. Therefore, the word “vanes” in the patent claims should be construed to include flexible vanes. On February 22, 2001, the Court dismissed the motion for a rehearing.

⁵³ Whirlpool at para 70.

⁵⁴ Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd., [1981] 1 S.C.R. 504

⁵⁵ Whirlpool at para 70 and 71.

⁵⁶ Free World Trust at paras. 62-66.

Whirlpool and Free World Trust: Claim Construction - The Whirlpool Case The Test for Patent Infringement - The Free World Trust Case Date of Construction The Proxy for the Person Skilled in the Art File Wrapper

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