Bourgault Industries Ltd. v. Flexi-Coil Ltd., docket T-2413-95

Date: 19980227

Docket: T-2413-95

BETWEEN:

     BOURGAULT INDUSTRIES LTD.

     Plaintiff

     - and -

     FLEXI-COIL LTD.

     Defendant

     REASONS FOR JUDGMENT

CAMPBELL J.

[1]      "This invention relates to an agricultural implement of the type commonly known as a packer. In particular, it relates to a wing-type packer in which the wing sections can be pivoted upward out of contact with the ground so the packer can be conveniently transported." So reads the first sentence of the plaintiff"s¹ patent which is the subject matter of this action.² Bourgault alleges that Flexi-Coil has infringed the patent by manufacturing its System 75 packer. Flexi-Coil responds that it has not done so and further alleges that, for a number of reasons, Bourgault"s patent is invalid.

[2]      Fortunately, as a result of excellent counsel work on both sides, the evidence, arguments and issues in the trial were focussed through an Agreed Statement of Facts and Issues.³ This agreement, together with a highly skilled approach to producing the evidence at trial, allowed the trial to be completed most smoothly and expeditiously. Since the Agreed Statement carefully details facts not in issue, and clearly particularizes points of disagreement, I propose to quote almost its entire contents to assist in my decision making. The device I propose to use to signify when this is being done is to place quotations from the Agreed Statement in italics with a footnote as to where the quotation appears in the document.

[3]      In addition to the witnesses who testified for the corporate parties, both Bourgault and Flexi-Coil called expert witnesses to support their positions.⁴ The following is my precis of the credentials of the witnesses who produced statements and gave opinion evidence:

For Bourgault

(1)      Mr. Gerard F. Bourgault, Mechanical Engineer and President of Bourgault Industries Ltd.

Mr. Bourgault earned a Bachelor of Mechanical Engineering from the University of Saskatchewan in 1975. After graduation until 1978, he was employed as a Design Engineer by F.P. Bourgault Industries Ltd., an agricultural machinery company, owned and operated by his father. From 1979 to approximately 1994, he was the Head of Research and Development. He currently is the President of the company. Throughout his employment with F.P. Bourgault Industries Ltd. he has been responsible for the direction of the company's product development. Mr. Bourgault is the named and registered inventor of numerous patents of agricultural machinery.

(2)      Mr. Benjamin Dyck, Professional Mechanical Engineer

Mr. Dyck earned a Bachelor of Mechanical Engineering from the University of Saskatchewan in 1963 and a Masters of Science in 1965. From 1964 to 1966 he was employed by Canadian General Electric as a Design Engineer in the Department of Process Control (Automatic Control Systems). Thereafter he was employed by the Canada Department of Agriculture, Research Station in the Department of Engineering until 1994 where he held the positions of Design Engineer, Senior Design Engineer, Section Head and Research Scientist. The design work was focused on providing equipment for agricultural research, particularly plot seeding equipment. His research experience includes evaluating field scale farm seeding and tillage equipment and zero-till seeding systems. From 1994 to the present, he has worked as a private consultant in the area of Research and Development in the Agricultural Machinery field. Mr. Dyck has continuously owned and operated a small hobby farm.

(3)      Mr. David Cook, Owner and Operator of Farm World Equipment Ltd.

Mr. Cook owned and operated Farm World Equipment Ltd. (previously C & D Service Ltd.) in Kinistino, Saskatchewan from 1970 to 1975. He sold the business in 1975, re-purchased it in 1984 and has been operating it continuously ever since. From September 1984 until 1995, Farm World dealt in the products of both the plaintiff and defendant. Since 1995 Farm World has no longer distributed Flexi-Coil products. Mr. Cook is a farmer and has farmed continuously for over 30 years.

For Flexi-Coil

(1)      Mr. Terry Summach, Mechanical Engineer and President of Flexi-Coil Ltd.

Mr. Summach graduated in mechanical engineering from the University of Saskatchewan in 1965 and has been employed with Flexi-Coil Ltd. since that time. In the early years he was involved in sales, manufacturing, and engineering. In the early 1970's Mr. Summach became general manager of the company. In 1981 he was appointed president. In these roles he has been actively involved in all aspects of the business including design, research and customer relations.

(2)      Mr. David Hundeby, Mechanical Engineer and Project Manager for Flexi-Coil Ltd.

Mr. Hundeby obtained a Bachelor of Science in Mechanical Engineering from the University of Saskatchewan in 1972 and a Masters in Mechanical Engineering in 1976. After graduation he farmed during the summer months and held contract positions during the winter months. During the winter months of 1976 to 1981, he was employed by Friggstad Manufacturing Ltd. as a Project Designer. During this time he and Mr. Terry Friggstad designed various implements for agricultural machinery. During the winter months of 1981 to 1983, we worked under contract for Johnson Manufacturing where he assisted in designing hoists for truck boxes. During the winter months of 1983 to 1986 he held contract positions with Flexi-Coil Ltd. working on the research and development of various agricultural machines. From 1986 to the present, he has been employed full time by Flexi-Coil as a Project Manager in the Engineering Department where his responsibilities include developing new product innovations and improvements for farming equipment. He continues to develop and improve various agricultural machines and implements offered for sale by the company. He is also the named and registered inventor of various United States patents of agricultural machinery and a number of patent applications are presently pending.

(3)      Mr. Terry Friggstad, Project Manager for Flexi-Coil Ltd.

Mr. Friggstad studied engineering at the University of Manitoba in 1966 and in 1967 studied mechanics at the Saskatchewan Institute of Applied Science and Technology. He has also taken a number of short courses in design method, drive line, hydraulics and computer aided design. From 1969 to 1984, Mr. Friggstad was the co-owner and operator of Friggstad Manufacturing Ltd. where he was the Head of Design. During that time he was the primary designer of various agricultural machines and implements. Mr. Friggstad has been employed by Flexi-Coil as a Project Manager since 1984. He is responsible for the development and improvement of new and existing farming equipment and has been the primary designer of various cultivators, air drills, packer bars and a packer attachment. Mr. Friggstad is also the named and registered inventor of various agricultural machinery patents.

(4)      Mr. William B. Reed, Professional Engineer

     Mr. Reed earned a Bachelor of Science in Agricultural Engineering from the University of Saskatchewan in 1952. Following graduation, he was employed as a Farm Machinery Serviceman and Service Supervisor with the International Harvest Company for six years where he trained mechanics on tractor and farm machinery operation, problems and repair techniques. He also analyzed and reported to company headquarters any problems encountered with new models of farm machinery. He was employed with Saskatchewan Agriculture Machinery Administration as Senior Engineer (1958-1962) and Chief Engineer (1962-1965) and in this capacity was responsible for preparing comparison test reports on the performance of new farm machinery versus existing farm machinery in a variety of operating conditions in Saskatchewan. From 1965 to 1994, he was employed with the Department of Agriculture and Bioresource Engineering with the University of Saskatchewan. His duties included research and development of farm machinery in an effort to improve its overall performance and efficiency. He performed field tests of new innovations in seeding, tillage and harvesting equipment to determine their effect on crop yield and harvesting losses. Mr. Reed retired in 1994 and since then has continued to discuss and evaluate various farm machinery patents with manufacturers of agricultural machinery. Mr. Reed has published numerous articles and papers on various agricultural topics, but the majority of his work has focused on wild rice harvesting procedures, evaluation of tall oil blended with diesel fuel as a diesel engine fuel, and procedures and innovations regarding seed and fertilizer placement in soil.

I. Background

A. Introduction

[4]      The plaintiff Bourgault Industries Ltd. is a corporation incorporated under the laws of the Province of Saskatchewan which has its chief place of business at St. Brieux, Saskatchewan. Prior to December 4, 1995, the plaintiff was known as F.P. Bourgault Industries Air Seeder Division Ltd. The plaintiff manufactures and sells farm equipment⁵. The defendant Flexi-Coil Ltd. is a corporation incorporated under the laws of the Province of Saskatchewan which has its chief place of business at Saskatoon, Saskatchewan. The defendant manufactures and sells farm equipment.

[5]      The plaintiff filed a Canadian patent application on September 1, 1989. That application issued as Canadian patent 1,277,863 on December 18, 1990 to the plaintiff as owner and is entitled Wing Packer (hereinafter '863).⁶ Patent '863 is the patent in suit in the action. The patent relates to an agricultural implement sometimes described as a packer. A packer is utilized by farmers to compact soil over which the packers roll during seed bed preparation or as otherwise required.⁷

[6]      The following information, taken from the Statement of Mr. Jerry Bourgault, describes the farming situation in which packers are used:

Field of the Invention

The patent in issue generally relates to agricultural packers, and more specifically believed to be a novel packer bar particularly adapted to provide "complete packing" behind an "air seeder" to provide a high disturbance one-pass seeding system.

Packers are utilized to "pack" the ground, normally as part of a field conditioning operation or after a seeding operation. Packing reduces the air passages in the soil by breaking larger particles into smaller particles, and thereby reduces moisture loss. When used after seeding, packing promotes germination by providing better seed to soil contact and by inhibiting the drying of the seedbed.

There are two primary modes of packing utilized in western Canada. One is called "complete packing" and the other "on-row packing".

In complete packing, rollers are utilized to pack across the entire swath of the packing implement. The most common type of rollers used in complete packing applications in western Canada are "coil packers". Coil packers are formed of spiralled iron bars and generally weigh between 100 and 125 pounds per foot.

In on-row packing, "packer wheels" are used in alignment with ground openers on the ground engaging implement which are normally "narrow openers". The packers are typically plastic or metal discs mounted directly on a "seed drill" carrying the ground openers. Some of the weight of the seed drill is applied to the wheel packers when operating. The soil above and around the seed is packed but the area between seed rows is not packed.

Seeding Methods

One of the primary methods for seeding and weed control includes "high disturbance" field preparation and seeding. High disturbance seeding means that all of the soil to be seeded is disturbed prior to the seed being deposited. This is normally done ahead of the seeding operation although it can be done as part of the seeding operation. High disturbance seeding and/or field preparation provides effective weed control because, when the soil is disturbed, the weeds are uprooted and deposited on the surface of the soil to dry out.

The soil may then be conditioned using "harrows" or "harrow packers" to prepare it as a seedbed. The term "harrow" is generally used to refer to implements adapted to break lumps of soil on the surface of the field, uproot weeds and distribute straw residue and to level the field.

After field conditioning, the seeds are placed into the moist soil below the dry surface layer, germinate in the moist layer and are established before the weeds reestablish. Complete packing after seeding helps prevent the moist layer from drying, but also helps retain moisture in areas where there is no seed and promotes weed growth to some extent.

Timing of packing operations is very important because on a hot, dry and windy day, the soil will dry quickly down to the level that the ground opening tools have penetrated. Within hours of seeding, the seed may be sitting in dry soil and may not emerge until after it rains. This can cause variances in crop emergence which may result in significant crop losses.

In the latter part of the 1980's, a non-selective chemical called glyphosate, trade labelled as Round Up, became cost effective for eliminating growing weeds before seeding. This has resulted in many farmers changing their seeding techniques from high disturbance to "low disturbance" particularly in the drier regions of western Canada and the upper mid-western United States. Low disturbance seeding means that only a small portion of the soil is disturbed using narrow ground openers during the seeding operation. On-row packing is generally the mode of packing utilized in low disturbance seeding operations.

Development of Air Seeders

The term air seeder describes an air seeder cart coupled to a ground opening implement, generally a cultivator or chisel plow. Seed is transported from the cart to a seed boot located behind each ground opener by pneumatic conveyance and deposited in the seed row opened by the ground opener.

The earliest Canadian patent issued for an air seeder I am aware of is patent No. 867,226 granted to a German inventor by the name of Heinrich Weiste on March 31, 1971. German air seeders were generally small machines by western Canadian standards.

The first acceptance of air seeders in large scale farming occurred in Australia and grew in popularity in the 1970's, particularly in West Australia where the farms are very large.

The first western Canadian I am aware of to develop air seeders was Jerome Bechard of Lajord, Saskatchewan. He filed and obtained Canadian patent 1,060,720 which was later licensed to F.P. Bourgault Industries Ltd., the plaintiff's predecessor company.

Since their introduction, air seeders have become more refined and capable. Further, the size of air seeder tanks has increased dramatically thereby increasing the amount of seeding which may be done without stopping to fill the tank. As a result, air seeders became the mainstream method of seeding in western Canada and the upper midwestern United States during the 1980's and continuing to date.

Initially, virtually all air seeder carts were connected to cultivators and to a lesser degree chisel plows. However, with the advent of low disturbance seeding techniques, air seeders have also been attached to air drills with no wheels in the frame and on-row packing.

One-Pass Seeding

The term "one-pass seeding" is used to refer to a seeding operation in which seed rows are opened, seed is deposited and the soil is packed in one pass over the field. In the context of high disturbance seeding operations, that will generally be accomplished using an air seeder (cultivator/chisel plow and air seeder cart) and a separate drawbar for towing packers. The three implements are attached in a train and towed by a single tractor.

There has been a continuous trend toward more one-pass seeding over the past 15 years due to the significant economic advantages. Farmers may seed significantly more land with the same equipment if only one pass is required. Further, each tractor requires an operator and because farming is seasonal, it is often difficult for farmers to find trained operators. With a one-pass seeding system, farmers may be able to do all of their seeding themselves.⁸

B. Complete Packer Manufacturing Expertise

[7]      Respecting the attributes of a complete packing device, Mr. Dyck said this:

To be compatible with modern farming practice, a complete packing implement needs to be manoeuvrable, readily transported, durable and versatile (used with or without other complementary seeding and tillage machines). In the drier areas of the prairies, it is desirable to pack during or immediately after seeding to conserve soil moisture. In wetter areas, it may be desirable to delay packing for a day or two to allow weeds to die and not pack them back in the soil, facilitating continued growth. Thus a machine that can be used in either scenario is desirable.

In the early to mid 1980's, the most common complete packing implement was the coil packer towed on a drawbar immediately behind the seeder or in a separate operation. Most commonly the implement was in the form of a harrow packer bar combination. All such devices of which I am aware used some form of three axis pivot for packer attachment to the drawbar. The three axis pivot attachments provided for effective ground following capability and, due to the inclusion of a vertical axis, prevented skidding of the coil packers on sharp corners and minimized the forces generated on the implement when turning corners.

Harrow packer drawbars which could be moved into and out of transport position from the cab of the tractor became the most popular packing implements in the early 1980's. To convert the units to transport position involved rotating the mainframe 90E in the forward direction which lifted the harrows and packers off the ground and suspended them in the air. The wings of the machine were then folded either to the rear or to the front by driving forwarded [sic] or reverse. To revert back to field position required reversing the above procedure.

In the early to mid 1980's, more and more farmers preferred a one-pass seeding operation facilitated by using an air seeder and towing a harrow packer bar or by using mounted harrows on the cultivator and towing a packer bar. However, transport of the packer bar/harrow packer bar was a problem. Units which required backing up to change into or out of transport position were problematic because backing a sufficient distance to fold or unfold the wings was nigh impossible with three or four units in a train formation. In the mid 1980's the tow behind air seeder cart became the preferred configuration which made the train longer and reversing even more difficult. Due to the folding wings, it was often necessary to unhitch the packer or harrow packer bar to convert from field to transport position or vice versa,

which required another tractor or unhitching the main tractor from the air seeder to handle this chore.

Operation of the packer or harrow packer bar could also be problematic since in field operations, farmers may want to back up the air seeder combination for several feet to clear an obstruction or for other reason. However, with coil packers having three axis pivot, this was often impossible because the packers would skew to the side (jackknife) and be subjected to large forces as a result and could become tangled up with adjacent packers or interfere with the implements wheels. This problem and the transport problem discussed above made the existing tow behind packer bars and harrow packer bars extremely ungainly with the result that the harrow packing operations were often done as separate operations after seeding.⁹

     1. Harrow packer drawbar expertise

         a. Flexi-Coil System 95

[8]      The System 95 was a harrow packer drawbar in which the wings folded back in the transport position. The following description provides the elements of this device:

All harrow packer bars which could be placed in and out of transport position from the cab of the tractor of which I am aware included lift arms attached to pivotal members on the frame of the drawbar to which the packers were attached. The lift arms were provided to give clearance between the harrows and the packers which was necessary because the packers could turn about a vertical axis; to provide staggering of the packers; and to facilitate lifting of the packers from the ground for transport. The lift arms were generally attached to a lifting member or beam pivotally attached to the implement frame. The lifting member would be pivoted to raise or lower the lift arms and the packers attached to the lift arms.

The lift arms added to the distance between the packers and the implement to which the harrow packer was attached. Further, the greater the distance which the packers trail behind a cultivator, the more tilled soil which will not be packed when turning a corner. This problem may be reduced by using a harrow packer bar which is larger than the cultivator, in which case, the greater the distance which the packer trails behind the cultivator the larger the harrow packer bar will have to be relative to the cultivator in order to reduce unpacked soil. This was particularly troublesome in areas of western Canada where there are many pot holes and other obstructions which have to be manoeuvred around....¹⁰

     2. One-pass seeder expertise

         a. Friggstad PAMI

[9]      Mr. Bourgault provides a description of this machine in his statement as follows:

In the early to mid 1980's, there were also a number of packer bars available in western Canada which were used in one-pass seeding systems using air seeders.

Friggstad, a manufacturer located in southwestern Saskatchewan, offered a packer drawbar which is shown in the PAMI report marked as Exhibit P-237 [Ex.A,4] on the examination of the defendant. While the implement could effectively be used for packing behind an air seeder, it was extremely ungainly to transport. The packers, which, as far as I am aware, were always coil packers, were attached on a three axis pivot. No means were provided to lift the packers off the ground for transport. The apparatus was transported by towing it with packers in contact with the ground.¹¹

         b. Friggstad HPL

[10]      As will be seen below, this machine has significant importance in the argument on validity of the patent. Mr. Dyck provides this description of this machine in his statement as follows:

Various implement designs were created to attempt to provide a more effective one-pass packing implement for use with air seeders. One such implement was the Friggstad HPL packer drawbar. The HPL could be attached to the rear of a cultivator, towed behind an air seeder cart or towed separately by a tractor. To convert to transport position, the coil packers of the center section were lifted up out of ground contact by rotating a rockshaft with lifting arms (similar to the system on harrow packer drawbars as discussed above) and then the wings were folded up to an essentially vertical position with the packers dangling in the air. To revert to field position required reversing the above procedure usually with slow forward motion to get the packers to trail into field position. However, it retained the three axis coil packer attachment to the drawbar. The three axis pivot mount still limited reverse motion in field position and made converting from transport position to field position somewhat ungainly. The latter problem results from the freedom of the packers on the wings to rotate when in transport position and when changing positions with the result that they may be skewed significantly relative to the direction of travel when put back into field position.¹²

         c. Flexi-Coil System 70

[11]      Since the 1950's, the defendant made and sold packers in coil form (herein "coil packers"). The defendant had also made and sold various packer implements including harrow packer drawbars and packer drawbars since at least the early 1980's. One packer drawbar sold by the defendant was the Flexi-Coil System 70. Flexi-Coil Ltd. ceased manufacturing the System 70 machine in about 1988.¹³

[12]      Mr. Dyck also provides this description of this one-pass machine:

A second implement was the Flexi-Coil System 70 packer drawbar. It was similar to the conventional harrow packer drawbar, relying on a 90E rotation of the mainframe bar to lift the packers from the ground. The wings were then swung forward hydraulically to a transport position. Reversing the procedure results in a return to field position. It retained the three axis pivot attachment to the drawbar, thus backing up in field position was likely not possible. It was also limited in effective operating size because of the need for the hitch length to be long enough to accommodate the folding of the wings.¹⁴

C. Bourgault WTP Packer

[13]      The plaintiff has manufactured and sold a packer drawbar since October of 1988 known as the Bourgault Wing Type Packer ("WTP" or "BWTP").¹⁵

[14]      This machine is the production model of the apparatus described in the patent. To supply an understanding of the components of this machine, I will rely on the description which Mr. Dyck gave in his statement. Whether the machine is an "invention" as he refers to it, remains to be determined. He said as follows:

The Bourgault WTP overcame the transport problem [of the drawbar packers] by providing a quick and easy transport procedure: simply lift the center section (which lifted the packers attached to it off the ground) and then fold up the wings, lock in transport position and go. The two axis method of attaching the packers to the main frame on the BWTP increases packer stability and also allows backing up in field position for the distance the operator can back up the train (usually only several feet).

The BWTP invention is a simple, sturdy, field coil packer drawbar which can be drawn by a vehicle and readily converted from a wide working field position to a narrow transport position and vice versa. Several features combine to form the essence of the invention:

(a)      A fold up frame having a center section and two or more wings. The wing sections are pivotally attached to the adjacent frame section (centre or wing) about an axis approximately parallel to the ground in the direction of travel. For a three section frame, the wings are folded up to a position substantially perpendicular to the center section (in the vertical plane). The essence of the method is not the "substantially vertical" position but the significance of "compactness" afforded by the folded up position (working length and transport length are the same) and the ease of converting to transport without moving forward or reverse to achieve it. The center frame rides on wheels. The center frame section employs a pivotal lifting method which raises it from a working position to a higher transport position lifting the packer elements from ground contact. This is accomplished hydraulically as is the folding up procedure of the wings. To convert from transport to field position, one simply folds the wings down and lowers the center section. The pivotal attachment of the wings also allow the implement to follow ground contours. The pivotal method of raising the center frame allows a simple, sturdy lattice frame design. No additional rock shaft or tool bar is necessary to lift the packer rolls.

(b)      The pivotal double axis method of attaching the packers to the frame. This facilitates: (1) ground contour following ability of each individual packer roll; (2) the packer can roll over obstacles without stressing the frame to which it is attached or unduly stressing the packer roll frame; (3) simplifies wing frame design because the packers are held in position when folded up for transport, not hanging down and interfering with each other; (4) it allows a shorter overall frame distance front to back because the design does not have to consider rotation of the packers about a vertical axis; and (5) it allows the packer to be backed up in field position without individual packer rolls" jack-knifing" and hindering reverse motion.

(c)      The packer rolls can be aligned to give "complete packing" by attaching the packers alternately to front and rear main frame members in a slightly overlapping fashion.

(d)      The packer rolls are coil packer elements....16

D.Flexi-Coil 75

[15]      The plaintiff alleges that the defendant is infringing all of the claims except claim 2 of Patent '863 by the manufacture and sale of the 35-62 foot version of implements known as the Flexi-Coil System 75 and/or Flexi-Coil 75. The defendant first offered its Flexi-Coil 75 for sale in Canada in about February, 1989. The first production run of the Flexi-Coil 75 was in about April of 1989.¹⁷

[16]      The defendant, to date, has manufactured and sold the Flexi-Coil 75 in two models, namely version 75A and version 75B. Version 75A was replaced by version 75B at or about the time of an engineering change order (ECO 531) issued by the defendant dated January 2, 1991.¹⁸

[17]      Each of the versions of the Flexi-Coil 75 was manufactured and sold in various sizes ranging in width from 25 feet to 62 feet. Commencing in about February of 1991 after implementation of ECO 531 and continuing to date, the defendant has offered an optional packer pressure spring assembly for attachment to its Flexi-Coil 75.¹⁹

[18]      To the uninformed eye, the Bourgault WTP and the Flexi-Coil 75 have a very similar appearance. In fact some the features of the two machines are very much the same, but it is the potential differences that are important. The arguments respecting the differences are considered in section "III. Infringement".

E. The three vs. the two axis pivot

[19]      The question of a difference between a three axis pivot as a feature of the harrow packer bar and one-pass systems, compared to a two axis pivot as a feature of the Bourgault WTP and the Flexi-Coil 75 has importance in relation to the infringement and validity issues of this case as will be analyzed below. However, for ease of understanding these reasons, a brief description of the various axes of rotation is provided here.

[20]      An analysis of the two axis pivot arrangement described in the patent is as follows:

Rollers, that is, ground engaging packers are attached to the middle and wing sections in a manner that permits them to roll along the ground behind the frame member, following the contours of the ground and rising up and over irregularities in the ground, such as large rocks, without putting excessive stress on the frame members. This is accomplished by means of pivotal attachment of each of the ground engaging packers or rollers to the frame firstly about an axis substantially parallel to the ground and perpendicular to the forward direction of travel of the packer as it is towed. By virtue of this pivotal attachment, each roller can rise over an obstacle independently of the other rollers and without lifting the packer frame as a whole. Secondly and at the same time, each roller is pivotally attached to the packer frame about a second axis, which is perpendicular to the first axis. This permits the roller to better remain in contact with the ground over their full width as they are pulled over uneven terrain, by a tilting motion.²⁰

[21]      A three axis pivot arrangement has each of the two axis just described, but also a third axis of rotation which is perpendicular to both the first and second axis thus allowing a packer to rotate or "castor".

F. Demand and commencement of action

[22]      The plaintiff forwarded a cease and desist letter to the defendant dated February 13, 1991. The defendant did not provide a reply to the letter.²¹

     The critical elements of the letter are as follows:

...It has come to our client"s attention that you have been manufacturing, distributing and selling, since at least as early as May, 1989, a wing packer under the name Flexi-Coil 75 Packer, and continue to do so.

It is our opinion that this farming implement, manufactured, distributed and sold by you, infringes Canadian Patent No. 1,277,863. This activity, carried on by you, constitutes an actionable wrong compensatable by damages payable to the patentee pursuant to Section 55 of the Patent Act.

We, therefore, request your written assurances within two weeks of the date of this letter, that you will immediately cease and desist from manufacturing, distributing and selling the wing packer above mentioned....²²

[23]      At the time that the cease and desist letter was sent, the plaintiff and the defendant were involved in other ongoing litigation between themselves wherein the defendant alleged the plaintiff infringed a different patent owned by it. The defendant continued to manufacture and sell the Flexi-Coil 75. The plaintiff was aware of the defendant's continued manufacture and sale of said packers. The present action was commenced on November 14, 1995.²³

II. Factual Context of the Development of the

Bourgault WTP and the Flexi-Coil 75

[24]      Both Mr. Jerry Bourgault for Bourgault and Mr. David Hundeby for Flexi-Coil testified in detail about the development of their respective machines. In order to set the proper context of the consideration of the infringement and validity issues, this development history, stated from the perspective of each developer, will now be detailed.

[25]      During the course of the hearing, strong objection was taken by Flexi-Coil to Mr. Bourgault"s evidence being used in any way to assist me in the interpretation of the patent. This objection is based on Robertson J.A."s decision in Nekoosa Packaging Corp. v. AMCA International Ltd.²⁴ where he says the following at 479:

The general rule is that extrinsic evidence is inadmissible for the purpose of construing a patent specification and this must necessarily extend to the testimony of the inventor pertaining to the proper construction of the specification.

[26]      In the course of the hearing, on the authority of Nekoosa, I ruled that certain portions of Mr. Bourgault"s statement were inadmissible as extrinsic evidence for the purpose of construing a patent specification. I found, however, that the balance of his evidence was admissible to prove other facts in the case.²⁵ I quote it here for purposes other than the construction of the patent.

A. Development of the Bourgault WTP

[27]      The elements of the Bourgault WTP has been described above. In his statement, Mr. Bourgault gave the following evidence respecting the development of this implement as an effort to produce an effective packer for use in one-pass packing with air seeders:

Through the experiences at our company, including my experiences in respect of testing and modifying air seeders, and requests made by customers, it was realized that there was a need for an efficient and economical packer for use as part of a one-pass seeding system with air seeders.

Richard Coquet and myself, as employees of the plaintiff, discussed design concepts and commenced work on designing an effective packer bar for use in one-pass air seeding/packing operation in September of 1987. Between September, 1987 and July, 1988, Mr. Coquet and I designed, built and tested three prototypes, photocopies of photographs of which are marked as Exhibits B-11, 12 and 13 [Ex.A,12 and 13] on the examination of the plaintiff.

All three prototypes had coil packers attached to the implement frame through support arms. Each end of each coil packer frame was attached to one end of a support arm and the other end of each support arm was attached to the implement frame about an axis generally parallel to the ground and perpendicular to the direction of travel of the implement. Looseness in the attachments to the frame allowed limited movement of one end of each coil packer relative to its other end. The implements had wing frame sections which were "winged up" when going into transport position and included means to pivotally lift the implement frame relative to the support wheels to lift the packers on the middle frame section off the ground when in transport position.

The first two prototypes were insufficient for a number of reasons including:

(a)      There was not complete packing across the swath of the machine since the packers were arranged "in line" and therefore had gaps between them; and

(b)      The method of attachment of the packer axle and coil to the packer frame for the in-line packer configuration was not sturdy enough and resulted in the coil packers falling off the packer frame and generally caused endurance problems.

The third prototype used stronger bearings to attach the coil packer axle to the packer frame and included a staggered and overlapping packer arrangement. The problem with packers falling off was minimized. However, in Rick's and my opinion at the time, the two arm method of attachment of the packer frame to the drawbar frame did not provide sufficient ability to follow the contours of the ground to provide uniform packing in all field conditions in which we expected the packer drawbar to be used in western Canada. My opinion has not changed in that regard. Further, the outer packers on the wings tended to noticeably skid when going around sharp corners. During testing of the third prototype, in light of the lack of ground following capability, the noticeable skidding of the packers when cornering and generally our feeling that the prototype packer drawbar would not be acceptable to many farmers in western Canada, Richard Coquet and myself decided we needed a different manner of attaching the packers to the drawbar frame.

In late July or early August, 1988, Richard Coquet and I decided that we should try a "two axis" pivot for attachment of the coil packer frames to the drawbar. While we were sceptical about the use of such an attachment since we believed that skidding of the packers around corners would be problematic, we did not want to revert to a three axis pivotal attachment because of problems with stability, particularly for a wing-up apparatus, and lack of manoeuvrability inherent in the use of such an attachment. A drawing dated August 4, 1988 was prepared by Richard Coquet showing the details of the two axis pivot which was utilized on our fourth prototype. The design of the fourth prototype was completed in August of 1988 and the prototype was tested in late August or September. To our surprise, instead of simply skidding around corners, one end of the coil packers skewed upward relative to the other end on sharp corners and the skidding was minimized. This minimized problems with field finish and with the forces generated by skidding of the coil packers. The use of the two pivot axis was also beneficial since it allowed for a simple, sturdy coupling element for attachment of the packers to the drawbar, thereby minimizing cost and maintenance requirements without compromising stability, manoeuvrability or durability. It also alleviated the problems with backing up encountered in previous harrow packer and packer bars as a result of the jackknifing of the packers about the vertical axis of the attachment of the packer to the drawbars.

The fourth prototype corresponded to the apparatus described in the patent in issue and became the basis for production models of the packer drawbar ultimately sold by the plaintiff. Photographs which were taken of a production prototype are marked as Exhibit B-57 [Ex.A,16] on the examination of the plaintiff. The photographs were taken in 1988 for use in manuals relating to the packer drawbar which was sold by the plaintiff under the trade name Bourgault Wing Type Packer or Bourgault WTP commencing in October of 1988. Marked as Exhibit B-56 [Ex.A,17] on the examination of the plaintiff is a copy of the first brochure put out by the plaintiff with respect to the Bourgault WTP.

After launching the Bourgault WTP in October of 1988, demand for the packer bar was higher than forecast and demand exceeded supply in the Spring of 1989.

Shortly after the introduction of the Bourgault WTP, competitors of the plaintiff, including:

(a)      the defendant;

(b)      Highline Mfg;

(c)      Summers Mfg. Co. Inc.;

(d)      Elmer's Row Crop Equipment,

commenced sale of packer drawbar implements which were similar in design to the plaintiff's WTP packer bar. At least one more competitor, Riteway Mfg. Co. Ltd., recently commenced sale of a similar packer drawbar implement.

In my opinion, and based upon my experience with respect to sales of the Bourgault WTP, we were correct in our assessment of the need for an improved packer drawbar for use in one-pass seeding systems with air seeders. Further, in my opinion, and based on my experience, the plaintiff's "invention" was clearly a commercial success as evidenced not only by the fact that demand exceeded supply for the Bourgault WTP, but also by the fact that competitors came out with similar apparatus after launch of the Bourgault WTP.

The Bourgault WTP packer overcame significant obstacles through its particular combination of elements to provide an efficient and economical packer drawbar for use in one-pass seeding with air seeders. Further, experience with the apparatus has shown that it is a cost effective and durable apparatus. It provided the complete packing farmers wanted yet was manoeuvrable in the field, allowed farmers to easily get out of tight spots, was able to go into and out transport position from the tractor seat, required no additional tractor hydraulic remote outlets, transported well, rolled over even large obstacles at high speed without damage, followed the contours of the land, shedded mud well, and because of its simplicity, was very durable, required little maintenance, and was economical to purchase. It was also safe and convenient to transport. The single two axis pivot attachment of the packer frames to the drawbar allowed the packer to perform with only a small compromise, that of the end coil packers digging into the soil on sharp turns. The attachment of each coil packer to the frame of the packer drawbar through the single two axis pivot arrangement secured the packer to the bar and kept it stable whether in field or transport position.²⁶

B. Development of the Flexi-Coil 75

[28]      Mr. Hundeby"s statement includes a chronological summary of the process which resulted in the development of the Flexi-Coil 75, the critical portion of which is as follows:

In May of 1988, I was asked to investigate the design of a new packer for use in association with the Flexi-Coil air seeders and cultivators....

On or about May 10, 1988 I identified a number of design criteria for the new packer. These design criteria included:

a)      pull behind tow-behind air seeder

b)      pull behind cultivator

c)      able to pull behind tractor

d)      coils off ground in transport

e)      does not require back up for:

i)      -      transport to field position

ii)      -      field to transport position

f)      minimum hydraulic cylinders

g)      minimum tires

h)      accept coil packers

i)      able to back up in transport position

j)      able to back up in field position

k)      hitch load always positive

l)      P20 or P30 coils

m) Inexpensive

n)      Simple

o)      sizes

i)      -      2 foot increments ?

ii)      -      1 foot increments ?

p)      sizes: 25 foot to 62 foot (same as 800 tillage)

q)      automatic wing lock

r)      automatic lock up on wheel standards

In order to meet the above-noted design criteria, given my knowledge as to what was already out there in the marketplace, I immediately and without much difficulty conceived of the idea of using a modified wing up cultivator frame to which I would attach an array of mounted packers having two axis of rotation essentially the same as the Friggstad HPL and the Friggstad Mounted Packer. Marked as Exhibit "G" to this Affidavit27 are copies of my early sketches showing the details of this design dated May 6 and May 10, 1988.

Once I had established the aforesaid design criteria and sketched out the manner of attachment of the array of packers I was confident that the design would result in a operable machine as its layout was complete.

The packer design which I conceived of in May 1988 and as shown in Exhibits "F1" and "G" was adapted for towing behind a power source or in tandem behind other implements, such as cultivators and air seeders, and included a hitch means for attachment to the vehicle. The packer included a middle frame section and up to four wing frame sections pivotally attached thereto. Most of the sections had one or more ground engaging rollers pivotally attached to it about a first axis substantially parallel to the ground and perpendicular to the forward direction of travel of the packer and about a second axis perpendicular to the first axis. The sections with only one roller had a roller mount with one axis of rotation parallel to the direction of travel. The ground engaging rollers were staggered. Means were provided for lifting the ground engaging rollers out of contact with the ground to transform the packer from a working position to a transport position. Means were also provided for pivotally lifting the wing frame sections from a working position to transport position in which the ground engaging rollers are out of contact with the ground. It was not necessary to move the rollers rearwardly to change the packer from a transport to the operating position.

Once again, projects having higher priorities diverted my attention from the design of the new packer. The project was once again temporarily postponed, this time to the fall of 1988.

In October 1988, I once again picked up the project and prepared detailed drawings, copies of which will be marked as ...[Ex.47] which ultimately led to the manufacture and sale of the Flexi-Coil System 75 packer which began in early 1989....

Marked as Exhibit "J" to this Affidavit are excerpts from the Flexi-Coil 75 Packer Drawbar Operator"s Manual [also Ex.1,11] which illustrate the various models which have been offered for sale and sold by Flexi-Coil. Flexi-Coil has manufactured and sold Flexi-Coil System 75 packer drawbars in various sizes ranging from a three section packer drawbar with an operating width of 25 feet to 45 feet and a five section packer drawbar with an operating width of 44 to 62 feet.

We found that in many instances, the tire tracks were excessive so a "spring pressure kit" was developed to raise the tires off the ground during field operation and transfer the weight of the frame to the packers. An engineering change order was issued January 2, 1991, a copy of which is marked as Exhibit "K" to this Affidavit, [also Ex.1,9] wherein the System 75 packer was changed to accept a spring pressure assembly. Assembly instructions and schematics of the packer pressure spring assembly are included at pages 8-27 to 8-28 of Exhibit "J". Every Flexi-Coil System 75 packer manufactured and sold by Flexi-Coil since in or about February 1991 has incorporated therein the spring pressure assembly mounts so that the spring pressure assembly could be added to all packer attachments but those on wing sections with no supporting wheel. The spring pressure assembly was offered as an option. When installed the spring pressure assembly transferred all of the weight of the packer frame to the packers themselves and lifted the frame from the ground in the working position so that the packers and not the wheels supported the frame in that position.²⁸

     III. Validity

[29]      The Patent Act imposes validity as a statutory requirement for patentability in s.45 as follows:

45. Every patent granted under this Act shall be issued under the signature of the Commissioner and the seal of the Patent Office, shall bear on its face the date on which it is granted and issued and shall thereafter, in the absence of any evidence to the contrary, be valid and avail the grantee and his legal representatives for the term mentioned therein.

[30]      Patent '863 will not be valid if the defendant can show that the invention was: (a) previously known or used by another; (b) described in any patent or publication printed in Canada or in any other country more than two years before presentation of the patent petition; and, (c) in public use or on sale in Canada for more than two years before the filing of the patent application²⁹.

[31]      It is important to note that in an analysis of validity, the onus of proof of invalidity is on the party who alleges it. Hence, the onus rests on Flexi-Coil to prove that the patent is invalid.

A. The issues

[32]      The Agreed Statement states the validity issues as follows:

a. Has the defendant proved that any of claims 1 or 3 to 7 inclusive of the patent at issue are invalid for want of novelty or for obviousness and, if so, which claim or claims? In so determining, the Court shall consider the bases for denying validity as set out herein?;

b. Was the alleged invention as claimed in any of claims 1 or 3 to 7 inclusive of the patent at issue, known or used by persons at the defendant company, in particular David Hundeby, before the date of invention, if any, by the inventors named in the patent at issue, and made public by the offering for sale and sale by the defendant of the Flexi-Coil 75 before the plaintiff applied for the patent at issue?; and

c. Is the patent at issue invalid by reason of lack of candour for failure of the plaintiff or its agent to provide relevant prior art to the Canadian Patent Office during the course of prosecution of the application for the patent at issue? In so determining, the Court shall consider the bases for denying candour as set out herein?30

B. Narrowing the issues

[33]      Bourgault advances the proposition that the invention is not any one particular piece of the claims in the patent, but the invention is a two axis pivot in combination with everything else that is recited in the claims. Acceptance of this proposition makes a great deal of difference to the resolution of the issues on validity, since if the proposition holds, Flexi-Coil has the burden of proving its validity challenges in respect of all elements of the combination. For example, it is not contested that to prove that the combination invention protected in a patent claim is anticipated by prior art requires that the prior art be a combination device having all the features described in the claim. Similarily, to prove that someone else was first to invent a combination invention protected by a combination patent claim requires that each element of the contesting invention be found in the claim.

[34]      While the Agreed Statement includes references as prior art to common knowledge, printed publications, and apparatus which were known, published, and sold and used in Canada more than two years before the application for Patent "863 was filed, which includes the Friggstad HPL,³¹ in written and oral argument the proposition that this case concerns a combination patent was recognized by Mr. Hughes Q.C., counsel for Flexi-Coil, in his effort to specifically focus attention on the similarities and differences between the Friggstad HPL and the invention claimed in the patent.

[35]      To finalize the issues to be addressed in this part of the analysis, on the evidence I agree with the proposition advanced by Bourgault and, therefore, find that a combination invention is protected in each claim of the patent.

[36]      In addition, on the evidence, I further find that only the Friggstad HPL is close enough in design to have the potential to invalidate the patent on the ground that, as prior art, it discloses or "teaches" all of the features of the invention claimed in the patent³². However, on the evidence which will be described in more detail below, I find that there are only two prior art issues respecting the Friggstad HPL and the patent being the pivots of the packer coil arrangement and the nature of the lifting mechanism of the middle frame section.

C. Prior invention

     1. The law on date of invention

[37]      The Plaintiff"s closing memorandum on this issue provides a concise statement of the law which is relevant on the facts of this case as follows:

The date of invention may be established by showing that the invention was reduced to a practical and definite shape by either a written or oral description of it that would enable a person skilled in the art to make it or, in the case of an apparatus, by the apparatus having been actually made.

Koehring Canada Ltd. v. Owens-Illinois (1980), 52 C.P.R. (2d) 1 (Fed. C.A.) at 11.

A claim is invalid if it can be shown that at the date of the plaintiff"s invention, the invention had been previously known or used by another, so long as prior to the date of the plaintiff"s patent application, the other person had disclosed or used the invention in such a manner that it became available to the public.

Patent Act, ss. 27(1)(a), 61(1)(a).

The requirements that a prior patent or other publication must meet before it can be considered as anticipatory of an invention apply with equal force in the case of an alleged anticipation by prior use.

Unipak Cartons Ltd. v. Crown Zellerbach Canada Limited, [1960] Ex. C.R. 396 at 435.

     2. The date of invention

[38]      As described in section "I. Background", both Mr. Bourgault and Mr. Hundeby were working on producing an effective packer for use in one-pass packing with air seeders. On the basis that the combination invention claimed in the patent is a two axis pivot in combination with everything else that is recited in the claims, the questions to be answered are: on what date did Mr. Bourgault arrive at the invention?; and on what date did Mr. Hundeby arrive at the invention of the Flexi-Coil 75, assuming it to be an adequate contesting combination device?

[39]      I find it is upon the testing of his fourth prototype using the two axis pivot, described in argument by Mr. Fyfe Q.C., counsel for Bourgault, as "the machine that worked", that Mr. Bourgault arrived at the invention claimed. The date of invention is, therefore, August 1988. Mr. Hundeby"s second prototype is the device which led to the manufacture and sale of the Flexi-Coil 75, and since on his own evidence given at trial, it was not tested until December 1988, the issue becomes the date upon which the prototype was reduced to the required "practical and definite shape by either a written or oral description".

[40]      The evidence establishes that in May 1988, Mr. Hundeby recorded certain design criteria for a new packer and, also at that time, sketched out various possible ways to satisfy the criteria. Commenting on these notes, in his reply statement Mr. Dyck said:

At this point, it appears to me that only some ideas are sketched and design criteria listed with insufficient detail to determine its overall features....In my opinion the Hundeby design notes clearly show Flexi-Coil did not have the BWTP invention until after the introduction of the BWTP despite the efforts to design a better packer drawbar for use behind air seeders as is evident from the various R & D reports I have reviewed.³³

[41]      While under cross examination, Mr. Dyck was asked if he could make a packer from the sketches, to which he ultimately replied that he could "with some adaptation"³⁴. However, I agree with Mr. Fyfe"s argument that his answer does not have weight in support of Flexi-Coil"s position that Mr. Hundeby was first to invent, because Mr. Dyck did not say that he could have built claim 1 of the patent, and he wasn"t asked.

[42]      I find, therefore, that the drawings do not bring to "practical and definite shape" all the required elements of the combination invention described in the patent. It is also clear that further design drawings which could possibly lead to the second prototype did not begin until October 1988 at the earliest, a date two months after Mr. Bourgault"s testing of his fourth prototype. Accordingly, I find that Mr. Bourgault was first to invent and Flexi-Coil fails in its attack on the validity of the patent in this respect.

D. Anticipation

     1.The test for anticipation

[43]      Section 27(1) of the Patent Act ensures that a patent will only be valid where it describes a novel invention that has not previously been anticipated by a prior invention. An invention is said to be anticipated if its essential features are disclosed in a single piece of prior art as stated by Hugessen J.A. in Beloit Canada Ltd. et al. v. Valmet³⁵ as follows:

One must, in effect, be able to look at a prior single publication and find in it all the information which, for practical purposes, is needed to produce the claimed invention without the exercise of any inventive skill. The prior publication must contain so clear a direction that a skilled person reading and following it would in every case without possibility of error be led to the claimed invention. Where, as here, the invention consists of a combination of several known elements, any publication which does not teach the combination of all the elements claimed cannot possibly be anticipatory.

[44]      The test for anticipation was also clearly set out by Wetston J. in Almecon Industries Ltd. v. Nutron Manufacturing Ltd.³⁶ as follows:

In Proctor & Gamble Co. v. Kimberly-Clark of Canada Ltd. (1991), 40 C.P.R. (3d) 1 (F.C.T.D.), Teitelbaum J. noted than an analysis of anticipation involves a two-fold test. Firstly, the court must consider whether the prior disclosure gives clear and unmistakable directions which would, in every case and without possibility of error, lead a skilled person to arrive at what is covered by the claims of the patent-in-suit. In other words, in light of the prior patent, was it inevitable that a skilled person would be led to discover the patent-in-suit?

If the first question is answered in the affirmative, the court must then ask if the prior patent conveys enough information which, for practical purposes, would be sufficient for the skilled person to know how to make the claimed invention without the exercise of any inventive skill. This is the enabling disclosure test. Thus, in order to satisfy the tests of anticipation, one has to show that the prior patent has enough description to enable the skilled person to construct the invention and put it to its proper use.

     2. Is the invention claimed in the patent anticipated by the Friggstad HPL?

[45]      In their formal statements, both Mr. Reed and Mr. Friggstad express the opinion that the patent teaches and discloses the Friggstad HPL packer, but Mr. Dyck disagrees and points to two particular differences which, in the trial, became a focus of attention. On the evidence generated as a result, I find that only the two axis pivot and lifting movement features are properly determinative of the anticipation question. Flexi-Coil argues that any differences between the Friggstad HPL and the invention are differences without a distinction.

         a. claims 1(e) and (f) and the specifications

[46]      An issue has been raised which must be cleared before the analysis on anticipation proceeds. Flexi-Coil"s arguments have placed weight on an apparent difference between the patent claims and the specifications regarding the pivot arrangement used in the invention. In claim 1(e) and (f), the roller"s pivotal attachment on the middle and wing sections are described to be by "...a first axis substantially parallel to the ground and perpendicular to the forward direction of the travel of the said packer and about a second axis perpendicular to said first axis..."³⁷. However, the specifications include the following statement:

In one embodiment (not illustrated) a three-axis pivot is provided, the third axis being perpendicular to both the first and second axes. In this embodiment, the roller support member 80 has a limited degree of rotation, e.g. 15E about the third axis, which reduces skidding of the outermost rollers when the packer is towed through a sharp turn.

[47]      This apparent anomaly has generated some evidence and the argument by Flexi-Coil that the patent claims are not limited to "only" or "just" two axes. In my opinion, the words used in 1(e) and (f) make no such claim, and I find that the words that appear in the specifications do not change this fact.

[48]      The documentary evidence produced at trial raises a suspicion as to why the specification appears as it does. The evidence³⁸ suggests that initially a third axis pivot was claimed in the patent as filed, and that at Mr. Bourgault"s request the third axis pivot claim was removed. But as Mr. Bourgault also requested that mention of the third axis pivot be removed from the specifications, the suspicion arises that, through someone"s failure to follow these instructions, the specification relating to the removed claim was not similarly removed. Whatever the reason for its existence, on the evidence, I am not prepared to give any weight to that part of the specification.

         b. the three axis vs. the two axis pivot

[49]      Flexi-Coil"s argument that the difference between a three axis pivot and a two axis pivot is a difference without a distinction is based on the opinion of Mr. Friggstad. In his statement, Mr. Friggstad says as follows:

A "difference" between the Friggstad HPL wing up packer and the preferred embodiment disclosed in the Patent is that in order to facilitate the three point support used in some hitch arrangements, all wheels and packers on the Friggstad HPL wing up packer by necessity castor about the 3^rd (vertical) axis rather than just the two axes of rotation provided by the preferred embodiment disclosed in the Patent. The middle frame section and the wing frame sections of the HPL wing up packer each have at least one ground engaging packer pivotally attached to it about a first axis substantially parallel to the ground and perpendicular to the forward direction of travel of the packer and about the second axis perpendicular to the first axis. The "difference" is the addition of a third axis of rotation. This "difference" does not detract from my conclusion that each and every element in the claims of the Patent is found in the Friggstad HPL wing up packer.³⁹

[50]      Mr. Fyfe countered this evidence by arguing that, since the claim requires that the first axis is to be and remain "parallel to the ground and perpendicular to the forward motion of travel", this can only be accomplished by having the first axis affixed to the frame. Since this is impossible with the introduction of the third axis, and since the first axis ceases to maintain its position parallel to the frame when castoring, a three axis pivot arrangement is significantly different from one having two axes. I accept this argument and, accordingly, find that in this respect the Friggstad HPL does not anticipate the claimed invention.

         c. lifting mechanism

[51]      In argument, Mr. Fyfe succinctly stated the difference between the lifting mechanism of the Friggstad HPL and the preferred embodiment in the patent as follows:

The lift arms and the wheels are attached to the frame in Friggstad, and you raise the rollers by raising the lift arm. And in Bourgault the wheels and packers are attached to the frame, and you lift the rollers by pivoting the wheel downwardly to lift the frame and that which is attached to it. That, in a nutshell, is the difference.

[52]      In his evidence Mr. Reed agreed that there is a difference between the two methods, however his use of the terms "a little different way", "little differences", "slightly different", were relied upon in argument by Flexi-Coil to mean that the differences were not ones of substance.⁴⁰

[53]      In addition, Mr. Hughes relied on Mr. Dyck"s candour in the following cross-examination to support his arguments on anticipation and obviousness:

Q.      Would you given Friggstad, say, 'Look, I can come to the Bourgault. That's easy enough'?

Q.      You wouldn't have done that? It would have flummoxed you, would it?

A.      Well --

Q.      You would have been stuck?

A.      I wouldn't say I would have been stuck.41

[54]      From Mr. Reed"s and Mr. Dyck"s evidence, Mr. Hughes argued that the differences in the lifting mechanisms is "not a difference in substance and it"s not a difference that would have

[55]      flummoxed any person skilled in the art." I simply can"t go the distance that Mr. Hughes has requested on this issue.

[56]      It is clear to me that while Mr. Reed was in full agreement that there is a difference between the lifting mechanisms, he used the terms he did to downplay the point because both methods use hydraulic power and cylinder arrangement to lift the rollers out of contact with the ground. Given that the general tenor of Mr. Reed"s evidence was that the invention claimed in the patent used "off the shelf" technology, this is not surprising, but it also does not change his answer that there is a difference.

[57]      I found Mr. Dyck to be a very credible witness throughout the whole of his testimony. He is a fully confident and candid person who obviously possesses a great deal of knowledge within his area of expertise. I would have been surprised if he did not rise to the challenge given to him by Mr. Hughes. This does not mean, however, that I need to put weight on his answer, which I do not given the lack of content it displays.

[58]      On the evidence I find there is a difference of substance between the mechanisms, and accordingly, find that in this respect the Friggstad HPL does not anticipate the claimed invention. There being no other points of distinction, I find the anticipation challenge to the validity of the patent fails.

E. Obviousness

     1.The test for obviousness

[59]      The defendants assert that Patent '863 is invalid for obviousness. The major difference between anticipation and obviousness is that anticipation requires an exact prior description in a single source⁴², while obviousness can be based on everything from a single disclosure to a "mosaic" of the prior art⁴³. Both are questions of fact⁴⁴. Just because the art points to an invention does not make it obvious, but if the art points or "teaches" away from the invention, obviousness is unlikely.

[60]      Obviousness and anticipation are related insofar as they both require an assessment of the prior art relative to Patent '863. As found, Patent '863 is a combination patent and, therefore, it is the combination as a whole, and not the individual components that must be considered for the purposes of determining obviousness. In other words, the ultimate question to be decided is whether the combination, as a whole, is obvious or not. As found, the Friggstad HPL is the only device that is relevant in this respect.

[61]      The test for obviousness is stated in Beecham Can. Ltd. v. Proctor & Gamble Co.⁴⁵ as follows:

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

[62]      The test was also more recently stated in Valmet⁴⁶ by Hugessen J.A. where at 294 he says:

...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 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.

[63]      The perspective of the unimaginative skilled technician must be taken at the date of the invention as found above.

[64]      An example of objective criteria being considering in determining the existence of a "scintilla of inventiveness" is Diversified Products Corp. v. Tye-Sil Corp.⁴⁷ where at 368 it was considered whether: the device is novel and superior to what was previously available; it has been widely used since its introduction and in preference to alternative devices; competitors and experts in the field had never thought of the combination; amazement accompanied its first publication; and commercial success followed after the introduction of the invention.

     2. Is the invention claimed in the patent obvious?

[65]      Even with the modern farming innovations achieved by 1988, both Mr. Bourgault and Mr. Hundeby knew there was a clearly identifiable need to move to a new level of development. At that time Mr. Bourgault apparently⁴⁸ did not know of the existence of the Friggstad HPL, but Mr. Hundeby certainly did. Nevertheless, both simultaneously but independently began work to find a better design for a one pass coil packer. On the basis of the state of the art when their efforts began, the evidence called by Flexi-Coil seeks to establish that the results that were achieved by both were obvious to anyone skilled in the art. The fact that their efforts coincided and achieved the same outcome is said to be some proof of this assertion.

[66]      Bourgault"s position is that the spark of invention is really the introduction of the two axis pivot. As prior art, the Friggstad HPL uses a three axis pivot, and as I have found the difference between using two and three axes is significant, the question is whether the move to the two axis pivot by Mr. Bourgault and Mr. Hundeby came directly and without difficulty. On the evidence, my answer is no.

[67]      There was a great deal effort expended by both Mr. Bourgault and Mr. Hundeby to conclude on the use of the two axis pivot on the coil packers of both the middle frame section and the wing sections. Mr. Bourgault built four prototypes and Mr. Hundeby built two before each settled on the two axis pivot for all coils. However, I find there is no question that Mr. Bourgault is responsible for the "discovery" that the two axis pivot worked well enough to so incorporate it.

[68]      The following passage from Mr. Bourgault"s statement establishes that before the development of the Bourgault WTP the conventional wisdom in the coil packer manufacturing community was that a three axis pivot must be used:

In August of 1988, the common and general knowledge was that it was necessary to have coil packers attached to a drawbar using an attachment which included provision for pivoting about a vertical axis. It was not known that one could successfully attach coil packers to the packer bar using a two pivot axis system without a vertical axis. Packer coils are very heavy elements. Supporting them in transport or skidding them laterally requires significant resistance to the forces generated. As discussed, at the outset of our design effort, it was not obvious that a two axis pivot system would accommodate the coil packers. Even when Bourgault went into production, both I and Richard Coquet were not totally confident that the performance of the machine would be acceptable because of soil gouging which occurs in a sharp turn.⁴⁹

It is from this conventional wisdom that Mr. Bourgault departed in the development of the Bourgault WTP.

[69]      While it is true that Mr. Hundeby"s first prototype used a combination of two and three axis pivots, it was Mr. Bourgault that first proved that the two axis pivot achieved the desired advancement over the existing technology. Mr. Hundeby was still struggling to perfect his improvements when the Bourgault embodiment of the patent first hit the market. At that time, Mr. Hundeby was trying a two and three axis combination. His use of the following words in a report indicate he received help from the Bourgault success in deciding to exclusively use the two axis pivot in the Flexi-Coil 75:

When the first prototype was nearing completion, the Bourgault wing-type packer was introduced. This unit served a very useful purpose in that it verified that a unit of a very similar design to the Flexi-Coil 75 unit had been in the field and apparently worked satisfactorily. The concept mostly in question was the two rows of packers, neither of which was allowed to pivot when turning. It also emphasized which options may be beneficial to further pursue.⁵⁰

[70]      Given these facts, I cannot put weight on the following words Mr. Hundeby used in his statement in speaking about his design criteria:

In order to meet the above-noted design criteria, given my knowledge as to what was already out there in the marketplace, I immediately and without much difficulty conceived of the idea of using a modified wing up cultivator frame to which I would attach an array of mounted packers having two axis of rotation essentially the same as the Friggstad HPL and the Friggstad Mounted Packer....⁵¹

[71]      Mr. Friggstad has expressed the opinion that the use of the two axis pivot was obvious. With respect to the development of the Friggstad HPL he said this:

If the limitation of movement to only two axes of rotation is a real difference then, in my opinion, given the prior existence of mounted packers and wing up cultivators such as those disclosed in Exhibit 28,3 any skilled person in the art familiar with the Friggstad HPL wing up packer would be lead by ordinary, plain and expected application of routine workmanlike ability to the adoption of packers having only two axes of rotation. A person who is ordinarily skilled in the art would have quickly deduced that the Friggstad HPL wing up packer could be made with packers that had either two or three axes of rotation. The person skilled in the art would have been led directly to the invention disclosed and claimed in the Patent without undue experimentation. [Emphasis added]

[72]      Even though Mr. Friggstad was a manufacturer of farm equipment, and as an expert can be taken to know of the problems associated with the use of prior art three axis pivots, he nevertheless chose the three axis pivot in the production of the Friggstad HPL. On the evidence, I find that this was not a design choice but the acceptance of an earlier design.

[73]      In his statement, Mr. Friggstad describes the improvement needed to his early 1980's PDB packer, which like the PAMI described in section "I Background" above, had three axis coils in contant contact with the ground. Mr. Friggstad explained that his objective was to get the coils off the ground in the transport position, and in reaching this objective he was led directly to the design of the Friggstad HPL. Therefore, Mr. Friggstad was focussed on the issue of getting the coils off the ground and, thus it appears, did not turn his mind to a two axis pivot at all. I think it is a reasonable conclusion to draw that, in developing the Friggstad HPL, Mr. Friggstad simply applied the third axis conventional wisdom Mr. Bourgault spoke about. As a result, I put no weight on Mr. Friggstad"s assertion that "the Friggstad HPL wing up packer could be made with packers that had either two or three axes of rotation".

[74]      In addition, I also put no weight on Mr. Friggstad"s opinion that "the person skilled in the art would be lead directly to the invention claimed in the Patent without undue experimentation" because the evidence has proved otherwise.

[75]      Between Mr. Bourgault and Mr. Hundeby a great deal of experimentation occurred before the two axis pivot on all packer coils was accepted. Indeed, the utility of the two axis pivot was not determined until the field trials of Mr. Bourgault"s forth prototype. Thus, Mr. Friggstad"s "without undue experimentation" opinion does not accurately describe what in fact occurred. I, therefore, give it no weight.

[76]      In his statement, Mr. Reed expressed the exact same opinion in the exact same words to that used by Mr. Friggstad in the quotation just above.⁵² This identical repetition leaves me with a concern about how much weight to apply to the opinion expressed. However, from Mr. Reed"s evidence I do take the point that he is trying to convey that little if any inventive skill went into the use of the two axis pivot in the Bourgault WTP. In this respect it important to consider his opinion in context.

[77]      From his perspective as a senior agricultural engineer, Mr. Reed"s evidence is based on the proposition that there is nothing novel in the invention because it uses off-the-shelf technology. Within this point of view, with respect, I find that Mr. Reed"s characterization on the two axis pivot as being essentially nothing more than a knuckle joint reduces the impact of his opinion that its use in a combination coil packing implement would be obvious. By technical definition, the two axis pivot might very well be a knuckle joint, but the surprising discovery that it could produce the hoped for results is the point that I feel his evidence misses and suffers in weight thereby.

[78]      Mr. Hundeby clearly liked the improvement achieved by Mr. Bourgault, and so did the farming community. I accept Bourgault"s assertions that the evidence proves the following: both the Bourgault WTP and the Flexi-Coil 75 were commercially successful implements; sales for the Flexi-Coil 75 were at least 4 times greater than sales for the System 70 in the two years following its introduction; and a number of other manufacturers came out with packer drawbars similar to the Bourgault WTP after its introduction. I find that this evidence is proof that something novel was achieved by Mr. Bourgault in the use of the two axis pivot.

[79]      I find, therefore, that Mr. Bourgault did have the necessary inventiveness, or "spark of invention" as Mr. Fyfe termed it, and accordingly, the obviousness challenge to the patent fails.

F. Lack of candour with the Patent Office

[80]      On this issue, Flexi-Coil"s argument is as follows:

The defendant also alleges that the patent at issue is invalid by reason of lack of candour for failure of the plaintiff or its agent to provide relevant prior art to the Canadian Patent Office during the course of prosecution of the application for the patent at issue. Specifically, the defendant asserts that the plaintiff failed to inform the Patent Office of the Friggstad HPL machine and to provide the following prior art documents to the Canadian Patent Office:

(1)      1984 Saskatchewan Implement Buyers Guide showing Friggstad HPL apparatus as attached to the May 8, 1990 letter from Gerry Bourgault to Smart & Biggar...;

(2)      Friggstad brochure...;

(3)      pages 2, 3 and 11 of the 1983 and pages 2 and 3 of the 1984 Prairies Farmers Buyers Guide...;53

[81]      Flexi-Coil says that Bourgault was not candid with the Patent Office because, in obtaining the patent, Bourgault knew about the Friggstad HPL and did not reveal it. This "lack of candour" attack on the patent is really a combination of two separate arguments: the patent is invalid because Bourgault"s conduct falls within the provisions of s.53 of the Act ; and, regardless of the provisions of s.53, the patent is invalid because Bourgault was under a duty to provide relevant prior art to the Patent Office and failed to meet this duty.

[82]      As to the "wilful misleading" argument, s.53 of the Act reads as follows:

53(1) A patent is void if any material allegation in the petition of the applicant in respect of the patent is untrue, or if the specification and drawings contain more or less than is necessary for obtaining the end for which they purport to be made, and the omission or addition is wilfully made for the purpose of misleading.

(2) Where it appears to a court that the omission or addition referred to in subsection (1) was an involuntary error and it is proved that the patentee is entitled to the remainder of his patent, the court shall render a judgment in accordance with the facts, and shall determine the costs, and the patent shall be held valid for that part of the invention described to which the patentee is so found to be entitled.

Thus, regarding the sufficiency of the specifications and drawings, which are the source of the complaint, to void the patent Bourgault must be proved to have been intentionally misleading in providing either more or less information than necessary.

[83]      There is absolutely no evidence of an intention to mislead by anyone in this case; accordingly, I find that s.53(1) has no application. Further, the defence of involuntary error has not been addressed in evidence by Bourgault in response to the validity attack by Flexi-Coil, therefore, s.53(2) also cannot be applied.

[84]      As to Flexi-Coil"s "duty" argument, Bourgault"s response is that it has complied with the only statutory or regulatory provisions relating to disclosure of prior art applicable at the time of the patent application being Rule 21, Form 24, and Rule 40 of the then applicable Patent Rules .

[85]      Rule 21 states:

The disclosure shall treat the matters set out in Form 24 of Schedule 1 in the manner prescribed therein.

[86]      The relevant portions of Form 24 are as follows:

Specification

The specification shall begin immediately following the abstract or at the top of a new page and shall consist of unnumbered paragraphs in which the following matters shall be dealt with in approximately the following order:

(1) The general character of the class of article or kind of process to which the invention (ie. the inventive idea) relates....

(2) The nature in general terms of the articles or processes previously known or used which are intended to be improved or replaced by resort to the invention and of the difficulties and inconveniences which they involve.

(3) The inventive idea which the new article or process embodies and the way in which resort to it overcomes the difficulties and inconveniences of previous practices or proposals....

(4) A full description of the best way of using or putting into operation the inventive idea....[Emphasis added]

[87]      Rule 40 reads:

40(1) An examiner may require an applicant of any Canadian application to furnish any of the following information relating to any corresponding application that may have been filed, in any country specified by the examiner, on behalf of the applicant or on behalf of any other person claiming under the inventor named in the Canadian application:

(a) prior art cited against the applications;

(b) the application numbers, filing dates and, if granted, the patent numbers; and,

(c) particulars of interference or similar proceedings.

[88]      I accept Bourgault"s argument that the generality of obligation set out in clause (2) of Form 24 does not create a duty to identify anything specifically, let alone include a reference to buyers" guides or manufacturers" brochures. Accordingly, I find that unless a request is made under s.40 of the Patent Rules , there is no requirement to specifically identify prior art to the Patent Office.

[89]      A request was made under Rule 40 as an element in a sequence of events regarding the patent application, and in this respect I agree with Bourgault"s argument that the following facts have been proved: Mr. Bourgault forwarded a letter dated January 23, 1989 to his patent agents requesting that every attempt be made to obtain a patent on the wing type packer and indicating that "the key to making the packer function properly is [sic] two-axis pivot which supports and tows the packer and also allows the individual packers to follow the ground contours"; a patent application for the wing type packer was filed in Canada on September 1, 1989 and in the U.S. on September 26, 1989; an examiner"s report issued in Canada on March 6, 1990 and in the United States on March 9, 1990; the plaintiff"s patent agent forwarded a draft response to the Examiner"s report to Mr. Bourgault; Mr. Bourgault spoke to his patent agent on May 8, 1990 and suggested revisions to the draft response, emphasized the importance of the two axis pivotal attachment on the plaintiff"s packer drawbar, and suggested removing any application of a three pivot attachment from the patent application; Mr. Bourgault forwarded a letter dated May 8, 1990 to his patent agent, enclosing a brochure advertising the Friggstad HPL, in which he stated:

I am enclosing a brochure of the Friggstad wing-type packer bar which was built in approximately 1984. Note the three axis pivot arrangement. (I just found this brochure.) If it is obvious to use a two-pivot as per our connection of the packer to the frame it should have been used here!⁵⁴;

a response was filed in the Canadian Patent Office dated May 23, 1990 enclosing a brochure for the Lely Ringmaster and stating it to be the closest prior art known to the applicant; the response in part said this:

The present invention overcomes the problems associated with the Lely style Ringmaster while maintaining the ability to be pulled behind an air seeder. The present invention with its two directional pivoting packers avoids the stresses and breakage to the frame and rollers caused by uneven rocky ground. Another problem with the present packer bars are the three-dimensional pivoting packer connections. These are expensive to construct. The present invention requires only two-dimensional pivots, as it has been found that there is minimal skid around corners because of the construction of the present invention.⁵⁵;

a response was filed in the United States patent office on June 7, 1990; and Mr. Bourgault had not seen any Friggstad HPL apparatus prior to April of 1997.

[90]      With respect to the Lely Ringmaster being cited as the closest prior art, Mr. Fyfe argued that "when the letter was written, the agent thought it was the most pertinent, and to the extent that the agent knew about the HPL, although he didn"t refer to it, he distinguished from the HPL by making reference to the two axis, three axis difference".⁵⁶ While there is insufficient evidence to prove exactly why the Lely Ringmaster was cited as the closest prior art, as opposed to any other machine including the Friggstad HPL, I agree that the just quoted words in the response do accurately meet the patent examiner"s information request as they clearly refer to an important feature of the Friggstad HPL as prior art.

[91]      Accordingly, I find that Bourgault has met its statutory and regulatory duty.

[92]      However, even this being so, in final argument Mr. Hughes urged me to create a yet higher duty which would require a patentee to cite all prior art known in relation to the proposed patent application. This argument was made on the rationale that persons reading the patent specifications might know about the prior art without it being specifically cited, but others might not, and it is for those in the latter category that the higher standard should be imposed.

[93]      My response to this argument is that I can see no reason to expand the statutory requirements already cited, and I choose not to do so.

G. Sufficiency of specifications

[94]      Section 34 of the Patent Act reads as follows:

34(1) An applicant shall in the specification of his invention

(a) correctly and fully describe the invention and its operation or use as contemplated by the inventor;

(b) set out clearly the various steps in a process or the method of constructing, making, compounding or using a machine, manufacture or composition of matter, in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most closely connected, to make, construct, compound or use it;

(c) in the case of a machine, explain the principle thereof and the best mode in which he has contemplated the application of that principle;

(d) in the case of a process, explain the necessary sequence, if any, of the various steps, so as to distinguish the invention from other inventions; and

(e) particularly indicate and distinctly claim the part, improvement or combination that he claims as his invention.

(2) The specification referred to in subsection (1) shall end with a claim or claims stating distinctly and in specific terms the things or combinations that the applicant regards as new and in which he claims as exclusive property or privilege.

[95]      The law on the sufficiency of the specification has been clearly set out by the Supreme Court of Canada. In Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents)⁵⁷ the following guidance is given:

...Canadian courts have stated in a number of cases the test to be applied in determining whether disclosure is complete. The applicant must disclose everything that is essential for the invention to function properly. To be complete, it must meet two conditions: it must describe the invention and define the way it is produced or built (Thorson P. in Minerals Separation North American Corp. v. Noranda Mines, Ltd., [1947] Ex. C.R. 306, at p.316). The applicant must define the nature of the invention and describe how it is put into operation. A failure to meet the first condition would invalidate the application for ambiguity, while a failure to meet the second invalidates it for insufficiency. The description must be such as to enable a person skilled in the art or the field of the invention to produce it using only the instructions contained in the disclosure (Pigeon J. in [1976] 1 S.C.R. 555">Burton Parsons Chemicals Inc. v. Hewlett-Packard (Canada) Ltd., [1976] 1 S.C.R. 555, at p.563; [1979] 2 S.C.R. 1108">Monsato Co. v. Commissioner of Patents, [1979] 2 S.C.R. 1108, at p.1113) and once the monopoly period is over, to use the invention as successfully as the inventor could at the time of his application (Minerals Separation, supra., at p. 316).

[96]      Further, in Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd.⁵⁸ at 520 the following appears:

In essence, what is called for in the specification (which includes both the "disclosure", i.e, the descriptive portion of the patent application, and the "claims") is a description of the invention and the method of producing or constructing it, coupled with a claim or claims which state those novel features in which the applicant wants an exclusive right. The specifications must define the precise and exact extent of the exclusive property and privilege claimed.

Section 36(1) [now section 34(1)] seeks an answer to the questions: "What is your invention?: How does it work?"

...

We must look at the whole of the disclosure and the claims to ascertain the nature of the invention and the methods of its performance (Noranda Mines Ltd. V. Minerals Separation North American Corp.[footnote omitted]), being neither benevolent nor harsh, but rather seeking a construction which is reasonable and fair to both patentee and public. There is no occasion for being too astute or technical in the matter of objections to either title or specification...

[97]      And also at 526:

...I do not read the concluding words of s.36(1) [s.34] as obligating the inventor in his disclosure or claims to describe in what respect the invention is new or in what way it is useful. He must say what it is he claims to have invented. He is not obliged to extol the effect or advantage of his discovery, if he describes his invention so as to produce it.

[98]      Further, a construction of the specification that gives effect to the patent is preferred to one that destroys the patent⁵⁹. Attacks on a validity of a patent for insufficiency of disclosure under s.34 are viewed by the courts as technical and should not be used to defeat a worthy invention⁶⁰.

[99]      Flexi-Coil argues that the specifications in the patent are deficient primarily because of the anomalous inclusion of the reference to the three axis pivot described above in the anticipation analysis. Bourgault argues that the fact that the reference to the three axis pivot was not deleted from the patent is not a basis for invalidating the patent as it is not a material allegation. Authority for this response comes from Thurlow J. in Jules R. Gilbert Ltd. v. Sandoz Ltd.⁶¹ as follows:

I am also of the opinion that allegations in the petition respecting anything other than the subject-matter of the claims in the patent as granted are not material.

[100]      Given this authority, and my decision already made in the analysis on anticipation above that I do not put weight on the three axis specification, I accept Bourgault"s argument and, accordingly, find that the specifications in the patent are sufficient.

H. Delay

[101]      The following is the agreed issue in this respect:

Is the plaintiff disentitled to any or all relief claimed by it by reason of delay or acquiescence and, if so, what relief is denied?⁶²

[102]      Flexi-Coil argues that the Court retains discretion as a court of law and equity to grant or deny equitable relief for reason of delay. Before this legal argument requires investigation, however, the fact that Bourgault is guilty of delay must be proved. To support its contention that such is the case, Flexi-Coil in written argument cites the following facts:

1. The defendant Flexi-Coil first offered the packer at issue for sale in Canada in about February, 1989.

2. The plaintiff Bourgault did not file its application for a patent until September 1, 1989.

3. During the course of the patent application, the plaintiff filed an affidavit of Gerry Bourgault alleging that a patent infringer (Flexi-Coil) was on the market and that the patent application should be expedited.

4. The patent was issued on December 18, 1990.

5. On February 18, 1991, the plaintiff"s solicitors wrote to the defendant asserting the patent at issue, and alleging sales since May, 1989.

6. The defendant did not reply to this letter.

7. At that time, there was other litigation between the parties.

8. The defendant continued to manufacture and sell the packers at issue, and the plaintiff was aware of this.

9. This action was commenced on November 14, 1995.

10. The plaintiff"s witness Bourgault confirmed that he was at all times aware of all of these facts and offered no excuse or reason for the delay.

11. The plaintiff has not sued anybody else that may possibly infringe.

12. The plaintiff has instituted or been party to several lawsuits against the defendant, some of which it is pursuing actively, at least one other it has dropped. The plaintiff appears to know quite well how to launch and pursue a lawsuit if it wishes.⁶³

[103]      As to the kind of conduct that constitutes delay, in argument Mr. Fyfe referred to the following passage from the 1887 British patent case Proctor v. Bennis⁶⁴:

But in order to make out such acquiescence it is necessary that Mr. Rigby, or his clients, should establish that the Plaintiff stood by and knowingly allowed these Defendants to proceed and to expend money in ignorance of the fact that he had rights, and meant to assert such rights. If he made out that, the Court of Equity would not afterwards allow the Plaintiff to interfere with the Defendants except upon the terms of placing them in the same position and compensating them for the loss which they sustained owing to a mistake which he favoured.

...

It seems to me that the true inference of fact to draw here is that these Defendants, other than Bennis, were acting at their own peril throughout, and knew that they were acting at their own peril throughout. Although they reckoned on security and although for a long time the Plaintiff in all probability did not suppose that he himself was going actually to interfere, there was nothing that passed between the parties on the part of the Plaintiff which lulled them into any more security than they took upon themselves the risk and responsibility of supposing to exist. [Emphasis added]

[104]      I find this authority, in particular the parts I have emphasized, presents a very common sense approach about the kind of unfair advantage that should be proved before a delay argument is seriously considered. To decide if the facts of this case meet this standard, the details relied upon by Flexi-Coil in its argument must be considered in context.

[105]      Both Bourgault and Flexi-Coil are very large farm equipment manufacturers, lead by highly sophisticated and knowledgeable people. Since Flexi-Coil is maintaining that it was wronged by delay, it is important to carefully consider the possibility that unfair advantage was taken of any of its key operatives.

[106]      Mr. Hundeby is not only an engineer with long experience in the design and development of farm machinery, he is an experienced named inventor in some five Canadian patents.⁶⁵ Mr. Friggstad was not only the owner and operator of a farm equipment manufacturing business before taking his position with Flexi-Coil, but is also the named inventor of three Australian, eight Canadian, and seven United States patents.⁶⁶ From this evidence, I believe I am entitled to conclude that at all material times, these managers of Flexi-Coil understood the liability that Canadian patent law imposes for infingement.

[107]      A critical fact upon which I put weight is that it was only during the design phase of the Flexi-Coil 75 that Mr. Hundeby learned of the marketing of the Bourgault WTP. At that time Flexi-Coil had the option to stop, pause or proceed with the development and manufacture of the Flexi-Coil 75. In deciding to quickly produce and market a machine very much like the Bourgault WTP, given Flexi-Coil"s sophisiticated patent expertise at the decision making level, the common sense conclusion I draw is that Flexi-Coil knowingly decided to take the potential infringement risk. As a result, I find that the length of time Bourgault took to enforce its rights is irrelevant.

[108]      Accordingly, I choose not to exercise any discretion I might have to further consider and decide on the delay argument; thus my answer to the question posed on this issue is no.

IV. Infringement

A. The test for patent infringement

[109]      The question of the test was fully canvassed in my decision in Heffco Inc. v. Dreco Energy Services Ltd. et al.⁶⁷. The conclusion I reached after an analysis of the authorities, to which no objection was raised in this case, is that the decision of Pratte J.A. in Eli Lilly & Co. v. O'Hara Manufacturing Ltd.⁶⁸ is a binding authority, and therefore, the correct test is the question framed by Lord Diplockin Catnic Components Ltd. v. Hill & Smith Ltd.⁶⁹being:

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.

[110]      In a memorandum of law, Mr. Hughes, with the concurrence of Mr. Fyfe, presented a precis of basis principles of patent interpretation, the following part of which I find useful in this analysis:

Construction of a claim must be done before and independent of assessing whether a defence of invalidity is sustainable. The task of construing a claim lies within the exclusive domain of the trial judge. The role of the expert witness, those skilled in the art, is to provide the judge with the technical knowledge necessary to construe a patent as though he/she were so skilled. Where experts disagree, the Trial Judge is to make a binding determination.

Dableh v. Ontario Hydro (1996), 68 CPR (3d) 129 per Robertson, J.A. at 143-145 (F.C.A.)⁷⁰

A patent specification is addressed to those skilled in the particular art. The Court must look at the whole of the disclosure and claims to ascertain the nature of the invention, being neither benevolent or harsh, but seeking a construction which is reasonable and fair to both the patentee and the public.

Consolboard v. Macmillan Blodel (Sask) Ltd. [1981] 1 S.C.R. 504 per Dickson, J. at 520-521.

If the claims are expressed in plain and unambiguous language, the courts are not to restrict or expand or qualify the scope by reference to the body of the specification; this does not mean that the Court is not to look at the specification, but means that resort is limited to assisting in comprehension. Terms must be read in context, as what is "plain and unambiguous" may not be a safe conclusion.

Nekoosa Packing Corp. v. AMCA International Inc. (1994), 56 CPR (3d) 470 per Robertson, J.A. at 481-482 (F.C.A.)

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 the invention, the Court cannot decide otherwise for the sole reason that he was mistaken. The Court cannot conclude that strict compliance with a word or phrase used in a claim is not essential unless it is obvious that the inventor knew that failure to comply would have no material effect upon the way that the invention worked.

Eli Lilly & Co. v. O"Hara (1989), 26 CPR (3d) per Pratte J.A. at 7(F.C.A.)

[111]      As Stone J.A. has reiterated in TRW Inc. v. Walbar of Canada Inc.⁷¹, "the language in which a patentee has cast his claim has been referred to by the courts as a "fence" within which he claims protection from trespass and outside of which others are free to roam". An infringement, therefore, is a trespass which takes each element of a particular patent claim.

B. Allegations of Infringement in this case

[112]      The plaintiff is alleging that each of claims 1, 3, 4, 5 and 6 of the patent is infringed by each of the versions of the Flexi-Coil 75, in all widths from 35-62 foot made and sold by the defendant. The plaintiff is not alleging infringement by the 33 foot and smaller sizes of the Flexi-Coil 75. The plaintiff is alleging that claim 7 is infringed by each of the versions of the Flexi-Coil 75 in its 44 and 46-62 foot widths made and sold by the defendant. The defendant denies these allegations.⁷²

C. The agreed general infringement issues

[113]      Counsel for the parties have agreed on the scope of the issues which require decision. The agreed issues in respect of infringement are:

a. What is the true meaning and effect of the claims of the patent at issue?;

b. Has the plaintiff proved that any of the defendant's 35 foot to 62 foot Flexi-Coil 75 versions infringe any of claims 1 or 3 to 7 inclusive of the patent at issue, and if so what version or versions and what claim or claims? In so determining, the Court shall consider the bases for denying infringement as set out herein?73

[114]      It is common ground that for an infringement to be found, each and every element of claim 1 must be proved to have been taken by the defendant. The defendant"s response to the infringement allegation is that five specific elements of claim 1 have not been infringed since the Flexi-Coil 75 exhibits variants of each of these claims which place the machine outside of the scope of the monopoly claimed. Respecting the other elements of claim 1, there is no contest that no variant exists which will produce this result.

[115]      In conducting the analysis of each of the contested elements of claim 1 compared to the attributes of the Flexi-Coil 75, I propose to apply the test and pattern of approach I adopted in Heffco as outlined above. Thus, for each of the contested claims, 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 descriptive words of a particular claimwas intended by the patentee to be an essential requirement of the invention so that a variant found in the Flexi-Coil 75 would fall outside the monopoly claimed?

[116]      Thus, on the face of the test, before the analysis of the patentee"s intention is required to be undertaken, it is first necessary to determine whether there exists, in the alleged infringing equipment, a variant of a particular contested claim. That is, the patentee"s expressed intention to claim a monopoly is not placed in issue if the defendant"s equipment exactly demonstrates, without variation, the descriptive words of a claim. In such a case, the finding that such a demonstration has occurred constitutes an infringement. As stated, only five elements of claim 1 are said by the defendant not to constitute an exact demonstration.

D. Analysis of the features of claim 1 (g), (i), (k), (h) and (j), and (c)

[117]      For the reasons which follow, respecting each of these clauses of claim 1, I find no variant exists in the Flexi-Coil 75 about which a decision regarding the patentee"s intention is required to be made. That is, I find that the Flexi-Coil 75 exactly demonstrates, without variation, the descriptive words of each of the contested clauses of claim 1.

     1. Claim 1 (g)

[118]      The defendant denies that any of the versions of its Flexi-Coil 75 have the features required by subsection (g) of said claim, namely:

"g) said ground-engaging rollers being staggered in overlapping relationship where said middle frame section and said wing sections comprise forward members and rearward members on both of which rollers are mounted thereby completely packing the land within a bout."74

[119]      Flexi-Coil argues that firstly, the rollers on the Flexi-Coil 75 do not overlap to the extent required, and secondly, that use of the Flexi-Coil 75 does not result in completely packing the land as required.

[120]      The subject of the overlapping issue is "ground engaging rollers". Therefore, understanding the precise definition of "rollers" in essential. The patent specifications say that the rollers are preferably of the spiral coil type well known to the art, and regarding this embodiment says as follows:

As shown in Figure 3, the rollers comprise a spiral coil 68, and an axle 70 affixed to either end of coil 68 by end plates 72, 74. The ends of axle 70 are rotatably engaged in bearings 76,78. These bearings are affixed to either end of roller support member 80.⁷⁵

[121]      Accordingly, I find that the term "rollers" in claim 1(g) comprise at least the packing device and its axle. Accordingly, the measurement of the width of a "roller" is properly done by measuring the distance between the ends of the axle.

[122]      Are the rollers of the Flexi-Coil 75 "staggered in overlapping relationship...thereby completely packing the land within a bout"? To answer this question, it is first necessary to determine whether the rollers are in an "overlapping relationship", and if so, to then consider whether they accomplish the objective stated in the patent.

[123]      As to the existence of an overlapping relationship, the technical drawings of the Flexi-Coil 75 speak for themselves.⁷⁶ To the eye of a casual observer, the staggered rollers as depicted in each of the drawings, defined above as including the packing device and the axle, clearly overlap.

[124]      Even approaching the question of overlapping by measuring the length of the coils of the Flexi-Coil 75 only, the result is the same. Respecting the coils themselves measured without the axle, during the course of the trial, Mr. Fyfe supplied Exhibit 51 which is the drawing of the 35 foot machine depicting a line defining an overlapping relationship between adjacent coils. In his evidence on cross examination, Mr. Hundeby agreed that the outer extremity of one coil overlaps the outer extremity of the next coil.

[125]      In addition, regarding measurement on this basis, to the eye of a person skilled in the art such as that of Mr. Dyck, there is an overlap of approximately an inch when the coils are in phase and a 10 or 12 inch gap between the coils when out of phase. Clearly, the gap when out of phase does not change the existence of the fact of the overlap when in phase.

[126]      Respecting the size of the overlap of the coils, Mr. Hughes argued that it is so slight that it is diminimus. I give no weight to this argument because the following specification⁷⁷ describes the result found on measurement:

The rollers are so spaced and of sufficient length as to overlap slightly, to ensure complete ground coverage by the rollers as the packer is towed. [Emphasis added]

[127]      Accordingly, I find that the rollers of the Flexi-Coil 75 are in "overlapping relationship".

[128]      Does the overlapping relationship accomplish the objective stated in the patent? The objective to be accomplished as stated in claim 1(g) is "completely packing the land". In essence, Flexi-Coil"s argument is that "completely packing the land" in the claim has the technical meaning of packing without any gaps, whereas Bourgault argues that the phrase has the practical meaning of fully "treating" the land, whether gaps are left or not.

[129]      This interpretation dispute is again resolved by looking to the specifications for assistance. With the assistance of the excerpt just quoted above, I find for the practical meaning. The specification states that the objective of the overlap is "to ensure complete ground coverage". That is, it is the sort of ground coverage that is in issue, not the technical quality of the actual packing of the ground that takes place.

[130]      This issue calls for some additional analysis of the real world context in which this dispute is taking place. Flexi-Coil"s defence to the infringement allegation is that the Flexi-Coil 75, which uses coils as rollers, cannot possibly infringe the "completely packing" element of claim 1(g), on the technical interpretation of this phrase, because it is technically impossible to achieve this qualitative result using coil packers since some gaps are always left. As persons skilled in the art, Mr. Hundeby and Mr. Dyck agree that this is the case. But Mr. Hundeby"s evidence also establishes that a farmer"s satisfaction that complete packing has taken place comes from the "herring bone" pattern left on the field when packed, and by implication, not by a technical analysis of whether some gaps are in fact left.

[131]      The marketing of the Flexi-Coil 75 includes the following representation in a brochure under the heading "Full Width Packing":

Coil packers compress the entire width of the seeded area. The "v" profile spreads the packing force beyond the contact area to the soil between the coils in such a way that even at a short distance below the surface the full width is still evenly packed. The results can be seen all across the Great Plains as millions of acres emerge evenly year after year.⁷⁸

[132]      When confronted with this statement in the course of his presentation of the defence that the Flexi-Coil 75 does not accomplish complete packing, Mr. Hundeby had this to say:

So there is an element of presenting the machine to the public. When it comes down to the exact detail of what"s going on, there certainly is not complete packing over the entire width of the seeded area.⁷⁹

[133]      Therefore, the statement in the brochure might be considered a material misrepresentation unless farmers and experts in farming practice know that technical complete packing is not the objective of the use of such words. Since the patent was drawn in this context, I find it is hardly credible for Flexi-Coil to object to the practical meaning of "completely packing the land" used in claim 1(g) of the patent when it refers to the same meaning when it uses similar terminology in the marketing of its equipment.

[134]      Accordingly, I find that the Flexi-Coil 75 accomplishes "completely packing the land within a bout".

     2. Claim 1 (i)

[135]      The defendant denies that any of the versions of the Flexi-Coil 75 have the features required by subsection (i) of claim 1, namely:

"i) means for pivotally lifting said middle frame section from a working position in which said roller attached to said middle frame section is in contact with the ground to a transport position in which said roller is out of contact with the ground."

[136]      Flexi-Coil argues that the Flexi-Coil 75 does not have the "pivotally lifting" feature. The analysis of this argument should begin by determining the meaning of the phrase. Used in the phrase, the New Shorter Oxford English Dictionary, 1993 defines "pivotally" as an adverb which means "in a pivotal manner", and describes a "pivot" as follows: A short shaft or pin on which something turns or oscillates, as the pin of a hinge, the end of an axle, etc.; a fulcrum. Also, a part of anything on which another part turns.⁸⁰

[137]      Thus, I find that the words "pivotally lifting" includes lifting which results in turning about a fulcrum. In fact, the evidence of Mr. Dyck proves to my satisfaction that this action takes place when the middle frame section is changed from the working position to the transport position.

[138]      Mr Dyck"s statement reads as follows:

The center section of both BWTP and the FC75 use essentially identical means of lifting the frame relative to the ground surface. The wheels are attached to the ram by a member arm having the wheel spindle on one end and on the other end having a pin

going through it and two brackets affixed to the frame. The arm rotates about this pin when acted upon by the hydraulic ram. The frame is thus raised up or down by this "pivotal" action. The center frame is attached to the drawing vehicle by a hitch and pin system. This hitching point is the pivot about which the center frame rotates as the wheels lift it upward. This is "pivotally" lifting the frame about this point. Both the BWTP and the FC75 use the same means of doing this, whether describing it as pivotally lifting, does not matter, the essence is the same.⁸¹

[139]      Respecting the fact that the pivot about the hitch might be two degrees, Mr. Dyck responded in cross examination that:

In the context of pivotal motion of the hitch, this is what we"re talking about, pivotal motion. Pivotal motion of two degrees is still pivotal motion.

[140]      Because the degree of motion about the hitch is approximately two degrees, Mr. Hundeby under cross-examination by Mr. Fyfe described the lifting movement as vertical rather than pivotal. This opinion loses weight, however, because of the acknowledgement of pivotal movement provided in the following passage:

A.      So that's the area that I am having trouble with, is the two degrees to three and a half degrees. I wouldn't describe that as pivotal lifting. I would describe it as lifting. It's basically a vertical lift.

Q.      Okay. But there is rotation about a pivot?

A.      There is that two degrees to three and a half degrees.

Q.      Okay. And if that's pivotal lifting, then it meets claim -- the System 75 meets claim 1(i)?

A.      To that extent, that's correct.

[141]      Accordingly, I find that the Flexi-Coil 75 does exhibit the "pivotally lifting" feature.

     3. Claim 1(k)

[142]      The defendant denies that any of the versions of the Flexi-Coil 75 have the features required by subsection (k) of claim 1, namely:

"k) said wing frames being substantially vertically oriented when in the transport position such that it is not necessary to move the packer implement rearwardly in order to move the implement from the transport to the operating position or vice versa."

[143]      Bourgault"s main argument in respect of this claim is that verticality has nothing to do with the patented invention, save to the extent that it means winging up which provides the ease of converting to transport without moving forward or reverse to achieve it. Therefore, the words "substantially vertical" should be understood to include wings that are raised beyond vertical, and since the Flexi-Coil 75 achieves this result, that there is infringement. Thus, regarding the application of the test for infringement, again the argument is that no variant exists about which the intention of the patentee is placed in issue.

[144]      Flexi-Coil"s response is that since the wings on the Flexi-Coil 75 are carried at an angle ranging some 20 to 25 degrees over centre for the clear purpose of stability in transport, are a substantial variant to the claim and, thus, the intention of the patentee is very much an issue. Bourgault"s response is that, if there is indeed a variant, the patentee intended that it be included within the scope of the monopoly.

[145]      The question of whether a variant exists is a question of construction of the patent. The following passage from the "Background to the Invention" section of the patent disclosure clearly sets out a problem that claim 1(k) is designed to meet:

Packers are often used in conjunction with air seeders. The two implements are pulled in tandem with the packers following the air seeder thereby compacting the seedbed after the seed is sown thereby maintaining moisture and preventing wind erosion of the soil. Present day known packing implements have wing booms which fold either rearwardly or forwardly in order to facilitate transport. In order to place these packing elements in the transport or operating position, it is necessary to push the implement rearwardly depending upon whether it is a front-fold or a rear-fold. This unfortunately is impossible with an air seeder located between the power source and the packer as an air seeder cannot be pushed rearwardly in a straight line. The present invention, however, does not need to be pushed rearwardly when changing from a transport to an operating position and vice versa.

[146]      In fact, Claim 1(k) itself contains an explanation of its purpose. The position of the wing frames in transport position are such that "it is not necessary to move the packer implement rearwardly in order to move the implement from the transport to the operating position or vice versa".

[147]      Mr. Dyck"s evidence is to the same effect:

The wings are attached to the center frame by two pins going through holes in brackets fixed to each. This forms a pivot about which the wing can be rotated and folded up to a substantially vertical position. Again, the BWTP and FC75 use essentially the same method. As pointed out above, the essence of folding up the wings to a substantially vertical position lies in the compactness and ease of conversion to transport that this method affords. The 90E position is not important, it can be 90E " 15E or " 30E, it is still folded up to approximately vertical. The FC75 single wing models fold up through the 90E position ending up, in my opinion, in a substantially vertical position. For FC75 four wing models, the adjacent wing sections again go through the 90E position and end in a substantially vertical position somewhat closer to 90E than the two wing version. One can debate what substantially vertical means. I do not think it is important. The essence of the transport wing fold up procedure resides in the compactness and ease of doing it. Therefore, the FC75 includes the essence of the invention in that regard.

[148]      Regarding the argument that the wings go well beyond vertical to provide a lock, this is irrelevant to the expressed purpose for why the wings are raised in the first place which is identical to that set out in the claim. Flexi-Coil"s published material about the wing-up feature of the Flexi-Coil 75 makes this purpose clear as follows:

When its time to transport, the 75 wings-up to a compact, over-centre position that moves quickly and safely.⁸² [Emphasis added]

[149]      Accordingly, I find no variant exists between the Flexi-Coil 75 and the features of claim 1(k).

     4. Claims 1(h) and (j)

[150]      The defendant denies that the versions of the Flexi-Coil 75 that are fitted with packer pressure spring assemblies and each of the 44, 46, 48, 50, 52 and 54 foot versions have the features required by subsections (h) and (j) of claim 1, namely:

"h) a ground-engaging wheel rotatably affixed to each of said wing frame sections

j) means for pivotally lifting said wing frame sections from a working position in which said rollers and wheels attached thereto are in contact with the ground to a transport position in which said rollers and wheels are set out of contact with the ground."

[151]      Flexi-Coil has argued that the Flexi-Coil 75 do not infringe either of these claims because it does not have "ground-engaging" wheels on each wing of its large machines, or at all. In this respect there are two sub-issues. Firstly, respecting the "or at all" argument, what is the effect of the addition of pressure spring assemblies to the Flexi-Coil 75?; and secondly, what is the effect of the 44 to 54 foot four-wing versions of the Flexi-Coil 75 implements not having wheels on the "outer" wing?

[152]      As to the first sub-issue, pressure spring assembly is an optional, adjustable, installed by the purchaser feature which is offered by Flexi-Coil to assist in eliminating tracks left by the tires of the packer. The purpose of this option is advertised by Flexi-Coil as follows:

The 75 offers an optional Spring Pressure Kit which transfers the frame weight from the wheels to the packers, increasing packing pressure while reducing wheel tracks. The optional Spring Pressure Kit and Track Eradicators help reduce wheel tracks.⁸³

     Clearly, as an option, the pressure spring assembly has no effect on the machines that do not have it, and accordingly, for those machines, the defence does not even arise. Therefore, the question is what difference does the pressure spring assembly make to those machines that have it? I find none. This is a common sense point of view which is concisely stated in the emphasized portion of Mr. Dyck"s statement as follows:

My opinion regarding infringement of the BWTP patent by the Flexi-Coil 75 is the same whether or not the latter includes springs adapted to transfer the weight of the frame from the wheels on the implement to the coil packers. I am told that the implement is not changed save for the addition of the springs when Flexi-Coil's optional packer pressure springs are attached to the implements. I also understand that the springs are easily adjustable simply requiring the turning of a couple of nuts. Depending on how the springs are adjusted, the support wheels on the implement may be lifted off the ground when in field position. However, the implements include the same support wheels whether or not the springs are attached. Clearly the wheels on the middle frame section are still utilized to support the frame when changing into or out of transport position and when the machine is in transport position, and I expect that the wheels on the wings will invariably intermittently engage the ground. With respect to the latter point, I expect that the wheels would contact the ground during operation of the implement, particularly when obstructions or rough fields are encountered. Further, with the larger FC75 apparatus which have two wing frame sections on each side of the middle frame section (42-62 foot), I expect that the wheels on the inner wings would contact the ground when the outer wings are folded on top of the inner wings during the changing from transport to field position or vice versa. ⁸⁴ [Emphasis added]

[153]      Regarding Mr. Dyck"s expressed expectations, video tape evidence⁸⁵ of the Flexi-Coil 75 in field position operation with the springs adjusted to transfer the weight of the frame to the coil packers proves intermittent contact between the wheels and ground. In this situation, Mr. Hundeby in cross examination agreed that the wheels provide at least some support for the implement. He also agreed that the wheels of the inner wings do contact the ground when the outer wings are folded in an out of field position.

[154]      What is the effect on the issue of infringement of the 44 to 54 foot of the four-wing versions of the Flexi-Coil 75 implements not having wheels on the "outer" wing? As a matter of construction of the patent, my answer is none. In the claims themselves, the first time that "wing frame sections" are mentioned is in 1(d) which reads as follows:

d) two wing frame sections pivotally attached to said middle frame section and extending laterally therefrom and capable of pivoting downwards when in the working position to remain a predetermined height over uneven ground; [Emphasis added]

[155]      Since there are no other "wing frame sections" described between the words of claim 1(d) and claim 1(j), it is very clear that it is the "two wing frame sections pivotally attached to said middle frame section" that are being referred to in claims 1(h) and 1(j) as the "said wing frame sections".⁸⁶ Since each of the inner wings of the five section Flexi-Coil 75 machines have a wheel attached thereto, for the purposes of determining infringement of claims 1(d) and (h), I find it is irrelevant that the outer wings of these machines do not.

[156]      Accordingly, I dismiss Flexi-Coil"s argument on this element of claim 1.

     5. Claim 1(c)

[157]      The final infringement issue with respect to claim 1 is not included in the Agreed Statement since it arose during the course of Mr. Hughes" cross-examination of Mr. Bourgault. Claim 1(c) reads as follows:

c) a plurality of ground-engaging wheels rotatably affixed to said middle frame section;

[158]      In examination for discovery, Mr. Summach had no difficulty in agreeing that the Flexi-Coil 75 exhibits this feature.⁸⁷ However, Mr. Hughes has asked me to place weight on the cross-examination evidence of Mr. Bourgault that the wheels of the Flexi-Coil 75 are pivotally attached through a wheel standard to the middle frame section. On the basis of this evidence, Mr. Hughes asked to include an additional basis for establishing non-infringement because the words of claim 1(c) do not include mention of a wheel standard.

[159]      I find that no weight should be given to this argument since the patent is clear on what is meant by use of the word "affixed". Again, the following patent specifications act as a useful aid in reaching this conclusion as follows:

The middle frame section 10 is supported on the ground by two ground-engaging wheels 24, 26, which can rotate on fixed axles 28, 30 respectively, parallel to the ground and perpendicular to the forward direction of travel of the packer. The axles 28, 30 are affixed to the lower end of wheel support members 32, 34 respectively, which are pivotally attached at their upper ends to the forward member 12.⁸⁸ [Emphasis added]

[160]      Given this description in the specification read in conjunction with Figure 4 of the patent, it is clear that "affixed" means by "wheel support members". There is no doubt that "forward member" in the passage just quoted is referring to the middle frame section. Taken in the context in which it is used, the word "affixed" does not imply that the wheel support members form part of the middle frame section. In context, the word is used to denote only a connection between parts rather that a union of parts into a whole.

[161]      Accordingly, I find that Mr. Hughes" arguments respecting claim 1(c) do not provide a basis for denying infringement.

E. Analysis of the dependant claims

[162]      As to claims 4 and 5, in addition to what has been set out as to claim 1 above, the defendant alleges that none of the versions of its Flexi-Coil 75 lock or lift the sections in the manner called for in said claims 4 and 5.

[163]      As to claim 6, each of the defendant's 44, 46, 48, 50, 52 and 54 foot versions of its Flexi-Coil have only one roller on the outer wing and, therefore, the defendant alleges that those versions do not meet the parameters of claim 6.

     1. Claim 4

[164]      Claim 4 reads as follows:

4. A packer according to claim 1, wherein said wing frame sections are lockable in said transport position.

[165]      There is no dispute about the fact that the Flexi-Coil 75's method of ensuring that the wings in the wing up transport position are safely maintained in that position until lowered by the operator to the field position is by the effect of the hydraulic system used to lift and lower the wings. That is, hydraulic pressure holds the wings in position, and failing a hydraulic failure, they stay there. The fact that the wings are transported in an over vertical position also acts to ensure that there will be no wing down action even in the event of a hydraulic failure. The question is whether these attributes of the machine make the wings "lockable" in the transport position.

[166]      Given the attributes of the machine as described, from a common sense perspective, the wings of the Flexi-Coil 75 are certainly lockable. Flexi-Coil"s argument to counter this conclusion is that mention of "latch means" in the patent specifications mean that "lockable" should be interpreted to be restricted to this certain method of locking, and since the Flexi-Coil 75 does not exhibit this method, there is no infringement. The specifications where "latch means" is mentioned are as follows:

To convert the unit to the transport position, shown in Figure 2, the hydraulic cylinders are actuated. First, cylinders 40 and 42 are actuated to pivot the middle frame section 10 upward with respect to ground-engaging wheels 24, 26. This lifts the rollers affixed (not shown in Figure 2) to middle frame section 10 upward out of contact with the ground. To a limited extent, the wing sections are also raised as the middle frame section is lifted. Next, hydraulic cylinders 66, 67 (cylinder 67 being the element corresponding to cylinder 66, discussed above, on the opposite wing), pivot the wing sections upward to a vertical position. The wings can now be locked in the vertical position and the middle frame section locked in the upper position by latch means (not illustrated). The packer is then in the transport position, for towing on roads or across fields.

To convert the packer back into the working position, after opening the latch means, the hydraulic cylinders 66, 67 are actuated to lower the wings into contact with the ground. Then hydraulic cylinders 40, 42 are actuated to lower the middle frame section. The sequence described for converting the packer into the transport position and into the working position is preferred in order to keep the rollers on the wing sections from moving laterally while in contact with the ground. The sequence can be achieved by an operator actuating the cylinders in the order described or by means of a sequencing valve in the hydraulic system which controls the sequence of actuation once the operator actuates the system. The lines and valves needed to actuate the hydraulic cylinders on the packer are well known to those skilled in the art, and are not illustrated in the drawings.⁸⁹ [Emphasis added]

[167]      The term "lockable" as it is used in claim 4 describes a broad concept rather than a specific means for carrying out the concept. There is no ambiguity in what is required which is a method for keeping the wings in the wing-up position. The method of accomplishing this is not part of the patent claims. Given the clarity of this usage, the mention of "latch means" in the specifications should not be interpreted to "read in" such a requirement into the claims.

[168]      Accordingly, I find that the wings of the Flexi-Coil 75 are "lockable" within the meaning of claim 4, and, therefore, infringement has been proved.

     2. Claim 5

[169]      Claim 5 reads as follows:

5. A packer according to claim 1 in which said means for pivotally lifting said middle frame section and said means for pivotally lifting said wing frame sections comprise hydraulic means and sequencing means for lifting said middle frame section before lifting said wing frame sections when converting said packer to said transport position and for lowering said wing frame sections before lowering said middle frame section when converting said packer to said operating position. [Emphasis added]

[170]      Flexi-Coil"s argument is that since the Flexi-Coil 75 has only one hydraulic circuit and has no sequencing device per se , that the patent is not infringed because the words of the claim, interpreted with the aid of the specifications, require both a hydraulic system and a sequencing system including a sequencing valve or two hydraulic circuits. To reach this conclusion, the following portions of the specifications are cited:

A hydraulic system is used to lift the middle and wing sections into the transport position. This system can include a pair of hydraulic cylinders to lift the middle frame section and a pair of hydraulic cylinders to lift the wings. Preferably, when converting the packer to the transport position, the middle frame section is lifted before the wing sections, and when converting back to the working position, the wing sections are lowered before the middle section. This is preferably accomplished by sequencing means controlling the hydraulic system, though it is also possible to provide two separate hydraulic systems which are actuated in the proper order by the operator.90...

To convert the unit to the transport position, shown in Figure 2, the hydraulic cylinders are actuated. First, cylinders 40 and 42 are actuated to pivot the middle frame section 10 upward with respect to ground-engaging wheels 24, 26. This lifts the rollers affixed (not shown in Figure 2) to middle frame section 10 upward out of contact with the ground. To a limited extent, the wing sections are also raised as the middle frame section is lifted. Next, hydraulic cylinders 66, 67 (cylinder 67 being the element corresponding to cylinder 66, discussed above, on the opposite wing), pivot the wing sections upward to a vertical position. The wings can now be locked in the vertical position and the middle frame section locked in the upper position by latch means (not illustrated). The packer is then in the transport position, for towing on roads or across fields.

To convert the packer back into the working position, after opening the latch means, the hydraulic cylinders 66, 67 are actuated to lower the wings into contact with the ground. Then hydraulic cylinders 40, 42 are actuated to lower the middle frame section. The sequence described for converting the packer into the transport position and into the working position is preferred in order to keep the rollers on the wing sections from moving laterally while in contact with the ground. The sequence can be achieved by an operator actuating the cylinders in the order described or by means of a sequencing valve in the hydraulic system which controls the sequence of actuation once the operator actuates the system. The lines and valves needed to actuate the hydraulic cylinders on the packer are well known to those skilled in the art, and are not illustrated in the drawings. ⁹¹ [Emphasis added]

[171]      I find that the proper construction of the claim does not substantiate the argument advanced. I find that the specifications aid in the interpretation of what is meant by "sequencing", and that is the process described in the quoted passages. As to the "means" whereby this is to be accomplished, I do not agree with the limiting construction argued by Flexi-Coil. As the italicized words indicate, the specifications merely provide suggestions of "means". I find that the correct construction of the patent requires that the means for pivotally lifting the middle frame and wing sections be hydraulic and that there must also be provided means which will sequence the operation as described in the specifications, such means, however accomplished, being incorporated into the hydraulic system itself.

[172]      From the description of the features of the machine in the operator"s manual⁹² and admissions made by Mr. Summach during his examination for discovery,⁹³ there is ample proof that the Flexi-Coil 75 sequences the operation of raising and lowering the middle frame and wing sections as described in the patent, and is a desired result. The fact that the sequencing process is not smooth because of the operation of the hydraulic pressure in the system causing some of the sections to "dance up and down"⁹⁴ in the process of accomplishing the sequence described in the patent specifications, I find is irrelevant on the infringement issue. The fact is that, smooth or not, the sequence described in the specifications is followed.

[173]      The final argument made in respect of this claim is that, even though the sequence takes place, it just takes place according to the law of hydraulics operating within the single hydraulic system of the Flexi-Coil 75, not a matter of specific design incorporated into the machine itself. While it is true that the Flexi-Coil 75 does not have a special device called a "sequencer" or a second hydraulic system to carry out the sequencing, it is clear that the hydraulics were designed so the sequence would occur.⁹⁵

[174]      Accordingly, I find the Flexi-Coil 75 infringes this claim.

     3. Claim 6

[175]      Claim 6 reads as follows:

6. A packer according to claim 1 in which a roller is affixed to said forward member of said middle frame section and a roller is affixed to said forward member of each of said wing frame sections and two rollers are affixed to said rearward member of said middle frame section and a roller is affixed to said rearward members of each of said wing frame sections.

[176]      From a scrutiny of the drawing of each Flexi-Coil 75 between 35 and 62 feet⁹⁶, I find there is no rearward member on the outer wing sections on each of the 44, 46, 48, 50, 52, and 54 foot machines. Accordingly, this claim is not infringed with respect to those machines. I find that it is, however, with respect to the 35, 37, 39, 41, 43, 45, 47, 56, 58, 60, and 62 foot machines which do have a rearward member on the outer wing sections.

     4. Claim 7

[177]      This final contested claim reads as follows:

7. A packer according to claim 1, wherein there are four wing sections, two on each side of said middle frame section.

[178]      Again, from a scrutiny of the drawing of each Flexi-Coil 75 between 35 and 62 feet, I find that each of the 44, 46, 48, 50, 52, 54, 56, 58, 60, and 62 foot Flexi-Coil 75's infringe this claim.

F. Conclusion

[179]      In response to the questions first posed in this section of the decision, having analysed the true meaning and effect of the claims of the patent at issue as set out above, I find that each of the defendant's 35 foot to 62 foot Flexi-Coil 75 versions infringe claims 1 and 3 to 7 inclusive of the patent at issue as described.

V. Relief

A. Damages

[180]      I find that because of the infringement of the Flexi-Coil 75, Bourgault is entitled to damages the assessment of which, pursuant to the November 8, 1996 order of Rothstein J., will be left to the reference he ordered for this purpose. However, there does remain an outstanding issue to be addressed regarding liability for sales of "one pass systems".

     1. Damages for Flexi-Coil sales of one pass systems

[181]      The issue is as follows:

If any valid claim of the patent is infringed, what is the scope of the relief to which the plaintiff is entitled? In particular, can the plaintiff's claim for damages extend to lost sales of "one-pass seeding systems" (defined by the plaintiff as a system wherein a packer is pulled in tandem with an air seeder comprising a cultivator or similar tillage implement and an air seeder cart)?⁹⁷

[182]      The parties are in agreement on the state of the law respecting liability on this issue which is concisely stated in the following passage from Beloit Canada Ltd. et. al. v. Valmet-Dominion Inc⁹⁸. as follows:

A patentee is entitled to damages assessed upon the sale of non-infringing components when there is a finding of fact that such sale arose from infringing the patented component.

The question is whether Bourgault is entitled to such damages in this case.

[183]      Bourgault produced the Bourgault WTP according to the patent and marketed it as a component of its "one pass seeding system". Flexi-Coil did the same with its Flexi-Coil 75. Because of the competition generated by the infringing Flexi-Coil 75, Mr. Isaac for Bourgault argued that damages for lost sales of Bourgault "one pass seeding systems" is not too remote to warrant consideration in this case. The way the question is framed, therefore, I am not at this stage of the proceeding to determine whether damages have been proved, but only to decide whether Bourgault is entitled to damages assessed upon the sale of Flexi-Coil one pass seeding systems if a finding of fact is made that such sale arose from infringing the patent.

[184]      Bourgault"s evidence in support of its argument that damages are not too remote to warrant consideration comes from Mr. Cook. In his statement he said the following:

Many farmers prefer to purchase a "matched set" of equipment where available. In other words, if a particular manufacturer offers various components of a farming system, many farmers will buy the components of the system manufactured by that manufacturer in preference to mixing and matching components obtained from one or more manufacturers. In my experience, such farmers will do so even if it is somewhat more expensive to buy the matched set. In the case of seeding systems, many farmers insist on buying all elements of the system from a single manufacturer....

In my experience, the primary purpose for which farmers were buying the Bourgault WTP or the Flexi-Coil 75 was for use on one-pass seeding systems. During the period that Farm World distributed both the plaintiff's and the defendant's products, Farm World sold several one-pass seeding systems of the plaintiff and the defendant....

Generally, based on my experience in marketing and selling farm equipment, I have no doubt that the plaintiff lost sales of cultivators and air seeder carts as well as sales of packer bars as a result of the offering for sale by the defendant of the Flexi-Coil 75.⁹⁹

[185]      To reduce the weight to be given to Mr. Cook"s evidence, Mr. Summach testified that, between 1988 to 1995, Mr. Cook was only shipped five Flexi-Coil 75's, and, in fact, that he only sold four because one was transferred to another dealer. In addition, Mr. Summach stated that his records show that only 5.4% of orders received since October 1, 1995 include all three of an air seeder, a cultivator and a Flexi-Coil 75, and, further, that only 16.3% of end users recorded in the Flexi-Coil warranty system are shown by that system to have owned each of a Flexi-Coil air seeder, Flexi-Coil cultivator and a Flexi-Coil 75 at any time. These records do not indicate that any of the three units were purchased, owned or used as a combination but merely that the same end-user was recorded as having such units at one time or another.¹⁰⁰

[186]      In his evidence, Mr. Summach made it clear that the packer was merely an accessory, being only 16 to 18% of the total cost of an entire one pass system. In his opinion, a farmer"s purchasing decision is made on the features of the air cart and cultivator, not the packer. Thus, in his statement he said this:

In short, the question is "can it be said that the sale of the System 75 packer is the incentive for farmers to purchase other equipment such as Flexi-Coil air seeder and the Flexi-Coil cultivators as a unit.[sic] The answer to this question is "NO". The packer is by far the least significant of these units and does not serve to influence the purchase of air seeder/cultivator combinations or other equipment.¹⁰¹

[187]      Even in view of this conflicting evidence, as the owner of one of the largest farm equipment dealerships in North America and with 28 years experience in the marketing of farm equipment, I put weight on Mr. Cook"s opinion that the evidence exists that will support Bourgault"s contention. Therefore, I find that Bourgault"s claim for damages can extend to lost sales of "one-pass seeding

systems", but the damages to be awarded, if any, will be subject to the required proof being tendered at the reference.

[188]      However, given the conflicting evidence, I find that for Bourgault to succeed in obtaining damages for lost sales for "one pass seeding systems", it must prove, on a case by case basis, that it suffered damages because a given purchaser of a Flexi-Coil "one pass system" would have purchased a Bourgault "one pass system", but for the Flexi-Coil 75 being offered for sale.

B. Other relief claimed

[189]      In the Statement of Claim, Bourgault claims the following relief:

(a) a declaration that, as between the parties, claims 1 to 7 of Canadian letters patent 1,277,863 are valid and have been infringed by the Defendant;

(b) an injunction restraining the Defendant from infringing Canadian letters patent 1,277,863, and more particularly restraining the Defendant from constructing, using or selling packers which infringe any claims of Canadian letters patent 1,277,863;

(c) damages or alternatively an accounting of profits from the Defendant as the Plaintiff may elect;

(d) an order directing the Defendant to forthwith deliver up to the Plaintiff all articles in its possession or power, used, made or being made in infringement of the said letters patent, or that such articles be destroyed;

(e) prejudgment or post-judgment interest;

(f) the Plaintiff"s costs of this action; and

(g) such further or other relief as this Honourable Court may seem just.

[190]      For the reasons provided above, by separate order, in addition to damages or alternatively an accounting of the profits, I grant to Bourgault the requested declaration, injunction, delivery up, post-judgment interest, and costs of this action.

     J.F.C.C.

OTTAWA, ONTARIO

__________________

¹      Hereafter the plaintiff and defendant will be referred to as "Bourgault" and "Flexi-Coil" respectively.

²      The patent concerned is Canadian Patent 1,227,863 which will be referred to hereafter as either "the patent" or "Patent '863". The legislation under which the patent was obtained was the pre-October 1989 version of the Patent Act (R.S.C. 1985, c.P-4). Hereafter, all references to "the Patent Act" or to "the Act" are to this version.

³      Ex.1, Tab A, hereafter referred to as the "Agreed Statement".

⁴      The evidence of each witness incorporates a written statement under Rule 482 of the Federal Court Rules together with testimony related thereto. The quotations which follow in section "I. Background" are from the written statements except as otherwise noted. In the quotations references are made to either exhibits on examination for discovery or those annexed to the statement itself. In each case, each exhibit was submitted and re-numbered at trial. Where an exhibit reference appears in a quotation, if it is not the trial exhibit number, it will be followed by the trial exhibit number in square brackets.

⁵      Bourgault generally manufactures equipment which may be referred to as "short line" agricultural equipment. Such equipment includes packers, cultivators, chisel plows, air hoe drills, air seeders, sprayers, harrow drawbars, mounted harrow and harrow packer systems and grain carts but does not include tractors or combines. According to Mr. Bourgault, the company is now the second largest producer of air seeders in the world, the only larger company being the defendant. (Bourgault Statement, Ex. 2, paragraph 6)

⁶      A copy of Patent '863 (Ex.1 (1A)) is attached..

⁷      Agreed Statement, paragraphs 1 to 7.

⁸      Bourgault Statement, Ex.2, paragraphs 9 to 26.

⁹      Dyck Statement, Ex.21, paragraphs 20 to 24.

¹⁰      Bourgault Statement, Ex.21, paragraphs 32 and 33.

¹¹      Bourgault Statement, Ex.2, paragraphs 34 and 35.

¹²      Dyck Statement, Ex.21, paragraph 25.

¹³      Agreed Statement, paragraphs 14 to 17. The System 75 replaced the System 70.

¹⁴      Dyck Statement, Ex.21, paragraph 26.

¹⁵      Agreed Statement, paragraph 8.

¹⁶      Dyck Statement, Ex.21, paragraphs 27 and 28.

¹⁷      Agreed Statement, paragraphs 9, 10 and 12.

¹⁸      At trial, Bourgault agreed that nothing turns on the issuance of the change order.

¹⁹      Agreed Statement, paragraphs 22, 23, and 25.

²⁰      Friggstad Statement, Ex.28, paragraph 33.

²¹      Agreed Statement, paragraph 18.

²²      Ex.1, 8.

²³      Agreed Statement, paragraphs 19 and 20.

²⁴      Nekoosa Packaging Corp. v. AMCA International Ltd. 56 C.P.R. (3d) 470 (F.C.A.).

²⁵      A specific objection was also made to Mr. Bourgault"s use of the term "invention" to describe the results of his developmental efforts on the basis that the proper use of this term first requires a finding that the patent is valid. In accepting the objection, Mr. Bourgault"s statement was amended to place quotation marks around the word wherever it appears in his statement. In addition in relation to this point, I also accepted that Mr. Bourgault was giving his evidence as a directly involved witness with considerable expertise on the subject of farm equipment, but not in the capacity of an "expert" witness.

²⁶      Bourgault Statement, Ex.2, paragraphs 42 to 52.

²⁷      The whole of Mr. Hundeby"s statement was marked Exhibit 44 in the trial. Therefore, the references which he makes to exhibits to his affidavits are now the same lettered exhibits but to Exhibit 44.

²⁸      Hundeby Statement, Ex.44, paragraphs 12, 13, and 15 to 21.

²⁹      Patent Act, RSC 1985, c.P-4, ss. 27(1)(a), (b),(c). With respect to these provisions, the Agreed Statement includes as paragraph 29, the following statement: "The defendant asserts that, having regard to the common general knowledge and the publications referred to in paragraphs 30 and 31, and the machinery referred to in paragraphs 31, 32 and 33, that which is claimed in each of claims 1 and 3 to 7 inclusive of the patent at issue was not novel or, in the alternative, were obvious, whereby said claims are invalid". I do not intend to refer to the details contained in these paragraphs due to the narrowing of issues described immediately below.

³⁰      Agreed Statement, paragraphs 3 to 5.

³¹      Ex.1, A, paragraphs 29-34.

³²      This manner of proceeding was approved in Windsurfing International Inc. et. at. v. Bic Sports Inc. [1985] F.C.J. No. 1147, (1985) 8 C.P.R. (3d) 241 at 256.

³³      Dyck Reply Statement, Ex.68, paragraphs 29 and 33.

³⁴      Excerpt of Cross-Examination of Benjamin Dyck, November 19, 1997, p.51.

³⁵      Beloit Canada Ltd. et al. v. Valmet OY (1986), 8 C.P.R. (3d) 289 (F.C.A.) at 297.

³⁶      Almecon Industries Ltd. v. Nutron Manufacturing Ltd. (1996) 65 C.P.R. (3d) 417 at 428-429, affirmed (1997) 72 C.P.R. (3d) 397 (F.C.A.), leave to appeal denied [1997] S.C.C. No. 374.

³⁷      Flexi-Coil made the argument that some important meaning should be given to the fact that while words which describe the effect of the two axis pivot are included in claim 1(e), they are excluded in claim 1(f). I cannot agree. The words, once used to describe the effect of coils on the middle frame section, become redundant to describe the same effect on the wing frame sections, and therefore, I put no greater meaning on their exclusion than this.

³⁸      The evidence is contained in correspondence found in Ex.1, 30, which is discussed more fully in the analysis on "candour" below.

³⁹      Friggstad Statement, Ex.28, paragraph 38.

⁴⁰      Transcript of Cross-Examination of William Reed, November 17, 1997, p.109-110.

⁴¹      Transcript of Cross-examination of Benjamin Dyck, November 19, 1997, p.31.

⁴²      Creations 2000 Inc. v. Canper Industrial Products Ltd. (1990), 34 C.P.R. (3d) 178, per Hugessen J.A. at 182 (F.C.A.).

⁴³      Beloit Corp. et al. v. Valmet OY, supra, note 35 at 294.

⁴⁴      Rothmans, Benson & Hedges Inc. v. Imperial Tobacco Ltd. (1993), 47 C.P.R. (3d) 188 per Desjardins J.A. at 198 (F.C.A.).

⁴⁵      Beecham Can. Ltd. v. Proctor & Gamble Co. (1982), 61 C.P.R. (2d) 1 at 27 (Fed. C.A.) per Urie J., leave to appeal to S.C.C. refused (1982), 63 C.P.R. (2d) 260n (S.C.C.).

⁴⁶      Beloit Corp. et al. v. Valmet OY, supra, note 35 at 294.

⁴⁷      Diversified Products Corp. v. Tye-Sil Corp. (1991), 35 C.P.R. (3d) 350 (F.C.A.) .

⁴⁸      This conclusion is drawn from the letter Mr. Bourgault sent to his patent agent dated May 8, 1990 wherein he states that "I am enclosing a brochure of a Friggstad Wing Type Packer Bar [the HPL] which was built in approximately 1984. Note the three axis pivot arrangement. (I just found this brochure.) If it is obvious to use a two pivot as per our connection of the packer to the frame it should have been used here!" (Ex.1, 30).

⁴⁹      Bourgault Statement, Ex.2, paragraph 62.

⁵⁰      Hundeby Statement, Ex.44, F.

⁵¹      Hundeby Statement, Ex.44, paragraph 15.

⁵²      Reed Statement, Ex.59, paragraph 70.

⁵³      Agreed Statement, paragraph 35.

⁵⁴      Ex.1, 30, Letter dated May 8, 1990.

⁵⁵      Ex.1, 27, p.3.

⁵⁶      Transcript of Argument, November 21, 1997, p. 216.

⁵⁷      Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents), [1989] 1 S.C.R. 1623 at 1637-1638.

⁵⁸[1981] 1 S.C.R. 504">      Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd., [1981] 1 S.C.R. 504 at 520.

⁵⁹      Jules R. Gilbert Ltd. v. Sandoz Patents Ltd. (1970), 64 C.P.R. 14 (Ex. Ct.), aff'd [1974] S.C.R. 1336">[1974] S.C.R. 1336, 8 C.P.R. (2d) 210.

⁶⁰      Airseal Controls Inc. v. M & I Heat Transfer Product Ltd. (1993), 53 C.P.R. (3d) 259 at 275 (F.C.T.D.).

⁶¹      Supra, note 59 at 74.

⁶²      Agreed Statement, p.14.

⁶³      Defendant"s Submission as to Facts, p.71.

⁶⁴      (1887), 4 R.P.C. 333 at 357-358 (C.A.).

⁶⁵      Hundeby Statement, Ex.44, p.3-4.

⁶⁶      Friggstad Statement, Ex.28, 1.

⁶⁷      Heffco Inc. v. Dreco Energy Services Ltd. et al. (1997), 127 F.T.R. 286.

⁶⁸      Eli Lilly & Co. v. O'Hara Manufacturing Ltd. (1989), 26 C.P.R. (3d) 1.

⁶⁹      Catnic Components Ltd. v. Hill & Smith Ltd., [1982] R.P.C. 183.

⁷⁰      During final argument, both Mr. Hughes and Mr. Fyfe agreed that while the construction must be considered independently from validity, as a matter of established and acceptable practice, it is the trial judge"s choice in rendering judgment as to whether validity issues should be addressed before those of infringement.

⁷¹      TRW Inc. v. Walbar of Canada Inc. (1991), 39 CPR (3d) 176 at 188.

⁷²      Agreed Statement, paragraph 26.

⁷³      Agreed Statement, p.13-14.

⁷⁴      Each of the following denials of infringement are found in the Agreed Statement, paragraphs 27 and 28.

⁷⁵      Patent '863, p.6.

⁷⁶      The drawings are Exhibit A, 26, pp. 268 to 279. Although urged to do so by Mr. Hughes, I do not consider the drawings in the patent to be precise enough to reach this conclusion.

⁷⁷      Patent '863, p.6.

⁷⁸      Ex.44, H2, p.2.

⁷⁹      Transcript of Cross Examination of David Hundeby, p.8.

⁸⁰      p. 2229.

⁸¹      Dyck Statement, Ex.21, paragraph 32.

⁸²      Ex.47, H2, p.2.

⁸³      Ibid.

⁸⁴      Dyck Statement, Ex.21, paragraph 36.

⁸⁵      Ex.9.

⁸⁶      Mr. Fyfe referred to this as a "common sense" interpretation and in this respect, cited the fact that Mr. Reed agreed with the interpretation in the course of giving his evidence. (Transcript of Argument, November 20, 1997, p.76.

⁸⁷      Ex.27, p.128, Question 521.

⁸⁸      Patent '863, p.4.

⁸⁹      Patent '863, p.9.

⁹⁰      Patent '863, p.3.

⁹¹      Ibid., p.8-9.

⁹²      Ex.1, 11., p.2-1.

⁹³      Ex.27, p.192. Q.705.

⁹⁴      Transcript of Bourgault Cross-Examination, p.195, Q.1000.

⁹⁵      Transcript of Hundeby Cross-Examination, p.96, Q.349.

⁹⁶      Ex.A, 26.

⁹⁷      Agreed Statement, p.14.

⁹⁸      Beloit Canada Ltd. et. al. v. Valmet-Dominion Inc. (1997) 73 C.P.R. (3d) 321 at 366. (F.C.A.).

⁹⁹      Cook Statement, Ex.68, paragraphs 4, 9, and 11.

¹⁰⁰ Summach Statement, Ex.66, paragraphs 15 and 19.

¹⁰¹ Ibid ., paragraph 30.