SNF Inc. v. Ciba Specialty Chemicals Water Treatments Limited, 2015 FC 997 (Phelan, J.)
August 24, 2015
Ron Dimock, Michael Crinson, Cristina Mihalceanu and Michal Kasprowicz of Dimock Stratton LLP for the Plaintiff SNF Inc.
Scott Jolliffe, James Buchan, Kevin Sartorio, Laurent Massam, David Potter, and Charlotte McDonald of Gowling Lafleur Henderson LLP for the Defendant CIBA Specialty Chemicals Water Treatments Limited
Unlike typical patent litigation matters, this action commenced with the Plaintiff seeking a declaration that a patent held by the Defendant CIBA was invalid. Although CIBA then counterclaimed for infringement, that action settled, and the trial dealt solely with the validity of CIBA’s patent.
The case serves as a reminder of the importance of clarity in drafting claims, as trying to define terms before the Court can have unexpected consequences elsewhere in the patent validity analysis.
The Court also had some very strong language about the role of expert witnesses, and set out questions to be considered in weighing expert evidence, including:
62 Like any other witness, the credibility of an expert witness cannot be determined by following a set of rules. Credibility is an issue of fact and deciding between or preferring one expert’s evidence over another is not an easy matter. In R v White, [1947] SCR 268, the Supreme Court gave this overview:
The general integrity and intelligence of the witness, his powers to observe, his capacity to remember and his accuracy in statement are important. It is also important to determine whether he is honestly endeavouring to tell the truth, whether he is sincere and frank or whether he is biased, reticent and evasive. All these questions and others may be answered from the observation of the witness’ general conduct and demeanour in determining the question of credibility.
The Court then discussed the legal tests for claim construction (an antecedent to considerations of anticipation or obviousness), but found that the prior art lead by the Plaintiff did not meet the very high threshold required to prove anticipation.
Turning to the question of obviousness, though, the Court ultimately found that the patent was invalid as it would have been obvious to try for a person skilled in the art, in part due to teachings from the prior art and the common general knowledge.
While it was not necessary to do so, the Court then turned to considering the sufficiency of the disclosure of the patent. There, the Court found that if it had adopted the definition of “rigidification” proposed by the Defendant, then the 581 Patent’s disclosure would have been insufficient and an improper attempt to “game the system”.
209 I conclude that insufficiency cannot be made out on the basis of the claims as construed by the Court but, alternatively, if the claims are construed as the Defendant asserts, the specifications are insufficient.
The Court also considered whether the 581 Patent was overbroad or whether statements made during the prosecution of its application were misleading. The Court found that it was not overbroad and while the Defendant made misleading statements, those statements were not material and so “Ciba’s conduct may be reprehensible but it was not material”.
The Court declined to follow the rulings of an Australian Court on a companion patent, noting:
232 The Federal Court of Australia is the sibling court to this Court and its decisions are held in the highest regard by the judges of this Court. However, this is a circumstance where we depart from our very southern colleagues – which we do with the greatest of respect.
233 As persuasive as judgments from the Australian Federal Court may be, the decision here turns on the facts and law applicable here. The Australian court dealt with an innovation patent, a type of patent not existing in Canada. The applicable laws are different; the evidence on the key issues of anticipation and obviousness was different both in terms of witnesses and in terms of documents.
By: Shaun B. Cody, New Horizon Law