E. Mishan & Sons, Inc. v. Supertek Canada Inc., 2015 FCA 163 (Ryer J.A., Webb J.A., Near J.A.)
July 14, 2015
Ronald E. Dimock and Alan Macek of Dimock Stratton LLP for the Appellants E. Mishan & Sons, Inc. and Blue Gentian, LLC
Andrew I. McIntosh, Adam Bobker of Bereksin & Parr LLP for the Respondents Supertek Canada Inc., International Edge, Inc. and Telebrands Corp.
This is an appeal from a decision of Justice Hughes (2014 FC 326) that included the “McDonald Patent” as prior art and held that the patented invention would have been obvious to the skilled person.
The Federal Court of Appeal ruled that both issues are questions of mixed fact and law, whose factual components must not be overturned unless they are based on palpable and overriding errors.
On the first issue, the Federal Court of Appeal repeated that to be relevant, prior art “must be locatable through a reasonably diligent search.” The Court of Appeal rejected the invitation to reweigh the evidence and upheld the Federal Court conclusion that the McDonald Patent would have been found by a skilled person conducting a reasonably diligent search.
On the second issue, the Federal Court of Appeal rejected the Appellants’ argument that the fourth step in the test for obviousness set out in Apotex v. Sanofi-Synthelabo, 2008 SCC 61 requires that the Trial Judge forget the differences identified between the prior art and the claimed invention. The fourth step requires that the Trial Judge determine whether the differences identified between the prior art and the inventive step would have been obvious to the skilled person. This analysis necessarily requires some knowledge of the claimed invention.
The Federal Court of Appeal upheld the Trial Judge’s application of the Sanofi test.
By: Greg Moore, Joli-Coeur Lacasse LLP