Newco Tank v. Canada (Attorney General), 2015 FCA 47 (Ryer J.A)
February 16, 2015
C. Kvas and A. Lambert for the Appellant, Newco Tank Corp.
J. Dais-Visca and J. Elford for the Respondent, Attorney General of Canada
This was an appeal from a decision of the Federal Court (2014 FC 287) dismissing an appeal by Newco Tank pursuant to section 48.5 of the Patent Act, from a decision of a re-examination board in respect of the validity of claims 12, 13 and 14 of the Canadian patent no. 2,421,484. Judgment was delivered from the Bench, dismissing the appeal with costs.
The Board had concluded that claims 12 to 14 were invalid as being obvious in view of six U.S. patents submitted as prior art. Newco Tank appealed the Board’s decision to the Federal Court which upheld the decision. The Federal Court reviewed, on the standard of reasonableness, the Board’s factual determinations on the common general knowledge of the skilled person and found them to be reasonable.
On this appeal, the appellant argued that there was a reviewable error of law in construing the specification of the patent by finding that the problem to be solved by the patent was an admission of the common general knowledge of the skilled person. The Federal Court of Appeal characterized this as the appellant repackaging the argument before the Federal Court that the finding was unreasonable as one of faulty patent construction giving rise to an error of law that is reviewable on the standard of correctness.
The Federal Court of Appeal rejected the assertion as without merit. The Court did not agree that by making its finding as to what was included in the common general knowledge of the skilled person, the Board was engaged in an exercise of patent construction. Rather, the Court’s view was that when the Board made its finding that the common general knowledge of the skilled person included the information presented as background knowledge in the patent itself, the Board was simply making a factual finding that was required of it in order to meet the requirement of factor 1(b) in the Sanofi test for obviousness.
The Federal Court of Appeal also remarked that the Federal Court Judge correctly held that this factual finding was within the area of expertise of the Board and was therefore deserving of a high degree of deference. The Court added that he correctly applied the reasonableness standard in his review in which he found that the Board was not required to describe the level of the skilled person’s common general knowledge in any particular level of detail and that it was open to the Board to conclude that the skilled person’s common general knowledge was reasonably described by reference to the language presented as background information in the patent.
By: Christopher Heer, Heer Law