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Patents - Obviousness. Munchkin, Inc. v. Angelcare Canada Inc. [inventive concept]
In Munchkin, Inc. v. Angelcare Canada Inc. (Fed CA, 2024) the Federal Court of Appeal considered the issue of 'inventive concept', as an element in the patent principle of 'obviousness':[53] Munchkin agrees with the Federal Court’s statement, at paragraph 369 of the Decision, that an inventive concept is the solution taught by the patent to the problem that motivated the invention (see Apotex Inc. v. Shire LLC, 2021 FCA 52, [2021] 3 F.C.R. 46 at para. 84 (Shire) citing Bristol-Myers Squibb Canada Co. v. Teva Canada Limited, 2017 FCA 76, 146 C.P.R. (4th) 216 at para. 75). Munchkin also acknowledges the statement at paragraph 86 of Shire that "“[a]lthough a claim by claim analysis of each claim’s inventive concept is to be conducted, it is important to remember that a single, overarching inventive concept connects every claim of a patent, with its genesis usually in the independent claim(s).”"
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[57] I see no error in defining the inventive concept in terms of the wording of the claim in question. Whether or not a feature of a patent claim contributes to the inventive result, there is no error in including it as an essential element of the claim for the purposes of assessing inventiveness, so long as a proper claim construction shows that feature indeed to be an essential element. . Rovi Guides, Inc. v. Telus Corporation
In Rovi Guides, Inc. v. Telus Corporation (Fed CA, 2024) the Federal Court of Appeal dismissed a patent infringement appeal, here where the trial court "dismissed Rovi’s actions against the respondents, Bell Canada (Bell) and Telus Corporation, Telus Communications Inc., and Telus Communications Company (collectively, Telus) for patent infringement and granted the respondents’ counterclaims for declarations of invalidity and non‑infringement".
Here the trial court considers an aspect of the patent doctrine of 'obviousness':[32] The Federal Court applied the two-part test to show that prior art anticipates a claimed invention: there must be a prior disclosure of the essential elements of the claim in a single piece of prior art and the prior disclosure must enable the claimed subject-matter to be practised by a Skilled Person without any inventive skill: Federal Court Decision at paras. 149, 320, 407-438. . Rovi Guides, Inc. v. Videotron Ltd.
In Rovi Guides, Inc. v. Videotron Ltd. (Fed CA, 2024) the Federal Court of Appeal dismissed a patent infringement appeal, where the trial court dismissed the patent infringement claim and granted a "counterclaim for declarations of invalidity and non‑infringement".
Here the courts (trial and appeal) consider the patent principle of 'obviousness':[14] In undertaking its obviousness analysis, the Federal Court, at paragraph 296 of its reasons, correctly set out the applicable test from Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61, [2008] 3 S.C.R. 265 [Sanofi] at paragraph 67, which requires that a court:. first, identify the notional Skilled Person;
. second, identify the relevant common general knowledge of that person;
. third, identify the inventive concept of the claim(s) in question or, if that cannot readily be done, construe them;
. fourth, identify what, if any, differences exist between the matter cited as forming part of the "“state of the art”" and the inventive concept of the claim(s) or the claim(s) as construed; and
. finally, viewed without any knowledge of the alleged invention as claimed, determine whether those differences constitute steps that would have been obvious to the Skilled Person or whether they require any degree of invention. ....
[53] Before delving into each of Rovi’s arguments, it is important to remember that a trial court’s findings on obviousness are findings of mixed fact and law. Thus, absent an extricable error of law, they are reviewable only if they disclose a palpable and overriding error: Packers Plus Energy Services Inc. v. Essential Energy Services Ltd., 2019 FCA 96, 164 C.P.R. (4th) 191, leave to appeal to SCC refused, 38694 (19 December 2019) at para. 29 [Packers], citing Teva Canada Limited v. Pfizer Canada Inc., 2019 FCA 15, 163 C.P.R. (4th) 265 at para. 23 [Pfizer]; Teva Canada Limited v. Novartis Pharmaceuticals Canada Inc., 2013 FCA 244, [2013] F.C.J. No. 1108 at paras. 10-12; Alcon Canada Inc. v. Actavis Pharma Company, 2015 FCA 191, [2015] F.C.J. No. 1083 at para. 11.
[54] Determinations as to the state of the art and as to the nature and extent of the skilled person’s common general knowledge are likewise findings of mixed fact and law, reviewable only if they disclose a palpable and overriding error: Packers at para. 30, citing Apotex Inc. v. Allergan Inc., 2015 FCA 137, [2015] F.C.J. No. 953 at para. 7 [Allergan]; AFD Petroleum Ltd. v. Frac Shack Inc., 2018 FCA 140, 157 C.P.R. (4th) 195 at para. 38 [Frac Shack].
[55] This Court and the Supreme Court of Canada have underscored on multiple occasions that the palpable and overriding standard is a highly deferential one. "“Palpable”" means an error that is obvious and "“overriding”" means that the error affects the outcome. As the Supreme Court put it in Salomon v. Matte-Thompson, 2019 SCC 14, [2019] 1 S.C.R. 729 [Salomon], "“[w]here the deferential standard of palpable and overriding error applies, an appellate court can intervene only if there is an obvious error in the trial decision that is determinative of the outcome of the case”": at para. 33, citing Canada v. South Yukon Forest Corporation, 2012 FCA 165, [2012] F.C.J. No. 669, leave to appeal to SCC refused, 34946 (6 December 2012); see also Benhaim v. St-Germain, 2016 SCC 48, [2016] 2 S.C.R. 352 at para. 38.
[56] Thus, in a case like the present, it is not the task of this Court in appellate review to sift through and reweigh the evidence the Federal Court used to ground its obviousness findings nor to re-decide which expert is to be preferred: see Pfizer at para. 31; Eli Lilly and Company v. Apotex Inc., 2010 FCA 240, [2010] F.C.J. No. 1199 at para. 8; E. Mishan & Sons, Inc. v. Supertek Canada Inc., 2015 FCA 163, 134 C.P.R. (4th) 207 at para. 25. As the Supreme Court underscored in Salomon "“[t]he fact that an alternative factual finding could be reached based on a different ascription of weight [to evidence] does not mean that a palpable and overriding error has been made”": at para. 33, citing Nelson (City) v. Mowatt, 2017 SCC 8, [2017] 1 S.C.R. 138 at para. 38.
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[59] Rovi is correct that the governing legal principles applicable to defining the Skilled Person require that they not be inventive. Indeed, the notion of the Skilled Person exists so as to remove the application of inventiveness from the obviousness analysis. The classic "“touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right”": Hospira Healthcare Corporation v. Kennedy Trust for Rheumatology Research, 2020 FCA 30, [2020] F.C.J. No. 179 at para. 79 [Hospira], citing Beloit Canada Ltd. v. Valmet Oy, [1986] F.C.J. No. 87, 8 C.P.R. (3d) 289 (F.C.A.) at 294 [Beloit FCA 1986]. As this Court stated in Beloit FCA 1986 at page 294:The test for obviousness is not to ask what competent inventors did or would have done to solve the problem. Inventors are by definition inventive. The classical touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right. The question to be asked is whether this mythical creature (the man in the Clapham omnibus of patent law) would, in the light of the state of the art and of common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent. It is a very difficult test to satisfy. [60] In other words, the notional Skilled Person, through whose eyes a patent is to be read, is different from the inventor who does creative work and makes an invention: Amgen Canada Inc. v. Apotex Inc., 2015 FC 1261, [2015] F.C.J. No. 1382 at para. 86, aff’d 2016 FCA 196, [2016] F.C.J. No. 765, leave to appeal to SCC refused, 37124 (27 October 2016).
[61] The common general knowledge of such an uninventive notional being is derived from "“a common sense approach to the question of what would be known, in fact, to an appropriately skilled person that could be found in real life, who is good at his or her job”": Eli Lilly Canada Inc. v. Apotex Inc., 2018 FC 736, 156 C.P.R. (4th) 387 at para. 46, quoting Eli Lilly & Co. v. Apotex Inc., 2009 FC 991, [2009] F.C.J. No. 1229 at para. 97, aff’d 2010 FCA 240, [2010] F.C.J. No. 1199 [Eli Lilly]. As part of this, "“[t]he skilled person is assumed to be reasonably diligent in keeping abreast of advances in the field to which the patent relates”": Johnson & Johnson Inc. v. Boston Scientific Ltd., 2008 FC 552, 71 C.P.R. (4th) 123 at para. 373, citing Whirlpool Corp. v. Camco Inc., 2000 SCC 67, [2000] 2 S.C.R. 1067 at para. 74 [Whirlpool]. . 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 'obviousness':[27] On this issue, it may be helpful to note this Court’s words in Shire at paragraph 86:Although a claim by claim analysis of each claim’s inventive concept is to be conducted, it is important to remember that a single, overarching inventive concept connects every claim of a patent, with its genesis usually in the independent claim(s). As seen in AstraZeneca Canada Inc. [v. Apotex Inc., 2017 SCC 36, [2017] 1 S.C.R. 943], the “subject matter” of an invention can be multi-faceted (at para. 49). There, Rowe J., quoting David Vaver, Intellectual Property Law 2nd ed. (Toronto: Irwin Law, 2011), at 275, noted:For simplicity's sake, the rule is “one invention, one application, one patent.” But inventions are like a many-faceted prism: multiple claims (sometimes running into the hundreds) covering all facets are allowed in the same patent if a “single general inventive concept” links them. . Eli Lilly Canada Inc. v. Apotex Inc.
In Eli Lilly Canada Inc. v. Apotex Inc. (Fed CA, 2023) the Federal Court of Appeal considered the patent law of 'obviousness':[51] The statutory basis for the obviousness analysis is found in section 28.3 of the Patent Act, which provides:Invention must not be obvious
Objet non évident
28.3 The subject-matter defined by a claim in an application for a patent in Canada must be subject-matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains, having regard to
28.3 L’objet que définit la revendication d’une demande de brevet ne doit pas, à la date de la revendication, être évident pour une personne versée dans l’art ou la science dont relève l’objet, eu égard à toute communication :
(a) information disclosed before the one-year period immediately preceding the filing date or, if the claim date is before that period, before the claim date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant in such a manner that the information became available to the public in Canada or elsewhere; and
a) qui a été faite, soit plus d’un an avant la date de dépôt de la demande, soit, si la date de la revendication est antérieure au début de cet an, avant la date de la revendication, par le demandeur ou un tiers ayant obtenu de lui l’information à cet égard de façon directe ou autrement, de manière telle qu’elle est devenue accessible au public au Canada ou ailleurs;
(b) information disclosed before the claim date by a person not mentioned in paragraph (a) in such a manner that the information became available to the public in Canada or elsewhere.
b) qui a été faite par toute autre personne avant la date de la revendication de manière telle qu’elle est devenue accessible au public au Canada ou ailleurs. [52] The question to be answered pursuant to section 28.3 of the Patent Act is whether the subject-matter defined by the asserted claims of the 684 Patent is obvious to a person skilled in the art with regard to the prior art as of the claim date of April 30, 1999. If the “invention” is obvious, the patent or its asserted claims are invalid.
[53] In Sanofi, the Supreme Court of Canada adopted the four-step approach to an obviousness inquiry first outlined in Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd., [1985] R.P.C. 59 (C.A.):In the result I would restate the Windsurfing questions thus:
(1) (a) Identify the notional “person skilled in the art”;
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
(Sanofi at para. 67, citing Pozzoli SPA v. BDMO SA, [2007] F.S.R. 37 (p. 872), [2007] EWCA Civ 588 at para. 23) [emphasis in original] [54] In Shire, this Court reminded us that obviousness is assessed on a claim-by-claim basis; each claim is evaluated against the four-part Sanofi test (Shire at para. 55).
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[71] As noted by this Court in Hospira Healthcare Corporation v. Kennedy Trust for Rheumatology Research, 2020 FCA 30, 316 A.C.W.S. (3d) 537:It should be noted that, whereas being “more or less self-evident to try to obtain the invention” (per Sanofi at para. 66) is a requirement for obviousness to try, being “more or less self-evident that what is being tried ought to work” (per Sanofi at para. 69) is not a requirement but merely a factor to be considered. . Apotex Inc. v. Shire LLC
In Apotex Inc. v. Shire LLC (Fed CA, 2021) the Federal Court of Appeal considered the patent principle of obviousness:B. Obviousness
[55] As with anticipation, obviousness is assessed on a claim-by-claim basis (Zero Spill Systems at paras. 83, 85). Each claim is evaluated against the four-part Sanofi test (at para. 67):(1) (a) Identify the notional “person skilled in the art”;
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention? ....
[65] Section 28.3 of the Patent Act does not displace the common law test for obviousness. The inventive concept, properly construed and applied, remains the end point for the obviousness inquiry. Second, I do not see an error in the judge’s analysis of the inventive concept, nor in its application. Further, the arguments raised by Apotex, interesting as they may be, are of no consequence in light of the judge’s factual findings. I will elaborate on this later.
[66] I begin with three basic principles.
[67] First, on occasion, the inventive concept may be "“readily apparent”" where there is agreement on it. If not, the inventive concept needs to be construed. To do that, the judge is to first determine whether it can be identified from the previously completed claims construction exercise (Ciba at paras. 76-77). Second, where it is not possible to fully grasp the nature of the inventive concept solely from those claims, the judge may have regard to the patent specification to determine if it provides any insight or clarification into the inventive concept of the claim(s) in issue (Sanofi at para. 77; AstraZeneca Canada Inc. at para. 31). If this step is necessary, "“it is not permissible to read the specification in order to construe the [inventive concept of the] claims more narrowly or widely than the text will allow”" (Sanofi at para. 77).
[68] Second, insight from Sanofi shows that while an inventive concept is an attribute of the claims, it differs from claims construction (Joshua Sealy-Harrington, "“The Inventive Concept in Patent Law: Not so Obvious”", (2015) 27 I.P.J. 385). As such, though the process for the identification of an inventive concept bears a striking resemblance to that of claims construction, as seen in longstanding Supreme Court of Canada rulings (see, e.g., Free World at paras. 33-50; Whirlpool Corp. v. Camco Inc., 2000 SCC 67, [2000] 2 S.C.R. 1067 at paras. 43, 49), it is nonetheless a distinct, separate exercise.
[69] Third, the caution expressed in Unilever PLC. v. Chefaro Proprietaries Ltd., [1994] R.P.C. 567 (Eng. C.A.) at 580 (Unilever PLC) remains a governing legal principle: "“[i]t is the ‘inventive concept’ of the claim in question which must be considered, not some generalised concept to be derived from the specification as a whole.”" Thus, as required by section 28.3 as well as the wording of Sanofi, it is the inventive concept(s) of the claim(s) in issue that must be the focus of an obviousness inquiry, not the inventive concept of the patent (Ciba at para. 72; Bauer Hockey Corp. v. Easton Sports Canada Inc., 2010 FC 361 at para. 250, aff’d 2011 FCA 83; Pfizer Canada Inc. v. Apotex Inc., 2017 FC 774 at para. 247, aff’d 2019 FCA 16 (Pfizer Canada Inc.)).
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[103] Stage 4 of the obviousness inquiry asks whether the differences, in light of the prior art and viewed without any knowledge of the alleged invention as claimed, constitute steps which would have been obvious to the PSIA, or if they instead required any degree of invention (Sanofi at paras. 67, 70). Obviousness is assessed objectively and purposively, having regard to the problem addressed by the patent (Apotex Inc. v. Pfizer at paras. 32, 35 and 39).
[104] If a patent pertains to an area" “of endeavour where advances are often won by experimentation”", as here, "“an ‘obvious to try’ test might be appropriate”" (Sanofi at para. 68). However, an "“obvious to try”" analysis remains but one of many potentially relevant factors in the stage 4 analysis (Bristol-Myers at para. 38; Sanofi at paras. 64-65). As noted in Apotex Inc. v. Pfizer at para. 32:[…] while the Supreme Court introduced the “obvious to try” test, it favours “an expansive and flexible approach that would include 'any secondary considerations that [will] prove instructive'” (Atazanavir at para. 61, referring to Sanofi at para. 63). As a result, a categorical approach to the obviousness inquiry and the elaboration of a “hard and fast rule” was specifically deemed inappropriate and rejected […] (Atazanavir at para. 62). [105] For an invention to be "“obvious to try”", there must be evidence establishing, on a balance of probabilities, "“that it was more or less self-evident to try to obtain the invention”" (Sanofi at para. 66). As such, this analysis flows from the identification of the "“invention”" described by the claim’s inventive concept. For example in Sanofi, the focus on the properties of the isomers at the obvious to try stage was dictated by the fact that it was the special properties of the selection which made it inventive. The obvious to try test does not broaden the scope of the obviousness inquiry from a claim-by-claim analysis to an invention-overall analysis.
[106] To assess whether it is more or less self-evident to try to obtain an invention, as defined by a claim’s identified inventive concept, Sanofi enumerated three non-exhaustive factors that should be considered (at paras. 69, 83-92). While they must all be explicitly considered in order to answer the overall question of whether it is "“more or less self-evident to try to obtain the invention”," they need not all be met (Hospira at paras. 89-90):(1) Is it more or less self-evident that what is being tried ought to work? Are there a finite number of identified predictable solutions known to persons skilled in the art?
(2) What is the extent, nature and amount of effort required to achieve the invention? Are routine trials carried out or is the experimentation prolonged and arduous, such that the trials would not be considered routine?
(3) Is there a motive provided in the prior art to find the solution the patent addresses? [107] Beyond the enumerated factors, there are contextual factors that should also be considered, depending on the facts of the case. These contextual factors include but are not limited to the history of the invention, how "“quickly, easily, directly and relatively inexpensively”" it was reached and any "“wild goose chases”" that were pursued before arriving at the invention, etc. (Sanofi at paras. 70-71; Apotex Inc. v. Pfizer at paras. 46-48). Although these additional contextual factors may not be, on their own, determinative (see, e.g., Tearlab at paras. 68-69), any that arise alongside the factors enumerated in Sanofi are to be considered and weighed before coming to a conclusion about whether the invention was obvious. . 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 patent issue of 'obviousness' in challenging a grant:[109] The four-step test set out in Sanofi-Synthelabo at para. 67 is one way to assess obviousness, but it is not mandatory. The Supreme Court of Canada warns in Sanofi-Synthelabo at para. 63 that one should avoid "“an overly rigid rule that limits the obviousness inquiry.”" The Court characterizes the four-step test as a useful approach. This Court has repeatedly commented that the framework provided in Sanofi-Synthelabo is not mandatory: Corlac Inc. v. Weatherford Canada Inc., 2011 FCA 228, 95 C.P.R. (4th) 101 at paras. 67-68; Wenzel Downhole Tools Ltd. v. National-Oilwell Canada Ltd., 2012 FCA 333, [2014] 2 F.C.R. 459 at para. 105; Teva Canada Limited v. Novartis Pharmaceuticals Canada inc., 2013 FCA 244, 451 N.R. 246 at para. 7. In my view, the only mandatory considerations are those laid out in section 28.3 of the Patent Act, which is concerned with obviousness to a person skilled in the art or science to which the invention pertains, having regard to "“information disclosed before the [relevant date] in such a manner that the information became available to the public in Canada or elsewhere.”"
[110] It is also helpful to observe that the four-step test set out in Sanofi-Synthelabo provides a framework for assessing obviousness (calling for the identification of the skilled person and that person’s common general knowledge, as well as the inventive concept and the differences, if any, from the state of the art), but it does not delve into the determination of whether those differences are obvious to the skilled person, except to say that it should be done without any knowledge of the alleged invention.
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