Judgment of the Court
J.-This is an action alleging that the respondent has infringed the rights of the appellants under Canadian Patent No. 270557, dated May 10th, 1927, for an invention of one Sven Johan Nordstrom relating to valves. The learned President of the Exchequer Court of Canada dismissed the action on the ground that the appellants' patent was invalid, null and void as between the parties, and further that there had been no infringement on the part of the respondent.
The patent relates to a pipe line valve of the plug type, comprising a casing which is connected into a pipe line and has passages forming a continuation of the pipe line and a round plug inserted in the casing, with its axis at right MERco angle to the line or passages for closing or stopping flow Noasmom through the line.
In the specification, the invention is described as being an improvement in valves, and more particularly an improvement in plug valves of the type in which lubrication of the bearing or seating surfaces R of the valve is effected by forcing lubricant under pressure into the contact joint between the plug and the valve seat in the casing.
The claims are five in number. It is not necessary to reproduce each of them, as they are rather lengthy. Claim No. 4 may be chosen as typical. It reads as follows: A valve comprising, a casing having a passageway therethrough and a tapered valve seat formed transversely of the passageway, a tapered plug seated in the valve seat and having a hole adapted to register with the passageway, longitudinal and transverse grooves in the seating surface of the valve arranged to form when the plug is in either its closed or open position two diametrically opposed closed circuit grooves, and means for introducing a plastic substance under presssure into the grooves, the longitudinal grooves being so arranged that they are only supplied with -lubricant under pressure when they are not exposed to the fluid passing through the valve, but are cut off from the supply of lubricant under pressure when they are exposed to the fluid passing through the valve.
It is important to notice that in each of the claims the invention is referred to as having "a tapered valve seat formed transversely of the passageway, a tapered plug seated in the valve seat", etc.
The respondent does not make use of a "tapered valve," but uses a cylindrical valve; and, in my opinion, in view of the nature of the patent in suit, this is sufficient to defeat the claim for infringement, as the principle of the two valves is different.
Nordstrom's invention can certainly not be said to consist in the discovery of a new principle or of a method of attaining a new result. The specification and the claims limit the invention to an improved method of attaining an old object. In such a case, the monopoly is limited to the particular mode described (British United Shoe Machinery Company Ltd. v. A. Fussell & Sons Ltd. (1); Clarke v. Adie (2); Curtis v. Platt (3); Gillette Safety Razor Co. of Canada, Ltd. v. Pal Blade Corporation, Ltd. (4)). (3) (1863) 3 Ch.D. 135 (note). (4) [1933] S.C.R. 142, at 150. (1) R.P.C.
App. Cas.
As was stated by Lord Watson, in Tweedale v. Ashworth (1), >MERCO
The plain object of the invention as described in the Specification is to substitute better mechanical equivalents for those already known and used as a means to the same end. It follows that, in construing the Appellant's Specification, the doctrine of mechanical equivalents must be left out of view. He cannot bring within the scope of his invention any Rinfret J. mechanical equivalent which he has not specifically described and claimed. A similar observation was made by Lord Davey in Consolidated Car Heating Company v. Came (2).
I agree, therefore, with the learned President, when he. says, in his judgment:
Nordstrom is limited by his claims to the precise mechanism described and he must abide by the result of his limitation, and there can be no infringement unless the defendant has taken the same thing and attains the same result in substantially the same way.
The appellants' patent, and every claim therein, are limited to a tapered plug valve. The type of valve of the respondent is entirely different.
In relation to this point, I may refer to the cross-examination of Matheson, an engineer of the appellant company:
Q. Does your own company not make a close distinction between a tapered and cylindrical valve?-A. Certainly. We are not now making any cylindrical valve.
Q. But would you not make a distinction in referring to the two types of valves?-A. Yes.
We. and our engineers talking between ourselves certainly make a distinction as well as we do to other mechanical details.
Q. How would you classify the defendant's valve; as a cylindrical or tapered valve?-A. It is for practical purposes a cylindrical valve even though some specimens might show a slight taper.
Q. The taper to which you referred showed a little over 1/1000 inch? -A.
Yes.
Q. Did the taper vary in the different valves you measured?-A. The other ones I examined-some other two sizes, I did not have any taper measuring instrument to use.
His LORDSHIP:
Are you suggesting there is a distinction between a cylindrical and tapered valve?
Mr. GOWLINo:
Yes, my Lord.
His LORDSHIP: Other than a patentable distinction?
Mr. GowuNo: Yes sir.
That is one of our main defences to the action, my Lord.
It appears by the evidence that the appellants have manufactured and sold, as well as taken patents on, both valves; but they have decided to sue the respondent on a patent which is specifically limited to a tapered valve. (1) R.P.C. at
[1903] at