Free World Trust v. Électro Santé Inc.

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Free World Trust v. Électro Santé Inc.

Hearing: December 14, 1999
Judgment: December 15, 2000


Full case name:	Free World Trust v. Électro Santé Inc.
Citations:	[2000] 2 S.C.R. 1024, 2000 SCC 66
Ruling:	Appeal dismissed.

Court membership

Chief Justice: Antonio Lamer
Puisne Justices: Claire L'Heureux-Dubé, Charles Gonthier, Beverley McLachlin, Frank Iacobucci, John C. Major, Michel Bastarache, Ian Binnie, Louise Arbour

Reasons given

Unanimous reason by: Binnie J.
Lamer C.J. and Arbour J. took no part in the consideration or decision of the case.

Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R. 1024, 2000 SCC 66, is a leading Supreme Court of Canada decision on patents, namely claim construction and the necessity to identify essential elements and non-essential elements. Along with the related decision, Camco v. Whirlpool (2001), 9 C.P.R. (4th) 129 (SCC), the Supreme Court of Canada rejected the doctrine of equivalents applied in the United States and adopted the doctrine of purposive construction, as originally applied by the United Kingdom House of Lords in Catnic v. Hill & Smith. This was a landmark decision as it resolved the uncertainty in Canadian case law between the two doctrines.

The Court also articulated the scope of protection provided by patents and the requirements for infringement.

1 Background
2 Opinion of the Court
3 See also
4 External links

[edit] Background

Free World Trust held two patents, which it registered in 1981 and 1983, that related to a technique of bombarding human bodies with low-frequency electromagnetic waves. The invention controlled the wave frequency using "circuit means". Électro Santé Inc., a competitor, developed similar technology that used a microcontroller rather than the circuits. Free World Trust sued Électro Santé for patent infringement on the ground that although the means may be different the end result of the inventions were the same.

The Quebec Superior Court found that Électro Santé's invention was not novel and so their invention was invalidated. The Court of Appeal overturned the decision and found that there was no violation. In a unanimous decision, the Supreme Court upheld the appellate court ruling.

[edit] Opinion of the Court

Justice Binnie wrote the decision for a unanimous Court. He began by describing the process of interpreting a patent through "claim construction". Claim construction is the process where the inessential part of the patent are distinguished from its essential elements which are protectable by patent. In this case, the essential elements of the two patents held by Free World included controls that regulated the electro-magnetic waves "by circuit means". This invention, Binnie found, was more than a mere aggregation of known components and was not anticipated by publications.

The primary issue to Binnie was how to resolve the conflict between "literal" and "substantive" infringement. He states that one of the purposes of the Patent Act is to achieve fairness and predictability in order to promote research and development. He was concerned that protection provided by a broad reading of a patent would scare innovators from exploring similar ideas surrounding a claimed patent. According to Binnie, predictability could be achieved by "tying the patentee to its claims" and fairness would be achieved by "interpreting those claims in an informed and purposive way".

Binnie was hesitant for courts to attempt to find the "spirit of the invention" which would create more uncertainty and unpredictability. His proposed "purposive construction" approach would avoid literal interpretation while limiting the scope of substantive claims in attempt to balance fairness between the patentee and the public. Purposive construction identifies the essential from the non-essential. The analysis is from the perspective of a "worker skilled in the art to which the patent relates as of the date the patent is published". If an essential element is different or missing from the challenged invention then there is no infringement. However, there may still be infringement where only non-essential elements are different or missing. A non-essential element is one that, from the words of the claim, are not clearly intended to be essential, or where a skilled reader would have been able to identify a substitute.

In applying these principles to the facts of the case, Binnie found that Electro Sante's invention did not infringe upon Free World's patent. The essential elements of these inventions are not the results they produce by the way of producing them. The patent holder cannot monopolize all means of producing a particular result. The use of a microcontroller was significantly different that it constituted a different invention.