Halford v. Seed Hawk Inc.

Halford v. Seed Hawk Inc.
Court (s) Database
Federal Court Decisions
Date
2004-01-23
Neutral citation
2004 FC 88
File numbers
T-2406-93
Notes
Digest
Decision Content
Date: 20040123
Docket: T-2406-93
Citation: 2004 FC 88
OTTAWA, ONTARIO, THIS 23rd DAY OF JANUARY 2004
Present: THE HONOURABLE MR. JUSTICE PELLETIER
BETWEEN:
JAMES W. HALFORD and VALE FARMS LTD.
Plaintiffs
and
SEED HAWK INC., PAT BEAUJOT,
NORBERT BEAUJOT, BRIAN KENT and
SIMPLOT CANADA LIMITED
Defendants
REASONS FOR ORDER AND ORDER
INTRODUCTION
[1] In light of the fact that the trial of this matter was spread over four years, and that the business imperatives of the parties require a decision sooner rather than later, these reasons will depart somewhat from the usual narrative style of judicial reasons. In the interests of putting these reasons in the hands of the parties as soon as possible, I propose to dispense with a recapitulation of the evidence except to the extent necessary to resolve the issues which I am called upon to decide.
[2] I will begin by laying out the invention described in the disclosure portion of the patent so as to identify its principle and mode of operation. With that understanding of the invention in mind, I will then embark upon a purposive construction of the patent, an exercise whose object is to identify the essential elements of the patent claims. Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R. 1024 at para. 31; 2000 SCC 66 (Free World Trust).
[3] Having construed the patent, I will then turn to the issue of infringement, even though, logically, it would make more sense to deal with the invalidity first. Claims which are invalid cannot be infringed. But the action is one for infringement, and invalidity is raised as a defence and counterclaim. Furthermore, if one errs on the issue of invalidity without having considered infringement, the burden of deciding whether those claims have been infringed either falls upon the Court of Appeal, or it requires that the matter be sent back for further consideration by the trial judge. Neither alternative is particularly satisfactory.
[4] The method to be employed in determining whether the defendants' device infringes the claims of the patent is set out in the recent decision of the Supreme Court of Canada in Free World Trust, idem. The issue is not whether the patent has been literally or substantially infringed but rather whether the essential elements of the invention as articulated in the claims can be found in the defendants' device. Free World Trust, idem, at para. 55.
[5] The next issue to be considered will be the validity of the patent and of particular claims of the patent. In this case, issues of obviousness, anticipation, and sufficiency of disclosure have been raised with respect to the patent itself. Specific claims are challenged as well on the basis that they lack an essential element of the invention.
[6] The plaintiffs, James Halford and his assignee Vale Farms Ltd., have also claimed against Pat Beaujot, Norbert Beaujot, and Brian Kent, (the individual defendants), the principals of Seed Hawk Inc. (Seed Hawk), in their personal capacities. The corporate and individual defendants will be referred to collectively as the Seed Hawk defendants. Consequently, if infringement is shown and invalidity is not, I will have to consider whether the liability which attaches to the corporate defendant, which carries on the business of manufacturing and selling the device in issue, also attaches to the individual defendants. The plaintiffs have also alleged that Simplot Canada Limited (Simplot) procured the infringement of their patent by the Seed Hawk defendants. If I am required to consider whether the individual defendants are liable to the plaintiffs, I will also be required to consider whether a case has been made out against Simplot.
[7] For the benefit of those unconnected with this litigation, who might be called upon to read these reasons, I offer a very brief sketch of the individuals and events which gave rise to the litigation. The plaintiff James Halford is a university trained farmer with an interest in soil conservation, notably minimum till or zero till practices. The distinguishing feature of these practices is the attempt to crop land without breaking it up any more than is absolutely necessary
to plant a crop. The new crop is planted in the stubble of the old. Mr. Halford invented a device for putting seed and fertilizer in the ground in a defined relationship to each other (side banding) in one operation (one pass). He obtained a patent for his invention, Canadian patent No. 1,239,835 (the Halford patent). When it came time to commercialize his invention, he assigned the patent to his company, the co-plaintiff Vale Farms Ltd.
[8] Norbert Beaujot is an engineer and part-time farmer who also invented a one pass side band seeder. He had a prior acquaintance with Mr. Halford and had seen his device on one or two occasions prior to unveiling his own device. Norbert Beaujot incorporated Seed Hawk Inc. in order to pursue the commercial exploitation of his device. Pat Beaujot is Norbert's brother and is a principal of Seed Hawk. Brian Kent was involved in Seed Hawk at one time but no longer is so. When the Seed Hawk device was in the development stages, Pat Beaujot was employed by Simplot. That connection lead to a request to Simplot by Norbert Beaujot for development money for the Seed Hawk device in return for a promise to design the machine to apply liquid fertilizer, which is Simplot's primary product. Simplot provided some development money and some marketing assistance to Seed Hawk. The plaintiffs put Simplot on notice that the Seed Hawk defendants were, in their view, infringing the Halford patent. Dissatisfied with Simplot's response, they named it as a defendant when they launched these proceedings against the Seed Hawk defendants. That, in a nutshell, is the dramatis personae and the plot of drama which was acted out in Saskatchewan in the late 1980's and early 1990's.
THE NATURE OF THE INVENTION:
[9] Since this patent was issued before the amendments to the Patent Act, R.S.C. 1985, c. P-4, it is an "old Act" claim. Section 34 of the Patent Act as it read at the material time, sets out what an inventor must disclose in order to obtain a patent:
34. (1) An applicant shall in the specification of his invention
(a) correctly and fully describe the invention and its operation or use as contemplated by the inventor;
(b) set out clearly the various steps in a process, or the method of constructing, making, compounding or using a machine, manufacture or composition of matter, in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most closely connected, to make, construct, compound or use it;
(c) in the case of a machine, explain the principle thereof and the best mode in which he has contemplated the application of that principle;
(d) in the case of a process, explain the necessary sequence, if any, of the various steps, so as to distinguish the invention from other inventions; and
(e) particularly indicate and distinctly claim the part, improvement or combination that he claims as his invention.
(2) The specification referred to in subsection (1) shall end with a claim or claims stating distinctly and in explicit terms the things or combinations that the applicant regards as new and in which he claims an exclusive property or privilege.
34. (1) Dans le mémoire descriptif, le demandeur :
a) décrit d'une façon exacte et complète l'invention et son application ou exploitation, telles que les a conçues l'inventeur;
b) expose clairement les diverses phases d'un procédé, ou le mode de construction, de confection, de composition ou d'utilisation d'une machine, d'un objet manufacturé ou d'un composé de matières, dans des termes complets, clairs, concis et exacts qui permettent à toute personne versée dans l'art ou la science dont relève l'invention, ou dans l'art ou la science qui s'en rapproche le plus, de confectionner, construire, composer ou utiliser l'objet de l'invention;
c) s'il s'agit d'une machine, en explique le principe et la meilleure manière dont il a conçu l'application de ce principe;
d) s'il s'agit d'un procédé, explique la suite nécessaire, le cas échéant, des diverses phases du procédé, de façon à distinguer l'invention d'autres inventions;
e) indique particulièrement et revendique distinctement la partie, le perfectionnement ou la combinaison qu'il réclame comme son invention.
(2) Le mémoire descriptif se termine par une ou plusieurs revendications exposant distinctement et en termes explicites les choses ou combinaisons que le demandeur considère comme nouvelles et dont il revendique la propriété ou le privilège exclusif.
[10] The Court is entitled to look to the specification of the patent for a description of the invention, and its principle of operation (in the case of a machine). It is in the light of this information that the claims are to be construed, subject always to the caveat that the information must be understood as it would be by a person skilled in the art possessed of the common knowledge of such persons at the material time.
[11] The invention is described as a "Seed/Fertilizer Placement System for Minimum Tillage Application". The specification notes that "farm implements are required which permit the placing of fertilizer and various seeds in the soil, at their recommended depths and in an optimum relationship one to the other". In a zero tillage system, there is an additional requirement "to be able to directly plant into the trash and residue from previous crops without any prior tillage taking place". Many existing machines have been developed to place seed and fertilizer under this system but they tend to rely upon a heavy massive design to ensure penetration into the unworked ground. More recently, the patent says, attempts have been made to use cultivators as seeding machines with either air or gravity delivery systems. The main problems encountered are lack of depth control and difficulty in obtaining sufficient packing around the seed. The object of the invention is "to provide a planting apparatus for placing two separate materials such as seed and fertilizer in a single action which is simple, inexpensive and effective".
[12] With that background information, one expects that the invention will address the problems which have been identified. The first is the need to place two materials in one operation. The second is to place the materials at the correct depth and in the proper relationship one to the other. There is a suggestion that depth of placement is to be accomplished without relying on mass alone to achieve penetration. Finally, the adequacy of packing is to be addressed. And all of this is to be done with an eye to the least possible disturbance of the soil surface.
[13] When one reads the detailed description of the invention in connection with the drawings, the outline of the invention emerges (Figures 1 and 5 of the patent are attached as Schedule 1 to these reasons ). In broad terms, the invention consists of an assembly mounted to a frame which moves over the ground. As it does, a knife attached to the frame cuts a furrow in the ground. A tube attached immediately behind the knife deposits a first material, fertilizer for example, in the furrow immediately behind the knife. A packer/depth control wheel (the packer wheel) is mounted so as to be able to move pivotally relative to the knife. Mounted on the same member as the packing wheel (the single mounting member) is a tube which engages the soil in the furrow created by the knife to deposit a second material, presumably seed. (In the balance of these reasons I will refer to the first material as fertilizer and the second material as seed.) The seed tube is adjustable both vertically and side to side. A mechanism is provided for applying a force to the single mounting member so as to keep the packer wheel and the seed tube in contact with the ground. The packer wheel is mounted so as to follow in the furrow created by the knife.
[14] One can ask how the various needs identified earlier are to be satisfied by this arrangement. The first issue is accurate depth control in terms of placement of seed and fertilizer. The specification addresses this in two ways. In relation to the first embodiment, one finds at page 10 of the patent, the following description of the method of depth control for the furrow cutting knife:
In operation, the total seeding machine is lowered to working position and held by the normal wheels (not illustrated) supporting the structure of which cross-member 10 forms a part and these wheels will provide some control over the depth of tillage. The operator then adjusts the packer/depth control wheel 38 of each individual unit by means of the adjustment rods 40 to obtain the desired depth of operation of the primary tillage tool in the form of knife 15 and hence the depth that the fertilizer and/or seed which exits through tube 18. It also sets pressure on the packer/depth control wheel by transferring weight from the machine to the wheel 38.
[15] While this is in relation to the first embodiment, a similar mechanism is provided for applying pressure to the packer wheel in the second embodiment. In both embodiments, a force is applied to the single mounting member on which the packer wheel is mounted. This presses the packer wheel into closer contact with the ground which, in turn, has an effect upon the working depth of the knife. Depth control of the furrow cutting tool is therefore achieved by a combination of lowering the frame of the machine into working position and by exerting a force on the packer wheel via the single mounting member. This is in relation to fertilizer placement only.
[16] The specification also relates that the close proximity of the second tube to the packer wheel permits the ultimate in depth control of the product delivered by that tube (Patent, item 20, at p. 14). The specification provides for adjustment of the depth of the seed tube by means of a tube mounting sleeve 49 and a set screw 51. Once this adjustment is made, the position of the seed tube in the soil is maintained by the biasing force applied to the single mounting member. The result is that the packer wheel controls the depth of seed placement as it rolls over the soil.
[17] The next step is to maintain a consistent relationship between the placement of the seed and the placement of the fertilizer. As noted above, the biasing force applied to the single mounting member maintains both the fertilizer knife and the seed tube in their respective working positions in the soil. As for their lateral alignment, the disclosure shows that the seed tube is adjustable both horizontally and vertically. On the horizontal axis, the tube is capable of side to side adjustment which allows for lateral displacement of the end of the second tube "relative to the base of the knife" (Patent, at p. 10).
[18] The next issue to be considered is the control of the packing function. The fact that the seed tube is mounted on the same member as the packer wheel means that they are in a fixed relationship one to the other, so that the wheel follows behind the tube (see item 21 at p. 15 of the Patent). In the second embodiment, the rotation of the rear portion 353 of the single mounting member 351 relative to the front portion 352 results in both the packer wheel and the seed tube being rotated. This allows the packer wheel to roll over the seed where it is deposited
in the furrow by the seed tube.
[19] The packer wheel is constructed so that it rolls within the furrow at a position beneath the surface of the ground but above the bottom of the furrow, pushing earth forward to cover the seed as it moves. In practice, the width of the packer wheel may be from one and three-quarters inches to something less than four inches. The width of the knife is such that the furrow it creates is wider at the surface of the soil than the packer wheel (Patent, at p. 20).
[20] Given that the invention is designed for use in zero till situations, it is possible to identify certain elements which are adapted for that use. The use of an integrated spring protection system in the seed tube allows the latter to avoid damage from obstructions in the furrow. In addition, its vibration will serve to clear trash which might accumulate on it. The use of a tube for seed placement which is at an angle relative to forward travel results in less soil disturbance (Patent, at p. 13). The use of a narrow, edge-on, shank reduces the possibility of trash collecting on the leading edge of the shank. Rollers and blades can be mounted on the assembly to further deflect trash. The use of a narrow knife is preferable to reduce soil disturbance by creating a narrower furrow.
[21] While this does not address every aspect of the invention as set out in the disclosure, it does address those issues which the specification identifies as being the advantages to be derived from the invention, that is, the ability to place two materials in the soil at a proper depth and in a
consistent relationship one to the other with suitable packing in a zero till environment. I now propose to move to the purposive construction of the claims of the patent.
CONSTRUCTION OF THE CLAIMS OF THE PATENT
[22] I am guided in the task of purposive construction of the claims by the teaching of the Supreme Court of Canada in Free World Trust, supra, at p. 1053-1062, where the following template for purposive construction appears:
e) The Claims Language Will, on a Purposive Construction, Show that Some Elements of the Claimed Invention Are Essential While Others Are Non-essential. This Allocation Will Be Made in the Following Manner:
(i) On the Basis of the Common Knowledge of the Worker Skilled in the Art to which the Patent Relates
(ii) What Constitutes an "Essential" Element Is to Be Interpreted in Light of the Knowledge of the Art at the Date of the Publication of the Patent Specification
(iii) Regard Is to Be Had to Whether It Was Obvious at the Time the Patent Was Published that Substitution of a Different Variant Would Make a Difference to the Way in Which the Invention Works
(iv) According to the Intent of the Inventor Expressed or Inferred from the Claims of the Patent
(v) Based on the Patent Specification Itself Without Resort to Extrinsic Evidence
THE EXPERTS
[23] Before embarking upon the construction of the patent, I wish to say a few words about my assessment of the evidence of the experts who testified before me on questions of infringement and invalidity, namely Dr. Tessier and Mr. Schaaf for the plaintiffs and Mr. Anderson for the Seed Hawk defendants. I found them all to be persons of intelligence and well qualified in their particular domains. However, to a greater or lesser degree, all approached the trial as though their function was to persuade me of their point of view, as though it mattered to them, one way or another, how I decided the case. In my view, it is the function of counsel, and counsel alone, to be persuasive. It is the function of an expert to be informative, to present information which is beyond the common experience of a layman in a well organized and coherent fashion so as to assist the trier of fact in making sense of the information. The nature of the litigation process is that the experts' evidence will be challenged by those who are adverse in interest. Experts are entitled to defend their positions; their evidence is of no use to a trier of fact unless they are able to defend it. But, it is not the function of experts to be partisan defenders of a position in the litigation, to tailor their evidence so that it most conforms to the position of the parties or their advisors. When they are employed in that fashion, the Court is left to make its own way through material which, by definition, is outside common experience.
[24] Mr. Anderson was cross-examined extensively as to his affidavit. He made a number of concessions which did not reflect well upon his evidence. He admitted two errors in the material he produced for the Court. He presented as his evidence information which was provided to him by Norbert Beaujot. He left the impression that he had observed certain operations when in fact he had not done so. He never did observe an entire Seed Hawk seeder in operation. None of this inspires confidence in his evidence. On the other hand, I found Mr. Anderson to be the least partisan of this group of witnesses.
[25] I found the evidence of Dr. Tessier and Mr. Schaaf problematic as well. In cross-examination, Dr. Tessier was forced to admit that he had made several errors in calculating the strength of the Seed Hawk seed knives (Transcript of Evidence, October 29, 2001, at p. 1693- 1699). When confronted by the possibility of an error in the application of a formula, Dr. Tessier refused to commit himself, retorting that he could not "answer to a suggestion" (Transcript, idem, at p. 1694-1695). When Dr. Tessier admitted his errors, he only did so with the greatest of reluctance. All of his errors advanced the position which he was advancing.
[26] Dr. Tessier appeared to be offended by the request that he produce his detailed calculations:
Q. ...What I would like to know, and I think the Court would like to know, you say you are relying on this for theoretical analysis, where is your analysis?
A. Okay, what you are essentially telling me is you would have liked to see the calculation there so that you would have been able to cross-verify those numbers. Now, are you telling me that you don't trust that I used the equation the way it should be --
THE COURT: Mr. Tessier, --
BY MR. MACKLIN:
Q. No, it is not a matter of trust.
THE COURT: -- Counsel is entitled to see your calculations by which you derived your results.
THE WITNESS: So should I produce the calculated example?
THE COURT: And he is asking you if you have the calculations, and he may ask you to produce them. But at this point I think the question is, do you have the calculations?
THE WITNESS: Yes, I do have the calculations.
Transcript, October 26, 2001, at p. 1497-1498.
As it turned out, there were errors in his calculations.
[27] I found Dr. Tessier to be argumentative in cross-examination and rigid in his adherence to a characterization which he attempted to impose on the analysis of one of the important issues in the case. (Transcript, October 29, 2001, at p. 1652-1657.) That issue was the comparison of the function of the seed knife and seed tube in the Seed Hawk device to the second tube means described in the patent. Dr. Tessier adopted a characterization of these devices, narrow hoe opener, which suggested a common function when the very issue to be decided was whether they did in fact have a common function. I have no difficulty with Dr. Tessier testifying that the two devices have a common function. I have no difficulty with Dr. Tessier using language which describes that function. But, I do have more difficulty with Dr. Tessier's refusal to stray from his chosen vocabulary as though the name determined the function, rather than the function determining the name.
[28] Although I was impressed with Dr. Tessier's academic credentials, he left me with the impression that he was an advocate for the plaintiffs' cause. I approach his evidence with caution as a result of his partisanship.
[29] Mr. Schaaf's evidence suffered from the fact that he prepared his affidavit with Dr. Tessier's affidavit before him. His evidence was that he relied upon it for the definition of the Halford invention. If that were so, it would still compromise his independence. But, it is apparent that he relied upon it for more than the definition of the Halford invention. In his field notes, Mr. Schaaf consistently referred to the furrow opening devices on the Seed Hawk device as "knives" (Transcript, June 20, 2002, at p. 3004-3007). However, in his oral testimony he preferred to call them "blunt hoe openers" (Transcript, idem, at p. 2937-2938). In his affidavit, he referred to the seed knife as the seed opener. When challenged about this in cross-examination, he said that he had used the term knife because that was the term used in the Seed Hawk manual. Once he had completed his analysis, he chose to refer to the knives as openers. I have reviewed the patent from one end to the other and I find 61 occurrences of the word "knife" or the expression "knife means", 1 occurrence of the expression "soil working tool", 1 occurrence of the expression "primary tillage tool", and three occurrences of the expression "knife type openers". I find no occurrences of the expression "narrow hoe opener", or "blunt hoe opener". Given Mr. Schaaf's use of the word "knife" in his own notes, a use legitimized (if legitimizing were required) by the patent itself, I find his insistence upon the use of the term
"openers" or "blunt hoe openers" to be an attempt to bring his language into conformity with that used by Dr. Tessier.
[30] I agree with the Seed Hawk defendants' suggestion that Mr. Schaaf used language which was equivocal at best in describing the effect of the seed knife. In his affidavit sworn October 30, 2000, Mr. Schaaf deposes that:
80. Field observations show that the seed hoe opener (7) runs within the furrow created by the fertilizer opener. After the fertilizer opener passes through the ground, the soil infills back into the furrow. As the seed hoe opener travels through the ground, it works primarily within the tilled or loosened soil from the fertilizer opener, although it does scrape along the furrow wall. It is still creating an opening or furrow in that it is displacing the loosened soil that has flowed in to backfill the furrow. This agrees with the description in the Halford patent.
[Emphasis added.]
[31] Mr. Schaaf's field notes, to which more detailed reference will be made later, showed that he measured the width of the furrow resulting from the passage of the fertilizer knife and found that it was 3 inches wide. He measured it again after the passage of the seed knife and found that it was now 4 and one quarter inches wide. Clearly, the seed knife had done more than move the disturbed soil in the furrow, or simply scrape along the side of the furrow. I am not criticizing Mr. Schaaf primarily for not disclosing the results of his measurements, though I believe that a truly impartial witness would have put all the information which he had acquired before the Court. I do, however, criticize him for attempting to persuade the Court of the truth of a proposition which he had reason to know was either not true, or was only partially true. As a result of this partiality on his part, I approach his evidence with caution.
[32] Claims 1, 2 , 3, 6, 10, 12, 19 and 20 are in issue in these proceedings. Of these, Claims 1, 12, 19 and 20 are independent claims, that is, they do not incorporate the terms of another claim. I begin by setting out in a structured way the terms of Claim 1:
CLAIM 1 AND ITS DEPENDENT CLAIMS
1 Apparatus for planting two different materials in the ground comprising
2 a frame adapted for transport across the ground,
3 first material delivery means comprising
4 knife means for cutting a furrow in the ground,
5 means mounting the knife means on the frame and
6 arranged to cut a furrow in the ground as the frame is moved forwardly over the ground,
9 a first tube means,
10 means for supplying a first material to the first tube means,
12 means mounting the first tube means on the knife means at a position immediately rearwardly thereof for depositing said first material into the furrow,
15 second material delivery means comprising
16 a second tube means,
17 means for supplying a second material to the second tube means, and
19 means mounting the second tube means rearwardly and separately from the knife means,
21 said second tube mounting means being adjustable to provide at least side to side adjustment of said second tube means relative to said knife means,
26 said second material delivery means including
27 means projecting downwardly from a position above the furrow for engaging the ground within the furrow at a position spaced rear-wardly of said knife means and
32 consisting solely of an outer surface of said second tube means so that the second tube means follows in the furrow at said spaced position and engages soil in the furrow,
37 a packer wheel and
38 means mounting the packer wheel rearwardly of said second tube means for following in the furrow behind the second tube means.
[33] Neither the presence nor the definition of the frame to which the invention is attached is contentious. However, the plaintiffs argue that there should be implied in the notion of planting in the ground a limitation that the device is to be used in a zero till environment. The plaintiffs argue that this limitation or qualification finds support in the name given to the invention
"Seed/Fertilizer Placement System for Minimum Tillage Application", as well as to various passages in the disclosure, such as the following:
The present seed/fertilizer placement system provides a soil working tool which causes a minimum disturbance of the soil in the seed row area and which will leave undisturbed, strips of soil between the seed rows. It will also allow optimum depth control and separation of seed and fertilizer depending upon the requirements.
Patent, at p. 4.
[34] The jurisprudence provides that the Court may have regard to the specification in order to understand the sense in which certain terms are used, but that the specification cannot be used to enlarge or reduce the scope of the claims, properly understood.
The claims, of course, must be construed with reference to the entire specifications, and the latter may therefore be considered in order to assist in apprehending and construing a claim, but the patentee may not be allowed to expand his monopoly specifically expressed in the claims "by borrowing this or that gloss from other parts of the specifications".
Metalliflex Ltd. v. Wienenberger Aktiengesellschaft, [1961] S.C.R. 117, at p. 122.
...In my view, it was perfectly permissible for the trial judge to look at the rest of the specification, including the drawing, to understand what was meant by the word "vane" in the claims, but not to enlarge or contract the scope of the claim as written and thus understood.
Whirlpool Corp. v. Camco Inc., [2000] 2 S.C.R. 1067, at para. 52, 2000 SCC 67.
[35] I take these passages to mean that absent a specific limitation with respect to zero or minimum till application in the claims, I cannot use the references to those practices in the specification to read in such a limitation. On the other hand, I can take those references into account in considering the meaning to be given to specific terms or concepts in the claims. Consequently, I do not believe that Claim 1 is to be read as though it contained a limitation that the invention is to be used in zero till conditions.
[36] The next element of the invention is the "knife means for cutting a furrow in the ground". The plaintiffs argue that a person skilled in the art would recognize such knife means as a narrow hoe opener:
Q. In 18C you use the expression "narrow hoe opener", what do you mean by that?
A. Narrow hoe opener is a standardized term that covers a broad range of hoe opener types. In agriculture there are very few categories of openers. Openers, being a device to open a furrow, whereas in the dictionary it would be a can opener. In our particular field here we are talking about opening a furrow. You have, of course, disk openers, you have hoe openers, which embody a wide category, which is inclusive of the less technical term "knife", for that matter.
Q. And, indeed, you use the word "knife" in the same paragraph.
A. I did use the word "knife" to indicate that anything that there is referred to as a knife is nothing but a narrow type hoe opener. Hoe openers, as at the early 1980's, and even today, could be fairly blunt. It could be of three, four, five centimetre wide, especially as we see in conventional tillage tools. However, in zero tillage tool they have gone the other way, that is going as narrow as achievable to allow for mechanical strength and durability. And in this case we are really talking about narrow hoe openers, which are more typical and useful for zero tillage applications to deal with soil that is firmer, but also to better handle or allow for flow of crop residues that would be left at the surface.
Evidence of Dr. Tessier, Transcript, October 25, 2001, at p. 1294-1295.
[37] I have little difficulty concluding that a person skilled in the art would recognize the knife identified in Claim 1 as a narrow hoe opener.
[38] The next element is the "means mounting the knife means on the frame". Mr. Anderson's evidence was to the effect that the invention contemplated a rigid connection between the knife means and the frame upon which each assembly was mounted:
33. During operation of the Halford device, the frame is lowered from position (20A) to position (20)*. This sets the depth of the knife (15) in the ground as the knife (15) is in rigid connection to the frame (10) by the knife shank member (111 and 113) and the bolt and retaining plate system (12). As the frame (10) moves forward, the knife (15) cuts a furrow and the fertilizer is deposited by a tube (18) through an opening in the tube's bottom (?) into the furrow behind the knife (15).
Affidavit of Clifford Anderson sworn February 28, 2000 and re-worn on February 3, 2003.
*In his sketches, Exhibits C and D, Mr. Anderson used a numbering system which did not correspond to the numbering in Figures 1 and 5 of the patent. I have therefore substituted the numbers used in the patent for those used by Mr. Anderson. In the case of items 20A and 20, the frame itself is item 10 in the patent. Item 20A is intended to show the device when it is not engaged in the soil.
[39] This evidence was qualified on cross-examination as Mr. Anderson conceded that the shank to which the knife was fastened would provide some flexibility:
Q. Let's look then at paragraph 33 which is also with respect to the same Halford device as you've defined it. There you talk about the depth of the knife (24) in the ground as the knife (24) is a rigid connection to the frame.
A. Yes.
Q. Did you not just a minute ago tell us there's a spring shank for flexibility?
A. I'm using the term rigid unfortunately in the context of not pivotal. It's not pivotally mounted. I mean, nothing is totally rigid.
Q. This for sure isn't rigid because it's got a spring shank; right?
A. This has some flexibility, yes.
Transcript, February 3, 2003, at p. 4425.
[40] Dr. Tessier rejected Mr. Anderson's view of the nature of the connection based upon his interpretation of the specification:
It is clear that Mr. Anderson is of the view that it is an essential element of the invention that the knife is mounted on the frame in such a manner that the depth of the fertilizer tool is controlled solely by the height of the frame which is adjustable. However, this is clearly incorrect in that the patent states in the paragraph bridging pages 10 and 11 that:
the operator then adjusts the packer/depth control wheel 38 of each individual unit by means of the adjustment rods 40 to obtain the desired depth of operation of the primary tillage tool in the form of knife 15 and hence the depth of the fertilizer and/or seed which exits through the tube 18.
The adjustment is effected subsequent to, and as a separate step from the adjustment of the working height of the frame. This adjustment is allowable due to, for example the spring connection 13 between the shank 11 and the frame. Thus, the spring 13 is applying a force downwardly on the fertilizer tool and on the elements behind the fertilizer tool, with the depth being controlled by the height of the packer wheel relative to the fertilizer tool. This arrangement is substantially identical to the arrangement of the Seed Hawk, with the exception that the spring 13 is replaced in the Seed Hawk machine by a hydraulic cylinder and is located at a different position.
Affidavit of Dr. Tessier sworn October 25, 2000, at para. 376.
[41] In this passage, Dr. Tessier is arguing that the invention contemplates a pivotal movement of the means mounting the knife means on the frame through the action of the spring (13), which is described in the specification as an optional trip mechanism. Dr. Tessier's argument amounts to making a component, which the patent itself describes as optional, an essential element of the invention. That cannot be the case. The most that can be said is that there may be a pivotal attachment when the optional trip mechanism is provided, but it does not follow that there is pivotal movement at all other times.
[42] Furthermore, the flexibility provided by the spring shank does not amount to pivotal movement. The best evidence of what is meant by pivotal movement comes from the following exchange from the cross-examination of Mr. Anderson:
Q. Now, yesterday with reference to Exhibit D to your affidavit, you admitted that contrary to your statement that in the Hafford device, the knife (24) [15 in Figure 5] is in rigid connection to the frame, there is in fact a flexibility in the spring shank (40) [11]
A. Yes
Q. Is it not so that any flexibility of a shank relative to a fixed member such as the frame provides in effect a pivotal relationship?
A. No.
Q. You don't accept that?
A. No.
Q. And you that why? Because there's not a fixed pivot point?
A. Pivotal means it can pivot about the point. Otherwise everything is pivotal, because everything...
Q. So you'd agree a flexing movement is pivotal type movement?
A. Everything flexes. No, pivotal means it can - the structure can rotate with respect to another structure.
Q. And flexing then means what?
A. Flexing means that there's elasticity, there's elasticity in everything, so virtually anything can flex.
Q. With the result that the structures move in relation to each other?
A. Portions of the structure move in relation to each other, yes.
Q. All right.
A. But that's not pivotal.
Transcript, February 4, 2003, at p. 4437-4439.
[43] The discussion of the flexibility of the spring shank was undertaken without distinguishing between the flexibility which one might expect to find in the spring shank 11 shown in Figure 1 and the shortened shank 112, or the edge on shank 113 shown in Figure 5. It is a matter of common experience that all other things being equal, a long member is more easily made to bend than a shorter member of the same material. One need only think of picking up a one foot ruler and a yardstick by the very end. The ruler will stay rigid while the yardstick will tend to bend. Similarly, an edge-on member has much more rigidity than the same member in the opposite orientation. Once again, it is relatively simple matter to break a one foot ruler by bending it along its wide side. It is very much more difficult to break the same ruler by bending it on its narrow side. All of this to say that the hypothesis of flexibility arising from the spring shank ignores the possibility of real differences in flexibility.
[44] In fact, the evidence of Mr. Schaff with respect to the first embodiment of the invention is to the effect that the use of the adjustment rod 40 results in the entire apparatus moving rigidly through the soil:
Q. Well, we're not talking about field operation because now you're getting into the Conferva Pak, okay. We haven't just made that connexion.
A. I'm talking in terms of how this would function.
Q. Okay. So if you take the rod 40 and you adjust it, which you are able to do; right?
A. Yes