Heffco Ltd. v. Dreco Energy Services Ltd., docket T-1322-92

     _^T-1322-92

_^BETWEEN:

     _{^{HEFFCO INC.}}

     _^Plaintiff

     _{^{- and -}}

_{^{DRECO ENERGY SERVICES LTD., THE DRECO GROUP OF COMPANIES LTD., DUCHARME OILFIELD RENTALS LTD. and DRECO ENERGY SERVICES LTD.}}

_{^{carrying on business under the firm name and style of}}

_{^{GRIFFITH OIL TOOL & TRUDRILL and the said}}

_{^{GRIFFITH OIL TOOL & TRUDRILL}}

     _^Defendants

_{^{REASONS FOR ORDER}}

_{^{CAMPBELL J.}}

     To the uniformed observer, the world of reamers, internal blade stabilizers and shock tools, which for decades have been the standard implements of the oil and gas well drilling industry, is bewildering. To those knowledgable in the art, however, it is understood that the plaintiff (Heffco) has patented an improvement to the way these implements were constructed. The issue is whether a certain tool produced by the defendants (Griffith) infringes Heffco's patent.

I. The Merits of Deciding This Case

by way of Summary Judgment

A. Is this a proper case for summary judgment?

     Within this action for infringement there are two separate elements: Heffco alleges that the certain tool produced and widely marketed by Griffith (the Griffith Tool), infringes the patent (the Patent) on its tool (the Heffco Tool); and Heffco also alleges that another tool allegedly produced by Griffith also infringes the Patent, and because of its uncertain existence, it is termed the "Ghost Tool".

     (1) The Heffco Tool v. The Griffith Tool

     Griffith's position on this element is that the costs of maintaining this action are high and rising, the facts are all known through the evidence already provided¹, and, therefore, the case can be properly decided on this motion for summary judgment. Heffco argues that the configuration and function of the Griffith Tool is virtually identical to the Heffco Tool, and, therefore, there is a genuine infringement issue for trial. Heffco also argues that, if there is a difference between the tools, expert evidence at trial is required to define the difference.

     I find that Rule 432.3(4) of the Federal Court Rules is applicable to this element of the action:

Rule 432.3(4) Where a judge decides that there is a genuine issue with respect to a claim or defence, the judge may nevertheless grant summary judgment in favour of any party, either upon an issue or generally, unless

(a) the judge is unable on the whole of the evidence to find the facts necessary to decide the questions of fact or law; or

(b) the judge considers that it would be unjust to decide the issues on the motion for summary judgment.

     Upon considering the evidence, I find that there are no facts in dispute as to the configuration of the tools. While there is a dispute as to the function of the tools, and the meaning this has on the issue of infringement, I am satisfied that further expert evidence will not assist in interpreting the claims of the Patent.

     Therefore, on this element of the action, while there is a genuine issue for trial, I am satisfied that I am able on the evidence available, to find the facts necessary to decide the questions of fact and law. I also find that it is just to decide this element on this motion for summary judgment, because to delay the matter further will cause completely unneeded cost to both parties.

     (2) The Heffco Tool v. The Ghost Tool

     I find that Rule 432.3(1) of the Federal Court Rules is applicable to this element of the action:

Rule 432.3(1) Where a judge is satisfied that there is no genuine issue for trial with respect to a claim or defence, the judge shall grant summary judgment accordingly.

     For the reasons set out in Part III below, I am satisfied that this element ought not to proceed to trial.

II. The Test for Patent Infringment

A. What is the test and how should it be applied?

     The arguments in this case have centred on what has been termed "the traditional two fold test" which Marceau J.A. in Mobil Oil Corp. v. Hercules Canada Inc. (1995), 63 C.P.R. (3d) 473² at 488 concisely states, but then goes on to criticize as follows:

The distinction made by the trial judge is, of course, due to the fact that, in looking into the issue of infringement, he adopted the traditional twofold test according to which one should first inquire into whether the defendant's activities fall clearly within the words of the claims and, if not, then whether what the defendant has done has taken the substance of the invention defined by the claims (see the comments of Professor Fox in his Treatise Canadian Patent Law and Practice (1969) at p. 324). I share the doubts expressed by Pratte J. in Eli Lilly & Co. v. O'Hara Manufacturing Ltd. (1989), 26 C.P.R. (3d) 1, 99 N.R. 60 sub nom. Eli Lilly & Co. v. Novopharm Ltd., 28 F.T.R. 80n (C.A.), with respect to such an approach.

The established law in Canada, as stated long ago by Thorson P. in McPhar Engineering Co. v. Sharpe Instruments Ltd. (1960), 35 C.P.R. 105, [1956-60] Ex. C.R. 447, 21 Fox Pat. C. 1 (Ex. Ct.), is "that if a person takes the substance of an invention he is guilty of infringement and it does not matter whether he omits a feature that is not essential to it or substitutes an equivalent for it". That being the case, I do not appreciate the utility of the traditional twofold test and even its relevance. No doubt a textual infringement will simplify the problem as it will put an immediate end to the inquiry. But it seems to me that the exercise may be useless in cases like this one where the distinction between textual and substantial infringement may be difficult to draw.

... It is my opinion that one should not endeavour to create a distinction between a substantial and a literal infringement in a case such as this; one should construe the claims so as to determine what exactly lies within the scope of the inventor's rights. Once this has been determined, then one can consider the defendant's product to decide if it falls within the scope of the claim.

[Emphasis added]

     This last italicized passage from Marceau J.A.'s decision in Mobil is a clear statement of the objective to be reached in determining whether a patent infringement has occurred.

     As to the correct test to be applied in reaching the objective, in Eli Lilly & Co. v. O'Hara Manufacturing Ltd. (1989), 26 C.P.R. (3d) 1 (F.C.A.), to which Marceau J.A. referred for support in making his point that the traditional test should be abandoned, Pratte J.A. carefully analyzed the base authorities and came to a conclusion expressed in the following passage from his judgment at 5 :

The decision of the trial judge is but an application of the traditional theory expressed in many decisions, here and in other jurisdictions, following which a defendant may infringe an inventor's monopoly either by doing something that infringes the text of the claims or by taking the substance or pith and marrow of the invention defined in those claims. According to that theory, a court, in deciding whether there is infringement, must first interpret the claims and determine whether there is textual infringement and, if it does not find textual infringement, it must engage in the difficult process of distilling the claims and extracting the substance of the invention so as to determine whether the defendant did steal it.

That approach, as was observed by Lord Reid in C. Van Der Lely N.V. v. Bamfords Ltd., [1963] R.P.C. 61 at p. 75 (H.L.), is difficult to reconcile with the basic principle that "the patentee is tied strictly to the invention which he claims and the mode of effecting an improvement which he says is his invention". Indeed, "[l]ogically it would seem to follow that if another person is ingenious enough to effect that improvement by a slightly different method he will not infringe." It is perhaps that difficulty that prompted the House of Lords, in Catnic Components Ltd. v. Hill & Smith Ltd., [1982] R.P.C. 183 at p. 242 et seq., to repudiate the traditional distinction between "textual infringement" and infringement of the "substance" or "pith and marrow" of the invention.

Much of what Lord Diplock said in that case at pp. 242 and 243 deserves to be quoted:

My Lords, in their closely reasoned written cases in this House and in the oral argument, both parties to this appeal have tended to treat "textual infringement" and infringement of the "pith and marrow" of an invention as if they were separate causes of action, the existence of the former to be determined as a matter of construction only and of the latter upon some broader principle of colourable evasion. There is, in my view, no such dichotomy; there is but a single cause of action and to treat it otherwise, particularly in cases like that which is the subject of the instant appeal, is liable to lead to confusion.

... My Lords, a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. "skilled in the art"), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so-called "pith and marrow" of the claim. A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked.

[Emphasis added]

After observing that the question does not arise where it would be obvious to the informed reader at the date of publication of the specification that the variant would have a material effect upon the way the invention worked, Lord Diplock pursued:

Where it is not obvious, in the light of then-existing knowledge, the reader is entitled to assume that the patentee thought at the time of the specification that he had good reason for limiting his monopoly so strictly and had intended to do so, even though subsequent work by him or others in the field of the invention might show the limitation to have been unnecessary. It is to be answered in the negative only when it would be apparent to any reader skilled in the art that a particular descriptive word or phrase used in a claim cannot have been intended by a patentee, who was also skilled in the art, to exclude minor variants which, to the knowledge of both him and the readers to whom the patent was addressed, could have no material effect upon the way in which the invention worked.

If those principles are applied in this case, the question to be answered may be formulated by adapting to the facts of this case the language used by Lord Diplock at p. 244: would the specification make it obvious to a reader skilled in the art that the description of the patented machine as comprising "an exhaust inlet flexibly biased against the exterior" of the drum could not have been intended to exclude machines in which the exhaust was not "flexibly biased against" the drum but was mounted in a fixed position as close as possible to the drum?

It should be realized that the answer to that question depends on the interpretation that is put on the claims. That answer, therefore, must be consistent with the text of the claims. A court must interpret the claims; it cannot redraft them. When an inventor has clearly stated in the claims that he considered a requirement as essential to his invention, a court cannot decide otherwise for the sole reason that he was mistaken. I also wish to add that, as the court, in interpreting the claims, is merely trying to find out what was the intention of the inventor, it cannot conclude that strict compliance with a word or phrase used in a claim is not an essential requirement of the invention unless it be obvious that the inventor knew that a failure to comply with that requirement would have no material effect upon the way the invention worked.

     I consider Pratte J.A. decision in Eli Lilly to be binding authority, and accordingly, I find the correct test is the question framed by Lord Diplock in Catnic Components as italicized above, being:

The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked.

B. What evidence can be considered in determining the intention of the patentee?

     To arrive at the correct answer to the question framed by Lord Diplock, the intention of the patentee must be determined, and according to Pratte J.A. as just quoted above, the evidence of intention is the words of the claims themselves.

     However, Heffco has argued that to determine what is protected by the Patent, I can legitimately consider the descriptive portions of the specifications and drawings, and, accordingly, I am not limited to a literal reading of only the claims. As support for this submission, reliance is placed on the decision of Dickson J. in [1981] 1 S.C.R. 504">Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd., [1981] 1 S.C.R. 504 where he says at 520:

We must look at the whole of the disclosure and claims to ascertain the nature of the invention and methods of its performance...being neither benevolent nor harsh, but rather seeking a construction which is reasonable and fair to both patentee and public.

     However, it is clear that Dickson J.'s comment cannot be taken as far as Heffco submits. In TRW Inc. v. Walbar of Canada Inc. (1991), 39 C.P.R. (3d) 176 (F.C.A.), Stone J.A. at 188 makes a definite finding on the limited purpose of evidence other than the words of the claims themselves:

If a patentee defines and limits with precision, in language which is plain and unambiguous, what it is he claims to have invented, the courts are not "to restrict or expand or qualify" the scope of an invention by reference to the body of the specification: Electric & Musical Industries Ltd. v. Lissen Ltd. (1939), 56 R.P.C. 23 (H.L.), per Lord Russell of Killowen, at p.41. This does not mean, however, that claims are never to be construed in the light of the rest of the specification. It means that such resort is limited to assisting in comprehending the meaning in which words or expressions contained in the claims are used: Smith Incubator, supra, at p.708. However, reliance on "stray phrases" in the disclosure for such assistance is not permitted: Electric & Musical Industries, supra, at p.41. Nor may the disclosure be used to change a claim from one subject-matter into a claim for another subject-matter (at p.39), or to make the words of a claim "say things which in fact it does not say at all": Ingersoll Sergeant Drill Co. v. Consolidated Pneumatic Tool Co. (1908), 25 R.P.C. 61 (H.L.), per Lord Loreburn L.C., at p.84.

     Thus, only to assist in the interpretation of the precise words of a claim, other patent specifications may be used. In this case, they are useful for this purpose as will be seen below.

III. The Merits of the Case Regarding

the Heffco Tool v. the Griffith Tool

A. What is the factual context of this element of the action?

     (1) Definitions

     To decide the infringement issue, knowledge of the tools used in the oil and gas industry is essential. The Jacobsen Affidavit provides the following undisputed industry common knowledge:

In the oil and gas industry, companies use lengths of connected pipe and tools to drill for oil and gas. Downhole lengths of connected pipe and tools used in drilling for oil and gas are referred to as a "drill string". A drill bit is attached at the bottom end of the drill string. A motor causes the drill string to rotate thus drilling a hole through the earth's surface. Some of the tools commonly found in a drill string include an integral blade stabilizer, reamer and shock tool.

An integral blade stabilizer is a tool containing fixed blades which spiral vertically around the circumference of the tool. The diameter of the tool at the blades is as wide as the bore hole and serves to keep the tool (and the drill string of which it forms a part) in the centre of the hole. This helps keep the drill string completely vertical so that the angle of the deflection is minimized.

A reamer is a tool with rollers spaced about its circumference. On the rollers are cutters which serve to "ream out" the diameter of the bore hole as the drill bit wears down and the diameter of the hole becomes narrower. Since the reamer fills the diameter of the hole, it also serves as a stabilizer, keeping the drill string, of which it forms a part, in the centre of the hole.

A shock tool is a tool placed near the drill bit to reduce the transmission of vibration from the rotating drill bit to the drill string above it. Superficially, a shock tool bears a resemblance to a vehicle shock absorber although it is many times larger. It has an outer housing and a piston of smaller diameter which slides in and out of the housing. The smaller diameter piston is called the "mandrel". The portion of the mandrel inside the housing has splines with corresponding grooves in the housing to permit the mandrel to slide in and out of the housing while at the same time preventing any rotation slippage. As the outer housing turns, the mandrel inside also turns due to the engagement of the splines and grooves. Similarly, as the mandrel turns, the outer housing will also turn.

Inside the housing of the shock tool are a series of saucer-shaped plates which act as "springs" which resist the movement of the mandrel in and out of the housing. As the mandrel is forced into the housing, the springs are compressed and resist. Conversely, as the mandrel is pulled out of the housing, the "springs" similarly resist the expansion. In this manner, the tool absorbs the vibration or shock from the drill bit and hence is called a shock tool.

Since the mandrel has a narrower diameter than the housing portion of the shock tool, it is laterally weaker and subject to bending or deflection from side to side. It is also structurally weaker and thus more susceptible to breakage.

Lengths of pipe and tools in the drill string are connected by threaded screw connections so that lengths of pipe and tools can be readily added, removed and/or replaced. The "API" connection is a standard set by the American Petroleum Institute for connecting the different parts of a drill string, including downhole tools. Where tools are fitted with the standard male and female API connections, they can be connected to other tools or parts of the drill string made by different manufacturers so long as the other parts or tools similarly have the standard API connection.

Any shock tool can be connected in such a way that the mandrel end of the tool is connected by a standard API connection to an integral blade stabilizer or reamer. This is nothing more than has been previously done in the prior art.

Sometimes, a manufacturer will make a tool with a proprietary or custom connection, meaning a connection which only mates with other tools of that manufacturer having the same kind of proprietary connection.

The integral blade stabilizer, reamer and shock tool have been used in the drilling industry for decades. Sometimes, the aforementioned tools are combined into a combination tool using a proprietary connection or some other means. Combination tools are not unique and have been used in the drilling industry, in some cases for decades. Some examples of combination tools are reamer/stabilizers, shock/reamers, downhole motor/stabilizers, deflecting tool/stabilizers and milling tool/stabilizers.3

     (2) What practical problem and objective did Heffco identify?

     The practical problem is keeping the drill hole vertical.⁴ From the evidence it is clear that the standard objective in solving the problem is to stabilize the drill string to its maximum potential in the area which is subject to the most deflection, being the area of the integral blade stabilizers and reamers.

     (3) What was Heffco's "mode of effecting an improvement"⁵to solve      the problem?

     Heffco's mode of effecting an improvement to achieve the objective of stabilizing the drill string is set out in the Patent in the section "Summary of the Invention" which reads as follows:

In accordance with the present invention, the IBS's or reamers are combined with the shock tool to provide a single combination tool. This new arrangement significantly shortens the whole assembly while at the same time the most critical point, i.e. the exposed telescoping mandrel or shaft of the shock tool is now located very close to the IBS/reamer support point (which in use is in contact with the well bore wall) thus significantly reducing the bending moment at the most critical cross section. A significantly more rigid assembly is the result and straighter holes can be drilled. Because of the increased stiffness of the assembly, there is no need to reduce the WOB (weight on bit) and hence overall drilling rates can be maintained at relatively high levels thus reducing costs.

A further advantage of this new tool arrangement is that by combining several tools into one, the shock tool is effectively positioned closer to the bit than was permitted when the several tools were used separately, thus resulting in better overall performance of the shock tool itself.

A still further advantage of the new tool is that since two connections (tool joints) have been eliminated, and since tool joints are critical components subject to occasional failure, the elimination of these joints makes the entire bottom hole assembly safer.

[Emphasis added]

     Thus, it can be seen that Heffco's mode of effecting an improvement is to provide a single combination tool which shortens the whole assembly, and which locates the mandrel of the shock tool close to the reamer support point.

    

     (4) The features of the Griffith Tool

     The Jacobsen Affidavit explains the features of the Griffith Tool as follows:

Griffith Oil Tool & Trudrill ("Griffith") designed and manufactured the Griffith Tool in the early 1980's. It is an unusually large downhole tool because of its great diameter. (The diameter of the reamer on the housing is 17""). The tool was developed by Griffith for use in difficult drilling through diagonal hardrock formations primarily along the eastern slope of the Rocky Mountains.

The Griffith Tool is composed of two basic parts: a shock tool portion which is called the shock sub and the reamer tool portion which is called the reamer sub. The reamer sub is screwed into the housing end of the shock sub using a proprietary threaded connection. The reamer sub is designed so that a portion of the inside works of the shock tool extend into the reamer sub.

Griffith designed the shock sub so that it can be used as a separate shock tool by screwing a stub onto the housing end of the shock sub using a proprietary threaded connection. The other end of the stub is a standard API connection. When fitted with the API connection stub, the shock sub becomes a string shock tool, that is, not a combination tool but a separate shock tool which can be used on any configuration of tools in the drill string. Griffith has similarly designed a stub for the reamer sub so that the 17"" reamer can be used as a separate string reamer rather than only as part of the Griffith Tool.

The Griffith Tool is designed for use with the housing end facing down hole and the mandrel end facing up. Griffith recommends that the housing end be down hole for the following reasons:

(a)      the reamer sub is closer to the drill bit, thereby optimizing lateral stability and minimizing lateral deflection;

(b)      with the mandrel facing down hole, cuttings sometimes get trapped below the reamer sub and can score the piston of the mandrel as it moves in and out of the shock sub. Risk of this problem is reduced when the housing end of the shock sub faces down hole.

(c)      it is more difficult to fish for breakage below the reamer sub and so it is advantageous to have the reamer sub as far down hole as possible; and

(d)      although the Griffith Tool may be used with the mandrel facing down hole, it would need to be adapted to add a wiper to the piston to enable the tool to run for an extended period.

In Griffith's experience, the portion of a shock tool which is most susceptible to breakage is the mandrel because it has a much narrower diameter than the housing end of the shock tool and is therefore laterally and structurally weaker. Since the reamer engages the wall of the well bore it is subject to significant stress. In designing the Griffith Tool, Griffith was concerned that the reamer be attached to the portion of the shock tool that would be strong enough to handle the stress and minimize the risk of breakage. For this reason, the Griffith Tool was designed with the reamer attached to the housing end which has a greater diameter and much greater strength than the mandrel end of the shock tool.

     As it was a point of contention in the evidence, I find that the Griffith Tool is specifically designed to be used with the housing end facing down hole and the mandrel end facing up.

B. What is the scope of the monopoly protection afforded by the Patent?

     As cited above, it is the words of the claims that define the scope of the Patent. To answer this question it is first necessary to determine what words in the Patent define Heffco's mode of effecting an improvement. The only two independent claims in the patent for the Heffco Tool are claims 1 and 5. It is submitted by Griffith, and upon reviewing the Heffernan Transcript, I find that, from both the plain language of the claims of the Patent and from the admissions made by Mr. Heffernan during his cross examination on the Heffernan Affidavit, the only element of independent claims 1 and 5 which is not admitted to be in the prior art is having a stabilizer or reamer on the mandrel.

     That is, independent claim 1 of the Patent calls for the following features, of which only the one emphasized in italics is not prior art:

A combination shock tool and integral blade stabilizer or reamer, the combination including:

a housing;

having a mandrel therein which moves along the longitudinal axis of the housing in response to shock loadings in the axial direction;

the mandrel having a diameter less than that of the housing and a portion of the mandrel extending outwardly of one end of the housing;

coupling means on an end portion of the outwardly extending mandrel portion for effecting a connection to a drill bit;

coupling means on the housing for connection to the lower end of a drill string;

the end portion of the mandrel has an integral blade stabilizer or reamer thereon adapted to engage and be supported by the well bore;

the outwardly extending mandrel portion is relatively close to a supporting point created by engagement of the integral blade stabilizer or reamer on the mandrel end portion with the well bore during use;

thus helping to avoid high bending moments and deflection in the outwardly extending mandrel portion during use.

[Emphasis added]

     Similarly, claim 5 is the only other independent claim in the Heffco Patent and calls for the following features, of which only the one emphasized in italics is not prior art:

For use in a drill string adjacent a drill bit, a shock tool including:

a housing;

a mandrel within the housing with one end extending outwardly from the housing;

the mandrel being of less diameter than the housing and non-rotatable relative to the housing;

coupling means on both the mandrel and the housing for interconnecting the shock tool between the drill bit and the drill string;

the mandrel having means thereon adapted to engage the wall of a well bore during use to laterally support the mandrel.

[Emphasis added]

     Thus, I find that the italicized portions of claims 1 and 5 define Heffco's mode of effecting an improvement, and, accordingly, these words define the scope of the monopoly protection afforded by the Patent.

C. Is the Griffith Tool within the scope of the Patent?

     (1) Heffco's arguments

     It is very obvious from Heffco's evidence and argument that it would like to expand the scope of the monopoly protection afforded by the Patent beyond the apparently narrow wording in claims 1 and 5. In fact, Heffco would actually like to change the words. Specifically, Heffco's efforts are directed towards obtaining a finding that the attachment of the integral blade stabilizer or reamer can be on the housing or the mandrel or both.

     In support of this contention, Heffco makes two principal arguments. First, Heffco argues that all the claims of the Patent must be construed to give effective meaning to each of them. The point behind this argument is that dependent claim 3 requires an integral blade stabilizer or reamer on the housing, and this is argued to be support for expanding the scope of the Patent to include within it an integral blade stabilizer or reamer on the housing.

     Griffith has very effectively countered this argument by pointing out that such an interpretation is contrary to the Patent Act and Patent Rules⁶. Independent claim 1 requires, among other things, an integral blade stabilizer or reamer to be mounted on the mandrel, and dependent claim 3 (which is dependent from claim 2 which, in turn, is dependent from claim 1 such that claim 3 is indirectly dependent from claim 1) further requires an integral blade stabilizer or reamer on the housing (at an end of the housing which is opposite to the end from which the mandrel projects). It therefore follows that claim 3 requires both an integral blade stabilizer or reamer on the mandrel and an integral blade stabilizer or reamer on the housing. This specification, however, does not change the scope of the Patent as I have found it. Accordingly, I give this argument no weight.

     Heffco's second argument is based on Paragraph 7 of the Heffernan Supplemental Affidavit which states as follows:

The Griffith Tool performs the same way as the Plaintiff's tool and incorporates all of the properties or features of the Plaintiff's tool, i.e. that it shortens the overall length compared to two separate tools being used; it eliminates one tool (API) joint and it results in a stiffer bottom hole assembly. Whether the tool is run with the mandrel up or the mandrel down does not affect the operation nor performance of the tool.

The argument that the practical function of the two tools is the same is closely aligned with an argument, based on paragraph 14 of the Heffernan Affidavit, to the effect that there is a substantial infringement by Griffith of "the spirit of the invention".

     With respect to these arguments, I conclude that Heffco now wishes that the scope of the Patent had been drawn in a broader fashion to specify that placement of an integral blade stabilizer or reamer on the mandrel is not essential, and, thus, could be either on the housing or the mandrel or both. Whether Heffco made a mistake in drafting claims 1 and 5 is beside the point. As Pratte J.A. clearly states in Eli Lilly, "the court must interpret the claims, not redraft them". Accordingly, I give these arguments no weight.

(2) Applying the test

     Griffith has produced a combination tool which seeks to accomplish the objective of drilling a vertical hole in the most economical way, which is also the objective of the Heffco Tool. For the purposes of the infringement argument, the principal features of the Griffith Tool are considered "variants" of the claims of the Heffco Tool.

     To determine whether the Griffith Tool "variants" are within the scope of the Patent, the question framed by Lord Diplock in Catnic Components applied to claims 1 and 5 of this case are as follows:

(a) Regarding claim 1:

The question is whether persons, with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with the particular descriptive words:

a combination shock tool and integral blade stabilizer or reamer, the combination including, a housing having a mandrel therein, and [from the words of claim 1] the end portion of the mandrel has an integral blade stabilizer or reamer thereon adapted to engage and be supported by the well bore,

was intended by the patentee to be an essential requirement of the invention so that the variant of:

a combination tool comprised of a shock tool and a reamer tool, in which the reamer tool is screwed into the housing end of the shock tool using a proprietary but adaptable threaded connection, the combination including a housing having a mandrel therein, with the reamer attached to the housing end,

would fall outside the monopoly claimed?

(b) Regarding claim 5:

The question is whether persons, with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with the particular descriptive words:

for use in a drill string adjacent a drill bit, a shock tool including a housing, a mandrel within the housing, and [from the words of claim 5] the mandrel having means thereon adapted to engage the wall of a well bore during use to laterally support the mandrel,

was intended by the patentee to be an essential requirement of the invention, so that the variant of:

a shock tool including a housing, a mandrel within the housing, and the housing having means thereon adapted to engage the wall of the well bore during use to laterally support the mandrel,

would fall outside the monopoly claimed?

     (3) Decision

     In my opinion, the Patent claims are very precise and narrow in their scope. Thus, having regard to the very distinct and substantial differences between the configuration of the Heffco Tool and the Griffith Tool as emphasized in the italicized portions of the questions just asked, the correct interpretation to be placed on the claims is that the answer to the question in the case of both claim 1 and claim 5 is yes.

     Accordingly, I find that the Griffith Tool is not within the scope of the Patent, and therefore, does not infringe the Patent.

IV. The Merits of the Case Regarding

the Heffco Tool v. the Ghost Tool

     The Patent was filed on April 21, 1987. This infringement action has centred on the contest between the Heffco Tool and the Griffith Tool as above described. However, on September 21, 1996, a new allegation of infringement was raised as described in the following passage of the written Brief of Argument presented by counsel for Griffith:

Upon Cross-Examination on his Affidavit, Paul Heffernan raised a new point which had not been addressed in his Affidavit sworn August 26, 1996 in reply to the Jacobsen Affidavit. Mr. Heffernan testified that he had personally observed a tool (which we will call the "Ghost Tool") displayed by the Applicants at an oil show in Calgary which had a stabilizer attached to the mandrel end of a shock tool. This testimony of Mr. Heffernan was the first time that the Respondent had ever alleged that the Applicants had displayed the Ghost Tool. He states in paragraph 6 of the Heffernan Affidavit that the first time he is aware of the Griffith Tool (which was clearly described in the Jacobsen Affidavit as a shock tool with a stabilizer or reamer on the housing end) being on display to the public, was at the oil show in Calgary in 1988. He does not at all indicate in the Heffernan Affidavit that he observed, a shock tool with a stabilizer attached to the mandrel end of the shock tool, being displayed by the Applicants.

     The following passage from the Supplemental Brief of Argument, which I find fairly states the evidence, provides a precis of Griffith's grounds for attacking Heffco's evidence on this issue:

The Jacobsen Affidavit was filed by the Defendants on July 11, 1996 and served on the Plaintiff in support of the present application for summary dismissal of the Plaintiff's claim. That Affidavit includes as Exhibit "C" a picture of the Griffith Tool. It describes the Griffith Tool in extreme detail on pages 5 and 6 of the Affidavit. In paragraph 28 of the Affidavit it points out the significant differences between the Griffith Tool and the Heffco Tool including the following:

the Griffith Tool attaches the reamer to the wider and stronger, housing end of the shock tool as opposed to the Heffco Tool which attaches the stabilizer or reamer to the narrower and weaker mandrel end;

More than a month later Paul Heffernan replied with an Affidavit filed August 20, 1996. In paragraph 5 of his Affidavit, he refers to the "Griffith Tool" as defined in Mr. Jacobsen's Affidavit. In paragraph 6 of his Affidavit he says that he saw the Griffith Tool on display at the National Petroleum Show in Calgary in June of 1988. Although Mr. Heffernan discusses the Defendants' combination shock tool at length, no where in his reply Affidavit does he say anything about the Defendants ever having made or marketed a combination shock tool with a reamer or stabilizer on the mandrel.

It is obvious from the Jacobsen Affidavit that the whole contention of the Defendants is that their tool does not infringe the Plaintiff's patent because the reamer is connected to the housing of the shock tool, not the mandrel.

Yet when Mr. Heffernan filed his reply Affidavit, he never once suggested that the Defendants had made a shock tool with a reamer or stabilizer on the mandrel.

Only later when he was cross-examined on his Affidavit and shown that the only essential element of his claim was the placement of a reamer or stabilizer on the mandrel, did Mr. Heffernan change his testimony, contrary to what he swore to in his reply Affidavit and allege for the first time that he saw a combination shock tool displayed by Griffith at the 1988 National Petroleum Show with a stabilizer on the mandrel. He was asked whether he took a picture of it. His response was to the effect that people are not allowed to take pictures at the Petroleum Show.

Mr. Heffernan's own witness, Mr. Eskrick, testified that lots of people carry cameras around at the Petroleum Show and take pictures. Mr. Ducharme of the Defendants in fact took pictures of the combination shock tool he displayed at the 1988 Show. Those pictures are exhibited to his affidavit and show the Griffith Tool, not a tool with a reamer or stabilizer on the mandrel. Both Mr. Ducharme and Mr. Jacobsen filed affidavits [the Ducharme Affidavit and Jacobsen Supplemental Affidavit] testifying that the Defendants have never made or marketed a combination shock tool with a reamer or stabilizer on the mandrel. The Plaintiff never examined Messrs. Ducharme or Jacobsen on their affidavits.

     In his examination on the Heffernan Affidavit, Mr. Heffernan stated that at the 1988 Petroleum Show he saw "a combination shock/stabilizer tool, and it had a stabilizer on the mandrel". He also stated that two other persons, Mr Don Snydmiller and Mr. Murray Eskrick saw the same tool. However, according to Mr. Heffernan in his Supplemental Affidavit, Mr. Don Snydmiller has decided he "does not want to 'get involved' by signing an affidavit". Moreover, under cross-examination on the Eskrick Affidavit, Mr. Eskrick gave the following evidence:

Q.      In paragraph 3 you talk about your recollection being that it was a stabilized stock tool that you saw. Would it be correct that you don't, today, recall whether it was stabilized with an integral blade stabilizer or reamer?

A.      Yes, that would be correct.

Q.      You recognize today, looking at Exhibit "C" to Mr. Jacobsen's Affidavit [the Griffith Tool], that particular combination shock/reamer tool is stabilized by a reamer?

A.      Yes, that's right.

Q.      Now you have said in paragraph 3 that you are not certain whether this tool, the one shown in Exhibit "C", is the same one that you saw at the 1988 Oil Show.

A.      Yes. I am not sure that's the one. Or I couldn't say yes or no whether that was the one I saw in 1988.

[Eskrick Transcript, page 3, lines 10 to 27, page 4 line 1.]

     Thus, I find there is no evidence to support Mr. Heffernan's evidence about the existence of the Ghost Tool. I am of the opinion that, on the basis of the evidentiary problems cited in the argument above quoted and in particular the evidence to the contrary, if this issue went to trial Mr. Heffernan's evidence would certainly not be enough to prove on a balance of probabilities that the Ghost Tool ever existed.

     I accept Griffith's argument that the summary judgment experience of the Ontario Court of Justice (General Division) is instructional in interpreting Rule 432.3 of the Federal Court Rules. As to the interpretation to be placed on the meaning of the phrase "no genuine issue for trial" in Rule 432.3(1), the following statements are helpful:

... the parties must put their "best foot forward" [on a motion for summary judgment] ... I am entitled to assume, therefore, that the defendant has done so and that if this case were to go to trial it would present no additional evidence ... The requirement that the parties put their "best foot forward" goes together with the requirement that the motions court judge "take a hard look at the merits of the action at this preliminary stage" to determine whether the moving party has succeeded in establishing that there is no genuine issue for trial ...

[Borins J. in Rogers Cable T.V. Limited v. 373041 Ontario Limited (1994), 22 O.R. (3d) 25 (Gen. Div.) at 27 and 28]

... the motions judge, therefore, is expected to be able to assess the nature and quality of the evidence supporting "a genuine issue for trial"; the test is not whether the Plaintiff cannot possibly succeed at trial; the test is whether the Court reaches the conclusion that the case is so doubtful that it does not deserve consideration by the trier of fact at a future trial; if so, then the parties "should be spared the agony and expense of a long and expensive trial after some indeterminate wait"...

... It is not sufficient for the responding party to say that more and better evidence will (or may) be available at trial. The occasion is now. The respondent must set out specific facts and coherent evidence organized to show that there is a genuine issue for trial."

[Henry J. in Pizza Pizza Ltd. v. Gillespie (1990), 75 O.R. (2d) 225 (Gen. Div.) at 238]

     Based upon my opinion about Heffco's chance of success on this element of the action, and keeping in mind the high and rising costs of this litigation, I find that Heffco's case on this issue is so doubtful that it does not deserve consideration by a trier of fact at a future trial. Therefore, I find this element is not is a genuine issue for trial.

     Therefore, on this motion for summary judgment, I dismiss Heffco's claim in its entirety. I award costs in Column III of Tariff B to Griffith.

                        

                         Judge

OTTAWA

April 9, 1997

__________________

     ¹ In support of the application for summary judgment, Griffith relies upon the Affidavit of Klaus Jacobsen, General Manager of Griffith Oil Tool, sworn July 10, 1996 (the "Jacobsen Affidavit"). Heffco, in opposition to the application, relies upon the Affidavit of Paul Heffernan, President of Heffco Inc., sworn August 20, 1996 (the "Heffernan Affidavit"). On September 27, 1996, Griffith conducted a Cross-Examination of Paul Heffernan on the Heffernan Affidavit. The transcript from the Cross-Examination on this Affidavit (the "Heffernan Transcript") has been filed. To reply to new matters raised in the Heffernan Transcript, Griffith filed a Supplemental Affidavit of Klaus Jacobsen sworn October 24, 1996 (the "Jacobsen Supplemental Affidavit") and an Affidavit of Troy Ducharme, President of Ducharme Oilfield Rentals Ltd., sworn November 19, 1996 (the "Ducharme Affidavit"). On January 6, 1997, Heffco filed two further Affidavits upon which it relies; a Supplemental Affidavit sworn by Paul Heffernan on January 6, 1997 (the "Heffernan Supplemental Affidavit"), and an Affidavit sworn by Murray Eskrick, drilling superintendent with Amoco Canada Petroleum Company Ltd., on January 6, 1997 (the "Eskrick Affidavit"). On January 9, 1997, Griffith conducted a Cross-Examination of Murray Eskrick on the Eskrick Affidavit. The transcript from the Cross-Examination on the Eskrick Affidavit (the "Eskrick Transcript") has been filed.

     ² Leave to appeal to the Supreme Court of Canada refused (1996), 66 C.P.R. (3d) vi.

     ³ Although Mr. Heffernan challenged whether combination tools have been in use for decades in the Heffernan Affidavit in paragraph 4, at the cross-examination on his affidavit, Mr. Heffernan did not dispute that some combination tools have been in existence and in use for decades. His primary point is that the statement is not true for the shock tool reamer/stabilizer combination.

     ⁴ The considerations in solving the problem are outlined in the Patent in the section "Background to the Invention" which reads in part as follows:When drilling for oil or gas, the most common drill string assembly at the bottom of the hole, commonly termed the bottom hole assembly (BHA), is (from the bottom up), drill bit, bit sub, shock tool, drill collars, and drill pipe.      It is well known in the art that the best performance of the shock tool is achieved when it is positioned as closely to the drill bit as is possible....      When drilling formations that are unconsolidated, or when the formations are at an oblique angle to the well bore, there is a tendency for the drill string to gradually move off course and for an angle to develop resulting in the well bore moving off true vertical. However, in most cases there is a requirement that the well bore be truly vertical and when angle "build up" is experienced, a special procedure is implemented to enable drilling to proceed vertically. To deal with this situation, a typical bottom hole assembly is comprised of the following (from the bottom up): drill bit, drill bit sub, IBS [integral blade stabilizer] or reamer, drill collar, IBS or reamer, shock tool, drill collars, and drill pipe.      One disadvantage of the above arrangement is that the efficiency of the shock tool has been reduced because of the distance increase between such tool and the drill bit, it being kept in mind that for best performance the shock tool should be positioned as close to the drill bit as is possible. In view of this disadvantage, a preferred BHA assembly which serves to reduce somewhat the distance between the shock tool and the drill bit is as follows: drill bit, drill bit sub, IBS/reamer, shock tool, IBS/reamer, drill collars, drill pipe.      The precise assembly can therefore be varied somewhat. However, the above-noted BHA is one of the most commonly used. The basic objective is to stabilize the drill string between the two IBS or reamers and thus provide a relatively rigid assembly in order that the hole being drilled will be maintained truly vertical.      It will be appreciated that in order to prevent a "build up" of angle or deviation from the true vertical, it is necessary to stiffen the assembly to its maximum potential. However, a conflicting situation arises since      (a)      for best performance of the shock tool there is the above-noted requirement that it be positioned as close to the drill bit as possible;      (b)      the shock tool however is the most flexible member of the BHA and it is prone to excessive deflection. This is due to the fact that its telescopically arranged mandrel or shaft is of smaller outside diameter than the rest of the bottom hole assembly thus giving it a lower stiffness factor;      (c)      when this shock tool is placed between the two IBS with the two reamers, the two IBS or two reamers act as supports and the assembly between them acts as a long beam which is subject to bending or deflection. Since reamers and IBS are relatively long, the bending moment is significant and deflection occurs resulting in an undesirable angle "build up" and deviation of the hole away from true vertical.      When a "build up" of "angle" is developing, the normal practice has been to reduce the weight on the bit (WOB). However, the rate of drill bit penetration (ROP) is directly proportional to the WOB. Hence, when WOB is reduced in an effort to eliminate the build up of "angle" the ROP is reduced in proportion thus requiring a greater time to drill the well at a considerable increase in cost.

     ⁵ The words "mode of effecting an improvement" are taken from Lord Reid's judgment in C.Van Der Lely N.V. v. Bamfords as cited above in Part II, Section A.

     ⁶ The Griffith analysis, which I accept, is as follows:Section 8.03 of the Manual of Patent Office Procedure describes a dependent claim as follows:      DEPENDENT CLAIMS      Rules 24 and 26 permit claims that refer to other claims, in order to define an invention more narrowly by adding further characteristics to those already present in the claims to which reference is made.
Section 8.03.01 of the Manual goes on to state as follows:      Form required for dependent claims      Any claim may include all the features of one or more other claims by a reference, if possible at the beginning, to the other claim or claims. Such a claim, herein referred to as a dependent claim, shall state the additional features claimed.
It is therefore clear that a dependent claim includes all of the elements of the claim from which it is dependent in addition to all of the elements in the dependent claim. The principle of claim dependency is governed by Rule 87 of the Patent Rules which, in its current form, provides as follows:      87.(1) Subject to subsection (2), any claim that includes all the features of one or more other claims (in this section referred to as a "dependent claim") shall refer by number to the other claim or claims and shall state the additional features claimed.      (2) A dependent claim may only refer to a preceding claim or claims.      (3) Any dependent claim shall be understood as including all the limitations contained in the claim to which it refers or, if the dependent claim refers to more than one other claim, all the limitations contained in the particular claim or claims in relation to which it is considered.