Digests

Halford v. Seed Hawk Inc.

T-2406-93

2001 FCT 1154, Pelletier J.

24/10/01

14 pp.

Plaintiff tendering affidavit containing evidence of expert qualified to offer opinion evidence with respect to design, evaluation of seeding, fertilizing devices, soil mechanics, soil dynamics--Defendants objecting to admissibility of paragraph 18 on ground attempting to construe patent by listing "essence of invention"; paragraphs 49, 50 on ground requiring construction of patent, expression of opinion on matter of law, or on ultimate issue which Court required to decide--Objections turn on admissibility of opinion evidence on construction of patent--One line of authority holding opinion evidence admissible on construction of patent, i.e. expert witness allowed to give evidence as to meaning, construction of patent and as to infringement, validity of patent--Authorities reviewed in Rucker Co. et al. v. Gavel's Vulcanizing Ltd. (1985), 7 C.P.R. (3d) 294 (F.C.T.D.), wherein Walsh J. concluding expert evidence expressing views as to proper construction of patent admissible--Authority upon which relied not going that far--Contrary authority found in Xerox of Canada Ltd. et al. v. IBM Canada Ltd. (1977), 33 C.P.R. (2d) 24 (F.C.T.D.), holding opinion evidence receivable on "ultimate issue"--Authorities dealing with admissibility of opinion evidence on "ultimate issue" of limited assistance in dealing with issue of admissibility of expert evidence on construction of patent--"Ultimate issue" in particular case may be one of fact, law, or mixed fact and law--In case of patent action, ultimate issue infringement or validity--Construing patent essential step in forming conclusion as to invalidity or infringement--That task reserved to judge, and is pure question of law--Judge entitled to assistance of experts in understanding terms used in patent as well as underlying science, but that is all--Until Judge construes patent, no basis upon which expert can offer opinion as to infringement since expert cannot substitute his view of proper construction of patent for judge's--Paragraph 50 inadmissible since contains conclusions on infringement of Halford patent--Paragraph 49 containing claims of patent in column on left side, listing of features of Seed Hawk device on right--Juxtaposition of claims, features of Seed Hawk device which may have some relationship to element described in claim--Not itself opinion as to construction of patent though may represent arrangement of data upon which court, after construing patent could come to conclusion about infringement--Bare fact of juxtaposition without comment not objectionable--Paragraph 18 containing statement invention pertaining to device allowing side banding while seeding, followed by 12 subparagraphs setting out various features of invention described in patent--Patent protecting only invention described in claims, as understood by workman skilled in trade, as of date of patent--To extent that list attempt to enumerate essential features of claims so as to decide issue of infringement, admissible--Absence of any reference to notional workman skilled in art may make paragraph 18 marginally relevant but not making it inadmissible--Paragraph 33 containing assessment of mechanical equivalency, conclusion seeding tool operating in same manner as that of Halford invention--Not calling for conclusion as to construction of patent--Merely comparison of devices not relevant to question of infringement, but may be relevant to some other part of expert's analysis--Statement as to innovative element of device or patent, comment about state of prior art--In same category as expert opinion on anticipation or obviousness i.e. admissible--No basis for excluding reference to "main innovations of Halford invention"--Results of plaintiffs' tests conducted in absence of defendants' representatives in paragraphs 36 to 44 inadmissible--Rule set out in Omark Industries (1960) Ltd. v. Gouger Saw Chain Co., [1965] 1 Ex. C.R. 457: evidence of tests, experiments conducted pendente lite without giving notice to other side, and opportunity to attend inadmissible--Tests conducted in 1999, but in April 2000 case management judge approbated conducting of tests in absence of other side--As nothing suggesting any order, direction with respect to testing given at time tests in question conducted, plaintiff's tests not outside ordinary rule--Paragraphs 36 to 44, 46 to 48 inadmissible.