Date: 20000221
Docket: T-1398-95
Ottawa, Ontario, the 21st day of February, 2000
Present: The Honourable Mr. Justice Nadon
Between:
LES INVENTIONS MORIN INC.
- and -
LES ÉQUIPEMENTS ARMAND MORIN INC.
Plaintiffs
And:
GILBERT TECH INC.
Defendant
JUDGMENT
The plaintiffs' action is dismissed, with costs to the defendant.
Certified true translation
Martine Brunet, LL.B.
Date: 20000221
Docket: T-1398-95
Between:
LES INVENTIONS MORIN INC.
- and -
LES ÉQUIPEMENTS ARMAND MORIN INC.
Plaintiffs
And:
GILBERT TECH INC.
Defendant
REASONS FOR JUDGMENT
NADON J.
[1] On May 15, 1990, the Commissioner of Patents issued on behalf of Armand J. Morin a Canadian patent under number 1,269,028 entitled "Saw Tooth for Tree Feller Cutting Head" ("Patent '028"), pursuant to the Patent Act, R.S.C. 1985, c. T-4 [sic] ("the Act").
[2] The plaintiff Les Inventions Morin Inc. is the assignee of all rights, titles and interests in and to the invention entitled "Saw Tooth for Tree Feller Cutting Head" assigned to it by Armand J. Morin, the inventor, on March 1, 1990.
[3] On March 1, 1990, Les Inventions Morin Inc. granted a licence to the plaintiff Les Équipements Armand Morin Inc. in relation to the manufacture, distribution and sale of all products resulting from the said invention of Armand J. Morin and patent '028 and, in particular, from any tree feller saw tooth.
[4] Patent '028 contains the following claims:
| 1. A saw tooth for tree feller cutting head having a circular blade, the said tooth being adapted to be attached to the periphery of the said blade, the said tooth including a hollow tube adapted to be integrally attached tangentially to the periphery of the said blade, a cutting element adapted to be kept detachable in the said tube, the said cutting element including a head with a concave front face oriented tangentially to the said circular blade and a pin integrally attached to the head so that the axis of the said pin is perpendicular to the front face, the said front face having a polygonal contour defining some cutting edges on the edge of the said contour, the said cutting element capable of being turned within the said tube to present alternatively each of the said cutting edges in a position radially extending from the circumference of the said circular blade, and some means for retaining the said pin within the said tube in order to keep the cutting edges in the said extended position. |
| 2. A tooth as claimed in claim 1 in which the polygonal contour is square. |
| 3. A saw tooth adapted to be attached to the periphery of a rotating circular blade for felling a tree, the said tooth including a square head with four lateral faces and a concave facing front face oriented tangentially to the said circular blade, the said concave front face forming some cutting edges at the intersections with the lateral faces, some pins integrally attached to the said head in a direction perpendicular to the said facing front face, some means for tangentially attaching the said pin to the periphery of the said circular blade, the said tooth, when attached to said blade is adapted to fell a tree situated on the tangent of the said blade when the blade is rotating. |
| 4. A saw tooth as claimed in claim 3, in which the means for attaching the pin include a sleeve adapted to be attached to the blade, the said sleeve being axially oriented parallel to a tangent of the blade, the said pin being adapted to be parallel to a tangent of the blade, the said pin being adapted to be inserted into the said sleeve, the said pin and the said sleeve including some transverse holes to receive a peg adapted to hold the said pin in the said sleeve. |
| 5. A saw tooth as claimed in claim 3, in which the said head has a trapezoid section tapering from the forward front face toward the said pin. |
[5] Under the Act, the plaintiffs have the exclusive right, privilege and liberty for 17 years of making, constructing and using the saw tooth for tree feller cutting head described in the patent claims and selling it to others to be used.
[6] The plaintiffs allege that the defendant manufactures, markets and/or distributes saw teeth that infringe patent '028. The plaintiffs are consequently asking this Court to declare that patent '028 and each of its claims are valid and in force and that the marketing, manufacturing and sale by the defendant of the said saw teeth for tree feller cutting head constitutes an infringement of the claims contained in the patent. The plaintiffs are also asking this Court to issue a permanent injunction against the defendant, its shareholders, directors, officers, partners, employees, representatives, licenced agents, clients, heirs and assignees to cease, directly or indirectly, manufacturing, using, importing, distributing, offering for sale and selling in Canada saw teeth for tree feller cutting head constituting an infringement of any of claims 1 to 5 contained in patent '028.
[7] In reply to a request for particulars filed by the defendant concerning paragraph 10 of the statement of claim, the plaintiffs state:
| 10. The plaintiff, without prejudice to the Court's determination, submits that the defendant has literally and in substance infringed Canadian patent no. 1,269,028. The opposed flat surfaces of the defendant's tooth define two pairs of cutting edges on the edge of the contour, these cutting edges are concave lines that define some protuberant points, the whole presenting a front face with a square contour. The defendant's tooth must also be attached by a threaded bolt the purpose of which is to raise the tooth on a mount on the periphery of the saw. This bolt may be characterized as a tube, since it has a flanged portion. Furthermore, the defendant is substantially infringing the plaintiffs' patent since its tooth imitates all of its essential and unique characteristics. |
| The plaintiffs respectfully add that the exact determination of the type of infringement, whether it is literal or in substance, that Gilbert Tech Inc. is guilty of is a conclusion of law that the Court alone has jurisdiction to determine. |
[8] Needless to say, the defendant does not agree with the plaintiff's allegations. The defendant submits that its tooth ("the Gilbert tooth") is distinguishable in several respects from the plaintiffs' tooth ("the Morin tooth"). First, the surfaces of the Gilbert tooth define only one pair of cutting edges. Second, the contour of the front face of the Gilbert tooth is not square, as the plaintiffs allege, but rectangular. Third, the Morin tooth includes a hollow tube that is integrally attached tangentially to the periphery of the saw blade, while the Gilbert tooth contains a screw hole that cannot be characterized as a hollow tube and that is not integral with the head of the saw tooth. Fourth, the defendant submits that its tooth does not have "[Translation] a pin having an axis perpendicular to the front face of the tooth adapted for holding by the mount". Lastly, the defendant notes that the cutting element prescribed in patent '028 may be turned to present each of its four edges, alternatively, while its own cutting element can present only two cutting edges.
[9] The defendant argues that its tooth has the following features: (i) a triangular tip; (ii) a round back; (iii) a round saw seat in a form that fits within the round shape of the back of the tooth; (iv) the possibility of using two of the four cutting edges in the logging environment; and (v) only two flat surfaces.
[10] The defendant also claims that the Morin tooth cannot be limited to a tip or a square head but necessarily includes the combination of its three constituent components: the tip, the integrated pin and the hollow tube.
[11] The plaintiffs submit that the essence of patent '028 is the saw tooth for tree cutting used tangentially with the said saw and capable of being turned to present several protuberant points and cutting edges.
[12] According to the defendant, however, the essence of the plaintiff's invention lies in the fact that the tooth has a polygonal head that is integrally attached to a support pin. Thus, the defendant claims that this solid pin constitutes an essential component of patent '028 and notes that all of the claims refer to this pin. Consequently, the defendant submits that in this case there is no infringement since its tooth does not contain this component, which it characterizes as essential.
[13] The defendant submits as well that "[Translation] the only other possible interpretation of what is actually essential in this patent lies in the fact that the inventor's tooth has several cutting edges and there are some means to hold the tooth in a given position." It is unlikely, the defendant says, that the inventor intended to protect this aspect of his invention since the prior art already included that aspect.
[14] In support of their respective positions, the parties called an expert. Mr. Clément Fortin, an engineer, testified in support of the plaintiffs' claims. His affidavit, dated December 1, 1998, was filed as evidence. In paragraph 2 of his affidavit, Mr. Fortin expresses the following opinion:
| 2. From my reading of Canadian patent no. 1,269,028, I conclude that the essential aspect of this patent consists of a tooth that is detachable, polygonal and more particularly square, having a generally concave front face, that is, hollow in accordance with the spirit of the patent, and used in felling trees. The polygonal shape essentially means it can use each of the cutting edges of the tooth and thus provide some significant reductions in operating costs. |
[15] In Mr. Fortin's opinion, Armand J. Morin's invention is the front face. This is clear from his testimony of February 1, 1999. The following questions and answers appear at pages 112, 113, 114 and 115:
| In your opinion, the invention is the faces. |
| Q. The "cutting edges" [in English] with the points. |
| Q. And the holding in place by ... |
| Q. Whether it is a square tube or round. |
| Q. That's my understanding. |
| O.K., good, that's what I wanted to find out, also. |
| Q. So, you are saying that the Morin patent is on what I call the tip and the rest is not important. |
| A. It's not the essential aspect of the patent, that's not what has made.... The way in which the tooth is attached to the circular blade, that's not what constitutes the advantage of the Morin patent, that's for sure. |
| Q. O.K. So all the novelty and inventiveness of the Morin patent comes down to the tip. |
| A. The tip, yes, and the way it is held. That is correct. |
| A. That is, and to ensure it is in a stable position on the blade. |
| Q. And how does one ensure that it is in a stable position? |
| A. Well, different mechanical means that exist. |
| Q. But those means are not part of the patent, you are saying. |
| A. Well, they are part of the patent but, in my opinion, it is not the essence and my expertise in the comparison, for me, it was not.... Given that the Gilbert tooth and so on did not have that aspect, in my opinion, it was not worth the trouble to focus any efforts on that aspect. |
| Q. So, can we agree, it will simplify the differences for me, that my bolt, whether or not it is characterized as a pin, or some means of attaching to the blade doesn't matter. We agree? |
| Q. The fact that, in your opinion as well, you eliminate the need to put this additional element that I call the solid pin, it was not part of the tooth as claimed? |
| A. Ah, I think that... No, it is part because, you know, you have to find a way to block. In terms of the art, if, by adding something like that, you more effectively block the tooth on the saw, there is an advantage. |
| Q. O.K., except that I understand that that part of the tooth is not part of your report in so far as your mathematical analyses are concerned? |
[16] Paragraph 13 of Mr. Fortin's affidavit is also of interest. It reads as follows:
| 13. I was also able to visualize the way in which the tooth manufactured by the Gilbert Tech company is attached to the saw blades. It appears to me that the connecting screw, once in place, is the mechanical equivalent of a pin integrally attached to the head. |
[17] The following passage, which is at pages 159 and 160 of the transcript of February 1, 1999, complements paragraph 13 of Mr. Fortin's affidavit, in my opinion:
| Q. O.K., excuse me, perhaps it was simpler than I thought. So, that's it, there are the means of retention, the means, the means. And in the prior art, we saw some means of retention of the rotation. Not exactly like that in Morin's, perhaps, is that it, your point? |
| A. No, for me the most important point when I read the patent is the combination of all these factors that constituted the advantage of the Morin tooth and not whether you're going to look for this or that, but it was applied in some different procedures, in some different geometries, if you combine all that, but I imagine that if you were to take everything there is in the prior art and you were to take here and there, you could make a lot of inventions, but it would not be... An invention is a combination of particular things, in my opinion, and that is what I see in the Morin tooth, that's what is special. |
| Q. But is it your testimony that Morin, the Morin patent covers any means of rotation? |
| Q. Excuse me, of anti-rotation? |
[18] The defendant, for its part, filed the affidavit of Pierre Gaudreault, an engineer, dated December 18, 1998.
[19] First, Mr. Gaudreault sketched the background of developments in the area of cutting devices. The following paragraphs of his affidavit are relevant, and situate the dispute in its context:
| 19. The vehicles used in logging for felling trees are referred to as felling machines. This is a self-propelled logging machine or vehicle used for mechanical tree felling.... |
| 23. In the case that concerns us, the GILBERT teeth and the teeth described in the MORIN patent may be mounted on round saws that are mounted on a feller head attached to type (a), (b) or (c) machines. |
| 24. The term "feller head" refers to a mechanical tree-cutting device. They are generally fitted with grapple arms and a cutting tool. Possible cutting tools include shears, chain saw chains, rotary cutters, circular saws, etc. The cutting tool is generally activated by hydraulic jacks and mounted at the end of a knuckle-boom or at the front of an articulated chassis. In the specific case of a circular saw, the saw is activated by a motor and occasionally hydraulic jacks are added. |
| 25. The term "cutting tool" refers to a part with a mobile or fixed heated steel cutting edge, used to fell or trim the trees by shearing, rotary cutting or sawing. ... |
| 28. And finally, a circular saw feller head is a feller head for which the cutting tool is a circular saw. It is circular saw feller heads that are relevant to our case. |
| 29. A circular saw feller head has a circular felling saw. This is a steel disk fitted with fixed or detachable teeth mounted in a feller head or in a specially designed frame, turning at high speed and used to fell trees. |
| 30. A reference to a back cut is a reference to the width of the undercut made in the wood by the cutting tool.... |
| 40. Between 1982 and 1985 further efforts were made to improve the technology and were focussed above all on the structure of the circular saw blade and the teeth that compose it, for the purpose of reducing the costs of manufacturing the blades and enhancing their performance. |
| 41. One of the main improvements in the teeth was in terms of using demonstrable [sic] teeth [dents démontables? --- teeth that can be dismantled?] attached by bolts to the circular saw. |
| 42. All users of circular saw feller heads in the early 1980s used saw teeth attached to the blade of the circular saw. A number of methods of attachment were used, such as welding, the use of bolts or any other method that was considered adequate. |
| 43. This technology for attaching teeth to the blades of circular saws was taken from press tool cutting tools used to cut hard materials, such as steel, wood, etc. This technology dates from the 1920s. It generally comprises a tip attached to a seat using a bolt in the central part of the tip. As an example, I refer to U.S. patent 1,459,805 (TASKER), which I produce as exhibit PG-5. |
| 44. The design of all circular saw teeth, including the MORIN tooth and the GILBERT tooth, emanates from and is inspired by this old technology in the mechanical field. |
| 45. Designers of circular saw teeth, like the designers of cutting tools technology, been looking since the 1920s for a tooth with the following attributes: a good quality of cut, the possibility of using more than one face, repositionable, easily replaceable and, of course, as inexpensive as possible overall. |
| 46. In the case of circular saw teeth, it is clearly the part that is commonly referred to as the "head" of the tooth that is more specifically called a "tip" in the area of cutting tools in general. |
| 47. As in the machine shop industry, where the same tool design problems have been accommodated for decades, the users and designers of circular saws in the logging industry had to adjust their products to achieve the attributes they were looking for in a circular saw tooth that I referred to earlier. To do so, they did the following things from time to time in the design of their teeth: |
| - mounting the teeth radially on the circular saw; |
| - mounting the teeth tangentially on the circular saw; |
| - using a round tip configuration or all the other polygonal forms previously tried with success in machine shops for decades; |
| - manufacturing concave tips, the effect of which is to form cutting edges in the case of polygonal shaped tips; |
| - using various systems of bolting, either directly to the saw or by positioning in the shape of a seat attached to the saw. |
[20] Following his background study, Mr. Gaudreault focussed his attention on patent '028. After a careful examination of the specification, Mr. Gaudreault turned to the claims. He first examined claim no. 1. He concluded that the components of the tooth, as claimed in claim no. 1, were the following:
| 1. A hollow tube adapted to be connected tangentially on the periphery of the circular blade; |
| 2. A cutting element adapted to be kept detachable in the hollow tube; |
| 3. the cutting element includes two parts: (a) a head with a concave front face oriented in a direction tangential to the circular blade, and (b) a pin integrally attached to the head, the axis of the pin being perpendicular to the front face; |
| 4. The front face is polygonal in shape; |
| 5. The cutting element is adapted to be turned in the hollow tube so as to present each edge alternatively; |
| 6. Some means of retaining the rotation of the pin in the hollow tube in order to keep the edges apart. |
[21] According to Mr. Gaudreault, the inventor is claiming in claim no. 1 a saw tooth for tree feller cutting head with a circular blade.
[22] To explain his conclusion, Mr. Gaudreault reproduces figures 6, 7 and 8 from the patent, which I reproduce here:
[23] In paragraphs 62 to 65 of his affidavit, Mr. Gaudreault comments as follows on figures 6, 7 and 8 of the patent:
| 62. I note that figure 7 represents the Morin tooth, as indicated by the number 32. More specifically, at page 2 of the patent, it is written that figure 7 is a view from an angle of a saw tooth. Moreover, figure 8 is a side view of a saw tooth. |
| 63. According to the patentee, figure 6 is a view from an angle of a tube for receiving a saw tooth. However, the inventor says in claim 1, line 3, that the tooth includes a hollow tube. At this [stage? -- Tr.], I note that once one decides to connect the pin integrally to the head and the cutting element is formed from a head and a pin made from a bit and that the pin is solid and not hollow, it is necessary to provide a receptacle. This explains the existence of the hollow tube, which is itself attached tangentially to the periphery of the circular blade. |
| 64. In so far as the methods used to retain the rotation of the pin in the tube are concerned, I understand that this is connected to the preceding point. Since the pin and the hollow tube are each square, once the pin is inserted in the tube, the cutting element cannot turn on itself and thus these methods are necessarily the particular configuration illustrated in figures 6, 7 and 8. |
| 65. We further find, in page 4, line 27, that the hollow tube is welded to the curved blade of the saw 20: "the radial surface 42 is perforated along the circumference in order to receive a tube 46, which is welded to the curved blade of the saw 20." We should note that in claim 1, this weld is described as being "integrally attached". |
[24] Mr. Gaudreault then examined claim no. 3. He ignored claim no. 2, since it simply claims a tooth as claimed in claim no. 1 in which the polygonal contour is square.
[25] According to Mr. Gaudreault, in claim no. 3 the inventor is again claiming a saw tooth adapted to be attached to the periphery of a rotating circular blade for tree cutting. After examining this claim, Mr. Gaudreault concludes that the component parts of the tooth claimed in claim no. 3 are the following:
| 1. A square head with four lateral faces and a concave facing front face oriented in a direction tangential to the circular blade; |
| 2. The concave front face of the tooth forms four cutting edges; |
| 3. A pin integrally attached to the square head; |
| 4. Some means for tangentially attaching the pin to the periphery of the circular saw blade. |
At paragraph 68(iv) of his affidavit, Mr. Gaudreault comments as follows on component no. 4 of claim no. 3:
| This time, contrary to claim 1, the inventor does not specify that the methods for attaching the pin to the saw consist of a hollow tube. All the drawings and the few comments in the description of the patent that might give some indication as to the inventor's intention suggest that he never envisaged anything other than a kind of hollow tube or other receptacle already adapted and attached to the periphery of the blade in order to receive the pin of the tooth, allowing the head of the tooth to be exposed so the cutting edges could cut the timber. |
[26] As to claim no. 4, in Mr. Gaudreault's opinion it suggests the methods for attaching the pin, namely:
| 1. A sleeve axially oriented parallel to a tangent of the blade; |
| 2. A pin adapted to be parallel to a tangent of the blade; |
| 3. The pin being adapted to be inserted in the sleeve; |
| 4. The pin and the sleeve include transverse holes to receive a peg adapted to hold the pin in the sleeve. |
[27] In paragraphs 72, 73 and 74, Mr. Gaudreault comments as follows on claim no. 4:
| 72. Here again we have a confused situation. There is a change in vocabulary. At page 5 of the patent, line 1, it clearly states that the hollow part of the tube 46 receives the tooth 32 formed from a sleeve 48 and the cutting element 50. Item 46 is throughout described as being a "hollow tube". The element designated in the claims as a "pin" is referred to as a "sleeve" 48 in the description. Nowhere in the description is there any reference to a sleeve. Claim no. 4, therefore, seems to replace the word "hollow tube" by the word "sleeve", because we see that the pin is adapted to be inserted in the sleeve, that is, the hollow tube and once again, the pin and the sleeve, which we know is the hollow tube, include some transverse holes to receive a peg, as is explained at the end of claim 1. |
| 73. The claim adds nothing to claim 1 other than the detail that the pegs may be used as means of retention. More specifically, the pegs keep the pin of the tooth in the hollow tube. |
| 74. I assume that claim 4 was placed in the patent so that various means of attachment could be considered part of claim 3, given that claim 3 does not refer to a hollow tube. It is extremely hard to imagine what the inventor might have wanted to include in the possible means of attachment, given the very specific configuration of his tooth, which includes, as he clearly stated, "a square head and a pin integrally attached to the head". I strongly doubt that the inventor might have wished to cover all possible means of attachment, since it goes without saying that a saw tooth must be attached in some way or other to the periphery of a circular saw blade. |
[28] In paragraphs 103 et seq. of his affidavit, Mr. Gaudreault analyzes some previous patents in order to illustrate the characteristics of the cutting tool teeth described in these patents. He ends his analysis of the prior patents with the following statement, in paragraph 121 of his affidavit:
| 121. It seems to me that to obtain the patent he obtained, the inventor had to argue to the Patent Office that none of the teeth described in the prior art included in combination an entire part composed of a polygonally shaped head, preferably square, and a regular polygonal pin in the same shape and orientation as the head, as well as a [sic] of a sleeve of the same shape as the pin arranged tangentially to a circular saw. |
[29] I conclude, without any hesitation, that Mr. Gaudreault's expertise is greatly preferable to that of Mr. Fortin. Mr. Fortin's expertise, I say this with respect, was of no use to me. His affidavit does not include any real analysis of patent '028 and its claims. As I indicated earlier, Mr. Fortin states, in paragraph 2 of his affidavit, that the essence of patent '028 is the front face of the tooth.
[30] In paragraph 13, Mr. Fortin states, without explanation, that the mode of attachment of the Gilbert tooth constitutes a mechanical equivalent "[Translation] of a pin integrally attached to the head". I fully agree with what Mr. Gaudreault says, at page 123 of his affidavit, when he states:
| 123. Mr. Fortin makes a very general and unwarranted comment at paragraph 13 in relation to the mode of attachment of the parties' respective teeth. He provides no further opinion on this issue. On the contrary, the emphasis in his report is placed on the head of the tooth in patent 028 or, as explained earlier, the "tip". |
[31] I also agree with the following paragraph in Mr. Gaudreault's affidavit, where he expresses the following opinion:
| 124. I explained earlier that the tips having the features discussed in paragraph 2 of Mr. Fortin's affidavit have been known for a very long time in the field of cutting tools. Furthermore, the inventor's statements in the patent specification suggest that his main intention was to make a tooth that was easily replaceable in the logging industry and capable of being turned to provide more than one cutting surface before being sharpened. |
[32] I did not find Mr. Fortin's testimony more useful than his affidavit. For all practical purposes, he simply repeated what he had stated in his affidavit. It is interesting to note that Mr. Fortin does not agree with the plaintiffs' allegation in reply to the defendant's request for particulars. Here is Mr. Fortin's testimony on this, at pages 127 and 128 of the transcript of February 1, 1999:
| Q. I am going to read to you what I was told when I requested certain things concerning the essence of the invention. Reply number 10, My Lord. All right, the sentence beginning, the third sentence, "The defendant's tooth": |
| "The defendant's tooth must also be attached by a threaded bolt, the purpose of which is to mount the tooth on a frame on the periphery of the saw. This bolt may be characterized as a tube, since it has a bored portion." |
| I presume you do not agree with that, that my bolt here, previously we decided it was a pin, previously, we decided it is a means of attachment, you are not going to tell me as well that it is also a hollow tube. |
| A. No, I would tend to say it is not. |
[33] As is apparent from the passage above, the plaintiffs alleged that the bolt used by the defendant to hold its tooth was the equivalent of the hollow tube of the Morin tooth. In Mr. Fortin's opinion, the bolt is not the equivalent of the hollow tube since, he says, the bolt is the equivalent of a pin.
[34] As the defendant's counsel pointed out, the comparison that Mr. Fortin should have made was between the defendant's product and the Morin tooth as claimed in patent '028. However, what Mr. Fortin seems to have done is to compare the defendant's product and the patented product. It is evident from reading Mr. Fortin's affidavit that he did not compare the defendant's product to the Morin tooth as claimed in patent '028.
[35] Mr. Gaudreault's testimony, contrary to that of Mr. Fortin, was clear, complete and precise. Accordingly, I accept without reservation the evidence offered by Mr. Gaudreault. I conclude, therefore, that the claims in patent '028 cannot be limited to the tip or the head of the tooth. The claims cover, in my opinion, not only the head but the attached pin and the hollow tube. These elements form a whole, called the tooth, and must be in the same regular polygonal form.
[36] There can be no doubt that the pin integrally attached to the head constitutes an essential feature of the patent. The ability to turn the tooth claimed in patent '028 in order to present each of the front faces is also an essential feature of the patent. This finding means that certain polygons, including the rectangle, do not allow a rotation that can present each of the front faces. In paragraph 106 of his affidavit, Mr. Gaudreault expresses the following opinion, with which I fully agree:
| 106. I am of the opinion that once it became important, in the inventor's opinion, to attach the receptacle tangentially, and it was envisaged that the tube holding the tooth would also be attached tangentially, the inventor had every intention that his tooth would consist of a piece having two parts integrally attached to each other, that is, the head and the pin. |
[37] In light of the prior art, it is clear that the concave polygonal shapes forming cutting edges, with some points, have been around for a long time. This is not what the inventor claimed in patent '028. As counsel for the defence noted, the plaintiffs, in their replies to particulars requested by the defendant, alleged that the bolt used by the defendant to attach his tooth was the equivalent of the hollow tube that is found in the claims for patent '028.
[38] The samples of the tooth manufactured by the defendant were produced as exhibits D-4 and D-6. Exhibit D-4 was placed on sale for the first time around 1988, while exhibit D-6 was placed on sale for the first time in 1996. The major characteristics of the Gilbert tooth are the following:
| 1. A rectangular-shaped tip; |
| 3. Round saw seat in a form that matches the round shape of the back of the tooth; |
| 4. The possibility of using two of the four cutting edges in the logging industry; |
| 5. Only two flat surfaces. |
[39] In his affidavit and his testimony, Mr. Gaudreault noted the following differences between the tooth claimed in patent '028 and the Gilbert tooth. First, Mr. Gaudreault noted that the screw used by the defendant is not attached to the head of the tooth. According to Mr. Gaudreault, the Gilbert tooth is a tooth without a pin, or a tip.
[40] Second, he says, patent '028 envisages a specific method of attachment, a hollow tube squared by welding to the blade, a square pin shaped to the same tooth, and finally a system of pegs attached transversely to the pin of the tooth. However, the Gilbert tooth "[Translation] is seated in the form of a half-moon by a bolt screwed into the centre of the tooth. It is this half-moon shape of the seat and the back of the tooth that prevents rotation."
[41] Third, Mr. Gaudreault notes that the Morin tooth, as claimed in patent '028, has a head with a square polygonal contour, while the polygonal contour of the Gilbert tooth is rectangular.
[42] Mr. Gaudreault also notes that patent '028 covers a hollow tube adapted to be integrally attached tangentially on the periphery of the blade of the saw that is used, while the Gilbert tooth contains a hole for a screw and, according to Mr. Gaudreault, this screw "[Translation] cannot be related to a hollow tube, such as the tube described in the patent description and claimed in the claims".
[43] A further distinction, according to Mr. Gaudreault, is that the polygon referred to in the patent '028 claims must necessarily be a "regular" polygon, such as a square or a hexagon. According to Mr. Gaudreault, a regular polygon is a geometric form having several sides of equal length and the adjacent angles must all be equal. He says the other polygons are "irregular", such as the rectangle or the lozenge. Irregular polygons, he says, are not covered by patent '028. In paragraphs 83, 84, 85 and 86 of his affidavit, Mr. Gaudreault expresses the following opinion:
| 83. First, only the teeth with a head (tip) in a regular polygonal shape can fulfil this requirement. One need not be an expert to understand that a rectangular tooth (regular polygon) cannot, in practice, provide all the edges and the GILBERT tooth is a rectangular tooth. Furthermore, the type of seat, in the half-moon shape, and the curved back of the tooth cannot provide more than two edges opposed to each other. |
| 84. We have seen that claim 3 is limited to a tooth with a square head, while claim 3 is clearly not infringed. |
| 85. Claim 1 is not limited, as written, to a square-backed head but the head can only be in a regular polygonal shape, preferably square, if one wants to be able to present alternatively each of the edges in a position radially extended from the circumference of the blade. This is clear: The claim envisages a square head. The head of the GILBERT tooth is rectangular. Claim 1 envisages any polygonal shape but claims, in line 12: |
| "the said cutting element capable of being turned within the said tube to present alternatively each of the said cutting edges in a position radially extended from the circumference of the said circular blade". |
| 86. The only possible conclusion is that the MORIN tooth does not have a rectangular head because an irregular polygonal form cannot be so turned as to present each of the front faces without altering the position radially extended from the blade. Also, the thickness of the cut, that is the kerf of the tooth, would be altered. |
[44] In paragraph 91 of his affidavit, Mr. Gaudreault states that a person well versed in the art would not consider the bolt1 of the Gilbert tooth the equivalent of a hollow tube. He adds, at paragraphs 92, 93 and 94:
| 92. In my opinion, a bolt is a bolt. A tube should have a hollow centre. This is not the case with a bolt. In this specific case, the role of the bolt is to keep the GILBERT tooth in contact with its half-moon seat. Whatever the case, the problem with this characterization of the bolt as a tube leaves open the question of the pin, which, according to the inventor, is an integral part of the tooth with the head. If the defendant's bolt is a "tube" in order to respond to this characteristic envisaged in claim 1, it cannot at the same time be a pin since the patent provides that the pin is perpendicular to the back of the tooth and is placed in the tube. |
| 93. In contrast to the pin and hollow tube of patent 028, the GILBERT bolt does not have the function of preventing the rotation of the tooth because it is instead the shape of the back of the tooth and the shape of the seat that have this function. |
| 94. My position is of course, that the GILBERT tooth does not have any pin but the plaintiff's position that the bolt is an equivalent to the hollow tube prescribed in claim 1 is incoherent. |
[45] I conclude, therefore, that the essence of patent '028 is in no way infringed by the defendant's product. The Gilbert tooth, in my opinion, imitates none of the essential and unique characteristics of the tooth claimed in patent '028.
[46] For these reasons, the action will be dismissed with costs to the defendant.
O T T A W A, Ontario
February 21, 2000
Certified true translation
Martine Brunet, LL.B.
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
| STYLE: LES INVENTIONS MORIN INC. and |
| LES ÉQUIPEMENTS ARMAND MORIN INC. |
| PLACE OF HEARING: Montréal, Quebec |
| DATE OF HEARING: February 1, 1999 |
REASONS FOR JUDGMENT OF NADON J.
DATED: February 21, 2000
APPEARANCES:
Serge Fournier FOR THE PLAINTIFFS
Pascal Fréchette
Bob Sotiriadis FOR THE DEFENDANT
SOLICITORS OF RECORD:
BROUILLETTE CHARPENTIER FOURNIER FOR THE PLAINTIFFS
Montréal, Quebec
LÉGER ROBIC RICHARD FOR THE DEFENDANT
Montréal, Quebec
__________________
1 Mr. Michel Taillon, chief of the defendant's technical department, testified that the role of the bolt in the Gilbert system is to hold the tooth to the saw, while the role of the round shape hugging the seat is to prevent the rotation of the tooth.