FC Judge Utilizes File Wrapper to Construe Claims

FC Judge Utilizes File Wrapper to Construe Claims

Distrimedic Inc v
Dispill Inc.
FC 1043


 The patent at issue is Canadian Patent No. 2,207,045. The
product is a kit for the manufacture of a set of individual pill containers. Distrimedic
Inc. originally filed a statement of claim seeking a declaration of non
infringement of the ‘045 Patent. The original statement of claim was withdrawn
but a counterclaim was filed with the statement of defence by Richards Inc. and
Dispill Inc. Richards and Dispill sought damages in relation to the
infringement of their patent.


Dispill assigned the ‘045 Patent to Richards Inc. in
2005. Shorlty after Richards Inc. sent Distrimedic Inc. a letter alleging
infringement of the ‘045 Patent and trade-mark rights. In response Distrimedic
Inc. commenced its action seeking a declaration of non-infringement. Prior to
entering a defence but post receipt of statement of claim Richards Inc. filed a
disclaimer with respect to a number of claims in its ‘045 Patent.

 Distrimedic Inc. discontinued its original action in 2010
and paid Richards Inc.’s costs.

 The ‘045 Patent

The ‘045 Patent issued originally with 28 claims with claims
1, 11, 15, 22, 26, and 28 being independent claims. The rest were dependent
claims. In the Richards Inc. disclaimer Claims 15 and 17 to 21 were amended and
Claim 16 was removed entirely.


The key element of the ‘045 Patent is found in Claim 1
(with dependent Claims 2 to 10) which states:

d) positioning means provided on at least the top surface of the
container-defining sheet and on the container-sealing sheet to ensure that, in
use, after the container-defining-sheet is fitted onto the recessed support,
the paper covering is peeled off from the bands of the container-sealing sheet
and said container-sealing sheet is positioned on top of the top surface of the
container-defining sheet, the bands covered with a self-adhesive material and
their tearing lines be in exact superposition on top of the flanges and the
dotted lines of the container-defining sheet,

 wherein the positioning means comprises at least one upwardly
projecting protuberance provided on the top surface of the recessed support, at
least one hole provided into the container-defining sheet and at least one
other hole provided in the container-sealing sheet, said at least one hole and
one other hole being sized and positioned to correspond to and be engaged by
said protuberance.


Claim 15 was amended to read(underlining reflects the
disclaimer amendments):[27]

d) positioning means provided on at least the top surface of the
container-defining sheet and on the container-sealing sheet to ensure that, in
use, after the container-defining sheet is fitted onto the recessed support,
the container-sealing sheet is properly positioned on top of the top surface of
the container-defining sheet, with its tearing lines in exact superposition on
top of the dotted lines of the container-defining sheet,


wherein the positioning means comprises at least one upwardly
projecting protuberance provided on the top surface of the recessed support and engaging means provided on the container-defining sheet
and other engaging means provided on the container-sealing sheet,
said engaging means and other engaging means being sized
and positioned to correspond to and be engaged by said protuberance.


Before filing a statement of defence but after receipt of
the statement of claim a request to expedite the disclaimer request was filed
pursuant to section 48 of the Patent Act.
The Commissioner of Patents initially refused the request however on appeal to
the Federal Court the Commissioner’s decision was set aside (Richards Packaging Inc. v Canada (Attorney
aff’d on appeal 2008 FCA 4 )[47].


Claim Construction

The Judge applied the principles of Free World Trust and Whirlpool
to aid in claim construction. The principles were condensed to mean

the ingenuity of a patent lies not in the identification of a desirable
result, but in teaching one particular means to achieve it.  The claims cannot be stretched to allow the
patentee to monopolize anything that achieves the desirable result.


The plaintiff bears the burden of establishing
substitutability (non-essential elements) and, absent such proof, all claimed
elements will be assumed to be essential.[201]


The Judge concludes that the position means provided on
the container sheet and on the container-sealing sheet are essential elements.
This conclusion was reached on the basis that the prior art failed to overcome
the difficulty and time involved in ensuring correct positioning of preprinted
sealing sheets. This problem purports to be overcome by aligning the two
components so that the containers may be separated.[202] Additionally the
positioning means are part of each independent claim.


The projecting protuberances and holes that facilitated
alignment were not initially identified as essential.[207] However once US
3,380,856 Patent (the ‘BRAVERMAN patent’) was brought to the attention of the
Patent Office the holes were added to overcome the rejection on the basis of
the Braverman patent.


A letter from Dispill’s counsel to the Commissioner of
Patents on May 8, 1998 modifying the patent to overcome the rejection formed
the basis of the Judge’s decision. The Judge states:

I am not convinced that the letter referred to by the Defendants to the
Counterclaim falls squarely within the compass of that exclusion.  While statements or admissions made in the
course of patent prosecution shall not be used for the purpose of interpreting
a claim, this is not what the Court is called upon to do in the case at
bar.  A change in the wording of a claim
as a result of an objection from the Patent Office is an objective fact from
which an inference may be drawn, and is not the same as representations made to
the Patent Office.  A purposive
construction should obviously focus on the wording of a claim, obviously, but
this is a far cry from saying that nothing else should be considered.


The Judge then goes on to reject Richard Inc.’s argument
that the term ‘hole’ appearing in the claims should not be read literally but
should be understood from a function point of view so as to include any shaped
hole to enable functional aligning of the container-sealing sheet.[211-212]. The
Judge rejected the notion that holes or a capable substitute would be
sufficient provided that they achieved the necessary alignment.


The Judge concludes that there are no subtleties or
ambiguities that require interpretation – the plain and ordinary meaning of the
words in the claims are sufficient.[215]



Infringement is not infringed merely because it functions
the same as the patented invention. The test is whether the product
incorporates all of the essential elements of the claim.[217] The Distrimedic
system does not contain holes which were held to be an essential element in
claim construction. Two side tabs which perform a similar function were not
sufficiently similar to satisfy the test for infringement.[224]



While patents are assumed to be valid under s. 43(2) of
the Patent Act, disclaimers do not receive
the same treatment.[233] Disclaimer’s must be made in good faith and the onus
is on the patentee to demonstrate that the disclaimer is to correct a specification
being too broad by mistake, accident or inadvertence.[234] The Judge
acknowledges that the new description was a better description of the
positioning means producing a better description was not sufficient to
constitute a mistake, accident or inadvertence for the purpose of establishing
a valid disclaimer.[235]


The Judge indicates that Claim 1 utilized identical
language to similar claims which were the subject of disclaimer. No suitable
explanation was provided to the Judge to explain why, if the language was a
genuine mistake, accident, or inadvertence, claims were selectively amended via


The disclaimer itself functions to broaden the scope of
the patent instead of narrowing it. The disclaimer modifies ‘at least one hole’
to ‘engaging means’. The Judge notes that while ‘a hole’ fits within the
category of engaging means, engaging means is not necessarily restricted to
being a hole.[238]


The Judge then declines to rule on the validity of the
disclaimer since it is the subject of an application for judicial review. He
does however rely on his conclusion to support the result – that the Defendants
to the Counterclaim have not infringed the ‘045 Patent.



The Judge sets out the test for anticipation and how,
where prior disclosure is alleged, the disclosure must also enable the person
of ordinary skill to practice the invention.[242] If an inventive step is
required at the stage where the person of ordinary skill would put the invention
into practice than the prior publication is not enabling.[244]


Obviousness requires that the person of ordinary skill,
knowing the state of the art and common general knowledge would have come
directly and without difficulty to the invention.[247]


The US Braverman Patent achieves alignment between the
container sheet and the sealing sheet utilizing pins along the base. The Judge
concludes, on the basis of expert reports, that the Braverman Patent and the
‘045 Patent do not function I nthe same way since the ‘045 Patent uses active
engagement of bot the sealing and container sheets.[255]


The invention described in the ‘045 Patent was therefore neither
obvious nor anticipated.[256] The Judge notes that this is consistent with his
finding that the disclaimer is invalid since ‘other engaging means’ may well
bring it within the scope of Braverman Patent.[257]



The Judge also dealt with Misrepresentation with respect
to statements made about the business, services and wares of Richards Inc. with
respect to the counterclaim. The Judge dismissed this allegation for want of


Passing Off (Trade-mark)

This claim dealt with the issue of the packaging and the
similarities that may result in appearance. The colour scheme was held to not
be a trade-mark.[281] As well the alleged mark is purely or primarily
functional and is inelligible.[288] The colour coding functions to aid
unskilled users with when to take medication and as such has a primarily
functional purpose.[291]


Even if it is accepted that it was a trade-mark paragraph
7(b) of the Trade-marks Act is not
engaged. There must exist proof of confusion. Here the defendants to the
counter claim handed out free samples of the product but never marketed the
product – this does not amount to use.[303]

It follows that the handing out of free samples of a product without
subsequent distribution of said product on the market does not amount to “use”
of the affixed mark as a trade-mark, and therefore does not trigger the
application of paragraph 7(b) of the Trade-marks Act.  This is precisely what the Defendants to the
Counterclaim allege was done in 2005 when they temporarily distributed the
Distrimedic original colour scheme.  The
evidence before this Court is that approximately 100,000 sheets with the same
colour scheme as the Dispill Colour Scheme were printed.



No evidence of actual confusion was presented.[307] It
was necessary for Richards Inc. to demonstrate that confusion was likely to
occur. No such demonstration was made.[310] Evidence was presented that
container sealing sheets are rarely, if ever, sold to patients. Often the
patients never see the colour arrangements. Finally pharmacists and other
health professionals are less likely to confuse products that they have a
professional duty to use carefully and as such the burden is significantly
higher that for mass consumption goods.[310]


Pharmacists do not switch brands of dispenser rapidly.
Evidence was presented that indicated changes were made cautiously over an
extended period. As such pharmacists are unlikely to confuse the two
brands.[311] The same was held to be true for nursing homes and their



The copyright issue deals with the label form of the pill
dispensers. Copyright protects the expression of an idea not the idea
itself.[316] Alignment of factual data in a non-original way is insufficient to
obtain copyright protection.[323] Where the form is restricted by utility or
legislative requirements it is not original for the purposes of copyright.[324]
The Judge concludes that there is insufficient originality based on
function/legislative requirements for copyright to attach.[325]


Allowing Richards Inc. to monopolize the business of
printing basic patient and prescription information on pill dispensers would be
anti-competitive and violate the spirit of copyright law.[327]


The Judge indicated that there was some confusion with
respect to whether a physical computer program was being claimed or whether the
layout, appearance or aesthetics of the program were being claimed. If the
program was claimed there was no copyright infringement demonstrated by the
evidence. Alternately if the layout was claimed there was no copyright since
the form was dictated by provincial legislation and that the selection of
information did not require the skill and judgment of the author.[337]


Finally there were issues surrounding ownership of the
copyright in the label form. Authorship of the label forms has not been
established and therefore fell to Richards Inc. to prove it was the rightful
owner of the alleged copyright. This was not done satisfactorily.[346] No
evidence of a proper assignment was provided.[352]


Since there was no valid assignment presented and likely
no copyright in the labels or the program there was no infringement.[366]


Patent Commentary

The authors note several contentious issues with this
decision. First the application of file wrapper estoppels. In Freeworld Trust the Supreme Court
stated definitively 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 as well as fuelling the already overheated engines of patent
litigation.  The current emphasis on
purposive construction, which keeps the focus on the language of the claims,
seems also to be inconsistent with opening the pandora's box of file wrapper
estoppel. If significant representations are made to the Patent Office touching
the scope of the claims, the Patent Office should insist where necessary on an
amendment to the claims to reflect the representation.


In essence the Patent Office should insist on inclusion
of material representations that are made to them with respect to the scope of
the claims – the claims should sufficiently disclose and limit the claimed
invention. The Supreme Court was concerned that, while the claims are readily
and publicly available, the prosecution history is not. As a result the Supreme
Court noted that the public would not be certain what was precisely claimed by
the inventor.


In this case the Trial Judge relied on correspondence with
the Commissioner of Patents to find that the guiding holes and protuberances
were essential elements. This correspondence falls squarely within the
traditional application of file wrapper estoppel – extrinsic evidence that
informs the scope of the claimed invention. The authors also note that
resorting to the file wrapper to establish essential elements was likely unnecessary
– the Judge found consensus between the experts with respect to the holes and
protuberances being an essential element:

Bearing in mind that everything that is claimed is presumed essential
and that the onus is on the patentee to establish known and obvious substitutability
at the date of publication, the consensus of the parties’ experts as to the
essential nature of the positioning means is a significant factor to consider.


Trade-mark Commentary

The Judge made two findings with respect to violation of
trade-marks. First the Judge held that there was no use of the mark despite
100,000 pill label sheets being handed out as free samples. The Judge noted
that since sheets of that design were never sold there was no use. This ignores
the fact that where samples are distributed for some pecuniary gain (such as
market research or promotion) this has been held to constitute use.


Conagra Foods Inc. v. Fetherstonhaugh &
2002 FCT 1257
at para

…the distribution of samples, for testing in the Canadian market in
1998, a step within the regular course of trade in the industry where the owner
of the trade-mark wares seeks to develop a market, also constitutes use of the


With respect to confusion the Judge notes that, if any
confusion had existed, it was dispelled as a result of notice sent by Richards
making them aware that they were not the ones behind the new packaging.[307]
The Judge then notes that since actual confusion was not demonstrated it was
necessary to demonstrate that confusion was likely to occur. The Judge then
repeatedly conflates actual confusion with a reasonable likelihood that
confusion will occur and fails to apply the test for confusion as set out by the
Supreme Court in Veuve Clicquot Ponsardin and
reiterated in Masterpiece Inc.:

The test to be applied is a matter of first impression in the mind of a
casual consumer somewhat in a hurry who sees the [mark], at a time when he or
she has no more than an imperfect recollection of the [prior] trade-marks, and
does not pause to give the matter any detailed consideration or scrutiny, nor
to examine closely the similarities and differences between the marks.


The failure to apply the test of a casual consumer in a
hurry and instead evaluate the mark from the perspective of a pharmacist who is
not in a hurry is a distinct departure from the traditional approach to
confusion in trade-mark law.