Scintillae of inventiveness or imagination #4

Articles repérés dans les dernières semaines:

RIM at head of pack in patent prowess – Globe and Mail

– U.S. Inventiveness at Highest Point Since Industrial Revolution

-Report Shows Median Price Paid for Issued U.S. Patents Is $221,000

Article sur la stratégie de P&G dans leurs dépôts de dessins industriels

Jurisprudence brevets:

« Coffee, tea, SEGA – patent problems »

Toujours mieux de corriger les erreurs concernant les inventeurs avant que le brevet soit émis. Sinon, il faut demander à la Cour fédérale pour permission.

Segatoys Co., Ltd. v. Canada (Attorney General) , 2013 FC 98 (January 30, 2013)

Autre décision

À contraster avec le test de Nike c. Bauer (voir par. 75 ci-dessous) : 1. The patent was not anticipated. Easton had argued that Nike/Bauer anticipated its own patent by having NHL hockey players try on prototype skates in a public arena before the filing date of the patent. The appeal court agreed that based on the available evidence, such casual observation of the prototypes without an opportunity for close scrutiny would not have revealed the invention to a skilled observer.

  • Wenzel      Downhole Tools Ltd. v. National-Oilwell Canada Ltd., 2012 FCA 333 (Justice      Nadon; Justice Mainville; Justice Gauthier)

Extrait pertinent sur la nouveauté (est-ce qu’une vente/location constitue une divulgation):

63] That being said, the real focus in this appeal was on whether an accurate and full description of the invention was available in this case, applying the undisputed principles set out in the reasons at paragraphs 80-90. As noted in the Appellants’ Outline of oral argument on Anticipation, did the judge misapply the law when one considers her findings of facts with respect to what actually occurred? For the Appellants , the Judge erred because “disclosure, not hypothetical disclosure of the invention is a necessary precursor to a determination of anticipation”

[64] In Lux, Aldous J. made it clear that he did not accept the argument before him that the task of the Court was to ascertain “what actually happened during the use of the prototype [the product embodying the claimed invention in his case] and from that conclude what a skilled man would assimilate” (Lux at page 134).

[65] In this case, I believe that the Appellants exhibit a similar misunderstanding.

[66] The test for anticipation by disclosure through a product (and for that matter, for anticipation by publication) is an objective one. Whether or not a real person fitting the description of the POSITA was actually present at the drilling site is irrelevant, as is what actually happened at the site during the rental period.

[67] What is relevant in the case of a product like the drilling tools at issue “is that which the skilled man would, if asked to describe its construction and operation, write down having carried out an appropriate test or examination.[my emphasis]” (Lux at page 134 in the passage actually cited by the Judge in her reasons at paragraph 87).

[68] My understanding, based on the relevant jurisprudence, is that becoming available means that, the public, as defined earlier, had an opportunity to access the information that is the invention. As previously mentioned, it does not require that one actually took advantage of this opportunity. Once the opportunity is established as a fact (here, for example, that: (i) Dreco had unrestricted access to the drilling tools, and any information derived from such access was not protected by confidentiality; and (ii) a method to open such tools and examine their internal structures was known), the Court applies the legal test for anticipation developed in Sanofi (full disclosure of all the essential elements of the invention and enablement) to the information that the fictional POSITA would derive from the fictional examination.

[69] The Appellants disagree with the analogies used by the Judge, being: (i) a book in a public library (the reasons at paragraph 118); and (ii) the “lifting of the hood” (the reasons at paragraph 123). They say that the drilling tools in this case are not analogous to a book in a library, nor was the opening of the tools like the lifting of the hood of a car. Again, I cannot agree. Aldous J. in Lux, later quoted by Rothstein J.A. in Baker Petrolite, referred to the book in a public library even though he was looking at a case of prior use of a product, not anticipation by publication. The book in the public library could be in Japanese, even though the library is located in a remote village where no one speaks Japanese. This would still be a disclosure that would make whatever information it contained available, even though accessing the information that is available requires the use of a dictionary or even an interpreter that would not be available in that village. As for the lifting of the hood, it is true that opening the sealed joints to examine the internal structure may be a bit more tedious than lifting a hood but that does not detract from the validity of the analogy. As mentioned, this is not relevant; being available does not require that access to the information be easy, simply that it be possible using known methods and instruments.

[70] Again, I reiterate that it is my understanding of the law as it stands now that even if the library listed in a ledger all those who entered the library and recorded each book they reviewed, and a defendant would accordingly be able to prove that nobody had actually accessed the book in the library, my conclusion would be the same. The presence of the book in the library is sufficient to make the information available, and thus to meet the requirements for anticipation within the meaning of section 28.2.

[71] Although this may appear harsh, it is less so than the test that was applied in Canada prior to the adoption of paragraph 28.2(1)(a), and in England prior to the adoption of their Patents Act 1977 implementing the EPC. There is no evidence that, by adopting this new paragraph, the Canadian legislator meant to achieve any purpose other than harmonization with the test applied in Europe. I note that a similar amendment will come into force in the United States in 2013 (Leahy-Smith America Invents Act, 35 U.S.C. at §102 (coming into effect on March 16, 2013)).

[72] As mentioned in Baker Petrolite, paragraph 28.2(1)(a) now excludes from anticipatory uses products the examination of which would not give an accurate and complete description of the invention even if the most complex of the known analytical methods were used by the POSITA (see paragraph 42, particularly subparagraphs 1, 4, and 7, in Baker Petrolite). Typical examples would be where the composition or internal structure of a compound or product would not give any information as to the method used to make it (claimed invention) or as to the starting material used (essential element of a claimed invention). One can also think of the use of a known compound or product for a new technical effect that may not be discernable through examination of the product itself as it must be used in combination with another the product (where the claim is for a new use of the combination).

[73] It is also worth noting that, in its opinion dated December 18, 1992, the European Patent Office Enlarged Board of Appeal made it very clear that the composition or internal structure of a product (and the same principle applies to all products) is part of the state of the art “when the product can be analysed and reproduced by a skilled person irrespective of whether or not particular reasons can be identified for analysing the composition [my emphasis]” (G 1/92 Availability to the Public [1993] O.J. EPO 277, [1993] E.P.O.R. 241. Note that this opinion was referred to by the House of Lords in Synthon BV v. SmithKline Beecham plc, [2005] UKHL 59 at paragraph 29). In the Board’s view, there is simply no legislative requirement for a motive; it is not necessary that the POSITA have a reason for looking for the product composition. Like Rothstein J.A. in Baker Petrolite, I find this to also be true in Canada. This is perfectly in line with the fact that the court does not have consider whether the notional POSITA would be interested by a relevant prior art publication in respect of anticipation by publication. The hypothetical POSITA is presumed to have properly read the document.

[74] Applying the principles set out above to the present matter, the Judge had to determine whether, in this case, there was an opportunity to access the relevant information during the rental.

[75] It is on this question that the Judge distinguished the case before her from the situation in Bauer. In the latter case, the products were not rented or used by a third party, they were simply shown in an arena open to the public during a practice, but in a manner that prevented anybody not bound by confidentiality to do anything more than a visual inspection from afar. It was found as a fact in that case that such inspection would not have enabled the POSITA to write down a full description of the invention. However, on the facts before her, the Judge concluded that the rented drilling tools were available for more than visual inspection (the reasons at paragraph 119) and that these tools could be dismantled (the reasons at paragraph 121). She expressly held that the fact that the tools were rented rather than sold outright did not detract from the conclusion that there were opportunities for their examination (the reasons at paragraph 121).

[76] The Judge does not discuss in her reasons the evidence she considered to arrive at the conclusion that the 3103 assembly could be dismantled, and what this would involve. She had several drawings of the relevant drilling motors and their parts, as well as drawings of other similar motors. She had a picture and an actual sample of the Plaintiffs’ own drilling motor similar to the one in the 3103 assembly, except for the clear section of the outer casing over the bearing assembly (used for exhibition only). Ken Wenzel indicated that the drilling motors rented to Ensco, like the other drilling motors at issue in this case, were built to be serviced (or maintained) (Appeal Book Volume 10 at pages 3036, 3082, 3100). This implies that access to their inner structure was possible. Ken Wenzel also said during his cross-examination that to take the motor apart, one needed something to hold it while the joints were unsealed with the appropriate tool(s). Such tool(s) would have been available at the Rosenberg shop that Ensco shared with Griffith (Appeal Book Volume 10 at pages 3024, 3099-3100).

[77] The fact that such appropriate tool(s) may not have been usually available at the drilling site per se or that opening of the joints is not usually done at a drilling site is irrelevant. There is no evidence that Ensco was prohibited from bringing appropriate tool(s) to the drilling site or from bringing one of the drilling motors to the machine shop.

[78] In the absence of express contractual provisions to the contrary, at common law, a lessee would be entitled to use the rented equipment as he wishes so long as he returns it in good order and condition (H.G. Beale et al., eds., Chitty on Contracts, 30th ed. (London, England: Thomson Reuters, 2008) at page 238, section 33-077). There was no evidence that the opening of the drilling tools would in any way damage them. In fact, given that such tools are made to be serviced, one could assume that the opening and closing of the joints of the steel casing protecting the motor and bearing assembly in order to examine the inner workings was something that Ensco could do. As mentioned, whether they were actually interested in doing so is irrelevant.

[79] Ken Wenzel was clear that no information whatsoever about these rented tools was confidential. The Judge accepted this evidence. From that, it also becomes clear that the sealing of the joints on the drilling tools had nothing to do with confidentiality.

[80] When asked before us why the rental of the tools as opposed to their sale was significant, the Appellants replied that Ensco had possession of the equipment for only a short period of time. Still, I cannot see how it was not open to the Judge to hold as she did that a rental rather than a sale of the drilling equipment had no impact.

[81] Coming back to the analogies used by the Judge, the reference to the engine under the hood may not, as mentioned, be the most appropriate in terms of how one could get to the inner workings of the drilling tools at issue. Nevertheless, this statement indicates to me that the Judge was satisfied that it was rather simple for the POSITA to get to the inner structure to examine and describe the invention underlying the ‘630 Patent.

[82] As pointed out by the Appellants, it is true that the Judge does not expressly discuss whether the POSITA had the necessary skill to use the appropriate tool to open the steel casing in order to observe the 3103 assembly. It may simply be that she did not find the Appellants’ argument (if it was actually made before her, the transcript does not disclose anything in that respect) was worth discussing.

[83] In fact, it is difficult to imagine how the POSITA described in paragraph 46 of the reasons would not be able to open the drilling motor to get to the bearing assembly. There was no evidence that the use of the appropriate tool to do so required any special skills or any inventive step. Certainly, the means to open the drilling motor were available.


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