[1] This is a patent infringement action commenced by Quadco Equipment Inc. (the "Plaintiff") against Timberjack Inc. (the "Defendant"). The Plaintiff alleges that since some time after July 13, 1995, the Defendant has made, or has had made for it, used, distributed, sold, promoted, marketed and advertised in Canada an accumulator felling head incorporating the invention described in the claims of Canadian Letters Patent 1,103,130 (the ‘130 patent) held by the Plaintiff. In particular, the Plaintiff claims that the Defendant has infringed its exclusive rights by making, using and selling in Canada an accumulator felling head having the features as set out in claims 1, 4 and 7 of the ‘130 patent.
[2] Felling heads are attachments placed on the front of machines like a snow plow or at the end of a boom like a backhoe.
[3] The Defendant alleges that its accumulator felling head does not incorporate the alleged invention described in the claims of the patent, and as a result, the Defendant has not infringed any valid exclusive rights of the Plaintiff under the ‘130 patent.
[4] The Defendant also challenges the validity of the ‘130 patent on the grounds of obviousness, overbreadth, and lack of novelty and utility.
BACKGROUND
[5] The Plaintiff is engaged in the business of developing, designing, manufacturing and selling forestry products, and in particular tree felling equipment.
[6] The Defendant is engaged in the business of manufacturing and selling forestry products and equipment.
[7] The ‘130 patent was issued on June 16, 1981 to Logging Development Corporation for a period of seventeen years, granting it exclusive rights to make, construct, use and sell to others in Canada an accumulator felling head incorporating the invention described in claims 1 to 7 of the patent.
[8] The patent was assigned to Quadco on July 13, 1995, and the assignment was duly registered in the Patent Office under no. 1,429,002 on October 12, 1995. The patent expired on June 16, 1998. The Plaintiff seeks damages in respect of devices sold by the defendant between the date when the plaintiff first acquired the patent and until the date the patent expired.
[9] There are only three claims in issue, claims 1, 4 and 7. They read as follows:
[10] Claim 1: An improved accumulator arm means in a device for gathering and retaining a plurality of trees, said improved accumulator arm means comprising a first arm mounted on a frame of the device for swinging through an arc about a first axis, a finger member swingably mounted on the free end of the arm, a hydraulic piston cylinder unit connected at one end thereof to the frame and at the other end to a lug member pivoted for free movement about said first axis, and a link member pivotally connected adjacent opposed ends thereof respectively to said lug member and said finger.
[11] Claim 4: A device for severing trees and having an improved accumulator arm means thereon for use in accumulating trees as they are severed from their roots comprising a frame, a tree severing device mounted on said frame and having a first jaw means openable and closeable relative to a first area respectively for receiving and severing the trunk of a standing tree; means for supporting the butt ends of trees severed from their roots in a second area offset laterally from said first area and which includes a shelf secured to said frame and projecting therefrom; a first sweep arm pivotally mounted on said frame for movement about a first axis to sweep through an arc traversing said first area and at least part of said second area to shift trees after they have been severed from their roots from said first area to second area; and accumulator arm means comprising a second arm pivotally mounted on said frame for movement about a second axis; a finger member swingably mounted on the free end of said second arm to sweep through an arc traversing a major portion of second area and including that portion traversed by said first sweep arm; a hydraulic piston cylinder unit connected at one end thereof to said frame and at the other end to a lug member pivoted for free movement about said second axis, and a link member pivotally connected adjacent opposed ends thereof respectively to said lug member and said finger member.
[12] Claim 7: A device as defined in claims 4, 5 or 6 wherein said first and second pivot axes are parallel and spaced apart from one another.
[13] Claim 1 is directed to an "accumulator arm" for accumulating trees in a device for gathering and retaining trees as illustrated in Appendix "A". Claim 4 is directed to the accumulating arm of claim 1 in a device for severing trees and includes other elements. Claim 7 is dependent from claims 4, 5 or 6. As claims 5 and 6 are each dependent on claim 7, claim 7 will only be infringed if claim 4 is infringed. For this proceeding, it is not necessary to consider the additional limitations that appear in claims 5 and 6. Claim 7 adds (to claims 4, 5 and 6) the limitation that the sweep arm and accumulator arm pivot about parallel and spaced apart axes.
[14] The defendant has admitted that he has manufactured and sold a felling head having an accumulator arm as illustrated in Appendix "B".
ISSUES
What is the proper construction to be placed on the claims of the ‘130 patent. Is there infringement of the ‘130 patent by the defendant?
If so, is the ‘130 patent valid?
ANALYSIS
THE CONSTRUCTION OF THE CLAIMS
A) Principles
[15] Before determining if the Timberjack machine infringes the ‘130 Patent, the claims of this patent must be construed. The Supreme Court of Canada has stated that this should be done in an informed and purposive way (Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R. 1024; Whirlpool Corp. v. Camco Inc., [2000] 2 S.C.R. 1067).
[16] The purposive construction approach was elaborated in the English case of Catnic Components Ltd. v. Hill & Smith Ltd., [1982] R.P.C. 183 (H.L.). In that case, Lord Diplock explained what purposive construction was and framed the question to ask in each case the following way: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used would understand that strict compliance with a particular descriptive word or phrase in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked. This approach was adopted in O'Hara Manufacturing Ltd. v. Eli Lilly and Company (1989), 26 C.P.R. (3d) 1 (F.C.A.) and re-affirmed in Free World Trust, supra and Whirlpool Corp., supra.
[17] The purposive approach requires that the Court identify, with the assistance of the skilled reader, the particular words or phrases in the claims that describe what the inventor considered to be the "essential" elements of his invention, (Whirlpool Corp., supra at para. 45).
[18] The language that an inventor uses to identify the claims is frequently compared to a fence within which he or she claims protection from trespass and outside of which others are free to roam. The interpretative task of the Court in constructing the claims is to distinguish the essential from the inessential, (Whirlpool Corp., supra at para. 15).
[19] In the case at bar, the claims must be construed based on the expert evidence given at trial as to the meaning of the terms used, and the understanding that these terms would convey at the date of the patent to an ordinary worker skilled in the art of accumulator felling heads and possessing the common knowledge of people engaged in that field, (Free World Trust, supra at para. 20). This ordinary worker is further defined in Whirlpool Corp., supra at para. 53 as a skilled individual sufficiently versed in the art to which the patent relates to enable him on a technical level to appreciate the nature and description of the invention: H.G. Fox, The Canadian Law and Practice Relating to Letters Patent for Inventions, 4th ed. (Toronto:Carswell, 1969) at 185.
[20] In Free World Trust, supra at para. 31, Binnie J. made the following propositions that summarize his approach to claim construction:
(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.
[21] Because the financial consequences of the infringement of a patent are potentially severe, it is important to limit the uncertainty with respect to the language of the claims so that members of the public may know where they can go with impunity, (Free World Trust, supra at paras. 41-42). This is done by adhering to the language of the claims which in turn promotes both fairness and predictability. Binnie J. explains that:
[t]he patent owner, competitors, potential infringers and the public generally are thus entitled to clear and definite rules as to the extent of the monopoly conferred. This in turn requires that the subjective or discretionary element of claims interpretation (e.g., the elusive quest for "the spirit of the invention") be kept to the minimum, consistent with giving "the inventor protection for that which he has actually in good faith invented" (Western Electric Co. v. Baldwin International Radio of Canada, [1934] S.C.R. 570">[1934] S.C.R. 570, at 574). Predictability is achieved by tying the patentee to its claims; fairness is achieved by interpreting those claims in an informed and purposive way, (Free World Trust, supra at para. 43).
[22] By proceeding this way, the scope of the monopoly remains a function of the written claims but flexibility and fairness is achieved by differentiating the essential features ("the pith and marrow") from the unessential, based on a knowledgeable reading of the whole specification through the eyes of the skilled addressee, (Whirlpool Corp., supra at para. 48).
[23] This assures the patentee that the claims will be read in light of the knowledge provided to the court by expert evidence on the technical meaning of the terms and concepts used in the claims, (Free World Trust, supra at para. 52) . The fact remains however that strict compliance with a word or phrase will be considered an essential requirement by the courts unless it is obvious that the inventor knew that a failure to comply with that requirement would have no material effect on the way the invention worked. A court must interpret the claims; it cannot redraft them. When an inventor has clearly stated in the claims that he considered a requirement as essential to his invention, a court cannot decide otherwise for the sole reason that he was mistaken, (O'Hara Manufacturing, supra at 7).
[24] In Free World Trust, supra at para. 51, Binnie J. added that the public is entitled to rely on the words used by the inventor provided the words used are interpreted fairly and knowledgeably. It is to the inventor's own detriment if he has added unnecessary or troublesome limitations:
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 entitled to rely on the words used provided the words used are interpreted fairly and knowledgeably.
[25] The non-essential elements of a claim may be substituted without affecting the claim. This means that there will be infringement when some modifications have been brought to an invention but its essential elements remain. Binnie J. explains that such will be the case when an element was clearly not intended to be essential or when a skilled addressee would have appreciated that a particular element could be substituted without affecting the working of the invention:
For an element to be considered non-essential and thus substitutable, it must be shown either (i) that on a purposive construction of the words of the claim it was clearly not intended to be essential, or (ii) that at the date of publication of the patent, the skilled addressees would have appreciated that a particular element could be substituted without affecting the working of the invention, i.e., had the skilled worker at that time been told of both the element specified in the claim and the variant and "asked whether the variant would obviously work in the same way", the answer would be yes: Improver Corp. v. Remington, supra, at p. 192. In this context, I think "work in the same way" should be taken for our purposes as meaning that the variant (or component) would perform substantially the same function in substantially the same way to obtain substantially the same result.
[26] Binnie J. also refers to Hoffmann J. who, in Improver Corp. v. Remington Consumer Products Ltd., [1990] F.S.R. 181 at 182, attempted to reduce the essence of the Catnic analysis to a series of concise questions:
(i) Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no: --
(ii) Would this (i.e.: that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art? If no, the variant is outside the claim. If yes: -
(iii) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If yes, the variant is outside the claim.
[27] In order to determine what the inventor's intention is concerning a particular word or phrase in the claim, it is permissible to look at the whole specification, including the drawing, but not to enlarge or contract the scope of the claim as written and thus understood, (Whirlpool Corp., supra at para. 52).
[28] The onus is on the patentee to establish known and obvious substitutability at the date of the publication of the patent. If the patentee fails to discharge that onus, the descriptive word or expression in the claim is to be considered essential unless the context of the claims language otherwise dictates, (Free World Trust, supra at para. 57).
B) The expert evidence
i) The witnesses
[29] The Plaintiff called on the expertise of François Huard, an engineer member of l'Ordre des ingénieurs du Québec and the Professional Engineers of Ontario. He completed his undergraduate studies in the area of engineering science in 1975. Mr. Huard has practical experience in the field of forestry operations and forestry equipment manufacturing. Notably, he has managed the research and development and engineering departments of Tanguay Industries Ltd., a company producing forestry equipment such as feller bunchers. Mr. Huard's experience also includes the maintenance and upholding of existing patents and the evaluation of new innovations for suitability for patent investigation in the field and with competitors to ascertain patent infringement. Since 1998, Mr. Huard has been co-owner of Pan-O-Starr, where his responsibilities include the design, equipment specification, financing and construction of a greenfield wood transformation plant. Finally, Mr. Huard has also been an internal consultant with the Roche Ltd. consulting group since October 2000, where his responsibilities have been to undertake pre-feasibility, feasibility, business plans and project management for the construction of plant facilities of both mobile and stationary equipment for the industrial, forestry and wood transformation division of the company.
[30] The experts testifying for the defendant were Mr. John McPhee, Mr. Al Wildey, and Mr. Maurice Micacchi.
[31] Mr. McPhee is an Associate Professor of Systems Design Engineering at the University of Waterloo. He is also cross-appointed to the Department of Mechanical Engineering at the same university. In 1990, he received a Doctor of Philosophy in Mechanical Engineering. His current research activities are directed towards the kinematics and dynamics of mechanical systems, with application to mechanisms, robotics, and vehicles. Mr. McPhee has received a couple of awards for his work and has authored and co-authored a number of articles concerning the kinematics and dynamics of mechanisms. He is a member of many professional associations and also reviews articles concerning mechanism and machine theory for a number of journals. Mr. McPhee has worked as an Engineering Consultant on projects for the Canadian Space Agency, F.A.G. Bearings, Diemaco Inc., and Techform Products Limited. Finally, in 1996, he undertook a kinematic analysis, static analysis, and optimization study of a feller-buncher for Timberjack Inc.
[32] Mr. Wildey is a professional engineer who has worked in the tree harvesting industry since 1963. He has been responsible for the design of various machines for tree harvesting and is named inventor in 15 Canadian patents, 13 U.S. patents and two pending Canadian patent applications relating to the timber industry. Mr. Wildey is currently the Manager of Special Projects for Timberjack Inc.
[33] Mr. Micacchi is a professional engineer and has worked at designing tree harvesting equipment for 12 years, six of those years being dedicated to the design of felling heads such as those in issue in this proceeding. Mr. Micacchi is currently employed by Timberjack Inc. as a Research and Design Manager in its Track harvesting Division. He supervises a team of engineers dedicated to designing tree harvesting equipment. Notably, Mr. Micacchi is the person primarily responsible for the design of the Timberjack accumulator arm that the Plaintiff alleges infringes the ‘130 Patent.
ii) The evidence
Evidence of Mr. Huard
Claim 1
[34] On behalf of the Plaintiff, Mr. Huard described the essential elements of claim 1 of the ‘130 patent as follows:
a) An accumulator arm mounted on a frame of the apparatus which swings through an arc about a first axis and lug member of the accumulator structure;
b) A finger member mounted by pin on the free end of the accumulator arm;
c) A hydraulic piston cylinder connected at one end to the frame post and at the other end to a lug member pivoted for free movement about the said first axis of the accumulator structure;
d) A link member pivotally connected adjacent opposed ends thereof by pins (535 and 536) respectively to a lug member and finger member of the accumulator structure.
[35] For Mr. Huard, the essential elements of claim 1 of the ‘130 patent describe a two axis operating principle for the accumulator structure, namely:
a) A first axis being in the area comprised of a mechanism made up of pin (502) and lug member (532), which includes two pins;
b) A second axis being in the area comprised of a mechanism made up of pin (505) and link (533), which includes pin (536).
[36] Mr. Huard stated that there is no reference in the ‘130 patent claims which requires the lug member to pivot co-axially around pin (502), which is the area of the first axis of the accumulator structure; rather, claim 1 explicitly states that the lug member (532) is pivoted for free movement about a first axis of the accumulator structure.
[37] Concerning Mr. McPhee's opinion that the hydraulic cylinder is a non-essential element of claim1, Mr. Huard responded that the inventor saw the necessity of using a hydraulic cylinder to operate the accumulator arm, as the other known power sources would not be effective.
[38] Mr. Huard explained that the following characteristics can be found in the defendant's feller head accumulator device:
a) An accumulator arm mounted on the frame of the apparatus which swings through an arc about a first axis of the accumulator structure;
b) A finger member mounted by pin on the free end of the accumulator arm;
c) A hydraulic piston cylinder connected at one end to the frame post and at the other end to a lug member identified by the defendant as a crank pivoted for free movement about the said first axis of the accumulator structure;
d) A link member pivotally connected adjacent opposed ends thereof by pins (535 and 536) respectively to the said crank and a finger member of the accumulator structure.
[39] Mr. Huard also testified that the defendant's feller head device retains the same two axis operating principle of the accumulator arm structure found in the ‘130 patent, namely:
a) A first axis being in the area comprised of a mechanism made up of pin (502) and lug member (532), which includes two pins;
b) A second axis being in the area comprised of a mechanism made up of pin (505) and link (533), which includes pin (536).
[40] In Mr. Huard's opinion, the mechanism of the first axis is simply extended by adding an extra pin. He also emphasizes that there is no reference in the ‘130 patent claims which requires the lug member to pivot co-axially around pin (502), which is the area of the first axis of the accumulator structure; rather, claim 1 explicitly states that the lug member is pivoted for free movement about a first axis of the accumulator structure.
Evidence of Mr. McPhee
Claim 1
[41] For the defendant, Mr. McPhee testified that there are three main elements in claim 1:
1. A frame
2. A mechanism consisting of four parts that are arranged as follows:
i. A "first arm" that swings about an axis that is fixed in the frame of the felling head.
ii. A "lug member" that pivots about the same frame-fixed axis as the first arm.
iii. A "finger member" that is pinned to the free end of the first arm.
iv. A "link member" that is pinned at its two ends to the lug and the finger.
3. A hydraulic cylinder that provides an actuating force between the frame and the lug.
[42] Mr. McPhee stated that the frame is essential as a base for the mechanism. The mechanism, including both the number of constituent parts (4) and their pattern of connectivity (or "topology"), is also an essential element of claim 1. Variation to the number of parts or to their connectivity would alter the nature of the mechanism. He did not consider the hydraulic cylinder to be an essential element of claim 1.
[43] Mr. McPhee objected to the changes that Mr. Huard brought to the wording that appears in claim 1.
[44] He also testified that Mr. Huard's two-axis operating principle is based upon a flawed definition of the word "axis". Axis should be defined as a line, not an area.
[45] Mr. McPhee explained that although the number of parts making up the mechanism in the accumulating arm of the Timberjack machine is the same as that specified in claim 1 (four), the connectivity of these parts is different from that specified in the claim. This difference has a material effect on the operation of the mechanism and results in a materially different mechanism from the one claimed.
[46] In Mr. McPhee's opinion, the lug of the Timberjack machine is pinned to the moving arm, not the frame. Contrary to what is the case for the ‘130 patent, specifying the length of the hydraulic actuator in the Timberjack machine does not uniquely determine the rotation of the lug; the lug is still free to rotate relative to the moving first arm. The Timberjack mechanism is known as a "Watt-1 six-bar mechanism", which is fundamentally different from a four-bar mechanism. This six-bar mechanism is comprised of the frame and five moving parts: the hydraulic actuator, the lug, the first arm, the link, and the finger.
[47] The added complexity of the Timberjack mechanism over the ‘130 patent provides the design engineer with more options to consider in searching for the optimal design of the mechanism. It gives a significant advantage over the design in claim 1 of the ‘130 patent by permitting the use of a stronger and/or lighter first arm.
[48] Mr. Micacchi and Mr. Wildey adopted the opinion of Mr. McPhee on the construction of the claim.
iii) Assessment of the expert evidence
[49] Counsel for the plaintiff, Mr. Carriere, argued that the only independent expert witness having knowledge of forestry equipment including "felling devices" was Mr. Huard. Mr. Carriere explained that the Whirlpool decision teaches us that claims construction of a patent should be interpreted through the eyes and knowledge of a worker of ordinary skill in the field to which the patent relates. He argued that Mr. McPhee is an academic who does not have the practical experience in the field that Mr. Huard has. Mr. Carriere further objected to the expertise of Mr. Micacchi and Wildey because they are employees of the defendant. Thus, in the Plaintiff's submission, Mr. Huard represents the only worker of ordinary skill in the field.
[50] While I agree with Mr. Carriere that the Whirlpool, supra decision emphasizes the importance of relying on skilled individuals sufficiently versed in the art to which the patent relates, the Supreme Court, in my opinion, was merely addressing the difficulty of the "dictionary approach" and the use of grammarians and etymologists to construe the words of a claim. I am unable to read in the decision an invitation to discard the evidence of highly qualified experts in the field in favour of the evidence of less qualified ones.
[51] I was impressed with the quality of Mr. McPhee's expertise in the present case. Not only does this expert have exceptional academic credentials, but he also offered relevant practical expertise with mechanical arms. He particularly provided to the Court very helpful testimony in understanding the functioning of the "accumulator arm" in both the ‘130 patent and the Timberjack devices.
[52] In contrast, Mr. Huard's explanation of the "accumulator arm" was confusing and inconsistent. The addition of the word "in" in paragraph 28(a) of his initial report simply amplified his misconception about the nature of an "axis".
[53] With respect to the expert evidence of Mr. Micacchi and Wildey, I find the objection of Mr. Carriere unfounded. While I recognize that they are employees of the defendant, there is no doubt that they are qualified to give expert evidence. Both witnesses testified in a straightforward and competent manner, and I did not detect any bias in either experts' testimony.
C) FINDINGS
Essential elements of claim 1
[54] As stated above, I am satisfied that Mr. McPhee provided the Court with the common knowledge of a worker skilled in the art to which the patent relates. Accordingly, I adopt his view that the elements of claim 1 consist of:
1. A frame
2. A mechanism consisting of 4 parts that are arranged as follows:
i. a "first arm" that swings about an axis that is fixed in the frame of the felling head.
ii. a "lug member" that pivots about the same frame-fixed axis as the first arm.
iii. a "finger member" that is pinned to the free end of the first arm.
iv. a "link member" that is pinned at its two ends to the lug and the finger.
3. A hydraulic cylinder that provides an actuating force between the frame and the lug.
[55] Mr. McPhee considered these elements with the exception of the hydraulic cylinder to be essential. For Mr. McPhee, alternatives to hydraulic cylinders exist and could offer substitutions. However, in cross-examination, Mr. McPhee admitted that such alternatives would be impractical, (Transcript, 28 November 2001 at 90-91). Thus, I am not ready to find the hydraulic cylinder to be non-essential. I adopt Mr. Carriere's opinion that the hydraulic cylinder is an essential element of claim 1. Thus, all elements described above are essential elements of claim 1.
[56] I accept Mr. McPhee, Mr. Micacchi and Mr. Wildey's opinions that the proper interpretation of claim 1 requires that the lug and the inner arm be pinned to the frame at the same point, i.e., that the lug must pivot about the same axis so that the lug is free to pivot independently of the movement of the inner arm. This requires that the lug be connected through a pin joint to a pin which coincides with that axis. During his examination, Mr. McPhee explained as follows:
Q Can you show us in the claim where you see the wording that it requires the lug and the inner arm to be pivoted on the same axis ?
A It's where you have "a first arm mounted on a frame of the device for swinging through an arc about a first axis". Then we have "a lug member pivoted for free movement about said axis".
It's very clear that this axis and that one are one and the same.
Q The claim also uses the words "a lug member pivoted for free movement about said axis".
What does it mean for a lug to be pivoted about an axis ?
A For a lug to be pivoted about an axis it implies that the lug is turning about that axis. What is required for that to happen is that the lug be connected through a pin joint to a pin which coincides with that axis.
Q Why does it have to be pinned there ?
A Because the motion of the body implied by pivoting is a rotational motion about that axis. We are talking about a two-dimensional motion and a plane, and the only way you can have an object pivoting about an axis is that it's pinned by a pin joint at that axis.
(EXAMINATION-IN-CHIEF of John McPhee BY Me JOHN P. KOCH, 28 November 2001 at pp. 32-33).
[57] Mr. Huard claims that the defendant's feller head retains the same "two axis" operating principle found in the ‘130 patent, and that the ‘130 patent does not require that the lug member pivot co-axially around pin (502).
[58] In support of his contention that claim 1 does not require a co-axial movement on pin (502), Mr. Huard referred the Court to the disclosure of the ‘130 patent, and more particularly, the part which reads:
[...] The location of the various pivots is preferably such that upon extension of the power unit (530), the first arm unit (501) pivots first about pin (502) and then the finger arm unit pivots about pivot pin (505) [...] [Emphasis added].
[59] According to Mr. Huard, the use of the word preferably implies by choice a certain connectivity design of the mechanism, but that other variants of the pivot points are possible.
[60] At trial, Mr. McPhee provided a different interpretation of the word "preferably". He stated:
A I think Mr. Huard is misinterpreting the use of the word "preferably". In Paragraph 20 Mr. Huard is saying that the word "preferably" was implying different possible connectivities. I think he is misreading the sentence from the claim. I would say that the word "preferably" is referring to the order in which the arms are moving, preferably the first arm closes first and preferably the finger member closes after the first arm is closed. How one accomplishes that is by moving the various pivot locations around, not by changing the connectivity of the device.
(EXAMINATION-IN-CHIEF of John McPhee BY Me JOHN P. KOCH, 28 November 2001 at 39).
[61] I agree with Mr. McPhee that the word "preferably" does not imply different connectivities. The wording of claim 1 is clear in that respect. Further, Mr. Huard's explanation is not feasible if we consider the definition of axis. As explained by Mr. McPhee, an axis is defined by a line. I do not accept Mr. Huard's proposition that an axis is defined as an area not a line.
[62] The interpretation of axis as a line was confirmed by Mr. Hamilton, the inventor, in an answer adopted as the knowledge, information and belief of the plaintiff Quadco.
[63] Counsel for the plaintiff objected to the relevancy of such evidence on the basis that since the Whirlpool, supra and Free World Trust, supra decisions, the intention of the inventor flows from the wording of the claims as interpreted by the person skilled in the art and does not contemplate extrinsic evidence such as statements or admissions made to the Patent office.
[64] In Nekoosa Packaging Corp. v. AMCA International Ltd. (1994), 85 F.T.R. 160 at para. 23 (F.C.A.), the Federal Court of Appeal stated the general rule that extrinsic evidence is inadmissible for the purpose of construing a patent specification and this must necessarily extend to the testimony of the inventor pertaining to the proper construction of the specification. However, the comments in Nekoosa, supra were made in regards to the admissibility of expert evidence (not only the inventor's testimony), an issue that was not before that Court. Furthermore, the Court distinguished between an expert's assistance in interpreting technical terms and his or her opinion on the very issue to be decided by the Trial judge. The Court pointed out that the ultimate task of construing the patent was for the trial judge (Nekoosa, supra at paras. 12-14).
[65] In Pallmann Maschinenfabrik G.m.b.H. Co. KG v. CAE Machinery Ltd. (1995), 98 F.T.R. 125 at para. 54, Teitelbaum J. agreed that "...the Court cannot use extrinsic evidence to interpret the claims of the patent or the intention of the inventor...". He stated however that "...evidence can be given by persons skilled in the art to assist the Court in interpreting the patent". Teitelbaum J. went on to say that in that case, the inventor's evidence under the heading "prior art" was admissible as evidence of a person skilled in the art, not as evidence of the inventor.
[66] The plaintiff in the case at bar argued that since the Free World Trust, supra and Whirlpool, supra decisions, the intention of the inventor flows from the wording of the claims as interpreted by the person skilled in the art and does not contemplate extrinsic evidence such as statements or admissions made to the Patent office.
[67] I would like to note that in the present case, the answer provided by Mr. Hamilton was provided in the context of the present litigation at the examination for discovery, not to the Patent Office.
[68] Further, Binnie J.'s comments in Free World Trust, supra were made in the context of file wrapper estoppel (also called prosecution history or extrinsic evidence). Blais J. provides a good summary of file wrapper estoppel in Novartis AG v. Apotex Inc., 2001 FCT 1129 at para. 78 where he says:
It [file wrapper estoppel] is based on the principle that an inventor will not be allowed to make representations to the patent office, including amendments to a patent application, in order to avoid being refused a patent and later, in the context of an infringement action assert that the patent covers elements or aspects of the subject which were disclaimed or abandoned in discussions with the patent office.
[69] In my view, when Binnie J. stated that "extrinsic evidence such as statements or admissions made in the course of patent prosecution" was not admissible, what he had in mind was file wrapper estoppel. In the case at bar, Mr. Hamilton's statement was made during examination for discoveries and the plaintiff accepted that his answer was binding.
[70] However, given the ambiguity concerning the admissibility of Mr. Hamilton's answer, I will maintain the objection of the plaintiff and accord it no weight. In any event, this does not change my construction of the claim as the only purpose of the answer was to confirm the opinion of Mr. McPhee, Mr. Micacchi and Mr. Wildey.
[71] Mr. Hamilton's statement notwithstanding, I accept that claim 1 requires that the lug and the inner arm be pinned to the frame at the same point. If that is not the case with the Timberjack device, there will be no infringement of the ‘130 patent as this connectivity pattern is an essential element of the ‘130 patent.
The Timberjack device
[72] I am convinced by the testimony of Mr. Micacchi, Mr. McPhee and Mr. Wildey that the Timberjack "Watt-1 six bar mechanism" is a different mechanism from the Quadco "four bar mechanism". In the Timberjack device design, the lug is not pinned to the frame, it is pinned to the moving first arm. It also does not pivot about the same axis as the inner arm and the lug is not free to pivot independently of the movement of the inner arm. This difference in connectivity substantially alters the operation and design of the Timberjack mechanism from the mechanism claimed in the ‘130 patent. Considering that it is sufficient that one essential element be different, the Timberjack device does not infringe claim 1 of the ‘130 patent since an essential element of claim 1 is that the lug and the inner arm be pinned to the frame at the same point.
[73] In light of my finding that the defendant's device does not infringe claim 1, there is no need to construe claims 4 and 7 as they incorporate the elements of claim 1. There is also no need to determine the validity of the ‘130 patent.
ORDER
[74] The action for infringement is dismissed with costs to the defendant.
"Danièle Tremblay-Lamer"
JUDGE
FEDERAL COURT OF CANADA TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-867-96
STYLE OF CAUSE: Quadco Equipment Inc. v Timberjack Inc.
PLACE OF HEARING: Montreal, Quebec
DATE OF HEARING: November 26, 2001
REASONS FOR ORDER: THE HONOURABLE MADAME JUSTICE TREMBLAY-LAMER
DATED: January 28, 2002
APPEARANCES:
Mr. Jean Carrière
FOR PLAINTIFF
Mr. Richard Uditsky
Mr. Brian Gray
FOR DEFENDANT
Mr. John Koch
SOLICITORS OF RECORD:
Mendelsohn Rosentveig Shacter
FOR PLAINTIFF
Montreal, Quebec
Blake Cassels and Graydon
FOR DEFENDANT
Toronto, Ontario
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