Case Comment

Nekoosa Packaging Corp. et al v.
AMCA International Ltd. et al.

citation(s): (1989) 27 C.P.R. (3d) 153 (F.C.T.D. per Cullen J.)

copyright 1997-2010 Donald M. Cameron, Cameron MacKendrick LLP

Contents

Summary

Facts

Where the claims talk of "processing" and the disclosure only talks about "processing" as being processing into wood chips, then that is the way the term should be interpreted in the claims. In the Nekoosa case, Claim 1 referred to "raw material for a pulp mill" or "pulpwood".

The first sentence of the patent said:

"The present invention is concerned with production of wood chips suitable for use as raw material for pulp and paper mills."

Some of the claims at issue were:

2.  A mobile pulpwood harvester comprising:

a) a self-propelled center frame articulated vehicle having

(i) a forward frame section;

(ii) a rear frame section;

b) tree grasping, severing and handling means and tree processing means carried by the forward section for grasping a standing  tree and reducing the tree to a size having utility as pulpwood;

c) the tree grasping, severing and handling means being extendable from the forward frame section to grasp and sever a tree remote from the processing means;

d) storage means carried by and disengageably secured to the rear frame section;

e) means to transfer the reduced tree to the storage means; and

f) power means on the vehicle for energizing the tree grasping, severing and handling means and the tree processing means.

3.  A method of producing raw material for a pulp mill comprising the steps of:

a) positioning a mobile factory at a first position adjacent of a stand of trees;

b) grasping and severing a first tree remote from a processing station on the factory by means carried by the factory and extensible there-from;

c) transferring the severed tree to the processing station;

d) delimbing, debarking and reducing the severed tree to a size useful as a raw material for a pulp mill at the processing station and removing the processed tree from the processing station to a storage means on the vehicle;

e) grasping and severing a second tree remote from the processing station while said first tree is being processed and transferring the second tree to the processing station for processing after the first tree is processed;

f) repeating steps (d) and (e) until all of the useful trees in a given area adjacent to said factory have been severed and processed and  transferred to said storage means on the vehicle.

g) advancing the mobile factory to a second position for the removal of all useful trees in a second area contiguous to the given area; and

h) performing steps (b), (c), (d) and (e) and repeating steps (d) and (e) until all of the useful trees in the second area have been severed and processed.

4.  A method according to Claim 3 and further comprising the step of:

i) maintaining each tree in a substantially vertically upright position through the transferring and processing steps.

 

McColl patent drawing:

 

The Koehring machine side view: from patent 919,558:

Koehring machine top view:

30 degree off-vertical processor:

The Decision

At p. 168, 169:

[31]  Every profession has a jargon all its own and those engaged in tree harvesting are no exception.  A bolt to a mechanic means one thing, another to a seamstress, another to an escaping convict and still another meaning to a forestry engineer.  Also, over time, in the tree harvesting business, terms will change their meaning to accommodate the situation.  Most people would assume they know the meaning, for example, of “pulpwood” and one would imagine this would be true of a forestry engineer.  The fact is that pulpwood has several meanings and the context really dictates how narrow or how broad an interpretation is to be given.  McColl defines it as “roundwood or chips used as a source of wood fibre in a pulp mill” (p. 16 of his affidavit).  The Shorter Oxford English Dictionary , 3rd ed. (Oxford: Clarendon Press, 1950) defines it as “wood suitable for making paper pulp”.  I expect a tree harvesting machine operator, or a person with an axe and chain saw would refer to the standing tree to be cut as pulpwood.  At the other end of the process, if a foreman in the pulp mill asked an employee to go to the storage yard for pulpwood he could meet the foreman’s request by choosing from a variety of raw materials and thus have to enquire, “Do you want fully debarked chips, wood chips that are not debarked, full tree (complete tree less its stump), logs, round wood (bolts, logs and/or tree lengths) or rough roundwood (unbarked bolts, logs and/or tree lengths)?  All are suitable raw material for a pulp mill. I doubt any yard would have all the various kinds of pulpwood and the context would determine exactly what the foreman meant., e.g., if the only raw material they purchased for use in that pulp mill was debarked chips, the employee would not have to seek further information form the foreman if he asked for pulpwood.

“vertical” transferring and processing

[35]  “Maintaining each tree in a substantially vertical upright position through the transferring and processing steps”: that seems fairly straightforward, but in this action we are told the Koehring machine takes the full tree to the processor initially at the vertical (Paquette, vol. 13, p. 182: “so the tower absolutely has to be upright in order to take the tree”), and as the processing occurs the processor moves to an angle of 35o and in this way the limbs and incidental bark will not fall on the operator or the machine.  Is that “substantially vertically upright”?  On the evidence, I believe it is.  First, there is no question that having the full tree or tree being processed substantially vertically upright means a machine can operate in a smaller area of cleared trees.  Second, the move in the Koehring machine from its stump to the processor is vertical.  While tilting to 35o (a portion of the processing takes place while it is in motion), it is clearly easier to move the delimbed portion longitudinally on its central axis to the cutting machine (albeit under power not using gravity as did the McColl machine) than it would be if the tree were horizontal or virtually horizontal.

[43]      Despite eloquent argument on behalf of the plaintiffs, I can find no sound basis for extending the meaning of processing beyond that which is so closely enunciated in the description: "The present invention is concerned with production of wood chips suitable for use as raw material for pulp and paper mills". In particular, the invention concerns itself with a machine by means of which the operations involved in converting a living, growing tree into such chips can be completely mechanized and in a large part automated. That is the "process means" and "processing", namely, converting a tree to chips. The description does not read, "production of chips and other products suitable, etc.

[46]      It was advanced by counsel for the plaintiffs that the "preferred embodiment" was but one embodiment which is illustrated by way of example, and left the door open or suggested other examples or embodiments. I can agree, however it is clear that any other embodiment or example would produce chips and only chips. Other embodiments might have larger wheels, better chipping equipment, less weight and a myriad of other possibilities, but in the final event would produce only chips.

[48]      There is no question on the evidence that the inventor wanted the claims and description to include production of bolts as part of the processing means but a failure to state this is fatal to the proposition that the patent incorporates a machine for reducing wood to bolts. It would be straining the meaning of the word "pulpwood" or "raw material for a pulp mill" in the context used in the claims to include "bolts". Pulpwood has several different meanings and so does raw material for a pulp mill, but not in the context in which they are used in the patent and context is the guide.

Endnotes

Return to:

Cameron's IT Law: Home Page; Index

Cameron's Canadian Patent & Trade Secrets Law: Home Page; Index

JurisDiction Home Page