T-1542-83
Permacon Québec Inc. formerly known by the
corporate name of Le Bloc Vibre Québec Inc.
(Plaintiff)
v.
Les Entreprises Arsenault & Frères Inc. (Defend-
ant)
and
S. F. Vollverbundstein Kooperation GmbH (Mis -
en-cause)
INDEXED AS: PERMACON QUEBEC INC. v. ENTREPRISES
ARSENAULT & FRÈRES INC.
Trial Division, Dubé J.—Montréal, October 21;
Ottawa, November 12, 1987.
Patents — Infringement — Patent for earth retaining wall
of vertically stacked chevron shaped concrete blocks —
Defendant manufacturing and selling concrete blocks like
those described in patent and distributing pamphlet — No
infringement — Patent conferring monopoly as to retaining
wall, not on concrete blocks — Not "Jepson-type claim" —
No contributory inducement.
This is an application for the determination of a question of
law in a patent infringement action. The defendant manufac
tures and sells concrete blocks which have the same character
istics as the concrete block described in the plaintiffs patent.
The issue is whether plaintiffs patent confers a monopoly on a
retaining wall or on the blocks making up the wall.
The patent is entitled "Earth Retaining Wall of Vertically
Stacked Chevron Shaped Concrete Blocks". It was categorized
as "Water and Earth Controlled and Subsurface Construction"
and as "Retaining Walls", not as blocks. The plaintiff argued
that the patent was analogous to a "Jepson-type claim", an
American method of drafting patent claims which spells out in
the preamble the part of the combination that is old and adds
to that the part that is new.
The defendant had published and distributed a pamphlet.
There was a question as to whether this, together with the
manufacture and sale of the concrete blocks, constituted an
inducement to third parties to infringe plaintiffs patent.
Held, the two questions should be answered in the negative.
The patent and its claims confer a monopoly with respect to
the retaining wall, not as to the individual blocks that make it
up. A monopoly conferred by a patent is limited by the wording
of the claims. The claims clearly indicate that the invention of a
retaining wall is claimed for, and this wall consists of blocks
arranged in a particular way.
In Jepson-type claims, the words, "In a ..." are used at the
start of the preamble to indicate the known component and
"wherein the improvement comprises" precedes the invention.
The claims of the patent under consideration contain neither of
these expressions. The presence of the word "wherein", by itself
and set apart in the body of the patent claims, does not
establish in the context that the blocks are the subject of the
patent. There is no analogy to the Jepson-type drafting method.
In drafting a patent, accuracy is essential.
The defendant had not induced third parties to infringe the
rights conferred by the patent. A patent claim has been
infringed when it is proved that the defendant knowingly
induced or procured another to infringe a patented article. It
had not been established that the act of infringement was
influenced by the defendant to such an extent that, without
such an influence, the infringement would not have taken place,
or that such influence was exerted by the defendant with full
knowledge of the facts.
STATUTES AND REGULATIONS JUDICIALLY
CONSIDERED
Federal Court Rules, C.R.C., c. 663, R. 474.
CASES JUDICIALLY CONSIDERED
APPLIED:
Slater Steel Industries Ltd. et al. v. R. Payer Co. Ltd.
(1968), 55 C.P.R. 61; 38 Fox Pat. C. 139 (Ex. Ct.).
CONSIDERED:
Rucker Co. v. Gavel's Vulcanizing Ltd. (1985), 6
C.I.P.R. 137 (F.C.T.D.); Hatton v. Copeland-Chatterson
Co. (1906), 13 S.C.R. 651; affg. (1906), 10 Ex.C.R. 224.
REFERRED TO:
Barnett-McQueen Co. Ltd. v. Canadian Stewart Co. Ltd.
(1910), 13 Ex.C.R. 186; Electric & Musical Industries
Ld. and Boonton Research Corporation Ld. v. Lissen Ld.
and G. Kalis (trading as Andy's Radio Supplies) (Con-
solidated) (1938), 56 R.P.C. 23 (H.L.); Mailman v.
Gillette Safety Razor Co. of Canada Ltd., [1932] S.C.R.
724; Lynch and Henry Wilson & Co. Ld. v. John Phillips
& Co. (1909), 26 R.P.C. 389 (Scot. 1st Div.); Ex parte
Jepson, [1917] C.D. 62; Wells Mfg. Corp. v. Littelfuse,
Inc., 192 U.S.P.Q. 256 (7th Cir. 1976).
AUTHORS CITED
Lipscomb's Walker on Patents, vol. 3, Ernest Bainbridge
Lipscomb III, Rochester, N.Y.: The Lawyers Co-oper
ative Publishing Co., 1985.
Patent Office Guidelines for Drafting a Model Patent
Application, 1969.
COUNSEL:
Ronald Fecteau for plaintiff.
François M. Grenier and Maurice Archam-
bault for defendant.
SOLICITORS:
Monty, Coulombe, Sherbrooke, Quebec, for
plaintiff.
Léger, Robic & Richard, Montréal, for
defendant.
The following is the English version of the
reasons for order rendered by
DuBÉ J.: This application based on Federal
Court Rule 474 [Federal Court Rules, C.R.C., c.
663] is for a determination of a question of law
which may wholly or partly resolve the patent
action now before the Court. The joint submission
filed by the parties sets out the essential facts
admitted by them:
[TRANSLATION] (a) The defendant manufactures, offers for
sale and sells in Canada concrete blocks having the same
characteristics as the concrete block described in claims 1, 2
and 3 of Canadian Patent No 1,116,422;
(b) the defendant has published, distributed and caused to be
publicly circulated a pamphlet filed as Exhibit P-2 to the
examination of Mr. Arsenault, who is the president of the
defendant.
These two paragraphs are actually paragraphs
4(a) and (b) of the application at bar.
The question to be answered is in two parts:
1. If the defendant has committed only the acts described in
paragraph 4(a) of the motion pursuant to Rule 474 of the
Federal Court Rules, are those acts by themselves an infringe
ment of claims 1, 2 and 3 of patent P-1?
2. Is the fact that the defendant committed the acts described
in 4(a) and (b) of that motion an infringement of claims 1, 2
and 3 of patent P-1?
Essentially, the problem for solution is whether
the patent held by the plaintiff confers a monopoly
on a retaining wall or on the concrete blocks
making up the wall in question. This distinction is
important, since the defendant admits that it
manufactures and sells concrete blocks in Canada
as described in the claims of the patent, but it
alleges that its acts are not an infringement, as in
its submission the patent does not confer a
monopoly on the blocks, only on the wall.
My first task is therefore to determine exactly
what the monopoly conferred on the patent holder
is. To do this, I must interpret the patent as a
whole and analyse its claims.
The patent is titled "Earth Retaining Wall of
Vertically Stacked Chevron Shaped Concrete
Blocks" and was issued by the Commissioner of
Patents on January 19, 1982. It states on the face
of the patent that it falls in subcategory 61-51. At
the Patent Office, category 61 is defined as
"Water and Earth Controlled and Subsurface
Construction", and subcategory 51 is described as
"Retaining Walls". The Patent Office has not
classified this patent in any of the categories
reserved for blocks.
The first page of the patent must be reproduced
in its entirety:
1116422
A RETAINING WALL OF VERTICALLY STACKED CHEVRON
SHAPED CONCRETE BLOCKS
Abstract of the Disclosure
An earth retaining wall' formed by stacked, alternately
staggered rows of spaced, nesting, chevron-shaped concrete
blocks. Adjacent blocks in some rows are coupled together by
connecting tubes extending into holes through the blocks, and
elongated anchoring devices are connected to the tubes and
extend horizontally into the earth. Alternatively, the anchoring
devices may be concrete extensions integrally moulded with the
blocks.
Background of the Invention
The invention relates to a retaining wall for defining earth
banks, earth walls and other earth slopes, consisting of
individual moulded blocks of concrete or the like arranged in
rows or courses one above the other.
The retaining walls concerned here consist of moulded con
crete blocks which are to lie one upon the other predominantly
without mortar connection, that is loosely. The purpose of the
invention is to form moulded blocks suitable for this purpose so
that on the one hand they are easy to produce, namely with
substantially conventional concrete block machines and con
crete moulds of ordinary basic assembly, and on the other hand
render possible easy laying for the formation of retaining walls,
namely up to a certain height without anchorage of the
individual moulded blocks.
' My emphasis in all quotations.
It is also necessary to reproduce in full the
summary of the invention, taken from page 2 of
the patent:
Summary of the Invention
To solve this problem a retaining wall according to the
invention for the containment of sloping banks consists of
individually moulded generally chevron-shaped blocks of con
crete or the like arranged in courses one above the other,
wherein the upper sides of the moulded blocks are formed with
convex dihedral protrusions, and the undersides of the blocks
are formed with complementary concave dihedral recesses to
provide bearing surfaces receiving bearing surfaces formed by
the protrusions of blocks in a course beneath, the underside of
each block being narrower than the upper side of each block.
Such moulded blocks can be produced in a manner known in
principle very simply, namely with an upright position within a
concrete mould. Moreover, due to the configuration of the
moulded blocks an especially favourable mutual shape-engag
ing anchorage results. Because the lower side is narrower than
the upper side, it is possible, both on the free outer side and on
the side facing the earth, to provide steplike shoulders which
result in a favourable external appearance and good anchorage
with the earth.
In order that even very high retaining walls may be formed
along the lines of the invention, using the moulded blocks as
explained, a further proposal of the invention consists in that at
least some of the moulded blocks further include an anchoring
leg integrally formed with the remainder of the block, said leg
extending into and being embedded in the bank, and having a
thickening portion at its distal end.
Then follows the description of the nine draw
ings, followed by a description of the construction
method and four claims. It is to be noted that the
fourth claim relates to the way the wall is
anchored, and is not the subject of this application.
The first three claims read as follows:
1. A retaining wall for containment of sloping banks, consisting
of individually moulded generally chevron-shaped blocks of
concrete or the like arranged in courses one above the other,
wherein the upper sides of the moulded blocks are formed
with convex dihedral protrusions, and the undersides of the
blocks are formed with complementary concave dihedral
recesses to provide bearing surfaces receiving bearing sur
faces formed by the protrusions of blocks in a course
beneath, the underside of each block being narrower than
the upper side of each block.
2. A retaining wall according to Claim 1, wherein the bearing
surface on the upper side of each block is adjoined on the
outer side by a further reflexly angled surface forming a
step.
3. A retaining wall according to Claim 1 or 2, wherein the
inside and outside surfaces of each block are mutually
downwardly convergent.
The plaintiffs argument is, of course, that this
patent gives it a monopoly on the blocks making
up the wall. Though on reading the patent it seems
clear that the monopoly applies to the wall, coun
sel for the plaintiff cited a decision of this Court,
Rucker Co. v. Gavel's Vulcanizing Ltd., 2 which
deals with "Jepson type claims", as a basis for
arguing the contrary. He conceded that in the case
at bar there are no claims specifically of the
"Jepson" type. However, he sought to argue by
analogy, as he felt it was clear that the block has
to be placed in its setting, namely the wall, if it is
to be accurately defined.
Counsel for the plaintiff further argued that the
patent holder would be unduly penalized if the
infringement were limited to erection of the wall:
in drafting its claim, the patent holder sought to
clearly indicate the functions of the various sur
faces of the block, while defining and limiting its
use. He also submitted that if someone sells all the
components making up a claimed combination,
that person is committing an infringement of the
patent.
Further, he alleged that the defendant has by its
actions been guilty of contributory infringement,
in allowing the manufacture and sale of the blocks
to other parties who use them to manufacture a
retaining wall, which is also protected by the
patent monopoly.
In sum, he alleged that the claims of the patent
must be interpreted by the Court fairly, that is, by
trying to determine the invention and not to trap
the patent holder.
Unfortunately for him, I cannot accept his argu
ments. My interpretation of the patent and its
claims leads me unavoidably to the conclusion that
it confers a monopoly on the retaining wall, not on
the individual blocks that make it up. That is how
the patent reads. The wording would have to be
distorted to make it mean that the invention
applies to the blocks and not the wall; and the
Court must take the text as it stands, not attempt
to divine the intentions of the patent holder.
The decided cases have definitely established
that the monopoly conferred by a patent is limited
2 (1985), 6 C.I.P.R. 137 (F.C.T.D.).
by the wording of the claims, whether these limita
tions are made deliberately or not. 3 Reading the
claims clearly indicates that it is the invention of a
retaining wall which is claimed for, and this wall
consists of blocks arranged in a particular way. It
is not the Court's function to speculate on why an
exclusive right over the shape of the block was not
claimed for. In the necessarily narrow context of
the motion at bar under Rule 474, the Court is
limited to the admissions filed by consent, and it
cannot therefore conclude, at this stage, that the
defendant itself erected a retaining wall or that its
customers have themselves erected retaining walls
in accordance with the instructions contained in
the patent.
Counsel for the plaintiffs argument regarding
"Jepson claims" must now be given further con
sideration. He indicated that Jepson claims ordi
narily have a preamble, which starts as follows:
"In a ...", and indicates that there is a subcombi-
nation which is part of the total combination. In
Rucker, Walsh J. discussed a British case 4 which
he said recognized the existence of these words. On
the other hand, he relied on the words "...the
improvement comprising ..." (at page 166) for aid
in determining the invention protected by the
patent.
In reality, Jepson claims are not claims as such
but are a U.S. method of drafting patent claims.'
The purpose of this method has been stated as
follows in Walker on Patents: 6
[it] spells out in its preamble the part of the combination that is
old, and adds to that the part that is new.
3 Barnett-McQueen Co. Ltd. v. Canadian Stewart Co. Ltd.
(1910), 13 Ex.C.R. 186; Electric & Musical Industries Ld. and
Boonton Research Corporation Ld. v. Lissen Ld. and G. Kalis
(trading as Andy's Radio Supplies) (Consolidated) (1938), 56
R.P.C. 23 (H.L.); and Mailman v. Gillette Safety Razor Co. of
Canada Ltd., [1932] S.C.R. 724.
° Lynch and Henry Wilson & Co. Ld. v. John Phillips & Co.
(1909), 26 R.P.C. 389 (Scot. 1st Div.).
5 Ex parte Jepson, [ 1917] C.D. 62.
6 Lipscomb, Ernest Bainbridge III, Lipscomb's Walker on
Patents, vol. 3, 3rd ed., Rochester, N.Y.: The Lawyers Co-oper
ative Publishing Co., 1985, at p. 413.
Jepson claims are used in the United States in
cases of improvements to well-known structures or
methods. The preamble is therefore an essential
limitation, that is, to indicate that the invention
will be used only in this context.
The U.S. guidelines suggest a description of all
the components which are conventional or known,
followed by the words "wherein the improvement
comprises" to differentiate the invention from the
preceding components, which cannot be the sub
ject of the patent.'
It accordingly appears that the words "In a ..."
at the start of the preamble have been recognized
by the British courts as indicating the known
component preceding the invention protected by
the patent. Additionally, U.S courts recognize the
phrase "In a ..." and some such phrase as "where-
in the improvement comprises" as a means of
distinguishing the invention from the established
structure or method. Despite the fact that the U.S.
Patent and Trademark Office only requires use of
the latter phrase, it is to be noted that both phrases
are generally used together in the U.S.
The claims of the patent under consideration
contain neither of these two expressions. On the
contrary, the key paragraphs begin with the words
"A retaining wall ...", as I have myself underlined
throughout the patent. The presence of the word
"wherein", by itself and set apart in the body of
the patent claims, cannot be used to establish in
the context that the blocks are the subject of the
patent. That being so, there can be no analogy
with a drafting method none of the requirements
of which are present. In drafting a patent, accura
cy is essential.
Having taken this first step, I must now decide
whether the defendant induced the third parties to
infringe the rights conferred by the patent. This is
what the plaintiff claims.
Patent Office Guidelines for Drafting a Model Patent
Application, dated 1969. See also Wells Mfg. Corp. v. Littel-
fuse, Inc., 192 U.S.P.Q. 256 (7th Cir. 1976), at p. 257: "the
improvement comprising ..."
In a decision dating from 1906, Copeland-
Chatterson Co. v. Hatton et a1, 8 the Exchequer
Court of Canada held that the sale of an article
that could be used in combination with other
articles, to constitute a patent infringement, is not
in itself an infringement though the article sold in
this way cannot be used for any other purpose than
in the combination of the infringer. At page 242,
the Judge said:
It is clear, of course, that it is not an infringement of a patent
to sell an article which in itself does not infringe, although it
may be so used as to infringe such patent. Going a step further,
it is, I think, well settled in England that such a sale is not of
itself an infringement although the seller knows at the time of
the sale that such article is intended to be used by the purchas
er in the infringement of the patent.
This judgment was affirmed by the Supreme
Court of Canada. 9
In a more recent judgment, Slater Steel Indus
tries Ltd. et al. v. R. Payer Co. Ltd., 10 the Excheq
uer Court again considered the claims of the com
bination. Jackett P. described the combination, at
page 65 as follows:
All the claims relied on are claims for a combination
achieved, by winding certain helically shaped rods around a
stranded electric power transmission line at a point of stress so
as to result in the transmission line at that point being com
pletely enclosed in a protective covering consisting of such rods.
The rods in question are referred to as "preformed armour
rods".
He at once drew the conclusion in the next
paragraph that the patent conferred rights to the
combination, not to its component parts:
It is of prime importance, in order to appreciate the point
that has to be decided, to keep in mind that the monopoly
covered by the patents is for the combination so formed by
combining the rods with the transmission line, and that the
plaintiffs have no patent rights in respect of the preformed
armour rods as such.
After making an exhaustive review of the case
law on the point, the learned Judge posed three
questions, which I quote (at page 84):
(a) that any purchaser from the defendants used the armour
rods so purchased to infringe the plaintiffs patents,
8 (1906), 10 Ex.C.R. 224.
9 Hatton v. Copeland-Chatterson Co. (1906), 13 S.C.R. 651.
10 (1968), 55 C.P.R. 61; 38 Fox Pat. C. 139 (Ex. Ct.).
(b) if any such purchaser did so infringe, was it induced or
procured to do so by the defendants, and finally,
(c) if any such purchaser was so induced or procured by the
defendants, did the defendants do so "knowingly"?
Finally, the Judge concluded that the defend
ants had not been guilty of infringement. He
stated that infringement of a patent claim is estab
lished when it has been alleged and proven that the
defendant knowingly induced or procured another
to infringe a patented article.
In the limited context of this application, it was
not established that the act of infringement was
performed by a purchaser or that the act of
infringement was influenced by the defendant to
such an extent that, without such an influence, the
infringement would not have taken place, or that
such influence was exerted by the defendant with
full knowledge of the facts.
Accordingly, I must give a negative reply to the
two questions presented by this application. As the
said application was filed by consent with the
laudable aim of short-circuiting future proceed
ings, costs will be to follow.
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.