Halford v. Seed Hawk Inc., 2001 FCT 1154

Date: 20011024

Docket: T-2406-93

Neutral citation: 2001 FCT 1154

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

PELLETIER J.

[1]                 The Plaintiff tenders the Affidavit of Dr. Sylvio Tessier containing Dr. Tessier's expert evidence in support of its case. Dr. Tessier has been examined and cross-examined with respect to his qualifications as an expert and I have ruled that he is qualified to offer opinion evidence with respect to the design and evaluation of seeding and fertilizing devices, soil mechanics and soil dynamics.

[2]                 The defendants object to the admissibility of a number of paragraphs in the affidavit on various grounds.

[3]                 The defendants object to the admissibility of paragraph 18 on the ground that it is either an attempt to construe the patent by listing the "essence of the invention", or it is irrelevant.

[4]                 Paragraph 21 is objected to on the basis that it involves the construction of the patent. Paragraph 21 says:

"I have been asked to specifically consider whether, in my opinion, the Seed Hawk seeders infringe the claims of the Halford patent with particular emphasis on the elements recited in Claims 1, 2, 3, 6, 10, 12, 19, and 20"

[5]                 In my view, this paragraph is nothing more than a statement of Dr. Tessier's mandate and is unobjectionable. Whether he is entitled to give the evidence which he was asked to give is another question, which I will decide in dealing with the other paragraphs to which objection is taken.

[6]                 Two sentences in paragraph 33 are objected to because they call for or imply a construction of the patent.

[7]                 Paragraph 34 is objected to if it is determined that it refers to material other than the McKyes article.    It is not obvious to me that it does refer to material other than that appearing in the McKyes article and so I decline to strike it at this stage.

[8]                 The defendants say that paragraphs 36 to 44 should be struck on the basis that they represent a test or experiment which was conducted in the absence of the defendant's representatives.

[9]                 Objection is taken to the last sentence of paragraph 45 on the basis that it refers to innovations of the Halford invention, which calls for construction of the patent.

[10]            The defendants move that paragraphs 46 to 48 should be struck to the extent that they refer to or contains information arising from the testing described in paragraphs 36 to 44.

[11]            Paragraphs 49 and 50 are objected to by the Defendants on the ground that they require Dr. Tessier to construe the patent, exceed the boudaries of the expert qualification which I have granted him by requiring him to express an opinion on a matter of law, or call for an opinion on the ultimate issue which the Court is called upon to decide.

[12]            The objections taken to paragraph 18 and to paragraphs 49 and 50 turn on the question of the admissibility of opinion evidence on the construction of the patent. I therefore begin with a consideration of that issue.

[13]            There is a line of authority which holds that opinion evidence is admissible on the construction of a patent, that is, an expert witness is allowed to give evidence as to the meaning and construction of the patent in suit and as to the infringement or validity of the patent. A review of the authorities is found in Rucker Co. v. Gavel's Vulcanizing Ltd (1985) 7 C.P.R.(3d) 294 Walsh J. began his review with Amfac Foods Inc. v. Irving Pulp and Paper Ltd (1984) 80 C.P.R. (2d) 59 where Strayer J. held that he was bound by the decision of the Court of Appeal in Cutter (Canada) Ltd. v. Baxter Travenol Laboratories of Canada Ltd (1983) 68 C.P.R. (2d) 179 in which Thurlow C.J. said the following:

The paragraph went on to express an opinion as to the meaning of "cannula" in the patent and that the appellant's device was within it. In my opinion, this was an interpretation of the document itself and the witness' opinion was inadmissible.

[14]            Thurlow C.J. cited no authority for this conclusion, no doubt relying upon the proposition that construction of a document is a matter of law. Strayer J. felt himself bound by this proposition in Amfac when he ruled as follows:

I concluded that I was bound by the decision of the Court of Appeal with particular reference to the non-admissibility of the opinion of an expert on the meaning of a patent. I assumed that the Court of Appeal had in mind the particular problems of the interpretation of a patent, regarding it as a question of law and thus distinguishable from general developments with respect to admissibility of evidence as to the "ultimate issue" of fact. I therefore ruled that the expert witness could be asked questions as to what a person skilled in the art would have understood from reading the patent at the time when application was made for the patent, but could not testify as to the meaning of the patent as such nor as to the intention of the inventor.

[15]            No additional authority was cited by Strayer J. in support of the proposition put forward by Thurlow C.J.. Walsh J. then went on to point out that there was contrary authority in the reasons of Collier J. in Xerox of Canada Ltd v. I.B.M. Canada Ltd (1977) 33 C.P.R. (2d) 24 where after a lengthy review of the authorities, the learned judge concluded that opinion evidence was receivable on the "ultimate issue":

In my view there should be no difference between civil and criminal matters, as to the limits of expert opinion. If expert testimony on ultimate issues is admissible where guilt or innocence, imprisonment or liberty, are at stake, then opinions on ultimate issues in civil suits, including patent litigation, should equally be admissible. But the trier of fact alone (whether Judge or jury) must still determine all ultimate issues. Expert opinion on questions such as anticipation or obviousness (to use two examples in this case) can be very helpful. It is, of course, not binding in any way. The tribunal may, however, after weighing the evidence, adopt any opinion or any part, as its own.

[16]            This conclusion was reached after a rather comprehensive review of the authorities beginning with the English authorities which held that opinion evidence was admissible to prove "the state of knowledge in the craft, art or science to which the specification is directed and the explanation      of technical terms, words and phrases" ..."but, beyond this, evidence affecting construction should not be allowed to stray". After a review of English and Canadian patent cases to the same effect, Collier J. turned to the criminal law cases dealing with the issue of opinion evidence on the "ultimate issue". He found that opinion evidence on the ultimate issue was allowed largely on the basis of the law developed in criminal cases. For example in one case, the issue was whether the conduct of the accused constituted gross indecency and expert evidence was admitted on that issue. Collier J. held that evidence on the ultimate issue was admissible. However, it is important to note the kind of expert evidence which Collier J. had before him:

The expert witnesses here gave evidence as to the state of the prior art; what the specifications of the patents in suit disclosed to them; what the prior art references (including prior patents) meant or revealed to them; whether an ordinary skilled workman in the relevant art, at a particular date, would, in trying to solve a problem, have found precisely what he needed in a particular prior publication, use, etc. (anticipation); whether in the light of the common knowledge and the "prior art" an ordinary skilled and uninventive workman would, in trying to resolve a particular problem, have easily and readily arrived at the same solution found by the "inventor" of the patent in suit (obviousness).

[17]            There is no reason to believe that Collier had before him expert opinion on the meaning to be given to the patent itself. The nearest one might get to such evidence is the reference to "what the specifications of the patents in suit disclosed to them" which is a different matter than evidence as to the proper construction of the patents in suit. My view is that Collier J.s remarks in Xerox do not derogate from the historical position that expert evidence is not admissible as to the construction of a document. Whether, on the facts, an expert may offer an opinion on an ultimate issue is another question. But, in my view, when one offers opinion evidence as to the construction of a document, one is outside the area of "ultimate issue".

[18]            Walsh J. then referred to a passage fromConsolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd (1981) 56 C.P.R. (2d) 145 (S.C.C.) which was said by plaintiffs in that case to support the reception of opinion evidence with respect to the construction of a patent. In that passage, Dickson J. (as he then was) cited with approval an earlier statement by Pigeon J. in Burton Parsons Chemicals et al. v. Hewlett Packard (Canada) Ltd (1974) 17 C.P.R. (2d) 97 at p. 104:

While the construction of a patent is for the Court, like that of any other legal document, it is however to be done on the basis that the addressee is a man skilled in the art and the knowledge such a man is expected to possess is taken into consideration.

[19]            I do not see in these words support for the proposition which is in issue. I note in particular that Justice Pigeon confirmed that construction of the patent is "like that of any other legal document". Expert evidence is not received as to the construction of other legal documents. I also note that the comment that the knowledge of the man skilled in the art is to be taken into account does no more than recognize that the state of knowledge of the man skilled in the art is a proper subject for expert evidence as noted in the English cases noted by Collier J.

[20]            In the end, Walsh J. accepted that the evidence tendered by the expert Mr. DeVries "expressing the views he did as to the proper construction of the patent" was properly received. In my view, the authority upon which he relied did not go so far as that.

[21]            A cautionary note was sounded by Robertson J.A. in Nekoosa Packaging Corp. v. United Dominion Industries (1994) 56 C.P.R. (3d) 470:

It is important to recognize that it is one matter for an expert to provide assistance in interpreting technical terms and quite another for him or her to proffer an opinion on the very issue to be decided by the trial judge. ...

[22]            Robertson J.A. then went on to note that the authority on the point was divided but that the weight of authority appeared to favour reception of evidence on ultimate issues. Later in his reasons, he returned to the issue when considering the evidence of the inventor:

Earlier, I discussed the question of admissibility of expert opinion on the very issue to be decided. That issue takes on greater significance when it is the inventor himself or herself testifying on the proper construction of the patent. In my opinion, the question of the admissibility of such testimony has been settled. In Johnson Controls Inc. v. Varta Batteries Ltd. (1984), 80 C.P.R. (2d) 1 at pp. 27-8, 3 C.I.P.R. 1, 53 N.R. 6 (F.C.A.), Urie J.A. adopted the decision of the Exchequer Court in Lovell Manufacturing Co. v. Beatty Bros. Ltd. (1962), 41 C.P.R. 18, 23 Fox Pat. C. 112, where Thorson P. stated at p. 38: "Even the testimony of the inventor himself as to what his invention was would be inadmissible for the purpose [of patent construction]". The fact that Urie J.A.'s remarks in Johnson, supra, are obiter, does not detract from the jurisprudence on this point. The general rule is that extrinsic evidence is inadmissible for the purpose of construing a patent specification and this must necessarily extend to the testimony of the inventor pertaining to the proper construction of the specification: see also P.L.G. Research Ltd. v. Jannock Steel Fabricating Co. (1991), 35 C.P.R. (3d) 346, 46 F.T.R. 27, 26 A.C.W.S. (3d) 1157 (T.D.); affirmed 41 C.P.R. (3d) 492, 142 N.R. 203, 55 F.T.R. 240n (C.A.).

emphasis added

[23]            I can see no basis for distinguishing between the evidence of the inventor as to the meaning of the patent and the evidence of an expert. If the inventor who is the putative author of the patent cannot offer his opinion as to its proper construction, I can see no basis on which an expert, who could scarcely know more about the subject than the inventor, should be able to do so.

[24]            I conclude that the authorities dealing with the admissibility of opinion evidence on the "ultimate issue" are of limited assistance in dealing with the issue of the admissibility of expert evidence on the construction of the patent. The "ultimate issue" in a particular case may be an issue of fact, an issue of law or an issue of mixed fact and law. In the case of a patent action, the ultimate issue is infringement or validity. An essential step in forming a conclusion as to invalidity or infringement is construing the patent. That task is reserved to the judge and is a pure question of law. The judge is entitled to the assistance of experts in understanding the terms used in the patent as well as the underlying science. But that is where it ends. The judge must construe the patent and until he does, there is no basis upon which an expert can offer an opinion as to infringement since the expert cannot substitute his view of the proper construction of the patent for the judge's.

[25]            I therefore find that paragraph 50 of the affidavit of Dr. Tessier is inadmissible since it contains conclusions on the infringement of the Halford patent. Paragraph 49 contains two columns, the claims of the patent in a column on the left side of the page and a listing of features of the Seed Hawk device in the right hand side of the page. The disposition of the page results in the juxtaposition of the claims and certain features of the Seed Hawk device which may have some relationship to the element described in the claim. In and of itself, this does not contain an opinion as to the construction of the patent though it may represent an arrangement of data upon which the court, after construing the patent, could come to a conclusion about infringement. To the extent that it suggests to the court that certain mechanical arrangements might be relevant to the question of infringement, it may be useful to the court. The bare fact of juxtaposition without comment is not objectionable.

[26]            Objection was also taken to paragraph 18 of Dr. Tessier's affidavit. The opening words of paragraph 18, which appear below the heading "The Invention in Suit" are the following:

The invention described in the Halford patent pertains to a device allowing side banding of fertilizer while seeding, defined by a vertical and lateral separation between a band or row of fertilizer and a band or row of seeds. Several features combine to form the essence of the invention as it operates in the ground:

[27]            This is followed by 12 subparagraphs which set out various features of "the invention described in the Halford patent". It is the reference to the "essence of the invention" which attracts the defendants' objection because it is closely ressembles the language used in claims for substantial (as opposed to literal) infringement of a patent. The question of whether patents protect only the literal meaning of the claims or whether patent protection extends to the "substance" of the invention was put to rest in Free World Trust v. Électro Santé Inc. et al (2000) 9 C.P.R. (4^th) 168. It is now clear that the patent protects only the invention described in the claims, as understood by a workman skilled in the trade, as of the date of the patent. To the extent that the list is an attempt to enumerate the essential features of the claims so as to decide the issue of infringement, it would be inadmissible.

[28]            The defendants also object to the admission of paragraph 18 on the ground that there is no evidence as to the common knowledge of the workman skilled in the art. It is true that the patent is directed to the workman skilled in the art and must be understood as he would understand it.

The understanding which an expert has of the teaching of the patent may be relevant for some purposes but it is not conclusive as to what a workman skilled in the art would take away from the patent. On the other hand, the absence of any reference to the notional workman may make paragraph 18 marginally relevant but it does not make it inadmissible.

[29]            Upon reading paragraph 18, I take it tobe a listing of the features disclosed to Dr. Tessier by either the claims of the patent or his examination of a particular device. To that extent it would be inadmissible. If anything more is made of it, the objection may be renewed.

[30]            In reviewing paragraph 33, and in particular the second and the last sentence of the paragraph, I do not see that they call for a conclusion as to the construction of the patent. The second sentence contains an assessment of mechancial equivalency, a conclusion which Dr. Tessier is entitled to draw. The last sentence contains a conclusion that the seeding tool in the Seed Hawk device operates in the same manner as that of the Halford invention. I take this to be a comparison of devices which is not relevant to the question of infringement but may be relevant to some other part of Dr. Tessier's analysis.

[31]            The defendants also objects to the last sentence of paragraph 45 because it contains a reference to the "main innovations of the Halford invention" which they say contains an opinion as to the construction of the patent. As was seen in the earlier discussion with respect to the admissibility of expert evidence, anticipation and obviousness are areas where expert evidence

will be received. In my view, a statement as to the innovative element of a device or a patent, for that matter, falls into the same category as an expert opinion on anticipation or obviousness. It is a comment about the state of the prior art. There is no basis for excluding the sentence.

[32]            The last issue remaining is the question of the admissibility of the tests of the Seed Hawk device made by or on behalf of the plaintiffs.    The results of those tests are reported in paragraphs 36 to 44. The tests were conducted in 1999.

[33]            The defendants have authority on their side, the thrust of which is captured by the following passage from Omark Industries (1960) Ltd v. Gouger Saw Chain Co. (1964) 45 C.P.R. 169 where Justice Noël that:

There is no question that the practice in this Court seems to have been that evidence of tests and experiments conducted pendente lite without notice being given to the other side and an opportunity to attend should not be considered and I believe that this is a salutary rule. I might also add that in any event tests and experiments conducted even before the trial in the presence of the other party is much more probative than if conducted ex parte.

[34]            Apart from special considerations, the issue would be clear. But there are special considerations of a most unfortunate kind. I had before me evidence, in the form of an affidavit on information and belief by Mr. Halford, of what transpired at various case management conferences in which it is suggested that the case management conference judge approbated the conducting of tests in the absence of the other side. I also have the representations of counsel who were present at those case management conferences as to what transpired and they appear to

disagree. The nub of the disagreement is a statement attributed to the case management judge by Mr. Halford to the effect that "there were good reasons for representatives of one party not to be present at field tests undertaken by the other party." The judge directed that the tests to be undertaken by the Seed Hawk defendant's experts proceed in the absence of representatives of the plaintiffs.

[35]            The defendants have put before me certified copies of the minutes of a case management conference held on April 25, 2000, at which time it is alleged that the above direction was given. The minutes show an exchange between the case management judge and counsel on the subject of tests by the defendants which concludes:   

The onus is on the defendant Seed Hawk. There was no order as to the presence of the Plaintiff at the field test.

[36]            The exchanges which are now controversial took place in April 2000 while the tests reported in Dr. Tessier's affidavit were conducted in 1999. Nothing has been put before me to suggest that any order or direction with respect to testing was given at the time the tests in question were conducted. However, it is suggested that the order or direction reported in Mr. Halford's affidavit was intended to keep the playing field level. I take this to mean that just as there were no defendant's representatives at the plaintiff's field tests, there would be no plaintiff's representatives at the defendant's field tests.

[37]            I do not find it necessary to decide what transpired on April 25, 2000 because the issue is the conduct of tests in 1999. There is nothing before me to suggest that there was any judicial

direction given at that time which would take the plaintiff's tests outside the ordinary rule.    As a result, I find that the tests conducted in the absence of the defendants representatives are inadmissible.    Consequently paragraphs 36 to 44 and 46 to 48 of Dr. Tessier's affidavit are inadmissible.    If the playing field was indeed kept level, then any testing by the defendants which was tainted by the same defect will suffer the same fate.

[38]            Since these are evidentiary rulings and not orders, it will not be necessary to reduce them to an order.

                                                                                                                                                "J.D. Pelletier"                

                                                                                                                                                               Judge                 

                        FEDERAL COURT OF CANADA

                              TRIAL DIVISION

             NAMES OF SOLICITORS AND SOLICITORS OF RECORD

DOCKET:                             T-2406-93

NEUTRAL CITATION NO:         2001 FCT 1154

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

DATE OF HEARING:             October 15, 2001

                              REASONS FOR ORDER OF

                  THE HONOURABLE MR. JUSTICE PELLETIER

                         DATED OCTOBER 24, 2001

APPEARANCES

Steven Raber                                                     for the Plaintiff

Dean Giles                                                                         

Alexander Macklin                                     for the Defendant-Seed Hawk

Doak Horne

Wolfgang Riedel                                        for the Defendant-Simplot

SOLICITORS OF RECORD

Fillmore Riley                                                   for the Plaintiff

1700 Commodity Exchange Tower

360 Main Street

Winnipeg, MB R3C 3Z3

Gowlings                                               for the Defendant-Seed Hawk

Suite 1400

700 - 2^nd Street S.W.

Calgary, AB    T2P4V5

Meighen, Haddad & Co.                                    for the Defendant-Simplot

Barristers & Solicitors

P.O. Box 22105

110 - 11^th Street

Brandon, MB    R7A 6Y9