Genencor International Inc. v. Commissioner of Patents et al., (2008) 329 F.T.R. 109 (FC)

• Judge: Gibson, J.
• Court: Federal Court (Canada)
• Case Date: February 06, 2008
• Jurisdiction: Canada (Federal)
• Citations: (2008), 329 F.T.R. 109 (FC);2008 FC 608

Genencor Intl. Inc. v. Commr. of Patents (2008), 329 F.T.R. 109 (FC)

MLB headnote and full text

Temp. Cite: [2008] F.T.R. TBEd. MY.016

Genencor International Inc. (appellant) v. Commissioner of Patents and Attorney General of Canada (respondents)

(T-262-06; 2008 FC 608)

Indexed As: Genencor International Inc. v. Commissioner of Patents et al.

Federal Court

Gibson, J.

May 15, 2008.

Summary:

Novozymes A/S requested re-examination of Genencor's patent pursuant to s. 48.1(1) of the Patent Act. The re-examination process took place. All claims of Genencor's patent were cancelled with the result that the patent was deemed never to have been issued. Genencor appealed pursuant to s. 48.5 of the Act.

The Federal Court dismissed the appeal.

Administrative Law - Topic 2617

Natural justice - Evidence and proof - Disclosure - Novozymes A/S requested re-examination of Genencor's patent pursuant to s. 48.1(1) of the Patent Act - The re-examination process took place - All claims of Genencor's patent were cancelled with the result that the patent was deemed never to have been issued - Genencor appealed pursuant to s. 48.5 of the Act - Novozymes had submitted material to the Intellectual Property Office that was supplementary to the original request for re-examination - Genencor argued that the failure to provide it with Novozymes' supplementary submissions and an opportunity to respond to those submissions constituted a breach of natural justice or procedural fairness - The Federal Court rejected the argument - The chairman of the re-examination board attested in an affidavit that he likely never saw Novozymes' supplementary submissions, and that if he did, he would not have read them because he was aware that Novozymes was not a party to the re-examination and its supplementary submissions were therefore irrelevant to the re-examination process - In cross-examination, the chairman stated that the other board members had told him that the supplementary submissions had not made it to their files and that they had not read them - See paragraphs 53 to 60.

Patents of Invention - Topic 1228

The specification and claims - Re-examination - Construction of claims by re-examination board - Novozymes A/S requested re-examination of Genencor's patent pursuant to s. 48.1(1) of the Patent Act - The re-examination process took place - All claims of Genencor's patent were cancelled with the result that the patent was deemed never to have been issued - Genencor appealed pursuant to s. 48.5 of the Act - One issue was whether the re-examination board had erred in improperly construing the claims of Genencor's patent - Genencor, by reference to Whirlpool v. Camco Inc. (S.C.C.), asserted that claims had to be construed with reference to the entire patent specification and that the simple dictionary approach should be rejected - The Federal Court stated that "Taking into account the expertise of the members of the board and the fact that the proceeding before them is a re-examination only, not a full-blown impeachment proceeding, I am satisfied that counsel for Genencor is urging that the court place on the board a burden mandated for courts by the foregoing quotation from Whirlpool, which is entirely inappropriate to their experience, to their accustomed role and the role that is contemplated for them by the re-examination provisions of the Patent Act" - See paragraphs 61 to 70.

Patents of Invention - Topic 1230

The specification and claims - Re-examination - Cancellation of claims - Novozymes A/S requested re-examination of Genencor's patent pursuant to s. 48.1(1) of the Patent Act - Novozymes relied on eight items of prior art, including Canadian Patent Application Number 2,082,279 to Rasmussen et al. (the "Rasmussen application") - The re-examination board concluded that the invention disclosed in Genencor's patent was anticipated by the Rasmussen application - All claims of Genencor's patent were cancelled with the result that the patent was deemed never to have been issued - Genencor appealed pursuant to s. 48.5 of the Act - Genencor argued that the re-examination board applied an improper test for anticipation or, alternatively, misapplied the proper test - The Federal Court rejected the argument - The court stated that "the board's reasons demonstrate that the Rasmussen application discloses all of the essential features of the invention claimed by the Genencor patent. In short, the advantages claimed in the Genencor Patent are immaterial on the question of anticipation because the board's reasons disclose that the Rasmussen application teaches each element of the claimed invention and provides an enabling disclosure" - The re-examination board did not apply an improper test for anticipation and did not misapply the proper test - The board made no palpable and overriding error and its decision was reasonably open to it - See paragraphs 71 to 78.

Patents of Invention - Topic 1239

The specification and claims - Re-examination - Appeals - Novozymes A/S requested re-examination of Genencor's patent pursuant to s. 48.1(1) of the Patent Act - Novozymes relied on eight items of prior art, including Canadian Patent Application Number 2,082,279 to Rasmussen et al. (the "Rasmussen application") - The re-examination process took place - All claims of Genencor's patent were cancelled with the result that the patent was deemed never to have been issued - Genencor appealed pursuant to s. 48.5 of the Act - The issues going to the merits of the re-examination board's decision were whether the re-examination board erred in improperly construing the claims of Genencor's patent, whether the board erred in applying an improper test for anticipation or misapplying the proper test, and whether the board erred in concluding that the Rasmussen application anticipated the claims of Genencor's patent - The Federal Court conducted a standard of review analysis and concluded that the appropriate standard of review on the substantive issues was reasonableness - The decision under review should not be interfered with in the absence of palpable and overriding error - See paragraphs 34 to 50.

Patents of Invention - Topic 1602

Grounds of invalidity - Anticipation - Test for - [See Patents of Invention - Topic 1230 ].

Patents of Invention - Topic 1653

Grounds of invalidity - Anticipation by prior patent - What constitutes anticipation - [See Patents of Invention - Topic 1230 ].

Cases Noticed:

Genencor International Inc. v. Commissioner of Patents et al. (2007), 361 N.R. 274; 2007 FCA 129, leave to appeal refused (2007), 380 N.R. 395 (S.C.C.), refd to. [para. 18, footnote 6].

Genencor International Inc. v. Commissioner of Patents, [2007] F.T.R. Uned. 242; 2007 FC 376 (Protho.), refd to. [para. 19, footnote 8].

Genencor International Inc. v. Commissioner of Patents et al., [2007] F.T.R. Uned. 947; 2007 FC 843, refd to. [para. 19, footnote 9].

New Brunswick (Board of Management) v. Dunsmuir (2008), 372 N.R. 1; 329 N.B.R.(2d) 1; 844 A.P.R. 1; 2008 SCC 9, refd to. [para. 32, footnote 16].

Mattel Inc. v. 3894207 Canada Inc. et al., [2006] 1 S.C.R. 772; 348 N.R. 340, refd to. [para. 36, footnote 18].

Harvard College v. Commissioner of Patents (Can.), [2002] 4 S.C.R. 45; 296 N.R. 1, refd to. [para. 37, footnote 21].

Smart & Biggar v. Canada (Attorney General) et al. (2006), 305 F.T.R. 297; 2006 FC 1542, refd to. [para. 49, footnote 25].

Cardinal and Oswald v. Kent Institution (Director), [1985] 2 S.C.R. 643; 63 N.R. 353, refd to. [para. 51, footnote 27].

Syndicat des employés de production du Québec et de l'Acadie v. Commission canadienne des droits de la personne et al., [1989] 2 S.C.R. 879; 100 N.R. 241, refd to. [para. 52, footnote 28].

CIBA-Geigy Canada Ltd. v. Patented Medicine Prices Review Board, [1994] 3 F.C. 425; 77 F.T.R. 197 (T.D.), affd. (1994), 170 N.R. 360 (F.C.A.), refd to. [para. 52, footnote 29].

Gittel v. Air Atlantic (1995) Ltd. (1998), 159 F.T.R. 78 (T.D.), refd to. [para. 54, footnote 30].

Hutchinson v. Canada (Minister of the Environment) (2003), 302 N.R. 66; 2003 FCA 133, refd to. [para. 58, footnote 32].

Whirlpool et al. v. Camco Inc. et al., [2000] 2 S.C.R. 1067; 263 N.R. 88, consd. [para. 61, footnote 33].

Beloit Canada Ltd. v. Valmet Oy (1986), 64 N.R. 287; 8 C.P.R.(3d) 289 (F.C.A.), refd to. [para. 71, footnote 34].

Cochlear Corp. v. Cosem Neurostim ltée (1995), 102 F.T.R. 81; 64 C.P.R.(3d) 10 (T.D.), refd to. [para. 72, footnote 35].

Statutes Noticed:

Patent Act, R.S.C. 1985, c. P-4, sect. 48.1, sect. 48.2, sect. 48.3, sect. 48.4, sect. 48.5 [para. 3].

Counsel:

Hélène D'Iorio, for the appellant;

Alexander Pless, for the respondent.

Solicitors of Record:

Gowling Lafleur Henderson, LLP, Montreal, Quebec, for the appellant;

John H. Sims, Q.C., Deputy Attorney General of Canada, Montreal, Quebec, for the respondent.

This appeal was heard at Montreal, Quebec, on February 6, 2008, before Gibson, J., of the Federal Court, who delivered the following decision on May 15, 2008.