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Patents - Anticipation. Munchkin, Inc. v. Angelcare Canada Inc.
In Munchkin, Inc. v. Angelcare Canada Inc. (Fed CA, 2024) the Federal Court of Appeal considers the patent doctrine of 'anticipation':[30] The Federal Court properly acknowledged that "“an invention communicated to a single member of the public who is free to use it as they please will make the invention available to the public for the purposes of anticipation under paragraph 28.2(1)(a) of the Patent Act ”": see paragraph 336 of the Decision. However, the Federal Court concluded that Initial was not free to use the information disclosed to it in the January 9, 2007 email as it pleased, and therefore the Morand Disclosure did not meet the criteria for anticipation.
[31] In its analysis, the Federal Court relied on this Court’s decision in Corlac Inc. v. Weatherford Canada Inc., 2011 FCA 228, [2011] F.C.J. No. 1090 (Corlac), and the discussion in that decision of the "“reasonable person test”" described in Lac Minerals Ltd. v. International Corona Resources Ltd., 1989 CanLII 34 (SCC), [1989] 2 S.C.R. 574, 61 D.L.R. (4th) 14 (Lac Minerals). At paragraph 48 of Corlac, this Court stated:Information will be considered to have been exchanged in a confidential relationship where “any reasonable man standing in the shoes of the recipient of the information would have realised that upon reasonable grounds the information was being given to him in confidence”: Coco [v. A.N. (Engineers) Ltd., [1969] R.P.C. 41 (Ch.)], pp. 47, 48. The following passage from Coco (p. 51) was also referred to by Sopinka J. in LAC Minerals and cited by the judge in this case:In particular, where information of commercial or industrial value is given on a business-like basis and with some avowed common object in mind, such as a joint venture or the manufacture of articles by one party for the other, I would regard the recipient as carrying a heavy burden if he seeks to repel a contention that he was bound by an obligation of confidence. [emphasis added] ....
[36] The reasonable person test, as described in Corlac and Lac Minerals, does indeed focus on the understanding of the recipient of the information. ... . Agracity Crop v. Upl Na Inc
In Agracity Crop v. Upl Na Inc (Fed CA, 2024) the Federal Court of Appeal dismissed an appeal from an order requiring a defendant to disgorge profits from improper use of a patent.
Here the court considers the patent concept of 'anticipation':[11] Paragraph 28.2(1)(a) of the Patent Act, R.S.C. 1985, c. P-4, provides that a patent claim is not valid if the subject matter defined thereby has been publicly disclosed before a certain date. The parties agree, and I concur, that the date for assessment of anticipation of the 021 Patent is September 21, 1998. There is no dispute that the 636 and 486 Patents (which were published on October 5, 1992 and July 9, 1996, respectively) are citable on the issue of anticipation. The issue concerns whether those patents disclose subject matter that meets the criteria for anticipation.
[12] The Liability Decision correctly notes that there are two requirements for anticipation: disclosure and enablement: Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61, [2008] 3 S.C.R. 265 (Sanofi-Synthelabo); Hospira Healthcare Corporation v. Kennedy Trust for Rheumatology Research, 2020 FCA 30, [2020] F.C.J. No. 179 at para. 66 (Hospira). The Liability Decision also correctly cites Free World Trust v. Électro Santé Inc., 2000 SCC 66, [2000] 2 S.C.R. 1024 at paras. 25-26 (Free World Trust), to the effect that anticipation by publication is a difficult defence to establish. One must, in effect, be able to look at a prior, single publication and find in it all the information that, for practical purposes, is needed to produce the claimed invention without the exercise of any inventive skill. The prior publication must contain so clear a direction that a skilled person reading and following it would in every case and without possibility of error be led to the claimed invention. A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted their flag at the precise destination before the patentee. As indicated in Free World Trust at paragraph 26, another characterization of the question is whether the information given in the prior publication is, for the purpose of practical utility, equal to that given in the patent in suit.
[13] To meet the disclosure requirement, the prior publication must disclose subject matter which, if performed, would necessarily result in infringement of the patent whose validity is in issue: Sanofi-Synthelabo at para. 25. However, it is not enough for a prior publication to merely "“include”" or "“encompass”" the claimed invention – a broad disclosure will not necessarily anticipate a later, more specific claim: Apotex Inc. v. Shire LLC, 2021 FCA 52, [2021] 3 F.C.R. 46 at para. 45 (Shire).
[14] Agracity attempts to distinguish Shire on the basis that Shire involved a selection patent (in which the invention lies in the selection of one or more species from a broader known genus), whereas the parties have agreed that the 021 Patent is not a selection patent. I see no reason to distinguish the guidance in Shire on that basis. Paragraphs 31 and 32 thereof state that (i) there is no magic in the term "“selection patent”", and (ii) the requirements for anticipation and obviousness are the same whether or not the patent in question is a selection patent.
[15] To meet the enablement requirement, the disclosure in the prior publication must have been sufficient that a person skilled in the art would have been able to perform the claimed invention without the exercise of any inventive ingenuity or undue experimentation: Sanofi-Synthelabo at para. 33. . Western Oilfield Equipment Rentals Ltd. v. M-I LLC
In Western Oilfield Equipment Rentals Ltd. v. M-I LLC (Fed CA, 2021) the Federal Court of Appeal considered the law of 'anticipation' when challenging a patent grant:A. Anticipation
[81] The appellants argue that several patent publications and activities constitute prior art that anticipates the claims in issue. The appellants observe correctly that assessing anticipation (also known as lack of novelty) is a two-step process; the party attacking a claim must establish both disclosure and enablement of the invention. The appellants argue that disclosure is based on whether performing the subject matter of the prior art would result in infringement. With regard to enablement, the appellants argue that the test is whether the skilled person "“would have been able to perform the prior art without undue burden.”" A comment is necessary on both of these arguments.
[82] On disclosure, the appellants fail to acknowledge two important requirements. Firstly, the disclosure "“must contain so clear a direction that a skilled person reading and following it would in every case and without possibility of error be led to the claimed invention”" (emphasis added): Free World Trust at para. 26, citing Beloit Canada Ltd. v. Valmet OY (1986), 8 C.P.R. (3d) 289, 64 N.R. 287 (F.C.A.) at 297 (Beloit). "“A signpost, however clear, upon the road to the patentee's invention will not suffice”"; "“[t]he prior inventor must be clearly shown to have planted their flag at the precise destination before the patentee”": Free World Trust at para. 26 citing Beloit; General Tire & Rubber Co. v. Firestone Tyre & Rubber Co., [1972] R.P.C. 457 (Eng. C.A.) at 486 (General Tire & Rubber).
[83] The second important disclosure requirement that the appellants fail to acknowledge is that there is no room for trial and error or experimentation by the skilled person at this stage; that person is simply reading the prior reference for the purposes of understanding it: Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61, [2008] 3 S.C.R. 265 at para. 25 (Sanofi-Synthelabo). Non-inventive experimentation is a consideration in assessing enablement, but not disclosure.
[84] On enablement, it is important to bear in mind that the question is whether the skilled person would be enabled to perform the claimed invention without undue burden, not the prior art: Sanofi-Synthelabo at para. 27. The appellants’ argument quoted near the end of paragraph 81 above focusses on enablement of the prior art.
[85] Another important requirement for anticipation is that all of the essential elements of the claim in issue must be disclosed and enabled in a single prior art reference: Free World Trust at para. 26; General Tire & Rubber at 486. This means that a separate anticipation analysis must be done for each of the prior art references in issue. . Apotex Inc. v. Shire LLC
In Apotex Inc. v. Shire LLC (Fed CA, 2021) the Federal Court of Appeal considered the patent principle of anticipation:A. Anticipation
[36] The law on anticipation is clear. "“[A]nticipation requires proof of both disclosure and enablement”" (Sanofi at para. 42). If a published reference fails to either disclose or enable the essential elements of a claim, the patent claim is novel, or not-anticipated (Hospira at para. 71; Sanofi at paras. 25-28).
[37] A prior art reference discloses the claimed invention when, if performed, the prior art reference would necessarily result in the infringement of the patent claim. Phrased another way:To anticipate the patentee’s claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented […] A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee. (General Tire & Rubber Company v. Firestone Tyre & Rubber Company Limited, [1972] RPC 457 at 486 (General Tire), cited in Sanofi at para. 21).
[38] If the flag is planted, the claim has been disclosed (Sanofi at para. 21).
[39] The second requirement is enablement. The reference in the prior art must be sufficiently detailed as to enable a PSIA to perform the claimed invention without the exercise of inventive ingenuity or undue experimentation (Sanofi at paras. 25, 33-37). In this instance, both parties concede there is no enablement issue (Decision at para. 100).
[40] The language of the Sanofi test is important: if the performance of a published reference does not necessarily result in infringement of the claim, then the published reference does not disclose that claim. This test takes on particular meaning in the context of patents such as AU 168 and CA 646.
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