Wenzel Downhole Tools Ltd. v. National-Oilwell
Canada Ltd., 2012
FCA 333

Per Gauthier J.A. (Nadon J.A. concurring):

This was an appeal from the Federal Court decision dismissing Wenzel’s
patent infringement action and allowing the counterclaim invalidating Canadian
Patent No. 2,026,630 (the ‘630 Patent) on the basis of anticipation and
obviousness.

Appeal dismissed.

Anticipation:

The Trial Judge made no palpable and overriding error in concluding
anticipation based on the rental of the drilling motors embodying the
invention.

The Court upheld the Trial Judge’s decision rejecting Wenzel’s argument
that prior rental did not constitute public disclosure because 1) the invention
was encased in a metallic housing hiding the inner workings, and 2) no POSITA
was present during the use of the rental motors.
The test for anticipation by disclosure through a product is an
objective one. Whether or not a real person fitting the description of the
POSITA was actually present where the rented invention was being used is
irrelevant, as is what actually happened at the site during the rental period.

Becoming available means that the public had an opportunity to access
the information that is the invention. It does not require that one actually
took advantage of this opportunity. Once the opportunity is established as a
fact, the Court applies the legal test for anticipation developed in Sanofi
to the information that the fictional POSITA would derive from the fictional
examination.

Being available does not require that access to the information be easy,
simply that it be possible using known methods and instruments.

It is not necessary that the POSITA have a motive or a reason for
looking for the product composition.

Obviousness:

The Court did not interfere with the Trial Judge’s finding that the
invention was obvious, but held it was not appropriate to refer to the “obvious
to try” approach in this case.

The Court stated that Rothstein J. in Sanofi did not restrict the
“obvious to try” approach to pharmaceutical cases. The “obvious to try”
approach may be applicable in a mechanical field.

Before a judge can conclude that the “obvious to try” analysis is useful
in a particular field, he or she should give some indication regarding the
reasons for coming to that conclusion. Ideally, a judge should refer to the
evidence on which he or she based this conclusion. In the absence of such an
express reference, the premise underlying the approach may be apparent from the
analysis carried out by the judge in applying it, particularly when addressing
the number of predictable variables that are involved and the type of
experimentation program they involve.

Evidence that products embodying the invention were tested prior to
their use is not the type of evidence upon which one should conclude that
advances in the particular art are won by experimentation. The evidence
referred to testing that one would expect any diligent manufacturer to do
before putting any product on the market, irrespective of whether such product
embodied a new invention or a proven design. It was not appropriate to refer to
the obvious to try approach in this case.

The Supreme Court in Sanofi clearly indicated that there is no
single or mandatory approach in the obviousness inquiry. Indeed, accepting that
the “obvious to try” approach might be useful depending on the circumstances
was part of a move away from rigid rules that had limited the obviousness
inquiry, towards a more flexible, expansive, and fact driven inquiry. In the
present case, despite her reference to the “obvious to try” approach, the Trial
Judge undertook a careful and objective analysis of the relevant factors,
including those set out in the first three steps of the preferred analysis in Sanofi.
In the end, she was clearly satisfied that the invention was plain or, as she
said, more or less self-evident. This means it was obvious by any standard,
irrespective of her particular approach.

Per Mainville J.A. (concurring in the result):

Anticipation:

Mainville J.A. disagreed with the majority concerning anticipation.

He summarized the law on prior disclosure through publication, oral
communication, and use, and offered the following analysis: 

It is not appropriate to equate the possibility of consulting a person
who holds drawings of the invention as amounting to anticipation by prior
publication, without first determining whether or not any information was in
fact published or disclosed. An undisclosed drawing does not amount to a
publication which is available to the public. There is no analogy here with a
published book sitting on a shelf in a public library.

Being available for consultation is not the same as disclosing information.
For an oral communication of information to be effective for the purposes of
anticipation, the information must be actually conveyed. Simply put, “being
available for consultation” is not a form of communication. This is the
equivalent of saying “had they asked me I would have told them”. This may well
be true, but until someone effectively “tells them”, no information is
conveyed.

In order to find anticipation in this case, the Trial Judge added a
subjective element to the test., i.e. that one of the witnesses could
have disclosed information about the invention had he been requested to do so.
The Trial Judge introduced an unwarranted subjective element into the test for
anticipation which makes it virtually impossible to assess objectively both
elements of anticipation.

The Trial Judge also erred in finding anticipation by prior use.

In this case, establishing disclosure by prior use required submitting
evidence that either the operation of the equipment would itself allow for
enabling, or that the POSITA would have been capable of accessing and analyzing
the inner workings of the equipment without undue burden.

The only evidence submitted at the trial on the issue of prior
disclosure by use indicated that the rental drilling motors had a sealed
bearing assembly which hid their inner workings, and that the motors could only
be taken apart in the repair shop and not at the site where they were used.

This evidence is inconsistent with the Trial Judge’s finding that
“anyone at the drill site could have ‘lifted up the hood’ and examined
the…[drilling motors]”. In fact, the evidence leads to the contrary conclusion.
Since the burden of proving anticipation through disclosure by prior use fell
on the respondents, this burden was not discharged and the Trial Judge
committed a palpable and overriding error in finding otherwise.

Finally, Mainville J.A. disapproved of the Trial Judge’s reliance on the
“lifting up the hood” analogy from Gibney et al v. Ford Motor Co. of
Canada Ltd., [1967] 2 Ex. C.R. 279, 52 C.P.R. 140. He stated that the Gibney
decision does not set out principles which govern the modern notion of
anticipation, which requires both prior disclosure and enablement.

Obviousness:

Mainville J.A. agreed with the majority that although the Trial Judge
had no basis for applying the “obvious to try” test, the application of that
test in this case was not fatal to the Judge’s decision. He stated that the
Trial Judge nevertheless found the invention obvious under the ordinary test
for obviousness, and her finding on this issue should not be disturbed.

Commentary:

The majority opinion provides greater predictability as to what
constitutes an anticipatory disclosure and promotes the patent bargain by
encouraging inventors to “run, not walk” to the patent office, resulting in
early publication of patent applications and discouraging attempts to prolong
the monopoly by first ‘secretly’ commercializing the invention, and then
seeking a further 20 year monopoly for it. In contrast, by raising the
threshold of what constitutes an anticipatory disclosure, the dissenting
opinion promotes the patent bargain by encouraging the filing of more detailed
patent disclosures during a period of ‘secret’ commercial use. On balance, it
is the view of Perry and Currier that the approach taken by the majority is the
more correct one, not only for the reasons discussed above, but also because it
is more consistent with existing case law holding that, if there has been use
in public, it is not necessary to prove that any particular member of the
public has acquired actual knowledge of the invention or what the details of
his knowledge are (see Canadian Patent Scaffolding Co. v. Delzotto
Enterprises Ltd., [1978] F.C.J. No. 1107 at para 59).