Illinois Tool Works Inc. v. Cobra Fixations Cie Ltée. - Cobra Anchors Co. Ltd.

Illinois Tool Works Inc. v. Cobra Fixations Cie Ltée. - Cobra Anchors Co. Ltd.
Court (s) Database
Federal Court Decisions
Date
2002-07-29
Neutral citation
2002 FCT 829
File numbers
T-2313-96
Notes
Digest
Decision Content
Date: 20020729
Docket: T-2313-96
Neutral Citation: 2002 FCT 829
Ottawa, Ontario, this 29th day of July 2002
PRESENT: THE HONOURABLE MR. JUSTICE PELLETIER
BETWEEN:
ILLINOIS TOOL WORKS INC.,
ITW CANADA
and
ITW CANADA HOLDINGS COMPANY
Plaintiffs,
Defendants by Counterclaim
and
COBRA FIXATIONS CIE LTÉE -
COBRA ANCHORS CO. LTD.
Defendant,
Plaintiff by Counterclaim
REASONS FOR ORDER
[1] The Plaintiffs, Illinois Tool Works Inc., (ITW) ITW Canada (a limited partnership), and ITW Canada Holdings Company (collectively the plaintiffs) bring this action alleging infringement of Canadian Patent no.1,283,566, (the ITW Patent) against the defendant Cobra Fixation Cie Ltée - Cobra Anchors Inc.(the defendant) On the usual theory that the best defence is a good offence, the defendant counterclaims that the ITW patent is invalid for obviousness and claiming more than disclosed or lack of utility. Thus did drywall anchors, those little sleeves inserted into drywall which receive a screw, allowing the consumer to hang a picture, come to occupy the time of 7 lawyers and a judge for 7 days in a Montreal courtroom in the spring of 2001.
[2] The drywall anchor in question, which is described as a "Self drilling Threaded Insert for Drywall" by its inventors Richard Ernst, Francis Peterson and Melissa Sledz, was first patented in the United States by the inventors (U.S. Patent 4,601,625 - the Ernst patent). The Ernst patent was assigned to ITW, who subsequently applied for and obtained the Canadian patent claiming a priority date of May 11, 1984, based on the Ernst patent. ITW entered into license agreements with its Canadian subsidiaries with respect to the sale of items sold under either the Canadian or the American patent. While some suggestion was made in cross-examination that one or more of the plaintiffs may lack the status to bring this action, this has not been pursued.
[3] Section 55 of the Patent Act, R.S.C. 1985, c. P-4 identifies those who are entitled to bring an action for infringement.
55. (1) A person who infringes a patent is liable to the patentee and to all persons claiming under the patentee for all damage sustained by the patentee or by any such person, after the grant of the patent, by reason of the infringement.
55. (1) Quiconque contrefait un brevet est responsable envers le breveté et toute personne se réclamant de celui-ci du dommage que cette contrefaçon leur a fait subir après l'octroi du brevet.
[4] I am satisfied that ITW has the status to bring this action as assignee of the U.S. patent and patentee under the Canadian patent. I am also satisfied that ITW Canada and ITW Canada Holdings Inc. are claiming through the patentee by virtue of paying royalties to ITW. [Examination of Thomas Buckman, April 2, 2001, pp. 47-48] Kirin-Amgen Inc. v. Hoffman-La Roche Ltd. (1999), 87 C.P.R. (3rd) 1 at 27-28.
[5] The defendant is a Canadian company founded by Pierre McDuff. It specializes in the design manufacture and sale of anchors of various types. Mr. McDuff decided to go into the anchor business immediately after obtaining his Licentiate in Laws from the University of Montréal in 1971. He has been successful as evidenced by the fact that the defendant's annual sales are in the tens of millions of dollars. It sells primarily into the American market where it is a supplier to a number of "big box" retailers. Its product line consists of approximately 14 different types of anchors in hundreds of different sizes.
[6] Two of the defendant's products are in issue in this claim, the WallDriller and the Picture Hook. There have been 5 or so models of the WallDriller which have gone through two small changes. There is no difference between these products in terms of the allegations of infringement. The Picture Hook is a WallDriller which is sold with a hook for use in hanging pictures instead of a straight fastener. Figure 1 of Annex 1 to these reasons is a drawing of a WallDriller taken from Canadian Patent 2,205,901 issued to Titan Technologies Inc. and which is now owned by the defendant.
[7] The WallDriller is inserted by piercing the drywall with the point (103 in the drawing) and then screwing the WallDriller into the wall using a Phillips type screwdriver. As the WallDriller turns, the sharp cutting edge 107A cuts the material encountered while the low thread 115 begins the process of tapping a thread for the raised thread 104 which is disposed on the body of the WallDriller. A fastener equal in length to or shorter than the body of the anchor is screwed into the central bore of the anchor. In the case of the Picture Hook, a fastener with a hook suitable to suspend a painting is used.
[8] This can be compared to Figure 2 in Annex 1, a drawing of the first embodiment of the invention as shown in the ITW patent. This anchor is inserted by piercing the drywall with the point 31 and then turning the anchor using a Phillips screwdriver so that the points 33 cut a hole in the drywall. This drilling operation continues until the drilling end has substantially drilled a hole in the drywall at which point, the thread 20 engages the drywall and cuts a thread allowing it to screw itself into the drywall. A fastener which exceeds the length of the body can then be inserted through the bore in the centre of the body. As the fastener advances, it encounters the drilling end 15 at a spoon like indentation 23 where further advancement of the fastener causes the drill end 15 to yield at the notched indentations 45 and to deflect.
[9] Mr. McDuff testified that development of the WallDriller originated in 1993 with an early design done by Tom McSherry called the Bat-Anchor. McSherry was an inventor living in the United States who called Cobra wanting to discuss his invention with Mr. McDuff. The latter was busy and so simply asked Mr. McSherry to send some samples of his invention, which he did. [Examination of Mr. McDuff, April 4, 2001, p.89]. While Mr. McDuff was interested in the invention, he also saw problems with it. The advantage of the Bat-Anchor is that it worked on the principle of a screw in that one screwed it into the wall. On the other hand, it had no central point so that it was difficult to reliably install it on a predetermined point. Figure 3 in Annex 1 is a drawing of the Bat-Anchor taken from U.S. patent 5,208,203 issued to Mr. McSherry and assigned to Titan Technology Inc.[1] [Cross-examination of Pierre McDuff, April 5, 2001, at pp.150-151]. In that patent, McSherry specifically refers to the Ernst patent. Consequently, Mr. McSherry can be taken to have knowledge of the original Ernst patent when working on the design of the WallDriller.
[10] Mr. McDuff made Mr. McSherry aware of his concerns about the Bat-Anchor as a result of which further design work was done. In the end, Mr. McSherry produced another design which did have a centre point and which was the object of U.S. patent no. 5,536,121 issued to Mr. McSherry as inventor and assigned to Titan Technologies Inc. Mr. McDuff rejected this design because it did not completely incorporate the screw concept. Notwithstanding this rejection, Mr. McSherry patented the design. A drawing of the modified Bat-Anchor is shown in Annex 1 as Figure 4.
[11] This lead to further discussions and design work, ending in a design for which Mr. McSherry obtained U.S. patent 5, 752,792, a design which Mr. McDuff admitted was an early version of the WallDriller. [Cross-Examination of Pierre McDuff, April 6, 2001 p. 40]. This design is shown in Figure 5 in Annex 1. This was subsequently followed by U.S. patent 5, 833,415 which was the patent covering the first generation of the WallDriller. Figure 1 of that patent is indistinguishable from Figure 1 of patent 5,752,792 as shown in Figure 5 of Annex 1. [Cross-examination of Pierre McDuff April 6, 2001, at pp. 51-52].
[12] Mr. MacFarlane, counsel for the plaintiff, attempted to demonstrate through his cross-examination of Mr. McDuff that he and Mr. McSherry were aware of the Ernst patent at all times during the development of the WallDriller. He argues that they consciously took steps to retain the essence of the invention while at the same time attempting to distinguish their device from the Ernst patent. In support of this position, he refers to a letter dated April 5, 1994 from Mr. Dave Starke, a Cobra employee who often assisted Mr. McSherry, a dyslexic, with correspondence, to Mr. McDuff confirming a conversation to the effect that the concept of a centre point was being abandoned:
"It is my understanding that the centre point concept is to be abandoned based on the difficulty to produce such a part, the lack of customer response, and the possible infringement of ITW's design."
Exhibit A-82 (2nd last page)
In fact, the concept of a centre point was never abandoned.
[13] Counsel also points to changes in wording in the various Mr. McSherry patents which suggests an alertness to the significance of the issue of drilling, as opposed to screwing or cutting. Finally counsel argues that an adverse inference should be drawn from the fact that Mr. McSherry was not called to testify on behalf of the defendant since he was the designer of the WallDriller and could speak authoritatively to the question of design intent.
[14] It may very well be that I am missing the point but I take the law to be that infringement is not a matter of intention. One can infringe without having any knowledge of another's patent and without any intention to do so. The converse, it seems to me, is that one can deliberately set out to avoid infringing a patent of which one has knowledge. Whether one has succeeded or not is determined by a construction of the claims of the patent and not by one's intention. Consequently, I attribute no significance to the fact that Mr. McDuff and Mr. McSherry had knowledge of the Ernst patent and attempted to design an anchor which would not infringe that patent.
[15] Were Mr. MacFarlane at my elbow as I write this, he would no doubt say that there is a difference between an honest attempt to avoid infringement and the attempted theft of another's invention. He might say as well that it is the duty of the court to uphold the patentee's legitimate monopoly in all cases, but it should be particularly vigilant in the face of a deliberate attempt to appropriate the fruit of another's inventiveness. In fairness to counsel, this argument was not explicitly raised before me and no authority was cited to that effect. But unless this is the thrust of the evidence developed by Mr. MacFarlane, I am at a loss to understand its relevance.
[16] The issue of deliberate infringement frequently arises in the context of the personal liability of directors for the infringing acts of the company. See for example Mentmore Manufacturing Co. v. National Merchandise Manufacturing Co. (1978), 40 C.P.R. (2d) 164, a decision of the Federal Court of Appeal, where the applicable principles are set out. But no claim is brought against Mr. McDuff in his personal capacity. One might also suggest that evidence of deliberate infringement is relevant to the issue of punitive damages, but no request is made here for damages beyond those normally provided for in the event of a finding of infringement.
[17] The upshot of this discussion is that I see no reason to inquire into the state of mind of Mr. McDuff and Mr McSherry. The question of infringement or not will be determined by comparing the defendant's devices to a proper construction of the patent It follows that I see no relevance to any adverse inference which I might draw from the defendant's failure to call Mr. McSherry and I decline to do so.
[18] With that brief historical introduction, I embark upon the first function of a judge deciding a patent case, which is to construe the claims of the patent in a purposive way, without being result driven in doing so.
¶ 45 The key to purposive construction is therefore the identification by the court, with the assistance of the skilled reader, of the particular words or phrases in the claims that describe what the inventor considered to be the "essential" elements of his invention.
Whirlpool Corp. v. Camco Inc., [2002] SCC 67, [2000] 2 S.C.R. 1067.
[19] In Free World Trust v.Electro-Santé Inc., [2000] SCC 66, [2000] 2 S.C.R. 1024 the Supreme Court set out the principles of patent interpretation:
[ para. 31] (a) The Patent Act promotes adherence to the language of the claims.
(b) Adherence to the language of the claims in turn promotes both fairness and predictability.
(c) The claim language must, however, be read in an informed and purposive way.
(d) The language of the claims thus construed defines the monopoly. There is no recourse to such vague notions as the "spirit of the invention" to expand it further.
(e) The claims language will, on a purposive construction, show that some elements of the claimed invention are essential while others are non-essential. The identification of elements as essential or non-essential is made:
(i) on the basis of the common knowledge of the worker skilled in the art to which the patent relates;
(ii) as of the date the patent is published;
(iii) having regard to whether or not it was obvious to the skilled reader at the time the patent was published that a variant of a particular element would not make a difference to the way in which the invention works; or
(iv) according to the intent of the inventor, expressed or inferred from the claims, that a [page1044] particular element is essential irrespective of its practical effect;
(v) without, however, resort to extrinsic evidence of the inventor's intention.
(f) There is no infringement if an essential element is different or omitted. There may still be infringement, however, if non-essential elements are substituted or omitted.
[20] The Supreme Court also noted that it is the means of achieving a desirable result which is protected not the desirable result itself :
[para 32] The claims cannot be stretched to allow the patentee to monopolize anything that achieves the desirable result. It is not legitimate, for example, to obtain a patent for a particular method that grows hair on bald men and thereafter claim that anything that grows hair on bald men infringes.
[21] Just as the words of the patent cannot be stretched, nor can they be shrunk to avoid an inconvenient result:
[para 51] The words chosen by the inventor will be read in the sense the inventor is presumed to have intended, and in a way that is sympathetic to accomplishment of the inventor's purpose expressed or implicit in the text of the claims. However, if the inventor has misspoken or otherwise created an unnecessary or troublesome limitation in the claims, it is a self-inflicted wound. The public is [page1054] entitled to rely on the words used provided the words used are interpreted fairly and knowledgeably.
[22] The judge who construes the claims of the patent must construe them as they would be understood by a person skilled in the art at the material time. The evidence as to the meaning of the words used in the patent to such a person, and of the state of knowledge of a person skilled in the art is provided by the experts. In this case, I had the assistance of two expert witnesses. The Plaintiff's expert was Mr. Mark Salmon who graduated from Manchester University with a Bachelor of Science in Mechanical Engineering in 1969, following which he completed a graduate apprenticeship program at Vauxhall Motors. From 1971 to 1977, he was employed as an engineer in fields unrelated to the field of fasteners or fixings, as they are referred to in the United Kingdom. In July 1977, Mr. Salmon joined Hilti (Great Britain) Limited as Technical Service Manager, in which capacity he was responsible for advising design professionals and users about the technical aspects of Hilti's products which included drywall and other fixings. In 1983, Mr. Salmon joined Rawlplug Company Limited, the largest manufacturer of fixings and drill bits in the U.K., as Technical Sales Manager. His duties included technical support for all of Rawlplug's fixings including advising design professionals and others on technical questions. In 1986, he was promoted to Customer Service Manager and in 1987 to Commercial Design Manager with responsibility for all Rawlplug's fixings. In that capacity he worked with a team of designers, manufacturing and marketing people in new product research and development. He also provided the liaison between Rawlplug and its solicitor and patent agents. In June of 1989, Mr. Salmon left Rawlplug to set up his own consulting business called Independent Fixings Consultants, which he continues to operate.
[23] Mr. Salmon has published a number of articles on anchors in trade journals. Between 1983 and 1989, he served on the Technical Committee of the Construction Fixings Association, the last three years in the capacity of Chair of that committee. In 1986, he was elected to the Committee European Outillage, a European Manufacturer's trade association, as one of three permanent representatives. He was elected Chair of the Technical Committee of this organization in 1998, a position which he held at the time of the trial. Mr. Salmon has also been the British trade representative on the European technical standards organizations since about 1986. He has also served as a representative of the Construction Fixings Association on standards committees in Britain. Mr. Salmon was tendered as an expert to give the opinion which he gave in his affidavit, a position which was not opposed by counsel for the defendant. For my purposes, I took him to be an expert on fasteners and anchors.
[24] The defendant's expert was Mr. Nicholas Fappiano. Mr. Fappiano received an Associate of Science designation in Manufacturing Engineering Technology from Waterbury State Technical College in Waterbury Connecticut in 1983. In 1986, he received a Bachelor of Science degree in Manufacturing Engineering Technology from Arizona State University in Tempe, Arizona. In the same year, he was certified by the Society of Manufacturing Engineers as a Manufacturing Technologist. Mr. Fappiano is not an engineer. Mr. Fappiano was employed by Anchor Fasteners in Waterbury Connecticut on a part time basis from 1985 to 1987. He worked there full time from 1987 to 1990. In the latter capacity, he designed automated, and semi-automated tapping in assembly machinery as well as some progressive die work. It appears that he also did some product design work as well in that period. Mr. Fappiano is currently a Manufacturing Engineering Manager with the Torrington Co. of Watertown, Connecticut. His current responsibilities include management of a manufacturing engineering department of forty personnel which is responsible for production support, new program launches, as well as tool gage and machinery design for automotive steering components manufacturing. He has experience and claims expertise in, high production hole producing processes for automotive steering products. He claims familiarity with drill geometry, speeds and feeds. He has also had personal experience in the use of construction anchors which he acquired while finishing a basement recreation room.
[25] Mr. Fappiano was tendered as an expert in anchoring and drilling in various substances including drywall. Counsel for the plaintiff was not prepared to concede Mr. Fappiano was an expert but took the position that instead of trying to exclude him, he would attempt to show that his evidence was entitled to little or no weight. Consequently, Mr. Fappiano was accepted as an expert on the basis on which he was tendered by the defendant.
[26] The two experts offered their views of the knowledge of the person skilled in the art at the material time, that is May, 1984. The plaintiff's expert, Mark Salmon was of the view that a person skilled in the art would have a Bachelor's degree in engineering though he conceded that some other type of formal qualifications might be sufficient in combination with appropriate experience. (Cross-examination of Mark Salmon, April 3, 2001, at p. 22). In addition the skilled person would have experience in the manufacture and probably the design of fixing systems for construction and a good understanding of known methods of manufacture of such devices. The knowledge of manufacturing methods would be necessary so that such a person's designs could be capable of being manufactured. The person would also be expected to have knowledge of the materials in which the fixing or fastener would be employed. The person would also be expected to have a knowledge of fasteners as generally used in the construction industry. According to Mr. Salmon, in preparing to design a drywall anchor, a skilled person would study drywall anchors by examining technical product literature and by doing a patent search.
[27] The defendant's expert, Mr. Fappiano took the position that a person of his broad experience was typical of a person skilled in the art. His experience was generally in the field of manufacturing engineering with some exposure to fasteners, but not necessarily in the construction context. Mr. Fappiano was of the view that a person skilled in the art would be aware of fasteners used in contexts other than construction and would make lateral connections between these types of industries. However, these lateral connections would stop short of demonstrating inventiveness since the workman skilled in the art is not blessed with this quality.
[28] With the help of the two experts, I now turn to the application of the principles set out in Free Word Trust v. Electro Santé Inc., supra. The patent has 23 claims of which the following are asserted in this action: 1, 4, 5, 7, 9, 10, 11, 12 and 14 [Plaintiff's Written Argument at para. 64]. Of these, claims 1 and 7 are independent claims and the other asserted claims dependent upon them.
[29] The specification to the patent teaches that it is a device for fastening articles to drywall, a building material which consists of a core of gypsum sandwiched between two layers of paper. It is common ground that the gypsum core is friable which means that it is subject to crumbling. The insert or anchor is essentially a threaded sleeve which is inserted into a sheet of drywall and accepts a screw, the fastener, by which an article is affixed to the drywall.
[30] The novelty claimed is the elimination of a separate hole drilling operation in the installation of the anchor and the ability to use screws of a length longer than the body of the anchor. According to the specification, anchors in use prior to the introduction of the invention required the user to drill a hole to receive the anchor as the first step in the installation of the anchor. The invention claims to have eliminated hole drilling as a separate step in the installation process by incorporating a drilling end (or drill tip) on the anchor itself. As a result, the anchor creates its own hole, eliminating one step in the installation process. This is the significance of the description of the invention as a Self Drilling Threaded Insert for Drywall.
[31] The Specification goes on to say that since axial (or forward) advancement of the insert is significantly slower in the drilling operation than in the thread forming operation, it is necessary that these operations not be performed simultaneously. To that end the drilling end of the anchor is equal in thickness to a standard sheet of drywall as is the body of the anchor. "This configuration allows the drilling operation to be completed prior to the start of thread formation in the drywall" [ITW patent p. 4 line 12].
[32] With that in mind, one turns to the construction of Claim 1, reproduced below:
1. An anchor for use in friable material comprising a generally hollow cylindrical body with a flanged end and a drilling end, said body having an exterior thread disposed thereon, said drilling end including means for allowing passage of an elongated fastener through and beyond said drilling end, said drilling end further including means for engaging said fastener and for causing said drilling end to deflect upon advancement of said fastener through said body.
Patent p.15.
[33] The elements of claim one are a generally hollow cylindrical body with a flanged end and a drilling end, an exterior thread disposed upon the cylindrical body, a way of allowing a long fastener to pass through and beyond the drilling end, and a way by which the drilling end can be made to deflect by the advancement of the fastener.
[34] There is no controversy as to the meaning of "hollow cylindrical body" and "flanged end". There is controversy as to the meaning of drilling end which is derivative of the dispute as to the meaning of drilling. Mr. Fappiano's evidence was that drilling was the making of a hole by a rotary end cutting tool. This is confirmed by the following authorities cited by Mr. Fappiano in his affidavit:
- "Drilling is a process by which a hole is originated or enlarged by a specific type of revolving end-cutting tool, a drill"
F.W.Wilson, ed., Tool Engineers Handbook, 2nd ed. (New York: McGraw-Hill, 1959).
- "Cutting tools for drilling - drills - are rotary end-cutting tools having one or more cutting lips"
T.J. Drozda, ed., Tool and Manufacturing Engineers Handbook, Vol. 1, 4th ed., (Society of Manufacturing Engineers, 1983) p. 9-1.
-"Drills are rotary end-cutting tools having one or more cutting lips and one or more helical or straight flutes for removal of chips and the admission of cutting fluid"
M.B.Bever, ed., Encyclopedia of Materials Science and Engineering (Cambridge: MIT Press, 1986) p. 1231.
[35] The obvious consequence of this definition is that a tool which does not cut at the end is not a drill.
[36] Mr. Salmon had a more inclusive definition of drilling:
82. A skilled person would understand "drilling" to mean the removal of material by a rotating tool to form a hole. There are many types of drills. Some have one or more cutting edges or helical flutes to bite into material and remove it backward. Some have a tube shape with a sharpened opening to cut out a core. Some have a scraping blade edge that scrapes or scores away material. Some have one or more side notches having a cutting edge.
Paragraph 82. Affidavit of Mark Salmon dated January 24, 2001. (Footnotes omitted).
[37] In his cross-examination, Mr. Salmon accepted Mr. Fappiano's definition of drilling as rotary end cutting. (Cross - Examination of Mr. Salmon, April 3, 2001, at p. 69). In his cross-examination, Mr. Fappiano agreed that the cutting edges of a drill sweep back from the centre point of the drill shaft. (Cross-examination of Nicholas Fappiano, April 9, 2001, at p. 133)
[38] The defendant's theory is that a device can advance into a wall by means other than drilling, namely piercing (like a nail) or by screw action. In his cross-examination, Mr. Salmon explained that screwing consists of an initial displacement of material by a conical point followed by thread cutting in the sides of the opening created by the displacement. (Cross examination of Mark Salmon, April 3, 2001 at p. 98, lines 10 to 21). This distinguishes it from drilling which involves the cutting and removal of material from the host material (Cross-examination of Mark Salmon April 3, 2001, at p. 76, lines 6 to 14).
[39] The evidence supports the conclusion that drilling occurs when a rotating tool creates a hole by cutting the underlying material by means of one or more cutting edges which rotate around a centre point. (Cross-examination of Nicholas Fappiano April 9, 2001, at p. 125, lines 14-19). However, a drill can consist of only one cutting edge.(Cross-examination of Nicholas Fappiano April 9, 2001, at p. 143). The angle of that edge in relation to the axis of the drill may vary.
[40] A related controversy is the relationship between tapping and drilling. As will be recalled, the inventor takes the position that drilling and tapping must necessarily be separate as opposed to simultaneous operations.
[41] Mr. Fappiano initially took the position that it was impossible to drill and tap a thread at the same time. His evidence was that the rate of forward advance in drilling is a function of a number of things including the hardness of the substrate and the pressure applied to the drill (Cross-examination of Nicholas Fappiano April 9, 2001 pp. 93 and 94). Thread formation requires the thread forming edge to advance into the material at the rate of one pitch (the distance from the crest of one thread to the crest of the next) per revolution of the tool (idem, at p. 95). According to Mr. Fappiano's affidavit, these operations cannot be combined. (Affidavit of Nicholas Fappiano, at para. 59).
[42] Mr. Fappiano's cites a number of sources indicating that drilling should be completed before tapping is initiated. (Affidavit of Nicholas Fappiano at para. 56). However, Mr. Fappiano's initial opinion that this combined operation was impossible mellowed to the point that he admitted that while it may be possible to tap and drill at the same time, it was very difficult to accomplish. (Cross-examination of Nicholas Fappiano, April 9, 2001, at pp. 178-179).
[43] Mr. Salmon's position, as set out in paragraphs 91 to 96 of his affidavit, is much the same. Drilling and tapping are difficult to do simultaneously:
91. A skilled person would understand why the ITW patent directs that drilling should precede cutting threads. Normally, drilling and thread forming do not proceed in a material at the same rate. A thread is cut at a predictable rate; each revolution advances the thread by one pitch length, i.e. the axial length between crests of the thread. A drill's rate of advancement, however, depends on many factors including: the size of the hole, the hardness of the material, the force on the drill bit, the type of drill (scraping, cutting) and the angle of attack of the drill to the material. Therefore it is common sense to separate them. For example, column 4, lines 13-26 of U.S. Patent 2,479,730 of Exhibit 1 (the self drilling, self tapping screw) teaches that the drill's length should be about equal to the material depth so drilling may be completed before tapping commences to ensure formation of a perfect thread.
93. It is well known, however, that one may drill and tap simultaneously in a soft material, if sufficient force is applied. U.S. Patent 2,479,730 also observes this at column 4, line 45. Of course, "soft" is a comparitive term and must be considered in the light of the other factors, noted above, that affect a particular drill's rate of advancement. Nevertheless, in the present application where one is drilling a hole and cutting a thread in a friable material like drywall a skilled person would see the wisdom of the ITW patent. The prudent course is to have drilling precede tapping and to make both the drilling end and the body equal in length, that length being the anticipated thickness of the wall material, I will explain why.
...
96. In a soft material, the rate of advancement of an anchor during drilling depends, to a great extent, on the pushing force used to drive it forward. Of course, the strength and aggressiveness of potential users varies significantly. Further, the on and off application of force that anyone user may apply while making a partial turn of a screwdriver also varies considerably. Therefore the rate of advancement of an anchor when drilling in soft material will normally vary, not only from user to user, but also during installation by any user. For this reason, a skilled person would understand that, from a practical viewpoint, drilling should be done before threading and would readily understand the patent's specification that "The threaded and drilling portions are generally equal in length to the thickness of standard drywall material"
[44] The evidence on this issue seems to be that while, as a practical matter, it is desirable to separate drilling and tapping, it is not impossible to combine them though it is difficult to do so.
[45] The other contentious items in Claim 1 are "means for allowing passage of an elongated fastener" and the means for deflecting the drilling end. The problem being addressed here is that of two objects attempting to occupy the same space at the same time. The drilling end projects from the "generally hollow cylindrical body" along the central axis. If a fastener is to extend beyond the tip of the cylindrical body, it must displace the drilling end. This requires force to be brought to bear on the drilling end in a way which causes it to deflect out of the way.
[46] In one embodiment, weakening slots, as well as a spoon-like opening which guides the tip of the fastener, are provided to facilitate the deflection of the drilling tip. The specification describes this process in the following way:
At the juncture of the threaded portion and the drilling portion, weakening slots 45 facilitate the lateral deflection of the blade 19 when a threaded fastener is driven through the threaded insert. The spoon-like opening 23 forms a curved wall 35 which guides the tip of a fastener driven through the insert
[47] The relationship of these elements is made clear upon a careful reading of Claim one:
1. An anchor for use in friable material comprising a generally hollow cylindrical body with a flanged end and a drilling end, said body having an exterior thread disposed thereon, said drilling end including means (1) for allowing passage of an elongated fastener through and beyond said drilling end, said drilling end further including means (2) for engaging said fastener and for causing said drilling end to deflect upon advancement of said fastener through said body.
(Bold numbers and emphasis added).
[48] Upon reading claim one as it is parsed above, one notes two elements: (1) means for allowing passage of an elongated fastener through and beyond the said drilling end and (2) means for engaging said fastener and for causing said drilling end to deflect upon advancement of said fastener through said body. It is significant that the two elements which are identified are not specific physical features but functions. In other words, the means are described by what they do, and not by how they do it. It would therefore be an error to construe these two phrases as stipulating a particular physical configuration when all that is intended is a description of a certain function.
[49] The plaintiffs also assert Claims 4 and 5, both of which are dependent upon Claim 1. Those claims are set out below:
4. An anchor according to Claim l, wherein said body includes a generally cylindrical bore adapted to receive a threaded elongated fastener.
5. An anchor according to Claim 4, wherein said bore has a surface interrupted by axially oriented teeth.
[50] Claim 4 adds the notion of a bore through the body of the insert to receive the fastener while claim 5 adds the element of axially oriented teeth in the bore. There is no reason nor any evidence to suggest that these words should be given a meaning other than their plain and ordinary meaning.
[51] The next independent claim asserted is claim 7 which provides as follows:
7. An anchor for use in friable material comprising a generally hollow cylindrical body with a flanged end and a drilling end, said body having an exterior thread disposed thereon, said drilling end including notch means formed in said drilling end adjacent said body for allowing passage of an elongated fastener through and beyond said drilling end, said notch means creating a section of reduced cross sectional area in said drilling end to reduce resistance of said drilling end to bending.
(emphasis added)
ITW Patent, p. 16.
[52] It can be seen that claim 7 appears to follow the structure of claim 1 except that instead of two functions, as found in claim 1, it addresses only one function: "allowing passage of an elongated fastener through and beyond said drilling end". However claim 7 describes a physical configuration by which this function will be accomplished. In the passage above, I have bolded the portions which differ from Claim 1. It can be seen that Claim 7 identifies "notch means" as the "means for allowing passage of an elongated fastener through and beyond said drilling end". Claim 7 therefore represents a concrete means by which the function required in Claim 1 is to be implemented. Claim 7 not only specifies the physical configuration but also its mode of operation. The notch means create an area of reduced cross section to reduce the resistance of the drilling end to bending.
[53] The meaning of notch means was the subject of considerable evidence. The discussion of notch means in Mr. Salmon's affidavit begins by recognizing that "notch means" does not correspond to a familiar meaning. He is correct insofar as "notch means" taken as an expression is concerned. However, "notch" has a familiar meaning and "means" is a term used in the arcana of drafting patents to qualify a thing used in an instrumental fashion. So "notch means" would refer to notches used for a particular purpose or function. To the extent that "notch means" refers to notches used for a particular purpose, it is not obvious that there is anything more for an expert to say about the meaning of "notch means". The purpose or purposes to which notches are put will be found in the patent, and not in some technical definition of the expression notch means.
[54] Mr. Salmon takes the position that notch means is defined in the patent at page 2 line 29 and following where the following appears:
The means formed in said drilling end for allowing passage of an elongated fastener through and beyond the drilling end is notch means creating a section of reduced cross-sectional area in the drilling end to reduce resistance of the drilling end to bending.
[55] Mr. Salmon concludes from this sentence that notch means would have the following characteristics:
a) it is found in the drilling end,
b) it allows passage of a fastener through and beyond the drilling end;
c) it creates a section of reduced cross-sectional area in the drilling end, and
d) it reduces resistance of the drilling end to bending.
Affidavit of Mark Salmon at para. 64.
[56] Mr. Salmon then examines the second embodiment described in the patent, finds that there is an element which has the same characteristics as those which he attributed to "notch means" which allows him to conclude that notch means are found in the second embodiment.
72. Therefore, in my opinion, a skilled person would see that the "notch means" of the second embodiment is the flat discontinuity or cleft slanting across the drilling end. It is located in the drilling end and has all the function of the "notch means" namely allowing passage, reducing cross-sectional area and reducing resistance to bending.
[57] There are two problems with this analysis. The first is that one cannot say that if a second thing does the same thing as a first thing, it is the first thing. If one needs to write a message, a pen will do as well as a pencil, but that is not an argument which proves that a pen is a pencil. It may support an argument that both are writing instruments but that is a different matter. Mr. Salmon's argument ignores this distinction. He says that notch means accomplish a certain function in the first embodiment, and certain features accomplish the same function in the second embodiment, therefore notch means are present in both embodiments. The correct conclusion is that both embodiments include means for "allowing passage of an elongated fastener through and beyond said d