Nekoosa Packaging Corp. v. United Dominion Industries Ltd.
A-540-89
Robertson J.A.
7/7/94
19 pp.
Appeal, cross-appeal from T.D. decision reported sub nom. Nekoosa Packaging Corp. v. AMCA International Ltd. at (1989), 27 C.P.R. (3d) 153, manufacture, sale of respondents' tree harvester not infringing appellants' patent -- Patent for self-propelled, articulated vehicle able to harvest, process trees in limited area from stationary position -- Whether claim 1 of patent embodies machine producing debarked wood chips as end product or, as appellants say, harvester capable of producing various products including logs, chips -- Judge held patent valid, monopoly restricted to harvester processing wood chips -- Respondents' harvester found capable only of reducing trees to logs -- Disclosure outlines nature of invention, scope of monopoly defined by "claims" -- Trial Judge finding certain words of claims vague, ambiguous -- Relying on disclosure, expert testimony -- Finding inventor's wish for meaning of claims "covetous" -- Use of word "covetous" unfortunate as suggesting Claim 1 broader than invention described -- Judge effectively rewriting claim in concluding invention machine capable only of producing wood chips -- In that case, Claim 1 should have been held invalid -- Court may not redraft claims -- Judge's terminology revealing practical difficulty in isolating theoretically separate tasks of construing claim, determining validity -- Appellants argue word "processing" general term, neither vague nor ambiguous -- Appellants (1) question qualifications of so-called experts; (2) argue Judge erred in referring to disclosure as to do so unnecessary; (3) submit interpretation of Claim 1 unreasonable -- Appellate Court not to interfere with Judge's findings on expert evidence absent palpable, overriding error -- Experts for both sides having given opinion evidence on ultimate patent construction issue -- Growing tendency of courts to entertain expert evidence on ultimate issues open to criticism -- Judge having recognized ultimate task of construing patent his alone -- Evidence of professional engineer having mostly managerial experience of limited value -- Reference to book by H. G. Fox as to qualifications of expert witnesses and necessity for their having "special knowledge of the art concerned" -- Evidence of those lacking design experience accorded little weight -- Evidence of appellants' experts considered -- Even inventor's testimony as to what invention was inadmissible for patent construction -- Extrinsic evidence inadmissible -- No overriding error by Judge as to expert evidence -- Patent construction to be approached "with a judicial anxiety to support a really useful invention": per Sir George Jessel in Hinks & Son v. Safety Lighting Company (1876), 4 Ch. D. 607 -- Often unsafe to conclude term plain, unambiguous without careful review of specification -- Specification clearly equates "processing" with converting tree into wood chips -- Argument disclosure contemplated machine producing "raw material for pulp" rejected -- Appeal, cross-appeal dismissed but appellants on cross-appeal entitled to costs -- Patent Act, R.S.C. 1970, c. P-4.