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Patents - Anticipation. 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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