Wenzel Downhole Tools Ltd. v. National-Oilwell Canada Ltd.

Wenzel Downhole Tools Ltd. v. National-Oilwell Canada Ltd.
Court (s) Database
Federal Court of Appeal Decisions
Date
2012-12-20
Neutral citation
2012 FCA 333
File numbers
A-477-11
Notes
Reported Decision
Decision Content
Federal Court of Appeal
Cour d'appel fédérale
Date: 20121220
Docket: A-477-11
Citation: 2012 FCA 333
CORAM: NADON J.A.
GAUTHIER J.A.
MAINVILLE J.A.
BETWEEN:
WENZEL DOWNHOLE TOOLS LTD.
AND WILLLIAM WENZEL
Appellants
and
NATIONAL-OILWELL CANADA LTD.,
NATIONAL OILWELL NOVA SCOTIA COMPANY,
NATIONAL OILWELL VARCO INC.,
DRECO ENERGY SERVICES LTD.,
VECTOR OIL TOOL LTD. AND FREDERICK W. PHEASEY
Respondents
Heard at Edmonton, Alberta, on October 10, 2012.
Judgment delivered at Ottawa, Ontario, on December 20, 2012.
REASONS FOR JUDGMENT BY: GAUTHIER J.A.
CONCURRED IN BY: NADON J.A.
CONCURRING REASONS BY: MAINVILLE J.A.
Federal Court of Appeal
Cour d'appel fédérale
Date: 20121220
Docket: A-477-11
Citation: 2012 FCA 333
CORAM: NADON J.A.
GAUTHIER J.A.
MAINVILLE J.A.
BETWEEN:
WENZEL DOWNHOLE TOOLS LTD.
AND WILLLIAM WENZEL
Appellants
and
NATIONAL-OILWELL CANADA LTD.,
NATIONAL OILWELL NOVA SCOTIA COMPANY,
NATIONAL OILWELL VARCO INC.,
DRECO ENERGY SERVICES LTD.,
VECTOR OIL TOOL LTD. AND FREDERICK W. PHEASEY
Respondents
REASONS FOR JUDGMENT
GAUTHIER J.A.
[1] Wenzel Downhole Tools Ltd. (Wenzel Ltd.) and William (Bill) Wenzel appeal from the decision of Snider J. (the Judge) (public reasons reported at 2011 FC 1323) dismissing their patent infringement action against the Respondents and allowing the counterclaim invalidating Canadian Patent No. 2,026,630 (the ‘630 Patent) on the basis of anticipation and obviousness.
[2] The Appellants contest the Judge’s finding that the rental and use of a tool incorporating what is referred to as the “3103 assembly” made the invention claimed in the ‘630 Patent available to the public. In the alternative, the appellants submit the judge misconstrued Claim 2 of the ‘630 Patent by failing to recognize the parallel shoulders in the bearing assembly amounted to an essential element. Consequently, the 3103 assembly lacking this element could not be held to anticipate the ‘630 Patent.
[3] Finally, the Appellants say that the Judge applied the wrong test in her obviousness analysis and therefore the matter should be sent back to her for re-determination.
[4] For the reasons that follow, I do not believe that the Judge made an error that would justify this Court’s intervention.
Factual Background
[5] Bill Wenzel, the inventor named in the ‘630 Patent, has four brothers. He worked for his older brother Kenneth (Ken) in a machine shop connected to the oil field industry in the 1970’s, before proceeding to work in the same field with his other brothers Doug and Bob.
[6] In 1984, the Wenzel brothers all worked together. At some point, Ken left the company to work with one of the Respondents, Dreco Energy Services Ltd. (Dreco). In their memorandum, the Appellants refer to a dispute between the brothers relating to the use of certain components in a downhole tool.
[7] On October 1, 1990, Bill Wenzel applied for a patent relating to a “method of increasing the off-bottom load capacity of a bearing assembly”. His application was published on April 2, 1992. The ‘630 Patent, which contains only 3 claims, was issued on May 17, 1994. It was assigned to Wenzel Ltd. in 1997 at a time when it operated under another corporate name.
[8] Ken Wenzel provided Dreco with services in the design and development of drilling tools through his consulting company. Once such design was a bi-directional thrust bearing assembly for use in a downhole drilling motor referred to as the 3103 assembly. This was a shorter than usual drilling motor better suited for tighter turns with a shorter radius (Appeal Book Volume 10 at page 3011).
[9] The Judge found that such tool was designed in the fall of 1989. This is no longer in dispute. It was used on a job in Dilley, Texas in early 1990 (the Dilley job), that is, prior to October 1, 1990, when Bill Wenzel filed his application. More particularly, the 3103 assemblies (three of them) were constructed by Griffith Oil Tools (Griffith), a company in which Ken Wenzel was a shareholder with Dreco until about 1980 when Dreco became the sole owner. These tools were rented through a Griffith rental office in Rosenberg, Texas, to Ensco Technology Company (Ensco), which used them on the Dilley job for Orynx Energy Co.
[10] By statement of claim filed July 29, 2005 (Federal Court File no. T-1327-05), the Appellants claimed that the Respondents were infringing their rights through the manufacture and sale or rental of bearing assemblies identical in all material respects to those protected by the ‘630 Patent.
[11] At that time, the Appellants knew that the Respondents would rely on the rental and use of the 3103 assembly to dispute the novelty of the invention claimed in the ‘630 Patent. This same defence was raised by Schlumberger, one of Vector’s clients in the United States, when the Appellants (or their predecessor in title) attempted to enforce the US equivalent to the `630 Patent, and sent Schlumberger a cease and desist letter in respect of similar downhole drilling motors.
[12] Except for some additional drawings, it appears that the documentary evidence in relation to the rental and use of the 3103 assembly tools by Ensco was limited to what had been obtained by Schlumberger’s lawyer in the fall of 1993.
The Federal Court Decision
[13] In her 88 page public reasons (the reasons) the Judge reviews in some detail the evidence put forward in the 9-day trial, including the testimony of various experts who testified about issues of construction, anticipation, obviousness and utility.
[14] After summarizing the law applicable to the construction of patent claims and defining the person of ordinary skills in the art (the POSITA) (the reasons at paragraphs 42-46), the Judge went on to construe the two independent claims at issue. She addressed in particular the four points that were in dispute at the time between the parties (the reasons at paragraph 54).
[15] I will only refer to her findings in respect of the third point, which is the only one contested in this appeal: the significance of the use of the words “generally aligned” in claim 1 as opposed to “generally parallel” in claim 2.
[16] In that respect, the Judge acknowledged that the word “parallel” ordinarily has a precise mathematical meaning while “aligned” does not. Referring to the evidence of one of the Respondents’ experts, Mr. Miller, she noted that the use of different words in the two claims was somewhat of a mystery given that parallelism without alignment would not be enough to form the containment chamber as envisioned in claim 2. In fact, with respect to the latter, all the experts agreed.
[17] According to Mr. Miller, whose evidence the Judge clearly accepted, when one considers the claims with the drawing and after sketching the claimed elements, a POSITA would come to the conclusion that “parallel” means the same thing as “aligned” in this context. The Judge adopted this interpretation, noting that both expressions were further qualified by the word “generally” and were meant to describe that the shoulders in the outer and inner tubular members are positioned in such a manner as to form a containment chamber.
[18] At paragraph 77 of her reasons, the Judge summarized the essential elements of the two claims as follows:
[77] In summary on the issue of claims construction, I conclude that Claim 1 (the method) and Claim 2 (the improvement) are directed to a downhole drilling motor that includes an outer tubular member, an inner tubular member and bearings between the inner tubular member and outer tubular member to facilitate relative rotation of the outer tubular member and inner tubular member while accommodating radial and axial loads. The inner tubular member is a cylinder with a hollow centre. The essential elements of the invention disclosed by Claims 1 and 2 are as follows:
1. first shoulder and a second shoulder in opposed spaced relation on an interior surface of the outer tubular member.
2. A first shoulder and a second shoulder in opposed spaced relation on an exterior surface of the inner tubular member.
3. The shoulders on the inner tubular member being generally aligned (or parallel) with the shoulders on the outer tubular member in such a manner as to define a containment chamber.
4. At least one thrust bearing in the containment chamber.
5. The thrust bearing having a first side race and a second side race such that:
(a) when the bearing assembly is placed in compression the first shoulder of the outer tubular member bears against the first side race and the second shoulder of the inner tubular member bears against the second side race; and
(b) when the bearing assembly is placed in tension the second shoulder of the outer tubular member bears against the second side race and the first shoulder of the inner tubular member bears against the first side race.
[19] Turning to anticipation, the Judge considered the relevant authorities from the Supreme Court of Canada (Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61(Sanofi); Lac Minerals Ltd. v. International Corona Resources Ltd., [1989] 2 S.C.R. 574, [1989] S.C.J. No. 83 (QL)) and from this Court (Baker Petrolite Corp.v. Canwell-Enviro Industries Ltd., 2002 FCA 158 (Baker Petrolite); Bauer Hockey Corp v. Easton Sports Canada Inc., 2011 FCA 83 (Bauer); Weatherford Canada Ltd. v. Corlac Inc., 2011 FCA 228 (Weatherford)).
[20] She expressly noted that the core issue in respect of the 3103 assembly was whether, on the facts before her, one could conclude that the claimed invention became available to the public. She was guided in this respect by the analysis of Rothstein J.A. (as he then was) in Baker Petrolite of the concept of “became available to the public” within the meaning of the section 28.2 of the Patent Act, R.S.C. 1985, c. P-4. In that case, the learned judge made a non-exhaustive list of relevant principles developed in Europe, including England, which, in his view, was relevant given that the same criteria (available to the public) was applicable in Europe since the adoption of the European Patent Convention 1973 (EPC), and in England since at least 1977 when a new Patents Act 1977 was adopted.
[21] The Judge found items 3 and 6 in the above-mentioned list particularly relevant. These two items, set out at paragraph 86 of her reasons, are as follows:
3. The prior sale or use of a chemical product will constitute enabling disclosure to the public if its composition can be discovered through analysis of the product ….
6. It is not necessary to demonstrate that a member of the public actually analyzed the product that was sold. In Lux, supra, Aldous J. stated at page 133:
Further it is settled law that there is no need to prove that anybody actually saw the disclosure provided the relevant disclosure was in public. Thus an anticipating description in a book will invalidate a patent if the book is on a shelf of a library open to the public, whether or not anybody read the book and whether or not it was situated in a dark and dusty corner of the library. If the book is available to the public, then the public have the right to make and use the information in the book without hindrance from a monopoly granted by the State. [Emphasis added]
Although the comments of Aldous J. use the example of prior publication to make the point, Lux was a prior use case and the principle derived from his example is equally applicable to prior use or sale as well as prior publication.
[Underlining and italics in original.]
[22] Relying on Aldous J. in Lux Traffic Controls Limited v. Pike Signals, [1993] R.P.C. 107 (Pat Ct) at 134 (Lux), the Judge further acknowledged at paragraph 87 of her reasons that to invalidate a patent, the description a POSITA could write after examining a machine must be a clear and unambiguous description of the invention claimed. It must also be sufficient to enable the POSITA to practice the invention.
[23] She further recognized at paragraph 89 of the reasons that the public has been defined as “a person who is free at law and in equity to use the information”. This would thus exclude information disclosed on a confidential basis or in circumstances giving rise to an implicit duty of confidentiality. She also properly instructed herself as to the meaning of “experimental use”.
[24] Applying such law to the facts before her, the Judge found that the only difference between the 3103 assembly and the claims of the ‘630 Patent is that the shoulders in the 3103 assembly were bevelled whereas the ‘630 Patent does not explicitly refer to bevelled shoulders, or to a specific design for such shoulders. Having considered the expert evidence before her, she was satisfied that the ‘630 Patent did not prohibit bevelled shoulders.
[25] Relying on the analysis of Dr. Wooley and Mr. Nelson, the Judge agreed that the 3103 assembly contains all the essential elements of the independent claims in the ‘630 Patent (the reasons at paragraph 100). She found that a person making a bearing assembly in accordance with the design of the 3103 bearing assembly would be making a bearing assembly that falls within the scope of claims 1 and 2 of the ‘630 Patent, if this had taken place after the issuance of the patent.
[26] In her analysis as to whether the rental of the drilling tools to Ensco constituted sufficient disclosure to anticipate the ‘630 Patent, the Judge acknowledged that the 3103 bearing assembly, like the other parts of the motor, was encased in a steel tube, and thus a visual inspection of the three units rented to Ensco would not have disclosed their inner workings (particularly of the 3103 assembly).
[27] However, she held that the tools rented to Ensco were available for more than a visual inspection (the reasons at paragraph 119). Although the Judge also acknowledged that, as a matter of fact, the tools were intact when they were returned to Griffith, she noted that the tools could be dismantled (the reasons at paragraph 121).
[28] Moreover, in her view, the fact that the tools were rented rather than sold did not detract from the fact that there were opportunities for examination of those tools (the reasons at paragraph 121). She then found that Ensco was free at law and in equity to use whatever information could be gathered during the rental. Further, the use of these tools for drilling at the Dilley site was not an experiment.
[29] In addition to the above, the Judge made an alternative finding that the drawing of the 3103 assembly could be considered as anticipation by publication. In that respect, she had noted earlier that the said drawing was available (although not necessarily reviewed) to Ensco when Ken Wenzel attended the Dilley site at the beginning of the rental (the reasons at paragraph 120). She also considered that this drawing and any additional information requested from Ken Wenzel by Ensco were available to Ensco had the need arisen, for example, if the drilling tool had broken down the hole and so-called “fishermen” had to be called to retrieve it (the reasons at paragraph 121).
[30] Before turning to the Judge’s finding in respect of obviousness, it is worth noting that the Respondents had argued that the claimed invention was also anticipated by a type of core barrel which was readily available and well-known at the time (As noted in the reasons at paragraph 79, a core barrel is a device used in coring, an operation often part of drilling in oil and gas wells). Remarking on the differences between those tools, the Judge concluded that the core barrel did not anticipate the subject matter defined in claims 1 and 2 of the ‘630 Patent, noting, however, that the impact of such art would be discussed at greater length in her analysis on obviousness (the reasons at paragraph 190).
[31] After setting out the four-step approach developed in Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd., [1985] R.P.C. 59 (CA) and Pozzoli v. BDMO SA, [2007] F.S.R. 37, [2007] E.W.C.A. Civ. 588, and adopted in Sanofi (the reasons at paragraph 150), the Judge identified the POSITA and the common general knowledge that POSITA would possess at the relevant time (the reasons at paragraphs 152-172). Of particular relevance is the fact that she accepted that the construction of core barrels described in the World Oil Composite Catalog was part of that common general knowledge, which included core barrels of the type relied upon by the Respondents in respect of anticipation, and discussed in the reasons under “obviousness”.
[32] The Judge found that such knowledge also included the so-called Geczy Patent for a “thrust and radial bearing assembly” in a downhole drilling tool. This was a patent in the same field as the ‘630 Patent (the reasons at paragraph 163).
[33] In the Judge’s view, the inventive steps in the claims of the ‘630 Patent (an aspect not disputed before this Court) was the inventor’s placement of one or more bi-directional thrust bearings into a single containment chamber with shoulders placed within the chamber such that the same bearings could handle both off-bottom and on-bottom loads during a drilling operation.
[34] She found that the common general knowledge included the use of bi-directional thrust bearing in such a single container chamber in the context of core barrels, and that the purpose for using a single barrel thrust bearing described in the Halvorsen Patent (a core barrel patent also part of the Canadian general knowledge) bore a striking resemblance to the purpose described in the ‘630 Patent.
[35] The Judge adopted the Respondents’ experts’ analysis of the essential elements of the ‘630 Patent found in the Halvorsen Patent (the reasons at paragraph 181). She noted, however, that there were two differences acknowledged by all experts in respect of core barrels. First, a core barrel is not part of a drilling motor. Second, the inner core barrel remains stationary as the coring bit digs deeper, while in a downhole drilling motor, the inner tubular member is not fixed. She also expressly rejected the additional differences presented by Mr. Thicke, the Appellant’s expert (the reasons at paragraphs 184-190), noting that some were not borne out by the evidence while others were minor or irrelevant.
[36] In respect of the Geczy Patent, the Judge acknowledged that the differences were such that she could not see how, without anything else, the POSITA could apply this teaching to come up with the ‘630 Patent. She noted, however, that this patent could have a role as part of a mosaic in making the ‘630 Patent obvious.
[37] At the fourth step of her analysis, the issue was whether the two differences between the ‘630 Patent and the core barrels discussed above would constitute steps which would have been obvious to the POSITA or if they required a degree of inventive skill (the reasons at paragraph 192).
[38] It is at this step of her analysis that the Judge allegedly erred at law when she reviewed, at paragraphs 193-195, Rothstein J.’s comments in Sanofi with respect to the so-called “obvious to try” approach, which may be part of the analysis at the fourth step of the Sanofi test. She noted that in such cases, a judge must be convinced on a balance of probabilities that it was more or less self-evident to try to obtain the invention and that it was more or less self-evident that what is being tried ought to work. She then listed the factors referred to in paragraphs 69-71 of Sanofi: number of identified predictable solutions; extent and nature of efforts required; nature of the experimentation involved, motivation to find a solution; and actual course of action followed by the inventors.
[39] Having said at paragraph 197 of her reasons that the “obvious to try” analysis was warranted in this case, the Judge referred to the expert evidence before her, with which she agreed, to conclude that it would be obvious to apply the elements of the bearing assembly in a core barrel to one in a downhole drilling motor.
[40] As an alternative finding, she also held that even if one assumed that some residual inventiveness would be required to transfer the teaching from a core barrel to a drilling motor, the POSITA would know that one could use a bi-directional bearing as part of a downhole drilling tool from the Geczy Patent. This, in her view, would alleviate any doubt that the teaching from the core barrel could be applied to a downhole drilling tool.
[41] On a final note, the Judge observed that the invention came quickly and apparently with little effort to the inventor. Even accounting for the fact that Bill Wenzel was more than the POSITA, she found that the short time frame involved here was quite remarkable. She concluded at paragraph 205:
In sum, in light of the general knowledge from the combination of the core barrel and the Geczy Patent, it is more or less self-evident that the skilled person would have come to the '630 bearing assembly for use in a drilling motor, with the essential elements of the '630 Patent as set out in paragraph 77 of these Reasons.
[42] In light of her findings in respect of anticipation and obviousness, the Judge held that it was not necessary to discuss the other issues raised in this case, such as lack of utility, and she declared the ‘630 Patent invalid.
Analysis
Standard of Review
[43] This is an appeal from a decision of a court of first instance. Questions of law are to be reviewed on the correctness standard while questions of fact and mixed fact and law (apart from extricable errors of law) are to be reviewed on the standard of reasonableness (Housen v. Nikolaisen, 2002 SCC 33, [2002] 2 S.C.R. 235, at paragraphs 8, 10, and 36 (Housen)).
[44] The construction of the claims of a patent is a question of law. However, the weight to be given to the expert evidence as to how particular words would be understood by the POSITA is a question where the trier of facts is entitled to deference. Anticipation and obviousness are usually considered to be questions of fact or mixed fact and law. The Appellants argue that in respect of obviousness, the Judge here made an extricable error of law as she applied the wrong test.
Claims Construction
[45] There was a conflict between the evidence of Mr. Thicke, the Appellants’ expert, and that of the other experts with regard to how the POSITA would construe claim 2.
[46] First, Mr. Thicke opined that the word “improvement” used in the preamble of claim 2 would be understood as referring to the purpose or utility of the invention which is an increase in the off-bottom load capacity. Thus, the Appellants say that the Judge erred at law by failing to include this element in the list of essential elements of claim 2.
[47] Second, Mr. Thicke testified that “generally parallel” would be understood as pure and simple parallelism, meaning two lines that do not intersect. His view on this point was unshakeable. Thus, according to the Appellants, this is the view the Judge should have adopted, for it is the only one that gives true meaning to the words used. Two different words must be assumed to mean different things.
[48] It is well accepted that a single invention may be claimed in different ways. Here, claim 1 refers to a method, while claim 2 is a product claim (the reasons at paragraphs 50 and 51).
[49] There are various ways of drafting a product claim. The so-called “Jepson claim” (or “German claim”) is one. As noted in “The Art of Claiming and Reading a Claim”, by William L. Hayhurst, Q.C. at page 210 (in Gordon Henderson, Patent Law of Canada (Scarborough, Ont: Carswell, 1994) at pages 177-220), this Jepson form is described as “one which attempts to recite, at the beginning of a claim, elements that are shared with the prior art, and then to recite those features which the applicant has contributed to the art”.
[50] I have no doubt that the use of the words “improvement” and “the improvement comprising:” in claim 2 were meant to focus on the novel elements of the product claimed as described in paragraphs (a) to (c) of the claim.
[51] The Judge was entitled to give little weight to Mr. Thicke’s evidence and, in my view, she correctly found that the alleged utility (increase in the off-bottom load capacity) in the patent was not an essential element of claim 2.
[52] With respect to the second argument, being that “generally parallel” means pure parallelism, it is clear that the Judge was alert and alive to the conflict in the expert evidence in relation to this. As mentioned, she expressly recognized the ordinary meaning of the word “parallel”, but discarded it on the basis of the evidence provided by the other experts who testified before her and who considered its meaning to the POSITA in the particular context of this patent. She was entitled to do so.
[53] As mentioned by the Respondents, it is interesting that the Appellants recognized in their final argument before the Judge that it would make little sense for claim 2 to be construed without any reference to the alignment of the shoulders, and suggested that the Court should read both claim 1 and 2 as including the words “generally aligned” and “generally parallel”, thereby adding words to each claim.
[54] Having carefully considered the wording of the claims in the context of the disclosure as a whole and the expert evidence accepted by the Judge, there is no reason to interfere with the Judge’s interpretation set out at paragraph 17, above.
Anticipation
[55] The Appellants argue that the Judge erred in her application of the law to the facts of the case more particularly by: (i) equating the 3103 assembly with a book on the shelf in the public library or an engine under the hood of a car because the Judge’s conclusion did not take into consideration the accepted evidence that the claimed invention was encased in metal and could not have been and was not observed at the Dilley job; and (ii) failing to consider that there was no evidence that a POSITA was at the site or that such person would have the skills to open the drilling tool to examine the 3103 assembly and discern the invention.
[56] In the Appellants’ view, given that the rig hands were not POSITAS, the Judge should have come to the same conclusion as the trial judge in Folding Attic Stairs Limited v. The Loft Stairs Company Limited, 2009 EWHC 1221 (PAT) who appears to have accepted the plaintiff’s argument (summarised at paragraph 84 of the decision) that the test unit in that case was not available to the public because it was only shown during a tour of private premises to a Minister and a photographer who were not POSITAS and who had not manifested any interest in the testing unit.
[57] Finally, according to the Appellants, the Judge’s approach, which considered the serendipitous broken tools (i.e., what would have happened if a rented drilling motor had broken during the drilling operations and a “fisherman” needed access to the drawings and those present at the site would be able to see the inner parts of the tool), is not supported by any authority.
[58] Essentially, the Appellants argued that, had the Judge not made the above-mentioned errors, she had to come to the conclusion that the Respondents had failed to establish that the invention became available to the public, considering the facts and the present state of the law. I cannot agree with this proposition.
[59] As mentioned, the Appellants no longer dispute the Judge’s findings that Ensco was free at law and in equity to use whatever information was available from the product it rented. Thus, if there was sufficient disclosure, it was a public one.
[60] Moreover, the Appellants do not appear to take issue with the fact that if a POSITA could observe the inner workings of the drilling motor, including the 3013 assembly, the POSITA could then write down a complete description of the invention (the whole subject to their arguments on proper construction discussed earlier).
[61] There was some suggestion that this, in turn, would not amount to an enabling disclosure. In that respect, the Appellants submitted that the Judge failed to take into account the evidence of Ken Wenzel that Dreco and Griffith did not manufacture more than three of these units because they were difficult to manufacture or to service properly (due to the bevelled shoulders). However, the Judge is presumed to have considered all of the evidence before her (Housen at paragraph 46).
[62] Moreover, I am not persuaded that the Judge made a palpable and overriding error in her assessment of the evidence in that respect in light of a number of factors, namely: a skilled person is entitled to trial and error in relation to enablement; the Judge expressly stated that to conclude that there was anticipation she needed an enabling disclosure; and she was satisfied on the evidence that the enablement branch of the test for anticipation had been met (reasons at paragraph 144). She clearly preferred to rely on the fact that Griffith was able to manufacture drilling tools containing the 3103 assembly that worked well at the Dilley job. Her finding that this branch of the anticipation test had been met was open to her.
[63] That being said, the real focus in this appeal was on whether an accurate and full description of the invention was available in this case, applying the undisputed principles set out in the reasons at paragraphs 80-90. As noted in the Appellants’ Outline of oral argument on Anticipation, did the judge misapply the law when one considers her findings of facts with respect to what actually occurred? For the Appellants , the Judge erred because “disclosure, not hypothetical disclosure of the invention is a necessary precursor to a determination of anticipation”
[64] In Lux, Aldous J. made it clear that he did not accept the argument before him that the task of the Court was to ascertain “what actually happened during the use of the prototype [the product embodying the claimed invention in his case] and from that conclude what a skilled man would assimilate” (Lux at page 134).
[65] In this case, I believe that the Appellants exhibit a similar misunderstanding.
[66] The test for anticipation by disclosure through a product (and for that matter, for anticipation by publication) is an objective one. Whether or not a real person fitting the description of the POSITA was actually present at the drilling site is irrelevant, as is what actually happened at the site during the rental period.
[67] What is relevant in the case of a product like the drilling tools at issue “is that which the skilled man would, if asked to describe its construction and operation, write down having carried out an appropriate test or examination.[my emphasis]” (Lux at page 134 in the passage actually cited by the Judge in her reasons at paragraph 87).
[68] My understanding, based on the relevant jurisprudence, is that becoming available means that, the public, as defined earlier, had an opportunity to access the information that is the invention. As previously mentioned, it does not require that one actually took advantage of this opportunity. Once the opportunity is established as a fact (here, for example, that: (i) Dreco had unrestricted access to the drilling tools, and any information derived from such access was not protected by confidentiality; and (ii) a method to open such tools and examine their internal structures was known), the Court applies the legal test for anticipation developed in Sanofi (full disclosure of all the essential elements of the invention and enablement) to the information that the fictional POSITA would derive from the fictional examination.
[69] The Appellants disagree with the analogies used by the Judge, being: (i) a book in a public library (the reasons at paragraph 118); and (ii) the “lifting of the hood” (the reasons at paragraph 123). They say that the drilling tools in this case are not analogous to a book in a library, nor was the opening of the tools like the lifting of the hood of a car. Again, I cannot agree. Aldous J. in Lux, later quoted by Rothstein J.A. in Baker Petrolite, referred to the book in a public library even though he was looking at a case of prior use of a product, not anticipation by publication. The book in the public library could be in Japanese, even though the library is located in a remote village where no one speaks Japanese. This would still be a disclosure that would make whatever information it contained available, even though accessing the information that is available requires the use of a dictionary or even an interpreter that would not be available in that village. As for the lifting of the hood, it is true that opening the sealed joints to examine the internal structure may be a bit more tedious than lifting a hood but that does not detract from the validity of the analogy. As mentioned, this is not relevant; being available does not require that access to the information be easy, simply that it be possible using known methods and instruments.
[70] Again, I reiterate that it is my understanding of the law as it stands now that even if the library listed in a ledger all those who entered the library and recorded each book they reviewed, and a defendant would accordingly be able to prove that nobody had actually accessed the book in the library, my conclusion would be the same. The presence of the book in the library is sufficient to make the information available, and thus to meet the requirements for anticipation within the meaning of section 28.2.
[71] Although this may appear harsh, it is less so than the test that was applied in Canada prior to the adoption of paragraph 28.2(1)(a), and in England prior to the adoption of their Patents Act 1977 implementing the EPC. There is no evidence that, by adopting this new paragraph, the Canadian legislator meant to achieve any purpose other than harmonization with the test applied in Europe. I note that a similar amendment will come into force in the United States in 2013 (Leahy-Smith America Invents Act, 35 U.S.C. at §102 (coming into effect on March 16, 2013)).
[72] As mentioned in Baker Petrolite, paragraph 28.2(1)(a) now excludes from anticipatory uses products the examination of which would not give an accurate and complete description of the invention even if the most complex of the known analytical methods were used by the POSITA (see paragraph 42, particularly subparagraphs 1, 4, and 7, in Baker Petrolite). Typical examples would be where the composition or internal structure of a compound or product would not give any information as to the method used to make it (claimed invention) or as to the starting material used (essential element of a claimed invention). One can also think of the use of a known compound or product for a new technical effect that may not be discernable through examination of the product itself as it must be used in combination with another the product (where the claim is for a new use of the combination).
[73] It is also worth noting that, in its opinion dated December 18, 1992, the European Patent Office Enlarged Board of Appeal made it very clear that the composition or internal structure of a product (and the same principle applies to all products) is part of the state of the art “when the product can be analysed and reproduced by a skilled person irrespective of whether or not particular reasons can be identified for analysing the composition [my emphasis]” (G 1/92 Availability to the Public [1993] O.J. EPO 277, [1993] E.P.O.R. 241. Note that this opinion was referred to by the House of Lords in Synthon BV v. SmithKline Beecham plc, [2005] UKHL 59 at paragraph 29). In the Board’s view, there is simply no legislative requirement for a motive; it is not necessary that the POSITA have a reason for looking for the product composition. Like Rothstein J.A. in Baker Petrolite, I find this to also be true in Canada. This is perfectly in line with the fact that the court does not have consider whether the notional POSITA would be interested by a relevant prior art publication in respect of anticipation by publication. The hypothetical POSITA is presumed to have properly read the document.
[74] Applying the principles set out above to the present matter, the Judge had to determine whether, in this case, there was an opportunity to access the relevant information during the rental.
[75] It is on this question that the Judge distinguished the case before her from the situation in Bauer. In the latter case, the products were not rented or used by a third party, they were simply shown in an arena open to the public during a practice, but in a manner that prevented anybody not bound by confidentiality to do anything more than a visual inspection from afar. It was found as a fact in that case that such inspection would not have enabled the POSITA to write down a full description of the invention. However, on the facts before her, the Judge concluded that the rented drilling tools were available for more than visual inspection (the reasons at paragraph 119) and that these tools could be dismantled (the reasons at paragraph 121). She expressly held that the fact that the tools were rented rather than sold outright did not detract from the conclusion that there were opportunities for their examination (the reasons at paragraph 121).
[76] The Judge does not discuss in her reasons the evidence she considered to arrive at the conclusion that the 3103 assembly could be dismantled, and what this would involve. She had several drawings of the relevant drilling motors and their parts, as well as drawings of other similar motors. She had a picture and an actual sample of the Plaintiffs’ own drilling motor similar to the one in the 3103 assembly, except for the clear section of the outer casing over the bearing assembly (used for exhibition only). Ken Wenzel indicated that the drilling motors rented to Ensco, like the other drilling motors at issue in this case, were built to be serviced (or maintained) (Appeal Book Volume 10 at pages 3036, 3082, 3100). This implies that access to their inner structure was possible. Ken Wenzel also said during his cross-examination that to take the motor apart, one needed something to hold it while the joints were unsealed with the appropriate tool(s). Such tool(s) would have been available at the Rosenberg shop that Ensco shared with Griffith (Appeal Book Volume 10 at pages 3024, 3099-3100).
[77] The fact that such appropriate tool(s) may not have been usually available at the drilling site per se or that opening of the joints is not usually done at a drilling site is irrelevant. There is no evidence that Ensco was prohibited from bringing appropriate tool(s) to the drilling site or from bringing one of the drilling motors to the machine shop.
[78] In the absence of express contractual provisions to the contrary, at common law, a lessee would be entitled to use the rented equipment as he wishes so long as he returns it in good order and condition (H.G. Beale et al., eds., Chitty on Contracts, 30th ed. (London, England: Thomson Reuters, 2008) at page 238, section 33-077). There was no evidence that the opening of the drilling tools would in any way damage them. In fact, given that such tools are made to be serviced, one could assume that the opening and closing of the joints of the steel casing protecting the motor and bearing assembly in order to examine the inner workings was something that Ensco could do. As mentioned, whether they were actually interested in doing so is irrelevant.
[79] Ken Wenzel was clear that no information whatsoever about these rented tools was confidential. The Judge accepted this evidence. From that, it also becomes clear that the sealing of the joints on