Société des Usines Chimiques Rhone-Poulenc et al. v. Jules R. Gilbert Limited et al.

Société des Usines Chimiques Rhone-Poulenc et al. v. Jules R. Gilbert Limited et al.

Claim 18 was invalid because it covered at least twelve distinct substances (alpha, beta, gamma isomers and four hydrohalide salts) while therapeutic utility was shown only for the alpha isomer and at least one salt was unsafe; therefore the claim was too broad in respect of utility and bad for want of subject‑matter, so there could be no infringement.

Citation
[1968] SCR 950
Parties
Appellant Patent Owner: Société des Usines Chimiques Rhone‑Poulenc; Appellant Exclusive Licensee: Ciba, S.A.; Respondents Alleged Infringers: Jules R. Gilbert Limited et al.
Court
Supreme Court of Canada
Jurisdiction
Canada
Judgment Date
24 June 1968
Procedural Posture
Patent Infringement (intellectual Property) / Appeal to the Supreme Court of Canada From the Exchequer Court of Canada; Determination of Validity of Claim 18 and Alleged Infringement
Outcome
Appeal dismissed; claim 18 declared invalid for lack of utility and want of subject‑matter
Legal Topics
Utility, Subject‑matter, Claim Construction, Chemical Process Patents, Infringement
Source Language
English
Intellectual Property Patent Law Utility Subject‑matter Claim Construction Chemical Process Patents Infringement

Case Brief

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Parties

Société des Usines Chimiques Rhone‑Poulenc

Appellant Patent Owner

Ciba, S.A.

Appellant Exclusive Licensee

Jules R. Gilbert Limited et al.

Respondents Alleged Infringers

Procedural Posture

Patent Infringement (intellectual Property) / Appeal to the Supreme Court of Canada From the Exchequer Court of Canada; Determination of Validity of Claim 18 and Alleged Infringement

Legal Issues

  1. 1 Whether claim 18 is invalid for being too broad in respect of utility
  2. 2 Whether claim 18 is bad for want of subject‑matter because it covers substances not shown to be useful
  3. 3 Whether, if valid, claim 18 was infringed by the respondents

Ratio Decidendi

Claim 18 was invalid because it covered at least twelve distinct substances (alpha, beta, gamma isomers and four hydrohalide salts) while therapeutic utility was shown only for the alpha isomer and at least one salt was unsafe; therefore the claim was too broad in respect of utility and bad for want of subject‑matter, so there could be no infringement.

Court Disposition

Appeal dismissed; claim 18 declared invalid for lack of utility and want of subject‑matter

Orders

  • Appeal dismissed with costs
  • Respondents' request that their costs include costs of preparing and printing appeal case No. 10393 refused