Federal Court of Appeal upholds narrow claim construction but overturns decision re obviousness for combination patent
Bridgeview Manufacturing Inc. (Bridgeview) and Highline Manufacturing Ltd. (Highline) brought an action against Duratech Industries International, Inc. (Duratech) et al. for infringement of claims 1, 2 and 4 of Canadian Patent No. 2,282,334 (the 334 patent) relating to bale processors, machines designed to disintegrate or break up large bales of straw, hay or other crop material. Duratech denied infringement and counterclaimed alleging invalidity of the 334 patent. The judge dismissed Bridgeview’s claim and allowed Duratech’s counterclaim, finding that the 334 patent was invalid for obviousness. This was an appeal of that decision.
The invention disclosed in the 334 patent is embodied in a bale processor known as the “Bale King”, manufactured by Bridgeview, and a bale processor named “Bale Pro”, manufactured by Highline. Duratech manufactured and sold the “Balebuster 2650”, a bale processor inspired by the Bale King and with knowledge of the 334 patent. The alleged inventive step of the 334 patent is a “right hand discharge” that enables the operator of a tractor to more easily monitor and control jamming.
Claim 1 (the independent claim of the 334 patent), claimed, “A crop material processor for disintegrating baled crop material comprising”, among other things, a “manipulator” and “a discharge opening at the bottom of the right side wall to discharge material for the right side of the processor.” The trial judge accepted the evidence of Duratech’s expert that the use of the word “manipulator” referred only to a particular kind of manipulator with one roller on each side, as opposed to manipulators of every kind typical of bale processors of the time. In addition, the judge accepted a more literal view of the nature of the discharge opening. On appeal, Bridgeview relied on the Supreme Court’s decision in Whirlpool v. Camco Inc., asserting that while the disclosure portion of the patent specification could be used to understand the meaning of words in the claim, it could not be used as a basis for narrowing or enlarging the scope of the claims as written and thus understood – in this case narrowing the scope of claim 1. Justice Sharlow of the Federal Court of Appeal rejected Bridgeview’s argument, however, and upheld the “soundly reasoned” approach adopted in construing the claim. Although the accepted construction tended to make claim 5 redundant, “that by itself cannot overcome a purposive interpretation of the specification.” Given this finding, there was no basis upon which to intervene with the judge’s conclusion on infringement.
Bridgeview was more successful in contesting the findings with respect to obviousness. Bridgeview argued that, as a combination invention, it was not fair to break the combination down into its parts, and find that, because each part was well known, the combination was necessarily obvious. Justice Sharlow agreed, and stated, “The question the judge should have asked, but did not, is whether the common general knowledge that he identified would have led the skilled but uninventive person to come directly and without difficulty to the particular combination of elements of the invention disclosed in the 334 patent, as construed by the judge.” A review of the prior art showed that the trial judge erred in his conclusion on obviousness, and the appeal was therefore allowed in respect of validity of the 334 patent.