SNF Inc. v. Ciba Specialty Chemicals Water Treatments Ltd., [2015] F.T.R. TBEd. AU.047

• Judge: Phelan, J.
• Court: Federal Court (Canada)
• Case Date: August 24, 2015
• Jurisdiction: Canada (Federal)
• Citations: [2015] F.T.R. TBEd. AU.047;2015 FC 997

SNF Inc. v. Ciba Specialty Chemicals, [2015] F.T.R. TBEd. AU.047

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Currently being edited for F.T.R. - judgment temporarily in rough form.

Temp. Cite: [2015] F.T.R. TBEd. AU.047

SNF Inc. (plaintiff) v. Ciba Specialty Chemicals Water Treatments Limited (defendant)

(T-1749-11; 2015 FC 997)

Indexed As: SNF Inc. v. Ciba Specialty Chemicals Water Treatments Ltd.

Federal Court

Phelan, J.

August 24, 2015.

Summary:

The plaintiff brought an action for a declaration that Canadian Patent CA 2 515 581 (the 581 Patent), a process of "rigidifying" a material using polymers, was invalid.

The Federal Court concluded that the 581 Patent and all claims thereof were invalid, void and of no force and effect.

Patents of Invention - Topic 1032

The specification and claims - Construction of a patent - Particular patents - The plaintiff sought a declaration that Canadian Patent CA 2 515 581, a process of "rigidifying" a material using polymers, was invalid - The evidence was focused on Claim 1 and its dependent Claims 2 to 31 - If Claim 1 was invalid, then its dependent claims were likewise invalid - The essential point in dispute was the meaning of the term "rigidification" or "to rigidify" - The Federal Court stated that "To the extent that the Defendant attempts to make the case that rigidification is novel and different from settling and sedimentation, they have not made out that case. The Patent itself does not teach such distinction - it does not describe or rely on any scientific background to establish such a distinction. The Patent minimally mentions settling/sedimentation and does not directly compare it with rigidification" - The court further stated that "A major difficulty with the word 'rigidify' is that not only is it imprecise in itself, it has no parameter. It is a qualitative term generally referring to the strength and characteristics of tailing materials deposited in some form of facility. ... In view of the sometime equivocal evidence and lack of quantification, the Court finds that rigidification is: increasing the yield stress of a mineral deposit rapidly whereby the flow of the deposit is minimized and the weight of subsequent layers of like deposits is supported" - See paragraphs 128 to 163.

Patents of Invention - Topic 1128.1

The specification and claims - The description - Sufficiency of description of invention - The plaintiff sought a declaration that Canadian Patent CA 2 515 581 (the 581 Patent), a process of "rigidifying" a material using polymers, was invalid - The plaintiff argued that, assuming that the 581 Patent was not obvious (to try), then the Patent failed to teach the Skilled Person how to carry out the process to achieve rigidification - The Federal Court stated that "The issue of sufficiency is closely tied to that of claim construction. The definition of rigidification, as found by the Court, leads, along with other evidence, to the conclusion that the Patent describes a process that was obvious to try given the Prior Art. Thus, based on legal requirements, the 581 Patent's disclosure was sufficient. However, as noted in the discussion on claim construction, if the Defendant's interpretation was adopted as described by Dr Farrow, rigidification occurs when one obtains the result one desires. Therefore, not only would the specification be insufficient since one does not know how to achieve that goal, but that approach is to 'game the system' criticized by the Supreme Court of Canada in Teva at para 80. 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" - See paragraphs 203 to 209.

Patents of Invention - Topic 1129

The specification and claims - The description - Scope of invention - [See Patents of Invention - Topic 1130 ].

Patents of Invention - Topic 1130

The specification and claims - The description - Claims for more than what was invented - The plaintiff sought a declaration that Canadian Patent CA 2 515 581, a process of "rigidifying" a material using polymers, was invalid - The plaintiff contended that the subject matter of the Patent was broader than what the inventors invented because it included within its claims, treatment of oil sands tailings - The Federal Court concluded that "the claims are not broader than the invention disclosed in the specifications. The Patent states that the invention has broad application and it was Scammell's intention that it be useful in several different industries. While Scammell [one of the two individuals listed as inventors on the patent] did not necessarily focus (or even consider) the tar sands - which arguably means the claims could be broader than the invention made - there is no requirement to claim a particular or all benefits of the invention. Given the scope of the invention I cannot also conclude that the claims are broader than the invention made" - See paragraphs 210 to 214.

Patents of Invention - Topic 1507

Grounds of invalidity - General - Untrue material allegations in petition, specification or drawings - The plaintiff sought a declaration that Canadian Patent CA 2 515 581 (the 581 Patent), a process of "rigidifying" a material using polymers, was invalid - The plaintiff submitted, inter alia, that the 581 Patent contained false and misleading statements - The Federal Court stated that "Ciba [the defendant] engaged in activities designed to make the 581 Patent look new. It deliberately made these statements which it knew (or ought to have known) would mislead. Ciba is saved only by the issue of materiality. A statement is material if it affects how the public makes use of the invention taught by the 581 Patent ... There is no evidence that the false and misleading statements were material in that legal sense. Ciba's conduct may be reprehensible but it was not material. The Patent would not be declared invalid on that ground alone" - See paragraphs 215 to 230.

Patents of Invention - Topic 1589

Grounds of invalidity - Lack of "inventive ingenuity" (obviousness) - Particular patents - The plaintiff sought a declaration that Canadian Patent CA 2 515 581 (the 581 Patent), a process of "rigidifying" a material using polymers, was invalid - The Federal Court concluded that the invention was "obvious to try" and the 581 Patent was invalid on that basis - The court stated that "The Skilled Person would have gone directly and without difficulty to the step of using a minimum dosage of polymer to achieve the level of rigidification of the slurry deposit for the job. It is routine for the Skilled Person to decide, inter alia: the nature of the polymer; its form and dosage; and, the point of addition to the slurry line. Thus, applying an 'effective' amount is obvious, as the Skilled Person would continue to apply the necessary polymer to achieve the necessary outcome and discontinue polymer application once overdosing occurred. I find an effective amount of solution addition of a water soluble polymer would have been obvious to try in order to achieve a 'rigidified' deposit and therefore, the 581 Patent is invalid for Obviousness. ... There are a finite number of identified predictable forms of polymer (polymer in solution, powder or emulsion) known to the Skilled Person to treat a mineral slurry. ... the Skilled Person would experiment with the amount of polymer that could be added before reaching an ineffective level. In the course of this experimentation, trials are routine and necessary due to the factors affecting deposits - mineral composition, size, type of polymer, flow rate, thickener use and deposit space. Finally, there was a good reason to pursue the solution over the particle addition as it would lead to commercial success and client retention" - See paragraphs 181 to 201.

Patents of Invention - Topic 1779

Grounds of invalidity - Insufficiency - Particular cases - [See Patents of Invention - Topic 1128.1 ].

Cases Noticed:

R. v. White, [1947] S.C.R. 268, refd to. [para. 62].

Johnson & Johnson Inc. et al. v. Boston Scientific Ltd. (2008), 327 F.T.R. 49; 2008 FC 552, refd to. [para. 64].

Xerox of Canada Ltd. et al v. IBM Canada Ltd. (1977), 33 C.P.R.(2d) 24 (F.C.T.D.), refd to. [para. 64].

Apotex Inc. and Novopharm Ltd. v. Wellcome Foundation Ltd., [2002] 4 S.C.R. 153; 296 N.R. 130; 2002 SCC 77, refd to. [para. 94].

Free World Trust v. Electro Santé Inc. et al., [2000] 2 S.C.R. 1024; 263 N.R. 150; 2000 SCC 66, refd to. [para. 94].

Whirlpool Corp. et al. v. Camco Inc. et al., [2000] 2 S.C.R. 1067; 263 N.R. 88; 2000 SCC 67, refd to. [para. 97].

Pfizer Canada Inc. et al. v. Canada (Minister of Health) et al. (2005), 285 F.T.R. 1; 2005 FC 1725, refd to. [para. 98].

Eli Lilly & Co. et al. v. Apotex Inc. (2009), 351 F.T.R. 1; 2009 FC 991, affd. (2010), 409 N.R. 173; 2010 FCA 240, leave to appeal denied (2011), 422 N.R. 394 (S.C.C.), refd to. [para. 104].

Janssen-Ortho Inc. et al. v. Novopharm Ltd. (2007), 366 N.R. 290; 2007 FCA 217, affing. (2006), 301 F.T.R. 166; 2006 FC 1234, refd to. [para. 105].

McKay v. Weatherford Canada Ltd. (2007), 320 F.T.R. 72; 2007 FC 1233, affd. (2008), 383 N.R. 371; 2008 FCA 369, refd to. [para. 129].

Apotex Inc. v. Sanofi-Aventis (2013), 447 N.R. 313; 114 C.P.R.(4th) 1; 2013 FCA 186, refd to. [para. 129].

Monsanto Canada Inc. et al. v. Schmeiser et al., [2004] 1 S.C.R. 902; 320 N.R. 201; 2004 SCC 34, refd to. [para. 131].

Janssen-Ortho Inc. et al. v. Canada (Minister of Health) et al. (2010), 361 F.T.R. 268; 2010 FC 42, refd to. [para. 131].

Pfizer Canada Inc. et al. v. Mylan Pharmaceuticals ULC et al. (2012), 430 N.R. 326; 2012 FCA 103, refd to. [para. 131].

Pfizer Canada Inc. et al. v. Apotex Inc. et al. (2014), 465 N.R. 306; 2014 FCA 250, refd to. [para. 131].

Novartis Pharmaceuticals Canada Inc. v. Teva Canada Ltd. et al., [2015] F.T.R. TBEd. JL.008; 2015 FC 770, refd to. [para. 132].

Sanofi-Synthelabo Canada Inc. et al. v. Apotex Inc. et al., [2008] 3 S.C.R. 265; 381 N.R. 125; 2008 SCC 61, refd to. [para. 165].

Abbott Laboratories et al. v. Canada (Minister of Health) et al. (2008), 337 F.T.R. 17; 2008 FC 1359, affd. (2009), 387 N.R. 347; 2009 FCA 94, refd to. [para. 165].

Novopharm Ltd. v. Eli Lilly & Co. (2010), 376 F.T.R. 227; 2010 FC 915, affd. (2011), 420 N.R. 188; 2011 FCA 220, leave to appeal refused (2011), 430 N.R. 397; 2011 CarswellNat 3819 (S.C.C.), refd to. [para. 176].

Eli Lilly Canada Inc. v. Mylan Pharmaceuticals ULC et al., [2015] F.T.R. TBEd. FE.039; 2015 FC 125, refd to. [para. 182].

Pfizer Canada Inc. et al. v. Novopharm Ltd. et al., [2012] 3 S.C.R. 625; 436 N.R. 299; 2012 SCC 60, refd to. [para. 203].

Teva Canada Ltd. v. Pfizer Canada Inc. - see Pfizer Canada Inc. et al. v. Novopharm Ltd. et al.

Lovell Manufacturing Co. v. Beatty Brothers Ltd., (1962) 41 C.P.R. 18 (Ex. Ct.), refd to. [para. 210].

Leithiser and Timberland Ellicott Ltd. v. Pengo Hydra-Pull of Canada Ltd., [1974] 2 F.C. 954; 6 N.R. 301; 17 C.P.R.(2d) 110 (F.C.A.), refd to. [para. 210].

Statutes Noticed:

Patent Act, R.S.C. 1985, c. P-4, sect. 27.3 [para. 204]; sect. 28.3 [para. 181]; sect. 53(1) [para. 215].

Counsel:

Ron Dimock, Michael Crinson, Cristina Mihalceanu and Michal Kasprowicz, for the plaintiff;

Scott Jolliffe, James Buchan, Kevin Sartorio, Laurent Massam, David Potter and Charlotte McDonald, for the defendant.

Solicitors of Record:

Dimock Stratton, LLP, Toronto, Ontario, for the plaintiff;

Gowling Lafleur Henderson, LLP, Toronto, Ontario, for the defendant.

This action was heard on September 29 and 30, October 1, 2, 7, 9, 14-17, 20-23, and 27 and November 5 and 6, 2014, at Toronto, Ontario, and Manchester and London, United Kingdom, before Phelan, J., of the Federal Court, who delivered the following judgment on August 24, 2015.