Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd.

Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd.

Appeal allowed: s.36(1) must be read as addressed to a person skilled in the art and does not require distinct recitation of utility or different disclosure standards within the section; the Federal Court of Appeal erred in holding the specifications invalid for lack of distinct utility; the trial judge's findings that specified claims were valid and infringed (claim 2 of 569,813 and claim 7 and claim 10 insofar as it includes 7 of 565,618) are upheld; earlier application 621,795 did not describe substantially the same invention; divisional filing did not invalidate patents; an accounting of profits was properly refused due to delay and trial judge's discretion.

Citation
[1981] 1 SCR 504
Parties
Appellant / Plaintiff: Consolboard Inc.; Respondent / Defendant: MacMillan Bloedel (Saskatchewan) Limited
Court
Supreme Court of Canada
Jurisdiction
Canada
Judgment Date
19 March 1981
Procedural Posture
Patent Infringement Appeal / Appeal to the Supreme Court of Canada From the Federal Court of Appeal
Outcome
Appeal allowed; judgment of the Federal Court of Appeal set aside; specified claims declared valid and infringed; matter remitted for assessment of damages; accounting of profits denied.
Legal Topics
Infringement, Validity, Specification Disclosure (s.36), Anticipation and Novelty, Double Patenting, Divisional Applications, Accounting of Profits, Damages
Source Language
English
Intellectual Property Patent Law Civil Procedure Infringement Validity Specification Disclosure (s.36) Anticipation and Novelty Double Patenting +3 more

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Legal principles 5 Authorities cited 22 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Parties

Consolboard Inc.

Appellant / Plaintiff

MacMillan Bloedel (Saskatchewan) Limited

Respondent / Defendant

Procedural Posture

Patent Infringement Appeal / Appeal to the Supreme Court of Canada From the Federal Court of Appeal

Legal Issues

  1. 1 Whether specification complied with s.36(1) of the Patent Act
  2. 2 Whether patents were anticipated or lacked inventive ingenuity over prior art (s.28)
  3. 3 Whether earlier co-pending application (No. 621,795) invalidates later patents under ss.28 and 63(1)(b)

Ratio Decidendi

Appeal allowed: s.36(1) must be read as addressed to a person skilled in the art and does not require distinct recitation of utility or different disclosure standards within the section; the Federal Court of Appeal erred in holding the specifications invalid for lack of distinct utility; the trial judge's findings that specified claims were valid and infringed (claim 2 of 569,813 and claim 7 and claim 10 insofar as it includes 7 of 565,618) are upheld; earlier application 621,795 did not describe substantially the same invention; divisional filing did not invalidate patents; an accounting of profits was properly refused due to delay and trial judge's discretion.

Court Disposition

Appeal allowed; judgment of the Federal Court of Appeal set aside; specified claims declared valid and infringed; matter remitted for assessment of damages; accounting of profits denied.

Orders

  • Set aside judgment of Federal Court of Appeal
  • Declare claim 2 of Canadian Letters Patent 569,813 valid and infringed