Illinois Tool Works Inc. v. Cobra Fixations Cie Ltée. - Cobra Anchors Co. Ltd., 2002 FCT 829

Date: 20020729

Docket: T-2313-96

Neutral Citation: 2002 FCT 829

Ottawa, Ontario, this 29^th day of July 2002

PRESENT: THE HONOURABLE MR. JUSTICE PELLETIER

BETWEEN:

ILLINOIS TOOL WORKS INC.,

ITW CANADA

and

ITW CANADA HOLDINGS COMPANY

Plaintiffs,

Defendants by Counterclaim

and

COBRA FIXATIONS CIE LTÉE -

COBRA ANCHORS CO. LTD.

Defendant,

Plaintiff by Counterclaim

REASONS FOR ORDER

[1]                 The Plaintiffs, Illinois Tool Works Inc., (ITW) ITW Canada (a limited partnership), and ITW Canada Holdings Company (collectively the plaintiffs) bring this action alleging infringement of Canadian Patent no.1,283,566, (the ITW Patent) against the defendant Cobra Fixation Cie Ltée - Cobra Anchors Inc.(the defendant) On the usual theory that the best defence is a good offence, the defendant counterclaims that the ITW patent is invalid for obviousness and claiming more than disclosed or lack of utility. Thus did drywall anchors, those little sleeves inserted into drywall which receive a screw, allowing the consumer to hang a picture, come to occupy the time of 7 lawyers and a judge for 7 days in a Montreal courtroom in the spring of 2001.

[2]                 The drywall anchor in question, which is described as a "Self drilling Threaded Insert for Drywall" by its inventors Richard Ernst, Francis Peterson and Melissa Sledz, was first patented in the United States by the inventors (U.S. Patent 4,601,625 - the Ernst patent). The Ernst patent was assigned to ITW, who subsequently applied for and obtained the Canadian patent claiming a priority date of May 11, 1984, based on the Ernst patent. ITW entered into license agreements with its Canadian subsidiaries with respect to the sale of items sold under either the Canadian or the American patent. While some suggestion was made in cross-examination that one or more of the plaintiffs may lack the status to bring this action, this has not been pursued.

[3]                 Section 55 of the Patent Act, R.S.C. 1985, c. P-4 identifies those who are entitled to bring an action for infringement.

[4]                 I am satisfied that ITW has the status to bring this action as assignee of the U.S. patent and patentee under the Canadian patent. I am also satisfied that ITW Canada and ITW Canada Holdings Inc. are claiming through the patentee by virtue of paying royalties to ITW. [Examination of Thomas Buckman, April 2, 2001, pp. 47-48] Kirin-Amgen Inc. v. Hoffman-La Roche Ltd. (1999), 87 C.P.R. (3^rd) 1 at 27-28.

[5]                 The defendant is a Canadian company founded by Pierre McDuff. It specializes in the design manufacture and sale of anchors of various types. Mr. McDuff decided to go into the anchor business immediately after obtaining his Licentiate in Laws from the University of Montréal in 1971. He has been successful as evidenced by the fact that the defendant's annual sales are in the tens of millions of dollars. It sells primarily into the American market where it is a supplier to a number of "big box" retailers. Its product line consists of approximately 14 different types of anchors in hundreds of different sizes.

[6]                 Two of the defendant's products are in issue in this claim, the WallDriller and the Picture Hook. There have been 5 or so models of the WallDriller which have gone through two small changes. There is no difference between these products in terms of the allegations of infringement. The Picture Hook is a WallDriller which is sold with a hook for use in hanging pictures instead of a straight fastener. Figure 1 of Annex 1 to these reasons is a drawing of a WallDriller taken from Canadian Patent 2,205,901 issued to Titan Technologies Inc. and which is now owned by the defendant.        

[7]                 The WallDriller is inserted by piercing the drywall with the point (103 in the drawing) and then screwing the WallDriller into the wall using a Phillips type screwdriver. As the WallDriller turns, the sharp cutting edge 107A cuts the material encountered while the low thread 115 begins the process of tapping a thread for the raised thread 104 which is disposed on the body of the WallDriller. A fastener equal in length to or shorter than the body of the anchor is screwed into the central bore of the anchor. In the case of the Picture Hook, a fastener with a hook suitable to suspend a painting is used.

[8]                 This can be compared to Figure 2 in Annex 1, a drawing of the first embodiment of the invention as shown in the ITW patent. This anchor is inserted by piercing the drywall with the point 31 and then turning the anchor using a Phillips screwdriver so that the points 33 cut a hole in the drywall. This drilling operation continues until the drilling end has substantially drilled a hole in the drywall at which point, the thread 20 engages the drywall and cuts a thread allowing it to screw itself into the drywall. A fastener which exceeds the length of the body can then be inserted through the bore in the centre of the body. As the fastener advances, it encounters the drilling end 15 at a spoon like indentation 23 where further advancement of the fastener causes the drill end 15 to yield at the notched indentations 45 and to deflect.

[9]                 Mr. McDuff testified that development of the WallDriller originated in 1993 with an early design done by Tom McSherry called the Bat-Anchor. McSherry was an inventor living in the United States who called Cobra wanting to discuss his invention with Mr. McDuff. The latter was busy and so simply asked Mr. McSherry to send some samples of his invention, which he did. [Examination of Mr. McDuff, April 4, 2001, p.89]. While Mr. McDuff was interested in the invention, he also saw problems with it. The advantage of the Bat-Anchor is that it worked on the principle of a screw in that one screwed it into the wall. On the other hand, it had no central point so that it was difficult to reliably install it on a predetermined point. Figure 3 in Annex 1 is a drawing of the Bat-Anchor taken from U.S. patent 5,208,203 issued to Mr. McSherry and assigned to Titan Technology Inc.^[1] [Cross-examination of Pierre McDuff, April 5, 2001, at pp.150-151]. In that patent, McSherry specifically refers to the Ernst patent. Consequently, Mr. McSherry can be taken to have knowledge of the original Ernst patent when working on the design of the WallDriller.

[10]            Mr. McDuff made Mr. McSherry aware of his concerns about the Bat-Anchor as a result of which further design work was done. In the end, Mr. McSherry produced another design which did have a centre point and which was the object of U.S. patent no. 5,536,121 issued to Mr. McSherry as inventor and assigned to Titan Technologies Inc. Mr. McDuff rejected this design because it did not completely incorporate the screw concept. Notwithstanding this rejection, Mr. McSherry patented the design. A drawing of the modified Bat-Anchor is shown in Annex 1 as Figure 4.

[11]            This lead to further discussions and design work, ending in a design    for which Mr. McSherry obtained U.S. patent 5, 752,792, a design which Mr. McDuff admitted was an early version of the WallDriller. [Cross-Examination of Pierre McDuff, April 6, 2001 p. 40]. This design is shown in Figure 5 in Annex 1. This was subsequently followed by U.S. patent 5, 833,415 which was the patent covering the first generation of the WallDriller. Figure 1 of that patent is indistinguishable from Figure 1 of patent 5,752,792 as shown in Figure 5 of Annex 1. [Cross-examination of Pierre McDuff April 6, 2001, at pp. 51-52].

[12]            Mr. MacFarlane, counsel for the plaintiff, attempted to demonstrate through his cross-examination of Mr. McDuff that he and Mr. McSherry were aware of the Ernst patent at all times during the development of the WallDriller.    He argues that they consciously took steps to retain the essence of the invention while at the same time attempting to distinguish their device from the Ernst patent. In support of this position, he refers to a letter dated April 5, 1994 from Mr. Dave Starke, a Cobra employee who often assisted Mr. McSherry, a dyslexic, with correspondence, to Mr. McDuff confirming a conversation to the effect that the concept of a centre point was being abandoned:

"It is my understanding that the centre point concept is to be abandoned based on the difficulty to produce such a part, the lack of customer response, and the possible infringement of ITW's design."

Exhibit A-82 (2^nd last page)

In fact, the concept of a centre point was never abandoned.

[13]            Counsel also points to changes in wording in the various Mr. McSherry patents which suggests an alertness to the significance of the issue of drilling, as opposed to screwing or cutting. Finally counsel argues that an adverse inference should be drawn from the fact that Mr. McSherry was not called to testify on behalf of the defendant since he was the designer of the WallDriller and could speak authoritatively to the question of design intent.

[14]            It may very well be that I am missing the point but I take the law to be that infringement is not a matter of intention. One can infringe without having any knowledge of another's patent and without any intention to do so. The converse, it seems to me, is that one can deliberately set out to avoid infringing a patent of which one has knowledge. Whether one has succeeded or not is determined by a construction of the claims of the patent and not by one's intention. Consequently, I attribute no significance to the fact that Mr. McDuff and Mr. McSherry had knowledge of the Ernst patent and attempted to design an anchor which would not infringe that patent.

[15]            Were Mr. MacFarlane at my elbow as I write this, he would no doubt say that there is a difference between an honest attempt to avoid infringement and the attempted theft of another's invention. He might say as well that it is the duty of the court to uphold the patentee's legitimate monopoly in all cases, but it should be particularly vigilant in the face of a deliberate attempt to appropriate the fruit of another's inventiveness.    In fairness to counsel, this argument was not explicitly raised before me and no authority was cited to that effect. But unless this is the thrust of the evidence developed by Mr. MacFarlane, I am at a loss to understand its relevance.

[16]            The issue of deliberate infringement frequently arises in the context of the personal liability of directors for the infringing acts of the company. See for example Mentmore Manufacturing Co. v. National Merchandise Manufacturing Co. (1978), 40 C.P.R. (2d) 164, a decision of the Federal Court of Appeal, where the applicable principles are set out. But no claim is brought against Mr. McDuff in his personal capacity. One might also suggest that evidence of deliberate infringement is relevant to the issue of punitive damages, but no request is made here for damages beyond those normally provided for in the event of a finding of infringement.

[17]            The upshot of this discussion is that I see no reason to inquire into the state of mind of Mr. McDuff and Mr McSherry. The question of infringement or not will be determined by comparing the defendant's devices to a proper construction of the patent It follows that I see no relevance to any adverse inference which I might draw from the defendant's failure to call Mr. McSherry and I decline to do so.

[18]            With that brief historical introduction, I embark upon the first function of a judge deciding a patent case, which is to construe the claims of the patent in a purposive way, without being result driven in doing so.

¶ 45        The key to purposive construction is therefore the identification by the court, with the assistance of the skilled reader, of the particular words or phrases in the claims that describe what the inventor considered to be the "essential" elements of his invention.   

Whirlpool Corp. v. Camco Inc., [2002] SCC 67, [2000] 2 S.C.R. 1067.

[19]            In Free World Trust v.Electro-Santé Inc., [2000] SCC 66, [2000] 2 S.C.R. 1024 the Supreme Court set out the principles of patent interpretation:

[ para. 31] (a) The Patent Act promotes adherence to the language of the claims.

        (b) Adherence to the language of the claims in turn promotes both fairness and predictability.

(c) The claim language must, however, be read in an informed and purposive way.

(d) The language of the claims thus construed defines the monopoly. There is no recourse to such vague notions as the "spirit of the invention" to expand it further.

(e) The claims language will, on a purposive construction, show that some elements of the claimed invention are essential while others are non-essential. The identification of elements as essential or non-essential is made:

                                  (i) on the basis of the common knowledge of the worker skilled in the art to which the patent relates;

(ii) as of the date the patent is published;

(iii) having regard to whether or not it was obvious to the skilled reader at the time the patent was published that a variant of a particular element would not make a difference to the way in which the invention works; or

(iv) according to the intent of the inventor, expressed or inferred from the claims, that a [page1044] particular element is essential irrespective of its practical effect;

(v) without, however, resort to extrinsic evidence of the inventor's intention.

(f) There is no infringement if an essential element is different or omitted. There may still be infringement, however, if non-essential elements are substituted or omitted.

[20]            The Supreme Court also noted that it is the means of achieving a desirable result which is protected not the desirable result itself :

[para 32] The claims cannot be stretched to allow the patentee to monopolize anything that achieves the desirable result. It is not legitimate, for example, to obtain a patent for a particular method that grows hair on bald men and thereafter claim that anything that grows hair on bald men infringes.

[21]            Just as the words of the patent cannot be stretched, nor can they be shrunk to avoid an inconvenient result:

[para 51] The words chosen by the inventor will be read in the sense the inventor is presumed to have intended, and in a way that is sympathetic to accomplishment of the inventor's purpose expressed or implicit in the text of the claims. However, if the inventor has misspoken or otherwise created an unnecessary or troublesome limitation in the claims, it is a self-inflicted wound. The public is [page1054] entitled to rely on the words used provided the words used are interpreted fairly and knowledgeably.

[22]            The judge who construes the claims of the patent must construe them as they would be understood by a person skilled in the art at the material time. The evidence as to the meaning of the words used in the patent to such a person, and of the state of knowledge of a person skilled in the art is provided by the experts. In this case, I had the assistance of two expert witnesses. The Plaintiff's expert was Mr. Mark Salmon who graduated from Manchester University with a Bachelor of Science in Mechanical Engineering in 1969, following which he completed a graduate apprenticeship program at Vauxhall Motors. From 1971 to 1977, he was employed as an engineer in fields unrelated to the field of fasteners or fixings, as they are referred to in the United Kingdom. In July 1977, Mr. Salmon joined Hilti (Great Britain) Limited as Technical Service Manager, in which capacity he was responsible for advising design professionals and users about the technical aspects of Hilti's products which included drywall and other fixings. In 1983, Mr. Salmon joined Rawlplug Company Limited, the largest manufacturer of fixings and drill bits in the U.K., as Technical Sales Manager. His duties included technical support for all of Rawlplug's fixings including advising design professionals and others on technical questions. In 1986, he was promoted to Customer Service Manager and in 1987 to Commercial Design Manager with responsibility for all Rawlplug's fixings. In that capacity he worked with a team of designers, manufacturing and marketing people in new product research and development. He also provided the liaison between Rawlplug and its solicitor and patent agents. In June of 1989, Mr. Salmon left Rawlplug to set up his own consulting business called Independent Fixings Consultants, which he continues to operate.

[23]            Mr. Salmon has published a number of articles on anchors in trade journals. Between 1983 and 1989, he served on the Technical Committee of the Construction Fixings Association, the last three years in the capacity of Chair of that committee. In 1986, he was elected to the Committee European Outillage, a European Manufacturer's trade association, as one of three permanent representatives. He was elected Chair of the Technical Committee of this organization in 1998, a position which he held at the time of the trial. Mr. Salmon has also been the British trade representative on the European technical standards organizations since about 1986. He has also served as a representative of the Construction Fixings Association on standards committees in Britain. Mr. Salmon was tendered as an expert to give the opinion which he gave in his affidavit, a position which was not opposed by counsel for the defendant. For my purposes, I took him to be an expert on fasteners and anchors.

[24]            The defendant's expert was Mr. Nicholas Fappiano. Mr. Fappiano received an Associate of Science designation in Manufacturing Engineering Technology from Waterbury State Technical College in Waterbury Connecticut in 1983. In 1986, he received a Bachelor of Science degree in Manufacturing Engineering Technology from Arizona State University in Tempe, Arizona. In the same year, he was certified by the Society of Manufacturing Engineers as a Manufacturing Technologist. Mr. Fappiano is not an engineer. Mr. Fappiano was employed by Anchor Fasteners in Waterbury Connecticut on a part time basis from 1985 to 1987. He worked there full time from 1987 to 1990. In the latter capacity, he designed automated, and semi-automated tapping in assembly machinery as well as some progressive die work. It appears that he also did some product design work as well in that period. Mr. Fappiano is currently a Manufacturing Engineering Manager with the Torrington Co. of Watertown, Connecticut. His current responsibilities include management of a manufacturing engineering department of forty personnel which is responsible for production support, new program launches, as well as tool gage and machinery design for automotive steering components manufacturing. He has experience and claims expertise in, high production hole producing processes for automotive steering products. He claims familiarity with drill geometry, speeds and feeds. He has also had personal experience in the use of construction anchors which he acquired while finishing a basement recreation room.

[25]            Mr. Fappiano was tendered as an expert in anchoring and drilling in various substances including drywall. Counsel for the plaintiff was not prepared to concede Mr. Fappiano was an expert but took the position that instead of trying to exclude him, he would attempt to show that his evidence was entitled to little or no weight. Consequently, Mr. Fappiano was accepted as an expert on the basis on which he was tendered by the defendant.

[26]            The two experts offered their views of the knowledge of the person skilled in the art at the material time, that is May, 1984.    The plaintiff's expert, Mark Salmon was of the view that a person skilled in the art would have a Bachelor's degree in engineering though he conceded that some other type of formal qualifications might be sufficient in combination with appropriate experience. (Cross-examination of Mark Salmon, April 3, 2001, at p. 22). In addition the skilled person would have experience in the manufacture and probably the design of fixing systems for construction and a good understanding of known methods of manufacture of such devices. The knowledge of manufacturing methods would be necessary so that such a person's designs could be capable of being manufactured. The person would also be expected to have knowledge of the materials in which the fixing or fastener would be employed. The person would also be expected to have a knowledge of fasteners as generally used in the construction industry.    According to Mr. Salmon, in preparing to design a drywall anchor, a skilled person would study drywall anchors by examining technical product literature and by doing a patent search.

[27]            The defendant's expert, Mr. Fappiano took the position that a person of his broad experience was typical of a person skilled in the art. His experience was generally in the field of manufacturing engineering with some exposure to fasteners, but not necessarily in the construction context. Mr. Fappiano was of the view that a person skilled in the art would be aware of fasteners used in contexts other than construction and would make lateral connections between these types of industries. However, these lateral connections would stop short of demonstrating inventiveness since the workman skilled in the art is not blessed with this quality.

[28]            With the help of the two experts, I now turn to the application of the principles set out in Free Word Trust v. Electro Santé Inc., supra. The patent has 23 claims of which the following are asserted in this action: 1, 4, 5, 7, 9, 10, 11, 12 and 14 [Plaintiff's Written Argument at para. 64]. Of these, claims 1 and 7 are independent claims and the other asserted claims dependent upon them.

[29]            The specification to the patent teaches that it is a device for fastening articles to drywall, a building material which consists of a core of gypsum sandwiched between two layers of paper. It is common ground that the gypsum core is friable which means that it is subject to crumbling. The insert or anchor is essentially a threaded sleeve which is inserted into a sheet of drywall and accepts a screw, the fastener, by which an article is affixed to the drywall.

[30]            The novelty claimed is the elimination of a separate hole drilling operation in the installation of the anchor and the ability to use screws of a length longer than the body of the anchor. According to the specification, anchors in use prior to the introduction of the invention required the user to drill a hole to receive the anchor as the first step in the installation of the anchor. The invention claims to have eliminated hole drilling as a separate step in the installation process by incorporating a drilling end (or drill tip) on the anchor itself. As a result, the anchor creates its own hole, eliminating one step in the installation process. This is the significance of the description of the invention as a Self Drilling Threaded Insert for Drywall.

[31]            The Specification goes on to say that since axial (or forward) advancement of the insert is significantly slower in the drilling operation than in the thread forming operation, it is necessary that these operations not be performed simultaneously. To that end the drilling end of the anchor is equal in thickness to a standard sheet of drywall as is the body of the anchor. "This configuration allows the drilling operation to be completed prior to the start of thread formation in the drywall" [ITW patent p. 4 line 12].

[32]            With that in mind, one turns to the construction of Claim 1, reproduced below:

1. An anchor for use in friable material comprising a generally hollow cylindrical body with a flanged end and a drilling end, said body having an exterior thread disposed thereon, said drilling end including means for allowing passage of an elongated fastener through and beyond said drilling end, said drilling end further including means for engaging said fastener and for causing said drilling end to deflect upon advancement of said fastener through said body.

Patent p.15.

[33]            The elements of claim one are a generally hollow cylindrical body with a flanged end and a drilling end, an exterior thread disposed upon the cylindrical body, a way of allowing a long fastener to pass through and beyond the drilling end, and a way by which the drilling end can be made to deflect by the advancement of the fastener.

[34]            There is no controversy as to the meaning of "hollow cylindrical body" and "flanged end". There is controversy as to the meaning of drilling end which is derivative of the dispute as to the meaning of drilling.    Mr. Fappiano's evidence was that drilling was the making of a hole by a rotary end cutting tool. This is confirmed by the following authorities cited by Mr. Fappiano in his affidavit:

      - "Drilling is a process by which a hole is originated or enlarged by a specific type of revolving end-cutting tool, a drill"

      F.W.Wilson, ed., Tool Engineers Handbook, 2^nd ed. (New York: McGraw-Hill, 1959).

      - "Cutting tools for drilling - drills - are rotary end-cutting tools having one or more cutting lips"

      T.J. Drozda, ed., Tool and Manufacturing Engineers Handbook, Vol. 1, 4^th ed., (Society of Manufacturing Engineers, 1983) p. 9-1.

      -"Drills are rotary end-cutting tools having one or more cutting lips and one or more helical or straight flutes for removal of chips and the admission of cutting fluid"

      M.B.Bever, ed., Encyclopedia of Materials Science and Engineering (Cambridge: MIT Press, 1986) p. 1231.

[35]            The obvious consequence of this definition is that a tool which does not cut at the end is not a drill.

[36]            Mr. Salmon had a more inclusive definition of drilling:

82. A skilled person would understand "drilling" to mean the removal of material by a rotating tool to form a hole. There are many types of drills. Some have one or more cutting edges or helical flutes to bite into material and remove it backward. Some have a tube shape with a sharpened opening to cut out a core. Some have a scraping blade edge that scrapes or scores away material. Some have one or more side notches having a cutting edge.

      Paragraph 82. Affidavit of Mark Salmon dated January 24, 2001. (Footnotes omitted).

[37]            In his cross-examination, Mr. Salmon accepted Mr. Fappiano's definition of drilling as rotary end cutting. (Cross - Examination of Mr. Salmon, April 3, 2001, at p. 69).    In his cross-examination, Mr. Fappiano agreed that the cutting edges of a drill sweep back from the centre point of the drill shaft. (Cross-examination of Nicholas Fappiano, April 9, 2001, at p. 133)

[38]            The defendant's theory is that a device can advance into a wall by means other than drilling, namely piercing (like a nail) or by screw action. In his cross-examination, Mr. Salmon explained that screwing consists of an initial displacement of material by a conical point followed by thread cutting in the sides of the opening created by the displacement. (Cross examination of Mark Salmon, April 3, 2001 at p. 98, lines 10 to 21). This distinguishes it from drilling which involves the cutting and removal of material from the host material (Cross-examination of Mark Salmon April 3, 2001, at p. 76, lines 6 to 14).

[39]            The evidence supports the conclusion that drilling occurs when a rotating tool creates a hole by cutting the underlying material by means of one or more cutting edges which rotate around a centre point. (Cross-examination of Nicholas Fappiano April 9, 2001, at p. 125, lines 14-19). However, a drill can consist of only one cutting edge.(Cross-examination of Nicholas Fappiano April 9, 2001, at p. 143). The angle of that edge in relation to the axis of the drill may vary.

[40]            A related controversy is the relationship between tapping and drilling. As will be recalled, the inventor takes the position that drilling and tapping must necessarily be separate as opposed to simultaneous operations.

[41]            Mr. Fappiano initially took the position that it was impossible to drill and tap a thread at the same time. His evidence was that the rate of forward advance in drilling is a function of a number of things including the hardness of the substrate and the pressure applied to the drill (Cross-examination of Nicholas Fappiano April 9, 2001 pp. 93 and 94). Thread formation requires the thread forming edge to advance into the material at the rate of one pitch (the distance from the crest of one thread to the crest of the next) per revolution of the tool (idem, at p. 95). According to Mr. Fappiano's affidavit, these operations cannot be combined. (Affidavit of Nicholas Fappiano, at para. 59).

[42]            Mr. Fappiano's cites a number of sources indicating that drilling should be completed before tapping is initiated. (Affidavit of Nicholas Fappiano at para. 56). However, Mr. Fappiano's initial opinion that this combined operation was impossible mellowed to the point that he admitted that while it may be possible to tap and drill at the same time, it was very difficult to accomplish. (Cross-examination of Nicholas Fappiano, April 9, 2001, at pp. 178-179).

[43]            Mr. Salmon's position, as set out in paragraphs 91 to 96 of his affidavit, is much the same. Drilling and tapping are difficult to do simultaneously:

91. A skilled person would understand why the ITW patent directs that drilling should precede cutting threads. Normally, drilling and thread forming do not proceed in a material at the same rate. A thread is cut at a predictable rate; each revolution advances the thread by one pitch length, i.e. the axial length between crests of the thread. A drill's rate of advancement, however, depends on many factors including: the size of the hole, the hardness of the material, the force on the drill bit, the type of drill (scraping, cutting) and the angle of attack of the drill to the material. Therefore it is common sense to separate them. For example, column 4, lines 13-26 of U.S. Patent 2,479,730 of Exhibit 1 (the self drilling, self tapping screw) teaches that the drill's length should be about equal to the material depth so drilling may be completed before tapping commences to ensure formation of a perfect thread.

93. It is well known, however, that one may drill and tap simultaneously in a soft material, if sufficient force is applied. U.S. Patent 2,479,730 also observes this at column 4, line 45. Of course, "soft" is a comparitive term and must be considered in the light of the other factors, noted above, that affect a particular drill's rate of advancement. Nevertheless, in the present application where one is drilling a hole and cutting a thread in a friable material like drywall a skilled person would see the wisdom of the ITW patent. The prudent course is to have drilling precede tapping and to make both the drilling end and the body equal in length, that length being the anticipated thickness of the wall material, I will explain why.

...

96. In a soft material, the rate of advancement of an anchor during drilling depends, to a great extent, on the pushing force used to drive it forward. Of course, the strength and aggressiveness of potential users varies significantly. Further, the on and off application of force that anyone user may apply while making a partial turn of a screwdriver also varies considerably. Therefore the rate of advancement of an anchor when drilling in soft material will normally vary, not only from user to user, but also during installation by any user.    For this reason, a skilled person would understand that, from a practical viewpoint, drilling should be done before threading and would readily understand the patent's specification that "The threaded and drilling portions are generally equal in length to the thickness of standard drywall material"

[44]            The evidence on this issue seems to be that while, as a practical matter, it is desirable to separate drilling and tapping, it is not impossible to combine them though it is difficult to do so.

[45]            The other contentious items in Claim 1 are "means for allowing passage of an elongated fastener" and the means for deflecting the drilling end. The problem being addressed here is that of two objects attempting to occupy the same space at the same time. The drilling end projects from the "generally hollow cylindrical body" along the central axis. If a fastener is to extend beyond the tip of the cylindrical body, it must displace the drilling end. This requires force to be brought to bear on the drilling end in a way which causes it to deflect out of the way.

[46]            In one embodiment, weakening slots, as well as a spoon-like opening which guides the tip of the fastener, are provided to facilitate the deflection of the drilling tip. The specification describes this process in the following way:

At the juncture of the threaded portion and the drilling portion, weakening slots 45 facilitate the lateral deflection of the blade 19 when a threaded fastener is driven through the threaded insert. The spoon-like opening 23 forms a curved wall 35 which guides the tip of a fastener driven through the insert

[47]            The relationship of these elements is made clear upon a careful reading of Claim one:

1. An anchor for use in friable material comprising a generally hollow cylindrical body with a flanged end and a drilling end, said body having an exterior thread disposed thereon, said drilling end including means (1) for allowing passage of an elongated fastener through and beyond said drilling end, said drilling end further including means (2) for engaging said fastener and for causing said drilling end to deflect upon advancement of said fastener through said body.

(Bold numbers and emphasis added).

[48]            Upon reading claim one as it is parsed above, one notes two elements: (1) means for allowing passage of an elongated fastener through and beyond the said drilling end and (2) means for engaging said fastener and for causing said drilling end to deflect upon advancement of said fastener through said body. It is significant that the two elements which are identified are not specific physical features but functions. In other words, the means are described by what they do, and not by how they do it. It would therefore be an error to construe these two phrases as stipulating a particular physical configuration when all that is intended is a description of a certain function.

[49]            The plaintiffs also assert Claims 4 and 5, both of which are dependent upon Claim 1. Those claims are set out below:

4. An anchor according to Claim l, wherein said body includes a generally cylindrical bore adapted to receive a threaded elongated fastener.

5. An anchor according to Claim 4, wherein said bore has a surface interrupted by axially oriented teeth.

[50]            Claim 4 adds the notion of a bore through the body of the insert to receive the fastener while claim 5 adds the element of axially oriented teeth in the bore. There is no reason nor any evidence to suggest that these words should be given a meaning other than their plain and ordinary meaning.

[51]            The next independent claim asserted is claim 7 which provides as follows:

7. An anchor for use in friable material comprising a generally hollow cylindrical body with a flanged end and a drilling end, said body having an exterior thread disposed thereon, said drilling end including notch means formed in said drilling end adjacent said body for allowing passage of an elongated fastener through and beyond said drilling end, said notch means creating a section of reduced cross sectional area in said drilling end to reduce resistance of said drilling end to bending.

(emphasis added)

ITW Patent, p. 16.

[52]            It can be seen that claim 7 appears to follow the structure of claim 1 except that instead of two functions, as found in claim 1, it addresses only one function: "allowing passage of an elongated fastener through and beyond said drilling end".    However claim 7 describes a physical configuration by which this function will be accomplished. In the passage above, I have bolded the portions which differ from Claim 1. It can be seen that Claim 7 identifies "notch means" as the "means for allowing passage of an elongated fastener through and beyond said drilling end".    Claim 7 therefore represents a concrete means by which the function required in Claim 1 is to be implemented. Claim 7 not only specifies the physical configuration but also its mode of operation. The notch means create an area of reduced cross section to reduce the resistance of the drilling end to bending.

[53]            The meaning of notch means was the subject of considerable evidence. The discussion of notch means in Mr. Salmon's affidavit begins by recognizing that "notch means" does not correspond to a familiar meaning. He is correct insofar as "notch means" taken as an expression is concerned.    However, "notch" has a familiar meaning and "means" is a term used in the arcana of drafting patents to qualify a thing used in an instrumental fashion. So "notch means" would refer to notches used for a particular purpose or function. To the extent that "notch means" refers to notches used for a particular purpose, it is not obvious that there is anything more for an expert to say about the meaning of "notch means". The purpose or purposes to which notches are put will be found in the patent, and not in some technical definition of the expression notch means.

[54]            Mr. Salmon takes the position that notch means is defined in the patent at page 2 line 29 and following where the following appears:

The means formed in said drilling end for allowing passage of an elongated fastener through and beyond the drilling end is notch means creating a section of reduced cross-sectional area in the drilling end to reduce resistance of the drilling end to bending.

[55]            Mr. Salmon concludes from this sentence that notch means would have the following characteristics:

a) it is found in the drilling end,

b) it allows passage of a fastener through and beyond the drilling end;

c) it creates a section of reduced cross-sectional area in the drilling end, and

d) it reduces resistance of the drilling end to bending.

Affidavit of Mark Salmon at para. 64.

[56]            Mr. Salmon then examines the second embodiment described in the patent, finds that there is an element which has the same characteristics as those which he attributed to "notch means" which allows him to conclude that notch means are found in the second embodiment.

72. Therefore, in my opinion, a skilled person would see that the "notch means" of the second embodiment is the flat discontinuity or cleft slanting across the drilling end. It is located in the drilling end and has all the function of the "notch means" namely allowing passage, reducing cross-sectional area and reducing resistance to bending.

[57]            There are two problems with this analysis. The first is that one cannot say that if a second thing does the same thing as a first thing, it is the first thing. If one needs to write a message, a pen will do as well as a pencil, but that is not an argument which proves that a pen is a pencil. It may support an argument that both are writing instruments but that is a different matter. Mr. Salmon's argument ignores this distinction. He says that notch means accomplish a certain function in the first embodiment, and certain features accomplish the same function in the second embodiment, therefore notch means are present in both embodiments. The correct conclusion is that both embodiments include means for "allowing passage of an elongated fastener through and beyond said drilling end", one using notch means, the other using other means.. The error occurred because Mr. Salmon's functional definition of notch means does not include a notch as an element of the definition.

[58]            The second problem in Mr. Salmon's analysis is that the patent specifically says that notch means appear in one embodiment. The patent makes no reference to notch means in relation to the second embodiment. Reproduced below is the sentence from which Mr. Salmon derived the characteristics of "notch means" and the sentence which immediately precedes it.

In one embodiment, the drilling end further includes means for engaging the fastener and for causing the drilling end to deflect upon advancement of the fastener through the body. The means formed in said drilling end for allowing passage of an elongated fastener through and beyond the drilling end is notch means creating a section of reduced cross-sectional area in the drilling end to reduce resistance of the drilling end to bending.

[59]            The inventor contemplated notch means as a way of allowing passage of an elongated fastener through and beyond the drilling tip in the first embodiment of the invention.    In the second embodiment, the body and the drilling end are not separated by a change in shape from hollow cylinder to flat blade as in the first embodiment. In the second embodiment, the transition between body and drilling end is marked by the absence of any thread on the drilling end and the beginning of the side opening and the frangible wall.    This does not present any impediment to the passage of an elongated fastener from the body to the drilling end so that it makes no sense to speak of reduced cross sectional area at the point of transition. The point at which the problem of the fastener and the drilling end occupying the same space arises is at the drill tip itself. But at that point, the cylinder has transitioned to a point which effectively reduces the cross sectional area, and resistance to bending, at the point where deflection must occur. Thus we see that the inventor chose to achieve the objective of allowing passage of a fastener beyond the drill tip by different means in the second embodiment. But it does not follow that because cross sectional area is reduced, and resistance to bending is lessened, that one is in the presence of "notch means". I do not accept Mr. Salmon's evidence that notch means are found in the second embodiment, though it may be that the second embodiment incorporates the functional equivalent of notch means.

[60]            I conclude that notch means is the means chosen by the inventor to allow passage of an elongated fastener through and beyond the drilling end in one embodiment of the invention. If there is to be a definition of notch means other than a description of the functions it serves, it strikes me that some account will have to be taken of the concept of notch. Notch is defined by Mr. Fappiano as an abrupt reduction in cross section or as a stress concentrator which intentionally or unintentionally causes materials to fracture when loads are applied. [Examination in chief of Nicholas Fappiano April 5, 2001, at p. 96]. Mr. Salmon did not specifically address a definition of notch other than in the context of notch means.     For whatever value it may have, the New Shorter Oxford English dictionary on historical principles, (Oxford: Clarendon Press, 1993), gives as the primary definition of notch "a V-shaped indentation or incision made or naturally occurring, in an edge or across a surface". For purposes of construing the claims of the patent, notch means would involve an abrupt reduction in cross section as a means of reducing resistance to bending of the drilling end which may well take the shape of a V-shaped indentation.

[61]            The plaintiff also asserts claims 9, 10, 11, 12 and 14. Claim 9 introduces to claim 7 the element of a phillips-type drive recess in the flanged end of the anchor. Claim 11 adds to claim 7 the element of a body including a generally cylindrical bore adapted to receive a threaded elongated fastener. The adaption referred to in Claim 11 is described in Claim 12 as a surface of axially oriented teeth. None of these words or concepts require interpretation beyond their plain and ordinary meaning.

[62]            Claim 14 introduces an element which goes to the notion of simultaneous drilling and tapping by specifying that the drilling end has an axial length generally equal to that of the body so that drilling of the drywall is substantially completed prior to engagement of the exterior thread with it.    The inventor has clearly stated his view that drilling and tapping must occur sequentially and not simultaneously.

[63]            A reading of claim one discloses that its elements are:

a) an anchor for use in friable material

b) comprising a generally hollow cylindrical body

c) with a flanged end

d) and a drilling end

e) said body having an exterior thread disposed thereon

        f) said drilling end including means for allowing passage of an elongated fastener through and beyond said drilling end,

        g) said drilling end further including means for engaging said fastener and for causing said drilling end to deflect upon advancement of said fastener through said body.

Are these elements found in the WallDriller?

[64]            The following description of the WallDriller is taken from the Affidavit of Mr. Fappiano dated January 26, 2002:

        25. All WallDriller^TM anchors have the following characteristics in common. They are wall anchors for use in drywall. They have a flange at one end and are pointed at the other end. They have a bore extending from the flanged end to a side opening adjacent the pointed tip. In this affidavit, I will refer to the portion of the WallDriller^TM anchor beginning at the top of the side opening and extending down to the pointed tip as the "distal end".

        26. All WallDriller^TM anchors have an exterior thread extending from the flanged end almost to the pointed tip. The thread has a number of cutout portions defining radial flats which face in a direction opposite to the advance of the anchor as it is driven clockwise. Between each pitch of the thread is a flat thread. In all versions of the WallDriller^TM anchor (except #8 zinc versions), this flat thread extends into the region of the anchor having the side opening. In the #8 zinc versions, the flat thread stops short of the side opening.

        27. With the exception of the area near the pointed tip, the three generations of the WallDriller^TM anchor are similar. In the first generation, the area near the pointed tip is a relatively smooth cone with a portion missing at the side opening.

        30. The area near the pointed tip of the second generation differs from that of the first in that a thickness of material is added to the pointed tip covering a short distance of the conical surface adjacent the pointed tip. The added thickness has the appearance of an inclined hat which is also a starting thread. This starting thread extends almost to the pointed tip of the anchor.

32. The third generation differs from the other generations only in the arrangement of the area near the pointed tip. In the third generation, the "hat" of the second generation is still present, but there is a more pronounced thread on the edge of the "hat". This thread extends to a point only a couple of millimetres from the pointed tip of the anchor.

33. I understand that the Picture Hook product was put on the market in late 1997. I understand also that the WallDriller^TM anchor used as part of the Picture Hook product at any particular time has been whichever generation and whichever versions of the WallDriller anchor were on the market at that time. An example of the Picture Hook product is attached hereto as Schedule 17 to this my affidavit.

[65]              There are a number of versions of the WallDriller , samples of which were put into evidence. However, no distinction was made between any of these versions as regards issues of infringement. In the circumstances, I will therefore treat them all as essentially the same for purposes of dealing with infringement. Similarly, the picture hook is essentially a WallDriller sold with a hook which is inserted in the bore, from which a picture may be suspended. With the exception of the fastener/hook, its status is the same as that of the WallDriller.

[66]            It is not contentious that the WallDriller contains the following elements:

a) an anchor for use in friable material

b) comprising a generally hollow cylindrical body

c) with a flanged end

d) said body having an exterior thread disposed thereon

[67]            What is contentious is whether the WallDriller has a drilling end, whether such drilling end includes a means for allowing passage of an elongated fastener through and beyond said drilling end and whether the drilling including means for engaging said fastener and for causing said drilling end to deflect upon advancement of said fastener through said body.

[68]            The first issue is whether the WallDriller drills and therefore has a drilling end. Both experts agreed that the WallDriller has an opening which begins at a point on the body and extends to the vicinity of the pointed tip. (Affidavit of Nicholas Fappiano, at paras. 25 and 60, Affidavit of Mark Salmon, para. 104). Both are agreed that the leading edge of this opening cuts material as it advances through drywall. (Cross examination of Nicholas Fappiano April 9, 2001, at p. 90, lines 4 to 8, Affidavit of Mark Salmon, at para. 104).    There is therefore a cutting edge which turns about a centre point and cuts and removes material as it advances. This is consistent with the definition of drilling which I adopted earlier. The only issue is whether this cutting and removal is end cutting or side cutting, since drilling is defined as end cutting.

[69]            My understanding of the defendant's position on this issue is that the WallDriller side cuts, which I can only take to be a reference to the angle of the cutting edge to the axis. In my view, the angle of the cutting edge to the central axis cannot be determinative of the nature of the operation. On this theory, if the angle of the WallDriller's cutting edge were closer to being perpendicular to the axis, the WallDriller would be engaged in end cutting but as that angle gets smaller i.e. the cutting edge gets closer to falling on the central axis, the operation becomes side cutting. I believe that the determinative element is the fact that the cutting edge rotates about a centre point and attacks the underlying material at an angle from the central axis. This permits forward advancement of the tool through the material whereas side cutting would only permit lateral movement of the tool through the material. I find that the WallDriller drills (as its name suggests) and that it therefore has a drilling end.

[70]            Given the premise in the patent that drilling and tapping cannot take place simultaneously, the defendant attempted to show that the WallDriller cannot be drilling because it taps a thread as it enters the drywall. To demonstrate this, Mr. Fappiano performed an experiment in which he showed that WallDriller anchors could be driven into a triple thickness of drywall and still seat themselves properly against the outside face of the drywall. Since the 3 plies of drywall are thicker than the WallDriller is long, the tip was necessarily advancing through drywall until the flange was seated against the outer layer. Consequently, cutting of material (hole formation) had to be continuous. But thread formation had to be occurring at the same time in order for the anchor to seat itself properly. The argument is that since thread formation occurred, the forward advance could not have been caused by drilling.

[71]            Mr. Salmon explained that the WallDriller would be tapping and drilling simultaneously when the threads on the body were controlling the rate of advance of WallDriller into the drywall. This would be known to be occurring when the rate of forward advance was equal to one thread pitch. He conducted an experiment in which he measured the advance of a WallDriller into drywall upon each complete revolution of the anchor as different amounts of force were applied to the WallDriller. His objective was to determine the point at which the WallDriller's advance was controlled by the thread formation.    It is unnecessary to reproduce his detailed results. His data showed that as the amount of force increased, it took fewer revolutions of the WallDriller before the threads controlled the rate of advance. In those cases where the least force was used, the drilling end had substantially exited the far side of the drywall before the threads controlled the rate of forward advance. In those cases where more force was applied, the threads controlled the rate of forward advance before the drilling end had fully penetrated the sheet of drywall. So, in some cases, the WallDriller drilled and tapped a thread simultaneously and in others it did not.

[72]            Mr. Salmon had an explanation for the ability of the WallDriller to drill and create threads simultaneously (though his first position was that drilling was complete before thread formation began):

108. I observe that only the exterior thread on the body secures the anchor in the drywall. The diminished broken part of the thread on the drilling end extends through the drywall after installation. I am not sure what function the diminished broken thread is supposed to provide during drilling. I assume that it is intended to tap a female thread in the drywall during drilling. Perhaps this helps maintain alignment during drilling or helps to slow the rate of advancement to one pitch per revolution before the exterior thread on the body engages the drywall ...

109. I have also observed, however, that the thread on the drilling of the WallDriller has a smaller crest diameter than the thread on the body and a smaller thread width. Therefore even if the smaller thread is not advanced optimally for female thread formation during drilling, any damage to the drywall around the hole will be within a circle smaller than the crest diameter of the exterior thread on the body. Therefore the larger exterior thread on the body is always able to reach farther out into the drywall to form a female thread after drilling is completed. The larger thread width on the body tends to correct any distortion or damage caused by the thread on the drilling end. The defendant's solution is to make the drilling end of its products the same length as the body, both being approximately equal to the thickness of drywall and to make the exterior thread on the body the dominant means of forming female thread in the drywall.

[73]            These comments show that thread cutting begins very early in the insertion process, even if the rate of advancement is not controlled by the threads until a later point in the process. Consequently, tapping begins before drilling is substantially complete. But the fact that it does, does not prove that the WallDriller does not drill.

[74]            The next issue is whether the WallDriller incorporates "means for allowing passage of an elongated fastener through and beyond the drilling end "or "means for engaging the fastener and for causing the drilling tip to deflect upon advancement of the fastener beyond the drill tip". In my view, it does not. I come to this conclusion in the knowledge that Mr. Salmon produced shadowgraphs showing the deflection of the tip of the WallDriller when a fastener was driven beyond the drill tip. However, I also consider the experiment conducted by Mr. Fappiano in which he demonstrated that once a fastener was driven past the drill tip of the WallDriller, the fastener could not be removed without turning the WallDriller out of the wall.

[75]            I also considered the evidence of Mr. McDuff who testified that the WallDriller was intended to be used with screws which did not extend beyond the drill tip. He testified that the bulk of WallDriller products are sold packaged with screws which do not extend beyond the drill tip. The defendant's largest customers are repackagers (who buy in bulk and package the product for resale to consumers), and industrial suppliers, who sell to the construction industry. Both of these are given detailed instructions as to the length of screw to be included with specific WallDriller products to ensure that the screw length does not exceed the length of the WallDriller with which it is sold. Some have their own screws and may sometimes mismatch particular WallDriller and the screws sold with them.    Sales at some locations are made without screws being bundled with the WallDriller but this has proven to be unsatisfactory.

[76]            I conclude that the WallDriller products in issue were never intended to be used with screws which would go beyond the drilling tip. I find that while it is possible to drive a fastener beyond the drill tip, deflecting it in the process, doing so reduces the utility of the WallDriller because the fastener cannot be removed without turning the WallDriller out of the wall. Consequently the anchor is not reusable and the removal of the fastened item leaves a gaping hole in the drywall. Both of these detract substantially from the utility of the WallDriller [Examination in Chief of Mr. McDuff, April 4, 2001, at pp. 83-84].

[77]            The defendant casts this in terms of improper use of a device not constituting infringement of a patent National Electric Products Corp v. Industrial Electric Products Ltd, [1940] 3 D.L.R. 193 (S.C.C.) at 195:

As to infringement, it cannot be disputed that if a purchaser follows the directions as to the manner in which the bushings are to be used there is no infringement. There is no ground for holding that this direction is colourable or that it is given in the expectation that it will be disregarded. In these circumstances I think the proper conclusion of fact is that the appellants' invention has not been taken.

[78]            The plaintiffs cited a series of authorities seemingly to a contrary effect. However, I do not believe that those authorities support the proposition that one can prove infringement by employing a device in a way which destroys or substantially impairs its utility.

[79]            The first authority relied upon by the plaintiff is Computalog Ltd. v. Comtech Logging Ltd. (1992), 44 C.P.R. (3d) 77 at 88 (FCA), reversing 32 C.P.R. (3d) 289;

"What governs is what the infringer does, not what he intends: Stead v. Anderson (1846), 14 L.J.C.P. 250, 2 W.P.C. 156. Infringement occurs when the essence of an invention is taken. The principle to be applied was stated in Lightning Fastener Co. v. Colonial Fastener Co.,[1932] Ex. C.R. 89 at p. 98; reversed [1933] 3 D.L.R. 791, [1933] S.C.R. 363">[1933] S.C.R. 363; reversed [1934] 3 D.L.R. 737, 51 R.P.C. 349, as follows:

In each case the substance, or principle, of the invention and not the mere form is to be looked to. It has been stated in many cases that if an infringer takes the principle and alters the details, and yet it is obvious that he has taken the substance of the idea which is the subject matter of the invention, and has simply altered the details, the Court is justified in looking through the variation of details and see that the substance of the invention has been infringed and consequently can protect the inventor. And the question is not whether the substantial part of the machine or method has been taken from the specification, but the very different one, whether what is done by the alleged infringer takes from the patentee the substance of his invention."

[80]            To the extent that this is a statement to the effect that infringement does not require that one intend to infringe, it does not assist in this discussion since the issue here is the plaintiff's use of the defendant's device in ways not contemplated by the defendant in order to establish infringement. In other words, no consumer would knowingly use the defendant's device in the manner which the Plaintiffs suggest.    To the extent that this text is a statement of the doctrine of substantial infringement, it has been overtaken by the Supreme Court's analysis in Free World Trust, supra.

[81]            The plaintiffs then cite authority to the effect that the possibility of use in a non-infringing manner does not avoid a finding of infringement. Bourgault Industries Ltd. v. Flexi-Coil Ltd.,[1999] 86 C.P.R. (3d) 221 at 233 (FCA), affirming 80 C.P.R. (3d) 1. In that case, the defendant argued it should not be found to infringe the plaintiff's patent because its device could be rendered non infringing by the addition of additional components. In this case, the plaintiff attempts to prove infringement by showing that a device can be forced to take a form which would cause it to infringe the patent, even if no consumer would have an interest in forcing it to take that form. It would be a curious turn of events if infringement of a useful device could be established by showing how the 'infringing' device can be made to be of little or no utility.

[82]            It may be that one can arrive at the same conclusion referring to the language of the patent. If the reference to " means for allowing passage of a fastener ... and means for engaging the said fastener ... and for causing the drilling end to deflect" is to have any significance, it must refer to elements designed or incorporated with a view to achieving those purposes. Where the particular elements can be forced into the conditions described in the patent but without having been designed or incorporated for that purpose, it cannot be said that they are means. Such elements could be said to facilitate the occurrence of the condition in question, but they could not be said to be means by which it is achieved.

[83]            I find that the WallDriller lacks means for "allowing passage of an elongated fastener through and beyond the drilling end" and means for "engaging said fastener and for causing said drilling end to deflect upon advancement of said fastener through said body". The question which arises is whether these are essential elements of the invention whose absence would negative a finding of infringement.    In my view, they are since the patent shows that the invention was specifically designed with at least two objectives in mind; it should be self drilling, and it should permit use of fasteners of indefinite length.

Further the present invention seeks to provide a threaded insert which has self drilling features, and which allows the use of screws of moderate to long length.

ITW patent at p. 2, lines 17 to 19.

[84]            The design of both embodiments of the invention makes specific and detailed provision for these elements. These elements include notch means in the first embodiment and the configuration of the drilling end in the second embodiment. A review of all of the independent claims of the patent discloses that each of them makes provision for the use of an elongated fastener. While it would have been possible to draw the patent in such a way that a matter of capacity, such as the length of the fastener which could be used, was not an essential element, this patent was drawn in such a way as to demonstrate that the inventor considered it to be an essential element of his invention. Consequently, the absence of the means provided for the use of an elongated fastener precludes a finding of infringement with respect to claim 1.

[85]            Since there is no infringement of claim 1, there can be no infringement of the claims which are dependent upon it. Trw Inc. v. Walbar of Canada Inc. (1986), 10 C.P.R. (3d) 184.

[86]            The next independent claim asserted is claim seven which is reproduced below for ease of reference:

7. An anchor for use in friable material comprising a generally hollow cylindrical body with a flanged end and a drilling end, said body having an exterior thread disposed thereon, said drilling end including notch means formed in said drilling end adjacent said body for allowing passage of an elongated fastener through and beyond said drilling end, said notch means creating a section of reduced cross sectional area in said drilling end to reduce resistance of said drilling end to bending

[87]            As noted earlier in these reasons, the difference between claims 1 and 7 is that while claim 1 refers generically to "means for engaging said fastener and for causing said drilling end to deflect upon advancement of said fastener through the body", claim 7 incorporates a specific mechanism by which the functions of engaging and causing deflection are to be made operational, namely notch means. The absence of the generic condition from the WallDriller logically means that the operational elements are also absent. But the fact that the generic elements are present would not necessarily mean that they are operationalized in the same way. Consequently, in the event that I am wrong about claim 1, I should consider whether the WallDriller infringes claim 7.

[88]            I find that the WallDriller does not have notch means which allow for passage of the fastener through and beyond the drilling end. Having rejected Mr. Salmon's analysis of notch means, I am left with the notion of a notch used in some instrumental fashion. The drawings of the WallDriller disclose a discontinuity on the thread, item 101 in Figure 1 of Annex 1, which could be characterized as a notch. But since it is on the thread which is disposed on the body, it is not part of the drilling end and therefore would not constitute notch means "formed in said drilling end".

[89]            The cleft at the tip of the WallDriller does reduce cross-sectional area and reduce resistance to bending in the tip of the WallDriller, but it is neither abrupt nor is it V-shaped. In my view, it would not constitute a notch as that term would be understood by a person skilled in the art. I am unable to find that the WallDriller incorporates notch means.

[90]            I find that there is no infringement of claim 7 and therefore no infringement of any claim which is dependent on claim 7.

[91]            In the result, I find that the claims of the patent asserted by the plaintiffs are not infringed.

[92]            I now turn to the Counterclaim and the allegations of invalidity.

[93]            The defendant has defended and counter-claimed alleging the invalidity of the patent on grounds of lack of inventiveness and overclaiming and lack of utility. The claims with respect to overclaiming and lack of utility are made in the alternative as can be seen by referring to paragraph 55A of the Fifth Amended Statement of Defence and Counterclaim which provides as follows:

55A. If the claims in suit other than claim 14 were construed by the Court broadly enough to encompass anchors which drill and tap simultaneously, then these claims would be invalid for lack of utility and for claiming more broadly than the invention in that they encompass anchors which fail to include an element which the disclosure of the Ernst patent indicates is essential to the operation of the alleged invention as envisaged by the named inventors: the requirement that drilling of the friable material be substantially completed prior to engagement of the thread to prevent simultaneous drilling and thread forming operations.

[94]            The matter of overbreadth of claims can be disposed of first. The defendant pleads that if the claims can be construed to include a device which drills and taps a thread simultaneously, then the claims are broader than the invention in that the inventor has specified that it is necessary that drilling and thread formation not be performed simultaneously. To the extent that the absence of this element is said to lead to a lack of utility, the success of the WallDriller is proof that such a device does function and is useful. As to the lack of an essential element, I take the inventor's comments about the separation of drilling and tapping as a design constraint as opposed to an essential element of the invention. The fact that the inventor chose not to bound his claims by a design constraint is to my mind simply proof that he took the words immediately preceding the claims of his patent at face value:

While the invention has been described in terms of two alternative embodiments, it is clear that many modifications, variations and alternatives will be apparent to those skilled in the art. Accordingly it is intended that such modifications, variations and alternatives be within the spirit and scope of the appended claims

[95]            Furthermore, the sequencing of drilling and tapping is not an essential element of the invention. The essential element of the invention is that it be self drilling and self tapping, not that drilling precede tapping. This is significant because overclaiming must be in relation to an essential element of the invention. See Lido Industrial Products Ltd. v. Teledyne Industries Inc. (1981), 57 C.P.R. (2^nd) 29 at 48 (F.C.A.). See also Ductmate Industries Inc. v. Exanno Products Ltd. (1984), 2 C.P.R. (3^rd) 289 at 302 (F.C.T.D.).

[96]            The major thrust of the defendant's argument with respect to invalidity is obviousness, or lack of inventiveness. The starting point of analysis is the presumption of validity found at section 43(2) of the Patent Act, supra. In order to overcome this presumption, it must be shown that a person skilled in the art, armed only with the common general knowledge of such persons, could arrive unassisted at the invention. In a frequently cited passage, Mr Justice Hugessen put it thus in Beloit Canada Ltee/Ltd. v. Valmet Oy (1986), 8 C.P.R. (3^rd) 289 at 294:

The test for obviousness is not to ask what competent inventors did or would have done to solve the problem. Inventors are by definition inventive. The classical touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right. The question to be asked is whether this mythical creature (the man in the Clapham omnibus of patent law) would, in the light of the state of the art and of common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent. It is a very difficult test to satisfy.

      (Emphasis added).

[97]            When presented with evidence by the defendant's expert that the invention is obvious, one is entitled to wonder why, if that is so, it was patented by the plaintiff and not by the defendant. Once again, Mr. Justice Hugessen said it best:

Every invention is obvious after it has been made, and to no one more so than an expert in the field. Where the expert has been hired for the purpose of testifying, his infallible hindsight is even more suspect. It is so easy, once the teaching of a patent is known, to say, "I could have done that"; before the assertion can be given any weight, one must have a satisfactory answer to the question, "Why didn't you?"

Beloit Canada Ltee/Ltd. v. Valmet Oy, supra, at 295.

[98]            The person to whom the invention is said to be obvious is the person skilled in the art, armed with the common general knowledge of such a person. That common general knowledge may include knowledge of particular patents which are sufficiently well known to have passed into general knowledge but does not include knowledge of all patents in the domain of the invention, even though these are considered to be public knowledge. General Tire & Rubber Company v. Firestone Tyre and Rubber Company Ltd (1972), 17 R.P.C. 457 (C.A.) at 482.

[99]            It is useful to contrast obviousness with anticipation. Anticipation is the claim that the invention has previously been disclosed to the public. Once again, one can do no better than to refer to the comments of Hugessen J.A. in Beloit, supra, at 297:

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

[100]        Consequently, when dealing with obviousness, one is not looking for prior disclosure of the invention in a single patent, for that would be anticipation. One is entitled to look at the patents which a skilled workman would discover in a reasonable and diligent search to determine whether the "mosaic" leads directly to the invention. General Tire and Rubber Co. v. Firestone Tyre and Rubber Co. Ltd., supra, at 499-500 (C.A.). What constitutes a reasonable and diligent search is a question of fact.

[101]        The other element in this analysis is the knowledge of the skilled workman or the person skilled in the art. It is worth keeping in mind the admonition set out in Almecon Industries Ltd. v.Nutron Manufacturing Ltd. (1997), 72 C.P.R. (3^rd) 397 at 401 :

Given the fundamental artificiality of the concept of the "skilled workman" we are not prepared to elevate to a principle of law a requirement that such a workman must in all cases be a maker and not a user of equipment. What is important is that he be a person who understands, as a practical matter, the problem to be overcome, how different remedial devices might work, and the likely effect of using them.

[102]        With that background, one turns to the prior art which is said to make the invention disclosed in the ITW patent obvious. While the defendant points to a number of patents from which they say the elements of the invention could be gleaned and combined by one skilled in the art but lacking inventiveness, the substance of the Defendant's argument involves 4 patents:

-the Rosenberg patent

-the Einhorn patent

-the Wills patent

-the Hottenroth patent

[103]        The defendant relied heavily upon the Rosenberg patent (U.S. 4,013,471) issued in 1977 in making its case as to obviousness. The Rosenberg patent is said to be in respect of fasteners particularly useful as orthopaedic screws. It describes a device which is to be threaded into bone, presumably to give the bone structural integrity. It consists of a hollow cylindrical body with an exterior thread, a flanged end and a distal end which includes means for passage of a rod through the distal end, means for engaging the rod and causing the distal end to spread when the rod is advanced through the body. [Affidavit of Nicholas Fappiano, at para. 238].     The spreading of the distal end is enabled by a plurality of side splits in the end of the body. The advancing rod essentially functions as a wedge driving the split portions of the distal end away from each other and into the surrounding material. It is similar to the invention in suit in that it has a hollow cylindrical body with a thread disposed on the outside of the body. It is self tapping in that it creates its own thread as it is turned into the bone. However, the internal rod does not operate as a fastener and the device does not create its own hole. Mr. Fappiano concludes that the device may require a pre-drilled hole. [Affidavit of Nicholas Fappiano, at para. 243]. I conclude that it does.

[104]        The defendant's expert Mr. Paavila testified as to the classification of the ITW patent and the Rosemberg patent in the classification system used by the United States Patent and Trademark Office (USPTO). This classification system is designed to classify the subject matter of patents. The purpose of the classification system is to categorize the common elements contained in various patents to assist in identifying relevant prior art. Mr. Paavila's evidence was that both patents came within class 411, which relates to "expanded, threaded, driven, headed, tool-deformed, or lock-threaded fasteners". This class includes a number of sub-classes and sub-subclasses. He estimated that there might be 100,000 patents classified under class 411 There are two dozen highest level subclasses, including subclasses 15 and 378. While the two patents do not appear in the same sub-subclasses, those in which they do appear are, directly or indirectly within subclasses 15 and 378.

[105]        Mr. Paavila's research showed that the Rosenberg patent was cited as prior art in a number of patent applications relating to wall anchors. He cites 6 patents in this regard, five of which are related patents issued to Giannuzzi for self drilling wall anchors in 1991, and one issued to Juric in respect of a tamper proof fastener in 1983. All of the Giannuzzi patents refer to Rosenberg in relation to sub-subclass 397 which, according to Mr. Paavila's diagram at Tab 6 of his affidavit, relates to externally threaded fasteners (378) with a separate head element (396) which are threadedly attached to a shank (397). The sixth patent refers to Rosenberg in connection with its classification under class 128/92 B.

[106]        This class, which is not referred to in Mr. Paavila's affidavit, is encountered again when one examines the 7 orthopaedic device patents which Mr. Paavila found classified in class 411. The first of those is a patent issued to Tsou for a surgical screw with counter-rotation prevention means. If one can assume that the bolded reference which appears first in field 52 of the patent which is headed U.S. Cl. (which I take to be U.S. Classification) is the primary classification for a patent, then the primary classification of the Tsou patent is class128/92. There are also references to two subclasses of class 411, neither of which was referred to by Mr. Paavila. One assumes that class 128/92 deals with something other than the subject matter of class 411. Of the six other patents, five have a primary classification of 606/73. All of these patents have a 411 classification in addition to what I have identified as the primary classification but in none of these cases is the subclass one of those referred to in connection with the ITW patent.

[107]        In the face of this evidence that the Rosenberg patent ought to be considered prior art in respect of the ITW patent, it is interesting to note that there is no evidence that the Rosenberg patent was discovered in the searches conducted by the defendant's experts. For example, when questioned about his patent searches, Mr. Fappiano did not identify the Rosenberg patent as one of the patents which he had found. [Cross-examination of Mr. Fappiano April 9, 2001 at p. 28, line 14 to p. 29, line 17]. Mr. Paavila, the defendant's expert on patent searches was given the Rosenberg patent and asked to comment on its relation to the ITW patent. He did not testify that a reasonable and diligent search of prior art in respect of drywall anchors would turn up the Rosenberg patent. He admitted that the examiners in the USPTO did not apply the Rosenberg patent to the ITW patent when it was applied for in the United States. It is one thing to find links when one is looking for them. It is another to find them when one is not looking for them.    One is therefore left to wonder to what extent the Rosenberg patent is relevant to the issue of prior art and obviousness. In my view, most, if not all, of what is said about the Rosenberg patent is ex-post-facto rationalization.

[108]        It is possible to identify what would have to be done to get from the Rosenberg invention to the invention disclosed in the patent in suit, but identifying the steps does not mean that a skilled workman lacking in inventiveness would think to do those things. The experts who testified did so from the knowledge of the end product. By definition, a skilled workman would not know the end product. Consequently a mere enumeration of the steps to be taken to modify the Rosenberg device so that it comes within the terms of the ITW patent does not prove that the invention is obvious.

[109]        In my view, the inventive element in the ITW patent, and that which the Rosenberg device lacks is the self-drilling feature. It is of the essence of the ITW patent that the device drills its own hole and eliminates hole drilling as a separate operation. The embodiments of the Rosenberg device shown in the patent would not lend themselves to the addition of a drilling tip since the end of the devices are split to allow for deflection into the surrounding material. Furthermore since the entire Rosenberg device is embedded in bone, any additional material would have to remain embedded in bone as well. This would teach away from the ITW patent which, in its first embodiment, relies upon the cavity behind a sheet of drywall to allow for deflection of the drilling tip, an operation which would be impossible for a device which is completely embedded in a material such as bone.

[110]        The defendant's written argument includes a detailed analysis of every claim of the patent showing each patent which they claim could be seen as making a particular feature obvious. But the fact that two ideas can be juxtaposed does not mean that they can be combined into one useful concept. Given the notion of an automobile, and the fact that mechanical wings are within the common general knowledge of mechanical engineers, one could not say that a flying car was obvious and unpatentable. In my view, it is insufficient to identify the elements which the ITW patent and some other patent have in common and to suggest that elements which the second patent lacked were in the common general knowledge of a person skilled in the art. The question is whether starting from the second patent, in this case the Rosenberg patent, a skilled workman "would come directly and without difficulty to the solution taught by the patent". There is no evidence before me that there is a means of directly and without difficulty adding a drilling tip to a device configured like that described in the Rosenberg patent.

[111]        If it were sufficient to simply identify the existence of the various elements which might be added to an existing device to convert it into the invention, no combination patent could ever be safe from challenge for the essence of a combination patent is that "the novelty results from the idea of putting together different essential elements, all previously known, in a particular combination." Beloit Canada Ltd. v. Valmet-Dominion Inc supra at p. 335.

[112]        The second patent relied upon by the defendant in support of its claim that the invention in the ITW patent was obvious is the Hottenroth patent (U.S. 1,138,219). That patent describes an expansible screw bolt or nail. It consists of a cylinder which has slits along its length and a tapered inner bore. The cylinder, which may be threaded or smooth, is inserted into a pre-drilled hole of appropriate size, or is hammered into a material, including a friable material such as plaster. A metal pin is then hammered into the tapered inner bore which forces the walls of the cylinder outwards into the surrounding material holding the cylinder and the pin fast. While the Hottenroth patent contains some elements of the ITW patent, it lacks others such as a high thread, and a fastener which extends beyond the distal end.    Another important missing element is the drilling end which the defendant says, once again, was within the common general knowledge of persons skilled in the art at the relevant time. The question is whether such a person, considering the Hottenroth patent would be directly led to the addition of a drilling end. The question becomes how one attaches a drilling end to the end of a cylinder which is designed to split and expand upon the introduction of the pin. I was not directed to any type of drilling end which could easily and directly be adapted for use with the invention described in the Hottenroth patent. While the Hottenroth patent may be prior art, it is not prior art which would make the invention described in the ITW patent obvious.

[113]        The next patent relied upon by the defendant is the Wills patent (U.S. 126,366). The Wills patent describes a self-boring wood screw consisting of a wood screw with a spoon shaped point which forms a boring and tapping device, together with a central cavity through the body of the screw which allows passage of the material cut away by the spoon shaped point. Mr. Fappiano admitted that the Wills device was not designed as a fastener and would not work well in drywall because it had a low thread. Furthermore, while it could conceivably receive a fastener, it was not designed to receive and hold a fastener as it lacked axially oriented teeth. In order to get from the Wills device to the ITW patent, one would have to add a high thread, means for engaging a fastener, and a fastener. Could a skilled person adapt the Wills device for use as an anchor incorporating all the elements of the ITW patent, without demonstrating inventiveness?

[114]        The defendant has shown that the use of a high thread in drywall was part of the common general knowledge of persons skilled in the art at the material time [p. 91 Defendant's Written Argument] as were fasteners and means for engaging fasteners. But given the known difficulty of combining drilling and tapping, there is some question as to whether the device would work without the addition of other refinements not taught by the Wills patent. Support for this view is found in Mr. Fappiano's evidence that there is no commercial embodiment of the Wills patent [Cross examination of Nicholas Fappiano April 9, 2001, p. 186, lines 5-6]. In my view, the Wills patent does not make the invention described in the ITW patent obvious.

[115]        The last patent relied upon by the defendant on the issue of obviousness is the Einhorn patent (U.S. 4,322,194) issued in 1982, only 2 years before the material date. It is described as follows in the opening words of the patent:

A unitary hollow plastic screw anchor which is capable of being hammered or otherwise driven into a hollow wall, with a weakened separation plane adjacent the entrance portion which is sufficiently strong to hold together during installation in the wall, and sufficiently weak to split apart when a screw is inserted into the installed anchor.

[116]        It is clear from this that the Einhorn device does not have a drilling tip. It addresses the problem of pre-drilling a hole by providing a device which can be hammered or otherwise driven into a wall. It accepts a fastener in an interior bore; the advancement of the fastener causes the anchor to deflect along the separation plane with the deflecting pieces compressing the wall of the material into which the anchor is driven. For obvious reasons, the invention does not have a high exterior thread.

[117]        I find persuasive the argument made by the plaintiffs with respect to Einhorn and the question of obviousness:

It is submitted that one must ask the question set out by Justice Hugesson in Beloit: if it was so obvious to make the self-drilling anchor described in the ITW Patent, why didn't Einhorn do it only a few years earlier? Each of the prior art references on which the defendant relies was available to Einhorn in 1979 when he filed his patent application. Most had been in the literature for decades.

Plaintiff's Written Argument, at para. 160.

[118]        I find that the Einhorn patent and the other prior art cited by the defendant does not establish that the invention described in the ITW patent is obvious.     I have not examined every claim in light of every patent, as did the defendant in its Written Argument. If the element of a drilling end is absent from the prior art upon which the defendant relies, and if, as I have found, one could not add a drilling end without the exercise of inventiveness (if at all), then it is not necessary to review all the other elements of every claim. Every independent claim of the patent contains a reference to a drilling end. The absence of such an element is fatal to a claim of obviousness.

[119]        The Plaintiff's position is that any doubt as to obviousness is removed by the commercial success of the commercial embodiment of the invention. The defendant has admitted that the E-Z ANCORs entered as Exhibits 1 to 4 have the following characteristics:

a. They are anchors for use in friable material;

b. They have a generally hollow cylindrical body;

c. They have a flanged end;

d. Their bodies have an exterior thread;

e. They have a drilling end;

f. They have means for allowing passage of an elongated fastener through and beyond the drilling end;

g. They have means for engaging an elongated fastener and for causing the drilling end to deflect upon advancement of the fastener through the body;

h. Their flanged ends have a Phillips drive recess;

i. Their drilling ends have a generally flat pointed extension of the body;

j. The body of each has a generally cylindrical bore adapted to receive a threaded elongated fastener; and

k. Their generally cylindrical bore has a surface interrupted by axially oriented teeth.

ITW's Request to Admit and Cobra's Response thereto, Request numbers 17-25, 27-28, 32-40, 42-43, 47-55, 57-58, 62-70, 72.

[120]        The devices sold by the plaintiffs are therefore within the scope of Claims 1 to 6 of the ITW patent. Evidence of the commercial success of those devices is said to be evidence of the commercial success of the invention. In fact, the sales history of the products in question puts this conclusion in question. The products were first sold in the United States in 1984. So as to protect the confidential nature of the evidence led, I will treat the first year's sales (both in terms of units sold and dollars of sales revenue) as equal to 100. Subsequent information will be by a number arrived at by multiplying 100 by the ratio of those sales to the first year sales numbers. So, if in a subsequent year, sales by unit or revenue were twice as high as in the first year, they would be indicated by 200.

[121]        With that in mind, the United States sales information from 1984 to 1986 is as follows:

Year                                Units                  US $

1984                               100                    100

1985                               72                    69

1986                               24                    24

[122]        From 1984 to 1986, E-Z Ancor products were marketed by a party at arm's length from the plaintiffs. When it became apparent that this party was not actively marketing the product, ITW decided to market the products itself. From 1986 to until 1996, sales grew from their low of 24 to 4,000 units and from $US 24 to approximately $US 5020 (all results calculated as above).

[123]        The plaintiffs' products were first sold in Canada in 1986. There are essentially four models of the product sold in Canada, the original metal E-Z ANCOR, a plastic E-Z ANCOR, a smaller plastic version called the E-Z LITE and a metal E-Z LITE. Canadian unit sales of these products from 1992 to 2000. They are summarized below using the same method of calculation (and the same base so that the number are directly comparable) but limited to units sold only.

1992 - 292                     1995 - 362                     1998 - 622

1993 - 295                     1996 - 503                     1999 - 630

1994 - 460                     1997 - 539                     2000 - 580

[124]        The plaintiffs' representatives maintained that they did not market E-Z ANCOR products any differently than they did any other product, but this does not mean that they did nothing differently than did the previous distributor of the product. Had they not intended to do so, they would not have resumed direct control of marketing. Market conditions may have changed in the years in question with periods of greater building activity contributing to increased sales, without any greater marketing effort. Marketing of the product in Canada has always been done by the plaintiffs.

[125]        Commercial success of the invention can be evidence of inventiveness responding to a real need in the marketplace. But, commercial success can arise from many causes other than inventiveness, such as clever marketing:

But commercial success of this type provides only a presumption and not a controlling principle.

The essential point -- and one that is often overlooked -- is that commercial success is relevant only in border-line cases.

Commercial success is often relied upon as demonstrative of invention. It has been said that the merit of a patent rests largely upon the result produced and, though the invention be small, the court will be anxious to uphold the patent if it involves the solution of a difficulty or if the result produced is of great benefit and has achieved commercial success. It is not conclusive but is at least impressive.

Then, too, commercial success may be explained by many factors and reasons having little, if anything, to do with the presence of inventive genius. These factors may be such as low cost price, mere novelty, commercial enterprise, the creation of a new demand by style or fashion trends, the mere production of a superior article by better workmanship with nothing of an inventive nature involved, or by improvements subsequent to the date of the patent.

attributed to Wright v. Brake Service Ltd., [1925] Ex. C.R. 127 at 130-131; affirmed [1926] 3 D.L.R. 502, [1926] S.C.R. 434">[1926] S.C.R. 434. in Rothmans, Benson & Hedges Inc. v. Imperial Tobacco Ltd. (1993), 47 C.P.R. (3^rd) 188 at 205 (F.C.A.)(QL version).

[126]        The significant growth in U.S. sales from 1987 to 1996, after the intial decline in sales from 1984 to 1986, is evidence of the effect of marketing and not evidence of inventiveness. Sales growth in Canada has been strong and relatively consistent but one cannot disregard the effect of the plaintiffs'marketing efforts.

[127]        Commercial success does not help the plaintiff. In fact, in one case, the very fact of having recourse to an argument of commercial success was taken as an admission of weakness. See Atlas Copco Aktiebolag v. CIL Inc. (1986), 10 C.P.R. (3^rd) 145 at 163 where Cullen J. remarked:

Mention therefore of commercial success served to focus my attention on the fact that I was probably dealing with a borderline case, which would require careful attention being paid to the description and claims, and particularly whether they had in fact been an invention in the first place.

[128]        I did not draw the same conclusion as did Cullen J. from the fact that evidence of commercial success was being led.

[129]        In the end result, I find that among the essential elements of the claims of the patent in suit are the presence of a drilling end and the ability to use a fastener longer than the body of the anchor due to the ability of the distal end to deflect to allow passage of a fastener. I find that the defendant's device(s) do not infringe the claims in suit because, while they can be made to allow passage of a fastener beyond the distal end, this renders the device less useful and is essentially an abuse of the device. I find that the claim of invalidity on the basis of obviousness, or lack of inventiveness, also fails because while most, if not all of the elements of the invention, were within the common general knowledge of the person skilled in the art, there was no obvious, non-inventive way of combining them as the inventor did to achieve a useful result.

[130]        The claim of infringement will be dismissed; the counterclaim alleging invalidity will also be dismissed. The plaintiff is entitled to a declaration that its patent is valid and subsisting as regards the defendant. The defendant, plaintiff by counterclaim, is entitled to a declaration that its WallDriller and Picture Hook products do not infringe the ITW patent. Since each party has achieved a part of the relief which it sought, this is effectively a case of divided success. For that reason, there will be an order that each party shall bear its own costs.

            "J. D. Denis Pelletier"           

   Judge