Federal Court Decisions

Date: 20041222

Docket: T-153-01

Citation: 2004 FC 1767

Ottawa, Ontario, the 22^nd day of December 2004.

Present:           THE HONOURABLE MR. JUSTICE SHORE                              

BETWEEN:

                                                           ROSS STONEHOUSE

                                                                                                                                        Plaintiff and

Defendant by Counterclaim

                                                                           and

                                            BATCO MANUFACTURING LTD. and

AG GROWTH INDUSTRIES INC.

                                                                                                                                  Defendants and

Plaintiffs by Counterclaim

I N D E X

Page                 Para.                Topic

3                       2                    Judicial Procedures

5                       9                    INTRODUCTION (structure of the decision)

6                       10                  Historical Note

7                       13                  (a) Background

8                       16                  (b) Development of the Stonehouse Conveyor

10                     27                  (c) Ownership

13                     37                  (d) The Specification

15                     45                  (e) The Claims

17                     52                  The Defendants' Pit Stop Conveyor

19                     57                  Non-Infringement

23                     73                  Defence

33                     98                  Evidence

35                     104                Subject Matter

38                     114                ISSUES

39                     115                Remedies

40                     119                LEGISLATION

41                    120                ANALYSIS     

43                    124                Teaching of the Patent

44                     127                Ordinarily Skilled in the Art

44                     129                Principles of Construction

46                     135                Infringement

50                     150                Validy of Patent

51                    152                Anticipation

53                     155                Anticipation by prior publication

54                     157                Anticipation by prior use                       

55                     161                Obviousness

59                     168                Ambiguity, Insufficiency of the Claim's Lack

of Essential Elements     

59                     170                Sufficiency of Claim

60                    172                Ambiguity

60                     173                Allegations that the invention claims are broader

than the inventor made and disclosed

61                    176                Utility

63                    182                CONCLUSION

63                    182                JUDGMENT

                                    REASONS FOR JUDGMENT AND JUDGMENT

[1]                After expert evidence, it's the judgment's call, is there infringement or none at all?

And, the patent does it fall, or is it valid after all?

JUDICIAL PROCEDURES

[2]                Mr. Ross Stonehouse (plaintiff) sought a declaration of infringement, an injunction and damages or accounting for profits for the alleged infringement of Canadian Patent No. 2,123,257 ('257 Patent).

[3]                The '257 Patent relates to an invention entitled "Conveyor for Particulate Materials"; it was filed May 10, 1994. It was open for public inspection on December 16, 1994; and was granted to the plaintiff inventor on February 2, 1999. The patent expires May 10, 2014. A patent on the same invention was filed in the United States in respect of the drive-over conveyor invention, establishing a priority date "claim date" of June 15, 1993.

[4]                The statement of claim provided the following summary of the invention:

The said patent relates to an invention respecting an apparatus being a conveyor for particulate material comprising a conveyor duct, a hopper section and a feed end of the duct, a continuous belt movable longitudinally of the duct and the hopper so as to transport the particulate material deposed in the hopper section into and along the duct, all as more particularly described in the specification of the said patent and claimed in each of the claims thereof.

[5]                The abstract and claims of the patent can be found in Schedule "A" (of the Further Amended Statement of Claim attached as Appendix "1" to these Reasons).

[6]                The plaintiff alleged that the defendant, Batco Manufacturing Ltd. (Batco) has, without the consent of the plaintiff, since in or about 1996, continuously been in Canada, making, constructing, using, vending and selling to others a drive-over conveyor system, not being that of the plaintiff, which the defendant, Batco Manufacturing Ltd. calls a "Pit-Stop Drive-Over Conveyor". (Particulars which are set out in Schedule "B" (of the Further Amended Statement of Claim attached as Appendix "2" to these Reasons).)

[7]                In addition, or in the alternative, the defendant, Ag Growth Industries Inc. has without the consent of the plaintiff, since in or before 1996, continuously been, in Canada, making, constructing, using, vending and selling to others a drive-over conveyor system, not being that of the plaintiff, which the defendant, Ag Growth Industries Inc. calls a "Pit-Stop Drive-Over Conveyor". (Particulars which are set out in Schedule "B" (of the Further Amended Statement of Claim attached as Appendix "2" to these Reasons).)

[8]                The defendants, plaintiffs by counterclaim, claim:

(a)        a declaration that the claims of Canadian Letters Patent 2,123,257 are, and always have been, invalid;

(b)        their costs of, and incidental to, this action;

(c)        such further and other relief as this Court finds just.

INTRODUCTION (structure of the decision)

[9]                    Other than relating the history, specifications and ownership of the respective conveyors in question, what is different or unique about the Stonehouse invention, how does it compare to the Batco product and vice versa; how do both compare to other conveyors, used for the same purposes?

What, in fact, is constant and what are the variables that differentiate one conveyor and its gathering device, from another, all of which, essentially, moves and holds (in an aggregate manner) produce of an agricultural or mining nature?

Due to the intricacies, (at times, appearing minimal, nevertheless, considered significant by certain parties versed in the area), in differentiating the variables, a detailed background is provided prior to a presentation of ISSUES in the first half of the reasons of this decision. This extensive background is provided to ensure that the terms and references of the differing perceptions, as formulated by the opposing parties are, at first, clearly examined, in and of themselves; and only after this detailed backdrop, is an analysis undertaken to reach conclusions.

HISTORICAL NOTE

[10]            The plaintiff, Mr. Stonehouse, is an individual residing in Erickson, British Columbia. He was a farmer for 24 years from 1968 - 1992. Since then he has managed a trailer park in Erickson. While he has taken farm management courses over the years, he has no technical engineering training.^[1]                     

[11]            Batco is a company incorporated pursuant to the laws of Saskatchewan, with a head office in Swift Current, Saskatchewan. Batco was incorporated in 1992 and has been in the business of making farm machinery since incorporation. Batco had made the Pit Stop conveyors subject to this action since 1997.^[2]                     

[12]            AG Growth was incorporated pursuant to the laws of Saskatchewan with a head office in Swift Current. Ag Growth was formed in 1996 and Batco is a wholly owned subsidiary of AG Growth. AG Growth employs the sales team, controls the marketing including advertisements and the attendance at farm trade shows for the Pit Stop Conveyor.^[3]

(a)        Background

[13]            The invention is said to relate to conveyors for particulate material, particularly, where a belt carries material from a hopper to a duct.^[4]

[14]            The patent discloses that belt conveyors, in which an initial section of the belt is flat in the hopper section following which the belt is formed into a channel in the duct (conveyor tube) were well known.^[5] Various means of making the transition from the flat to the inclined section were known at the time, and Mr. Stonehouse in his actual machine, adopted a set of rollers at the upper edge of the belt, as suggested to him by a maker of belt conveyors.^[6]

[15]       Many of these conveyors for farm use, require the vehicle carrying the material, be accurately backed up to the conveyor.^[7]

(b)        Development of the Stonehouse Conveyor

[16]            Mr. Stonehouse conceived the idea for his invention of the drive-over conveyor in the Fall of 1992.^[8]                  

[17]            Mr. Stonehouse contacted Richard Epp at D & R Manufacturing (D & R), a small agricultural machine manufacturing business located in Fiske, Saskatchewan, about his concept in the winter of 1993, and with the assistance of D & R employees, Mr. Stonehouse began designing and building the prototype in the Spring of 1993.^[9]

[18]       As a condition of receiving information about the invention, D & R signed a non-disclosure agreement with Mr. Stonehouse on March 16, 1993.^[10]

[19]            Mr. Stonehouse assisted in the manufacture of the prototype, which was done in April and May 1993. Mr. Stonehouse provided the concept and description of the machine and D & R did the engineering and manufacturing.^[11]

[20]       An embodiment of the invention was first publicly displayed in prototype form at the Farm Progress Show in late June 1993.^[12]                 

[21]            In July 1993, D & R signed a manufacturing agreement by which it obtained an exclusive licence to manufacture and sell the invention, granting Mr. Stonehouse a 5% royalty on sales of the drive-over conveyors.^[13]             

[22]            At all times, material to this action, D & R was a small company of no more than 3-10 employees.^[14]

[23]            The first contact with Batco, in which it became aware of the invention was June 1993, at the Farm Progress Show, when Mr. Stonehouse met Mr. Art Stenson.^[15]

[24]            Mr. Stonehouse filed his application for Canadian '257 Patent for his invention on May 10, 1994, claiming priority from the June 15^th, 1993 United States application.

[25]            On June 9, 1997, solicitors for Mr. Stonehouse wrote Batco to advise it of the issued United States and Australian patents, and the pending Canadian application. Infringement was asserted. United States lawyers for Batco wrote, asserting non-infringement of the United States patent.      ^[16]          

[26]       On October 19, 1997, Furman & Kallio on the instructions of Batco, filed a protest against the '257 Patent, citing the Compton patent, US 4,813,839, also cited in this case.^[17]

(c)        Ownership

[27]            As related above, D & R was the first licensee of the invention. It held a licence from about July 1993, in which it would manufacture and sell conveyors embodying Mr. Stonehouse's invention and pay him a 5% royalty on sales. This agreement was updated and replaced June 19, 1995.^[18]                            

[28]            In 1996, a dispute over royalties under the agreement led to the termination of the D & R agreement.^[19]

[29]       Mr. Stonehouse continued to market his invention and in 1997 made a deal with Meissner Tractors, Inc. which is signed July 31, 1997.^[20]

[30]            The Meissner deal lasted until June 1, 1998, when REM Manufacturing Ltd. assumed the position of licensee.^[21]                

[31]            In January 2001, the REM arrangement was terminated.^[22]

[32]            Mr. Stonehouse negotiated a deal with Brandt Agricultural Products Ltd. without the advice of counsel intending to grant an exclusive licence. He signed a document dated December 18, 2002 in the form of an assignment of the '257 Patent to Brandt, but in which Mr. Stonehouse was paid with a royalty stream.^[23]

[33]            Under the terms of that document (Article 3.5), Mr. Stonehouse was obligated to carry on the patent action against Batco as the plaintiff and report to Brandt.

[34]            Brandt was entitled to withhold royalties in the event that a resolution had not been reached by July 1, 2004 and could continue to do so until judgment. Royalties would only then be payable upon a finding that the '257 Patent was valid and infringed and an injunction granted. Only substantial success would entitle Mr. Stonehouse to payment of withheld royalties. Discontinuance or success by the defendant meant that no royalties would be payable after July 1, 2004.

[35]            When Brandt learned that as assignee of the '257 Patent, it had to become a party to this action, it reassigned the '257 Patent back to Mr. Stonehouse and took an exclusive licence in an effort to rectify the earlier mistake by means of an agreement signed on or about May 14, 2003, but made effective as of December 19, 2002. Since there is no provision in the Patent Act,^[24] for removing a mistaken document from the register, the best that could be done was to register a nunc pro tunc reassignment.^[25]

[36]       The defendant had Mr. Don Henry of Brandt under subpoena, and 2 _ hours of trial time had been set aside for his testimony. The defendant elected not to call him, and an inference can properly be drawn that he would not have given evidence inconsistent with that of Mr. Stonehouse.                     

(d)        The Specification

[37]            The invention is an improved version of such conveyors where the vehicle can drive-over forwardly.^[26]

[38]            The first aspect describes the conveyor of the invention. It is a conveyor for particulate material made up of the following parts:

(a)        a conveyor tube;

(b)        a hopper section at the feed (input) end of the duct (tube);

(c)        a continuous belt which moves along the tube and hopper to transport the particulate material deposited in the hopper into and along the tube;

(d)        the hopper has sidewalls, each sidewall having a bottom edge spaced inwardly from a respective side edge of the belt;

(e)        the sidewalls are mounted for pivotal movement about a longitudinal axis at the bottom edge of a respective sidewall such that each sidewall can fold flat downwardly to allow a vehicle wheel to pass over the sidewall and hopper;

(f)         the sidewalls being arranged such that each can be moved to a raised position in which the sidewall is inclined upwardly and outwardly from the bottom edge;

(g)        the belt being mounted on an inner surface of the sidewalls so as to be formed into a cupped shape to thereby confine material on the belt for entry into the tube.^[27]

[39]            The '257 Patent discloses preferred means of operating the pivotally mounted sidewalls including:

(a)        spring raising means for the sidewalls such that the sidewalls could be moved downwardly against the spring to prevent damage if impacted in a raised position;

(b)        a manually operated element to flatten the sidewalls to allow them to be driven over.^[28]

[40]            An embodiment is described in reference to the drawings. In addition to the essential elements, it includes a description of specific means for carrying out functions of the conveyor system that would be understood to be included within the invention such as the means of providing power to the conveyor to drive the belt and means to raise the sidewalls using a spring and lever arrangement.^[29]

[41]            The detailed description also includes reference to a rubber flap that extends down the inside surface of the sidewalls and extends over the outside edge of the cupped belt to help seal the hopper and prevent leakage from the edge of the belt.^[30]

[42]            In an alternative arrangement, the belt is flat in the hopper and the bottom edges of sidewalls are inward and just above the edge of the belt so as to allow it to run freely.^[31]

[43]            Folding of the sidewalls in operational position upon vehicle wheel impact to prevent damage to the sidewall is described at page 7 of Schedule "A" (of the Further Amended Statement of Claim attached as Appendix "1" to these Reasons).

[44]            Normal operation is described in pp. 8-9 of Schedule "A" (of the Further Amended Statement of Claim attached as Appendix "1" to these Reasons) .

(e)        The Claims

[45]            There are eleven claims. Two claims, Claims 1 and 2 are independent claims. The rest are dependent on one or the other of Claims 1 or 2.

[46]            Claim 1 is not asserted to be infringed by Batco.

[47]            Claim 2 is very similar to Claim 1 except that the belt and sidewall are arranged in such a way that the belt is mounted (slides) on an inner surface of the sidewalls, so as to be formed into a cupped shape, thereby so as to confine material on the belt for entry of the material onto the cupped section of the belt for transport along the tube.

[48]            Claim 3 is a conveyor of Claim 2 where the belt is cupped so that a portion extends up an inside surface of each sidewall, but terminates below the top of the sidewall.

[49]            Claim 4 is the conveyor of Claim 3 where each sidewall has a flexible sheet which extends down and over the edge of the belt to cover part of the belt. This feature would act to further seal the hopper to prevent leaks.

[50]            Claim 6 is for the conveyor of any of Claims 1-5 where the raising means has a manually operable element to permit the sidewalls to stay in the folded flat position. This also means folded down to allow a truck to drive over.

[51]            Claim 9 is for the conveyor of any of Claims 1-8 where the hopper includes a base member extending along the length of the belt, the sidewalls extending along the length of the base member, with the base member long enough to receive the width of a road vehicle. This means that the base has to be at least as wide as the wheel span of the truck. It must be wider than the width of the truck wheels to give some leeway for the driver to drive over it without hitting the ends. When the base is this minimum length, the sidewalls would be the full length of the base member, so that they would contain the width of the discharge element from the truck to prevent spillage during loading. The base length can be longer than this minimum, but the sidewalls do not have to extend the full length of the base in such a case. They need only extend along the base enough, where the truck is expected to drive over, to still contain the width of the discharge element of the truck to prevent spillage during loading.

The Defendants' Pit Stop Conveyor

[52]            Following the creation of the portable elevated tube conveyor, Batco then built a low profile transfer conveyor. This conveyor was assigned model number 18/14 LP. With respect to the 18/14 LP, it employed a horizontal section having a low profile hopper and an incline tube.^[32]

[53]       In October of 1996, Batco began its development of the Pit Stop machine. Following several development stages and the creation of different prototypes, the Pit Stop took its final form in March of 1997.^[33]

[54]            The motivation behind the creation of the Pit Stop machine originated with the needs of farmers, who were using existing transfer conveyors, but were interested in acquiring a conveyor that they could drive over. Specifically, the farmers were interested in using a conveyor that they did not have to pull in and out from underneath trucks.^[34]     

[55]            The defendants looked to their low profile transfer conveyor during the design of the Pit Stop machine. The defendants' first drive-over conveyors were called the 18/14 LP-DO.^[35]

[56]            The defendants' Pit Stop machine uses a gusset that is welded to both the hopper floor and an adjacent hinge. The purpose of the gusset is not to confine material on the belt. In regards to the Pit Stop, the gusset has several purposes. One of its functions is to keep the edge of the belt off of the hinge, as it would be damaging to the belt were it to rub on the hinge. Another function of the gusset is to make an easier transition for vehicle wheels driving over the hopper, as it protects the hinge that would otherwise be exposed to the wheel of a vehicle. Further, the flashing, which juts out over top of the belt and covers most of the belt surface above the gusset, is protected from being damaged because when a vehicle wheel drives over the hopper the gusset supports the flashing from being pressed against, and damaged by, the hinge.^[36]

Non-Infringement

[57]            The plaintiff advised it would not pursue infringement of Claim 1 of the Patent. This was after the plaintiff's expert, Mr. Barry Rogers, had provided two affidavits stating that Claim 1 was valid and infringed.

[58]            Mr. Rogers disagreed with the plaintiff's allegation of infringement in his Statement of Claim. In particular, the plaintiff's pleading includes a claims chart that indicates that the plaintiff alleges the defendants' sidewall bottom edge is the axis of rotation.

[59]            Mr. Rogers confirmed that the '257 Patent does not make any claim to a conveyor having sidewalls adjacent to the belt.^[37]

[60]            Mr. Rogers, admitted that the defendants' conveyor does not infringe the claims of the plaintiff's patent as those claims are written.^[38]

[61]       In particular, Mr. Rogers admitted that in the defendants' Pit Stop machine, the axis of rotation of the pivotal portion of the sidewall is located beside the belt. In relation to Claim 2 of the '257 Patent, which defines the bottom edge of the sidewall by its axis of rotation, the defendants' Pit Stop machine is different in that it has an axis that is beside the belt. Thus, based on the words of Claim 2, the Pit Stop machine, which has a bottom edge adjacent to the belt, is not infringing the '257 Patent.^[39]                       

[62]            Mr. Rogers agreed that if the defendants did not infringe Claim 2, they could not infringe any claim since Claim 1 was not pursued.^[40]               

[63]            Mr. Rogers testified that the position of the bottom edge of the sidewalls in the '257 Patent is an essential element of all claims of the patent.^[41]

[64]       In Free World Trust v. Electro Santé Inc.,^[42] Justice Binnie held that "...the ingenuity of the patent lies not in the identification of a desirable result but in teaching one particular means to achieve it. The claims cannot be stretched to allow the patentee to monopolize anything that achieves the desirable result."

[65]            Determining whether a variant is non-essential and thus substitutable has also been reduced to three 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.^[43]

[66]            When the facts of the present case are applied to the above test, it is clear that the defendants' pivotal sidewall plus gusset cannot be construed to be the sidewall of the '257 Patent. First, the sidewall and gusset do have a material effect on the way the invention works. As noted above, the gusset does not pivot, does not fold flat, and the combination of the two do not seal the gap and confine material on the belt since the belt does not extend to the pivotal sidewall. Second, there is no evidence, other than a statement by Mr. Rogers which is contradicted by the defendants' expert, Mr. Craig Hanson, that it would have been obvious to the skilled person at the publication date that these two structures could be substituted. Third, the evidence is that the language of the claims make it clear that the patentee did intend that strict compliance with the position and structure of the sidewall - the primary meaning - was an essential element of the invention. The patentee is stuck with the narrow words of his own choosing.

[67]            It is those words in the claim that give the ambit of the monopoly certainty and the claims must be taken to mean what they say.

[68]            Mr. Rogers' opinion that the wording of the '257 Patent would not make a skilled person believe that strict compliance with "bottom edge" of the sidewall was essential, appears to be untenable, since such a construction would contradict the words of the claims. Specifically, the configuration of the sidewalls and the respective bottom edges is essential, as it is this configuration that confines material on the belt. A sidewall that is not pivotal at its bottom edge, but instead anywhere along its surface, not only does not accomplish the function and result of the '257 Patent, but also contradicts the claim language. Furthermore, there is nothing in the '257 Patent that suggests a fixed portion as well as a pivotal portion of a sidewall. A sidewall pivoting somewhere other than its bottom edge could not fold flat. The existence of a fixed portion means that part of the sidewall would not be pivotal.^[44]

[69]            Regarding the specific words chosen by the patentee, the court in Free World Trust held that "...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".^[45]

[70]            As stated in Free World Trust at paragraph 57:

...the onus is on the patentee to establish known and obvious substitutability at the date of 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.

[71]            The House of Lords, in a very recent decision, has commented on the issue of claim construction:

"Purposive construction" does not mean that one is extending or going beyond the definition of the technical matter for which the patentee seeks protection in the claims. The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. And for this purpose, the language he has chosen is usually of critical importance. The conventions of word meaning and syntax enable us to express our meanings with great accuracy and subtlety and the skilled man will ordinarily assume that the patentee has chosen his language accordingly. As a number of judges have pointed out, the specification is a unilateral document in words of the patentee's own choosing. Furthermore, the words will usually have been chosen upon skilled advice. The specification is not a document inter rusticos for which broad allowances must be made...

I agree with the Court of Appeal that the invention should normally be taken as having been claimed at the same level of generality as that at which it is defined in the claims. It would be unusual for the person skilled in the art to understand a specification to be claiming an invention at a higher level of generality than that chosen by the patentee...^[46]

[72]            After created knowledge, as was said in Free World Trust at paragraph 57:

The ambit of the monopoly would grow over the life of the patent as new substitutes are developed and absorbed into the common knowledge of the skilled worker. The inventor cannot be thought to have the necessary "intent" in relation to after-created knowledge except in the irrelevant sense of intending to reap the benefit of the maximum coverage available...

Defence

[73]            This case asks the Court to define the limits of a monopoly. Batco denies that their product, the Batco Pit Stop machine, infringes the '257 Patent.

[74]            Similarities abound between the case at bar and Free World Trust at paragraph 1, here Justice Binnie began his decision noting,

The principal question that arises on this appeal is the extent to which a patent monopoly protects "the substance" or "the spirit" of an invention, as distinguished from what is literally described in the written claims...

More specifically, the appellant concedes that the respondents' machine...is not precisely as described in the written claims of its patents. It says, however, that the respondents have stolen the substance of its invention...

[75]            As in Free World Trust, the plaintiff, through its expert witness, Mr. Rogers, admitted that the defendants' conveyor does not infringe the claims of the plaintiff's Patent as those claims are written. In particular, Mr. Rogers agreed that if one reads the claims as written, the defendants' conveyor does not include sidewalls spaced inwardly from a side edge of the belt. The claims define the bottom edge of the sidewall as its axis of rotation, and in the defendants' conveyor, that axis of rotation is adjacent to or beside the belt, not spaced inwardly from it. Accordingly, the defendants' conveyor varies or omits an essential element of all claims of the patent. We know the location of the sidewalls is an essential element because Mr. Rogers admitted that if they were adjacent to the belt and not spaced inwardly, then there could be no infringement.

[76]            Free World Trust, makes clear that there is no infringement if there is variation or omission of an essential element. As such, the defendants' conveyor is outside the ambit of the monopoly as claimed. Mr. Rogers says, however, that the defendants have infringed the "essence" of the plaintiff's invention. He admitted that there is no support anywhere in the patent for his idea of what constitutes his understanding of its "essence".

[77]            It is important to note that the plaintiff's expert admitted that he did not construe the patent claims prior to rendering his opinion on infringement. In fact, he admitted that one skilled in the art would not read the patent and understand that the patentee was describing or claiming a two-piece sidewall. Yet, Mr. Rogers' infringement opinion relies on his argument that the defendants' conveyor has a two piece sidewall. He says that, while a two-piece sidewall is not claimed or described in the Patent, it nevertheless falls into the "essence" of the invention.

[78]            Justice Binnie put to rest any suggestion of infringement of the "essence". Speaking for a unanimous Supreme Court of Canada bench in Free World Trust, he held:

(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...

[79]            Accordingly, a finding of infringement must be based on infringement of a patent's claims, purposively construed. The law in Canada is clear: infringement cannot be based on vague notions such as the "spirit of the invention". The claims define the monopoly.

[80]            Mr. Rogers also admitted that his interpretation of sidewalls in the Patent was based on his review of the defendants' conveyor. The Supreme Court of Canada in Whirlpool Corp. v. Camco Inc.,^[47] held that patent construction cannot be done with an eye on the infringing machine. Nevertheless, referring to the defendants' conveyor, Mr. Rogers gave an opinion that a skilled person would know that the defendants' welded gusset (which the defendants' expert, Mr. Hanson, considered to be part of the hopper floor) could be substituted for the pivotal sidewall in the claims. It is the plaintiff's burden to establish known and obvious substitutability at the date of publication of the patent (Free World Trust). However, substitutability cannot be established for at least the following reasons:

(a)        First, Mr. Rogers admitted that the gusset works in a different way from the sidewall in the Patent. The gusset does not pivot, and does not fold flat. Further, Mr. Rogers' interpretation requires a two-piece sidewall which is not disclosed or claimed. Even if one were to agree with him that the gusset confines material on the belt, it does so in a different way.

(b)        Second, the gusset does not achieve the same result as the sidewall in the Patent. In Claim 2 of the Patent, the belt is mounted on the sidewalls to be formed into a cupped shape "so as to confine material on the belt". The defendants' expert, Mr. Hanson, confirmed that the belt and the gusset do not act to confine material on the belt; the rubber flashing performs this function. If one removes the gusset, the flashing continues to confine material on the belt. This was not shaken on cross examination. Indeed, photos of the defendants' conveyor show that the belt does not seal the gap between the sidewall and the floor and material gets lodged into the gap. Even on Mr. Rogers' interpretation, the gusset achieves a different result.

(c)        Third, even if the above two hurdles were overcome, the plaintiff has the burden to show that, "...on a purposive construction of the words of the claim it was clearly not intended to be essential...", that is, the patentee did not intend strict compliance (Free World Trust). In fact, the evidence is just the opposite. Both experts agreed that the great amount of detail the patentee put into the specific construction and position of the sidewalls indicates that the patentee intended the sidewall position and construction to be essential. The "bottom edge" of the sidewall is specifically defined in the claims as the axis of rotation. The patentee intended strict compliance with his chosen words.

[81]            In contrast to Mr. Rogers, the defendants' expert, Mr. Hanson, first construed the Patent prior to considering infringement or validity. Mr. Hanson found the patent claims to be unambiguous. He referred to the patent description as well and he found that it supported the meaning he gave to the claims by reading the claims themselves. Mr. Hanson gave a purposive construction to the claims and found that none of the patent claims were infringed.

[82]            Mr. Rogers admitted that the defendants' conveyor does not infringe the claims of the plaintiff's Patent as those claims are written.^[48]

[83]            In particular, Mr. Rogers admitted that in the defendants' Pit Stop machine, the axis of rotation of the pivotal portion of the sidewall is located beside the belt. In relation to Claim 2 of the '257 Patent, which defines the bottom edge of the sidewall by its axis of rotation, the defendants' Pit Stop machine is different in that it has an axis that is beside the belt. Thus, based on the words of Claim 2, the Pit Stop machine, which has a bottom edge adjacent to the belt, is not infringing the '257 Patent.^[49]

[84]            Mr. Rogers agreed that if the defendants did not infringe Claim 2, they could not infringe any claim since Claim 1 was not pursued.^[50]

[85]            Mr. Rogers testified that the position of the bottom edge of the sidewalls in the Patent is an essential element of all claims of the Patent.^[51]

[86]            With respect to the gusset in the Pit Stop machine, it cannot be considered to be a sidewall. The '257 Patent requires that for something to be a sidewall it must pivot. As well, the gusset in the Pit Stop does not perform the same function as a sidewall in the '257 Patent. The rubber flashing in the Pit Stop covers the angled portion of the belt such that no material actually rides on the angled portion.^[52]

[87]            Mr. Rogers agreed that even when the Pit Stop sidewall is fully raised, there is still a gap between the belt and the pivotal section of the sidewall. In other words, the belt in the Pit Stop is not positioned over the gap between the pivotal sidewall and the gusset.^[53]

[88]            Defendants showed a photo of the Pit Stop with the sidewalls raised showing that materials such as corn or grain gets lodged inside this gap between the pivotal sidewall and the gusset. Rubber flashing covers this gap to confine material on the belt and prevent leakage; the belt does not cover the gap at the pivot point.^[54]

[89]            If it were not for the rubber flashing in the defendants' conveyor, material would fall off the side of the belt and into the gap between the gusset of the hopper floor and the Pit Stop sidewall.^[55]

[90]            Mr. Rogers, for the first time in his reply affidavit, said that a portion of the defendants' hinge lay under the gusset which lay under the belt and thus infringed the Patent claims. Mr. Rogers admitted that this was not part of his infringement opinion in chief, and further admitted that, even if one considered this, the axis of the sidewall is still adjacent to the belt. Furthermore, the 1/8" of the hinge that is under the gusset cannot be raised up so as to confine material.^[56]

[91]            With respect to the 1/8" of the Pit Stop hinge, Mr. Hanson said that a person skilled in the art would not agree that this was the bottom edge of the sidewall. The '257 Patent removes any doubt by explicitly stating that the bottom edge of the sidewall is its axis of rotation. The 1/8" section of the hinge under the gusset does not in any way fulfill the purpose of the sidewall which is to cup the belt and prevent leakage. In fact, a gap remains and is not sealed by the belt.^[57]

[92]            The hinge tube does not confine material on the belt. Indeed, the hinge tube actually provides a gap to permit leakage between the belt and the sidewall, thus having a different function and result than the invention in the '257 Patent. In other words, the Pit Stop omits the crucial sealing aspect of the '257 Patent. Further, because of this gap, it was necessary for the Pit Stop to employ a flexible sheet to cover the hinge, which effectively eliminates any argument that the belt is cupped by the 1/8 of an inch of the hinge. Also, the hinge assembly is constructed with alternating hinge tubes that are welded to the hopper frame, it is not logical for a particular point on the belt to be travelling over the sidewall only at some times and not at others. Furthermore, it would not be logical to consider that the hinge assembly, which includes tubes that are welded to the hopper frame, is a part of the sidewall.^[58]

[93]            A skilled person would understand that the hinge and the sidewall are distinct elements, even if the hinge is welded to the sidewall. With respect to the door and hinge analogy, the door component is certainly not part of the hinge component - the two are distinct elements. Even where the hinge has been screwed or welded to the door, they remain distinct elements. If one were to construe the hinge and the door as being one element, then one would have to also consider an endless number of elements, such as the frame of the door, as being part of that one distinct element. It would be a never-ending element. Indeed, when a door is opened, half of the hinge does not move with the door and remains stationary.^[59]

[94]            Mr. Rogers confirmed on cross examination that the Patent disclosed and claimed an invention that cupped the belt by operation of placing the two pivoting sidewalls inward from the side edges of the belt. When the sidewalls are pivoted in an upward position, the belt is thereby cupped.^[60]

[95]            However, Mr. Rogers then argued on cross examination that a conveyor that included any means for cupping the belt infringed the Patent. For example, a conveyor with a cupped hopper bottom infringed the claims of the Patent even if the belt was nowhere near the sidewall axis. This was illustrated by the drawings at Exhibits D-11, D-12 and D-13, one which showed, for example, a conveyor having a hopper bottom having a slight concave arc shape. The belt was positioned in the middle of the hopper and well inward from the axis of the pivotal sidewalls. Mr. Rogers felt that the entire cupped hopper floor was in fact the "fixed portion" of the sidewall and, since the belt travelled along the centre of the hopper floor, the structure would infringe the Patent claims because the belt was over the "stationary" portion of the sidewall. Mr. Rogers' interpretation was based on his understanding of the "essence" of the invention.^[61]           

[96]            Mr. Rogers admitted that the exposed portion of the travelling belt in the defendants' conveyor is "essentially flat". The rubber flashing covers the cupped portion of the belt on the gusset.^[62]

[97]            Mr. Rogers agreed there was no support anywhere in the Patent for a cupped hopper floor; indeed, the Patent discloses and teaches a flat hopper floor and requires sidewalls that can "fold flat".^[63]

Evidence

[98]            Although the views of the experts differed considerably, the Court found the expert testimony most helpful. The knowledge and integrity manifested by Mr. Rogers for the plaintiff and Mr. Hanson for the defendants were very much appreciated. These experts assisted the Court in reaching its own construction of the claims of the Patent and its findings with respect to infringement and to validity.

[99]            Ultimately, it is the Court, and the Court alone, which is tasked with construing the patent. This principle has been stated many times in Canadian law, but it bears repeating. The Court is not bound by this evidence to make its findings. This is said in respect of the construction of the claims and to the finding of infringement or that of validity. Several cases have made this point. In Nekoosa Packaging Corp. v. AMCA International Ltd.,^[64] the Federal Court of Appeal wrote as follows:

While the question of admissibility of expert evidence on ultimate issues is not before us, it is of paramount significance to appreciate that the learned Trial judge recognized that the ultimate task of construing the patent was his alone. He did not abdicate or delegate his judicial function. At page 168, he stated:

What then has been invented here? As can be seen from my earlier comments, I found many words and phrases to be vague if not ambiguous. Jurisprudence dictates that a patent must be read by one willing to understand. Here, we have the additional benefit of expert witnesses who, through affidavits, and oral and written evidence, endeavour to assist the court with the meaning of words and phrases, the state of the art, the explanation and demonstration of various diagrams and figures, but in the final analysis it is the court's responsibility to construe the patent.

[100]        Again, the principle is repeated in Canamould Extrusions Ltd. v. Driangle Inc.:^[65]

The task of a trial judge is to determine, on a purposive construction of the patent, which of the elements of the claimed invention were crucial or "essential" and which ones were not. Having properly stated the principles of claim construction at paragraphs 30 through 36 of her decision, it is clear that the Trial Judge appreciated the task that was before her. She was to purposively construe the Patent through the eyes of a skilled reader as of the date of publication. Assisted by the expert evidence, the context to the claims provided by the disclosure and figures, and the purposes served by the top surface of the table under the Patent, it was open to the Trial Judge to adopt a construction of the claims that was different from that put forward by the parties (Whirlpool, supra, at para. 61).                                

[101]        Finally, the Court cites in this regard Mobil Oil Corp. v. Hercules Canada Inc.,^[66] where the respondent had argued that the trial judge had erred in his interpretation of a certain phrase in the patent, which interpretation was disputed by some of the experts. The Federal Court of Appeal responded thus to the argument:

I disagree with the respondent. The trial judge was quite conscious of the limitations to which his inquiry into the intended scope of the original patent was subject. He was sensitive to the fact that he needed objective evidence and support in the text of the patent itself. But the construction of a patent is a matter for the judge, as this Court had occasion to repeat it again forcefully in its recent judgment in Nekoosa Packaging Corp. v. United Dominion Industries Ltd. supra, and his reading must prevail to that of experts unless clearly unacceptable. In taking the phrase "which as will be described hereinafter adversely affect the adhesion of a film to a metallized coating" as more than a strict reminder of a physical phenomenon known by anyone skilled in the art, the trial judge could rightly find the support he needed in the text of the patent itself.

[102]        The judge must thus find support in the text of the patent itself, which the Court intends to do. First, however, the Court must state that for the purposes of construing the claims of the patent, the Court finds that the most important part of the evidence dealt with the pivot location of the sidewalls with respect to cupping and the prevention of leakage. This important feature, materially is in the actual pivoting of the sidewalls, arranged in such a way as to have the very cupping of those sidewalls and thus prevent leakage.

[103]        Several examples of belt type conveyors were introduced into evidence. All of which have their own patent. However, examples of belt type conveyors, designed to allow a vehicle to drive over, help understand what is at stake in the allegation of infringement.

Subject Matter

[104]        The Patent relates to a drive-over belt conveyor. The Patent description states that "Belt conveyors...are well known in which there is an initial section of the belt at a hopper portion in which the belt is flat following which the belt is formed into a channel shape to move along a duct in the form of a conveyor tube.^[67]

[105]        Conveyors are generally used in industries that are involved in the moving of aggregate materials. In particular, conveyors are relevant in the movement of agricultural materials, gravel, asphalt, mining products, fertilizer, granular products, etc. Often, there is crossover between industries such that it may be the case that an idea that arises in one industry is quickly and easily transferred to another industry. Facilitating this crossover in Saskatchewan, is the fact that many miners are also farmers. In effect, there is a crossover of both technology and of people.^[68]

[106]        The plaintiff, in developing the subject matter contained in the '257 Patent, was primarily concerned with developing a gentle grain handler and solving the problem of "fall fatigue". The '257 Patent solved these problems through the teaching of a drive-over conveyor having a collapsible hopper section.^[69]

[107]        The plaintiff's "Aha! Moment" was when he envisioned a folding down hopper that was capable of being driven over by a vehicle.^[70]

[108]        The idea of driving over a conveyor with a flat and incline section has been known in one manner or another for at least 80 years.^[71]

[109]        The '257 Patent attempts to address two problems and does so in particular ways. The first problem relates to the difficulty inherent in using a conveyor when one attempts to back a vehicle to the conveyor to deposit material into the conveyor's hopper. The second problem relates to the escape of material from the conveyor's belt surface.^[72]

[110]        In addressing the first problem of backing a vehicle to the conveyor, the '257 Patent combined the conveyor structure of a belt in a hopper section with a pair of pivoting sidewalls that cooperate with the belt. When pivoted down, the sidewalls lie flat and parallel to the belt so that they may be driven over by a vehicle. Once a vehicle is properly positioned, the sidewalls can be pivoted up so as to form an inclined and funnelling configuration for the confining of material in the conveyor hopper.^[73]

[111]        In addressing the second problem of confining material on the conveyor's belt surface, the '257 Patent positioned the bottom edge of the respective sidewalls such that they were spaced inwardly from the respective side edges of the belt. This positioning is accomplished by inwardly spacing the respective bottom edges either above the surface of the belt or below the surface of the belt. In the case of the latter, the result is that the belt itself is cupped so that a portion of each side edge of the belt is turned upwardly along an inside surface of the respective sidewall, thus preventing any possibility of leakage.^[74]

[112]        Following the receipt of the defendants' lawyers' opinion regarding non-infringement, the plaintiff proceeded to amend the claims of his '257 Patent application. The plaintiff was aware of the defendants' conveyor prior to amending the claims of his Patent.^[75]

[113]        Similar conveyors have in common the resolution of the problem inherent in backing the vehicle to a conveyor which require that it be driven over and that it has raisable sidewalls or flaps, and some manner by which to confine material on the belt of a drive-over conveyor, having those raisable sidewalls or flaps.

ISSUES

[114]        What is the proper construction of '257 Patent so as to ascertain the nature and scope of the invention disclosed and claimed by the inventor:

(a)        identification of the ordinary person skilled in the art;

(b)        principles of construction - purposive construction.

[115]        Whether the '257 Patent is invalid on the basis of any of the defences pleaded by the defendants and, in particular:

(a)        whether the '257 Patent has been anticipated by publications or public use;

(b)        whether the invention of the '257 Patent is obvious in light of the common general knowledge and the prior art pleaded by the defendants;

(c)        whether any of the claims of the '257 Patent are invalid as ambiguous or insufficiently supported by the disclosure;

(d)        whether the claims are invalid as being broader than the invention made or disclosed; and

(e)        whether the invention claimed lacks utility.

Remedies

(a)        Election of damages and profits;

(b)        Permanent Injunction;

(c)        Effective date the re-assignment to Brandt and its effect on damages or profits.

[116]        In two unanimous decisions, the Supreme Court of Canada has confirmed that infringement is to be determined by construing the claims of the patent. (Free World Trust and Whirlpool). For this reason, the first question is really the first part of the analysis to answer the second question. In addition, the defendants are not willing to recognize the validity of the patent. The central issue is thus the issue of infringement, only if infringement, is followed by the question of validity.

[117]        The issue can thus be restated more simply: Does the defendants' product infringe the claims of the '257 Patent?

[118]        And is the plaintiff's Patent valid?

LEGISLATION

[119]        For the purposes of this decision, the most important provision in the Patent Act, is found in section 27, more specifically subsections 3 to 5, which read as follows:

ANALYSIS

[120]        The idea of patent protection goes back a long time in the common law, and its principles are already embodied in an English decision of 1653 (Clothworkers of Ipswich Case (1653), Godb. 252, 78 E.R. 147, cited in Free World Trust) which recognized the inherent tension in the granting of a patent: on the one hand, legitimate protection of a new invention, on the other, the necessity to grant a limited monopoly, so as to not stifle commercial development. Those twin interests have been described by the jurisprudence as fairness and predictability. The inventor is entitled to the benefit of his invention, but a person skilled in the art must know what are the limits of the patent to adjust his activities accordingly.

[121]        To balance those two interests, the Patent Act provides that the invention must be described in a very precise manner, so as to notify other people skilled in the art what exactly is claimed and protected by the patent. The claims, in particular, serve the purpose of determining the scope of the patent. As stated in Free World Trust at paragraphs 14 and 15:

Patent claims are frequently analogized to "fences" and "boundaries", giving the "fields" of the monopoly a comfortable pretence of bright line demarcation. Thus, in Minerals Separation North American Corp. v. Noranda Mines, Ltd., [1947] Ex. C.R. 306, 12 C.P.R., [page 1036] Thorson P. put the matter as follows, at p. 352:

By his claims the inventor puts fences around the fields of his monopoly and warns the public against trespassing on his property. His fences must be clearly placed in order to give the necessary warning and he must not fence in any property that is not his own. The terms of a claim must be free from avoidable ambiguity or obscurity and must not be flexible; they must be clear and precise so that the public will be able to know not only where it must not trespass but also where it may safely go.

In reality, the "fences" often consist of complex layers of definitions of different elements (or "components" or "features" or "integers") of differing complexity, substitutability and ingenuity. A matrix of descriptive words and phrases defines the monopoly, warns the public and ensnares the infringer. In some instances, the precise elements of the "fence" may be crucial or "essential" to the working of the invention as claimed; in others the inventor may contemplate, and the reader skilled in the art appreciate, that variants could easily be used or substituted without making any material difference to the working of the invention. The interpretative task of the court in claims construction is to separate the one from the other, to distinguish the essential from the inessential, and to give to the "field" framed by the former the legal protection to which the holder of a valid patent is entitled.

[122]        Just as "fences" and "boundaries" ensure the predictability of the patent, fairness is achieved, so as not to deprive the inventor of the benefits of his invention, by the "purposive construction" of the claims, i.e., the claims are interpreted so as to give effect to the inventor's purpose. The Supreme Court in Whirlpool at paragraph 45, makes the following statement on purposive construction:

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.

[123]        With these principles in mind, we now turn to the content of the patent and the claims; in other words, what does the patent teach?

Teaching of the patent

[124]        The task of claims construction is antecedent to questions of both validity and infringement.^[76]

[125]        As so aptly stated in Burton Parsons Chemicals, Inc. v. Hewlett-Packard (Canada) Ltd.,^[77] and Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd.:^[78]

While the construction of a patent is for the Court like that of any other legal document, it is however to be done on the basis that the addressee is a man skilled in the art and the knowledge such a man is expected to possess is to be taken into consideration.

[126]        The use of extrinsic evidence, such as the testimony of the inventor regarding his intentions, or other documents such as the file history as an aid to construction was rejected by the Supreme Court of Canada in Free World Trust as undermining the public notice function of the claims, increasing uncertainty, and fuelling the already overheated engines of patent litigation.^[79]

Ordinarily Skilled in the Art

[127]        The persons to whom the specification is addressed are the ordinary persons skilled in the art to which the invention relates possessing the ordinary amount of knowledge incidental to that particular trade (not persons with special knowledge not shared by ordinary workers in that field).^[80]

[128]        In this case, the ordinary skilled person is familiar with the design and construction of farm machinery, particularly conveyors. They would have mechanical engineering skills but not necessarily be a licensed engineer. They would have technical design skills and several years experience in designing, building and repairing agricultural machines.^[81]

Principles of Construction

[129]        As stated in Free World Trust at paragraph 44, the skilled person to whom the patent is addressed "...has the ordinary skill and knowledge of the particular art to which the invention relates, and a mind willing to understand the specification addressed to him...He is assumed to be a man who is going to try to achieve success and not one who is looking for difficulties or seeking failure."

[130]        A patent is to be given a purposive construction in light of the knowledge of persons skilled in the art at the relevant date reading the specification with a mind willing to understand.^[82]

[131]        The relevant date for construction of the patent is the date of publication, which for patents such as this is the date the application was "laid open".^[83]

[132]        The Court looks at the whole of the disclosure and claims to ascertain the nature of the invention, being neither benevolent nor harsh, but rather seeking a construction which is reasonable and fair to both the patentee and the public.^[84]

[133]        The same construction is to be used both for infringement and validity issues.^[85]

[134]        In this case, the Patent is to be construed as of its laying open date, December 16, 1994. The simplicity of the components of the device and the mechanical engineering principles behind it, allow for ready application of the plain and obvious meaning of the words of the claims.

Infringement

[135]        In an action for patent infringement, the plaintiff must establish, on the construction of the patent and its claims, that infringement has occurred. In other words, it must be clear that the defendant has made use of his invention. The defence can proceed either by denying the similarity of its product to the patented product, or by showing that the patent is invalid for obviousness or prior art.

[136]        Both the Patent Act (subsection 43(2) - presumption of validity) and the common law support maintaining the validity of patents unless strong evidence shows them to be invalid. As stated in Consolboard:

...as Duff C.J.C. said, giving the judgment of the Court in Western Electric Company, Incorporated, and Northern Electric Company v. Baldwin International Radio of Canada [[1934] S.C.R. 570], at p. 574, "where the language of the specification, upon a reasonable view of it, can be so read as to afford the inventor protection for that which he has actually in good faith invented, the court, as a rule, will endeavour to give effect to that construction". Sir George Jessel spoke to like effect at a much earlier date in Hinks & Son v. Safety Lighting Company [(1876), 4 Ch. D. 607]. He said the patent should be approached "with a judicial anxiety to support a really useful invention".

[137]        In this case, the main line of defence has been to deny similarity between the invention and the Batco Pit Stop. The plaintiff contends that the impugned Batco Pit Stop contains all the essential features of the invention; the defendants argue that they are fundamentally different. What needs to be determined by this Court is what are the "essential elements" of the patent, and what are the "non-essential elements". The importance of the exercise is emphasized by the principle stated by the Court in Free World Trust at paragraph 31:

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.

[138]        As referred to above, the Supreme Court decision in Free World Trust set out the criteria for determining whether infringement has occurred. The analysis boils down to whether or not all of the essential elements of the patent in suit are present in the allegedly infringing device. Substitution or omission of an essential element takes the device outside the monopoly, whereas substitution or omission of non-essential elements is not necessarily fatal to an allegation infringement.

[139]        The defendants' Pit Stop machine does not include sidewalls having a bottom edge spaced inwardly from a respective side edge of the belt. Instead, the sidewalls of the Pit Stop are steel plates having a bottom edge that is adjacent to the respective side edges of the belt. The bottom edge of the sidewall is specifically defined in the Patent as its axis of rotation. In the defendants' conveyor, the axis of rotation is adjacent to the belt, not spaced inwardly.^[86]

[140]        As noted above, Mr. Rogers admitted that the defendants do not infringe the claims of the Patent as those claims are written.^[87]

[141]        In Eli Lilly & Co. v. O'Hara Manufacturing Ltd.,^[88] Justice Pratte, writing on behalf of the Court, quoted the famed House of Lords decision in Catnic Components Limited and another v. Hill & Smith Limited,^[89] and following:            

My Lord, a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. "skilled in the art"), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so-called "pith and marrow" of the claim. A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked. ... It is to be answered in the negative only when it would be apparent to any reader skilled in the art that a particular descriptive word or phrase used in a claim cannot have been intended by a patentee, who was also skilled in the art, to exclude minor variants which, to the knowledge of both him and the readers to whom the patent was addressed, could have no material effect upon the way in which the invention worked.

[142]        Justice Pratte then applied the test to the case before the Court, which concerned an alleged patent infringement of a pill-coating machine. In the claims, it was specifically stated that the patented machine comprised "an exhaust inlet flexibly biased against the exterior". The defendant-appellant O'Hara had manufactured a machine where the exhaust inlet was mounted in a fixed position. The trial judge had found infringement. The Court of Appeal stated the question thus:

If those principles are applied in this case, the question to be answered may be formulated by adapting to the facts of this case the language used by Lord Diplock, at p.age 244: would the specification make it obvious to a reader skilled in the art that the description of the patented machine as comprising "an exhaust inlet flexibly biased against the exterior" of the drum could not have been intended to exclude machines in which the exhaust was not "flexibly biased against" the drum but was mounted in a fixed position as close as possible to the drum?

[143]        Justice Pratte then made the following statement:

It should be realized that the answer to that question depends on the interpretation that is put on the claims. That answer, therefore, must be consistent with the text of the claims. 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. I also wish to add that, as the Court, in interpreting the claims, is merely trying to find out what was the intention of the inventor, it cannot conclude that strict compliance with a word or phrase used in a claim is not an essential requirement of the invention unless it be obvious that the inventor knew that a failure to comply with that requirement would have no material effect upon the way the invention worked.

[144]        At first, Batco, itself, as specified above, demonstrated how its product is different in essential features from the Stonehouse patent. By its key difference to the Stonehouse Patent, the essential features of the Stonehouse Patent emerge.

[145]        Both Claims 1 and 2 of the patent require as an essential element, a pair of sidewalls having the bottom edge spaced inwardly from the edge of the belt. Since the Batco Pit Stop omits the essential element, it does not infringe either claim. Since Claims 1 and 2 are the only independent claims of the Patent, no claims are infringed by the Batco Pit Stop.

[146]        As in Free World Trust and Eli Lilly & Co., a fundamental difference in the Batco product and the device contemplated in the claims excludes the impugned article from the scope of the claims.

[147]        Therefore, there is no infringement of the '257 Patent.

[148]        There being no infringement of the '257 Patent on a purposive construction of the Patent and claims, and although the defendants' claim the Patent invalid, the validity of the Patent, continues to be presumed valid with respect to the essential elements of the claim, since Claims 1 and 2 as specified above, are the only independent claims of the Patent, no claims are infringed by the Batco Pit Stop.

[149]        The Court specifies, however, that only a strict construction of the Patent can permit its validity to be maintained. If, as the plaintiff urged, the Court found that the Batco product indeed infringed the Patent, then the Patent would have been so wide as to be invalid, since it would include elements that existed before the Patent was granted, as in the case of the Compton conveyor as discussed above.

Validity of Patent

[150]        The onus of proving invalidity lies on the person attacking it.^[90]

[151]        The onus is the usual standard, i.e. the balance of probabilities; however, it may be more difficult to overcome where:

a)         validity is challenged on the basis of anticipation or obviousness, since they are difficult tests to meet;^[91]

b)         the defendant has itself recognized the value of the invention.^[92]

Anticipation

[152]        The applicable test is set out in section 28.2(1) of the Patent Act insofar as relevant as follows:

[153]        Section 28, Filing Date:

[154]        Section 28.1, Claim Date:

Anticipation by prior publication

[155]            Anticipation by prior publication is a particularly difficult defence to make out because:

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.^[93]

[156]        It is not enough for the prior publication to map out in a general way a possible solution, it must give clear and unmistakable direction, or "plant the flag" at the exact destination.^[94]

Anticipation by prior use

[157]        The general principles in Beloit and Free World Trust that relate to anticipation by prior publication are also applicable to anticipation by prior use or sale.^[95]

[158]        The principles governing prior publication may need to be tailored to fit the particular characteristics of prior use or sale:

..For example, the principle that the prior publication must contain so clear a direction that a skilled person reading and following it would be led, without error, to the invention claimed, applies to the specific context of prior publication. In the case of prior publication, the skilled person will read the publication. In the case of prior use or sale, reading may not be relevant. When faced with having to decide whether there has been anticipation by disclosure through prior use or sale under para. 28.2(1)(a), it is necessary for the Court to have regard to the circumstances of prior use or sale, in order to determine how a person skilled in the art might be led, without error, to the invention claimed... ^[96]

[159]        Furthermore, as stated in Baker Petrolite Corp.:

...For the purpose of analyzing anticipation in the context of disclosure by prior sale or use, the following principles, which supplement, but do not alter the principles set out in Beloit v. Valmet and Free World Trust, apply:

1. Sale to the public or use by the public alone is insufficient to prove anticipation. Disclosure of the invention is required to constitute anticipation under s. 28.2(1)(a).

Use of the product will amount to disclosure in so far as it makes available the necessary information which describes the invention.

2. For a prior sale or use to anticipate an invention, it must amount to "enabling disclosure"...

[160]        It has been conceded by the defendants, through the expert called on their behalf, that there has been no anticipation by any of the publications in Schedule "B" (of the Amended Statement of Defence and Counterclaim to Further Amended Statement of Claim attached as Appendix "3" to these Reasons) to the defence and counterclaim nor of the uses in Schedule "C" (of the Amended Statement of Defence and Counterclaim to Further Amended Statement of Claim attached as Appendix "4" to these Reasons). The only anticipation asserted in Mr. Hanson's oral evidence concerned the Compton device when operated in failure mode as described by Mr. Compton. Mr. Compton testified that he did not want his machine operated in that way, and that he directed customers not to do so when he became aware of it. Mr. Hanson conceded in cross-examination that operating the device in that fashion could cause serious damage. He also conceded that operating a device in failure mode could not anticipate a device designed to properly operate under those conditions.^[97]

Obviousness

[161]        The applicable test is set out in section 28.3 of the Patent Act in as far as relevant as follows:

[162]        The hypothetical person skilled in the art is assumed to have general common knowledge:

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 Co. v. Firestone Tyre and Rubber Co., [1972] R.P.C. 457 (C.A.) at 482.

...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., supra, at 499-500. What constitutes a reasonable and diligent search is a question of fact.^[98]

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.^[99]

[163]        The simplicity of an invention is not proof that it lacked inventive ingenuity:

There are numerous decisions to the effect that the simplicity of a device is not proof that its production did not involve the exercise of inventive ingenuity and that it was obvious. This was stressed as early as 1890 in Vickers, Sons & Co. Ltd. v. Siddell (1890), 7 R.P.C. 292, where Lord Hershell said in the House of Lords, at p. 304:

If the apparatus be valuable by reason of its simplicity, there is a danger of being misled by that very simplicity into the belief that no invention was needed to produce it. But experience has shown that not a few inventions, some of which have revolutionized the industries of this country, have been of so simple a character that when once they were made known it was difficult to understand how the idea had been so long in presenting itself, or not to believe that they must have been obvious to everyone...

Indeed, it is established that an invention is not to be considered obvious because of its simplicity. ^[100]

[164]        In deciding that prior art which showed a particular reaction taking place in the gaseous phase did not make obvious the reaction in the liquid phase, the Supreme Court of Canada quoted from Technograph Printed Circuits Ltd. v. Mills & Rockley (Electrics) Ltd.:^[101]

... Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention that he claims in his specification if he started from something that was already known. But it is only because the invention has been made and has proved successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention. It may be that taken in isolation none of the steps which it is now possible to postulate, if taken in isolation, appears to call for any inventive ingenuity. It is improbable that this reconstruction a posteriori represents the mental process by which the inventor in fact arrived at his invention, but, even if it were, inventive ingenuity lay in perceiving that the final result which it was the object of the inventor to achieve was attainable from the particular starting point and in his selection of the particular combination of steps which would lead to that result.^[102]

[165]        Mr. Hanson's analysis on obviousness was purely an a posteriori reconstruction. He first read and understood the Patent. He then reviewed the prior art to identify those he considered to be most like the patented invention. He so identified Dussault (Exhibit D-19 Tab I) and the Compton device. He then looked at the remaining prior art to see if he could find the missing pieces. It is significant that Mr. Hanson apparently overlooked the fact that Dussault was a two-belt and not a continuous belt device, although he had identified the continuous belt as an essential element of the claimed invention (Exhibit D-19, para. 36(b).^[103]

[166]        None of the art cited by the defendants has the key elements of a belt mounted on an inner surface of a sidewall so as to be formed into a cupped shape thereby so as to confine material on the belt for entry of the material onto the tube conveyor for transport along the tube.

[167]        Without these elements, an ordinary skilled person in the art would not be led by the prior art, alone or in combination, directly and without difficulty to the solution taught by the '257 Patent.

Ambiguity, Insufficiency of the Claim's lack of Essential Elements

[168]      Section 27(4) of the Patent Act states that:

[169]        In Pioneer Hi-Bred v. Canada (Commissioner of Patents),^[104] it was held:

...the applicant must disclose everything that is essential for the invention to function properly. To be complete, it must meet two conditions: (1) it must describe the invention and define the way it is produced or built; and (2) the applicant must define the nature of the invention and describe how it is put into operation. A failure to meet the first condition would invalidate the application for ambiguity, while a failure to meet the second would invalidate it for insufficiency.

Sufficiency of Claim

[170]        The test for sufficiency is "whether the information provided in the specification was sufficient to explain the functioning of the invention to a person skilled in the art...".^[105]

[171]        Disclosure is not insufficient merely because some trial or experimentation not amounting to invention might be needed by a person skilled in the art.^[106]

Ambiguity         

[172]        Regarding the allegation of ambiguity, the evidence is that each claim term is readily understood by a person skilled in the art by application of the plain and obvious meaning and hence is not ambiguous.

Allegations that the invention claims are broader than the inventor made and disclosed

[173]        An inventor may not validly claim what he has not described. Specifically, the claims cannot be broader than (a) the actual invention or (b) the invention as described in the specification. If a patentee has invented a specific means of curing baldness, a claim which would cover other cures for baldness would be bad.^[107]

[174]        Omission of a non-essential feature will not render a patent invalid. In Metalliflex Ltd. v. Wienenberger Aktiengesellschaft (1960),^[108] the Supreme Court of Canada held a watchband patent to be valid despite the connection means between the parts not being specified:

...The monopoly applied for is the combination of three elements, and the particular means by which the parts are to be held together is immaterial...

The appellant does not claim a holding means. This, of course, may be effected in any practical way. In the specifications, a means proposed to be used by the respondent was disclosed, but it is not essential that it should be that particular one. It is beyond question that the parts have to be held together, but the means to attain that purpose and hold together the combination, which is the invention claimed in 1 and 2, is not material.

Thus, in The King v. Uhlemann Optical Co.,15 C.P.R. 99, [1952] 1 S.C.R. 143, it was held that the claims to a spectacle construction were valid, although it was not specified how these straps "embracing" the edges of the lenses would maintain the embrace. (Vide also: Can. Tire Corp. v. Samson-United of Can. Ltd., [1940] 3 D.L.R. 64, S.C.R. 386). In this latter case, the Claims spoke of blades carried by a hub without specifying any means to retain them in position during operation. In both cases the Claims were held to be valid.

[175]        The evidence shows that the claims do not extend beyond the invention made or disclosed.

Utility

[176]        The Patent Act defines 'invention' as meaning any new and useful act or process; accordingly it is necessary that the invention be useful.^[109]

[177]        The test for utility is appropriately stated as follows:

..."not useful" in patent law. It means "that the invention will not work, either in the sense that it will not operate at all or, more broadly, that it will not do what the specification promises that it will do".

... it is sufficient utility to support a patent that the invention gives either a new article, or a better article, or a cheaper article, or affords the public a useful choice...^[110]          

...If when used in accordance with the directions contained in the specification the promised results are obtained, the invention is useful in the sense in which that term is used in patent law. The question to be asked is whether, if you do what the specification tells you to do, you can make or do the thing which the specification says that you can make or do.^[111]

[178]        The plaintiff's invention clearly satisfies the test for utility.

[179]        In Free World Trust, at paragraph 32, the Supreme Court of Canada clearly stated that "...the ingenuity of the patent lies not in the identification of a desirable result but in teaching one particular means to achieve it". On this basis, as discussed above, the Court concludes that the Patent is valid; and, as is stated at the beginning, defined by its claims.

[180]        The plaintiff's action must fail, whatever the reading of the Patent. On a narrow construction, the defendants' Batco Pit Stop cannot be covered by the Patent; on a broad interpretation, which would include the defendants' Batco Pit Stop, it is impossible to distinguish other conveyors, despite the plaintiff's attempt to exclude the Compton conveyor from such a reading. In any event, the Compton conveyor would also be clearly covered, which would then cast doubt on the entire Stonehouse Patent.

[181]        A patent can be nothing more nor anything less than it is construed to be.

The inventor can transend himself but the patent remains what it's stated to be.

CONCLUSION

[182]        In conclusion, therefore, there is no infringement by Batco in respect of any of the claims of the '257 Patent; and also Stonehouse's '257 Patent is valid.

                                                                  JUDGMENT

THIS COURT ORDERS that:

1)         The action of Mr. Stonehouse be dismissed;

2)         The counterclaim of Batco be dismissed;

3)         In the circumstances, the parties should bear their own costs.

"Michel M.J. Shore"

                                                                                                                                                   Judge                      

                                                             FEDERAL COURT

                            NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                                                       T- 153-01

STYLE OF CAUSE:                                       ROSS STONEHOUSE

v.

                                                                        BATCO MANUFACTURING LTD.

                                                                        and AG GROWTH INDUSTRIES INC.

PLACE OF HEARING:                                 Saskatoon, Saskatchewan       

DATE OF HEARING:                                   November 15 to 23, 2004

REASONS FOR                               

JUDGMENT AND JUDGMENT:                The Honourable Mr. Justice Shore

DATE OF REASONS FOR

JUDGMENT AND JUDGMENT:                December 22, 2004

APPEARANCES:

Mr. Peter E.J. Wells                                         FOR THE PLAINTIFF

Mr. Mark S. Mitchell

Mr. Christopher Van Barr                                 FOR THE DEFENDANTS

Mr. Michael Crichton

SOLICITORS OF RECORD:

LANG MICHENER                                       FOR THE PLAINTIFF

Toronto, Ontario

GOWLING LAFLEUR HENDERSON        FOR THE DEFENDANTS

Ottawa, Ontario