Halford v. Seed Hawk Inc., 2004 FC 88

Date: 20040123

Docket: T-2406-93

Citation: 2004 FC 88

OTTAWA, ONTARIO, THIS 23^rd DAY OF JANUARY 2004

Present:           THE HONOURABLE MR. JUSTICE PELLETIER                                  

BETWEEN:

                                    JAMES W. HALFORD and VALE FARMS LTD.

                                                                                                                                             Plaintiffs

                                                                           and

                                               SEED HAWK INC., PAT BEAUJOT,

                                          NORBERT BEAUJOT, BRIAN KENT and

                                                   SIMPLOT CANADA LIMITED

                                                                                                                                         Defendants

                                            REASONS FOR ORDER AND ORDER

INTRODUCTION

[1]                In light of the fact that the trial of this matter was spread over four years, and that the business imperatives of the parties require a decision sooner rather than later, these reasons will depart somewhat from the usual narrative style of judicial reasons. In the interests of putting these reasons in the hands of the parties as soon as possible, I propose to dispense with a recapitulation of the evidence except to the extent necessary to resolve the issues which I am called upon to decide.

[2]                I will begin by laying out the invention described in the disclosure portion of the patent so as to identify its principle and mode of operation. With that understanding of the invention in mind, I will then embark upon a purposive construction of the patent, an exercise whose object is to identify the essential elements of the patent claims. Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R. 1024 at para. 31; 2000 SCC 66">2000 SCC 66 (Free World Trust).

[3]                Having construed the patent, I will then turn to the issue of infringement, even though, logically, it would make more sense to deal with the invalidity first. Claims which are invalid cannot be infringed. But the action is one for infringement, and invalidity is raised as a defence and counterclaim. Furthermore, if one errs on the issue of invalidity without having considered infringement, the burden of deciding whether those claims have been infringed either falls upon the Court of Appeal, or it requires that the matter be sent back for further consideration by the trial judge. Neither alternative is particularly satisfactory.

[4]                The method to be employed in determining whether the defendants' device infringes the claims of the patent is set out in the recent decision of the Supreme Court of Canada in Free World Trust, idem. The issue is not whether the patent has been literally or substantially infringed but rather whether the essential elements of the invention as articulated in the claims can be found in the defendants' device. Free World Trust, idem, at para. 55.

[5]                The next issue to be considered will be the validity of the patent and of particular claims of the patent. In this case, issues of obviousness, anticipation, and sufficiency of disclosure have been raised with respect to the patent itself. Specific claims are challenged as well on the basis that they lack an essential element of the invention.

[6]                The plaintiffs, James Halford and his assignee Vale Farms Ltd., have also claimed against Pat Beaujot, Norbert Beaujot, and Brian Kent, (the individual defendants), the principals of Seed Hawk Inc. (Seed Hawk), in their personal capacities. The corporate and individual defendants will be referred to collectively as the Seed Hawk defendants. Consequently, if infringement is shown and invalidity is not, I will have to consider whether the liability which attaches to the corporate defendant, which carries on the business of manufacturing and selling the device in issue, also attaches to the individual defendants. The plaintiffs have also alleged that Simplot Canada Limited (Simplot) procured the infringement of their patent by the Seed Hawk defendants. If I am required to consider whether the individual defendants are liable to the plaintiffs, I will also be required to consider whether a case has been made out against Simplot.

[7]                For the benefit of those unconnected with this litigation, who might be called upon to read these reasons, I offer a very brief sketch of the individuals and events which gave rise to the litigation. The plaintiff James Halford is a university trained farmer with an interest in soil conservation, notably minimum till or zero till practices. The distinguishing feature of these practices is the attempt to crop land without breaking it up any more than is absolutely necessary

to plant a crop. The new crop is planted in the stubble of the old. Mr. Halford invented a device for putting seed and fertilizer in the ground in a defined relationship to each other (side banding) in one operation (one pass). He obtained a patent for his invention, Canadian patent                        No. 1,239,835 (the Halford patent). When it came time to commercialize his invention, he assigned the patent to his company, the co-plaintiff Vale Farms Ltd.

[8]                Norbert Beaujot is an engineer and part-time farmer who also invented a one pass side band seeder. He had a prior acquaintance with Mr. Halford and had seen his device on one or two occasions prior to unveiling his own device. Norbert Beaujot incorporated Seed Hawk Inc. in order to pursue the commercial exploitation of his device. Pat Beaujot is Norbert's brother and is a principal of Seed Hawk. Brian Kent was involved in Seed Hawk at one time but no longer is so. When the Seed Hawk device was in the development stages, Pat Beaujot was employed by Simplot. That connection lead to a request to Simplot by Norbert Beaujot for development money for the Seed Hawk device in return for a promise to design the machine to apply liquid fertilizer, which is Simplot's primary product. Simplot provided some development money and some marketing assistance to Seed Hawk. The plaintiffs put Simplot on notice that the Seed Hawk defendants were, in their view, infringing the Halford patent. Dissatisfied with Simplot's response, they named it as a defendant when they launched these proceedings against the Seed Hawk defendants. That, in a nutshell, is the dramatis personae and the plot of drama which was acted out in Saskatchewan in the late 1980's and early 1990's.

THE NATURE OF THE INVENTION:

[9]                Since this patent was issued before the amendments to the Patent Act, R.S.C. 1985, c.          P-4, it is an "old Act" claim. Section 34 of the Patent Act as it read at the material time, sets out what an inventor must disclose in order to obtain a patent:

[10]            The Court is entitled to look to the specification of the patent for a description of the invention, and its principle of operation (in the case of a machine). It is in the light of this information that the claims are to be construed, subject always to the caveat that the information must be understood as it would be by a person skilled in the art possessed of the common knowledge of such persons at the material time.

[11]            The invention is described as a "Seed/Fertilizer Placement System for Minimum Tillage Application". The specification notes that "farm implements are required which permit the placing of fertilizer and various seeds in the soil, at their recommended depths and in an optimum relationship one to the other". In a zero tillage system, there is an additional requirement "to be able to directly plant into the trash and residue from previous crops without any prior tillage taking place". Many existing machines have been developed to place seed and fertilizer under this system but they tend to rely upon a heavy massive design to ensure penetration into the unworked ground. More recently, the patent says, attempts have been made to use cultivators as seeding machines with either air or gravity delivery systems. The main problems encountered are lack of depth control and difficulty in obtaining sufficient packing around the seed. The object of the invention is "to provide a planting apparatus for placing two separate materials such as seed and fertilizer in a single action which is simple, inexpensive and effective".

[12]            With that background information, one expects that the invention will address the problems which have been identified. The first is the need to place two materials in one operation. The second is to place the materials at the correct depth and in the proper relationship one to the other. There is a suggestion that depth of placement is to be accomplished without relying on mass alone to achieve penetration. Finally, the adequacy of packing is to be addressed. And all of this is to be done with an eye to the least possible disturbance of the soil surface.

[13]            When one reads the detailed description of the invention in connection with the drawings, the outline of the invention emerges (Figures 1 and 5 of the patent are attached as Schedule 1 to these reasons ). In broad terms, the invention consists of an assembly mounted to a frame which moves over the ground. As it does, a knife attached to the frame cuts a furrow in the ground. A tube attached immediately behind the knife deposits a first material, fertilizer for example, in the furrow immediately behind the knife. A packer/depth control wheel (the packer wheel) is mounted so as to be able to move pivotally relative to the knife. Mounted on the same member as the packing wheel (the single mounting member) is a tube which engages the soil in the furrow created by the knife to deposit a second material, presumably seed. (In the balance of these reasons I will refer to the first material as fertilizer and the second material as seed.) The seed tube is adjustable both vertically and side to side. A mechanism is provided for applying a force to the single mounting member so as to keep the packer wheel and the seed tube in contact with the ground. The packer wheel is mounted so as to follow in the furrow created by the knife.

[14]            One can ask how the various needs identified earlier are to be satisfied by this arrangement. The first issue is accurate depth control in terms of placement of seed and fertilizer.    The specification addresses this in two ways. In relation to the first embodiment, one finds at page 10 of the patent, the following description of the method of depth control for the furrow cutting knife:

In operation, the total seeding machine is lowered to working position and held by the normal wheels (not illustrated) supporting the structure of which cross-member 10 forms a part and these wheels will provide some control over the depth of tillage. The operator then adjusts the packer/depth control wheel 38 of each individual unit by means of the adjustment rods 40 to obtain the desired depth of operation of the primary tillage tool in the form of knife 15 and hence the depth that the fertilizer and/or seed which exits through tube 18. It also sets pressure on the packer/depth control wheel by transferring weight from the machine to the wheel 38.

[15]            While this is in relation to the first embodiment, a similar mechanism is provided for applying pressure to the packer wheel in the second embodiment. In both embodiments, a force is applied to the single mounting member on which the packer wheel is mounted. This presses the packer wheel into closer contact with the ground which, in turn, has an effect upon the working depth of the knife. Depth control of the furrow cutting tool is therefore achieved by a combination of lowering the frame of the machine into working position and by exerting a force on the packer wheel via the single mounting member. This is in relation to fertilizer placement only.

[16]            The specification also relates that the close proximity of the second tube to the packer wheel permits the ultimate in depth control of the product delivered by that tube (Patent, item 20, at p. 14). The specification provides for adjustment of the depth of the seed tube by means of a tube mounting sleeve 49 and a set screw 51. Once this adjustment is made, the position of the seed tube in the soil is maintained by the biasing force applied to the single mounting member. The result is that the packer wheel controls the depth of seed placement as it rolls over the soil.

[17]            The next step is to maintain a consistent relationship between the placement of the seed and the placement of the fertilizer. As noted above, the biasing force applied to the single mounting member maintains both the fertilizer knife and the seed tube in their respective working positions in the soil. As for their lateral alignment, the disclosure shows that the seed tube is adjustable both horizontally and vertically. On the horizontal axis, the tube is capable of side to side adjustment which allows for lateral displacement of the end of the second tube "relative to the base of the knife" (Patent, at p. 10).

[18]            The next issue to be considered is the control of the packing function. The fact that the seed tube is mounted on the same member as the packer wheel means that they are in a fixed relationship one to the other, so that the wheel follows behind the tube (see item 21 at p. 15 of the Patent). In the second embodiment, the rotation of the rear portion 353 of the single mounting member 351 relative to the front portion 352 results in both the packer wheel and the seed tube being rotated. This allows the packer wheel to roll over the seed where it is deposited

in the furrow by the seed tube.

[19]            The packer wheel is constructed so that it rolls within the furrow at a position beneath the surface of the ground but above the bottom of the furrow, pushing earth forward to cover the seed as it moves. In practice, the width of the packer wheel may be from one and three-quarters inches to something less than four inches. The width of the knife is such that the furrow it creates is wider at the surface of the soil than the packer wheel (Patent, at p. 20).

[20]            Given that the invention is designed for use in zero till situations, it is possible to identify certain elements which are adapted for that use. The use of an integrated spring protection system in the seed tube allows the latter to avoid damage from obstructions in the furrow. In addition, its vibration will serve to clear trash which might accumulate on it. The use of a tube for seed placement which is at an angle relative to forward travel results in less soil disturbance (Patent, at p. 13). The use of a narrow, edge-on, shank reduces the possibility of trash collecting on the leading edge of the shank. Rollers and blades can be mounted on the assembly to further deflect trash. The use of a narrow knife is preferable to reduce soil disturbance by creating a narrower furrow.

[21]            While this does not address every aspect of the invention as set out in the disclosure, it does address those issues which the specification identifies as being the advantages to be derived from the invention, that is, the ability to place two materials in the soil at a proper depth and in a

consistent relationship one to the other with suitable packing in a zero till environment. I now propose to move to the purposive construction of the claims of the patent.

CONSTRUCTION OF THE CLAIMS OF THE PATENT

[22]            I am guided in the task of purposive construction of the claims by the teaching of the Supreme Court of Canada in Free World Trust, supra, at p. 1053-1062, where the following template for purposive construction appears:

e) The Claims Language Will, on a Purposive Construction, Show that Some Elements of the Claimed Invention Are Essential While Others Are Non-essential. This Allocation Will Be Made in the Following Manner:

(i) On the Basis of the Common Knowledge of the Worker Skilled in the Art to which the Patent Relates

(ii) What Constitutes an "Essential" Element Is to Be Interpreted in Light of the Knowledge of the Art at the Date of the Publication of the Patent Specification

(iii)      Regard Is to Be Had to Whether It Was Obvious at the Time the Patent Was Published that Substitution of a Different Variant Would Make a Difference to the Way in Which the Invention Works

(iv) According to the Intent of the Inventor Expressed or Inferred from the Claims of the Patent

(v) Based on the Patent Specification Itself Without Resort to Extrinsic Evidence

THE EXPERTS

[23]            Before embarking upon the construction of the patent, I wish to say a few words about my assessment of the evidence of the experts who testified before me on questions of infringement and invalidity, namely Dr. Tessier and Mr. Schaaf for the plaintiffs and Mr. Anderson for the Seed Hawk defendants. I found them all to be persons of intelligence and well qualified in their particular domains. However, to a greater or lesser degree, all approached the trial as though their function was to persuade me of their point of view, as though it mattered to them, one way or another, how I decided the case. In my view, it is the function of counsel, and counsel alone, to be persuasive. It is the function of an expert to be informative, to present information which is beyond the common experience of a layman in a well organized and coherent fashion so as to assist the trier of fact in making sense of the information. The nature of the litigation process is that the experts' evidence will be challenged by those who are adverse in interest. Experts are entitled to defend their positions; their evidence is of no use to a trier of fact unless they are able to defend it. But, it is not the function of experts to be partisan defenders of a position in the litigation, to tailor their evidence so that it most conforms to the position of the parties or their advisors. When they are employed in that fashion, the Court is left to make its own way through material which, by definition, is outside common experience.

[24]            Mr. Anderson was cross-examined extensively as to his affidavit. He made a number of concessions which did not reflect well upon his evidence. He admitted two errors in the material he produced for the Court. He presented as his evidence information which was provided to him by Norbert Beaujot. He left the impression that he had observed certain operations when in fact he had not done so. He never did observe an entire Seed Hawk seeder in operation. None of this inspires confidence in his evidence. On the other hand, I found Mr. Anderson to be the least partisan of this group of witnesses.

[25]            I found the evidence of Dr. Tessier and Mr. Schaaf problematic as well. In                      cross-examination, Dr. Tessier was forced to admit that he had made several errors in calculating the strength of the Seed Hawk seed knives (Transcript of Evidence, October 29, 2001, at p. 1693- 1699). When confronted by the possibility of an error in the application of a formula, Dr. Tessier refused to commit himself, retorting that he could not "answer to a suggestion" (Transcript, idem, at p. 1694-1695).    When Dr. Tessier admitted his errors, he only did so with the greatest of reluctance. All of his errors advanced the position which he was advancing.

[26]            Dr. Tessier appeared to be offended by the request that he produce his detailed calculations:

Q. ...What I would like to know, and I think the Court would like to know, you say you are relying on this for theoretical analysis, where is your analysis?

A. Okay, what you are essentially telling me is you would have liked to see the calculation there so that you would have been able to cross-verify those numbers. Now, are you telling me that you don't trust that I used the equation the way it should be --

THE COURT: Mr. Tessier, --

BY MR. MACKLIN:

Q. No, it is not a matter of trust.

THE COURT: -- Counsel is entitled to see your calculations by which you derived your results.

THE WITNESS: So should I produce the calculated example?

THE COURT: And he is asking you if you have the calculations, and he may ask you to produce them. But at this point I think the question is, do you have the calculations?

THE WITNESS: Yes, I do have the calculations.

Transcript, October 26, 2001, at p. 1497-1498.

As it turned out, there were errors in his calculations.

[27]            I found Dr. Tessier to be argumentative in cross-examination and rigid in his adherence to a characterization which he attempted to impose on the analysis of one of the important issues in the case. (Transcript, October 29, 2001, at p. 1652-1657.) That issue was the comparison of the function of the seed knife and seed tube in the Seed Hawk device to the second tube means described in the patent. Dr. Tessier adopted a characterization of these devices, narrow hoe opener, which suggested a common function when the very issue to be decided was whether they did in fact have a common function. I have no difficulty with Dr. Tessier testifying that the two devices have a common function. I have no difficulty with Dr. Tessier using language which describes that function. But, I do have more difficulty with Dr. Tessier's refusal to stray from his chosen vocabulary as though the name determined the function, rather than the function determining the name.

[28]            Although I was impressed with Dr. Tessier's academic credentials, he left me with the impression that he was an advocate for the plaintiffs' cause. I approach his evidence with caution as a result of his partisanship.

[29]            Mr. Schaaf's evidence suffered from the fact that he prepared his affidavit with               Dr. Tessier's affidavit before him. His evidence was that he relied upon it for the definition of the Halford invention. If that were so, it would still compromise his independence. But, it is apparent that he relied upon it for more than the definition of the Halford invention. In his field notes, Mr. Schaaf consistently referred to the furrow opening devices on the Seed Hawk device as "knives" (Transcript, June 20, 2002, at p. 3004-3007). However, in his oral testimony he preferred to call them "blunt hoe openers" (Transcript, idem, at p. 2937-2938). In his affidavit, he referred to the seed knife as the seed opener. When challenged about this in cross-examination, he said that he had used the term knife because that was the term used in the Seed Hawk manual. Once he had completed his analysis, he chose to refer to the knives as openers. I have reviewed the patent from one end to the other and I find 61 occurrences of the word "knife" or the expression "knife means", 1 occurrence of the expression "soil working tool", 1 occurrence of the expression "primary tillage tool", and three occurrences of the expression "knife type openers". I find no occurrences of the expression "narrow hoe opener", or "blunt hoe opener". Given Mr. Schaaf's use of the word "knife" in his own notes, a use legitimized (if legitimizing were required) by the patent itself, I find his insistence upon the use of the term

"openers" or "blunt hoe openers" to be an attempt to bring his language into conformity with that used by Dr. Tessier.

[30]            I agree with the Seed Hawk defendants' suggestion that Mr. Schaaf used language which was equivocal at best in describing the effect of the seed knife. In his affidavit sworn October 30, 2000, Mr. Schaaf deposes that:

80. Field observations show that the seed hoe opener (7) runs within the furrow created by the fertilizer opener. After the fertilizer opener passes through the ground, the soil infills back into the furrow. As the seed hoe opener travels through the ground, it works primarily within the tilled or loosened soil from the fertilizer opener, although it does scrape along the furrow wall. It is still creating an opening or furrow in that it is displacing the loosened soil that has flowed in to backfill the furrow. This agrees with the description in the Halford patent.

[Emphasis added.]

[31]            Mr. Schaaf's field notes, to which more detailed reference will be made later, showed that he measured the width of the furrow resulting from the passage of the fertilizer knife and found that it was 3 inches wide. He measured it again after the passage of the seed knife and found that it was now 4 and one quarter inches wide. Clearly, the seed knife had done more than move the disturbed soil in the furrow, or simply scrape along the side of the furrow. I am not criticizing Mr. Schaaf primarily for not disclosing the results of his measurements, though I believe that a truly impartial witness would have put all the information which he had acquired before the Court. I do, however, criticize him for attempting to persuade the Court of the truth of a proposition which he had reason to know was either not true, or was only partially true. As a result of this partiality on his part, I approach his evidence with caution.

[32]            Claims 1, 2 , 3, 6, 10, 12, 19 and 20 are in issue in these proceedings. Of these, Claims 1, 12, 19 and 20 are independent claims, that is, they do not incorporate the terms of another claim. I begin by setting out in a structured way the terms of Claim 1:

                CLAIM 1 AND ITS DEPENDENT CLAIMS

1           Apparatus for planting two different materials in the ground comprising

2                       a frame adapted for transport across the ground,

3                       first material delivery means comprising

4                                   knife means for cutting a furrow in the ground,

5                                   means mounting the knife means on the frame and

6                                              arranged to cut a furrow in the ground as the frame is moved forwardly over the ground,

9                                   a first tube means,

10                                 means for supplying a first material to the first tube means,

12                                 means mounting the first tube means on the knife means at a position immediately rearwardly thereof for depositing said first material into the furrow,

15                     second material delivery means comprising

16                                 a second tube means,

17                                 means for supplying a second material to the second tube means, and

19                                 means mounting the second tube means rearwardly and separately from the knife means,

21                                             said second tube mounting means being adjustable to provide at least side to side adjustment of said second tube means relative to said knife means,

26                                 said second material delivery means including

27                                             means projecting downwardly from a position above the furrow for engaging the ground within the furrow at a position spaced rear-wardly of said knife means and

32                                             consisting solely of an outer surface of said second tube means so that the second tube means follows in the furrow at said spaced position and engages soil in the furrow,

37                     a packer wheel and

38                     means mounting the packer wheel rearwardly of said second tube means for following in the furrow behind the second tube means.

[33]            Neither the presence nor the definition of the frame to which the invention is attached is contentious. However, the plaintiffs argue that there should be implied in the notion of planting in the ground a limitation that the device is to be used in a zero till environment. The plaintiffs argue that this limitation or qualification finds support in the name given to the invention

"Seed/Fertilizer Placement System for Minimum Tillage Application", as well as to various passages in the disclosure, such as the following:

The present seed/fertilizer placement system provides a soil working tool which causes a minimum disturbance of the soil in the seed row area and which will leave undisturbed, strips of soil between the seed rows. It will also allow optimum depth control and separation of seed and fertilizer depending upon the requirements.

Patent, at p. 4.

[34]            The jurisprudence provides that the Court may have regard to the specification in order to understand the sense in which certain terms are used, but that the specification cannot be used to enlarge or reduce the scope of the claims, properly understood.

The claims, of course, must be construed with reference to the entire specifications, and the latter may therefore be considered in order to assist in apprehending and construing a claim, but the patentee may not be allowed to expand his monopoly specifically expressed in the claims "by borrowing this or that gloss from other parts of the specifications".

[1961] S.C.R. 117">Metalliflex Ltd. v. Wienenberger Aktiengesellschaft, [1961] S.C.R. 117, at p. 122.

...In my view, it was perfectly permissible for the trial judge to look at the rest of the specification, including the drawing, to understand what was meant by the word "vane" in the claims, but not to enlarge or contract the scope of the claim as written and thus understood.

Whirlpool Corp. v. Camco Inc., [2000] 2 S.C.R. 1067, at para. 52, 2000 SCC 67">2000 SCC 67.

[35]            I take these passages to mean that absent a specific limitation with respect to zero or minimum till application in the claims, I cannot use the references to those practices in the specification to read in such a limitation. On the other hand, I can take those references into account in considering the meaning to be given to specific terms or concepts in the claims. Consequently, I do not believe that Claim 1 is to be read as though it contained a limitation that the invention is to be used in zero till conditions.

[36]            The next element of the invention is the "knife means for cutting a furrow in the ground". The plaintiffs argue that a person skilled in the art would recognize such knife means as a narrow hoe opener:

Q.    In 18C you use the expression "narrow hoe opener", what do you mean by that?

A.    Narrow hoe opener is a standardized term that covers a broad range of hoe opener types. In agriculture there are very few categories of openers. Openers, being a device to open a furrow, whereas in the dictionary it would be a can opener. In our particular field here we are talking about opening a furrow. You have, of course, disk openers, you have hoe openers, which embody a wide category, which is inclusive of the less technical term "knife", for that matter.

Q.    And, indeed, you use the word "knife" in the same paragraph.

A.    I did use the word "knife" to indicate that anything that there is referred to as a knife is nothing but a narrow type hoe opener. Hoe openers, as at the early 1980's, and even today, could be fairly blunt. It could be of three, four, five centimetre wide, especially as we see in conventional tillage tools. However, in zero tillage tool they have gone the other way, that is going as narrow as achievable to allow for mechanical strength and durability. And in this case we are really talking about narrow hoe openers, which are more typical and useful for zero tillage applications to deal with soil that is firmer, but also to better handle or allow for flow of crop residues that would be left at the surface.

Evidence of Dr. Tessier, Transcript, October 25, 2001, at p. 1294-1295.

[37]            I have little difficulty concluding that a person skilled in the art would recognize the knife identified in Claim 1 as a narrow hoe opener.

[38]            The next element is the "means mounting the knife means on the frame".                              Mr. Anderson's evidence was to the effect that the invention contemplated a rigid connection between the knife means and the frame upon which each assembly was mounted:

33. During operation of the Halford device, the frame is lowered from position (20A) to position (20)*. This sets the depth of the knife (15) in the ground as the knife (15) is in rigid connection to the frame (10) by the knife shank member (111 and 113) and the bolt and retaining plate system (12). As the frame (10) moves forward, the knife (15) cuts a furrow and the fertilizer is deposited by a tube (18) through an opening in the tube's bottom (?) into the furrow behind the knife (15).

Affidavit of Clifford Anderson sworn February 28, 2000 and re-worn on February 3, 2003.

*In his sketches, Exhibits C and D, Mr. Anderson used a numbering system which did not correspond to the numbering in Figures 1 and 5 of the patent. I have therefore substituted the numbers used in the patent for those used by Mr. Anderson. In the case of items 20A and 20, the frame itself is item 10 in the patent. Item 20A is intended to show the device when it is not engaged in the soil.

[39]            This evidence was qualified on cross-examination as Mr. Anderson conceded that the shank to which the knife was fastened would provide some flexibility:

Q. Let's look then at paragraph 33 which is also with respect to the same Halford device as you've defined it. There you talk about the depth of the knife (24) in the ground as the knife (24) is a rigid connection to the frame.

A. Yes.

Q. Did you not just a minute ago tell us there's a spring shank for flexibility?

A. I'm using the term rigid unfortunately in the context of not pivotal. It's not pivotally mounted. I mean, nothing is totally rigid.

Q. This for sure isn't rigid because it's got a spring shank; right?

A. This has some flexibility, yes.

Transcript, February 3, 2003, at p. 4425.

[40]            Dr. Tessier rejected Mr. Anderson's view of the nature of the connection based upon his interpretation of the specification:

It is clear that Mr. Anderson is of the view that it is an essential element of the invention that the knife is mounted on the frame in such a manner that the depth of the fertilizer tool is controlled solely by the height of the frame which is adjustable. However, this is clearly incorrect in that the patent states in the paragraph bridging pages 10 and 11 that:

the operator then adjusts the packer/depth control wheel 38 of each individual unit by means of the adjustment rods 40 to obtain the desired depth of operation of the primary tillage tool in the form of knife 15 and hence the depth of the fertilizer and/or seed which exits through the tube 18.

The adjustment is effected subsequent to, and as a separate step from the adjustment of the working height of the frame. This adjustment is allowable due to, for example the spring connection 13 between the shank 11 and the frame. Thus, the spring 13 is applying a force downwardly on the fertilizer tool and on the elements behind the fertilizer tool, with the depth being controlled by the height of the packer wheel relative to the fertilizer tool. This arrangement is substantially identical to the arrangement of the Seed Hawk, with the exception that the spring 13 is replaced in the Seed Hawk machine by a hydraulic cylinder and is located at a different position.

Affidavit of Dr. Tessier sworn October 25, 2000, at para. 376.

[41]            In this passage, Dr. Tessier is arguing that the invention contemplates a pivotal movement of the means mounting the knife means on the frame through the action of the spring (13), which is described in the specification as an optional trip mechanism. Dr. Tessier's argument amounts to making a component, which the patent itself describes as optional, an essential element of the invention. That cannot be the case. The most that can be said is that there may be a pivotal attachment when the optional trip mechanism is provided, but it does not follow that there is pivotal movement at all other times.

[42]            Furthermore, the flexibility provided by the spring shank does not amount to pivotal movement. The best evidence of what is meant by pivotal movement comes from the following exchange from the cross-examination of Mr. Anderson:

Q. Now, yesterday with reference to Exhibit D to your affidavit, you admitted that contrary to your statement that in the Hafford device, the knife (24) [15 in Figure 5] is in rigid connection to the frame, there is in fact a flexibility in the spring shank (40) [11]

A. Yes

Q. Is it not so that any flexibility of a shank relative to a fixed member such as the frame provides in effect a pivotal relationship?

A. No.

Q. You don't accept that?

A. No.

Q. And you that why? Because there's not a fixed pivot point?

A. Pivotal means it can pivot about the point. Otherwise everything is pivotal, because everything...

Q. So you'd agree a flexing movement is pivotal type movement?

A. Everything flexes. No, pivotal means it can - the structure can rotate with respect to another structure.

Q. And flexing then means what?

A. Flexing means that there's elasticity, there's elasticity in everything, so virtually anything can flex.

Q. With the result that the structures move in relation to each other?

A. Portions of the structure move in relation to each other, yes.

Q. All right.

A. But that's not pivotal.

Transcript, February 4, 2003, at p. 4437-4439.

[43]            The discussion of the flexibility of the spring shank was undertaken without distinguishing between the flexibility which one might expect to find in the spring shank 11 shown in Figure 1 and the shortened shank 112, or the edge on shank 113 shown in Figure 5. It is a matter of common experience that all other things being equal, a long member is more easily made to bend than a shorter member of the same material. One need only think of picking up a one foot ruler and a yardstick by the very end. The ruler will stay rigid while the yardstick will tend to bend. Similarly, an edge-on member has much more rigidity than the same member in the opposite orientation. Once again, it is relatively simple matter to break a one foot ruler by bending it along its wide side. It is very much more difficult to break the same ruler by bending it on its narrow side. All of this to say that the hypothesis of flexibility arising from the spring shank ignores the possibility of real differences in flexibility.

[44]            In fact, the evidence of Mr. Schaff with respect to the first embodiment of the invention is to the effect that the use of the adjustment rod 40 results in the entire apparatus moving rigidly through the soil:

Q. Well, we're not talking about field operation because now you're getting into the Conferva Pak, okay. We haven't just made that connexion.

A. I'm talking in terms of how this would function.

Q. Okay. So if you take the rod 40 and you adjust it, which you are able to do; right?

A. Yes.

Q. Okay. That will either raise or lower --

A. That's right.

Q. -- through the bell crank the seed tube and the packer wheel; right?

A. And that is a setting that you would use to be able to --

Q. Sure, okay.

A. -- to adjust the relative heights.

Q. And it will not adjust the fertilizer knife or tube because they are mounted on arm 11. And the arm of the seed tube and the packer wheel rotate about 37, okay?

A. They only rotate when you're adjusting them. When you're in operational mode, when you're working, when it's functioning, everything is rigid. And then as a rigid unit the whole unit together relies on 38 to be able to act as your gauging wheel.

Cross-examination of David Schaff, Transcript, June 20, 2002, at p. 3071-3072.

[45]            The conclusion which I draw from this is that there is no reason to read into the "means mounting the knife means on the frame" a pivotal connection. The connection must be such as to allow the knife through the soil to create a furrow which requires a certain rigidity. This may be accompanied by some flexibility in the supporting elements, but those elements may also be made rigid.

[46]            There is no contest as to the next element which is the first tube means. All are agreed that it refers to a tube, which need not be of any particular construction. Nor is there any significant disagreement as to the remaining elements of the first material delivery means, that is the means for supplying a first material to the first tube, and "means mounting the first tube means on the knife means at a position immediately rearwardly thereof for depositing said first material in the furrow". There must be a way of supplying the first tube which is to be mounted on the knife, and to the rear of it, in such a position that it deposits the first material in the furrow.

[47]            There is, however, a controversy as to the meaning and dimensions of the furrow created by the knife. Dr. Tessier, who holds a Ph. D. degree in Agricultural Engineering, testified that a furrow was not simply the opening created by the knife but rather the entire zone of influence of the knife:

Q. Okay. All right. And, as well, would you agree that beyond the limits of the, of the furrow as perceived, there will be zones where the energy from the knife has actually gone out into the ground and may show up with little cracks, and things of that sort? Of energy?

A. Yes. That is what is called the furrow.

Q. Well, I guess we -

A. All of these cracks are part of the furrow.

Q. I guess we have a problem there then. What you are saying is, it is not, the furrow is not what you would see as, as, if you didn't have this soil falling back, you are saying -- just a moment, you are saying the furrow is not simply looking at and identifying an opening created by the knife which has sides, okay, which you can identify, all right? You are saying that the furrow includes not just the area where the soil has been removed by the knife, and you, creating the type of furrow you see in the drawings of the patent, right? With defined sides -

A. Well the -

Q. You are saying that it goes beyond that, it goes out into the soil, and whenever you have any energy going out in the soil, perhaps, creating fissures, or anything like that, perhaps, another, two, three, four, five inches, that is part of the furrow?

A. The furrow is defined as zone of influence of the tillage tool, in this case, a narrow opener, this is consistent with soil mechanics theory. Be it into modelling approaches such as McKyes has taken, or be it from a generalistic approach as Cullen and Keeper (ph), so, basically, the furrow includes all of what you said, that is, the fracture zone, and we see some of those in that figure in Exhibit "Z". If you look at about three quarters to an inch from the left most toothpick there, from the top of the residue soil interface, you will see some of these fractures, and they are very much, very much part of the, of the furrow, as is created by the tillage tool. These -

[Emphasis added.]

Cross-examination of Dr. Tessier, Transcript, October 30, 2001, at p. 1861-1863.

[48]            A person skilled in the art would not necessarily be the holder of a Ph. D. in Agricultural Engineering with a background in soil science and would not necessarily approach the definition of a furrow from the same point of view. Cross-examining counsel referred to a furrow as "an opening created by the knife which has sides". Certainly the drawings which form part of the specification of the patent treat the furrow in the same way as counsel did, a defined opening with sloping sides created by the knife. I have no doubt that Dr. Tessier correctly stated what a soil scientist understands by furrow. But, I am not persuaded that a person skilled in the art would understand it in the same way.

[49]            This is how Mr. Schaff, the plaintiffs other expert, described the furrow made by the fertilizer knife:

Q. Now, in paragraph 79 you use the expression "scrapes the undisturbed soil along the edge of the furrow wall." First of all, where is the furrow wall?

A. What I am calling the furrow wall would be the outside edge of what the fertilizer opener created. If you could imagine, the fertilizer opener goes through and creates a furrow. If you were to stop and remove all the loose dirt, what you would have is the outside edge of the original furrow.

The second opener, which is the seed opener, is then running in behind it. What it is doing is it running so that it is scraping, it's disturbing, it's moving a little bit of the outside edge of that first furrow that was created by the fertilizer opener. And, of course, at the same time it is then displacing and moving the loose soil that was let back in the original furrow that was created. That running along the edge can be described as creating a scraping action where you are actually just scraping along the edge of the furrow.

[Emphasis added.]

Transcript, June 19, 2002, at p. 2895-2896.

[50]            While this discussion took place in the context of "furrow wall", it is clear that                     Mr. Schaff viewed a furrow as an opening with discrete boundaries such that one could speak of scraping along a furrow wall.

[51]            Mr. Hafford himself appeared to share this view. The following exchange which occurred in the course of the cross-examination of Mr. Hafford shows quite clearly that he is using the word furrow to refer to the opening cut by the knife, but not the area of fractured soil which surrounds it:

Q. So the wheel has to be narrow enough to be able to ride in the furrow, to use your terminology; does it not?

A. Yes.

Q. And the wheel that you've just described, the one that you pointed to on Exhibit 6, fits that description?

A. Yes, it will go in the furrow, but you don't want it to go right to the bottom of the furrow.

Q. Well, why does it have to ride in the furrow at all?

A. Well, it is pretty well established for a long time that you want a packer wheel to ride in a furrow to get a packing action. If the packer- if you were making a furrow and your packer wheel was out beside it, you wouldn't be getting any benefits from the wheel.

Q. So the reason that the packer wheel is in the furrow is to provide a better packing action?

A. You want to have it in the furrow because, of course, that's also in association with where the seed is placed. You want to be able to pack the seed. That's the objective of the packing.

Q. So the packer wheel is in the furrow because it does a better job of packing the seed and the fertilizer when it's in the furrow; is that what you're saying?

A. Yes.

[Emphasis added.]

Transcript, November 7, 2000, at p. 273-274.

[52]            Although patent claims are to be construed independently of what the inventor may have to say about them, an inventor may also be a person skilled in the art. If he is not, it is because of his inventiveness, his imagination, as opposed to his knowledge of the field. See Beloit Canada Ltd. et al. v. Valmet Oy (1986), 8 C.P.R. (3d) 289, at p. 294 (Beloit Canada Ltd.). In this passage, Mr. Hafford is not speaking as someone who is bringing inventiveness or imagination to bear on the problem, but as someone who is familiar with the field.

[53]            It is clear from this discussion that Mr. Hafford was referring to the V shaped area of loose soil caused by the passage of the knife in the furrow. The packer wheel needs to be within this area because that is where the seed is. There is no advantage in having the packer wheel pass within the wider area which has been fractured by the energy of the knife.

[54]            It is also clear from a careful reading of the specification that the word furrow is always used in reference to the V shaped area of loose soil caused by the passage of the knife. For example, the following passage describes the operation of the second tube means (the seed tube):

As shown in Figure 8, the tube 44 is adjusted relative to the tube 18 so that it lies higher than the end of the tube 18 and such that it is twisted to one side. In this way the lowermost edge of the tube 44 scrapes the side of the furrow formed by the knife 15 pushing the soil forwardly so as to partially fill the furrow with soil as indicated at 445. Thus, as shown in Figures 5 and 8, the furrow as cut by the knife is indicated at 151 and a side wall of the furrow is indicated at 152 where the tube 442 scrapes the side to deposit the seed in unturned soil at the side away from the fertilizer escaping from the tube 18 and indicated at 153.

Patent, at p. 17-18.

[55]            There is little room in this passage for a furrow which extends beyond the sides of the opening cut by the knife. It is clear that the furrow has a finite boundary, a wall, and that it is a space capable of being filled. I conclude that the person skilled in the art, reading this patent, would understand furrow to have a narrower meaning than that proposed by Dr. Tessier, a meaning corresponding to a V shaped area of loose or disturbed soil caused by the passage of the knife.

[56]            Another contentious issue arises in relation to the second material delivery means, more specifically, the second tube means. The plaintiffs say that the second tube means is essentially an assembly including a narrow hoe opener:

Thus "the second tube means" is a broad term for the whole of the seeding tool which is in effect of the type generally known as a narrow hoe opener. The "second tube means" therefore may be a composite component providing the functions of engaging the soil in the furrow and delivering the seed. This term includes seeding tools which are defined by solely tubes, by composite reinforced tubes, by an assembly of a tube member and a reinforcing member where strength is contributed by both members and by an assembly of a tube member and a reinforcing member where strength is contributed primarily or wholly by the reinforcing member.

Plaintiff's Final Argument, at. para. 64.

[57]            The reference to narrow hoe opener is taken from the affidavit of Dr. Tessier, sworn November 30, 1999, at paragraphs 18(g) and (h):

(g) the second seed tube is mounted so that it projects into the furrow from above the furrow. The second tube is spaced rearwardly from the fertilizer tool and associated tube by a distance sufficient to allow loose soil to partly backfill or enter into the furrow in advance of the second tube. In practice this distance is in the order of 200 mm (8");

(h) these stated functions therefore dictate the form of the seeding tool in that it can be simply a tube or it can be the mechanical equivalent of a simple tube. Thus the second tube can take the form of a light duty narrow hoe opener with a tube attached since such a structure, when mounted in the required location as set out below, carries out the above function without forming its own separate furrow.

[58]            The important element in this evidence is the notion of tube means consisting of a tube attached to a light duty hoe opener. It is not seriously contested that a tube which engages the soil must be so constructed as to be able to do so. What is contentious is the plaintiffs' assertion that the words of the claim are wide enough to permit a finding of equivalence between a tube of a construction such as to engage soil in the furrow, and a tube which is mounted on a light duty narrow hoe opener.

[59]            Mr. Anderson was of the view that the patent calls for only a simple tube with no knife attached:

51. In claims 19 and 20 of the Hafford specification the second material delivery means is described as "comprising soil engaging and opening means consisting solely of a second tube means formed by a single tube...". In my opinion, this does not teach or describe anything more than a tube that can open soil in the furrow created by the fertilizer knife which obviously is disturbed, loosened soil. It remains solely a tube and is described in considerably different terms than the first material delivery means, which is consistently described as comprising a "knife" and "cutting a furrow". The description of the second material delivery means employs significantly different terminology and cannot be interpreted as including a "knife", being able to "cut a furrow" or performing a similar function as the first material delivery means. In my opinion, the second tube itself is an essential component of the Hafford specification. Had the specification been intended to claim exclusivity over a second tube that was accompanied by a second knife, then in my opinion it could and should have taught that by saying so distinctly and explicitly.

Affidavit of Clifford Anderson sworn February 3, 2003, at para. 51.

[60]            In substance, Mr. Anderson's evidence is that where the patent calls for a second tube means, it cannot be taken to be referring to the same thing which it previously described as a knife means and a first tube means. In his reasons in Free World Trust, supra, Binnie J. cited as a guiding principle in the purposive construction of patents the fact that the Patent Act promotes adherence to the language of the claims (see para. 33 et seq.). The proposal advanced by the plaintiffs cannot easily be characterized as representing adherence to the language of the claims.

[61]            The notion that the second tube means consists solely of a tube is advanced by language which appears later in Claim 1 where the second material delivery means are said to include means projecting downwardly... for engaging the ground and "consisting solely of an outer surface of said second tube means so that the second tube means follows in the furrow". If the ground engaging means consists solely of an outer surface of the tube means, clearly there can be no intervening structure between the outer surface of the tube and the ground.

[62]            One can agree that Claim 1 does not restrict second tube means to the same design and material as the first tube means without agreeing that second tube means becomes something other than a tube. It is clear that the second tube means is not bound to be a flexible plastic tube just because the first tube means happens to be a flexible plastic tube. The second tube means has a specific function to accomplish and a person skilled in the art would understand that its construction must be appropriate to the task. Second tube means could include either a light or a heavy tube. The plaintiffs take this a step further and argue that tube means can include reinforcing members for the tube, in the form of a knife type opener. In other words, a tube mounted on a narrow hoe opener is, for purposes of the claims, still just a tube. My own view is that a tube can be constructed as necessary to accomplish its particular function, but if it is affixed to another element, the combination is not a tube. It is a tube and another element.

[63]            The plaintiffs attempt to argue that the patent recognizes the second tube means as a narrow hoe opener or "knife" by referring to the portion of the specification which enumerates the advantages of the invention, in relation to the first embodiment:

(11) The total system utilizes a [sic] two knife type openers in sequence to place fertilizer and/or seed with control of depth of operation by a directly attached packer/depth control wheel.

[Emphasis added.]

Patent, at p. 12.

[64]            The Seed Hawk defendants say that this argument with respect to two knife type openers is inappropriate because the passage cited is in reference to the first embodiment, as shown in Figure 1, which includes a disk coulter. They say that the first knife type opener (assuming that the knife 15 is the second) must be the disk coulter. The plaintiffs counter this by pointing out that the disk coulter cannot be one of the two knife type openers since a person skilled in the art would know that a "disk coulter blade" is not a knife. A review of the various pieces of technical literature submitted in evidence persuades me that this is true. There is a clear distinction between knife type openers and disk coulter type openers. While both are recognized as furrow openers (see Exhibit K to the affidavit of Dr. Tessier sworn November 30, 1999), they are nonetheless distinct. One is drawn back to paragraph 11 where one notes an inconsistency in the use of "a" in reference to two knife type openers. If the inconsistency is to be resolved, one should have regard to the balance of the specification.

[65]            A review of the balance of the specification reveals that there is no other reference to a multiplicity of knife type openers. There is however another inconsistency at the bottom of page 6 of the specification as follows:

The bracket 14 carries one furrow opening knives 15 secured to the bracket by means of bolts 16 with the knife extending downwardly and facing forwardly at a slightly inclined angle, ...

Patent, at p. 16.

In every other case, the reference to knife is in the singular, most often in conjunction with the numeral 15 which is the identifying number for the knife on figure 1 of the drawings.

[66]            Consequently, the reference to two knife type openers in sequence is not easily explained. Such light as can be thrown on it comes from paragraph 15 of the advantages claimed for the invention:

(15) It is provided with a mounted coulter which is entirely and completely attached yet can easily be removed together with the knife opener 15 which follows same.

Patent, at p. 13.      

The reference to "follows same" is an echo of "two knife type openers in sequence". One could therefore inquire as to whether it is the multiplicity of knives which is in error, or whether there was an error in the characterization of disk coulters. While it is permissible to refer to the terms of the specification to resolve ambiguities in the claims, there is little advantage in doing so when the specification itself is ambiguous. As a result, I find that the text of paragraph 11 of the enumerated advantages of the invention is of little assistance in deciding if the second tube means incorporates a narrow hoe opener.

[67]            The most telling argument against the position advanced by the plaintiffs is the evidence of Dr. Tessier at paragraph 125 of his affidavit sworn October 25, 2000, in which he states:

125. In summary, did the state of the art as disclosed by Anderson show that the functions of the individual components used in the Hafford device were known as at 1983? In my opinion, yes, with the exception of the modifications to the seeding tool that the Hafford patent teaches with respect to allowing it to flex upon impact with obstacles...

If Dr. Tessier describes a flexible seeding tool as an advance on the prior art, it stands to reason that that flexibility is an important aspect of the seeding tool. As such, the notion of making the seeding tool rigid by mounting it on a narrow hoe opener is at odds with the identified advantage of that tool.

[68]            The next element is "means for supplying a second material to the second tube means" (which is not contentious) and "means mounting the second tube means rearwardly and separately from the knife means". The plaintiffs argue that the words "rearwardly and separately" mean that the second tube means is mounted so that it follows the knife means, and that it is mounted from the knife means, that is, it is mounted integrally with the knife means.

[69]               The plaintiffs argue that "This element requires that the second tube means be mounted from 'the knife means' that is as an integral assembly therewith, and not from the frame" (at para. 84 plaintiffs' Final Argument). At a later point (at para. 89, plaintiffs' Final Argument), the plaintiffs argue that the member carrying the packer wheel and the second tube means must be mounted to the knife mounting means and not to the frame. They support this allegation by the following text from the specification:

...The operator then adjusts the packer/depth control wheel 38 of each individual unit by means of the adjustment rods 40 to obtain the desired depth of operation of the primary tillage tool in the form of knife 15...

Patent, at p. 10.

On the basis of this passage, the plaintiffs argue that "If the packer wheel depth is adjusted through an adjustment of the knife means, the packer wheel must be part of and not independent of the knife means". With respect, this passage does not refer to adjustment of the packer wheel depth by an adjustment of the knife means. The depth of the knife means is adjusted by an adjustment to the packer wheel via the adjustment rods. Nonetheless, this is evidence that there is a connection between the knife and the packer wheel.

[70]            The plaintiffs do not explain what they mean by integral mounting. The defendants appear to believe that the plaintiffs' view on integral mounting is a step in the argument that the knife means, the second tube means and the packer wheel are all mounted on a single mounting member. I can see nothing in the language of Claim 1 which would suggest anything other than that the second tube means are mounted rearwardly and separately from the knife means. This does not preclude a functional relationship between the knife means and the second tube means but the language used does not require "integral mounting".

[71]            All that can be said of this aspect of Claim 1 at this point is that the second tube means is mounted rearwardly of, and separately from, the knife means.

[72]            The claim goes on to specify that the second tube mounting means is adjustable to provide at least side to side adjustment of the second tube means relative to the knife means. This does not appear to be contentious.

[73]            The next element relates to another aspect of the second material delivery means, described in functional terms:

said second material delivery means including

means projecting downwardly from a position above the furrow for engaging the ground within the furrow at a position spaced rearwardly of said knife means and consisting solely of an outer surface of said second tube means so that the second tube means follows in the furrow at said spaced position and engages soil in the furrow,

[74]            Both parties are agreed that this refers to the fact that the second tube means must follow in the furrow created by the knife. The plaintiffs say that the reference to the second tube means being spaced rearwardly of the knife means, and following "in the furrow at said spaced position" is an indication that the spacing is important. In fact, both of their experts took the position that the spacing was critical to the functioning of the invention. For example, the affidavit of David Schaff, sworn October 30, 2000, at paragraph 70, says the following:

The spacing between the fertilizer opener and the seed opener is critical to the performance of the device; it maintains separation in the placement of seed and fertilizer. ...

In his affidavit sworn October 25, 2000, Dr. Tessier says at paragraph 167:

The most important dimension, with regard to allowing for reliable backfilling of soil behind the fertilizer tool and ahead of the seeding tool, is the space between the rear edge of the fertilizer tube and the front edge of the seeding tool. ...

[75]            For my purposes, this may well indicate that there is a critical dimension but it does not disclose what that dimension is. The consequences of that omission do not concern me at the present time.

[76]            The other gloss which the plaintiffs put on this element of the claim is that it shows that the second tube means does not form its own furrow. It runs in the main furrow which, based upon the construction which I have put on that term, is the V shaped space of loose soil created by the passage of the knife means. This is not contentious. The plaintiffs also say that the reference to projecting into the furrow means that the second tube means is not merely trailing behind the knife in the furrow.

[77]            There is a further qualification on the second material delivery means in this part of the claim, which is that the means projecting downwardly consists solely of an outer surface of said second tube means. Despite a lengthy cross-examination on this subject, the plaintiffs' expert, Dr. Tessier, would not agree that this language precluded the interposition of a narrow hoe opener between the tube means and the point of contact with the soil. It was his position that even with a narrow hoe opener as the leading edge of the second tube means, the outer surface of the tube still projected into the furrow:

A. As a matter of fact, when this particular unit is moving in the ground, the outer surface which are the sides definitely are in contact with the soil. And my reading again of the patent is that you could have a wide range of narrow type openers that would fit this particular description.

Transcript, October 29, 2002, at p. 1652.

[Emphasis added.]

[78]            I do not believe that Dr. Tessier's view properly takes into account the requirement that the means for engaging the ground consists "solely of an outer surface of said second tube means". Having regard to the earlier discussion of the construction of the second tube means, I understand this aspect of the claim as requiring the tube itself to engage the soil and not some other element upon which the tube could be grafted.

[79]            The next element is a packer wheel and "means mounting the packer wheel rearwardly of said second tube means for following in the furrow behind the second tube means". The construction of this element is not particularly contested in that all parties appear to agree that it requires the packer wheel to run in the furrow so as to compress the soil over the seed bed.

[80]            That is the construction of Claim 1, at least in the sense of defining the terms and their relationships. The task of purposive construction, that is identifying the essential elements of the claim, still remains.

[81]            I am now to identify those elements of the invention which are essential.    Since this is to be done without regard to the issues of infringement and invalidity, there is a considerable temptation to simply characterize as essential every discrete element of the claim on the theory that the invention could not function without all of these elements. This is a kind of but-for test. But for the frame, the invention could not move over the ground, therefore the frame is an essential element. The difficulty with this approach is that it does not account for variants. It may be that an element which does not fall within the description of an element is substituted for that element. That substitution may be a mere cosmetic change or it may have a material effect upon the operation of the invention described in the patent. Treating both cases as the absence of an essential element is an unreliable guide to infringement.

[82]            One way of dealing with the problem of variants is to employ broad descriptions of the elements so as to encompass possible variants. That is the logic of describing the second tube means as a narrow hoe opener, for example. In my view, this approach does not respect the language of patent as it amounts to a re-characterization of the elements of the claim using language the inventor did not use when drafting his claims.

[83]            I have said in another case that essential elements must relate to the inventiveness of the invention:

A purposive construction must amount to more than a summary of the main elements of a device (in the case of a mechanical patent). Since a patent, by definition, concerns a novel and useful device, a purposive construction of a patent must identify the functional elements which make the device novel and inventive. Since it is the means by which a result is obtained which is protected by the patent, rather than the result itself, a purposive construction of a patent should identify those functional elements which produce a useful result in a novel and inventive way. To that extent, it is not useful to say that all elements of a claim are equally essential in that the invention cannot function in the absence of any one of them. The inquiry ought to focus on identifying the elements whose absence will result in the device ceasing to be inventive.

Norac Systems International Inc. v. Prairie Systems and Equipment Ltd. (2002), 19 C.P.R. (4th) 360 at para. 16.

[84]            This approach seems to be consistent with what the Supreme Court did in Free World Trust when it considered whether the claims of the patent were infringed by the substitution of a micro controller for "circuit means". The Court found that "control of the magnetotherapy by circuit means was ... an essential element of the invention":

...There is no need here to make heavy weather in the details. The claims specify the presence of "circuit means" to control the electro-magnetotherapy. There is nothing in the context of the claims to suggest that the inventor considered circuit means to be non-essential. On the contrary, it is the core of the invention.

Free World Trust, supra, at para. 68.

[85]            In discussing the issue of control of magnetotherapy the Court said:

Moreover, there is no reason to think the inventor didn't mean what he said or intended to claim more broadly than "circuit means" and thereby put at risk for "covetous claiming" the validity of the patent. As the Court of Appeal observed, the means of control of amplitude and frequency is precisely the difference that validated the patents over the prior art embodied in such predecessor magnetotherapy machines as the Magnétoshpace, Myodynamic and Elec devices.

Free World Trust, supra, at para. 73.

[86]            These passages suggest that the "core of the invention", "the difference that validated the patent[s] over the prior art" is an essential element of the invention. But it cannot be the only essential element for the simple reason that the invention is designed to effect a useful result. "Circuit means" in isolation could not possibly infringe the claims of the patent because circuit means by themselves could not do that which the invention claims to do. As a result, essential elements must be those elements which are necessary to achieve the new and useful result, or the accomplishment of a useful result by novel means, which justified the issuance of the patent.

[87]            That said, what are the essential elements of the invention as set out in Claim 1? In my view, they are the following:

- a frame adapted for transport across the ground;

- a knife mounted on the frame so as to cut a furrow in the soil as the frame moves across the ground, and a tube for depositing a first material into the furrow;

- a second tube mounted rearwardly and separately from the knife, projecting downwardly into the furrow and engaging the soil solely by means of the its outer surface and following in the furrow created by the knife;

- means for adjusting the lateral displacement between the second tube and the knife;

- a packer wheel mounted rearwardly of the second tube for following in the furrow behind the second tube.

[88]            The claims asserted against the Seed Hawk defendants which are dependent upon Claim 1 are the following:

[. . .]

(2) The invention according to Claim 1 wherein the second tube means carries a vertical rod member on a front edge thereof for engaging the ground forwardly and downwardly of an open end of the tube means.

(3) The invention according to Claim 1 wherein an open lowermost end of said second tube means is arranged to one side and above an open lowermost end of the first tube means so that the second tube means follows in the furrow but scrapes along a side wall of the furrow.

                                                                    [. . .]

(6) The invention according to Claim 1 wherein said mounting means for said packer wheel and said mounting means for said second tube means comprise a single mounting member pivotally mounted relative to said knife and including spring biasing said second tube means and said packer wheel into contact with the ground.

                                                                    [. . .]

(10) The invention according to Claim 1 including a shank for supporting said knife means, said shank being arranged to deflect trash to the sides thereof and being formed from a strip material having a thickness less than a width thereof and wherein the shank is arranged such that the thickness lies transverse to the direction of motion.

Patent, at p. 23-25.

[89]            Claim 2 revives the debate with respect to the second tube means being a composite member capable of including a tube member affixed to a narrow hoe opener. It also raises the issue of the relationship between the independent claims, and the claims which are dependent upon them. In this case, the plaintiffs argued that the second tube means could be construed to include a tube mounted upon a narrow hoe opener. Claim 2 adds to the second tube means in Claim 1 a vertical rod member. If the second tube means already includes a narrow hoe opener, the addition of a vertical rod member is redundant. Alternately, if a vertical rod member is capable of being construed as a narrow hoe opener, then the distinguishing element of Claim 2 has been implied in Claim 1. This is an impermissible construction.

[90]            Section 24 of the Patent Rules, C.R.C. 1978, c. 1250, as they stood at the date the patent was issued, reads as follows:

24. Claims must be complete independently of any reference to any document referred to in the disclosure; a broader claim should precede a narrower, and any additional characteristic described in a narrower claim should be added to those described in a broader claim by referring to the broader claim by number.

It is apparent that a "broader" claim is an independent claim relative to the "narrower" claim, which incorporates it, and is dependent upon it. The relationship of dependent and independent claims is dealt with more explicitly in section 87 of the current Patent Rules SOR/96-423, which, in my view, makes explicit that which was implicit in the former rules:

[91]            It is clear from section 87 of the Patent Rules that a dependent claim includes all the features and limitations of the claim which it incorporates by reference. As a result, the independent claim cannot be given a construction which is inconsistent with the claims which are dependent upon it. My colleague Campbell J. adopted this reasoning in Heffco Inc. v. Dreco Energy Services Ltd. (1997), 73 C.P.R. (3d) 284, at page 298.

[92]            This principle is well known in the American jurisprudence dealing with the construction of patents where it is known as the principle of claim differentiation. Article 112 of the U.S. Patent Act, 35 U.S.C., is the equivalent of section 87 of our Patent Rules. It provides as follows at paragraph 4:

Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A Claim in dependent form shall be so construed to incorporate by reference all the limitations of the claim to which it refers.

[93]            In its simplest form, claim differentiation simply requires that "limitations of one claim not be 'read into' a general claim". Wolens v. F. W. Woolworth Co., 703 F. 2d, 983 at p. 988. A

more expansive comment on claim differentiation appears in D.M.I., Inc. v. Deere & Co., 755 F. 2d, 1570 at page 1574 (Fed. Cir. 1985):

The district court said "As a general rule a limitation cannot be read into a claim to avoid infringement" citing Kalman v. Kimberly-Clark Corp. 713 F. 2d 760 ... Where, as here, the limitation sought to be "read into" a claim already appears in another claim, the rule is far more that "general". It is fixed. It is long and well established. It enjoys an immutable and universally applicable status comparatively rare among rules of Law. Without it, the entire statutory and regulatory structure governing the drafting , submission, examination, allowance and enforceability of claims would crumble. This court has confirmed the continuing life of the rule. Amstar Corp. v. Envirotech Corp., 730 F. 2d 1476 ... Raytheon Co. v. Roper Corp, supra ... Fromson v. Advance Offset Plate, Inc. 720 F. 2d 1565 ... Indeed, in Kalman, 713 F. 2d at 770, this court quoted with approval this clear statement of the rule found in Deere & Co. v. International Harvester Co. 658 F. 2d 1137 ...cert. denied 454 U.S. 969 ... :

Where some claims are broad and others narrow, the narrow claim limitations cannot be read into the broad whether to avoid invalidity or to escape infringement.

[94]            The principle of claim differentiation is treated as a rebuttable presumption:

That presumption is especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim, and one party is arguing that the limitation in the dependent claim should be read into the independent claim.

Sunrace Roots Enterprise Co. Ltd. v. SRAM Corporation 336 F. 3d 1298 at p. 1303 (U.S.C.A. Fed. Cir. 2003).

[95]            The corollary of this principle is that independent claims must be construed in a manner consistent with their dependent claims. In Southwall Technologies v. Cardinal I.G. Co., 54 F. 3d 1570 (C.A. Fed. Cir. 1995), the Court held at p. 1579:

Interpretation of a disputed claim term requires reference not only to the specification and prosecution history, but also to other claims ... The fact that we must look to other claims using the same term when interpreting a term in an asserted claim mandates that the term be interpreted consistently in all claims. ... (examining use of term "standard" in non asserted claims to interpret same term in asserted claims.)

[96]            This extends not only to the consistent use of terms, but also to internal consistency between independent and dependent claims:

Furthermore claim 9, which depends from claim 6, describes the plateau planer as having "a passage ... adapted to cooperatively engage said guide handle and to allow the planar abrading surface to be transversely rotated about the central long axis of said guide handle." Id. at col. 14 lns. 22-25. Thus, because the plateau planer can have any rotational alignment, it has no "proper" rotational alignment. Because we must not interpret an independent claim in a way that is inconsistent with a claim which depends from it, see Southwall Techs. Inc. v. Cardinal I.G. Co. [citations omitted], we must construe the term "in proper alignment" in claim 6 to refer only to the varus/valgus angle. ...

Wright Technology Inc. v. Osteonics Corp. 122 F. 3d 1440 (U.S.C.A. Fed. Cir. 1997) at p. 1445.

[97]            The Federal Court of Appeal has frequently referred to American jurisprudence in patent matters. See Stamicarbon B.V. v. Urea Casale S.A. (C.A.), [2002] 3 F.C. 347, 2002 FCA 10, at paragraph 17, for a review of the jurisprudence. A cautionary note was sounded in Thomas & Betts, Ltd. v. Panduit Corp. (C.A.), [2000] 3 F.C. 3, at paragraph 28. While I take comfort from the American authorities, my conclusion as to the necessity of interpreting independent claims in a manner consistent with the claims which are dependent upon them is based upon the wording of the Patent Rules.

[98]            Applying the principles discussed above to the present problem, I find that the plaintiffs' claims with respect to the second tube means being comprised of a rigid supporting member, like a narrow hoe opener, to which the second tube means is affixed is inconsistent with the addition of a "vertical rod member on a front edge thereof for engaging the ground forwardly and downwardly of an open end of the tube means" in Claim 2. If the vertical rod member is treated as a narrow hoe opener, a point to which I shall refer in a moment, then the plaintiffs have attempted to imply its presence in Claim 1, thereby making Claim 2 redundant. Since there is a presumption against redundancy, and a presumption of claims differentiation, this construction cannot be supported. Consequently, this confirms my construction of the second tube means as set out earlier.

[99]            This raises the problem as to whether the narrow hoe opener which the plaintiffs argued was present on the second tube means can be supplied by the vertical rod member which is added by Claim 2. In the Final Argument, the plaintiffs argued that Claim 2 supported their construction of Claim 1 which, as I have just pointed out, is an illegitimate approach to construction of the patent. However, it still leaves open the possibility that the vertical rod member is the narrow hoe opener for which they have argued.

[100]        This turns upon the meaning to be given to the term rod. While that term was used by many witnesses, none were asked to define it. It is always used in the sense of a length of metal whose shape and dimensions are not specified. The word is also used in the specification but once again without definition. In the circumstances, I believe that I am entitled to refer to the

specification to see if it gives some substance to the meaning of "rod member". The clearest reference to the rod referred to in Claim 2 is found in the specification at page 17 where the following appears:

...A front edge of the portion 442 carries a tip or rod 443 which projects beyond the lowermost edge of the tube 44 and acts to scrape the surface of the ground. The rod 443 which can be circular in cross section acts to reduce wear on the front edge of the tube and also reduces the possibility of damp soil being forced backwards up the tube 44...

Patent, at p. 17.

If one refers to Figure 5, one sees at 443 a short length of metal, whose diameter is significantly smaller than that of the tube upon which it is mounted.

[101]        I attach some significance to the characterization of the rod member as a "tip" which suggests that it does not extend the length of the second tube. Furthermore, I do not believe that it is contentious to find that there is a difference between "scraping the surface of the ground" and "opening a furrow". On that basis, I am unable to conclude that a vertical rod member is anything other than a piece of metal affixed to the front of the second tube means for the purpose of providing abrasion resistance, but not intended to allow the tube to function as a narrow hoe opener.

[102]        Claim 3 adds the element of placement of the open end of the second tube means above and to the side of the open end of the first tube means so that the second tube means follows in the furrow but scrapes along a side wall of the furrow. While Claim 1 provides for mounting means by which the second tube means engages the furrow and is adjustable from side to side, it does not particularize the relative placement of the two tube means. That relative placement is provided in Claim 3.

[103]        Furthermore, Claim 3 specifies that the relative positions are achieved by having the second tube means scrape along a side wall of the furrow. The wall of the furrow must be the sloping sides to which reference has been made earlier. This use of the term furrow in Claim 3 is inconsistent with the plaintiffs' earlier argument that furrow included not only the area within the sloping sides but also the area of fractured soil beyond the sloping sides. As a result, this claim provides some support for the interpretation of "furrow", which I have adopted earlier in these reasons.

[104]        Claim 6 brings substantial new elements to Claim 1. It stipulates that the mounting member for the packer wheel and the mounting member for the second tube means comprise a single mounting member and that said mounting member is pivotally mounted relative to the knife means. The mounting member also includes spring biasing said second tube means and said packer wheel into contact with the ground.

[105]        The single mounting member is not contentious in connection with the second tube means and the packer wheel. The plaintiffs argued in connection with Claim 1 that the mounting

of the second tube means "rearwardly and separately from the knife means" implied that these elements were all mounted on a common member.

[106]           The Seed Hawk defendants dispute that this claim requires that the knife, the second tube means and the packer wheel to be mounted on a single mounting member. In this, I believe that they are correct.

[107]        The more contentious issue is the exact geometry of the pivotal mounting of the common member relative to the knife means. The expert evidence, as to the significance of this element, largely consists of references to the drawings. Both Figure 1 (item 36) and Figure 5 (item 351) show a single mounting member for the second tube means and the packer wheel. Both figures also show that this common member is itself mounted on an element by which the knife is attached to the frame. In the case of Figure 1, the pivotal mounting point is item 37 and in the case of Figure 5, the mounting point is not numbered but appears at the junction of elements 111 and 351. In both cases, the result is that the single mounting member is able to rotate in the vertical plane relative to the knife means.

[108]        This point arises in the evidence of Dr. Tessier, at paragraph 18(k) of his affidavit sworn November 30, 1999, where the following appears:

...This assembly [packer wheel and seeding tube] is not a separate entity but cooperates with the fertilizer tool. The assembly mounting the packer wheel and the seeding tool generally requires pivotal movement relative to the fertilizer tool, that is the assembly mounting the seeding tool and the packer wheel can pivot relative to the fertilizer tool or vice versa to further improve seed depth control.

[109]        In his testimony, Dr. Tessier elaborated on this point:

Okay, basically what I read of claim 6 and 12 is that there is a requirement for pivotal relationship between the seeding tool and packer wheel assembly, and as well as the fertilizer tool. Now, it is quite silent as to the exact location of the pivot. For that matter, that pivot could really be ahead of the fertilizer tool, behind it, above it, and other places. So, what I am saying here is that it is quite true, or at least I read from claim 6 and 12 that one of the two tools assembly, that is the fertilizer tool and the seeding tool and packer wheel assembly must be allowed to pivot relative to each other, or vice versa, as I read the claim.

Transcript, October 26, 2001, at p. 1452-1453.

[110]        I take it from the evidence of Mr. Anderson, at para. 42, that to pivot is to move around a point, to rotate. This presumes a point of attachment, such as the pivot points referred to above. If one speaks of an element being pivotally mounted relative to another, it must follow that there is a point of attachment between those two elements. To that extent, I am unable to understand Dr. Tessier's evidence that the pivot point might be ahead of the fertilizer knife, or above it, or in some other place.

[111]        It also follows that there may be pivotal movement of one element relative to another. It is hard to understand how the packer wheel and seed tube assembly could be pivotally mounted relative to the fertilizer knife if the pivot point is ahead of or above the fertilizer knife. Such an attachment may well permit movement of the packer wheel and seed tube assembly relative to the fertilizer knife but relative movement is not necessarily pivotal movement. In my view,            Dr. Tessier's evidence on this point is unreliable. I conclude that pivotal mounting relative to the knife means requires the single mounting member to be mounted on the knife means either directly or by some other means so as to allow pivotal movement of the single mounting member relative to the knife means itself. This view is confirmed by the evidence of Mr. Schaaf:

Q. Okay. Then "mounted relative to said knife means." Okay, so that means you could have a separate mounting for the knife and this is mounted relative to that, but it doesn't say they're fixed together. You have -- in fact, we know that you have a pin there, you have a hinge.

A. It says "mounted relative to said knife means", so to me that says that it's mounted to the said knife means.

Q. Yes, with a hinge, with a pin. That's the way it's disclosed.

A. Yes. And then as it continues on from there and means for applying a brace.

Transcript, June 20, 2002, at p. 3062.

[112]        The next element is the question of biasing force. In his evidence, Dr. Tessier explained that biasing means the application of a force through a mechanism (Transcript, October 25, 2001, at p. 1324). Dr. Tessier testified that the decision as to whether the biasing force is supplied by a spring or by a hydraulic cylinder is "quite trivial" (Transcript, October 26, 2001, at p. 1472).    I understand him to be saying that the means of providing the biasing force is less important than the fact that a biasing force is applied.

[113]        The essential elements of Claim 6, over and above those of Claim 1 upon which it is dependent, are the following:

- a single mounting member for the second tube means and the packer wheel;

- pivotal mounting of that single mounting member relative to the knife means;

- biasing force applied to the second tube means and the packer wheel for keeping them in contact with the ground.

[114]        Claim 10 is exclusively concerned with the shank upon which the knife means is mounted. It is not contentious. The parties are agreed that the shank described in the claim is what is known as an "edge on shank" meaning that the shank is oriented so that its narrowest dimension is the leading edge of the shank. The reference to deflecting trash is one of the few indications in the claims that the invention is intended for use in a zero till environment.

                                             CLAIM 12

[115]        That concludes the construction of Claim 1 and the claims which are dependent upon it. I must now consider the three remaining independent claims which are asserted against the Seed Hawk defendants' device. The first of these is Claim 12 which I reproduce below in structured form:

1           Apparatus for planting two different materials in the ground comprising

2                       a frame adapted for transport across the ground,

3                       first material delivery means comprising

4                                   knife means for cutting a furrow in the ground,

5                                   means mounting the knife means on the frame and

6                                               arranged to cut a furrow in the ground as the frame is moved forwardly over the ground,

9                                   a first tube means,

10                                 means for supplying a first material to the first tube means,

12                                 means mounting the first tube means on the knife means at a position immediately rearwardly thereof for depositing said first material into the furrow,

15                     second material delivery means comprising

16                                 a second tube means,

17                                 means for supplying a second material to the second tube means,

19                                 means mounting the second tube means rearwardly of and separately from the knife means,

21                                             said second tube mounting means being arranged to support the second tube means at a position above the furrow and arranged so that the second tube extends into the furrow so that the second tube means follows in the furrow to engage the soil therein

29                                             and arranged such that the second tube means is spaced from the first tube means by a distance sufficient to allow soil to fall into the furrow therebetween as the first and second tube means are moved along the furrow behind the cutting means,

36                     a packer wheel and

37                     means mounting the packer wheel rearwardly of the second tube means for following in the furrow behind the second tube means,

39                                 said mounting means for said packer wheel and said mounting means for said second tube means comprising a single mounting member

42                                             pivotally mounted relative to said knife means such that the second tube means is rigidly supported relative to the packer wheel

46                                 and including means biasing said second tube means and said packer wheel into contact with the ground,

49                     the width of said packer wheel and the width of said knife means being arranged such that the furrow is of such a width relative to the packer wheel that the packer wheel runs in the furrow at a position below ground level so as to act to steer said second tube means in the furrow.

[116]        Given that the most comprehensive definition of the invention appears in Claim 6, it is perhaps easier to discuss this claim by reference to Claim 6. The new elements are the reference to the distance to be maintained between the second tube means and the first tube means, the rigid mounting of the second tube means relative to the packer wheel and the relative widths of the packer wheel and the knife means.

[117]        In the discussion of the mounting means for the second tube means in Claim 1, I noted that the plaintiffs' experts took the position that the spacing between the second tube means and the knife means was critical, but that there was no indication of what spacing was required. This element of Claim 12 supplies the answer in functional terms: the space must be "sufficient to allow soil to fall into the furrow therebetween as the first and second tube means are moved along the furrow behind the cutting means". The actual distance is not set out in the claim.

[118]        The single mounting member for the second tube means and the packer wheel which was set out in Claim 6 as a dependent claim is now incorporated into an independent claim. Another new element is the idea of the second tube means being rigidly mounted relative to the packer wheel. Interestingly enough, the addition of this element is accompanied by the removal of the reference to "side to side adjustment" of the second tube means. In his testimony,                      Dr. Tessier attributed two functions to this rigid mounting. He indicated that it is involved in the control of seed placement:

A. It should be clear by now that one of the important functions of a packer wheel when rigidly mounted to the seeding tool is to dictate or guide seed placement through adjustments of the relationship in elevation.

Transcript, October 26, 2001, at p. 1475.

[119]        But, Dr. Tessier also refers to the rigid mounting in relation to the question of steering the second tube means in the furrow:

...therefore on account being rigidly mounted to the seeding tool it would affect through the seeding tool steering ability of the seeding device and transfer it to the seeder.

Transcript, October 26, 2001, at p. 1484.

[120]        The next element is the biasing of the packer wheel and the second tube means. I note that the precise means by which a biasing force is applied is not specified as it is Claim 6 which makes clear that it is the fact of biasing force being applied which is important, not the means by which it is applied. The significance of the biasing is rather modest according to Dr. Tessier:

And really this has real -- the biasing mechanism in these seeding device has a minor role since really the main features, or I guess one of the major components or contributor to effective side banding of fertilizer relative to seed is what happens in the ground.

Transcript, October 26, 2001, at p.1472.

[121]        The last new element which arises in Claim 12 is the relative widths of the knife means and the packer wheel so that the packer wheel runs in the furrow below ground level so as to steer the second tube means in the furrow. Here is what Mr. Halford had to say about the steering function:

A. What we learned when we put this device together was the fact that as compared to all other, I wouldn't say all, but a majority of other seeding machines in and around the early 1980s, that pretty well all had a packer gang system across the back of the machine, you know, a whole series of wheels lined up, and they had either disks in front or hoes in front and so on. Now obviously there was some that had the packer closer, but a lot of them had that arrangement. And with that particular arrangement, if you've got an opener up front, then you may have a packer wheel back as much as maybe six or seven feet behind it. If you do a slight bit of cornering with that machine, that packer wheel is going to be out of the furrow. You're only really effective when you're running, you know, in a straight line. So when you have a packer wheel as we put it, close in behind the knife, the fertilizer knife and the

seed opener, and the packer wheel is down in the furrow, then as you're proceeding forward, and if you have to make a slight corner, you find the packer wheel isn't immediately out of that furrow. It stays in the furrow because it's down in the furrow and has a resistance against the side wall of the furrow to help maintain it in the furrow. And therefore, maintain its relationship to the seed opener which is immediately in front of it.

Q. So the steering function occurs only in turning situations?

A. It's only going to be effective when you're doing a slight turn, if you're talking about turning situations. It's not going to be when you come up to the end of a field and make a ninety degree turn. There is no way the packer is going to stay in the ground.

Q. And the steering that you've talked about is the fact that the packer wheel is constrained by the walls of the furrow, can't move out of it, and fixes itself in place?

A. Well, it is restrained in place because of the shape of the furrow which is generally a V-type shape that's commonly about eighty to ninety degrees, and that furrow -- in other words, you have a wedge shape that the wheel is sitting in, so it's got a wall to work against, and that helps retain the position of the opening.

Transcript, November 7, 2000, at p. 280-282.

[122]        On the strength of this analysis, I would say that the essential elements of Claim 12 are the same as those of Claim 6 with the addition of:

- the spacing of the second tube means relative to the first to allow soil to flow in after the first tube means has passed before the second tube means deposits the second material;

- the rigid mounting of the second tube means relative to the packer/depth control wheel;

- the width of the knife means relative to the packer/depth control wheel;

- the steering effect of the packer wheel as a result of running in the furrow below ground level.

                                             CLAIM 19

[123]        The next independent claim is Claim 19 which I reproduce below in structured form:

1           Apparatus for planting two different materials in the ground comprising

2                       a frame adapted for transport across the ground;

3                       first material delivery means comprising

4                                   means for forming a furrow in the ground consisting solely of knife means,

6                                   means mounting the knife means on the frame and

7                                               arranged to cut a furrow in the ground as the frame is moved forwardly over the ground,

10                                 a first tube means,

11                                 means for supplying a first material to the first tube means, and

13                                 means mounting the first tube means on the knife means at a position immediately rearwardly thereof for depositing said first material into the furrow;

16                     second material delivery means comprising

17                                 soil engaging and opening means consisting

18                                             solely of a second tube means formed by a single tube with an open mouth at its point of ground engagement,

22                                 means for supplying a second material to the second tube means,

24                                 and means mounting the second tube means rearwardly of and separately from the knife means;

26                                 said second tube mounting means comprising a member positioned above the furrow from which the second tube extends downwardly into the furrow to engage soil therein;

30                                 said second tube mounting means mounting said second tube means spaced from the first tube means to leave a free space behind said first tube means and in front of said second tube means within which soil falls into the furrow as the first and second tube means are moved along the furrow behind the knife;

35                                 and means for applying a force to said second tube means tending to hold said second tube means in contact with the ground.

[124]        Thus, all of the elements of Claim 19 have been discussed previously:

- the deposit of separate material by means of two separate material delivery tubes;

- the mounting of the furrow cutting tool, the knife means from a frame which moves over the ground;

- mounting of the first tube means immediately rearward of the first knife means;

- second material delivery means consisting solely of a second tube formed by a single tube with an open mouth at the point of ground engagement;

- the mounting of the second tube means rearwardly of and separately from the knife means;

- second material delivery means engaging the ground at a position spaced rearwardly of the knife means;

- second tube means spaced from the first tube means to leave a free space within which soil falls into the furrow as the first and second tube means are moved along the furrow behind the knife;

- means applying a force to the second tube means tending to hold second tube means in contact with the ground.

                                             CLAIM 20

[125]        The last independent claim is Claim 20 which I reproduce below in structured form, as I did with the other independent claims.

1           Apparatus for planting two different materials in the ground comprising

2                       a frame adapted for transport across the ground;

3                       first material delivery means comprising

4                                   means for forming a furrow in the ground consisting

5                                               solely of knife means,

6                                   means mounting the knife means on the frame and

7                                               arranged to cut a furrow in the ground as the frame is moved forwardly over the ground,

10                                 a first tube means,

11                                 means for supplying a first material to the first tube means, and

12                                 means mounting the first tube means on the knife means at a position immediately rearwardly thereof for depositing said first material into the furrow;

15                     second material delivery means comprising

16                                 soil engaging and opening means consisting

17                                             solely of a second tube means formed by a single tube with an open mouth at its point of ground engagement,

21                                 means for supplying a second material to the second tube means, and

23                                 means mounting the second tube means rearwardly of and separately from the knife means;

25                                 said second tube mounting means comprising

26                                             a member positioned above the furrow from which the second tube extends downwardly into the furrow to engage soil therein;

30                                             said second tube mounting means mounting said second tube means spaced from the first tube means to leave a free space behind said first tube means and in front of said second tube means within which soil falls into the furrow as the first and second tube means are moved along the furrow behind the knife, and

38                     a packer wheel assembly comprising

39                                 a packer wheel and

40                                 means mounting the packer wheel rearwardly of the second tube means for following in the furrow behind the second tube means,

43                                 said mounting means for said packer wheel and said mounting means for said second tube means comprising

46                                             a single mounting member mounted relative to said knife means such that the second tube means is rigidly supported relative to the packer

wheel and

51                                             means for applying a brace [force] to said single mounting member tending to hold said second tube means and said packer wheel in contact with the ground;

56                                 said packer wheel and said knife means having cooperating respective widths such that the packer wheel is wider than the knife means at its lowest point and narrower than a widest part of the furrow formed by the knife to cause the packer wheel to run in the furrow at a position below ground level so as to act to steer said second tube means in the furrow.

[126]        Claim 20 incorporates several features which do not appear in Claim 1 but which do appear in other claims. Lines 1 to 14 of Claim 20 are substantially the same as lines 1 to 15 of Claim 1 except for the description of the knife means which appears at lines 4-5 of Claim 19. I can see no substantive difference between the two arising from a slightly different description.

[127]        The description of the soil opening and engaging tool which appears at lines 16 to 20 of Claim 20 reproduces the description which appears at lines 17 to 21 of Claim 19. The description of the second tube mounting means which appears at lines 25 to 29 of Claim 20 reproduces the description which appears at lines 26 to 29 of Claim 19. The description of the spacing between the first and second tube means at lines 30 to 37 of Claim 20 largely repeat the description of this spacing found at lines 30 to 34 of Claim 19 except for the last phrase. In Claim 20, the soil falls into the furrow "as the first and second tube means are moved along the furrow behind the

knife", whereas in Claim 19 the soil flows into the furrow "behind the knife". The difference between the two is that Claim 19 refers to "when" the soil flows into the furrow while Claim 20 refers to "where" the soil flows into the furrow.

[128]        The significant difference between Claim 20 and the other claims is the development of the packer wheel assembly. Lines 46 to 50 refer to a single mounting member mounted relative to the knife means, but without reference to the pivotal mounting which appears in Claims 6 and 12. Those lines also refer to the second tube means being rigidly supported relative to the packer wheel as in Claim 12. Thus, Claim 20 is wider than Claims 6 and 12 insofar as the mounting of the common member is concerned.

[129]        Assuming that the reference to "brace" which appears at line 51 is a typographical error for "force", the description of the means for applying a force to the single mounting member is essentially the same as the reference to the biasing means in Claim 12. The comments which I made with respect to the latter apply to this portion of Claim 20.

[130]        The final part of Claim 20 is a reprise of the issue of the respective widths of the knife means and the packer wheel save that the width of the packer wheel is now defined in terms of the narrowest part of the knife means and the widest part of the furrow. The result is the same as in Claim 12 in that the packer wheel runs in the furrow at a position below ground level and steers the second tube means in the furrow.

                                      INFRINGEMENT

             DESCRIPTION OF THE SEED HAWK DEVICE

[131]        I shall now describe the Seed Hawk device by reference to a sketch which appears in the Seed Hawk promotional literature and which is annexed to these reasons as Schedule 2. The Seed Hawk device is a device for placing two materials in the soil at a predetermined depth and in a consistent relationship with each other. It consists of a frame to which is attached a hanging bracket 13 by means of u-bolts 17 to which the placement arm 15 is pivotally attached so as to allow movement in the vertical plane. There are mounted on the placement arm 15:

- a trip plate 9, pivotally mounted on the placement arm 15, to which is attached a fertilizer knife 8 ending in a carbide cutter 4 (the fertilizer knife assembly), and a fertilizer drop tube 16 which is mounted behind the knife so as to deposit fertilizer in the furrow created by the knife;

- a seed knife 6 which is rigidly attached to the placement arm 15, rearwardly of the fertilizer knife assembly, and a seed drop tube 7 which is mounted behind the seed knife 6 so as to deposit seed in the furrow created by the seed knife;

- a pneumatic packer/gauge wheel 5 whose axle is held at a position on a depth gauge 12 by depth lock bolt 11.

[132]        There is also attached to the hanging bracket 13 a hydraulic cylinder 14 whose distal end is attached to a point on the trip plate 9. The hydraulic cylinder 14 is able to apply forces in forward (pulling) and rearward (pushing) directions relative to the front of the frame. When a pulling force is applied the fertilizer knife assembly is pulled into the ground. The degree to which it can be pulled into the ground is limited by a chain 10 which runs from the trip plate 9

rearwardly to the placement arm 15. Once the chain is in tension, the pulling force is transferred by the placement arm 15 to the pneumatic packer wheel 5.

[133]        The position of the fertilizer knife is adjustable by mechanically raising or lowering the fertilizer knife on the trip plate. Lateral separation between the fertilizer knife and the seed knife is adjustable by adding a washer between the knife 8 and the trip plate casting 9. (See Seed Hawk Manuals, Exhibit R to the Affidavit of David Schaaf sworn October 30, 2000, under the heading "Packing".)    Fertilizer and seed depth placement is adjustable by altering the location of the packer wheel in the depth gauge 11. Sliding the packer wheel up in the depth gauge results in deeper seed depth while sliding it down results in shallower seed depth. Seed and fertilizer depths are taken from the soil surface under the centre of the packer wheel. (This information is taken from p. 11 of the last Seed Hawk manual included in Exhibit R to the affidavit of David Schaaf sworn October 30, 2000.)

[134]        Once set, the positions of the seed and fertilizer knives are fixed and are not affected by the biasing force applied to the fertilizer knife assembly and ultimately to the packer wheel. The biasing force and the pivotal mounting of the placement arm 15 to the frame via the hanging bracket 13 allow the entire assembly to follow the terrain without regard to the position of the frame itself relative to the terrain (within certain operating parameters).

[135]        When the apparatus is lowered into working position, the pulling force of the hydraulic cylinder pulls the fertilizer knife to its working position. The applied force is transmitted to the packer wheel and forces it into contact with the ground. The seed knife 6 follows the fertilizer knife 8 in the ground in the relationship established by the mechanical adjustments to the various components.

[136]        The hydraulic cylinder operates so as to maintain constant pressure on the pneumatic packer wheel notwithstanding variations in ground level relative to the frame which results in consistent placement of seed and fertilizer relative to the surface of the soil beneath the packer wheel. However, the hydraulic pressure is set so as to release if the fertilizer knife assembly strikes an obstruction substantial enough to overcome the pulling force of the hydraulic cylinder. This allows the trip plate (and the entire fertilizer knife assembly) to pivot freely about its mounting point over the obstruction. Once past the obstruction, the hydraulic cylinder once again applies its pulling force and pulls the fertilizer knife back into its working position. In the transport position, the hydraulic cylinder is made to apply a pushing force, so that the trip plate folds against the placement, lifting the placement arm sufficiently above the surface of the soil so that none of the elements mounted on it are in contact with the ground.

INFRINGEMENT: CLAIM 1

[137]        With that description, I am now in a position to read the elements of the claim onto the Seed Hawk device. The easiest way to do this is to reproduce each claim in columnar form, and to identify in a second column the corresponding elements of the Seed Hawk device. I begin with Claim 1:

Claim 1                                                                         Seed Hawk Device

[138]        There are four variations between the Seed Hawk device and Claim 1, noted by the numerals (1), (2), (3) and (4) in the Seed Hawk column. The variations are:

(1) the pivotal mounting of the fertilizer knife on the placement arm instead of on the frame;

(2) the adjustment of the lateral separation between the seed and fertilizer tubes by means of spacers between the fertilizer knife and the trip plate, instead of side to side adjustment of the seed tube;

(3) the use of a seed knife to engage the soil instead of a tube which engages the soil solely by means of its outer surface;

(4) the creation of a separate furrow by the seed knife instead of the engagement by the seed tube of the soil in the furrow created by the knife.

[139]        None of these amount to the absence of an essential element. They could more accurately be described as variants of what is described in the claim. To that extent, we are not dealing with the absence of an essential element. Consequently, simply asking if any essential element is lacking is not a useful way of determining whether infringement has occurred. It may be that one element has been substituted for another, the substituted member doing exactly what the original member did, doing it in the same way, and leading to the same result. Such a substitution would clearly amount to infringement even if on a literal reading of the claim one of the essential elements was missing.    As Willis J. pointed out in Incandescent Gas Light Co. v. De Mare Incandescent Light System Ltd. (1896), 13 R.P.C. 301 at page 330:

It is seldom that the infringer does the thing, the whole thing, and nothing but the thing claimed in the Specification.

Cited by Binnie J. in Free World Trust, supra, at para. 71.

[140]        It is for this reason that Binnie J. incorporated into his analysis the test in Improver Corp. v. Remington Consumer Products Ltd., [1990] F.S.R. 181:

(i) Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no: --

(ii) Would this (i.e.: that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art? If no, the variant is outside the claim. If yes: --

(iii) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If yes, the variant is outside the claim.

Free World Trust supra at para.55

[141]        The Improver test incorporates the elements of essentiality, timeliness and the inventor's intention.

[142]        As noted there are four variants in relation to Claim 1:

(1) the mounting of the fertilizer knife on the placement arm;

(2) the adjustment of the lateral spacing of the fertilizer knife relative to the seed knife;

(3) the engagement of the soil by a seed knife; and

(4) the creation of a second furrow by the seed knife.

1) First variant: mounting of the fertilizer knife on the placement arm:

a) material effect on the operation of the invention

[143]        The first question with respect to the mounting of the fertilizer knife on the placement arm 15 of the Seed Hawk device is whether it is in fact a variant and, if it is, whether it has a material effect upon the way the invention works. The claim speaks of means mounting the knife means on the frame, which may or may not involve intermediate elements. The plaintiffs refer to the specification to support their conclusion that the language of Claim 1 was broad enough to include mounting on the frame via an intermediate member such as the shank 11 in Figure 1.

[144]        The plaintiffs' experts focussed upon the fact of a single mount point to the frame in the drawings to support the conclusion that any arrangement with a single mount point to the frame, such as the Seed Hawk device, satisfied the requirement of being mounted to the frame. For example:

What we see in Exhibit 59 is a single mounting point. It's at the frame. And attached to that through this mount as well as through this cylinder is the fertilizer opener, the fertilizer knife. To me then, this shows that there is mounted to the frame the fertilizer knife. It is mounted to the frame utilizing a trip assembly which essentially is formed by the hydraulic cylinder. That provides its conductivity to the frame.

Testimony of David Schaaf, Transcript, February 10, 2003, at p. 5283.

[145]        Mr. Schaaf's testimony amounts to saying that the fertilizer knife is mounted to the frame because it is mounted to an element which is itself mounted to the frame. Figure 1 of the patent shows the fertilizer knife to be mounted to the frame by means of the bracket 10, the shank 11 and the bracket 14. Figure 5 shows the fertilizer knife assembly and the single mounting member both attached to the shank 111. Given that the specification uses the word knife to refer to the portion of the assembly which actually opens the furrow, that device requires intermediate hardware in order to be mounted to the frame if the frame is to be more than a few inches above the ground. The specification reflects this:

A shank 11 is mounted upon the underside of the cross-members 10 by means of a conventional U-bolt assembly 12 and, if desired, a trip mechanism 13 may be incorporated for the shank 11. This shank 11 curves downwardly and rearwardly from the U-bolt assembly and terminates in a bracket 14 which is situated just above the ground surface when the tool is in the working position and the entire placement assembly is mounted to the shank 11 via this bracket 14 and other connections

which will hereinafter be described.

                                                                     [...]

The bracket 14 carries one furrow opening knives [sic] secured to the bracket by means of bolts 16 with the knife extending downwardly and facing forwardly at a slightly inclined angle...

Patent, at p. 6 and 7.

Consequently, the means mounting the knife to the frame must include more than simply a bracket.

[146]        In the case of the Seed Hawk device, the hanging bracket 13 is mounted to the frame by means of the U-bolts 17. The placement arm pivots from the hanging bracket and the fertilizer knife assembly in turn pivots from the placement arm. To the extent that something could be said to be mounted on the frame, it is the hanging bracket. The placement arm is pivotally attached to the hanging bracket and the fertilizer knife assembly is pivotally attached to the placement arm. Mr. Anderson's evidence on this point distinguishes between being mounted on the frame and being suspended from the frame:

In contrast, the Seed Hawk device is designed so that each fertilizer and seed knife is independently and, individually pivotally suspended from the frame. The fertilizer knives are not "mounted" to the frame rigidly in the sense taught by the Halford specification and as disclosed in the Halford device, rather they are on an arm which is suspended from the frame and which pivots therefrom. This was a substantial departure from older technology applicable to chisel plows and cultivators. The fertilizer knives do not rise directly as the frame rises as in the Halford device; rather, each adjusts separately and independently so as to stay at a constant depth with respect to the ground surface.

Affidavit of Clifford Anderson sworn February 3, 2003, at para. 41.

[147]        I am not certain that this distinction can be maintained. To be consistent Mr. Anderson would have to say that the fertilizer knife assembly is also suspended, since it pivots from the placement arm, just as the latter pivots from the hanging bracket. If one is to be consistent in the use of the word "knife", the element of the Seed Hawk device which is comparable to the fertilizer knife 15 is the fertilizer knife 8 on Figure 2. The knife 8 is bolted to the trip plate which is, in turn, pivotally mounted on the placement arm, which is itself pivotally mounted on the hanging bracket which is bolted to the frame. Given that series of connections, I think it is a poor use of language to say that the fertilizer knife is mounted on the frame.

[148]        Mr. Schaaf's argument that the fact of a single mounting point means that the fertilizer knife (as well as everything else on the placement arm) is mounted on the frame is simply over inclusive (see Rebuttal Evidence of David Schaaf, Transcript, February 10, 2003, at p. 5283).

[149]        It is my opinion that the fact of mounting the fertilizer knife on an arm which is itself pivotally attached to a bracket attached to the frame is a variant from that which is described in the patent. Is it a variant which has a material effect upon the way in which the machine works? This can only be answered by understanding how the invention described in the patent works.

How does the invention work?

[150]        Based upon the description in the claim, I understand that the invention places two materials in the ground by means of a knife means which cuts a furrow in which a first material is deposited through a first tube means while a second material is deposited by a second tube means which engages the soil in the furrow created by the knife means. But, it is not enough to place two materials in the soil in one pass. They must be placed at a particular depth and in a particular relationship, one to the other. According to the Seed Hawk defendants' expert,                Mr. Anderson, the attachment of the fertilizer knife to the frame means that the depth of tillage of the fertilizer knife is controlled by the height of the frame:

33. During operation of the Halford device, the frame is lowered from position (20A) to position (20)*. This sets the depth of the knife (15) in the ground as the knife (15) is in rigid connection to the frame (10) by the knife shank member (111 and 113) and the bolt and retaining plate system (12). As the frame (10) moves forward, the knife (15) cuts a furrow and the fertilizer is deposited by a tube (18) through an opening in the tube's bottom (?) into the furrow behind the knife (15).

Affidavit of Clifford Anderson sworn February 3, 2003.

*numbering substituted as previously noted

[151]        Mr. Anderson went on to say that because of this rigid attachment, placement of the seed would not always be in a consistent relationship with the fertilizer:

37. As the frame (10) moves forward over the ground, the knife's (15) position and the position of the bottom of the first tube (19) are fixed with respect to the frame as they are rigidly attached to the frame by members (112 and 113) and (12). However due to the flexible spring (431) and the ability of the mounting arm (352 and 353) to rotate about point (unmarked, the point at which arm (352 ) is fastened to shank (111)) , the second tube opening (444) is not fixed relative to the first tube opening (19). The reason the mounting arm (352 and 353) can rotate about point (unmarked, as above) is that the packer wheel (38) rolls along the inside of the furrow and will move up and down relative to ground level depending upon the amount of backfill of loose soil in the furrow. As relative spacing between the open end of the fertilizer tube (19) and the open end of the seed tube (444) cannot be maintained, the relative placement of fertilizer and seed in the furrow cannot be maintained.

* numbering substituted as previously noted.

[152]        Mr. Anderson admitted in cross-examination that his description of the invention was largely limited to what was shown in Figure 5 of the patent, even though the patent contemplates more than one embodiment of the invention. It does not necessarily flow from this that                   Mr. Anderson's description is false. His analysis of the operation of the invention may be accurate as to one embodiment. His error would consist in treating the characteristics of a single embodiment as applicable to the invention itself in all its possible embodiments.

[153]        Dr. Tessier rejected Mr. Anderson's view as to the rigid attachment of the knife means to the frame at paragraph 376 of his affidavit sworn October 25, 2000, a passage cited earlier in these reasons (see para. 40). I repeat it here for ease of reference:

It is clear that Mr. Anderson is of the view that it is an essential element of the invention that the knife is mounted on the frame in such a manner that the depth of the fertilizer tool is controlled solely by the height of the frame which is adjustable. However, this is clearly incorrect in that the patent states in the paragraph bridging pages 10 and 11 that:

the operator then adjusts the packer/depth control wheel 38 of each individual unit by means of the adjustment rods 40 to obtain the desired depth of operation of the primary tillage tool in the form of knife 15 and hence the depth of the fertilizer and/or seed which exits through the tube 18.

The adjustment is effected subsequent to, and as a separate step from the adjustment of the working height of the frame. This adjustment is allowable due to, for example the spring connection 13 between the shank 11 and the frame. Thus, the spring 13 is applying a force downwardly on the fertilizer tool and on the elements behind the fertilizer tool, with the depth being controlled by the height of the packer wheel relative to the fertilizer tool. This arrangement is substantially identical to the arrangement of the Seed Hawk, with the exception that the spring 13 is replaced in the Seed Hawk machine by a hydraulic cylinder and is located at a different position.

Affidavit of Dr. Tessier sworn October 25, 2000, at para. 376.

[154]        In his response, Dr. Tessier criticizes Mr. Anderson's view of the embodiment shown in Figure 5 by reference to the description of the embodiment in Figure 1. Dr. Tessier's criticism is only valid if one assumes that the characteristics of the first embodiment apply to all embodiments of the invention, which is the same error which Mr. Anderson made in relation to the embodiment represented in Figure 5.

[155]        I do not believe that this passage is of any assistance in dealing with Claim 1 as it does not refer to connecting rod 40 or to spring 13. If those are the means contemplated for the adjustment of the depth of the fertilizer knife, the absence of a reference to them in Claim 1 means that the only possible adjustment of the depth of the fertilizer tool is the height of the frame.

[156]        In cross-examination, Mr. Anderson conceded that none of the claims specified that the depth of cultivation was controlled by the height of the frame but he was able to point to the following part of the specification in support for his position:

In operation, the total seeding machine is lowered to working position and held by the normal wheels (not illustrated) supporting the structure...

Patent, at p. 10.

[157]        However, he was compelled to concede that the specification refers to the independent adjustment of the fertilizer knife:

Q. In fact the specification tells you that fertilizer depth is independently adjusted. Correct?

A. It states that it's independently adjustable in Figure 1, embodiment, by means of adjusting the rod, an adjustment rod.

Q. If that's so, sir, if you take the specification then at face value, how can the last sentence of paragraph 40 where you say "the depths of the fertilizer knives do not individually follow the terrain" be correct in all cases?

A. Well, because the adjustment referred to is a physical adjustment that adjusts primarily the seed tube and packer wheel with respect to the frame in Figure 1, but it doesn't -- you don't adjust it every time you go over a hill. In other words, it adjusts it for primary adjustment to start with, but it doesn't self-adjust.

Q. But you do agree that there is independent adjustment for each unit of fertilizer depth?

A. There is. Some independent adjustment. But as I stated, that doesn't mean that the fertilizer knives will follow the contours of the terrain.

Q. But doesn't the flexibility of the spring shank in Figure 5, your exhibit D, if you will, allow the individual knives to follow the terrain?

A. It would allow some minor movement.

Transcript, February 4, 2003, at p. 4459-4461.

[158]        It appears from this that Mr. Anderson has shifted somewhat his ground. He has gone from saying that the working depth of the fertilizer knives is a function of the frame height, to saying that the working depth of the knives is a matter of "some" independent adjustment. He then goes on to say that this independent adjustment will not allow the fertilizer knife in the invention to follow the contour of the ground, which was not part of his original assertion.

[159]        On the other hand, Mr. Schaaf's evidence was that the use of the adjustment rod 40 resulted in the entire assembly shown in Figure 1 becoming rigid so that the packer wheel acted as a gauging wheel. See Transcript, June 20, 2002, at p. 3066-3070. He did not speak of the adjustment rods providing any adjustment of the depth of the fertilizer knife. On examination of Figure 1, it seems obvious that the force applied by adjustment rod 40 will cause the bell crank 30 (comprised of vertical member 36 and horizontal member 35) to rotate about point 37 so that the force ends up being applied to the axle 39 of wheel 38, forcing the wheel into the ground. And since the entire assembly from bracket 25 to axle 39 is under the influence of the force, it will indeed act as a rigid unit as indicated by Mr. Schaaf.

[160]        What is the effect of this adjustment on the working depth of the fertilizer knife? One is therefore driven to inquire as to the effect of the force acting on pivot 37 in relation to spring shank 11. The fact that the force applied by adjustment rod 40 forces the packer wheel into the ground means that the upper arm 36 of bell crank 30 must necessarily be rotated rearwardly by the action of the force. If one imagines upper arm 36 continuing to rotate rearwardly, one can see that lower arm 35 and wheel 38 would rotate forwardly around point 37 so that at some point wheel 38 would be directly under point 37. At that point knife 15 would necessarily be raised

some distance out of the soil. In operation this does not happen because the forward rotation of the wheel 38 is resisted by the weight of the frame through shank 11. But, it does make the point that the force which presses the packer wheel into the ground also tends to raise the fertilizer knife from its original position. The degree of movement of the fertilizer knife as a result of the action of adjustment rod 40 is a function of the force applied at point 37 and the resistance to that force offered by shank 11 and the frame. Given Mr. Schaaf's evidence that the entire unit operates as a rigid assembly, I conclude that there is limited movement of shank 11 since continuous flexing of shank 11 is incompatible with a rigid assembly. The conclusion which I draw from this is that the function of the adjustment rod 40 is to apply a force to the wheel 38 and to keep the entire assembly rigid so that the fertilizer knife and the seed tube move in tandem.

[161]        This is contrary to the conclusion expressed by Mr. Anderson in relation to the embodiment represented by Figure 5 of the patent. I must avoid the error into which the experts fell. I must not define the invention by reference to the characteristics of a single embodiment. Consequently, I should have regard to the operation of the embodiment represented by Figure 5.

[162]        In Figure 1, a force is applied to the packer wheel by means of a lever constituted by the bell crank 30 (comprised of arms 35 and 36). The force is applied at one end of the lever, at point 41 on arm 36, the fulcrum is between the two ends of the lever at point 37 and the work to be done, or the object to be moved is at the other end of the lever, the axle 39 of wheel 38. But

for the fact that the arms are at an angle to each other, this is a lever like a child's teeter totter. In Figure 5, force is also applied by a lever but one with a very different configuration. The lever consists of the member 351. The fulcrum is located at the point where member 351 is mounted to shank 111, the point immediately above the numeral 113 on Figure 5 in Schedule 1. The force is applied at a point along the length of the lever where member 361 is joined to the lever 351 while the object to be moved, or the work to be done is at the other end of the lever, i.e., the axle of wheel 38.

[163]        The lever represented in Figure 5 is equivalent to a swinging door where the hinges are on one edge of the door, and the work to be done is to move the other edge through the doorway. Common experience suggests that the closer to the hinges one applies the force, the more force is required to open the door. The door opens most easily when the force is applied at the edge of the door opposite the hinge. The point of this discussion is to suggest that it is likely harder to lift knife 15 from its original position using the lever in Figure 5 than the lever shown in Figure 1. Another way of making the same point is to say that in the embodiment represented by Figure 1, the variable which determines the amount of force required to move the knife 15 a given distance is the position of the fulcrum, whereas in Figure 5, the variable which makes the difference is the point at which the force is applied to the lever. The point I seek to make here is that it is likely to require considerably more force to make the entire unit rigid in the embodiment represented by Figure 5 than in the embodiment represented by Figure 1. To that extent, Mr. Anderson may be correct.

[164]        Unlike the arrangement in Figure 1, the configuration represented in Figure 5, particularly the spring 431 on adjustment rod 401, means that while the entire assembly is under the influence of the force generated by the adjustment rod, the ability of the spring 431 to allow upward movement of the wheel 38 means that the assembly is not rigid. Consequently, wheel 38 gauges only the depth of seed placement since the pivot point and the spring 431 allow the single mounting member to move independently of the fertilizer knife. This possibility of independent movement is a result of the fact that the knife is mounted on the frame while the packer wheel and seed tube are mounted on the single mounting member.

[165]        What can be said about the ground following characteristics of the invention based upon the features of the invention disclosed by the two embodiments described in the specification? As noted, the embodiment represented by Figure 1 is rigid in operation. The movement of the packer wheel is communicated by the two arms of the bell crank to the adjustment rod to the bracket 25 which is at the upper end of shank 11. Consequently, if the ground under the assembly rises while the frame remains relatively level, the possibility of upward movement of the shank 11 is resisted by the rigid connection of upper arm 36 to adjustment rod 40 to bracket 25. The result is that the fertilizer knife and seed tube will work deeper into the rising ground than they did in the flat ground around it. This effect might be overcome by the inclusion of the optional trip mechanism 13 but the amount of upward movement permitted would be a function of the amount of force acting on the spring 13. In other words, the depth control would not be

governed by ground movement but by the resistance offered to the upward rotation by the spring.

[166]        If the ground under the assembly in Figure 1 fell away while the frame remained relatively level, the force acting on the packer wheel would have it follow the ground but it could only do so by rotating around pivot 37. Since there is no mechanism to allow movement of the shank 11 to follow the ground, it would remain in position as the ground fell away, resulting in the fertilizer knife working shallower as the ground fell away. The packer wheel would tend to follow the ground, by rotating about point 37, as a result of the force applied to it by rod 40.    But, as the ground fell away, the amount of pressure applied to the single mounting member would decrease until the adjustment rod was no longer applying a force to the single mounting member, but was restraining arm 36 from rotating rearwardly. At that point, the packer wheel would simply float, held in place by rod 40's resistance to the rotation of the single mounting member about pivot point 37.

[167]        What is the situation with the embodiment represented by Figure 5? If the ground under the assembly rose while the frame remained relatively level, the pivot point immediately above the numeral 113 would permit the upward rotation of arm 351 against the spring 431. As a result, the packer wheel and seed tube could maintain relatively constant depth as the ground rose. The position of the fertilizer knife, on the other hand, would remain relatively fixed as its upward rotation would be resisted by shank 111, which is relatively stiff. If the ground fell away however, the downward rotation of arm 351 would be resisted by rod 401 as it is inelastic.

Consequently, as the ground fell away the packer wheel would be unable to follow it with the result that the seed depth would become shallower. If the ground fell away sufficiently, wheel 38 could once again end up floating above the ground, held there by the resistance offered by rod 401 to the downward rotation of the single mounting member.

[168]        The fertilizer knife would not respond to the change in ground level as its working depth is not gauged by the packer wheel but by the frame and the relatively stiff (compared to shank 11) shank member 111. The addition of the optional trip mechanism 13 would have the same effect as it does in Figure 1. Any change in working depth of the knife would be the result of overcoming the resistance of the spring 13 and only indirectly as a result of a rise in ground elevation. These effects are the result of the fact that the knife is mounted to the frame as opposed to the single mounting member.

[169]        What does this tell us about the operation of the invention? It tells us that the device by which the placement of seed relative to the fertilizer is to be accomplished is the pivotal attachment of the single mounting member to the knife means . It also tells us that the design allows the single mounting member (packer wheel and seed tube ) to move independently of the fertilizer knife so that seed and fertilizer may not always be deposited in the desired relationship. The design element which allows this to happen is the differential movement of the seed tube and the fertilizer knife. None of this is a problem as long as the relationship of soil surface to the frame remains relatively constant.

The operation of the Seed Hawk device

[170]        The following description of the operation of the Seed Hawk device is taken from the affidavit of Mr. Anderson:

41. ...the Seed Hawk device is designed so that each fertilizer and seed knife is independently and, individually pivotally suspended from the frame. The fertilizer knives are not "mounted" to the frame rigidly... rather they are on an arm which is suspended from the frame and which pivots therefrom. ... The fertilizer knives do not rise directly as the frame rises...; rather each adjusts separately and independently so as to stay at a constant depth with respect to the ground surface.

42. An advantage of independently suspending or activating each of the multiplicity of fertilizer and seed knives is that, on uneven terrain, each knife can more readily adjust to the ground level. In this way, consistent depth placement of fertilizer and seed is attained. ...

                                                                    [. . .]

46 ... In the Seed Hawk device, which does not utilize the raising and lowering of the frame, the packer wheel gauges, or controls, the depths of both the seed and fertilizer systems. That is because on the Seed Hawk device, the fertilizer delivery system, seed delivery system, and wheel are all mounted to a single mounting arm, pivoting on the frame. A hydraulic system applies force downward on the packer wheel. It is not necessary that the seed knife and packer wheel pivot in relation to the fertilizer knife. In fact, if they did, the Seed Hawk device would not function properly because proper fertilizer depth is controlled by the packer wheel... and therefore the fertilizer knife in the Seed Hawk device must be rigidly associated with the packer wheel...

[171]        This can be supplemented by the evidence of Mr. Norbert Beaujot, speaking of the process by which he came to the design of the Seed Hawk device:

...I started realizing after this that if I used a long arm I didn't need a front gauging device. I could just use the packer wheel if I moved the knives close to the packer wheel. Then the knives would be both gauged by the -- by the packer wheel instead of from the frame.

Transcript, June 20, 2002, at p. 3157.

[172]        The significance of gauging the depth of placement by the packer wheel was explained by reference to Exhibit 59, a full scale working model of the Seed Hawk device. In relation to the model (which I take to be representative of the devices in issue in this action, subject to variations introduced in various model years), Mr. Beaujot said:

This model, as far as the ground portion, was made to lift and lower to show that the both knives, in fact, follow the terrain with the direction of the packer wheel itself. The packer wheel determines the depth of the seed and the fertilizer. Because the two knives are close to the packer wheel and quite away from the frame, they pick up the depth accuracy primarily from the packer wheel.

Transcript, June 21, 2002, at p. 3252.

[173]        During cross-examination, Mr. Anderson qualified some of his evidence as to the operation of the Seed Hawk device:

Q. What happens to the Seed Hawk device or did you know as of February as of February 28, 2000 when you swore your affidavit, if the frame member that you've numbered 1 on Exhibit C - do you see that?

A. Yes.

Q. What happens if that is moved down by a significant amount of say half the distance from the ground?

A. It changes the geometry of the arm.

Q. Would it not be the case that the fertilizer knife would then go deeper into the ground as a matter of simple geometry?

A. With respect to the packer wheel, yes it would.

Q. The packer wheel is still on the ground obviously?

A. Yeah. If you move it a significant distance, you're talking about half the distance -

Q. Yes.

A. - Maybe two feet -

Q. Yes

A. - yes, it would change the geometry.

Q. So the kind of effect would occur if you installed the Seed Hawk device as you've shown in Exhibit C on a frame that goes go [sic] up and down?

A. If you had a frame that went up and down significant distances, like hydraulically operated, yes, it would change the geometry and the depth of the fertilizer knife. But the machine is not designed that way, is my understanding.

Transcript, February 4, 2003, at p. 4464-4465.

[174]        In a later exchange, Mr. Anderson further qualified his position:

Q. I think that you've already agreed that if you were to move the frame down by a foot, that would change the vertical position of the knife means?

A. Well the vertical position of the knife means only as related to the position of the packer wheel, but the frame itself doesn't move the knife means. The thing that moves the knife means is the subsystem which is hydraulically biased.

Q. Which is hydraulically biased from the frame?

A. From the frame.

Q. So if you move the frame down.

A. If you move the frame down, the arm goes up. The subsystem goes up. With respect to the frame that is. In other words, if you move the frame down a foot, the knife doesn't go down a foot.

Q. It goes down half a foot?

A. It goes up a foot.

Q. It goes up a foot?

A. With respect to the frame.

Q. I see, with respect to the frame. But does it not go lower in the ground?

A. Right.

Q. It does?

A. It does or it doesn't?

Q. That's what I'm asking you.

A. It may go marginally lower into the ground because of the geometry changing slightly. But it doesn't move directly as the frame moves.

Q. If you're saying that it's halfway between the frame and the packer and the frame goes down by a foot, would it not go down about half a foot, the knife due to the geometry?

A . If it was halfway it would, yes.

Q. All right, that's what I understand.

A. Maybe a third.

Transcript, February 4, 2003, at p. 4549-4551.

[175]        In their Written Argument, the plaintiffs rely on these passages in support of the proposition that if the fertilizer knife is approximately one half the distance from the packer wheel, the fertilizer knife will move approximately one half the distance the frame moves relative to the ground. With respect, I am not certain that this is the case.

[176]        I must say, that I have difficulty understanding this evidence. The frame of the Seed Hawk device is mounted on wheels. There is no evidence of adjustability of the frame relative to the wheels by hydraulics as there is in the case of the Conserva Pak (Transcript, November 7, 2000, at p. 349). Consequently, the frame does not move relative to the ground though the level of the ground under the frame may vary at points between the wheels.

[177]        In order to understand the relative movements of the opening of the fertilizer tube, the seed tube and the packer wheel, one can conduct a simple mental experiment. Let us call the pivot point on the hanging bracket O, and the opening of the fertilizer tube X, the opening of the seed tube, Y and the point of the contact of the packer wheel at the soil surface, Z. In operation, these points are in a fixed relationship to each other. The position of the seed tube relative to the packer wheel is a matter of a mechanical connection. The position of the fertilizer tube relative to the seed tube is fixed so long as the trip plate's forward movement is restrained by the chain 10.

[178]        In those circumstances, one can conceive of the point X tracing a circle about point O as the placement arm is rotated 360 degrees about point O. That movement traces a circle because as long as point X is restrained in place by the chain, its position relative to O will not change. So OX is the radius of the circle traced by X as it rotates about point O. The same is true respectively of OY and OZ. One can see as well that OX, OY and OZ are the radii of three concentric circles whose common origin is O. They are concentric because they all have the same origin or, in mechanical terms, pivot point. If that is so, the points X, Y and Z should maintain their positions relative to each other as the placment arm pivots about the pivot point O.

[179]        One can test this by thinking of a hubcap on a tire. If one makes a mark at the 3 o'clock position on the edge of the hubcap and a mark at the 6 o'clock position on the edge of the tire, those two marks will always be in the same position relative to each other as the tire goes through a complete revolution. Each will trace a circle with its own radius but the line from the centre to the 3 o'clock point will always be at 90 degrees to the line from the centre to the 6 o'clock point. So it is with OX, OY and OZ. This means that point X will always be in the same position with respect to point Y and both of them will always be in the same position relative to point Z. Since X is the opening of the fertilizer tube, Y is the opening of the seed tube and Z is the point of contact of the packer wheel with the soil, the relative depth of seed and fertilizer relative to the surface of the soil should be maintained.

[180]        In my view, Mr. Anderson's response that the working depth would change marginally due to the change in geometry is generally correct. I take his response to the last part of counsel's question to be a reference to movement relative to the frame as it clearly is not true relative to the position of the fertilizer knife in the ground.

[181]        What does this mean in terms of the operation of the Seed Hawk device? It means that the possibility of differential movement between the fertilizer knife, the seed knife and the packer wheel is severely constrained due to the fact that they are all mounted on a common member.          In practical terms, it means that the Seed Hawk will be successful in maintaining consistent

relative placement of seed and fertilizer when the position of the ground varies with respect to the frame.

Material change in the operation of the invention

[182]        All of that said, does the fact of mounting the fertilizer knife on the placement arm instead of on the frame have a material effect upon the operation of the invention? I understand the expression "material effect upon the operation of the invention" to mean that the variant causes the device to work in a way which either produces a different result, or produces the same result in a different way. However, as noted by Laddie J. of the Chancery Division in Merck & Co. v. Generics (UK), [2003] All E.R. (D) 418 at paragraph 67:

As Hoffman J. said in relation to Improver question (1), whether use of a product or process outside the a contextual scope of a claim has a material effect on the way the invention works depends upon the level of generality at which one describes the way the invention works.

[183]        In the context of Claim 1 we are speaking of the difference of the operation of the Seed Hawk device compared to the Halford invention as a result of mounting the fertilizer knife upon the placement arm rather than on the frame. As the preceding analysis of the operation of the invention shows, working depth is controlled by the height of the frame. To the extent that working depth can be adjusted, it can only be adjusted by means of elements which are not included in Claim 1 such as the adjustment rod or spring biasing and the single mounting

member. Consequently, in terms of Claim 1, the fact of mounting the fertilizer knife on the frame means that the only means of depth control is the height of the frame. This does not allow for consistent relative placement where the position of the soil surface varies relative to the frame. Furthermore, the absence of a single mounting member for the seed tube and packer wheel in Claim 1 means that the depth of seed placement cannot be gauged by the packer wheel.

[184]        In the case of the Seed Hawk device, the fertilizer knife (and tube) and the seed knife (and tube) are mounted on a common member, the placement arm. Because of their placement on that common member, the possibility of differential movement between the tips of the fertilizer knife and the seed knife is constrained. The result is consistent relative placement of seed and fertilizer as the soil contour varies under the frame of the machine. This is a material difference in the manner of operation contemplated in Claim 1 where the fertilizer knife depth is controlled by the frame, and those elements necessary to control of depth of seed placement are lacking.

[185]        Even though one speaks of the absence of mounting the fertilizer knife to the frame as a variant, it should be apparent that the real variant is the fact that the fertilizer knife (and tube), the seed knife (and tube) and the packer wheel are all mounted on a common member which move in concert relative to the frame. Consequently, it is not the bare fact of not being mounted on the frame which accounts for the difference in the mode of operation. It is the fact of not being mounted on the frame as well as the way that the three elements are mounted on the same member. For that reason, this same logic will apply where the identified variant relates

essentially to the placement of the three essential elements on a common member.

2) Second variant: lateral adjustment of the fertilizer knife

[186]        This variant has to do with the adjustment of the lateral separation between the fertilizer tool and the seed tool. Claim 1 calls for a second tube means which is adjustable to provide at least side to side adjustment of the tube means relative to the fertilizer knife means. In the Seed Hawk device, the seed knife and seed tube are not intended to be adjusted side to side. Lateral adjustment between the fertilizer tube and the seed tube is to occur by moving the fertilizer knife sideways by the insertion of spacers between the fertilizer knife proper (as opposed to the fertilizer knife assembly) and the trip plate. As a result, there is adjustment of lateral spacing but no side to side adjustment of the seed knife and seed tube.

[187]        I have little difficulty in concluding that the means by which lateral adjustment is effected has no effect upon the operation of the invention described in Claim 1. This manner of effecting lateral separation "perform[s] substantially the same function in substantially the same way to obtain substantially the same result" as the invention. Free World Trust, supra, at para. 55. Similarly, such a minor variant must have been obvious to a person skilled in the art at the time of the publication of the patent. Finally, while the claim does specify that it is the tube which is to be moveable relative to the fertilizer knife, there is no reason to believe that the inventor intended literal compliance with that aspect of the patent. Consequently, this variant would

result in a finding of infringement.

3) Third variant: the engagement of the soil by a seed knife:

a) Material effect upon operation of the invention

[188]        Claim 1 describes the second material delivery means as projecting downwardly and engaging the soil within the furrow and consisting solely of an outer surface of the second tube means.    The Seed Hawk device utilizes a seed knife to which is attached a seed tube. I have already decided that a seed knife to which is attached a tube cannot be treated as the second tube means described in the patent. Consequently, the question of whether there is a variant has already been decided. The question which remains is whether the variant affects the operation of the device in a material way.

[189]        A purposive reading of Claim 1 suggests that the function of the second material delivery means is to deliver a second material (seed) at a defined position and distance from the first material (fertilizer). This is accomplished by providing for the lateral adjustability of the second tube means and its engagement in the furrow. A reader skilled in the art would understand that engagement in the furrow refers to the placement of seed in the furrow at a particular depth.

[190]        The Seed Hawk device has a second material delivery means consisting of the seed knife 6 and the seed drop tube 7 whose function is to place the seed at a defined position relative to the first material, the fertilizer. In the Seed Hawk device, lateral separation is achieved by adding a spacer between the placement arm 15 and the trip plate which increases the lateral separation between the two material delivery tubes (see Seed Hawk manual for serial number 201196 Exhibit R to the affidavit of David Schaaf sworn October 30, 2000.) The engagement in the furrow is provided by the seed knife to which the seed tube is fastened.

[191]        Do the seed knife and tube in the Seed Hawk device perform substantially the same function in substantially the same way as the second tube means in Claim 1 so as to achieve substantially the same result? Claim 1 consistently refers to "the" furrow as it contemplates that there is a single furrow and that it is opened by the fertilizer knife. The Seed Hawk defendants argue that the seed knife cuts a separate furrow which may overlap with the furrow created by the fertilizer knife but which is a separate furrow nonetheless. Among the advantages claimed for the invention is the fact that " the seed can emerge from the side wall of the slot and avoid coming through the base of the slot where fine soil may be washed in, hardened and thus seal the seed and prevent same from emerging." Both Mr. Halford (Transcript, November 6 2000 p. 68 at line 9) and Mr. Harapiak (Transcript, October 22, 2001 at line 24), an expert called on behalf of the plaintiffs, used the word slot to refer to furrow. I take it from this that the slot in question is the furrow, and not the opening in the seed tube.

[192]        If that is so, then the advantage of the side to side adjustment is the ability to place the seed so that it can emerge from somewhere other than the bottom of the furrow where it risks

being encased in fine hardened soil. In this context, is there a substantial difference between placing the seed along the sidewall of the original furrow or somewhere within a second furrow which overlaps the first? Since the question of the second furrow arises in the next variant, I will defer my conclusion on this issue until I have examined and resolved that question. However, for purposes of this analysis, I will move on to the last question of the Improver analysis.

b) Obviousness of the variant to a person skilled in the art as at the date of publication of the patent

[193]        The next question is whether this variant would have been obvious at the date of publication of the patent to a reader skilled in the art? There is little evidence on this point but given the nature of the elements in question, I would have difficulty concluding that it would occur to a person skilled in the art that a seed tube could be secured to a second knife.

c) Did the inventor intend strict compliance with the terms of the claim?

[194]        The final question in the Improver analysis is to determine if a reader skilled in the art would have understood from the language of the claim that the patentee intended strict compliance with the language of the patent. In this case, the inventor stipulated that the soil engaging element of the second material delivery means consisted solely of an outer surface of the second tube means. The question is whether the use of the emphatic term "solely" conveys an intention that strict compliance is required. Had the claim simply said that the ground

engaging element of the second material delivery means was to be provided by "an outer edge of the second tube means", the question of strict compliance would not be an issue. But, the use of the word "solely", indicates to me a clear intention to exclude additions or modifications to the second tube means.

[195]        The plaintiffs' expert Dr. Tessier would not agree that the use of the word "solely" precluded the use of another element in support of the second tube means. This is what he said in cross-examination:

Q. And consisting solely of an outer surface of said second tube means. Consisting solely of an outer surface of said second tube means. So what engages the ground within the furrow rearwardly of the fertilizer knife consists solely of an outer surface of said second tubing. So can we agree that in order to assist the Court in understanding that portion of the claim, then we have to have a situation where there is no knife in front because the tube, as it says right here, must be the part of it that engages, solely engages the soil; consisting solely of an outer surface of said second tubing; consisting solely of. Nothing else can be there, it must be only the tube; correct?

A. As a matter of fact, when this particular unit is moving in the ground, the outer surface which are the sides definitely are in contact with the soil. And my reading again of the patent is that you could have a wide range of narrow type openers that would fit this particular description.

Q. But when it uses the words -- and let's try to assist the Court. When the words say engaging the ground within the furrow, okay, within the furrow, that begs the question whether it's within the furrow or not. That's another issue we have to address, right? Within the furrow.

A. Is there a question here?

Q. No, I'm just laying the groundwork for this. At a position rearwardly of the knife means, we're talking about the second tube, and consisting solely of an outer surface of said second tube means. So that is the only portion that is actually contacting the ground. It's got to be solely of an outer surface of said second tube means. There can be nothing in front; otherwise if there is, then there's something else that's also contacting the ground.

A. This is not my reading of the claim, nor that of most people skilled in some way of the art.

Q. So you would ignore the words consisting solely of an outer surface of said second tube?

A. Well, I do appreciate that the surface of the second tube does come in contact with soil, and that certainly is the case in all of the production model there. Other than that -

Q. But not solely?

A. -- my reading is that we're talking about -- my reading of the claim, within the context of this particular invention and the way it's described, we're talking about a narrow hoe type opener of particularly light duty.

[196]        This testimony is completely unpersuasive as it does not address the use of the word "solely" as illustrated by Dr. Tessier's comment that the sides of the tube would be in contact with the soil. The issue is not whether the tube is in contact with the soil; it is whether the soil engaging function of the second material delivery means consists solely of an outer surface of the second tube means. Further, Dr. Tessier's premise is false; the second tube means does not consist of a tube and a reinforcing member in the nature of a narrow hoe opener and a tube.

[197]        As a result, I can see no reason not to give the word solely its usual meaning, in the absence of any credible evidence that it was intended to have some other meaning, or that it has a technical meaning in this context. The language of the patent would suggest to the skilled reader that strict compliance with this particular requirement was intended. If that is the case, the absence of that requirement, or its substitution by an equivalent element cannot be infringement.

[198]        In the case of the Seed Hawk device, ground engagement is not effected solely by means of an outer surface of the second tube means. The fact that the seed knife and seed tube were an integral assembly from 1993 to 1995 does not change this (see Exhibit AAA to the Affidavit of Dr. Tessier sworn October 25, 2000). I have already decided that a tube coupled to a knife cannot be the second tube means referred to in the patent. Consequently, the engagement of the soil by the leading edge of this tool would not constitute engagement of the soil solely by an outer surface of the second tube means. As a result, this element takes the Seed Hawk device outside Claim 1.

4) Fourth variant: the creation of a second furrow by the seed knife.

a) Material effect upon the operation of the invention

[199]        The next variant has to do with the question of whether the seed knife and seed tube in the Seed Hawk device engage the ground within the furrow or whether they create their own furrow. The first question is one of fact: what does the seed knife do as it moves through the soil? Does it follow in the furrow created by the fertilizer knife, or does it create its own furrow? If it does create its own furrow, is this a variant which has a material effect upon the way in which the invention described in Claim 1 operates?

[200]        There was evidence on the operation of the seed knife from Dr. Tessier, Mr. Schaaf and Mr. Beaujot. That which I found most convincing came from Mr. Schaaf under                      cross-examination as to the content of his field notes. Mr. Schaaf had conducted experiments with the Seed Hawk device, one of which consisted of measuring the width of the furrow after the passage of the fertilizer knife and again after the passage of the seed knife.

[201]        In his evidence in chief, Mr. Schaaf acknowledged that the seed knife created "its

own opening of a furrow within the furrow created by the fertilizer opener" (Transcript, June 19, 2002, at p. 2891). But, the tenor of his evidence was that the Seed Knife was simply scraping the side of the furrow created by the fertilizer knife. I reproduce here a portion of the discussion with respect to furrow walls:

The second opener, which is the seed opener, is then running in behind it. What it is doing is it running so that it is scraping, it's disturbing, it's moving a little bit of the outside edge of that first furrow that was created by the fertilizer opener. And, of course, at the same time it is then displacing and moving the loose soil that was let back in the original furrow that was created. That running along the edge can be described as creating a scraping action where you are actually just scraping along the edge of the furrow.

[202]        The impression left is that of a minor displacement at the furrow wall. However,           Mr. Schaaf produced his field notes and was cross-examined on them. The measurements which he took as to furrow width were most revealing:

Q. Okay. So am I correct then that what you did here -- what you're doing here is you created a furrow using only the fertilizer knife?

A. No. In this case what we did -- no, in this case what I did is I wanted to take a look at the furrow that was created in behind the fertilizer knife.

Q. Okay.

A. At Exhibit 8, it's looking at this point here.

Q. Fine. That is between the fertilizer knife, and if I may use the term, the seed knife, okay?

A. Yes.

Q. All right. Okay. So now we see the effect of the fertilizer knife alone in creating a furrow.

A. Yes.

Q. Okay. And the next one then, is that taken after the -- and I will call it the seed knife has passed through?

A. That is correct. It would be taken at this point here --

Q. Just behind the seed knife and the seed tube.

A. Yes, just behind. And in front of the packer.

Q. Thank you, sir. And now we see that the top of the furrow is now four and a quarter inches; right?

A. That is correct, it becomes wider.

Q. Yes. And it's still the same depth, two and a quarter inches.

A. Yes.

Q. So can we agree then that if I can use the term the seed knife has changed the configuration of this furrow from three inches to four and a quarter at the top; right?

A. Yes.

Q. Yes. And the difference of an inch and a quarter is due to the seed knife, as I used the expression.

A. Yes.

Q. Okay. So can we agree then that what appears to be here, this, the seed knife, if you will, is doing more than simply following in the furrow of the fertilizer knife because it has created a wider furrow.

A. It's still following within the furrow because you're within the furrow that was originally created. As it follows within that furrow it displaces some soil that has back-filled into the furrow from in behind this fertilizer knife, but at the same time, as it's coming through, it cuts through here and starts to cut, starts to scrape along the wall and that results in making the overall furrow wider.

Q. I suggest to you, sir, that it's not simply a matter of -- because you measured, I

take it in the first one, you measured the width of the furrow; right? You measured the width of the furrow as you saw it that had been created by the fertilizer knife; right?

A. Yes.

Q. Okay. And you've taken into account the material that's fallen into the furrow because you show that sort of sketching there below the bottom of the furrow; right?

A. Mm-hmm.

Q. You show it.

A. Right.

Q. You show no effect at the top of the furrow. You show the three inches and you show very clearly the sides of the furrow created by the fertilizer knife; right?

A. Yes.

Q. Okay. You then pass the -- I call it the seed knife through which, of course, would be displaced to one side; right? And you can see therefore that that seed knife is going to -- can't affect the away side of the fertilizer knife furrow because it's on the other side; correct? It can only affect one side because it's displaced to one side by an inch and a quarter; right?

A. Mm-hmm.

Q . So it has, in effect -- and the knife itself is, on your measurements I think for the 2000 is what? What's the width of that seed knife? I think I've got this somewhere here. Excuse me for a moment. Here we go. Okay. You indicate that the width of the seed opener of the 2000 construction, right, is .68 of an inch; right? That's your Exhibit "J".

A. Yes, that is correct.

Q. Okay, thank you. So, on your measurement of that seed, and I'll call it the knife -- you can call it the blunt opener if you wish -- to the side of the fertilizer furrow has increased the width of the fertilizer furrow by an inch and a quarter ,right? That's the effect. This has nothing to do with the soil following into the furrow or anything like that. You measured the furrow, right, with the fertilizer knife where you considered the size of the furrow to be at the top. That's your measurement; right?

A. Yes.

Q. And then you measured it again with the seed knife, again on your view, of where the outside sides of the furrow were; right? You did it?

A. Mm-hmm.

Q. And you found that the furrow had been increased and that would be to the one side only; right? Because the other side can't be affected; correct?

A. Yes.

Q. By an inch and a quarter. So can we agree then that the seed knife or the seed blunt tube opener has passed through an area of the ground where there was no furrow created by the fertilizer knife to the extent of an inch and a quarter at the top.

A. When you take --

Q. Do we agree, yes or not? Then we'll get on to explanations. Yes or no?

A. Would you say the question again.

Q. Oh, sure, okay. Looking at your measurements and your observations, sir, given that the fertilizer knife created a furrow at the top of three inches, okay, and showing the material that has flowed back in toward the bottom, your calculation of the furrow with the three inches. You then pass the seed knife or seed tube opener, through the same location if you will and in your calculation it has a width of .68 of an inch. We know it's to one side and it has, in effect, enlarged the furrow on one side by an inch and a quarter and that would have to be in material, that was not in the furrow created by the fertilizer knife. It's opened up the furrow, it has created a larger furrow than the fertilizer knife had created. Isn't that, in fact, what you show there?

A. Yes. The width --

[203]        It appears from this that the furrow created by the passage of the fertilizer knife is three inches wide whereas the furrow which remains after the seed knife has passed is four and one quarter inches wide. Given that the seed knife is .68 inches wide, it would seem that the seed knife has created its own furrow which extends into soil which was not turned over by the passage of the fertilizer knife. To that extent, the seed knife and the seed tube have done more than simply follow in the furrow created by the fertilizer knife. They have created their own furrow which overlaps in part with the furrow created by the fertilizer knife.

[204]        Given that this evidence came from the mouth of the plaintiffs' expert, it is entitled to considerable credit. It confirms the evidence of Norbert Beaujot to the same effect. It contradicts the position taken by Dr. Tessier, whose definition of "furrow" I did not accept. This evidence is not contradicted by the examples found by Mr. Schaaf, and Dr. Tessier of seed knives with uneven wear one side of the knife relative to the other. Mr. Schaaf admitted in his evidence on June 20, 2002 at page 3054, that uneven wear could be explained by the presence of disturbed soil on one side of the knife and relatively harder undisturbed soil on the other side of the knife. I might add that this conclusion is premised upon the notion that the seed knife is exactly square to the direction of travel. If it is not, one would expect the leading edge to wear more than the trailing edge. I do not offer this as an explanation for uneven wear. I simply raise it to show that the argument based on evidence of uneven wear contains untested assumptions.

[205]        I therefore conclude that the seed knife and seed tube in the Seed Hawk device do not simply follow in the furrow created by the fertilizer knife. The seed knife creates its own furrow whose boundaries may overlap, on one side, with that created by the fertilizer knife but which is nonetheless created in soil not turned over by the fertilizer knife. This is a variant from the elements described in the patent.

[206]        Does this variant affect the operation of the invention in a material way? It is clear that the Seed Hawk device accomplishes the same function as that contemplated by the invention described in Claim 1. But, as pointed out by Binnie J. in Free World Trust, supra, at paragraph

32:

As stated the ingenuity of the 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. It is not legitimate, for example, to obtain a patent for a particular method that grows hair on bald men and thereafter claim that anything that grows hair on bald men infringes.

[207]        In this case, the patentee has found a way of planting two materials in a consistent relationship, one to the other. He has done so by depositing one material at the bottom of the furrow created by the knife means, and the other in sidewall of the furrow by means of a tube which reaches into the furrow. Given the context of zero or minimum till in which the invention was developed, it makes eminent sense to limit soil disturbance as much as possible. The use of a tube to deposit a second material in the furrow created by the knife means is an elegant means of achieving that objective. The Seed Hawk device achieves the same objective, that is, planting two materials in a consistent relationship, one to the other, but it does so in another way. It essentially reproduces the arrangement used for the placement of fertilizer and applies it to the placement of seed. The result, as noted above, is two overlapping furrows and more soil disturbance than would otherwise be the case. While the claim does not refer to zero tillage or minimum tillage, the disclosure does speak of it, noting that the invention is for use particularly, but not exclusively, in minimum tillage or direct drilling (zero tillage) applications. This language is relevant to the question of the materiality of the change in the manner of operation of the device.

[208]        On balance, I am not satisfied that this variant affects the operation of the invention in a material way. While there is a difference in the mode of operation which may be of some significance in relation to minimum soil disturbance, the difference is one of degree as opposed to one of kind. In my view, this is not sufficient to take the variant outside Claim 1. It follows that I would come to the same conclusion with respect to this aspect of the fourth variant.

b) Obviousness of the variant to a person skilled in the art as at the date of publication of the patent

[209]        In my view, the use of two openers would have been obvious at the time of the publication of the patent. The patent itself includes a coulter as a first opener in Figure 1. It would be difficult to say that the use of two openers would not have been obvious at the time of publication.

c) Did the inventor intend strict compliance with the terms of the claim?

[210]        Given that in discussing the advantages of the invention, the disclosure portion of the patent speaks of "two knife type openers in sequence" (para. 11, at p. 12) and a removable coulter (para. 15, at p. 13), it would be difficult to say that the inventor intended strict compliance with the idea of one furrow.

[211]        As a result, it is my view that the use of a second knife to open a separate furrow for seed placement is not sufficient to take the Seed Hawk device outside Claim 1.

[212]        This disposes of the issue of the infringement of Claim 1. I find that the Seed Hawk device does not infringe Claim 1 because certain essential elements of the claim are not found in the Seed Hawk device, namely the mounting of the fertilizer knife on the frame, the engagement of the soil in relation to the second tube means by something other than "solely" the other edge of the second tube means. On the other hand, the use of a separate knife to create a separate furrow for seed placement is not sufficient to take the Seed Hawk device outside Claim 1. Nor is a different method of achieving lateral separation. As a result, I find that the Seed Hawk device does not infringe Claim 1.

INFRINGEMENT: CLAIM 2

[213]        Claim 2 is reproduced below for ease of reference:

(2) The invention according to Claim 1 wherein the second tube means carries a vertical rod member on a front edge thereof for engaging the ground forwardly and downwardly of an open end of the tube means.

[214]        As is obvious from the terms of Claim 2 itself, it is dependent upon Claim 1. Given that Claim 1 is not infringed, Claim 2 cannot be infringed unless it adds to Claim 1 those elements whose absence resulted in a finding of non-infringement. One of those elements was the fact that the Seed Hawk device did not engage the soil solely by means of an outer surface of the second tube means. This claim adds a vertical rod member to the front edge of the second tube means. As noted in the portion of these reasons devoted to the construction of the patent, the addition of a vertical rod member does not transform the second tube means into a narrow hoe opener with tube means attached. Nor does it modify the inventor's intention that the ground be engaged solely by means of an outer surface of the second tube means since Claim 2 must be taken to include all the limitations of the claim upon which it is dependent (see section 87 of the Patent Rules). As a result, Claim 2 is not infringed for the same reasons as Claim 1 is not infringed.

INFRINGEMENT: CLAIM 3

[215]        Claim 3 is reproduced below for ease of reference:

(3) The invention according to Claim 1 wherein an open lowermost end of said second tube means is arranged to one side and above an open lowermost end of the first tube means so that the second tube means follows in the furrow but scrapes along a side wall of the furrow.

[216]        As in the case of Claim 2, this claim is dependent upon Claim 1 and does not supply the elements which take the Seed Hawk device outside Claim 1. Consequently, whether or not this element is present in the Seed Hawk device, its presence will not suffice to support a finding of infringement.

INFRINGEMENT: CLAIM 6

[217]        Claim 6 is reproduced below for ease of reference:

(6) The invention according to Claim 1 wherein said mounting means for said packer wheel and said mounting means for said second tube means comprise a single mounting member pivotally mounted relative to the said knife and including spring biasing said second tube means and said packer wheel into contact with the ground.

[218]        Unlike Claims 2 and 3, Claim 6 does supply some elements which are lacking in Claim 1. However, literal compliance with the requirements of Claim 1 as to the engagement of the soil by the second tube means is still absent. If I am correct about that element, Claim 6 could not be infringed even if it adds the other elements which are lacking in Claim 1. However, in the event that I am wrong about Claim 1, I proceed with an analysis of Claim 6.

[219]        Claim 6 adds to the invention in Claim 1 a single mounting member for the packer wheel and the seed tube. This single mounting member is pivotally mounted relative to the knife means and includes spring biasing the second tube means and the packer wheel into contact with the ground. In the construction of the claims, I decided that pivotal mounting relative to the knife means requires mounting on the knife means either directly or by some other means so as to allow pivotal movement of the single mounting member relative to the knife means. Claim 6 also adds to the single mounting member spring biasing the second tube means and the packer wheel into contact with the ground.

[220]        In the Seed Hawk device, the seed knife and tube and the packer wheel are mounted on a common member, the placement arm 15, but the fertilizer knife is also mounted to the same member. Neither the seed knife and tube assembly nor the packer wheel are pivotally mounted relative to the fertilizer knife. The fertilizer knife is pivotally mounted relative to the placement arm, which is itself pivotally mounted to the hanging bracket, which permits pivotal movement of the placement arm relative to the frame. Consequently, there is no pivotal mounting of the single mounting member to the knife means, as described in Claim 6.

[221]        The Seed Hawk device uses a hydraulic cylinder to bias the packer wheel into contact with the ground. That cylinder acts upon the trip plate fertilizer knife, whose range of motion is constrained by a chain which transfers the biasing force to packer wheel via the placement arm. The Seed Hawk device does not use spring biasing though the biasing force does bias the seed knife and tube as well as the packer wheel into contact with the ground.

[222]        It would therefore appear that the Seed Hawk device varies from the invention described in Claim 6 in two ways: the absence of a pivotal mounting of the common mounting member relative to the fertilizer knife and the use of a hydraulic cylinder to apply a biasing force.

1) First variant: pivotal mounting of the common mounting member to the frame

a) Material effect on the operation of the invention

[223]        It is not necessary to repeat here the analysis of the operation of the invention and the Seed Hawk device which I undertook in relation to Claim 1. Two of the elements which were conspicuously absent in Claim 1 are supplied by Claim 6, namely a mounting member for the seed tube and packer wheel and a biasing force. In particular, Claim 6 stipulates spring biasing which would suggest an embodiment resembling that shown in Figure 5. The question is whether the addition of these elements is sufficient to bring the Seed Hawk device within Claim 6.

[224]        This brings us back to the discussion of the operation of the invention and of the Seed Hawk device which I undertook in relation to Claim 1. I said there that the essential difference between the Seed Hawk device and the invention claimed in Claim 1 was the fact that the fertilizer knife (and tube), the seed knife (and tube) and the packer wheel were all mounted on a single member in such way as to allow them to maintain their positions relative to each other as the terrain varied. Claim 6 simply supplies to the invention described in Claim 1 the elements which allow it to function as described in the patent specification. The Seed Hawk device still functions in a way which differs materially from the invention. Consequently, the addition of these elements does not change the fact that the invention in Claim 6 permits differential movement between the seed tube and the fertilizer tube as a result of local variations in ground level relative to the frame. The design of the Seed Hawk device is such that differential

movement of the seed and fertilizer tubes is constrained by the fact of their mounting on a common member so that all of them rotate about a common point. As a result, the use of a common mounting member for the seed and fertilizer tools and the packer wheel has a material effect upon the operation of the Seed Hawk device as compared to the invention described in Claim 6. It is therefore not necessary to consider the remaining two questions in the Improver analysis.

2) Second variant: use of a hydraulic cylinder to apply a biasing force

[225]        It will be recalled that the evidence of Dr. Tessier was that it was "quite trivial" as to whether one used a spring or a hydraulic cylinder to apply a biasing force. On the other hand, Mr. Anderson was of the view that there was a difference between the two methods of applying a biasing force. According to him, the more a spring is compressed, the stiffer it gets, due to spring constant. A hydraulic system however applies a constant force throughout its range.    I was not told what, if any, difference this would make to the operation of the invention. This evidence, taken by itself, does not satisfy me that this would have a material effect on the operation of the device. Furthermore, Dr. Tessier's evidence is sufficient to allow me to conclude that a person skilled in the art would have recognized the ability to substitute a hydraulic cylinder for a spring at the date of publication of the patent. There is no evidence to suggest that the inventor intended strict compliance with the use of a spring. For those reasons, this variant does not take the Seed Hawk device outside Claim 6.

INFRINGEMENT: CLAIM 10

[226]        Claim 10 is reproduced below:

(10) The invention according to Claim 1 including a shank for supporting said knife means, said shank being arranged to deflect trash to the sides thereof and being formed from a strip of material having a thickness less than a width thereof and wherein the shank is arranged such that the thickness lies transverse to the direction of motion.

Since this claim is dependent upon Claim 1, which is not infringed, this claim will not be infringed either unless it supplies the essential elements whose absence resulted in a finding of non-infringement. Since those elements did not involve the use of an edge on shank, it follows that the addition of an edge on shank will not result in a finding of infringement. Consequently, there is no need to pursue the Improver analysis beyond incorporating by reference those parts of the analysis of Claim 1 which resulted in a finding of non-infringement.

INFRINGEMENT: CLAIM 12

[227]        A side by side comparison of Claim 12 and the Seed Hawk device appears below. Since Claim 12 reproduces significant parts of Claims 1 and 6, I have bolded the portions of Claim 12 which do not appear in those claims:

[228]        It will not be necessary for me to repeat the analysis of the elements already covered in relation to Claims 1 and 6. Since the language used in Claim 12 carries forward the issues of mounting of the tools on the pivotal placement arm, the Seed Hawk device would be outside Claim 12 for the same reasons as it is outside Claims 1 and 6, namely that the Seed Hawk device maintains depth control of both seed and fertilizer by a different means and substantially continues to do it over variations in terrain. However, in the event that I am wrong about Claims 1 and 6, I will address the variants raised specifically by Claim 12 namely:

(1) the second tube mounting means being arranged to support the second tube means at a position above the furrow;

(2) the second tube means follows in the furrow and engages the soil therein;

(3) the running of the packer wheel in the furrow at a position below ground level so as to steer the second tube means in the furrow.

First Variant: second tube mounting means being arranged to support the second tube means at a position above the furrow

[229]        The difference between Claim 1 and Claim 12, with respect to the mounting of the second tube means, is that while Claim 1 refers to the side to side adjustment of the second tube means, Claim 12 simply speaks of its following in the furrow at a sufficient distance to allow the soil to flow between the tools. The plaintiffs take position that these words simply mean that "...the second tube means firstly runs in the furrow and secondly projects downwardly into the furrow from a position rearward of the knife and above the furrow and is not merely trailing behind the knife within the furrow" (plaintiffs' Final Argument, at para. 170). The Seed Hawk defendants point to admissions by the plaintiffs' experts to the effect that the seed tube in the Seed Hawk device is not supported at a position above the furrow. See the evidence of Mr. Schaaf, Transcript, June 20, 2002, at p. 3083, and the evidence of Dr. Tessier at Transcript, October 29, 2001, at p. 1668. I accept that these admissions are well founded and that the Seed Hawk seed tube is not supported at a position above the furrow. Does this variant make a material difference in the operation of the invention?

[230]        In my view, it does not. The function of the seed tube is to place the seed at the appropriate depth in the furrow. The claim contemplates the attachment of the second tube means to the single mounting member so that it must necessarily be supported above the furrow. The fact that the tube means in the Seed Hawk device is supported along the length of the seed knife as opposed to being supported above the furrow has no material effect upon its function of depositing the seed at the appropriate place in the furrow. Furthermore, despite the fact that the evidence of the view taken of this change by the person skilled in the art is not abundant, I conclude that this substitution was foreseeable at the material time. Similarly, there is no evidence or other reason to believe that the inventor intended literal compliance with this requirement.

Second variant: the second tube means follows in the furrow and engages the soil therein

[231]        This variant is related to the discussion with respect to the use of a knife in the Seed Hawk device to create a second furrow in which the seed is deposited. I found that the creation of a second furrow, as a result of the engagement of the soil by the seed knife, did not have a material effect upon the operation of the invention. For the same reason, I find that this variant does not have a material effect upon the operation of the invention. The objective of depositing seed in a particular relationship with fertilizer is accomplished substantially in the same manner and with substantially the same result as it is by the invention described in Claim 12. As with the use of a separate knife, I find that this substitution would have been apparent to a person skilled in the art at the material time. Unlike the issue of the engagement of the soil "solely by an outer edge of the second tube means", there is no reason to believe that the inventor intended strict compliance with this requirement. Consequently, this variant is not sufficient to take the Seed Hawk device outside Claim 12.

Third variant: the running of the packer wheel in the furrow at a position below ground level so as to steer the second tube means in the furrow.

[232]        The plaintiffs argue that this element refers to the effect brought about by the mounting of the seed tube and the packer wheel on the single mounting member, together with the fact that the packer wheel is narrow enough to ride in the furrow. As a result, the packer wheel resists the sideways motion of the assembly in slight cornering situations. See plaintiffs' Final Argument, at para. 178 to 181.

[233]        The Seed Hawk defendants argued that the packer wheel on the Seed Hawk device does not have a steering function as it does not ride below the surface of the ground. Rather, it rides on the shoulders of the furrows created by the two knives.

[234]        In his affidavit sworn October 25, 2000, Dr. Tessier reported the results of measurements which he took of the operation of Seed Hawk devices:

190. The average width of the print left by the train of components comprised in the Seed Hawk seeding device is, on average, 117 mm ( 4.6 inches). The lowermost elevation of the remoulded soil surface formed by the packer wheel varied from 19

to 23 mm (0.75 to 0.90 inch) below the original soil surface.

                                                                    [. . .]

261. As a matter of fact, the Seed Hawk seeding device's packer wheel is not quite "4 inches" wide, but rather 98 mm (3.9 inches), and the top width of the furrow made by the fertilizer tool of the Seed Hawk seeding device is on average 111 mm (4.37 inches), when not even wider. Any time the width of a packer wheel is equal to or less than the width of the top of the furrow created by the fertilizer tool of the Seed Hawk seeding device, the only furrow made by this seeding device, the packer wheel will run in the furrow and at a depth below the original soil surface, in other words, "into the furrow".

[235]        This last series of measurements is to be compared to the results obtained by Mr. Schaaf, reported earlier, who found that the furrow created by the fertilizer knife was three inches while the furrow created by both knives was four and one quarter inches. Dr. Tessier claims that the furrow created by the fertilizer knife alone was 4.37 inches. Presumably Dr. Tessier is including in his definition of furrow the zone of influence of the opener which extends beyond the actual V shaped cut made by the opener. I prefer Mr. Schaaf's results which accord more with the working definition of a furrow which appears to have been shared by the other witnesses including Mr. Halford.

[236]        In fact, the results which Dr. Tessier reported in para. 190 of his affidavit (with respect to a different Seed Hawk machine) appear to confirm the plaintiffs' position. The width of the track left by the train, 4.6 inches is consistent with a four inch tire which spreads out under load. See Exhibit 1 - Tab 59 a promotional video produced by Seed Hawk. Dr. Tessier's measurement of the packer wheel at 3.9 inches is based upon a measurement of the part of the wheel when in contact with the ground. See Exhibit LL to the affidavit of Dr. Tessier sworn October 25, 2000. Given that the packer wheel is a pneumatic and subject to flexing under load, it may well be that the width of the wheel as it rolls in the furrow is wider than four inches. I do not conclude that it is. I simply conclude that Dr. Tessier's measurement of the packer wheel does not prove that it is not wider than four inches at its point of contact with the furrow. On the other hand, his measurement of the print left by the passage of the train of components at 4.6 inches suggests that the width of the packer wheel in the groove may exceed four inches, and may in fact exceed the width of the furrow measured by Mr. Schaaf.

[237]        Dr. Tessier purported to show that the packer wheel on the Seed Hawk device had a steering function by pulling a Seed Hawk seeder in circles of various radii. In a first pass,               Dr. Tessier pulled the machines with the "seeding devices" (presumably the fertilizer and seed knives and packer wheels out of the ground). The radii of the circles travelled by the tractor about two circles were measured at 15.2 m and 32 m while the radii of the circles travelled by the seeder were measured at 12.1 m and 31.1 m. Dr. Tessier then travelled the course again with the seeding devices in the ground. Depending upon soil conditions, radii of the circles travelled by the seeder were 12.6 m and 13.1 m and 31.7 m and 31.4 m while the tractor's turning radius remained at 15.2 m and 32 m feet. Dr. Tessier expressed his conclusion as follows:

278. Therefore, when the seeding devices of the Seed Hawk 357 seeder are engaged in the soil, they allow for turning radii that are 0.3 to 0.9 m closer to that of the tractor. In other words, having the seeding devices in the soil helps the entire seeder frame to more closely follow the trajectory adopted by the tractor. This is an expression of the lateral "steering" feature transmitted by the seeding device to the frame of the seeder. ...

[238]        With respect, the issue is not the steering function of the whole device including the packer wheels but of the packer wheels themselves. As a result, this experiment tells me nothing about the steering function of the packer wheels on a Seed Hawk seeder. Furthermore, the difference in radius amounted to 2.4 (.3/12.2 x 100) and 2.8 (.9/31.1 x 100) per cent respectively. I have no idea whether this difference is significant.

[239]        Mr. Schaaf did not purport to take measurements but did offer an explanation of steering:

87. With regard to the term "steering", if there is a sideload on the opener assembly as, for example, from a sideslope, rolling or undulating field conditions, this load can result in an overall sideways movement or skewing of the implement from the plurality of openers mounted to the implement. Because the packer wheel runs within the furrow, it has the ability to carry or offset this sideload. By carrying the sideload, the packer wheel will guide, stabilize or "steer" the opener assembly. As a pneumatic tire has the ability to flex to conform to the furrow, it is well suited to carry a sideload and steer. As well, the radius or oval cross section of a pneumatic tire allows it to conform and ride within the furrow.

Affidavit of David Schaaf sworn October 30, 2000.

[240]        The difficulty with this, as with Dr. Tessier's measurements, is that it does not account for the presence of the knives in the ground and the forward motion of the seeder. Dr. Tessier offered an explanation as to why the tires would offer more resistance to lateral motion than the knives:

THE COURT: Just from everyday experience it suggests to me that something that is dragging three to four inches in the soil is going to resist turning more than something which turns freely, like a wheel.

THE WITNESS: True. True. Whereas what you are saying there is forward travel. What I am saying is side force. And the width I am talking about here -- You are right, like, what you are referring to is rolling resistance versus draft force on the tool.

What I am saying here is into a turn. While the force still exists, you now have potential or options for the seed tools to have considerable side force, and the fertilizer tool to have considerable side force. Now, both of them, because of their design, are not designed, as they are very thin, they are not designed to withstand any amount of side force. But side force exists. The whole seeder is being pushed up to three feet closer to the seeder. It is not as a result of the fertilizer tool and seeding tool exerting some side force that would be greater than otherwise. It is on account of the packer wheel tire straining against the wall of the furrow sideways, whereas it still has its rolling resistance.

Transcript, October 26, 2001 at p. 1446-1447.

[241]        I am not certain if Dr. Tessier understood my question. My observation was simply that rigid pieces of metal trailing in the ground are likely to be more resistive to lateral motion than rotating tires. As the tires rotate, they will tend to track to the side under the influence of the lateral forces. The knives embedded in the soil, on the other hand, even if they are narrow, as noted by Dr. Tessier, will tend to resist lateral movement. Furthermore, the knives are rigid while the tires are elastic. As a result, I am not certain that Dr. Tessier has answered my question.

[242]        In the end, I am not satisfied that it has been shown that the packer wheels of the Seed Hawk device exercise any steering function in relation to the seed tube. Assuming that they do not, does this materially affect the operation of the invention?

[243]        In my view, it does not. My reading of the patent suggests that the packing function of the packer wheel is much more important than the steering function. The role of the packer wheel in the gauging of depth of placement has already been discussed extensively. The steering advantage receives only passing mention in the patent:

(21) In conjunction with the previous statement, the wheel 38, by its action, operates as a seed/fertilizer covering and packing device. It should also be noted that the tube 44 mounted on the bell crank portion 35 which also carries the wheel 38 so that they both move together thereby preserving the relationship between them.

Patent, at p. 15.

                                                                    [. . .]

The rotationally molded packer wheels... can also follow the furrow when the machine is slightly off a straight line of travel for example during cornering.

Patent, at p. 20.

[244]        In the end result, I am satisfied that the invention would function substantially in the same way to accomplish the same result without the steering function of the packer wheel.

b) Obviousness of the variant to a person skilled in the art as at the date of publication of the patent.

[245]        I am not aware of any evidence which touched upon this point. Given the relatively minor role which I have found this element plays in the operation of the invention, I conclude that a person skilled in the art would have concluded that the invention could function adequately without this aspect of the packer wheel being present.

c) Did the inventor intend strict compliance with the terms of the claim?

[246]        There is no evidence to support the conclusion that the inventor would have intended strict compliance with this aspect of the patent. I conclude, therefore, that the absence of this element would not allow the Seed Hawk device to avoid a finding of infringement.

INFRINGEMENT: CLAIM 19

[247]        Claim 19 is reproduced below together with a comparison to the Seed Hawk device. The elements in Claim 19, which do not appear in other claims, are bolded so as to show what is specifically in issue in Claim 19.

[248]        The Seed Hawk device varies from the invention in Claim 19 in two ways. The first is the fact that the knife means, meaning the fertilizer knife in the case of the Seed Hawk device, is mounted to the placement arm and not to the frame. This variant was discussed in detail in relation to Claims 1 and 6 in the course of which I concluded that this variant made the Seed Hawk device operate in a way which differed materially from the mode of operation of the invention. I do not need to repeat the entire analysis to come to the same conclusion with respect to this claim.

[249]        The second variant is the fact that the soil engaging and opening means of the second material delivery means does not consist solely of a second tube means formed by a single tube. This resembles the requirement found in Claim 1 for "means... for engaging the ground within the furrow... and consisting solely of an outer surface of said second tube means". Claim 19 substitutes the second tube means. Claim 19 also makes it clear that the second function of ground opening for ground engaging by the material delivery system consists solely of a second tube means which is formed by a single tube. In my analysis of this element in relation to Claim 1, I decided that the fact that the Seed Hawk device opened a second furrow using a second knife was not a material change from the mode of operation of the invention. I have the same opinion with respect to Claim 19.

[250]        This variant differs from the discussion in Claim 1 in that the issue here is the construction of the second tube means as opposed to its performance. Once again one must consider the inventor's intention in using the word "solely" in relation to the variant. As I did in relation to Claim 1, I see in the use of the word "solely" an intention that the language of the claim be complied with strictly. As a result, the Seed Hawk device would be outside Claim 19 as the soil engaging and opening means of the second material delivery means do not consist solely of a second tube means formed by a single tube.

[251]        For those reasons I conclude that the Seed Hawk device is not caught by Claim 19.

INFRINGEMENT: CLAIM 20

[252]        Claim 20 is reproduced below together with my view of its application to the Seed Hawk device. To assist the reader in navigating this lengthy claim, the portions of it which have not been discussed in relation to other claims are bolded. Those portions of the description of the Seed Hawk device in the right column which vary from the claim are in italics.

[253]        Claim 20 being, in a sense, a wrap-up claim, is the most fulsome of the claims in the patent. Many of its elements have been seen and discussed in other claims. As a result, a number of points of the Seed Hawk device which are variants from Claim 20 have also been discussed in relation to other claims. For example, variant (1), the fact of cutting two furrows rather than one, has been found to be a variant which would not take the Seed Hawk device outside the terms of Claim 1. On the other hand, variant (2), the fact of mounting the fertilizer knife to the placement arm, would take the Seed Hawk device outside the scope of Claim 1. Variant (3), having to do with soil engaging and opening means consisting of a second tube means formed by a single tube, departs from Claim 19 by the deletion of the qualifier "solely" which appeared in Claim 19. Variant (4) which deals with the second tube mounting means was considered in relation to Claims 12 and 19 and found not to take the Seed Hawk device outside those claims. Variant (5) departs from Claim 1 in that it speaks of means mounting the single mounting member relative to the knife means without requiring pivotal mounting. Variant 6 speaks of the application of a brace to the single mounting member whereas the Seed Hawk device applies a force to that member. I am inclined to think that this represents a clerical error, one of the many which appear in this patent and I propose to say no more about it. Variant 7 is an elaboration of the relationship between the ground opening tools and the packer wheel which appears in a new form in this claim.

[254]        In my view, variants (1), (2) and (4) have the same effect as in the claims where they were preciously discussed. Specifically variant (1) would take the Seed Hawk device outside Claim 20 while variants (2) and (4) would not. I do not propose to deal further with variant (6). That leaves variants (3), (5) and (7) for further consideration.

Variant three: soil engaging and opening means consisting solely of a second tube means formed by a single tube

[255]        In my treatment of this element in relation to Claim 19, I found evidence of the inventor's intention to stand on strict compliance with respect to the make-up of the second tube means in the use of the word "solely". That word has now been removed. I remain of the view that this element would not otherwise take the Seed Hawk device outside Claim 19. To my mind, the absence of the word "solely" in Claim 20 is evidence that strict compliance was not intended with respect to that claim. As a result, I find that the Seed Hawk device comes within this aspect of Claim 20.

Fifth variant: mounting of the single mounting member relative to the knife means

[256]        The analysis of the operation of the invention undertaken with respect to Claim 1 was based upon the premise that the single mounting member which provides structural support for the packer wheel and the second tube means was pivotally mounted relative to the knife means. This pivotal mounting permitted the packer wheel to gauge the depth of placement in some conditions. The absence of the word "pivotally" in Claim 20 does not require that the single mounting member not be pivotally mounted relative to the knife means. It simply provides for

the possibility that it need not be.

[257]        If one attempts to read Claim 20 onto the Seed Hawk device, one becomes aware that the issue is not the type of mounting, but whether the mounting of the single mounting member is "relative to the knife means". Since the knife means in the Seed Hawk device, i.e., the fertilizer knife is itself mounted on the common mounting member, it is difficult to speak of mounting the common mounting member relative to the knife means. The conclusion which follows is that this element is lacking in the Seed Hawk device.

[258]        Consequently, Claim 20 does not read onto the Seed Hawk device any more than Claim 1 did. And it represents a materially different mode of operation for the same reason that the mounting of the fertilizer knife on the frame did.

Seventh variant: the relative widths of the knife means, the furrow created by the knife means, and the packer wheel

[259]        The measurements taken by Mr. Schaaf confirm that the packer wheel on the Seed Hawk device is wider than the knife means as well as being wider than the furrow created by the fertilizer knife means. The action of the seed knife widens the furrow to the point where it is wider than the nominal width of the packer wheel but the real issue is the width of the packer wheel in the furrow. There is nothing more in this claim to lead to a conclusion of steering than there was in relation to Claim 12. But, like Claim 12, there is nothing to suggest that this element has a material effect upon the operation of the invention. Consequently, whether steering is present or not, it is not sufficient to take the Seed Hawk device outside Claim 20.

CONCLUSIONS WITH RESPECT TO INFRINGEMENT

[260]        As a result of this analysis of the patent claims and the Seed Hawk device, I have concluded that the Seed Hawk device does not infringe the asserted claims of the patent for the following reasons:

1- Claim 1 is not infringed because the Seed Hawk's fertilizer knife is not mounted to the frame but is mounted instead on a common mounting arm with the seed knife and tube and the packer wheel. This arrangement results in a material change in the manner of operation of the Seed Hawk device as compared to the device in Claim 1. For ease of reference I shall refer to this as the knife mounting grounds.

2- Claim 1 is also not infringed because the second material delivery means do not consist of means for engaging the ground consisting solely of an outer surface of the second tube means, namely the seed tube.    For ease of reference I shall refer to this as the seed tube grounds.

3- Claims 2, 3, 6 and 10 are not infringed on the knife mounting and the seed tube grounds.

4- Claim 12 is not infringed on the knife mounting grounds.

5- Claim 19 is not infringed because the soil engaging and opening means of the second material delivery means do not consist solely of a second tube means formed by a single tube, but consist of a seed knife and a seed tube. For ease of reference I shall refer to this as the Claim 19 grounds.

6- Claim 19 is also not infringed on the knife mounting grounds.

7- Claim 20 is not infringed on the knife mounting grounds and on the Claim 19 grounds.

INVALIDITY

[261]        The Seed Hawk defendants have raised the validity of the claims of the patent both as a defence to the claims of infringement and as a counterclaim to the infringement claim. They have raised a number of grounds of invalidity including anticipation, obviousness, overclaiming, insufficiency of disclosure and lack of utility.

[262]        Anticipation was largely raised in relation to the work done by Dr. Heinonen, a professor at the Swedish University of Agriculture. Dr. Heinonen and his colleague Mr. Huhtapalo developed a series of seeders capable of one pass band seeding. Dr. Heinonen toured Western Canada on a lecture tour and circulated a paper describing his work. It is alleged that his work and publications anticipated the invention described in the Halford patent.

[263]        The argument that the claims of the patent are invalid because of obviousness is based upon a review of prior art. The argument as to over claiming is based upon the absence of a critical element, the spacing between the fertilizer tube and the seed tube, in the claims. Claim 1 and the claims dependent upon it make no reference at all to the issue of this spacing. Claims 12, 19 and 20 refer to spacing but do not specify the amount of spacing required for effective operation of the machine. Lack of utility is also raised with respect to Claim 19 because it does not include a packer wheel which, according to the evidence of the plaintiffs' experts, is necessary for the operation of the invention.

[264]        The argument as to insufficiency of disclosure arises with respect to Claims 12 and 20 which claim a steering function for the packer wheel, a function not disclosed in the patent specification.

[265]        Some of these can be disposed of fairly quickly.            

LACK OF UTILITY AND OVERCLAIMING

[266]        In their Written Submissions, under the heading "Inutility of Claims 1, 2, 3, 6, 10, 12, 19, and 20", the Seed Hawk defendants argue that an element which is critical to the functionality of the invention has not been claimed because of the failure of these claims to recite the necessity of a spacing of 6 to 12 inches between the second tube means from the first knife means. The Seed Hawk defendants conclude that "Accordingly, the claims of the Halford patent fail to recite a device that will be operable, and thus the claims are invalid as failing to recite an operable device". (The Seed Hawk defendants' Written Submissions, at para. 519). No authority is cited in support of this position.

[267]        It is true that the evidence of the plaintiffs' experts was to the effect that the spacing of the mouths of the two material dispensing tubes was critical. See the affidavit of David Schaaf, sworn October 30, 2000, at paragraph 70 and the affidavit of Dr. Tessier sworn October 25,

2000, at paragraph 167. In his cross-examination, Dr. Tessier agreed that a device which did not have the proper spacing between the two material dispensing tools would not be functional:

Q. But as the matter presently stands, would you agree that if we look for example at claim 1, if somebody were to produce a machine with a spacing of 1 to 3 inches, it would fall within the description of this claim?

A. It might fall, but it's not going to be functional.

Transcript, October 29, 2004, at p. 1598-1599.

[268]        In his cross-examination Mr. Schaaf had this to say about this dimension:

Q. Okay. Then you say, and I quote, "This critical spacing is described in the Halford patent." So you've used a rather strong term "critical spacing".

A. Yes.

Q. It has to be there. It's critical; right?

A. Yes.

Q. Okay. And the spacing in the range of 6 to 12 inches.

A. Yes.

Q. Okay. Then you go further down, paragraph 73, and I quote, "I cannot stress enough the significance and importance of this spacing to the proper performance of the opener." If you don't have the spacing it won't work properly; right?

A. That is correct.

Transcript, June 20, 2002, at p. 3015-3016.

[269]        As a result, I can safely conclude that the spacing of the mouths of the two material delivery tubes is critical to the operation, and that without the proper spacing the invention described in the patent will not work correctly.

[270]        On the other hand, it is not clear that all claims stand on the same footing with respect to this item. Claim 1 and the claims dependent upon it make no mention at all of this spacing. Claims 12, 19 and 20 refer to the spacing but do not refer to the dimensions of the proper spacing. They simply refer to "...second tube means is spaced from the first tube means by a distance sufficient to allow soil to fall into the furrow therebetween..." (Claim 12) or "...a free space behind said first tube means and in front of said second tube means within which soil falls into the furrow..." (Claims 19 and 20). As a result, these three claims may be entitled to a different treatment than Claim 1 and its dependent claims.

[271]        That said, the Seed Hawk defendants did not plead this deficiency in the claims and did not request an amendment to make the pleadings conform to the evidence. The plaintiffs have not responded to these allegations. As a result, I am not in a position to decide on the validity of the various claims on this basis.

[272]        In their Written Submissions, the Seed Hawk defendants also argue this same defect from the point of view of overclaiming. They allege that by failing to include this limitation in the claims, the patent claims more than has been disclosed. This allegation is subject to the same criticism as the allegation of lack of utility. It was not pleaded. In the circumstances, I cannot give effect to this allegation.

[273]        On the other hand, the Seed Hawk defendants did plead that Claim 19 was invalid for failing to claim an essential part of the invention namely the packer wheel. Dr. Tessier, while conceding that the packer wheel was a critical element, would not agree that its absence made the invention inoperable:

And he says this, and I quote from line 3, "going back to our illustrations, the next part of the device that's critical, My Lord, is the packing wheel or the packer wheel". He uses the word critical. Do you see that?

A. (Nods yes).

Q. "The packer wheel is mounted in a position relative to the seed tube so that it follows in the furrow. The packer wheel is mounted on a rigid assembly, My Lord, which is associated with seed till and again you'll see in all three instances", and he goes on to talk about the differences, et cetera, et cetera. Then talks about the packer wheel.

Now, that is what counsel for the plaintiff said on this subject, and I take it you agree with Mr. Raber's comments?

A. I certainly do agree.

Q. Thank you. And being critical, being an essential part of the invention, I suggest to you, sir, as a person of ordinary skill in the art looking at the claim, it has to be there.

A. In claim 19 we're talking about a variation of the Halford invention, one that could be implemented without a packer wheel. However, claim 1, 12 and 20 as I read it, propose a better implementation whereby the packer wheel has a specific function of depth control; whereas in claim 19 that function is relegated to other mechanisms.

Transcript, October 29, 2001, at p. 1592-1593.

[274]        Mr. Schaaf took the same position with respect to the presence of the packer wheel. See Transcript, July 20, 2002, at p. 3020, and again at p. 3111-3112.

[275]        The Seed Hawk defendants did not lead evidence on this point through their expert              Mr. Anderson. Consequently, the only evidence I have on the point is that of the plaintiffs' experts. In the circumstances, I am not in a position to say that the invention will not work without the packer wheel and the single mounting member.

[276]        That said, the conclusion which flows from this is that the packer wheel and the single mounting member are not essential elements of the invention. This leads me to wonder what constitutes the inventive step over the prior art. This leads to a discussion of obviousness.

OBVIOUSNESS

[277]        In order to address obviousness, one must have some sense of how the invention represents an advance over the prior art. If one turns to the patent and, in particular, the portion entitled "background of the invention", one is hard-pressed to identify what is claimed as an invention.

[278]        It is said that the invention "relates to an apparatus for placing in the ground two separate materials such as seed/fertilizer particularly but not exclusively for use in minimum tillage or direct drilling applications". There is no indication as to whether these two materials are to be placed in any particular configuration. This is followed by a brief discussion of zero tillage. The

patent notes that "Many existing machines have been designed specifically to enable seed and fertilizer to be deposited in the soil under this system [zero till]". It is also noted that "the potential of utilizing cultivators, both heavy and light, as a seeding machine together with an air or gravity delivery system, has been attempted with a plurality of designs". The main problems encountered are "a lack of depth control and considerable difficulty in obtaining sufficient packing of soil around the seed". For these reasons, multi function machines have been designed but they have proven to be "unwieldy arrangement of parts which are difficult to control and to set one relative to the other". The first object of the invention, therefore, is "to provide a planting apparatus for placing two separate materials such as seed and fertilizer in a single action which is simple, inexpensive and effective".

[279]        One is left to wonder what invention is being claimed and how it differs from what has gone before. The advantages of the invention are recited later in the patent, following the detailed description of the first embodiment of the invention.    The patent lays out 21 perceived advantages of the invention but very few of them give any indication as to what might constitute the invention. For example, it is said that the invention provides independent adjustment of fertilizer depth, seed position and packer pressure. The reader has no idea if this is simply a marketing advantage or whether it represents an advance on the prior art.

[280]        Section 34 of the former Patent Act, which applies to this patent, sets out what must be included in the specification of an invention:

[281]        One notes that subsection 34(2) requires that the claim or claims must describe "in explicit terms the things or combinations that the applicant regards as new and in which he claims an exclusive property or privilege." Having carefully reviewed the specification and the

claims for purposes of dealing with the plaintiffs' claim of infringement, I have not found in them any explicit statement of the things which the inventor regards as new.

[282]        One must keep in mind that the Patent Office examined this specification and issued a patent in reliance upon it. Presumably the expert examiners at the Patent Office saw an inventive element which is not apparent to me. What do the expert witnesses have to say about this? The evidence of Dr. Tessier is that only one element of the invention is new:

125. In summary, did the state of the art as disclosed by Anderson show that the functions of the individual components used in the Halford device were known as at 1983? In my opinion, yes, with the exception of the modification to the seeding tool that the Halford patent teaches with respect to allowing it to flex upon impact with obstacles...

Affidavit of Dr. Tessier sworn October 25, 2000.

[283]        On the other hand, Dr. Tessier also testified that:

Q. So then you really do not, if I can suggest this, address your mind to what might have been out there commonly known for use with a till in tilled soil?

A. To that extent, in spite of the fact that I did concentrate on zero tillage and zero tillage situations, I did not run across -- there could have been, but I did not run across in my work as of the early 1980's as a person skilled in the art with machines that would effect separate side banding with single tool.

Transcript, October 29, 2001, at p. 1571.

[284]        I take it from this that the inventiveness of the Halford invention resided in the fact that it was capable of side banding using a single tool. Given that the patent speaks of a first material delivery means including a knife and a tube and a second material delivery means consisting of a second tube means, I am uncertain as to what Dr.Tessier considered to be the single tool. There are repeated references in his evidence to the fertilizer tool and to the seed tool. See for example paragraph 49 of his affidavit sworn November 30, 1999.

[285]        Mr. Schaaf's affidavit sworn October 30, 2000, includes a review of the prior art in relation to seeding devices. His conclusion at paragraph 28 is to the following effect:

28. Therefore, as at 1983, there was no device available which utilized a single opener assembly to accurately and consistently deposit both fertilizer and seed in separate locations in a single pass. This is precisely what is taught in the Halford patent.

[286]        At paragraph 64 of his affidavit, Mr. Schaaf concludes:

64. The Halford invention as claimed achieved what had not been achieved before. It met the challenge of placing seed and fertilizer separately, and packing, with a single opener assembly. ...

[287]        I note that there is no evidence before me as to the commercial exploitation of the Halford invention from which one could conclude that it does in fact result in the accurate and consistent deposit of both fertilizer and seed in separate locations. I am unaware of any evidence which would permit Mr. Schaaf to conclude that the Halford invention achieves this objective.

[288]        The allegation that the inventiveness of the invention lies in the use of a single opener assembly is an ambiguous statement. If it is meant to indicate that the invention is unique in its use of a single assembly to place seed and fertilizer separately and to pack the furrow, I cannot reconcile it with the prior art which includes a number of devices which use a single assembly to place seed and fertilizer and pack the furrow. See Exhibits K, L, and N to the Affidavit of Clifford Anderson. If it claims as inventive the use of a single opener, as opposed to two separate openers, for seed and fertilizer, then I am left to wonder why so much of the plaintiffs' case was directed to showing that the seed tube means was a narrow hoe opener.

[289]        This puts the plaintiffs in an unenviable position. Had I accepted their evidence that the second tube means was a narrow hoe opener, it would then have been open to me to find that the invention was obvious from the prior art. Along the same lines, the reference by Mr. Schaaf to the inventiveness of placing seed and fertilizer and packing using a single assembly draws one back to Claim 19 where no packer wheel is claimed. All this to say that the evidence as to the inventive element in the invention is problematic.

[290]        The prior art was put before the Court through the affidavit of Mr. Anderson. In assessing the prior art, I am not attempting to read the claims of the patent upon the devices which are identified as prior art. I am attempting to establish the state of the technology as seen through the eyes of one skilled in the art to determine whether than person, without any spark of inventive spirit, would come to the invention. Given what has been said about the Halford

invention, I propose to focus on the issues of separate placement of seed and fertilizer, a single opener assembly and packing.

[291]        The first patent referred to by Mr. Anderson is U.S. patent No. 2,357,760 (the Peacock patent). According to Mr. Anderson, this patent discloses "a pair of arms pivoting about the first knife with the seed tube and the packer wheel being mounted between the arms and the arms being biased into contact with the ground by means of a spring, this being precisely the mechanical arrangement of the Halford device". (at para. 69). Further, the Peacock patent describes "a press wheel on a pivoted arm which controls the depth of the seed placement and packs the earth on top of the seed" (at para. 70).

[292]        I agree that the element of a single mounting member upon which are found a packer wheel and a seeding tool pivotally mounted relative to a furrow opening tool is found in the Peacock patent. It also teaches the concept of a packer wheel gauging the depth of seed placement. The criticisms expressed by Mr. Schaaf at paragraph 47 of his affidavit do not detract from this, nor did anything emerge in cross-examination to vary this characterization of the invention described in the Peacock patent.

[293]        The next patent is U.S. patent No. 4,116,140 issued to Anderson and Neukom on September 26, 1978, and assigned to Haybuster Manufacturing, Inc. (the Haybuster patent). The abstract describes the invention as "a depth control for grain drills, planters or the like utilizing a

press wheel which can be adjusted to control the depth of each individual furrow opener to insure uniform depth of planting across the width of wide machines presently in use". I note that each assembly consists of a single opener which deposits both seed and fertilizer with depth control achieved by a spring biased packer wheel. As for the packing function, the following appears at columns 3-4:

FIGS. 1 and 3 show two different depths of control in two different types of soil or operating conditions. In FIG. 1, the press wheel is set at a position where the lower edge of the press wheel 45 is actually below the lower edge of the disc 33, and in soft ground the discs 33 will still form a furrow 34 while the press wheel 45 will sink into the ground and cover the seed as it moves along. Not much spring pressure is required in this arrangement or condition and the device exerting spring force will be adjusted to provide only light pressure.

However, in hard ground, such as for example that which is encountered when the ground is relatively dry, and minimum tillage practices are being carried out, the press wheel 45 can be set so that it rides substantially on top of the ground to cover the seed, and yet the discs 33 can be forced downwardly by increased pressure on the spring 25 to a position where the openers will form a furrow 34A which is sufficiently deep to properly plant the seed.

[294]        This demonstrates the use of the press wheel to ride both within and over the furrow. It also shows the application of the invention to minimum tillage situations. There was no challenge to the presence of these elements in the Haybuster patent by the plaintiffs' experts.

[295]        The next patent to which Mr. Anderson referred was U.S. patent No. 4,417,530 issued to Ivyl Kopecky on November 29, 1983 (the Kopecky patent). The abstract describes the invention as follows:

A device for planting seed and applying fertilizer including a frame adapted to be moved over the ground and a furrow opener shank carried on the frame. A first delivery tube is provided in the shank for fertilizer and has a lower end disposed to a first predetermined level below the ground. A second delivery tube for seed is also provided and has a lower end disposed at a second predetermined shallower level. The second tube is positioned behind the first tube with respect to the direction of travel. Earth tends to fill in around the fertilizer as the shank moves along. This provides an earth seed bed which separates the seed from the fertilizer. A packer wheel is attached to the frame and trails the second tube of each shank. The packer wheel compacts the ground after delivery of the material to the ground and also regulates the depth of the shank.

[296]        A number of features which appear in the Halford patent are found in this invention: the use of single opener, the deposit of seed and fertilizer in one pass with a predetermined separation, the flow of soil into the space between the fertilizer opening and the seed opening so as to create a seed bed for the seed, delivery of seed by means of a tube, and a depth regulating packer wheel.

[297]        The next patent to which Mr. Anderson made reference was Canadian patent 638, 550 issued on March 20, 1962 to Van Dorn. (The Van Dorn patent). At paragraph 77 of his affidavit, Mr. Anderson described this invention as follows:

...It describes an invention which permits planting and fertilizing of a field in a single pass, i.e. a minimum tillage planter. This invention clearly teaches the concept of depositing seed well behind the, fertilizer, after loosened soil has been caused "to fall back into the furrow". The fertilizer and seed delivery systems are followed by a packer wheel which "serves to compress soil above the seed and also acts as a depth gauge for the [seed] opener. These planting elements are conventional and well known in seed drills. ...

[298]        In fact, the body of the Van Dorn patent makes it clear that it is specifically addressed to the problems of soil erosion and is intended for minimum tillage applications. It also specifically addresses the spacing between the fertilizer and seed delivery openings:

Fig. 3 shows approximately correct horizontal spacings of the fertilizer and seed spouts relative to blade 12 [the furrow opening tool] for an approximate travel speed of 3 m.p.h.; the scale of the drawings being such that seed delivery point 58 is about ten inches behind spout 28 [the fertilizer spout]. ...

Column 3, lines 49 to 54.

[299]        These patents teach all of the elements of the Halford claims in issue in these proceedings except for the placement of seed to the side of the fertilizer by means of a tube which is capable of lateral adjustment.

[300]        All of the other elements found in the Halford patent, including the critical spacing between the seed and fertilizer tubes, are found in the prior art. Does the absence of the lateral adjustment of the seed tube in the prior art result in the conclusion that the invention is not obvious? The significance of the lateral adjustment of the seed tube is that it enables side banding. There is reference to side banding, though the term is not used, in the specification when it speaks at page 14 of the patent of the seed emerging from the side wall of the slot.

[301]        The authorities cited by the plaintiffs on the issue of obviousness are clear that obviousness is more than the application of hindsight. Bayer Aktingesellschaft et al. v. Apotex Inc. (1965), 60 C.P.R. (3d) 58 (Ont. Gen. Div.) at page 81. A conclusion as to obviousness

cannot depend upon the notional person skilled in the art exhibiting inventiveness or imagination. He is, by definition, lacking in both. Beloit Canada Ltd., supra, at p. 294. The test for obviousness was succinctly stated in Procter & Gamble Co. v. Beecham Canada Ltd. (F.C.A.), (1982) 61 C.P.R. (2d) 1:

The question to be answered is whether at the date of invention ... an unimaginative skilled technician, in light of his general knowledge and the literature and information on the subject available to him on that date, would have been led directly and without difficulty to [the] invention. ...

[302]        In their Final Argument, the plaintiffs rely upon the evidence of John Harapiak to the effect that the Halford invention was not obvious to him. I am unable to find this evidence either in the affidavit or the testimony of Mr. Harapiak. The plaintiffs also rely upon the evidence of Kenneth Domier to the effect that there was no suitable machine for one pass direct seeding achieving proper location of the fertilizer and the seed. There is no evidence before me that the invention described in the patent does in fact achieve proper location of seed and fertilizer.

[303]        The Seed Hawk defendants have the onus of showing that the invention described in the Halford patent is obvious. Having reviewed the prior art, I am unable to conclude that the skilled but unimaginative technician would be led directly and without difficulty to the invention by the elements of the mosaic of prior art. It would take an inventive step to conceive of a seed tool which is adjustable from side to side as a means of side banding. In the result, I find that the patent is not invalid for obviousness.

[304]        Mr. Anderson's conclusion as to obviousness was based upon his assessment of the elements of the Victoria machine. The Victoria device utilizes a second opener in advance of the seed tube. It mounts the fertilizer knife and tube, the seed knife and tube, and the packer wheel upon a single mounting member. Neither of these are taught by the invention described in the Halford patent. Consequently, I am unable to agree with Mr. Anderson's conclusion that a skilled workman, considering the Victoria device and the patents to which reference has been made, would be led directly and without difficulty to the invention described in the Halford patent. On the state of the evidence before me, I could not come to such a conclusion except by means of an ex post facto insight.

[305]        However, if the Halford patent is construed so that it includes a single mounting member for the fertilizer assembly, the seed assembly and the packer wheel, then the question of obviousness becomes rather more difficult. However, I note that the seed knife in the Victoria device is capable of lateral movement, but not of side to side movement in the sense in which that expression is used in the patent. To that extent, the skilled technician would have to conceive of something not otherwise present in the prior art to arrive at the Halford invention. For that reason, I find that even if the Halford patent is widely construed, the Halford invention is still not obvious in light of the Victoria device.

[306]        I conclude that on my construction of the Halford patent, the invention which it describes

and claims is not obvious. It is not obvious because the prior art does not include a seeder with a seed tool which is adjustable from side to side. All of the other elements of the Halford invention are found in the prior art. However, if the construction of the Halford invention which is proposed by the plaintiffs' experts as regards infringement is adopted, the Halford patent still does not describe an invention which was obvious at the material time. Consequently, the Halford patent is not invalid by reason of obviousness.

ANTICIPATION

[307]        The discussion of the Victoria device leads to the consideration of anticipation. Anticipation by publication was best described by Hugessen J.A. in Beloit Canada Ltd., supra, at page 297:

It will be recalled that anticipation, or lack of novelty, asserts that the invention has been made known to the public prior to the relevant time. The enquiry is directed to the very invention in suit and not, as in the case of obviousness, to the state of the art and to common general knowledge. Also, as appears from the passage of the statute quoted above, anticipation must be found in a specific patent or other published document; it is not enough to pick bits and pieces from a variety of prior publications and to meld them together so as to come up with the claimed invention. One must, in effect, be able to look at a prior, single publication and find in it all the information which, for practical purposes, is needed to produce the claimed invention without the exercise of any inventive skill. The prior publication must contain so clear a direction that a skilled person reading and following it would in every case and without possibility of error be led to the claimed invention. Where, as here, the invention consists of a combination of several known elements, any publication which does not teach the combination of all the elements claimed cannot possibly be anticipatory.

[308]        Anticipation can also be the result of prior use or sale. There are various qualifiers as to the type of public disclosure which is sufficient to constitute anticipation, a subject which is carefully reviewed in Baker Petrolite Corp. v. Canwell Enviro-Industries Ltd. (C.A.), [2003] 1 F.C. 49, 2002 FCA 158.

[309]        The basis of the argument that the devices developed by Dr. Heinonen and his team at the Swedish University of Agricultural Sciences, the Victoria and the Kamelin, ("the Swedish devices") anticipated the Halford invention is based on the premise that the Halford patent can be read onto the Seed Hawk device. Thus the opening paragraph of the Seed Hawk defendants' Written Submissions on this point reads as follows:

503. The Seed Hawk defendants, in the event a broad interpretation is placed on the claims, state that claims 1, 2, 3, 6, 10, 12, 19 and 20 of the Halford Patent are each invalid for the following reasons:

i) the aforesaid claims are each anticipated under s. 27(1)(a) of the Patent Act due to prior use of the following devices in a manner that such devices became available to the public, namely:

- public use of the Viktoria device in Sweden, in period 1966-1979;

\                                                - public use of the Kamelin device in Sweden in 1961-1963;

ii) the aforesaid claims are each anticipated under s. 27(1)(b) of the Patent Act due to the subject matter being disclosed in the following prior printed publications, namely:

"Fertilizer Placement for Small Grains", authored by Dr. Reijo Heinonen and published in Canada in 1978. (Trial Exhibit 66)

"The Chisel-Planter Minimum Tillage System", authored by C.L. Peterson, published in Canada in 1982 (Trial Exhibit 133)

"Problems in Soil Cultivation", authored by Ake Huhtapalo, published in June 1966 (Trial Exhibit 134)

iii) the aforesaid claims are each anticipated due to the subject matter having been previously known and disclosed via presentations to the public in such manner that it had become available to the public, such presentations being:

- Presentations by Dr. Reijo Heinonen of his paper "Fertilizer Placement for Small Grains" in each of Winnipeg, Saskatoon, and Edmonton, Canada in April 1978 (Trial Exhibit 66)

[Emphasis added.]

[310]        Since I have rejected the broad interpretation of the Halford patent which underlies this argument, it is not necessary for me to consider this issue. To summarize, I would say that the Swedish devices did not anticipate the Halford invention for the following reasons:

1)         the Swedish devices mount the fertilizer tool, the seed tool and the packer wheel on a single member whereas the Halford patent teaches the mounting of the fertilizer tool to the frame and the seed tool and packer wheel to a single mounting member which is pivotally mounted relative to the fertilizer knife assembly;

2)         the Swedish devices use a furrow opening knife and a delivery tube for each material planted while the Halford patent teaches the use of one furrow opening device with a second material being deposited in the same furrow solely by a second tube means;

3)         the Swedish devices contemplate the passage of the packer wheel over the furrow and not within the furrow;

[311]        Given these distinctions, it is difficult to see how the Halford invention could have been anticipated by the Swedish devices.

INSUFFICIENCY OF DISCLOSURE

[312]        The Seed Hawk defendants claim that each of the claims of the patent is invalid in that the disclosure does not teach certain elements which are said to be essential to the invention. In particular, the Seed Hawk defendants point to the absence of any disclosure to support the claimed ability of the packer wheel to steer the second tube means.

[313]        Not all the claims refer to the steering ability of the packer wheel. Claim 1 does not refer to it, nor do any of the claims which are dependent upon Claim 1. The same is true of Claim 19 which does not refer to the packer wheel at all. On the other hand, Claims 12 and 20 do refer to the steering function of the packer wheel.

[314]        The specification speaks of the advantages accruing to rotationally moulded packer wheels, one of which is that they can follow the furrow when the machine is slightly off a straight line of travel as it would be during cornering (Patent, at p. 20). The evidence is that the steering effect of the packer wheel does not occur during cornering but rather in situations where the frame is subject to lateral forces such as working off a side hill, or in slight curves as a result of

undulating terrain (Transcript, June 19, 2002, at p. 2909-2911). Mr. Schaaf preferred to describe this effect as "stabilizing" rather than "steering". Dr. Tessier gave evidence that the effect of the engagement of the packer wheel in the furrow was to "guide the location in the furrow of the seeding tool" (Transcript, October 25, 2001, at p. 1304) and to force the seeder to "sort of track behind the tractor" (Transcript, idem, at p. 1305). On the other hand, Mr. Anderson challenged this by noting that there was no articulation between the packer wheel and the seed tube such that the packer wheel could direct its course. It could only follow. (Transcript, February 3, 2003 at p. 4339).

[315]        In my view, there is no defect in disclosure with respect to the element of steering. The context in which the term is used in the patent, and the evidence of the plaintiffs' experts persuade me that "steering" refers to a tendency to keep the seed tube within the furrow by resisting lateral forces. The specification clearly ties the steering effect to the fact that the packer wheel follows in the furrow. In my view, this is sufficient disclosure to support the steering effect which is claimed in Claims 12 and 20.

CONCLUSION AS TO INVALIDITY

[316]        In the end result, I conclude that the Seed Hawk defendants have either failed to establish invalidity or have failed to plead the grounds of invalidity which they could prove.

PERSONAL LIABILITY OF THE DEFENDANTS

Pat Beaujot, Norbert Beaujot and Brian Kent

[317]        The plaintiffs have claimed against Pat Beaujot, Norbert Beaujot and Brian Kent on the ground that their involvement in the acts of infringement by the corporate defendant Seed Hawk Inc. exposes them to personal liability. Given my findings as to the lack of infringement by the Seed Hawk device, this issue does not arise. However, mindful as I am of the possibility of error, I now propose to consider this issue as though I had found that infringement had occurred.

[318]        Given that this issue arises in the alternative, I propose to proceed in a more summary fashion than would otherwise be the case. The plaintiffs seek to establish the personal liability of the individual Seed Hawk defendants on the following basis:

-            The corporate defendant was incorporated for the sole purpose of producing the devices which, for these purposes, are deemed to constitute an infringement; (at para. 717, 776 plaintiffs' Final Argument. Unless otherwise indicated all paragraph references are to the plaintiffs' Final Argument).

-           The individual defendants expressly directed and procured the commission of the act of infringement; (at para. 720)

-            The individual defendants, and in particular Norbert Beaujot, had knowledge of the Halford patent at the earliest stages of the development of the Seed Hawk device; (at para. 729-731)

-            Norbert Beaujot was advised of the possible infringement problems by Joe Willmott as early as January 17, 1992; (at para. 751)

-           Norbert Beaujot was warned by representatives of the Prairie Agricultural Machinery Institute (P.A.M.I.) in February 1992 that his proposed device could possibly infringe the Halford patent, or even, that it did infringe the Halford patent; (at para. 761-762)

-           After having conducted a patent search, Joe Willmott advised Norbert Beaujot that his design was "very close" to the Halford patent; (at para. 765)

-           A Preliminary Technical Assessment prepared by P.A.M.I. made several references to the similarity between the Halford patent and Norbert Beaujot's design; (at para. 767)

-           The individual and the corporate defendants received a cease and desist letter from the plaintiffs' representatives on or about July 24, 1992, and March 8, 1993.

-           The individual defendants were warned of possible infringement by their own counsel. The material portions of that letter are as follows:

87981

September 2, 1992

CO N F I D E N T I A L

Mr. Pat Beaujot, P. Ag.

Seed Hawk Inc.

Pox 123

LANGBANK, Saskatchewan

SOG 2X0

Dear Pat:

Further to your instructions, I have reviewed all of the materials supplied and am writing to provide you with my opinion on infringement by the Seed Hawk unit with respect to Halford's Canadian patent 1,239,835.

I estimated $1,500.00 to you when we started. I have put in $3,867.50 worth of time on the file, I am submitting a bill for $2,500.00 - if this is a problem, please give me a call.

I have already gone over the material with you on the phone and propose to keep this letter short, to minimize further cost.

The issues here are really difficult to assess. The general views I have are these:

(1)           If Halford were to initiate litigation, there is a risk that Halford would be considered by the Federal Court to be a "pioneer" inventor who laboured without assistance over a period of years to produce a desirable machine. You could be viewed as copiers who have taken the substance of his invention and improved on it.

Thus the sympathy of the Court could well lie with Halford and they might be ready to overlook some of the recitals and omissions in his claims, to find them valid and infringed;

(2)           The prior art is certainly close and relevant. I have attached for your

information my notes on the old patents which I felt were the most pertinent;

(3)           My preliminary view is that Halford created a patentable invention and you have incorporated that invention into your machine;

(4)           Except for Claim 19, Halford's claims, if strictly construed, are not infringed by your machine and claim 19 may be invalid.

All in all, it appears to me that Halford's patent should be treated with caution and respect. If you can get a license on reasonable terms, I would recommend proceeding to obtain it. However, if he is unreasonable, then there are some debatable grounds to view your unit as non-infringing or to view claim 19 as invalid, and to proceed with fabrication (although I view this as a last resort option and one carrying real financial risks).

I want to emphasize that these are preliminary views. There is an ebb and flow to opinions on validity and infringement because, as one moves toward litigation, additional prior art references or old devices can turn up and my views can be altered by what these references show. Let me expand on these comments. We might, for example, undertake intensive searches of the prior art and find an old machinery catalog brochure which anticipates a Halford claim or causes one to conclude that Halford's claim should be strictly construed and be limited to exactly what the words of the claim specify. Or you may conclusively determine that your seed tube can operate entirely outside the first furrow. So the views I express herein are based on the materials presently in the file.

To my mind, it is clear that the prior art taught or disclosed:

-               The method concept of opening a deep first furrow with an opener (such as a disc), depositing fertilizer in the furrow through a closely following tube, opening a shallower, laterally offset second furrow with means such as a disc, displacing soil into the first furrow to cover the fertilizer, depositing seed in the second furrow through a tube, and pressing the seed or covering it with soil, whereby the fertilizer and seed are close but out of contact, the fertilizer is deeper and the seed is shallower, both are covered with soil and the soil over the seed is compacted (Shriver and Morrison);

-               Apparatus for carrying out the method comprising:

-                a frame carrying fertilizer and seed hoppers which can supply the material pneumatically through tubes;

-                a linear array comprising a fertilizer planter and a following rearwardly spaced seed planter which is pivotally attached to the fertilizer planter and which can be biased downwardly to press the seed planter firmly to the soil and to control the depth of seed deposition with a packer or depth gauge wheel (Main, Morrison, O'Neil);

-                wherein the fertilizer planter can be a relatively narrow opener

(e.g. chisel plow (Main), disc (Shriver) or what appears to me to be a knife (Morrison) having the fertilizer tube supported thereon at its rear surface;

-                and wherein the seed planter comprises means for forming a second, laterally offset furrow or groove, a seed tube rearwardly thereof, and a following downwardly biased packer or press wheel.

It appears to me that the components or means, the architecture (positioning, interrelationships of parts) and the methodology of the prior art is certainly close and relevant to what Halford developed.

Let me now state in my terms what Halford specifically disclosed and then I will give my view of what Halford broadly "invented", as I see it.

The Halford system of Figure 5, as I see it, involves:

-                A spring steel shank, which is mounted to the wheel­-supported frame of the implement;

-                A knife, which is rigidly mounted to the shank. The knife functions to cut a narrow furrow. The knife essentially is rigidly supported so that it forms the furrow at a constant depth relative to ground surface as it moves along with the wheels and frame;

-                A fertilizer band-depositing tube, which is mounted to and close behind the knife, to deposit the fertilizer in the open furrow;

-                A support beam, which is pivotally mounted to the rear end of the shank. The support beam carries a packer wheel at its rear end. Pressing force can be resiliently applied to the beam by means to pivot, hold and press the wheel down. An angled seed tube extends down from the beam and cuts a furrow of its own in the side wall of the main furrow, at a higher elevation than the base of the main furrow - thus the seed tube moving along causes soil to be displaced into the base of the main furrow to cover the fertilizer. The seed tube deposits seed in the second furrow. The packer wheel functions to reference the seed tube outlet to ground surface so that the depth of the outlet remains constant and also compacts the soil over the seed.

Now stating the Halford "invention" as I see it in view of the prior art:

-                in the context of a known assembly comprising

-                a fertilizer planter comprising furrow opener and fertilizer band tube following the opener, and

-                a rearwardly spaced, pivotally mounted and following seed planter which can be biased downwardly, said seed planter having a seed tube and following packer or press wheel (the seed tube preferably being laterally offset relative to the fertilizer tube);

-               the improvement comprising

-                the seed tube being supplied alone, without an opener associated therewith, said seed tube being positioned to operate in the furrow of the fertilizer opener;

-                the fertilizer opener being a "knife" (which is not defined in the patent) so that a narrow furrow is formed, which enables soil to fall in to cover the fertilizer before the seed tube arrives;

-                the seed tube being in engagement with the furrow soil (preferably in laterally offset relation to the center line of the fertilizer furrow so that the seed tube actively pushes soil over the fertilizer).

None of the prior art patents in my hands suggest the invention as I have just described it.

Claim 19 fails to correspond with the invention as I have described it because it does not recite:

-                the packer wheel (which I understand is necessary for an operative system);

-                or lateral offset of the second tube relative to the first tube (which is necessary if they are to deposit at different elevations and the seed tube is to engage the soil of the furrow).

This causes me to question the validity of claim 19.

One can also question whether claim 19 is infringed by the Seed Hawk, as the claim requires that the seed tube extend down into the fertilizer furrow to engage soil therein. I understand that the Seed Hawk seed tube axis is laterally offset 1 inch relative to the center line of the foot of the fertilizer furrow - but it may be that in some cases at least the seed tube is engaging the upper reaches of the fertilizer furrow sidewall.

In summary:

-               claim 19 recites the Halford "invention" as I perceive it;

-               claim 19 appears to be infringed;

-               and one cannot conclusively state claim 19 to be invalid.

Therefore claim 19 provides good reason to explore licensing. However, there in reasonable basis to challenge the validity of the claim should one be forced to that position, on the ground that it fails to recite the necessary biased depth gauge/packing wheel needed for operability. (However, I would suggest there should be much more in depth searching and discussion before undertaking the second course of action.)

One also has to closely consider claim 3. Claim 3 recites the packer wheel, although it requires that the wheel function like a press wheel "in the furrow". It also requires that the seed tube be laterally offset so that it is working on the side wall of the fertilizer furrow. So claim 3 is free of the defects I have identified with respect to claim 19.

I don't believe that claim 3 is avoided because of Seed Hawk's lack of the "side to side adjustment" feature. I am of the view that the Federal Court would find your laterally offset fixed position for the seed tube would meet the language of the claim (I enclose Trial and Appeal Court decisions of the Federal Court in the Computalog case which support this view on my part.)

I view claim 3 to be dangerous and a better incentive than claim 19 to seek a license.

In closing then, I recommend that you try and work out an exclusive license with Halford on terms that are reasonable (i.e. better than "nuisance" terms). If you are unable to close with him, then one wants to very carefully consider the next step.

Our account is enclosed.

Yours truly,

OCILVIE AND COMPANY

Per:

E. PETER JOHNSON

EPJ:DLM

Direct Line: 429-6291

Enclosures

-           The individual defendants' lack of credibility; (at para. 723, 731, 744-746, 748, 755, 763, 769, 772, 774, 785, 795-797, 799)

[319]        I must say that the evidence of Norbert Beaujot was less than satisfactory from the point of view of credibility. The paragraphs cited above demonstrate a pattern of imperfect or inadequate recollection which always erred in the direction of favouring his interests. He gave the impression of someone convinced of the merit of his cause who was simply impervious to any suggestion that he might in fact be wrong.    I approach the evidence of Norbert Beaujot with considerable caution, and where there is a conflict between his evidence and that of others, I prefer that of others. I found Pat Beaujot to be more credible but I simply do not believe his evidence as to the first and second prototype. Such evidence, self-serving as it was and coming in so late is simply not believable. Brian Kent did not testify even though he is a defendant. In the absence of any evidence to the contrary, I conclude that Brian Kent had the same knowledge of events as did Pat and Norbert Beaujot.

[320]        I found James Halford to be generally credible but just as convinced of the merit of his position as Norbert Beaujot. To that extent, some of his evidence may have been coloured by his view of the injury done to him. For example, Mr. Halford's evidence was that upon first being advised that Norbert Beaujot intended to construct, and perhaps market a seeder, his response was to warn Norbert Beaujot that if he copied his device, he would take it as far as he had to, in spite of the fact that he had absolutely no information as to the type of seeder Norbert Beaujot intended to build. It is possible that Mr. Halford said these words. However, the fact that there was simply no reason for him to have those preoccupations at the time the conversation occurred

suggests that his recollection may be influenced by subsequent events. All of which is to say that while I generally prefer the evidence of Mr. Halford to that of Norbert or Pat Beaujot, where they conflict, I also approach the evidence of Mr. Halford with a certain reserve.

[321]        A good portion of the case against the individual Seed Hawk defendants is based upon their knowledge of the Halford patent and the Conserva Pak seeder. While this is not insignificant in terms of individual liability, it is critical to remember that infringement is not a matter of intention. Infringement can occur in circumstances where the infringer was completely ignorant of the patent or any embodiment of the invention described in patent:

I add that I make a distinction between the intention I have referred to in dealing with the liability of a person as a director and the overall matter of intention in respect to infringement generally. The latter aspect is dealt with in Fox, supra, at p. 381:

"The intention of an infringer is immaterial. Infringement is committed as much in ignorance as with actual intent. Everyone is presumed to have notice of a patent and, therefore, a patent may be infringed by one who is ignorant of its existence. As stated in Stead v. Anderson, the question of infringement depends not upon what the defendant intends, but upon what he does. Thus, in Young v. Rosenthal, Grove J. said: 'Intention is not a part of infringement. A man may infringe a patent although he does not know how he has infringed it, as a patentee may claim as a novelty that which is not a novelty. But then, if it is not a novelty, he must suffer; and if a man infringes he must suffer, whether he intentionally infringes or whether he does not intentionally infringe.' "

Mentmore Manufacturing Co. Ltd. et al. v. National Merchandise Manufacturing Co. Inc. et al. (1978), 40 C.P.R. (2d) 164 at p. 169 (Mentmore).

[322]        The corollary of this is that the presence of an intention to infringe does not establish infringement. It is what the defendant does that is important, not what he intends to do. On the other hand, intention may be relevant to the kinds of remedies available if infringement is established.

[323]        As a result, the knowledge of the Conserva Pak seeder and of the Halford patent are in my view irrelevant to the question of infringement by the Seed Hawk defendants, whether the corporate defendants or the individual defendants.

[324]        There is a tendency to treat the personal liability of directors for infringement as an aspect of patent law. My view is that the question of the personal liability of directors of a corporation with respect to infringement by the corporation is but a particular instance of the broader issue of the liability of directors for acts committed by them in connection with the business of the corporation while they occupied the status of directors. A succinct summary of the general principles appears in the decision of the Ontario Court of Appeal in Scotia MacLeod Inc. et al. v. Peoples Jewellers Ltd. et al. [1995] 26 O.R. (3d) 481:

First I propose to refer to some well-established authorities as to the role and liability of the directing minds of corporations in the absence of legislation.

In Lennard's Carrying Co. v. Asiatic Petroleum Co., [1915] A.C. 705 at p. 713, [1914-15] All E.R. Rep. 280 (H.L.), Viscount Haldane for the House of Lords said:

". . . a corporation is an abstraction. It has no mind of its own any more than it has a body of its own; its active and directing will must consequently be sought in the person of somebody who for some purposes may be called an agent, but who is really the directing mind and will of the corporation, the very ego and centre of the personality of the corporation. . . . For if Mr. Lennard was the directing mind of the company, then his action must, unless a corporation is not to be liable at all, have been an action which was the action of the company itself . . ."

The concept that the directors merge with the corporation for the purposes of giving the corporation a directing mind or will is often referred to as the "identification theory". It has been enunciated by Lord Reid in Tesco Supermarkets Ltd. v. Nattrass, [1972] A.C. 153 at p. 170, [1971] 2 All E.R. 127 (H.L.):

A living person has a mind which can have knowledge or intention or be negligent and he has hands to carry out his intentions. A corporation has none of these: it must act through living persons, though not always one or the same person. Then the person who acts is not speaking or acting for the company. He is acting as the company and his mind which directs his acts is the mind of the company. There is no question of the company being vicariously liable. He is not acting as a servant, representative, agent or delegate. He is an embodiment of the company or, one could say, he hears and speaks through the persona of the company, within his appropriate sphere, and his mind is the mind of the company. If it is a guilty mind then that guilt is the guilt of the company. It must be a question of law whether, once the facts have been ascertained, a person in doing particular things is to be regarded as the company or merely as the company's servant or agent. In that case any liability of the company can only be a statutory or vicarious liability. [Emphasis added]

The other side of the coin is that the company does not act as the agent for the directors. While directors can be liable as principals of the corporation, the agency of the corporation must be established and will not be inferred from the fact that they are directors: see British Thomson-Houston Co. v. Sterling Accessories Ltd., [1924] 2 Ch. 33 at p. 38, 93 L.J. Ch. 335.

The identification theory has been adopted by the Supreme Court of Canada in criminal prosecutions to provide the element of mens rea absent in a corporate entity but present in the natural person or persons who constitute its directing mind. In Canadian Dredge & Dock Co. v. R., [1985] 1 S.C.R. 662 at p. 693, 19 D.L.R. (4th) 314, Estey J. on behalf of the court stated:

The corporation is but a creature of statute, general or special, and none of the provincial corporation statutes and business corporations statutes, or the federal equivalents, contain any discussion of criminal liability or liability in the common law generally by reason of the doctrine of identification. It is a court-adopted principle put in place for the purpose of including the corporation in the pattern of criminal law in a rational relationship to that of the natural person. The identity doctrine merges the board of directors, the managing director, the superintendent, the manager or anyone else delegated by the board of directors to whom is delegated the governig [sic] executive authority of the corporation, and the conduct of any of the merged entities is thereby attributed to the corporation.

There was a good deal of discussion in this court and before the motions judge regarding what conduct of the directors would be sufficient to cause the directors to shed their identity with the corporation and expose themselves to personal liability for the corporation's alleged wrongdoing. We were referred to Mentmore Manufacturing Co. v. National Merchandise Manufacturing Co. (1978), 89 D.L.R. (3d) 195, 22 N.R. 161 (Fed. C.A.), White Horse Distillers Ltd. v. Gregson Associates Ltd., [1984] R.P.C. 61 (Ch. D.), and others in support of various tests.

[325]        The Court of Appeal restated its position in Normart Management Ltd. v. West Hill Redevelopment Co. (1998), 37 O.R. (3d) 97, where the followning appears at page 102:

It is well established that the directing minds of corporations cannot be held civilly liable for the actions of the corporations they control and direct unless there is some conduct on the part of those directing minds that is either tortious in itself or exhibits a separate identity or interest from that of the corporations such as to make the acts or conduct complained of those of the directing minds: see Scotia McLeod Inc. v. Peoples Jewellers Ltd. (1995), 26 O.R. (3d) 481 at p. 491, 129 D.L.R. (4th) 711 (C.A.). In the statement of claim in appeal, there is no factual underpinning to support an allegation that the personal defendants were at any time acting outside their capacity as directors and officers of the corporations of which they were the directing minds.

[326]        I conclude from this that corporate directors and officers are personally liable for conduct undertaken in the course of their corporate duties if that conduct is itself tortious or if it serves an interest other than the corporation's. With that principle in mind, I turn to an examination of the decision of the Federal Court of Appeal in Mentmore, supra. The underlying policy issue was laid out by Le Dain J.A:

What is involved here is a very difficult question of policy. On the one hand, there is the principle that an incorporated company is separate and distinct in law from its shareholders, directors and officers, and it is in the interests of the commercial purposes served by the incorporated enterprise that they should as a general rule enjoy the benefit of the limited liability afforded by incorporation. On the other hand, there is the principle that everyone should answer for his tortious acts. The balancing of these two considerations in the field of patent infringement is particularly difficult. This arises from the fact that the acts of manufacture and sale which are ultimately held by a Court to constitute infringement are the general business activity of a corporation which its directors and officers may be presumed to have authorized or directed, at least in a general way. Questions of validity and infringement are often fraught with considerable uncertainty requiring long and

expensive trials to resolve. It would render the offices of director or principal officer unduly hazardous if the degree of direction normally required in the management of a corporation's manufacturing and selling activity could by itself make the director or officer personally liable for infringement by his company. [page172]

This is a principle that should apply, I think, not only to the large corporation but also to the small, closely held corporation as well. There is no reason why the small, one-man or two-man corporation should not have the benefit of the same approach to personal liability merely because there is generally and necessarily a greater degree of direct and personal involvement in management on the part of its shareholders and directors.

[327]        The key to this passage is the remark to the effect that "everyone should answer for his tortious acts". If this is read consistently with the passages cited above as to the state of the law generally as to the liability of directors and officers, it suggests that directors can be held personally liable for corporate acts if the conduct of the directors is tortious. Le Dain J.A. then continued his analysis:

This view finds support, I believe, in the cases. It has been held that the mere fact that individual defendants were the two sole shareholders and directors of a company was not by itself enough to support an inference that the company was their agent or instrument in the commission of the acts which constituted infringement or that they so authorized such acts as to make themselves personally liable: see British Thompson-Houston Co., Ltd. v. Sterling Accessories, Ltd. (1924), 41 R.P.C. 311; Prichard & Constance (Wholesale), Ltd. v. Amata, Ltd. (1924), 42 R.P.C. 63. It is the necessary implication of this approach, I think, that not only will the particular direction or authorization required for personal liability not be inferred merely from the fact of close control of a corporation but it will not be inferred from the general direction which those in such control must necessarily impart to its affairs. I, therefore, have no difficulty in concluding, with respect, that the learned trial Judge was correct in holding that the fact "Goldenberg and Berkowitz imparted the practical, business, financial and administrative policies and directives which ultimately resulted in the assembling and selling of some goods (in National's overall stock of goods) which I have found infringed the plaintiffs' rights" was not by itself sufficient to give rise to personal liability.

.            .

[328]        The mere fact of exercising control is not sufficient to establish personal liability, a statement which raises the question as to what type of conduct is sufficient? Le Dain J.A. goes on to offer his views:                                    

What, however, is the kind of participation in the acts of the company that should give rise to personal liability? It is an elusive question. It would appear to be that degree and kind of personal involvement by which the director or officer makes the tortious act his own. It is obviously a question of fact to be decided on the circumstances of each case.

                                                                    [. . .]

But in my opinion there must be circumstances from which it is reasonable to conclude that the purpose of the director or officer was not the direction of the manufacturing and selling activity of the company in the ordinary course of his relationship to it but the deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement or reflected an indifference to the risk of it. The precise formulation of the appropriate test is obviously a difficult one. Room must be left for a broad appreciation of the circumstances of each case to determine whether as a matter of policy they call for personal liability.

Mentmore, supra, at p. 172-174.

[329]        I must confess some confusion as to what Le Dain J.A. had in mind when he referred to a "deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement" as opposed to "the direction of the manufacturing and selling activity of the company in the ordinary course of his relationship to it". If he is referring to a course of conduct on the part of the director that in itself amounts to infringement, then his position is consistent with the general tenor of the law as to director's liability, and with his prior comments. But, if    Le Dain J.A. is saying that conduct which would not amount to infringement if attributed to the corporation creates personal liability for infringement if attributed to the directors, then I believe that he has departed from principle.

[330]        It seems to me that the principle underlying Le Dain's comment is that the courts will not allow a corporation to be used as an instrument of fraud. An example of this principle, in the context of secured transactions, is found in Carson Restaurants International Ltd. v. A-1 United Restaurant Supply Ltd., [1989] 1 W.W.R. 266. I would respectfully suggest that Le Dain J.A. had a similar test in mind with regard to the personal liability of directors when he said:

What, however, is the kind of participation in the acts of the company that should give rise to personal liability? It is an elusive question. It would appear to be that degree and kind of personal involvement by which the director or officer makes the tortious act his own. (at p. 172)

[331]        In other words, liability attaches when the actions of the director or officer are either such that the director's own behaviour is tortious, or when the corporation is simply used as a cloak for the personal activities of the director. Both possibilities are consistent with general principles of governing the personal liability of director and officer and avoid creating a type of personal liability of directors which is peculiar to patent infringement.

[332]        For that reason, I believe that some care must be taken in applying a test based on "an analysis of the conduct of the personal defendant, to determine whether or not her actions can be characterized as dishonest, "deceptive and deliberately reckless behaviour", or indifference to the obvious consequences of her actions, such that a finding of personal liability is appropriate". Society of Composers, Authors and Music Publishers of Canada v. 1007442 Ontario Ltd.

(2002), 20 C.P.R. (4^th) 68 (F.C.T.D.). This suggests that the personal liability of directors depends upon the moral quality of their behaviour. Dishonesty is not commendable but it is not infringement.

[333]        At this point, I turn to the pleadings to see what the plaintiffs have alleged as against the individual Seed Hawk defendants:

16. The defendants Pat Beaujot, Norbert Beaujot and Brian Kent were at all material times officers and directors of Seed Hawk. As such, they were at all material times in a position to control the activities of Seed Hawk and did in fact exercise such control. The defendants Pat Beaujot, Norbert Beaujot and Brian Kent have deliberately, willfully and knowingly directed Seed Hawk to infringe and to induce others to infringe the exclusive rights of the Plaintiffs.

Amended Statement of Claim, September 14, 1999.

[334]        This paragraph discloses two different causes of action. The first is that the individual defendants "deliberately, willfully and knowingly directed Seed Hawk to infringe". The second is that the individuals induced others to infringe the plaintiffs' rights. None of the facts upon which the plaintiffs rely would support the second cause of action.

[335]        As for the first cause of action, the plaintiffs have simply pleaded the formula which appears in Mentmore, supra. They have not alleged against the individual defendants' specific facts to show that their conduct was tortious in and of itself. Nor, in my view, have they proven such facts. While they have alleged, but not pleaded, that the corporation was set up solely for the sole purpose of infringing the plaintiffs' rights, the only thing which they have proven in that regard is the sequence of events. In my view, no conclusion can be drawn from the sequence of events. Nor is there anything inherently suspicious in using a corporate structure to launch a new business. That vehicle has a number of advantages including tax planning, allocation of ownership interests and income splitting.

[336]        The plaintiffs have made much of the fact that others warned the individual defendants of the possibility of infringement, arguing that their decision to proceed in the face of such warnings was evidence of knowing willful conduct. I can think of no surer method to stifle all innovation than to hold that a warning of possible infringement is sufficient to establish personal liability on the part of corporate employees, directors and officers. The determination as to infringement involves a very complex judgment about which reasonable people can easily disagree. Messrs Willmott, Hultgren and Leduc apparently believed that the Seed Hawk device infringed or "was close" to the Halford invention. This analysis is being conducted "in the alternative" because I have found that it does not infringe. There is no bright line test for infringement save in the case of a shameless copy. If an inventor was bound to proceed at the risk of personal liability simply because of receiving one or more opinions that infringement was possible, innovation would be artificially dampened. Existing rights holders would seek to intimidate new entrants into the market by threats of personal liability while those advising new entrants would be careful to stress the possibility of personal liability for fear of claims against them for failing to adequately warn their clients.

[337]        Does the advice received by the individual defendants from their own lawyer,                       Mr. Johnston stand on a different footing? In my view, it does not. My own view is that                 Mr. Johnston's advice is more nuanced than the plaintiffs allege. Mr. Johnston expresses the risk of infringement of a claim which he believes to be invalid. He warns Mr. Beaujot that there may be a perception problem which may influence the judge's perception of the case. He notes similarities and differences between the Seed Hawk device and the patent. I do not see in Mr. Johnston's letter an unequivocal assertion of infringement, though he strikes a cautionary note. This is to be expected since, in my view, it is in the very nature of professional advisers to be conservative in their views since they can only be criticized for failing to identify risks but not for identifying too many. It is not necessarily an act of willfulness to take a more aggressive view of the merits of one's position than one's professional advisers.

[338]        Further, I reject the suggestion that the Seed Hawk device is simply a copy and modification of the Halford invention. Mr. Norbert Beaujot is a professional engineer who spent some considerable time developing the concept of his invention. It is a concept which, in my view, is distinct from and superior to that of the plaintiffs'. The fact that he was able to bring his machine to market more quickly than Mr. Halford may be attributable to many innocent factors such as greater skill and greater financial resources than Mr. Halford, whose considerable skills I do not mean to minimize.

[339]        All in all, I find that the case against the individual defendants, at its highest, is that they

decided to take a chance that they were right about infringement and that Mr. Halford was wrong. That is a long way from embarking upon a deliberate scheme of appropriating the plaintiffs' invention. As a result, I find that the individual defendants are not liable to the plaintiffs even if it is found that the corporate defendants infringed certain claims of the Halford patent. However, I will say that if I had found that they were personally liable, I would reject out of hand their plea that they should be spared the consequences of such a finding. They were entitled to take the chance they did. But, if they are wrong, they have to live with the consequences.

                                             SIMPLOT

      DID SIMPLOT INDUCE OR ABET INFRINGEMENT ?

[340]        The last matter to be dealt with is the claim against the defendant Simplot for abetting or inducing infringement of the plaintiffs' patent by the Seed Hawk defendants. In view of my conclusion that there has been no infringement, it is, strictly speaking, unnecessary for me to consider this claim. However, as in the case of the individual defendants' personal liability, I will consider this claim on the assumption that infringement has been proven.

[341]        The elements of the tort of inducing infringement were set out by the Federal Court of Appeal in Dableh v. Ontario Hydro, [1996] 3 F.C. 751, at paragraph 43 (application for leave to appeal dismissed [1996] S.C.C.A. No. 441):

This early statement has been little qualified over the years and lists the essential ingredients in an inducement action. More recently they were confirmed in Warner-Lambert Co. v. Wilkinson Sword Canada Inc. [(1988), 19 C.P.R. (3d) 402 (F.C.T.D.)], by Jerome A.C.J. who stated at page 407:

1) That an act of infringement was completed by the direct infringer...

2) Completion of the act of infringement was influenced by the acts of the inducer. Without said influence, infringement would not otherwise take place...

3) The influence must knowingly be exercised by the seller, i.e. the seller knows his influence will result in the completion of the act of infringement." [citations omitted]

These are the three criteria which must be met in an action for inducing infringement, and in each case it is a question of fact as to whether inducement is proved.

[342]        The citation from Jerome A.C.J. is itself a citation from an article by François Grenier entitled "Contributory and/or Induced Patent Infringement" (1987), 4 Canadian Intellectual Property Review 26.    It is worth noting that all of the cases relied upon by M^e Grenier, save one, are cases of sales of products to a third party who is found to infringe the patent. The question is whether the intermediary is liable for inducing breach of contract. The case which did not involve sales was a tendering case Reading & Bates Construction Co. et al. v. Baker Energy Resources Corp. et al. (1986), 9 C.P.R. (3d) 158, in which the owner of a project was alleged to have induced infringement when the successful tenderer infringed the plaintiffs' patent. This is no more than a sale of services as opposed to a sale of products and therefore is subject to the same considerations.

[343]        I raise this distinction because it seems to me that the issue in this case is rather different. This is not a case of where Simplot is alleged to have trafficked in components of the patented device so that Simplot's customers infringed the patent by purchasing Simplot's product. This is a case of an arm's length arrangement in which one party provides assistance to another party for the purpose of developing its own business. Simplot did not sell anything to Seed Hawk, nor did anything which Simplot sold to Seed Hawk's customers infringe the plaintiffs' patent in any way.

[344]        In its Written Submissions, Simplot raises the issue of the distinction between inducing infringement and aiding and abetting infringement. I agree with the observation at paragraph 26 of the Written Submissions that the case of Procter & Gamble Co. v. Bristol-Myers Canada Ltd. (1978), 39 C.P.R. (2d) 145 (F.C.T.D) (Procter & Gamble) which is widely quoted as the seminal authority with respect to aiding and abetting does not distinguish between the latter and inducing infringement. Furthermore, subsequent cases which raise the issue of aiding and abetting do so in light of the language used in Procter & Gamble, idem. Given that the distinction is judge made and not statutory, the onus is on those asserting the existence of an independent actionable tort of aiding and abetting infringement to establish its existence and its elements. I see nothing in the plaintiffs' Final Argument which is capable of doing so. For that reason, my consideration of the claim against Simplot is limited to the issue of inducing infringement.

[345]        The facts upon which the plaintiffs rely in support of their claim against Simplot are the following:

-            Simplot was aware of the Halford patent from a variety of sources:

-           the attendance of a Simplot employee at the Halford farm;

-           the attendance of Pat Beaujot, a Simplot employee, at the Halford farm;

-           the suggestion by Simplot employee Smith that Mr. Halford meet with Pat Beaujot at the Crop Production show in Saskatoon to discuss the adaptation of the Conserva-Pak seeder to use liquid fertilizer;

-           the meeting with Pat Beaujot at the Crop Production show in Saskatoon in January 1992;

-           the contract by which Simplot bound itself to provide $20,000 to finance the development of the Seed Hawk device and to provide assistance in the marketing and promotion of the device;

-           the differences between Simplot's agreements with other developers and the agreement it concluded with Norbert Beaujot;

-           the allocation of $6,000 for promotional assistance before a Seed Hawk device had been completed and used.

-           Simplot's promotion of the Seed Hawk device at various public events, both before and after being put on notice by the plaintiffs' solicitors.

-           Simplot's promotion of the Seed Hawk device in other ways after being put on notice by the plaintiffs' solicitors.

-           Simplot's reliance upon advice from Seed Hawk's solicitors with respect to infringement as opposed to obtaining its own independent advice.

-           the partial termination of the development agreement which left Seed Hawk under a continuing obligation to manufacture its seeder;

-           the nature and effect of Simplot's advertising.

[346]        The plaintiffs' pleadings against Simplot are as follows:

17.            Simplot has systematically engaged, for its own profit, in inducing and in aiding and abetting the infringement of the patent by Seed Hawk and, therefore, has itself infringed the said patent.

18.          The particulars of Simplot's inducement, aiding and abetting of the infringement of the patent by Seed Hawk include, inter alia:

(a) the contribution of funds by Simplot to Seed Hawk for the construction of infringing devices;

(b) the promotion by Simplot of Seed Hawk's infringing devices by including them in the promotional activities of Simplot, such as:

(i)            picturing Seed Hawk's device in Simplot's newspaper and other printed advertisements;

(ii)            the exhibition and dissemination of promotional material of the Seed Hawk device in the Simplot booth at agricultural trade shows; and

(iii)           the exhibition and dissemination of promotional material of the Seed Hawk device through the Simplot dealer network.

19.            The activities of the defendants as described above have at all times been without leave or license of the plaintiffs and commenced unknown to the plaintiffs.

[347]        In light of these pleadings, it is not necessary for me to consider the effect of Simplot advertising and promotion. The plaintiffs' position on marketing and promotion is summarized at paragraph 702 of their Final Argument:

702. Selling really is defined as transferring title; all else is marketing. That is what Simplot did to encourage the purchase and use of the Seed Hawk seeders. Through its marketing efforts, Simplot caused the eventual users of the Seed Hawk seeders to buy them. Put another way, but for Simplot's advertising scheme, the eventual end user would not have purchased the Seed Hawk seeder. It is clear that such conduct itself constitutes inducement to infringe.

[348]        It is trite law that the monopoly granted by the Patent Act extends to "the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used". Assuming without deciding that the plaintiffs' analysis is correct, it only establishes that Simplot induced infringement by the purchasers of the Seed Hawk seeders. But, its pleadings are limited to allegations of inducement to Seed Hawk to infringe the plaintiffs' patent. Nothing is said of inducing infringement by the eventual users of the machines. Consequently, there is no need to consider whether or not Simplot's advertising induced farmers to purchase the Seed Hawk seeder.

[349]        In my view, the plaintiffs' claim of inducing infringement fails with respect to the second element of the test, i.e., proof that without the assistance of Simplot, the infringement would not have occurred. The plaintiffs' case on this point is set out as follows:

697. It is submitted that, but for the $20,000 grant which allowed the construction of the prototype seeder; but for the display, both figurative and literal, of the prototype machine "under the Simplot flag" at the 1992 Farm Progress Show; and but for the continued promotion and promise of promotion of the Seed Hawk seeder both to the public and through Simplot's own dealer network, the Beaujots would not have had the means to forge ahead with the project, much less succeed. Halford's evidence demonstrates that it took him almost eight years to develop a successful design and perfect it through five prototypes before generating sales of his seeder without any external assistance from a multi-national corporation. Somehow, the Beaujot's and Brian Kent accomplished the same in mere months. It is submitted that this could not have occurred but for Simplot's assistance.

Plaintiffs' Final Argument, at para. 697.

[350]        With respect, this does not demonstrate that infringement would not have occurred but for the assistance rendered to Seed Hawk by Simplot. It may prove that the infringement may not have happened as early as 1992, but it does not prove that the Seed Hawk defendants would have abandoned their project but for the assistance of Simplot. This issue was canvassed in the evidence of Norbert Beaujot who testified that he was committed to construction of the prototype before Simplot committed to providing funds:

A. The proposal was basically laid out as a carrot, I call it. I wanted to encourage Simplot to back a research project that I was already committed to doing, but I didn't tell them those facts at the time. I had already planned on going ahead with the machine, first of all, and I had even already planned on going ahead with the machine in the configuration that I built it.

The proposal laid out an opportunity for them to change my mind. I had done a lot of the early designs with granular fertilizer in mind. I had completed my design of the openers themselves, and I was not in a position to change my thinking on the opener. But I laid a situation out to them that if they funded part of the research that I would be able to be swayed into using a liquid fertilizer on the first unit instead of granular fertilizer. And that was probably somewhat deceptive to them, because I had already planned on using liquid. But anyway, it was a carrot and they nibbled at it.

Transcript, June 21, 2002, at p. 3200-3201.

                                                                    [. . .]

Q. Thank you, sir. Now, sir, as of the date of this agreement, March the 2nd, of 1992, had you commenced production on the prototype itself? The machine that you were building?

A. I'm not sure whether the welding had started or was just in the process of. I had purchase orders that were dated prior to that date that relate to the seed metering portion of the device.

Q. And when would those purchase orders have been, I guess I'll use the word issued?

A. They were issued mid to late February of 1992.

Q. In relation to being advised by Simplot that they were going to sign an agreement with you and provide you with a cheque, would it have been before or after that? That the purchase orders were issued?

A. Oh, it was before that, yes.

Transcript, June 24, 2002, at p. 3364-3365.

                                                                    [. . .]

Q. Were you working jointly with Simplot to build this seeder?

A. No.

Q. What was their role in the development of this seed, if any?

A. They took no role. I saw them more as a -- as a banker. I had tried to get a grant through IRAP and IRAP was out of funds and it seemed to be a way of getting funds that would go towards the prototype.

Transcript, June 24, 2002, at p. 3365-3366.

                                                                    [. . .]

Q. Okay. Now sir, I'd like to draw your attention back to the cheque for $20,000.00 which you received from Simplot. What did you do with that $20,000.00?

A. It went into the Beaujot Holdings account and I used it to purchase material for the -- for the prototype seeder.

Q. And again, I know this sounds a little bit similar to what I have already asked you, but aside from the decision to go liquid, did Simplot's grant of this $20,000.00 and the remaining elements which are in the March 2nd agreement cause you to build this seeder in the way that you did?

A. No, it did not. The purchase order that I have that's dated in February was for the Valmar System and the Valmar System is the -- is the seed and not the fertilizer, but I -- I had already chosen the complete seeder configuration prior to receiving the $20,000.00. The construction of the device for granular fertilizer would have been quite a lot more complicated for me at that time and I didn't have the time to do anything with the seed and fertilizer systems that I couldn't simply purchase off the shelf. So I turned to methods that, for that portion of the seeder, that I could just purchase the Valmar off the shelf -- off the shelf being a little bit misleading I suppose. It's a fairly large piece of equipment, but it was a complete item that I could purchase Valmar and complete items that I could purchase that relate to the liquid fertilizer systems. And I wasn't -- at the end of the day I wasn't trying to experiment with the seed delivery system or the -- or the liquid fertilizer delivery system. My experimentation was simply on the opener itself.

Q. Particularly with respect to the openers, did the $20,000.00 or the other terms of this agreement influence you into the way or how you built those openers?

A. Not at all, no.

Transcript, June 24, 2002, at p. 3370-3372.

[351]        In cross-examination, the following emerged:

Q. All right. You have given evidence about your discussions with Joe Willmott of PIMA, right?

A. Yes.

Q. And is it not the case that on or about February 5, 1992, you advised Mr. Willmott that Simplot had tentatively agreed to invest $20,000 into the development of your machine?

A. That's in his desk notes. Yes

Q. Do you accept the -

A. So I accept.

Q. -- veracity of his note?

A. I accept that I must have given him that impression.

Other than on this point, Mr. Beaujot's evidence as to his intentions with respect to the development of his seeder was not challenged or shaken.

[352]        It is my conclusion based upon the evidence cited above as well as my appreciation of the whole of the evidence given by Norbert Beaujot and Pat Beaujot that it was Norbert Beaujot's intention to develop a seeder, and that his approach to Simplot was simply a means of accomplishing his goal. I am satisfied that he would have persisted in his efforts to develop his design even if Simplot had not provided financial and marketing assistance. It may well be that the assistance provided by Simplot expedited the development of his design for a seeder, but there is no evidence which would support the conclusion that but for the contract with Simplot he would have abandoned his project. And since the onus with respect to this issue is on the plaintiffs, the absence of evidence is fatal to their position.

[353]        For those reasons, the claims against Simplot must fail.

CONCLUSION

[354]        In the end result, I conclude that the claim and counterclaim both fail. The allegations of infringement have not been established for two reasons, the absence of a frame mounted fertilizer knife and the substitution of a common mounting member for all three key elements constructed so that all three elements moved about a common pivot, and a seed tube which does not engage the soil solely by its outer surface. I have found that there are other substitutions and variations but I conclude that none of them are sufficient to constitute infringement.

[355]        The challenges to the validity of the patent also fail though for a greater variety of reasons.

[356]        The claim against the individual Seed Hawk defendants fails as infringement has not been found. Had I concluded that there was infringement, I would not have found against the individual defendants as I have concluded that none of their conduct was tortious in itself. Furthermore, there was no conduct to suggest that the corporate vehicle was an instrument of fraud, or simply a device to cloak the personal activities of the individual defendants.

[357]        The claim against Simplot also fails because I have found no infringement. However, had I done so, I conclude that there is nothing to show that the Seed Hawk defendants would not have infringed but for the activities of Simplot.

[358]        The defendants are entitled to an order dismissing the claim while the plaintiffs are entitled to a declaration of validity of the asserted claims. The defendants are entitled to their costs but, in the circumstances, costs are to be spoken to by way of Notice of Motion.

[359]        I wish to express my appreciation to counsel for their assistance and their civility in the course of a difficult trial, which was made all the more difficult for having been spread over four years.

                                               ORDER

Having heard the evidence of the witnesses called by the parties, and having heard the representations of counsel on behalf of the parties, it is hereby ordered and adjudged that:

1- The claims against the defendants Seed Hawk Inc., Pat Beaujot, Norbert Beaujot, Brian Kent, and Simplot Canada Limited are dismissed with costs, costs to be spoken to by Notice of Motion.

2- The counterclaim against the defendants by counterclaim James Halford and Vale Farms Ltd. is dismissed.

                                                             (s) "J.D. DENIS PELLETIER"             

                                                                                         Judge

                                          SCHEDULE 1

FIG. 1

                                          SCHEDULE 1

FIG. 5

                                          SCHEDULE 2

1. Fertilizer Location (1" below, 1 1/4" to side of seed)

2. Seed Location (Shallow from packed surface)

3. Packed Surface

4. Tungsten Carbide Cutters

5. Pneumatic Packer / Gauge Wheel (good mud release)

6. Seed Knife (½" wide)

7. Seed Drop Tube

8. Fertilizer Knife (½" wide)

9. Trip plate

10. Chain

11. Depth Lock Bolt

12. Depth Gauge (accurate to 1/8")

13. Hanging Bracket

14. Hydraulic Cylinder

15. Placement Arm

16. Fertilizer Drop Tube

17.U-Bolts (to the Frame)

                                     FEDERAL COURT

    NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                               T-2406-93

STYLE OF CAUSE: James W. Halford and vale Farms Ltd., v. Seed Hawk Inc., Pat Beaujot, Norbert Beaujot, Brian Kent and Simplot Canada Limited.

PLACE OF HEARING:         Winnipeg, Manitoba

DATES OF HEARINGS:       November 6, 2000, resumption October 15, 2001, resumption June                                         17, 2002, resumption February 3, 2003

REASONS FOR ORDER : The Honourable Mr. Justice Pelletier

DATED:                                 January 23, 2004

APPEARANCES:

Steven Raber                             FOR PLAINTIFFS

Dean Giles

Edward Herman

Alexander Macklin                    FOR DEFENDANT- Seed Hawk

Doak Horne

Irene Bridger

Wolfgang Riedel                        FOR DEFENDANT- Simplot

SOLICITORS OF RECORD:

Fillmore Riley                FOR PLAINTIFFS                              

1700 Commodity Exchange Tower

360 Main Street

Winnipeg, MB, R3C 3Z3

Gowlings                                   FOR DEFENDANT- Seed Hawk

Suite 1400

700 - 2^nd Street S.W.

Calgary, AB, T2P 4V5

Meighen, Haddad & Co.           FOR DEFENDANT- Simplot

Barristers & Solicitors

P.O. Box 22105

110 - 11^th Street

Brandon, MB, R7A 6Y9