Digests

Quadco Equipment Inc. v. Timberjack Inc.

T-867-96

2002 FCT 96, Tremblay-Lamer J.

28/1/02

28 pp.

Canadian Letters Patent 1,103,130 (130 patent) for accumulator felling head (attachment placed on front of machines like snow plow or at end of boom-like backhoe) issued June 16, 1981 to Logging Development Corporation for 17 years--Assigned to plaintiff in 1995--Expired in 1998--Plaintiff claiming defendant infringed its exclusive rights by selling in Canada accumulator felling head having features set out in claims 1, 4, 7 of 130 patent--Seeking damages in respect of devices sold by defendant between date plaintiff first acquired patent until date patent expired--Claim 1 directed to "accumulator arm" accumulating trees in device for gathering, retaining trees; claim 4 directed to accumulating arm of claim 1 in device for severing trees; claim 7 adds to claims 4, 5, or 6 limitation that sweep arm and accumulator arm pivot about parallel and spaced apart axes i.e. only infringed if claim 4 infringed--(1) Construction of claims-- General principles--Purposive construction whether persons with practical knowledge, experience of kind of work in which invention intended to be used would understand that strict compliance with particular descriptive word, or phrase in claim intended by patentee to be essential requirement of invention so that any variant would fall outside monopoly claimed, even though could have no material effect upon way invention worked--Requires Court to identify words or phrases in claims that describe "essential" elements of invention--Claims must be construed based on expert evidence at trial as to meaning of terms used and understanding that these terms would convey at date of patent to ordinary worker skilled in art of accumulator felling heads and possessing common knowledge of people engaged in that field--Because financial consequences of infringement of patent potentially severe, important to limit uncertainty with respect to language of claims so that members of public may know where can go with impunity--Done by adhering to language of claims which promotes fairness, predictability-- Scope of monopoly thus function of written claims, but flexibility and fairness achieved by differentiating essential features from non-essential, based on knowledgeable reading of whole specification through eyes of skilled addressee-- Strict compliance with word or phrase essential unless obvious inventor knew failure to comply with that requirement would have no material effect on way invention worked--Court must interpret claims, cannot redraft them--When inventor stated in claims requirement essential to invention, court cannot decide otherwise--Non-essential elements of claim may be substituted without affecting claim--Infringement when some modifications brought to invention but essential elements remaining--To determine inventor's intention concerning particular word or phrase in claim, permissible to look at whole specification, including drawing, but not to enlarge or contract scope of claim as written--Onus on patentee to establish known and obvious substitutability at date of publication of patent--If fails to discharge onus, descriptive word or expression considered essential unless context of claims language otherwise dictates--(2) After assessing expert evidence, proper interpretation of claim 1 requiring lug and inner arm be pinned to frame at same point, i.e. lug must pivot about same axis so that lug free to pivot independently of movement of inner arm--This requires lug be connected through pin joint to pin which coincides with that axis--Axis defined by line--Inventor confirmed axis defined by line, but plaintiff objecting to admissibility of such evidence-- Submitting that since Whirlpool Corp. v. Camco Inc., [2000] 2 S.C.R. 1067 and Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R. 1024, intention of inventor flows from wording of claims as interpreted by person skilled in art, not from extrinsic evidence such as statement or admissions made to Patent Office--When Binnie J. stated in Free World Trust that "extrinsic evidence such as statements or admissions made in the course of patent prosecution" not admissible, had in mind file wrapper estoppel--Inventor's statement herein made during examination for discoveries, and plaintiff accepted that answer as binding--But given ambiguity concerning admissibility of inventor's answer, plaintiff's objection sustained, and statement given no weight--Regardless, claim 1 requiring lug and inner arm be pinned to frame at same point--In Timberjack device, lug not pinned to frame, but to moving first arm--Also does not pivot about same axis as inner arm and lug not free to pivot independently of movement of inner arm--Difference in connectivity substantially alters operation, design of Timberjack mechanism from mechanism claimed in 130 patent--As sufficient if one essential element different, Timberjack device not infringing claim 1 of 130 patent since essential element of claim 1 that lug and inner arm be pinned to frame at same point--As defendant's device not infringing claim 1, unnecessary to construe claims 4, 7 as incorporate elements of claim 1--Also no need to determine validity of 130 patent--Action dismissed.