Date: 20100714
Docket: A-86-09
Citation: 2010 FCA 188
CORAM: NADON
J.A.
SHARLOW
J.A.
TRUDEL
J.A.
BETWEEN:
BRIDGEVIEW MANUFACTURING INC. and
HIGHLINE MANUFACTURING LTD.
Appellants
and
931409 ALBERTA LTD. c.o.b. CENTRAL ALBERTA HAY CENTRE,
DENNILL'S AGRICENTER LTD. and
DURATECH INDUSTRIES INTERNATIONAL, INC.
Respondents
REASONS FOR JUDGMENT
SHARLOW J.A.
[1]
Bridgeview
Manufacturing Inc. (“Bridgeview”) and Highline Manufacturing Ltd. (“Highline”)
brought an action in the Federal Court against Duratech Industries
International, Inc. (“Duratech”), 931409 Alberta Ltd. c.o.b. Central Alberta
Hay Centre, and Dennill's Agricenter Ltd. claiming damages and other relief for
the infringement of claims 1, 2 and 4 of Canadian Patent No. 2,282,334 (the
“334 patent”). The respondents denied infringement and counterclaimed for a
declaration that claims 1, 2 and 4 of the 334 patent are invalid for
obviousness. The judge dismissed Bridgeview’s claim of infringement, allowed
the counterclaim, and granted costs to the respondents (2009 FC 50).
[2]
Bridgeview
is appealing the judgment, alleging a number of errors in the construction of
the patent, the finding of no infringement and the granting of the counterclaim.
For the reasons that follow, I would dismiss the appeal in relation to patent
construction and infringement, and allow it in relation to the claim of invalidity.
Background facts
[3]
The 334
patent is owned by Bridgeview. It was issued on November 20, 2001 from an
application filed on September 17, 1999 and published on April 13, 2000. It
claims priority from U.S. Patent Application Serial No. 09/303,263 filed on
April 30, 1999.
[4]
The 334 patent
relates to bale processors, machines designed to disintegrate or break up large
bales of straw, hay or other crop material. The invention disclosed in the 334
patent is embodied in a bale processor named the “Bale King”, manufactured and
sold by Bridgeview, and a bale processor named “Bale Pro”, manufactured and
sold by Highline under patent licence from Bridgeview. The evidence is that the
Bale King was commercially successful.
[5]
The
“Balebuster 2650” and the “Balebuster 2800” are bale processors manufactured
and sold by Duratech. The Balebusters are also sold by the other respondents. The
judge found, and it is undisputed, that the Balebuster design was inspired by
the Bale King, and that Duratech knew of the 334 patent when developing the
design for the Balebuster. Both models of the Balebuster were alleged to
infringe the 334 patent but, because they are of similar design, the
infringement aspect of the trial dealt with the Balebuster 2650.
[6]
Generally,
a bale processor consists of a container large enough to hold a large bale of
crop material, which is typically round. Inside the container are tools that
are capable of cutting the outside of the bale to disintegrate it into shreds. By
some means, the bale is made to rotate and press against the cutting tools so
that they are engaged against the moving surface of the bale. The shreds of
disintegrated material are discharged through an opening in the container.
[7]
The
patent disclosure explains at some length that bale processors are prone to
becoming jammed because the shreds of disintegrated material become entangled
in the moving parts of the machinery. The patent specification states that it
is “an object of
this invention to provide a baled crop material processor that minimizes
jamming.”
The position of Bridgeview is that the inventive step relates to what I will
call the “right hand discharge” of the disintegrated crop material. The meaning
of that phrase, and what I understand to be the functional importance of right
hand discharge, will become apparent in the following paragraph.
[8]
Bale
processors are designed to be pulled by a tractor. The disintegration rotor of
a bale processor is powered by the tractor’s power take off drive. Before the
Bale King was on the market, most bale processors were designed so that the
disintegration rotor would rotate in the same direction as the tractor’s power
take off drive, namely, counter clockwise as viewed by a person looking at the
bale processor from the front. That necessarily caused the disintegrated
material to be discharged to the left side of the bale processor (that is, to
the left of the tractor operator when facing forward). The control console of a
tractor is typically positioned on the right side of the tractor. Therefore,
the operator of a tractor pulling a bale processor with a left side discharge
must turn uncomfortably to the left in order to watch for the jamming of the
discharged shreds, while at the same time maintaining control of the steering
wheel and other controls. It is physically easier for the driver of a tractor
to watch for jamming, and therefore to control it, if the shreds are discharged
to the right (right hand discharge).
Patent construction
[9]
In an
action for infringement or an action to invalidate a patent, the first step is
to construe the patent. The construction of a patent is a question of law to be
determined by the Court, with the assistance of persons of ordinary skill in
the art to which the invention relates. A patent must be construed purposively,
taking into account the entire context of the specification, including the
disclosure and the claim, as they would be understood by the skilled person
reading the patent with the object of understanding what the inventor claims to
have invented and the scope of the monopoly the inventor wishes to claim. See Whirlpool
Corp. v. Camco Inc., [2000] 2 S.C.R. 1067, 2000 SCC 67, Consolboard Inc.
v. MacMillan Bloedel (Saskatchewan) Limited, [1981] 1 S.C.R. 504.
[10]
The
challenge represented by the construction of the 334 patent, and the nature of
the debate between the experts, makes it helpful to reproduce most of the
specification, which I have done below. At this point it is enough to note that
there are two key disputes on patent construction.
[11]
The first
dispute is whether the word “manipulator” as used in the claims of the patent
should be understood to refer to manipulators of every kind known to the
skilled person at the relevant time as a typical component of a bale processor,
or only to a particular kind of manipulator comprising at least two rollers
with one roller on each side of and above the disintegrator, which is the only
kind of manipulator referred to in the disclosure portion of the specification.
The latter interpretation was accepted by the judge, based on the analysis
presented by Duratech’s expert, Dr. Richard L. Parish. The contrary opinion was
expressed by Bridgeview’s expert, Mr. Craig Hanson.
[12]
The second
dispute is the meaning of the phrase “discharge opening at the bottom of the
right side wall to discharge material from the right side of the processor.”
Dr. Parish interpreted that language literally. Mr. Hanson was of the view that
the exact location of the opening is not essential, as long as the opening
served its function of permitting the disintegrated material to be discharged
to the right.
[13]
The
disclosure of the 334 patent begins with the following explanation (I have
inserted paragraph numbers for ease of reference):
Field of the Invention
¶1. The present
invention relates generally to a crop material processor and more particularly
to a crop material processor for disintegrating baled crop materials.
Background of
the Invention
¶2. Crop materials, such
as straw, hay or other like forage, or animal bedding, are often baled for
storage and transportation. In some instances, it is necessary to break the
bale apart in order to spread the crop material for animal bedding or to
dispense the crop material as feed.
¶3. A machine to
disintegrate bales of crop material is sometimes known as a baled crop material
processor. A typical machine is described in US Patent 4,830,292 which issued
to Frey on May 16, 1989. A baled crop material processor basically comprises a
container for receiving the bales, a disintegrator often in the form of a
roller with cutters or flails for chopping or shredding the material from the
bale, a mechanism including manipulator rollers to direct the bale to the
disintegrator and a discharge slot such that the crop material is discharged
from the bail [sic] processor. Any number of manipulator rollers are [sic]
possible, however, the disintegrator is located between and below two of the
manipulator rollers. The baled crop material is supported and rotated by the
rollers. As the crop material bale rotates the disintegrator breaks apart the
outer portion of the baled crop material first and then proceeds to break apart
the crop material towards the centre of the bale until the crop material is
completely broken apart. As the baled crop material is disintegrated, the loose
crop material is driven by the flails to be discharged from the machine through
the discharge slot. The discharged crop material can be formed into windrows or
discharged into feed bunks to be used as feed or it may be scattered to be used
as animal bedding.
¶4. One of the major
problems which appears to occur with baled crop material processors is that
they tend to jam. This occurs when loose crop material wraps around the
manipulator rollers or passes between the manipulator rollers and the walls of
the container. Jams are generally dislodged by reversing the direction of
rotation of the manipulator rollers. It has been found that jamming rarely
occurs when the bale is firm, the result being that the only loose crop
material that is produced, is by the disintegrator in the disintegrator opening
between the manipulator rollers; this loose crop material is immediately driven
out of the processor through the discharge slot. Loose crop material may be
created by the manipulator rollers themselves, the rotation of the bale may
shake it apart or the engaging action of the rollers may tear or break the crop
material bale apart.
¶5. Usually, as the crop
material bale rotates, the amount of crop material disintegrated is not uniform
from the outside to the inside of the crop material bale. This occurs because
the outside is usually much harder than the inside, that is the inside is more
loosely baled. Thus, when the exterior of the crop material bale is being
disintegrated, that is at the start of the process, the crop material bale is
hard. Rotating a hard crop material bale is relatively easy, and therefore
uniform disintegration takes place along the periphery of the crop material
bale. Furthermore, the crop material bale only breaks apart in the area of
disintegration, the other parts of the periphery remain intact due to the
hardness of the bale. However, once the softer, inner core of the crop material
is reached, the crop material bale is often too loose to remain intact.
Therefore, the softer, inner core is sometimes difficult to rotate. The softer
inner core tends to break apart because of the rotation, and this loose crop
material can cause jamming and impede rotation of the manipulator rollers.
¶6. Also, the teeth on
the manipulator rollers engage the crop material bale to effect the rotation.
This engaging action tends to grab the crop material bale. This grabbing action
can be very similar to the disintegration action, and hence loose crop material
can be created. Furthermore, the grabbing action may not release the crop
material bale and hence pull the crop material around the roller causing a wrap
around situation.
¶7. Moreover, if the
crop material bale moves longitudinally and impacts the front or back wall of
the container, then the crop material may be torn from the bale by the wall or
the rotation of the crop material bale may be impeded by the contact with the
wall of the container. Often, the result of this impeded rotation is that the
teeth of the manipulator rollers tend to break the crop material bale apart,
and this crop material may jam the roller, which is undesirable.
¶8. A further difficulty
is to control bales of irregular shape such as rectangular bales, frozen bales
or bales that have been stored for a period of time and are flat on one side.
Sometimes, irregularly shaped bales can cause a jam to occur since they do not
rotate properly.
¶9. For the foregoing
reasons, there is a need to provide a crop material processor for
disintegrating baled crop material capable of keeping to a minimum the amount
of loose crop material in the processor that may cause jamming.
Summary of the invention
¶10. It is therefore an
object of this invention to provide a baled crop material processor that
minimizes jamming.
¶11. These and other
objects are achieved in a baled crop material processor for disintegrating
baled crop material. The crop material processor comprises a container having a
bottom, a front wall, a back wall, and left and right side walls for receiving
and containing the crop material. A disintegrator having a flail roller that is
rotatable about its own longitudinal axis is mounted to extend between the
front and the back of the container. A number of flails are pivotally fixed
about the flail roller such that they will extend radially from the flail
roller as the flail roller rotates. The processor further includes a discharge
opening at the bottom of either the left or the right side wall to discharge
the disintegrated baled crop material and a mechanism for supporting and
manipulating the baled crop material so that it will be moved to the
disintegrator in such a manner that disintegration of the baled crop material
is carried out primarily by the disintegrator.
¶12. In accordance with
an aspect of this invention, the processor may be unidirectional, discharging
the disintegrated crop material either to the left or to the right of the
processor, or the processor may be bidirectional with a mechanism for allowing
the operator to discharge from the left or the right. The direction of rotation
of the flail roller will depend on the side of the processor that discharge is
desired. The flail roller will rotate in the counter-clockwise direction for
discharge to the left and in the clockwise direction for discharge to the
right.
¶13. In accordance with
another aspect of the invention, the support and manipulation mechanism
includes at least two manipulator rollers rotatably mounted inside the
container substantially parallel to the flail roller wherein at least one
roller is located on each side of the flail roller to define a disintegration
opening where crop material is accessed by the disintegrator. The cross-section
of the manipulator rollers may be substantially square. A number of paddles
that are channel shaped with a projecting end that is curved outwardly are mounted
about each of the rollers. The paddles are positioned such that the plane of
the paddles is set at an angle θ to a plane through the axis of the
manipulator roller, where 0 ≤ θ ≤ 90° and may be in the order
of 45°.
¶14. With regard to a
particular aspect of this invention, the lead surface of the paddles are [sic]
made to face in different directions. In particular, the lead surface of the
paddles at the front of the processor face [sic] towards the back of the
processor, and the lead surface of the paddles at the back of the processor
face [sic] towards the front of the processor.
¶15. With regard to
another aspect of the invention, the processor includes a mechanism for
connection between the processor flail roller and the a [sic] source of
rotating power to assure that the flail roller rotates in the desired
direction. In particular for a bidirectional processor, the direction of
rotation may be switched from one to the other.
¶16. In accordance with
another aspect of this invention, each of the side walls are [sic] shaped
to form a protrusion into the container in close proximity to the paddles of
the manipulator rollers. Each of the side walls also has a substantially
vertical wall portion below the protrusions and a wall portion sloping
outwardly from above the protrusion.
¶17. The support
mechanism further includes a number of hoops mounted in spaced relationship
within the container along the container length and positioned above and
substantially perpendicular to the flail roller and the manipulator rollers.
¶18. Another particular
aspect of the present invention is exemplified in the flails that are mounted
on the flail roller, each flail comprises a bar with one end having at least
one prong with a bevelled edge and the other end having a hollow cylindrical
section to receive a bolt for pivotally mounting the flail to the flail roller.
¶19. Many other objects
and aspects of this invention will be clear from the detailed description of
the drawings[.]
[14]
The
patent disclosure includes 14 drawings. They are described in detail in 11
pages of additional text. I reproduce below the portions of the detailed
description that seem to be of particular relevance to this appeal (the
superscript numbers refer to details in the drawings):
Detailed Description
¶20. By way of overview, the present description
will include the structure of the crop material processor, the operation of the
crop material processor and the advantages of the crop material processor in
accordance with the present invention in that order.
¶21. The baled crop material processor 1
… is built on a chassis 3 that has a hitch 2 fixed to it
for pulling the processor 1 by another machine, usually a tractor.
Power to the baled crop material processor 1 is usually in the form
of a power take-off and hydraulics that is provided by the tractor.
¶22. The baled crop material processor includes
a container 10 that is mounted on the chassis 3 into
which bales of crop material 12 are loaded. … The container 10
includes a front wall 100, a back wall 102, two sidewalls
104, 106 and a bottom 108. The front wall 100
of the container 10 is closest to the tractor, the back wall 102
is farthest from the tractor. …
¶23. Mounted inside the container 10
is a disintegrator 14 that includes a flail roller 16. The
flail roller 16 extends between the front wall 100 of the
container 10 and the back wall 102 of the container 10,
normally along its entire length. The flail roller 16 is mounted on
bearings fixed to the front and back walls 100 and 102 respectively
so as to be rotatable about its longitudinal axis. An input shaft 161
for connection to the tractor power take-off is connected to the flail roller 16
to rotate it under the control of the tractor. The power take-off on most
tractors rotates in only one direction, that being counter-clockwise when
looking back from the tractor, thus the flail roller 16 of the
disintegrator 14 will rotate in the counter-clockwise direction when
looking at it from the front wall 100 as shown by the arrow 17.
¶24. [Description of disintegrator omitted.]
¶25. A discharge opening 40 is
located at the bottom of the side walls 104 of the container 10
which in this case is the left side wall. The discharge opening 40
is formed by wall 104, the bottom 108 and the end walls 100
and 102 such that the flails 18 on the flail roller 16
drive the shredded crop material along the bottom 108 to discharge
it from the processor 1. …
¶26. The baled crop material processor 1
further includes means 24 for manipulating the crop material 12
such that it will be disintegrated by the disintegrator 14, the
purpose of the manipulation means 24 is to maintain the crop
material 12 substantially intact for disintegration primarily by the
disintegrator 14.
¶27. The manipulation means 24
comprises at least two rollers 26 rotatably mounted inside the
container 10 parallel to and above the flail roller 16.
Each roller 26 extends between the front wall 100 and the
back wall 102 of the container 10. Each roller 26
is rotatable about its own longitudinal axis in either direction usually by a
hydraulic motor 262, though electrical motors may also be used. A
pair of rollers 26, one on each side of the flail roller 16,
defines a disintegration opening 28 where crop material 12
is presented to the disintegrator 14. In this particular embodiment,
the cross-section of the rollers 26 is substantially square having
flat surfaces 261 however, it may also be round. In order to rotate
the bale 12 in a clockwise direction which is the preferred
direction, both rotors 26 are made to rotate in a counter-clockwise
direction. In addition to rotating the baled crop material, the rollers 26
define a support surface on which the crop material 12 is supported.
¶28. [Description of paddles omitted.]
¶29. [Description of paddle mounting omitted.]
¶30. The manipulation means 24
further includes the side walls 104, 106 of the container 10 to
support the bale in the container. In addition, one or both side walls 104
and 106 are adapted to be in close proximity to the curved edge 301
of the paddles 30. The preferred profile for the walls 104 and
106 is illustrated in figure 2 wherein the walls 104 and 106
include a protrusion 32 projecting into the container 10 proximal
to the support surface 261 defined by the rollers 26. The
side walls 104 and 106 further have a substantially vertical wall
portion 34 located below the protrusion 32 and a wall
portion 33 sloping outwardly from above the protrusion 32 .
¶31. Also mounted inside the container 10
are a number of hoops 22 which prevent the bale or bundles of loose
crop material from dropping into the disintegrator 16 all at once.
The hoops 22 are mounted between the sidewalls 104 and 106
of the container 10 and are spaced so that the flails 18
and the paddles 30 pass between the hoops 22 as the
roller 16 and the rollers 26 rotate.
¶32. Though the embodiment of the baled crop
material processor 1 has been described as discharging the
disintegrated bale crop material to the left of the processor 1, it
is within the scope of the present invention to provide a processor 1
from which the disintegrated bale crop material is discharged from the right of
the processor1 as illustrated in figure 8. The
construction of such a machine would be the mirror image of the machines
described with respect to figures 1 to 3. In this embodiment, the flail roller 16
would be made to rotate in clockwise direction and the flails 18 would
be mounted on the roller 16 facing in the direction of rotation. In
addition, the manipulator rollers 26 would continue to be rotatable
in either direction, though clockwise would be their preferred direction of
rotation. The paddles 30 on the rollers 26 would be
mounted facing the direction of preferred rotation. Finally, the discharge
opening would be located on the right wall 106.
¶33. to ¶47. [Description of certain variants
omitted.]
¶48. The previously described embodiments of the
present invention provide for many advantages, including the following.
¶49. The curved paddles 30 contribute
to the rotation of the baled the [sic] crop material 12
without breaking the bale apart. The angled paddles 30 guide the
baled crop material 12 to remain centred within the length of the
container 10. The paddles 30 which are reinforced by
their channel shape allow for aggressive rotation of the baled crop material 12.
¶50. The square cross-section of the rollers 26
offers greater support and allows for more aggressive rotation of the baled
crop material 12. Further, square rollers 26 may be more
readily manufactured and the base of the paddles 30 can be flat for
mounting.
¶51. The shape of the side walls 104, 106
tends to prevent passage of loose material between the walls 104, 106
and rollers 26 guiding the loose material upward and away from the
rollers 26 while at the same time allowing material falling by the
walls 104, 106 to drop away freely. In addition, the falling loose
material will fall into the flow of the material being discharged from the
processor 1. All of these contribute to the overall advantage of
preventing jams within the processor 1.
¶52. The ability to reverse the direction of
rotation of rollers 26 is also advantageous since it provides a
mechanism for unjamming a processor 1 particularly in the areas of
the rollers 26 or if the baled crop material 12 refuses
to rotate in any particular direction.
¶53. A processor 1 which discharges
the disintegrated baled crop material from the right of the processor 1 is
particularly advantageous in that it allows the operator to more adequately and
comfortably control the operation. Most tractors have their controls located on
the right hand side of the tractor and so it is more natural and common for the
operator to observe the operation of the farm equipment behind him by turning
to the right. The bidirectional processor 1 (figures 11 and 12)
provides the operator total versatility since it allows the operator to
discharge the disintegrated baled crop material in any way desired.
¶54. A further advantage of the invention is
that the flails 18 cut the twine that ties the crop material bale 12
together. The cut twine usually wraps around the flail roller 16
during the operation of the crop processor 1. The operator does not
have to cut the twine around the crop material bale 12 before
loading and needs only to remove the twine from the flail roller 16
before an amount of twine accumulates and impedes the operation of the crop
processor 1.
¶55. Many modifications
to the above described embodiments of the invention can be carried out without
departing from the scope thereof, and therefore the scope of the present
invention is intended to be limited only by the appended claims.
[15]
There are
five patent claims. They read as follows:
|
1.
|
A crop material
processor for disintegrating baled crop material comprising:
– a container
for receiving and containing the crop material, the container having a
bottom, a front wall, a back wall, a left side wall and a right side wall;
– a
disintegrator having a roller positioned along the length of the container
mounted to rotate about its own longitudinal axis;
– a
manipulator mounted inside the container substantially parallel to the disintegrator;
– a discharge
opening at the bottom of the right side wall to discharge material from the
right side of the processor; and
– rotation
conversion means having an input for connection to a rotating power source
and an output connected to the disintegrator roller to provide a direction of
rotation to the disintegrator roller opposite to the direction of rotation at
the conversion means input.
|
|
2.
|
A crop material
processor as claimed in claim 1 wherein the disintegrator roller is adapted
to rotate in a clockwise direction.
|
|
3.
|
A crop material
processor as claimed in claim 1, wherein the rotation conversion means
comprises a first gear and a second gear positioned to drive one another, the
first gear being mounted on a first rotatable shaft having an extended end
forming the conversion means input and the second gear being mounted on a
second rotatable shaft having an end for connection to the flail roller.
|
|
4.
|
A crop material
processor as claimed in claim 1, wherein the roller is a flail roller.
|
|
5.
|
A crop material
processor as claimed in claim 1, wherein the manipulator comprises at least
two manipulator rollers rotatably mounted inside the container substantially
parallel to the disintegrator roller, and wherein at least one roller is
located on each side of the disintegrator roller to define a disintegration
opening where crop material is accessed by the disintegrator.
|
[16]
Only
claims 1, 2 and 4 were in issue in the action for infringement. As claims 2 and
4 are dependent on claim 1, the key points of patent construction are focused
on claim 1.
[17]
As
mentioned above, the trial record includes the evidence of two experts, Mr.
Hanson for Bridgeview and Dr. Parish for Duratech. Their opinions conflict in
certain crucial respects. The judge preferred the opinion of Mr. Hanson on the
question of identifying the person of ordinary skill in the art, and the
opinion of Dr. Parish on patent construction.
[18]
There is
no challenge to the judge’s identification of the person of ordinary skill in
the art. He concluded that the 334 patent is directed at the skilled person
described as follows by Mr. Hanson (quoted at paragraph 22 of the reasons):
In my view,
the '334 Patent is addressed to someone with strong practical experience in
agricultural machinery generally, as well as a sound understanding of the
mechanical and structural aspects of such machinery. In other words, the '334
Patent is addressed to a broad range of people having a wide variety of
practical experiences and/or varying levels of education.
A skilled
addressee would also include someone who is employed to research, develop,
manufacture, test, service and/or repair agricultural machinery generally, such
as a welder, machinist or engineer. With respect to this latter skilled
addressee, he/she may:
(1) have
formal training in relevant areas, such as a college or university degree in a
mechanical-oriented program and at least a minimal amount (i.e., two years) of
practical experience; or (2) have a body of knowledge concerning machinery from
extensive years of practical experience.
In sum, a skilled person
would generally understand how a bale processor and its various components
work, as well as that such a processor is capable of forcefully and efficiently
chopping or shredding material from a bale of hay, and rapidly discharging that
material a relatively long distance.
[19]
On the
question of claim construction, the judge adopted the opinion of Dr. Parish in
its entirety, rejecting the opinion of Mr. Hanson on the basis that “it is not
based on a consideration of the whole of the disclosure”. The judge did not
explain this conclusion, but I assume he meant that, although Mr. Hanson makes
numerous references to the disclosure (for example, at paragraphs 40, 53, 58,
59, 63, 71, 78, 82, 87, 89, 90, 96, 97 of his report), he does not appear to
rely on the disclosure for a contextual construction.
[20]
Bridgeview
challenges the judge’s construction of the patent on the basis that he has used
the patent specification to narrow the scope of claim 1, contrary to the
principle that the disclosure portion of the specification can be used to
understand the meaning of words used in a claim, but not to construe a claim
more narrowly or widely than the language of the claims will allow. Duratech
supports the judge’s construction of the patent on the basis that he was
entitled to conclude, as he did, that given the context provided by the
disclosure, certain words and phrases in claim 1 should be interpreted more narrowly
than proposed by Bridgeview.
[21]
The
principle upon which Bridgeview relies is well established. Justice Binnie,
writing for the Supreme Court of Canada in Whirlpool (cited above), explained
it as follows (at paragraph 52) (my emphasis):
I have already given my
reasons for concluding that to the extent the appellants are arguing for a
simple "dictionary" approach to construction of the '803 claims, it
must be rejected. In Western Electric Co. v. Baldwin International Radio of Canada, [1934]
S.C.R. 570, the Court cited earlier authority dealing with the word
"conduit" as used in a patent claim. Duff C.J. at p. 572 accepted the
proposition that "[y]ou are not to look into the dictionary to see what
'conduit' means, but you are to look at the specification in order to see
the sense in which the patentees have used it". In Consolboard,
supra, as mentioned, Dickson J. considered that the whole of the
specification (including the disclosure and the claims) should be looked at
"to ascertain the nature of the invention" (p. 520). To the same
effect is the statement of Taschereau J. in Metalliflex Ltd. v. Rodi &
Wienenberger Aktiengesellschaft, [1961] S.C.R. 117, at p. 122:
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".
More recently, [William
L. Hayhurst, "The Art of Claiming and Reading a Claim", in G. F.
Henderson, ed., Patent Law of Canada. Scarborough, Ont.: Carswell,
1994], at p. 190, cautioned that "[t]erms must be read in context, and it
is therefore unsafe in many instances to conclude that a term is plain and
unambiguous without a careful review of the specification". 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.
[22]
In Whirlpool,
the word “vane” was capable of being defined broadly to include both rigid
vanes and flexible vanes but the trial judge in that case interpreted “vane” in
the particular context of the patent to mean only rigid vanes. In doing so, he
accepted the opinion of a person skilled in the art who relied to a significant
extent on the fact that the drawings in the patent represented only rigid
vanes. Justice Binnie concluded that it was open to the trial judge to
interpret the claims as he did.
[23]
In this
case, the judge’s description of the essential elements of claim 1 of the 334
patent (see paragraph 31 of his reasons) is comprised of a combination of the
language of the patent claims and the explanatory detail provided in the
opinion of Dr. Parish, which is derived from his analysis of the disclosure. Paragraph
31 reads as follows (emphasis in original):
[Para 31] As a result,
I find that the skilled person would use the disclosure to provide an expanded
interpretation of Claim 1. Therefore, considering the disclosure, and
considering Dr. Parish's expert evidence, I find that there are six essential
elements of the invention claimed in the Patent. The following description of
these elements includes the terms used in Claim 1 as underlined, together with
references to the disclosure in the Patent and Dr. Parish's evidence as
required:
1. A baled crop
material processor for disintegrating baled crop material, comprising
a container for receiving the bales, a disintegrator often in the form of a
roller with cutters or flails for chopping or shredding the material from the
bale, a mechanism including manipulator rollers to direct the bale to the
disintegrator and a discharge slot such that the crop material is discharged
from the bail processor. Any number of manipulator rollers are possible,
however, the disintegrator is located between and below two of the manipulator
rollers (Disclosure, p. 1, lines 17 — 23) and comprising:
a container
for receiving and containing the crop material, the container having a bottom,
a front wall, a back wall, a left side wall and a right side wall, with the
bottom being a surface of the container underneath the disintegrator that
receives and guides the shredded material to a discharge opening (Parish
Report, para. 66, Disclosure, Fig. 1, 108);
a
disintegrator mounted inside the container (Disclosure, p. 7. line 20) having
a roller positioned normally (Patent, p. 7, line 22) along the entire
length of the container mounted to rotate about its own longitudinal axis
with the disintegration rotor mounted with its axis of rotation parallel to the
direction of travel of the baled crop material processor so that the
disintegrated material is discharged to the side of the machine (Parish Report,
para. 66);
a manipulator
mounted inside the container substantially parallel to the disintegrator comprised of
at least two rollers (Disclosure, p. 1, lines 21 — 23) rotatably mounted
(Parish Report, para. 73) with one on each side of the disintegrator (Parish
Report, para. 73) and each located above the disintegrator (Disclosure, p. 1,
lines 22 — 23);
a discharge
opening at the bottom of the right side wall of the container
(Parish Vol. 1, para. 75) to discharge material from the right side of the
processor when facing forward (Parish Report, para. 75) along the bottom of
the container (Disclosure, p. 8, line 15, Fig. 1, 108; and Parish Second
Report, paras. 19 and 32); and
rotation conversion
means having an input for connection to a rotating power source and an output
connected to the disintegrator roller to provide a direction of rotation to the
disintegrator roller opposite to the direction of rotation at the conversion
means input.
[24]
The first
sentence of paragraph 31 requires particular attention. It says that the
skilled reader would use the disclosure to expand the meaning of claim
1. However, as I understand the judge’s reasons, he did not expand the
meaning of claim 1 beyond its literal meaning. Rather, he adopted an analysis
that used the disclosure as a basis for giving the disputed words and phrases
in claim 1 a meaning that is narrower than the more general meaning
proposed by Bridgeview, resulting in a correspondingly narrow interpretation of
claim 1.
[25]
Mr. Hanson
for Bridgeview and Dr. Parish for Duratech each provided a comprehensive
opinion that included the construction of the patent claims. They agreed that
the inventor was referring to a machine that disintegrates large round bales of
crop material by means of a manipulator that supports the bale while causing it
to be engaged against the cutting device, and in which the disintegrated
material is discharged from the machine. However, they disagreed on a number of
points. In particular, they disagreed on what the inventor meant by the word
“manipulator” and the phrase “discharge opening at the bottom of the right side
wall to discharge material from the right side of the processor” in claim 1.
[26]
Mr. Hanson
focused on these points in paragraphs 73 and 74 and paragraphs 80 to 83 of his
report (Appeal Book, page 1653, 1655-6):
73. The skilled person
would understand what a “manipulator” is as referred to in claim 1. In this
regard, such a skilled person would immediately take note of the inventor’s
deliberate intention to broadly claim any device that accomplishes the purpose
of this element of the invention, namely, to manipulate a bale of crop
material. Such a manipulator is understood to re-orient (i.e., rotate and
re-position) a bale of crop material towards the disintegrator for engaging and
disintegrating all portions of the bale. There is an interaction of rotating
parts, i.e., an interaction between a rotating disintegrator roller and a rotating
bale that is rotated by a manipulator.
74. The inventor’s
intent in claim 1 was not to claim a specific manipulating device with specific
structural characteristics. As of April 2000, a skilled person would know of
many different means and configurations for manipulating bales of hay in bale
processors, each of which perform substantially the same function, in
substantially the same way and achieve substantially the same result. The broad
intent of claim 1 can be differentiated with the inventor’s particular intent
in claim 5, which was to claim specific manipulator structure, namely, a
manipulator that “comprises at least two manipulator rollers rotatably mounted
inside the container substantially parallel to the disintegrator roller, and
wherein one roller is located on each side of the disintegrator roller to
define a disintegration opening where crop material is accessed by the
disintegrator”.
…
80. The skilled person
would understand that a “discharge opening” serves the purpose of allowing
material to be discharged to the right. In other words, the inventor intended
an essential purpose for the discharge opening, namely, that such discharge
opening be of a configuration and size so as to allow for the “discharge [of]
material from the right side of the processor”. This specific purpose for the
discharge opening is spelled out in claim 1 with such specific language.
81. In light of the
inventor’s stated purpose of the discharge opening, the skilled person would
construe the phrase “a discharge opening at the bottom of the right side wall”
as requiring an opening where materials may be discharged from the processor
generally alongside, i.e., roughly parallel to, the disintegrator roller such
that the discharge path is to the right. The exact dimensions and location of
the discharge opening are not essential provided that there is an opening that
allows for the discharge of materials out the right side of the crop material
processor.
82. Such claim
construction is consistent with how “a discharge opening at the bottom of the
right side wall to discharge material from the right side of the processor” is
described in the disclosure of the ’344 patent:
The discharge opening 40
is formed by wall 104, the bottom 108 and the end walls 100
and 102 such that the flails 18 on the flail roller 16 drive
the shredded crop material along the bottom 108 to discharge it from
the processor 1.
83. The skilled person
would understand that having a discharge opening “to discharge material from
the right side of the processor” would be an essential element of the invention
in claim 1 of the ’334 Patent. Furthermore, the skilled person would understand
that while the exact dimensions and location of the discharge opening are not
essential, it is an essential element of the invention in claim 1 of the ’334
Patent that the “discharge opening at the bottom of the right side wall” be
generally located at the right side of the crop material processor as construed
above.
[27]
The last
sentence of Mr. Hanson’s paragraph 74 is intended to invoke the presumption
against redundancy derived from section 87 of the Patent Rules,
SOR/96-423, that a dependent claim (in this case claim 5) is understood to
include all of the limitations in the claim to which it refers (in this case
claim 1) and is required to state “the additional features thereof”. The
suggestion is that, because the manipulator specifically described in claim 5
is the two roller type, the general word “manipulator” in claim 1 must have
been intended to refer to the two roller type of manipulator as well as manipulators
of the other known types.
[28]
In
summary, Mr. Hanson’s opinion is that the word “manipulator” in claim 1 should
be construed to include manipulators of all forms known to the person skilled
in the art at the relevant time, which would include the moving table device in
Duratech’s Balebuster. As to the discharge opening, his opinion is that this
element contemplates an opening of any shape and size that will permit the
discharge of disintegrated material to the right.
[29]
Dr. Parish
proposes an entirely different analysis. He explains that at the relevant time,
at least three types of manipulator for supporting and feeding a bale into a
disintegrator. One type of manipulator employs two “support rollers” that hold the
bale while rotating it into the flail rotor. This is the manipulator described
in the disclosure of the 334 patent, and it is also the mechanism used in
Bridgeview’s Bale King. A second type of mechanism employs a “traveling table”,
in which an inclined chain conveyor supports the bail and feeds it into the
flail rotor. This is the mechanism used in Duratech’s Balebuster. A third type
involves a tub that rotates around a vertical axis to rotate a bale over a
flail rotor mounted in an opening in the stationary floor that supports the
bale.
[30]
Dr. Parish
notes that the disclosure begins by stating that it relates to crop material
processors, without immediately explaining whether the invention relates to an
entirely new bale processor or an improvement in an existing type. That
question, he says, is immediately answered in the rest of the disclosure which
refers in a number of ways to bale processors using a manipulation device of
the first type, that is, the support roller mechanism. He takes into account
that jamming, which forms a large part of the description of the problem with
bale processors, is “inherently related to the support and rotation of a bale
on manipulator rollers adjacent to the container walls and over the
disintegrator roller.” He concludes that a skilled person would understand that
the inventor was using the term “baled crop processor” to refer to the type of
processor that uses such rollers as the manipulator.
[31]
Dr. Parish
construed literally the phrase “discharge opening at the bottom of the right
side wall to discharge material from the right side of the processor”. He
suggests in his second report, answering the report of Mr. Hanson, that the
inventor had a reason for locating the opening at the bottom of the right side
wall. In the bale processor described in the disclosure, the discharged
material would be sliding over the container bottom to the right side wall, so that
was where the inventor put the opening.
[32]
Having
reviewed carefully the reports of both experts and the portions of the transcript
to which the parties referred in argument, I conclude that it was open to the
judge to accept the opinion of Dr. Parish on the construction of the 334
patent, and in particular to adopt his interpretation of the disputed words and
phrases in claim 1. Dr. Parish’s interpretation of the patent is based on the
context of the entire specification as it would be understood by a person
skilled in the art at the relevant time, and it is soundly reasoned. In my
view, there is no basis for concluding that the construction of the patent that
he proposes is wrong in law.
[33]
I agree
with Bridgeview that this construction of the patent tends to make claim 5
redundant. However, that by itself cannot overcome a purposive interpretation
of the specification (Abbott Laboratories v. Canada, (Minister of Health),
2007 FCA 83 at paragraph 33, and Nekoosa Packaging Corp. v. AMCA
International Ltd. (1994), 172 N.R. 387 (F.C.A.) at paragraph 37).
Infringement
[34]
Duratech
defended the infringement claim on the basis of two aspects of the Balebuster.
First, the Balebuster uses a rolling table or conveyor style manipulator, not
the support roller mechanism that the judge found to be an essential element of
the relevant claims of the 334 patent. Second, in the Balebuster, the disintegrated
material is not discharged through an opening at the bottom of the right side
wall of the container, which the judge found to be another essential element of
the relevant claims. Rather, the bale is disintegrated by flails that reach
into the container between bars in an opening at the bottom of the left side
wall. The disintegrated material is pulled out of the container through the left
side wall opening, and flows under the container to be dispersed to
the right of the processor.
[35]
With
respect to the manipulator, it is argued for Bridgeview that the conveyor or
rolling table manipulator in the Balebuster infringes claim 1 because it
performs substantially the same function as the two roller type of manipulator
(it facilitates the disintegration of the bale), in substantially the same way
(by supporting, rotating and manipulating the bale to move it to the
disintegrator), to obtain substantially the same result (the bale is
disintegrated and the disintegrated material is discharged out the right side of
the processor). Bridgeview relies on the three part test from Improver Corp.
v. Remington Consumer Products Ltd., [1990] F.S.R. 181 (Pat. Ct.), cited by
Justice Binnie, writing for the Supreme Court of Canada in Free World Trust
v. Électro Santé Inc., [2000] 2 S.C.R. 1024, 2000 SCC 66.
[36]
In my
view, the difficulty with Bridgeview’s argument is that the third Improver
test is not met. That test asks whether a person skilled in the art would 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 the answer is yes, the variant is outside the claim. Bridgeview
argues that the answer to this question is no. In my view, that cannot be the
correct answer, because it is based on a construction of the patent that was
rejected by the judge.
[37]
With
respect to the discharge opening, the judge found no infringement. He relied
primarily on the evidence of Dr. Parish to the effect that there is a
substantial difference in the way the Balebuster discharges the shredded
material from that which is claimed in the 334 patent. Having carefully
reviewed the evidence to which the parties referred in argument, it seems to me
that this conclusion was reasonably open to the judge.
[38]
In my
view, there is no basis upon which this Court may intervene in the judge’s
conclusion on infringement.
Invalidity for obviousness
[39]
Section
28.3 of the Patent Act, R.S.C. 1985, c. P-4, reads as follows:
|
28.3 The subject-matter defined by a claim in an application
for a patent in Canada
must be subject-matter that would not have been obvious on the claim date to
a person skilled in the art or science to which it pertains, having regard to
(a)
information disclosed more than one year before the filing date by the
applicant, or by a person who obtained knowledge, directly or indirectly,
from the applicant in such a manner that the information became available to
the public in Canada or elsewhere; and
(b)
information disclosed before the claim date by a person not mentioned in
paragraph (a) in such a manner that the information became available
to the public in Canada or
elsewhere.
|
28.3 L’objet que définit la revendication d’une demande de brevet ne doit
pas, à la date de la revendication, être évident pour une personne versée
dans l’art ou la science dont relève l’objet, eu égard à toute communication
:
a) qui a été faite, plus d’un an avant la date de dépôt de
la demande, par le demandeur ou un tiers ayant obtenu de lui l’information à
cet égard de façon directe ou autrement, de manière telle qu’elle est devenue
accessible au public au Canada ou ailleurs;
b) qui a été faite par toute autre personne avant la date
de la revendication de manière telle qu’elle est devenue accessible au public
au Canada ou ailleurs.
|
[40]
The
general test for obviousness as stated by Justice Hugessen, writing for this
Court in Beloit Canada Ltd. v. Valmet Oy (1986), 8 C.P.R. (3d) 289 (at
page 294), may be the most quoted passage in Canadian patent law. It reads as follows:
The test for obviousness is not to ask
what competent inventors did or would have done to solve the problem. Inventors
are by definition inventive. The classical touchstone for obviousness is the
technician skilled in the art but having no scintilla of inventiveness or
imagination; a paragon of deduction and dexterity, wholly devoid of intuition;
a triumph of the left hemisphere
over the right. The question to be asked is whether this mythical creature (the
man in the Clapham omnibus of patent law) would, in the light of the state of
the art and of common general knowledge as at the claimed date of invention,
have come directly and without difficulty to the solution taught by the patent.
It is a very difficult test to satisfy.
[41]
The analytical
framework for determining whether a patent is invalid for obviousness, as developed
by Oliver LJ in Windsurfing International Inc. v. Tabur
Marine (Great Britain) Ltd., [1985] R.P.C. 59 (C.A.) and adapted by
Jacob LJ in Pozzoli SPA v. BDMO SA, [2007] F.S.R. 37
(p. 872), [2007] EWCA Civ 588, at paragraph 23, was cited with approval by the
Supreme Court of Canada in Apotex Inc. v. Sanofi-Synthelabo Canada Inc.,
[2008] 3 S.C.R. 265, 2008 SCC 61 (at paragraph 67). The Pozzoli approach
requires consideration of the following series of questions:
(1) Identify the notional
"person skilled in the art" and the relevant common general knowledge
of that person.
(2) Identify the inventive
concept of the claim in question or if that cannot readily be done, construe
it.
(3) Identify what, if any,
differences exist between the matter cited as forming part of the "state
of the art" and the inventive concept of the claim or the claim as
construed.
(4) Viewed without any
knowledge of the alleged invention as claimed, do those differences constitute
steps which would have been obvious to the person skilled in the art or do they
require any degree of invention?
[42]
The
decision in Sanofi went on to discuss “obvious to try”, which I
understand to be a refinement of the fourth question that may be appropriate to
consider where, in the relevant art, advances are won by experimentation. The
judge concluded, and I agree, that this is not a case where that refinement has
any application.
[43]
The
judge’s conclusion on the validity of the 334 patent is expressed as follows at
paragraph 68 of his reasons, under the heading “Conclusion: The Patent is
invalid for obviousness”:
. . . I find that, on
the claim date, in light of the state of the art and the common general
knowledge of discharge systems on farm equipment generally, and bale processors
specifically, the skilled person would not consider recognition of an advantage
in most cases of a right-hand discharge in a bale processor to be novel.
(As I understand this paragraph, it was intended to express
the judge’s conclusion on the counterclaim of invalidity for obviousness, not
for lack of novelty. It was not argued in this case that the 334 patent was
invalid because it lacked novelty.)
[44]
The judge
cited the Pozzoli questions in an appendix to his reasons. He did not
expressly incorporate the Pozzoli questions into his reasons but I
assume that his analysis was intended to reflect them. As I understand his
reasons, he concluded that the patent was invalid for obviousness on the basis
of the following analysis:
(1) The essence of the
inventive concept, and that which is to be compared to the prior art, is
“recognition of an advantage in most cases of a right-hand discharge in a bale
processor using a gearbox”.
(2) The state of the
art at the relevant time included the following common knowledge of persons
skilled in the art:
(a) A reversing gear
box can be used to change the direction of a tractor’s power take off from
counter-clockwise to clockwise.
(b) Tractors generally
have their controls on the right and it is natural for a tractor operator to
look to the right to view the operation of pulled equipment.
(c) There is a trend
away from left hand operation and toward right hand operation in other kinds of
pulled farm equipment.
(d) There was on the
market at the relevant time a bale processor called the Hesston BP 20 which, in
relation to the 334 patent, was prior art, which had right hand discharge,
which used a gear box, and from which a person skilled in the art would
recognize the advantage in a bale processor of right hand discharge.
(3) There is no
relevant difference between the Hesston BP 20 and the inventive concept of the
claim or the claim as construed.
(4)
Therefore the 334 invention is invalid for obviousness.
[45]
In effect,
because the judge found that the inventive concept of the 334 patent was the recognition of an advantage in
most cases of a right-hand discharge in a bale processor using a gearbox, and the Hesston BP
20 was a right hand discharge bale processor that used a gear box, the fourth Pozzoli question was irrelevant.
[46]
In
my respectful view, the third point in the judge’s analysis, which in effect
was his answer to the third Pozzoli question, is incorrect because it
does not take into account all of the essential elements of the claimed
invention as compared to the Hesston BP 20. That error led directly to the
failure of the judge to put his mind to the critical fourth Pozzoli
question.
[47]
The fourth
Pozzoli question, in the context of this case, is whether a person
skilled in the art of bale processors at the relevant time, knowing the
advantage of right hand discharge and knowing that a gear box can be used to
change the direction of a tractor’s power take off from counter-clockwise to
clockwise, would have come directly and without difficulty to the solution
taught by the 334 patent.
[48]
The
technology employed by the Hesston BP 20 bale processor for the disintegration
of bales was different than the technology disclosed in the 334 patent which,
as the judge concluded, was limited to the kind of bale processor in which the
manipulator was of the two roller type. In the Hesston BP 20, the bale was
rotated vertically, not horizontally, and the rotation was accomplished by
rotating the entire round tub container, not by a manipulator located inside
the container. While the Hesston BP 20 did discharge to the right, and did
employ a gear box to reverse the direction of the tractor’s power take off
prior to driving the disintegration rotor, the evidence was that the gear box
was added in order to increase the speed of rotation. Right hand discharge was
a result of the addition of the gear box, but not the purpose.
Further, the evidence was that the gear box was considered to be a detriment
because it increased the cost of the machine. The Hesston BP 20 was on the
market for approximately two years, and was replaced by a more economical model
with a left hand discharge.
[49]
Bridgeview
argued at trial that the Hesston BP 20 could not fairly be considered “prior
art” in relation to the invention disclosed in the 334 patent because there was
no evidence of any recognition, among persons skilled in the art, of the
advantages of right hand discharge. The judge did not agree. He relied on
evidence from Dr. Parish and also from Mr. Davis, an engineer who was involved
in the development of the Hesston BP 20. Mr. Davis testified among other things
that the manufacturers of the Hesston BP 20 recognized that the right hand
discharge feature was desirable because of the right hand location of the
tractor controls. The judge accepted that evidence, rejecting the contrary
evidence of Mr. Hanson. In my view, given the record before the judge, it was
open to him to conclude, as he did, that the Hesston BP 20 was relevant prior
art, and to infer from the evidence of Mr. Davis and Dr. Parish that persons
skilled in the art would have recognized without difficulty the advantage of
right hand discharge in pulled farm machinery, including bale processors.
[50]
However,
the conclusion that the Hesston BP 20 was relevant prior art, and that it
taught the advantage of right hand discharge, does not establish that the
invention disclosed in the 334 patent was obvious. In that regard, it is useful
to recall the well known caution against perfect hindsight as expressed by
Justice Hugessen, writing for this Court in Beloit (cited above) at page 295:
Every invention is
obvious after it has been made, and to no one more so than an expert in the
field. Where the expert has been hired for the purpose of testifying, his
infallible hindsight is even more suspect. It is so easy, once the teaching of
a patent is known, to say, "I could have done that"; before the
assertion can be given any weight, one must have a satisfactory answer to the
question, "Why didn't you?"
[51]
I agree
with Bridgeview that the 334 patent discloses a combination invention. It is
not fair to a person claiming to have invented a combination invention to break
the combination down into its parts and find that, because each part is well
known, the combination is necessarily obvious: see, for example, Stiga
Aktiebolag v. S.L.M. Canada Inc. (1990), 34 C.P.R. (3d) 216 at page 245
(F.C.T.D.), which quotes this passage from Wood & Amcolite Ltd. v.
Gowshall Ltd. (1936), 54 R.P.C. 37 at page 40 (per Greene L.J.):
The dissection of a
combination into its constituent elements and the examination of each element
in order to see whether its use is obvious or not is, in our view, a method
which ought to be applied with great caution since it tends to obscure the fact
that the invention claimed is the combination. Moreover, this method also tends
to obscure the facts that the conception of the combination is what normally
governs and precedes the selection of the elements of which it is composed and
that the obviousness or otherwise of each act of selection must in general be
examined in the light of this consideration. The real and ultimate question is
"Is the combination obvious or not?”
See also Omark Industries (1960) Ltd. v. Gouger Saw Chain
Co. et al (1964), 45 C.P.R. 169 (Ex. Ct.) and Canamould Extrusions Ltd.
v. Driangle Inc., 2003 FCT 244 (affirmed 2004 FCA 63).
[52]
The
invention claimed in the 334 patent is not simply the use of a gear box to
change the direction of a tractor’s power take off. The claimed invention
includes the use of a gear box for that purpose, but only in combination with
the other essential elements, resulting in a bale processor that disintegrates
the bale in a particular way and discharges the disintegrated material in a
particular way to the right. The question the judge should have asked, but did
not, is whether the common general knowledge that he identified would have led
the skilled but uninventive person to come directly and without difficulty to
the particular combination of elements of the invention disclosed in the 334
patent, as construed by the judge.
[53]
The
evidence on this question that most favours the position of Duratech is found
in the opinion of Dr. Parish. He opined that, given knowledge of the Hesston BP
20, it would have been obvious to a person skilled in the art who wished to
design a right hand discharge bale processor to use a gear box or other
reversing mechanism, combined with a right discharge opening, and that there
was motivation to do so in light of the trend in the industry to right hand
discharge for farm machinery pulled by tractors. This opinion, unlike Dr.
Parish’s opinion on patent construction and infringement, is weakened by the
absence of supporting analysis. Indeed, it is little more than a bare conclusion.
For example, it does not explain why at the relevant time, no one except the
inventor of the Bale King had managed to produce a commercially successful
right hand discharge bale processor. As mentioned above, the Hesston BP 20 was
not commercially successful. It is reasonable to infer that the successful
development of a right hand discharge bale processor required more than simply
adding a reversing gear box to an existing bale processor.
[54]
On the
question of obviousness, Duratech cited in argument two additional items of
prior art, namely U.S. patents 4,830,292 and 4,879,
810 (the “Frey patents”), which are patents for bale processors that pre-date
the 334 patent. Indeed, U.S. patent 4,830,292 is disclosed
in the 334 patent. I was able to find in the record no expert opinion
construing these U.S. patents, but on a literal
reading they appear to relate, in the one case, to a particular kind of cutting
device in place of flails for disintegrating the bale, and in the other case,
to an improvement in the means for manipulating the bale. I can find no mention
in either U.S. patent of right hand
discharge. Duratech says that these patents teach right hand discharge because
they “implicitly” have a reversing gear. However, I am unable to discern from
the patent alone whether that assertion is valid, and Duratech has not cited
any evidence on the point.
[55]
I conclude
that the judge erred in law when he held that, given the state of the art at
the relevant time, the skilled but uninventive person would have been led
directly and without difficulty to the solution taught by the 334 patent. For
that reason, the judge’s conclusion as stated in paragraph 68 of his reasons
cannot stand. I would allow the appeal on that issue.
Conclusion
[56]
For these
reasons, I would allow the appeal in part. I would set aside the Federal Court
judgment and replace it with a judgment that reads as follows:
The
Plaintiffs’ claim is dismissed and the Defendants’ counterclaim is dismissed.
As success on the appeal is
divided, I would award no costs on the appeal or in the Federal Court.
“K.
Sharlow”
“I agree
M.
Nadon J.A.”
“I agree
Johanne
Trudel J.A.”
Email this Content