Date: 20080515
Docket: T-262-06
Citation: 2008 FC 608
BETWEEN:
GENENCOR
INTERNATIONAL, INC
Appellant
and
COMMISSIONER OF PATENTS
and ATTORNEY GENERAL OF CANADA
Respondents
REASONS FOR
JUDGMENT
GIBSON J.
INTRODUCTION
[1]
On
the 15th of April, 2004, Novozymes A/S (“Novozymes”) requested
re-examination of Canadian Patent No. 2,093,422 (the “Genencor Patent”)
pursuant to subsection 48.1(1) of the Patent Act,
(the “Act”).
The re-examination process described in sections 48.1 to 48.4 of the Act
followed. All claims of the Genencor Patent were cancelled with the result
that the Genencor Patent was deemed never to have been issued. An
appeal to this Court by the patentee followed pursuant to section 48.5 of the Act.
The appeal was heard at Montreal on the 6th
of February, 2008. The Commissioner of Patents filed only the affidavit of
Murray Wilson,
interim Chairperson of the Patent Appeal Board, on the appeal and took no part
in the hearing. At the request of the Court, counsel for Genencor International,
Inc. (“Genencor”) and the Attorney General of Canada (the “Attorney General”)
filed further written submissions on the 6th of March, 2008, on the
issue of standard of review.
[2]
These
are the reasons of the Court for its decision to dismiss the appeal.
THE BACKGROUND
1) The legal framework
[3]
Sections
48.1 to 48.5 of the Act read as follows:
48.1 (1) Any person may request a re-examination of any
claim of a patent by filing with the Commissioner prior art, consisting of
patents, applications for patents open to public inspection and printed
publications, and by paying a prescribed fee.
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48.1 (1) Chacun peut demander le réexamen de
toute revendication d’un brevet sur dépôt, auprès du commissaire, d’un
dossier d’antériorité constitué de brevets, de demandes de brevet accessibles
au public et d’imprimés et sur paiement des taxes réglementaires.
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(2) A request for re-examination under subsection
(1) shall set forth the pertinency of the prior art and the manner of
applying the prior art to the claim for which re-examination is requested.
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(2) La demande
énonce la pertinence du dossier et sa correspondance avec les revendications
du brevet.
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(3) Forthwith after receipt of a request for
re-examination under subsection (1), the Commissioner shall send a copy of
the request to the patentee of the patent in respect of which the request is
made, unless the patentee is the person who made the request.
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(3) Sur
réception de la demande, le commissaire en expédie un double au titulaire du
brevet attaqué, sauf si celui-ci est également le demandeur.
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48.2 (1) Forthwith after receipt of a request for
re-examination under subsection 48.1(1), the Commissioner shall establish a
re-examination board consisting of not fewer than three persons, at least two
of whom shall be employees of the Patent Office, to which the request shall
be referred for determination.
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48.2 (1) Sur dépôt de la demande, le
commissaire constitue un conseil de réexamen formé d’au moins trois
conseillers, dont deux au moins sont rattachés au Bureau des brevets, qui se
saisissent de la demande.
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(2) A re-examination board shall, within three
months following its establishment, determine whether a substantial new
question of patentability affecting any claim of the patent concerned is
raised by the request for re-examination.
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(2) Dans les
trois mois suivant sa constitution, le conseil décide si la demande soulève
un nouveau point de fond vis-à-vis de la brevetabilité des revendications du
brevet en cause.
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(3) Where a re-examination board has determined
that a request for re-examination does not raise a substantial new question
affecting the patentability of a claim of the patent concerned, the board
shall so notify the person who filed the request and the decision of the
board is final for all purposes and is not subject to appeal or to review by
any court.
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(3) Le conseil
avise le demandeur de toute décision négative, celle-ci étant finale et ne
pouvant faire l’objet d’un appel ou d’une révision judiciaire.
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(4) Where a re-examination board has determined
that a request for re-examination raises a substantial new question affecting
the patentability of a claim of the patent concerned, the board shall notify
the patentee of the determination and the reasons therefor.
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(4) En cas de
décision positive, le conseil expédie un avis motivé de la décision au
titulaire du brevet.
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(5) A patentee who receives notice under
subsection (4) may, within three months of the date of the notice, submit to
the re-examination board a reply to the notice setting out submissions on the
question of the patentability of the claim of the patent in respect of which
the notice was given.
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(5) Dans les
trois mois suivant la date de l’avis, le titulaire en cause peut expédier au
conseil une réponse exposant ses observations sur la brevetabilité des
revendications du brevet visé par l’avis.
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48.3 (1) On receipt of a reply under subsection 48.2(5)
or in the absence of any reply within three months after notice is given
under subsection 48.2(4), a re-examination board shall forthwith cause a
re-examination to be made of the claim of the patent in respect of which the
request for re-examination was submitted.
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48.3 (1) Sur réception de la réponse ou au
plus tard trois mois après l’avis mentionné au paragraphe 48.2(4), le conseil
se saisit du réexamen des revendications du brevet en cause.
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(2) In any re-examination proceeding under
subsection (1), the patentee may propose any amendment to the patent or any
new claims in relation thereto but no proposed amendment or new claim
enlarging the scope of a claim of the patent shall be permitted.
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(2) Le
titulaire peut proposer des modifications au brevet ou toute nouvelle
revendication à cet égard qui n’ont pas pour effet d’élargir la portée des
revendications du brevet original.
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(3) A re-examination proceeding in respect of a
claim of a patent shall be completed within twelve months of the commencement
of the proceedings under subsection (1).
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(3) Le
réexamen doit être terminé dans les douze mois suivant le début de la
procédure.
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48.4 (1) On conclusion of a re-examination proceeding in
respect of a claim of a patent, the re-examination board shall issue a
certificate
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48.4 (1) À l’issue du réexamen, le conseil
délivre un constat portant rejet ou confirmation des revendications du brevet
attaqué ou, le cas échéant, versant au brevet toute modification ou nouvelle
revendication jugée brevetable.
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(a)
cancelling any claim of the patent determined to be unpatentable;
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(b)
confirming any claim of the patent determined to be patentable; or
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(c)
incorporating in the patent any proposed amended or new claim determined to
be patentable.
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(2) A certificate issued in respect of a patent
under subsection (1) shall be attached to the patent and made part thereof by
reference, and a copy of the certificate shall be sent by registered mail to
the patentee.
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(2) Le constat est annexé au brevet, dont il fait
partie intégrante. Un double en est expédié, par courrier recommandé, au
titulaire du brevet.
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(3) For the purposes of this Act, where a
certificate issued in respect of a patent under subsection (1)
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(3) Pour
l’application de la présente loi, lorsqu’un constat :
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(a)
cancels any claim but not all claims of the patent, the patent shall be
deemed to have been issued, from the date of grant, in the corrected form;
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a) rejette
une revendication du brevet sans en rejeter la totalité, celui-ci est réputé,
à compter de la date de sa délivrance, délivré en la forme modifiée;
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(b)
cancels all claims of the patent, the patent shall be deemed never to have
been issued; or
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b) rejette la
totalité de ces revendications, le brevet est réputé n’avoir jamais été
délivré;
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(c)
amends any claim of the patent or incorporates a new claim in the patent, the
amended claim or new claim shall be effective, from the date of the
certificate, for the unexpired term of the patent.
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c) modifie
une telle revendication ou en inclut une nouvelle, l’une ou l’autre prend
effet à compter de la date du constat jusqu’à l’expiration de la durée du
brevet.
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(4) Subsection (3) does not apply until the time
for taking an appeal has expired under subsection 48.5(2) and, if an appeal
is taken, subsection (3) applies only to the extent provided in the final
judgment on the appeal.
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(4) Le
paragraphe (3) ne s’applique qu’à compter de l’expiration du délai visé au
paragraphe 48.5(2). S’il y a appel, il ne s’applique que dans la mesure
prévue par le jugement définitif rendu en l’espèce.
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48.5 (1) Any decision of a re-examination board set out
in a certificate issued under subsection 48.4(1) is subject to appeal by the
patentee to the Federal Court.
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48.5 (1) Le titulaire du brevet peut saisir la
Cour fédérale d’un appel portant sur le constat de décision visé au
paragraphe 48.4(1).
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(2) No appeal may be taken under subsection (1)
after three months from the date a copy of the certificate is sent by
registered mail to the patentee.
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(2) Il ne peut
être formé d’appel plus de trois mois après l’expédition du double du constat
au titulaire du brevet.
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[4]
Sections
48.1 to 48.5 were added to the Act in 1987. A
cursory review of the Parliamentary history indicates that no particular
reference was made in Parliament or in Parliamentary Committee
to these provisions. That being said, the
purpose of the provisions would appear to be to provide a relatively summary and
inexpensive alternative to a full-blown impeachment process by litigation or an
opportunity for a patentee to have the Patent Office reconsider the claims of
an issued patent.
[5]
This
would appear to be the first appeal to be considered by this Court from the
re-examination process.
2) The
patent at issue
[6]
The
following description is extracted with little modification from Genencor’s
amended memorandum of fact and law, paragraphs 13 to 23, which paragraphs are
uncontradicted before the Court.
[7]
The
Genencor Patent is directed to a detergent composition comprising a fungal
cellulase which imparts improvements in softening, colour
retention/restoration, feel and strength loss to cotton-containing fabrics
washed in a wash medium containing such a composition. Cellulases are known in
the art to be useful in detergent compositions for the purposes of enhancing
the cleaning ability of the composition, for use as a softening agent and for
improving the feel of cotton fabrics.
[8]
Cellulases
are enzymes that break down or hydrolyze cellulose, which is a long chain
polymer, into smaller units. These smaller units include glucose, cellobiose
and cello-oligosaccharides and the like.
[9]
Cellulases
are produced in fungi and bacteria. Those produced in fungi have been
extensively used because certain fungi produce a complete cellulase system
capable of degrading crystalline forms of cellulose and because they can be
produced in large quantities.
[10]
The
softening and colour restoration properties of cellulase have been attributed to
the endoglucanase components in cellulase compositions but the exact mechanism
of action of the cellulase is not fully understood.
[11]
While
the benefits associated with the use of cellulase in detergent components are
known, there also exists an important drawback. The main disadvantage is that
cellulase degrades cotton-containing fabrics resulting in a loss of strength of
the fabrics. This has led to a reluctance to use cellulase compositions in
commercial detergent applications.
[12]
Genencor
alleges that it has found that fungal cellulase compositions containing
endoglucanases can be used in detergent compositions and if the cellulase
compositions contain less than about 5 weight percent of CBH I type components,
the detergent compositions will impart less strength loss to the fabrics.
[13]
As
disclosed in the Genencor Patent, the amount of cellulase, and not the relative
rate of hydrolysis of the specific enzymatic components to produce reducing
sugars from cellulose impart the desired detergent properties to the
cotton-containing fabrics, namely colour restoration, improved softening and
improved cleaning to detergent compositions. As such, the claims of the
Genencor Patent specify that the detergent composition comprises from about
0.01 to about 5 weight percent of a fungal cellulase composition based on the
weight of the detergent composition. The cellulase composition itself
comprises one or more EG type components and less than about 5 weight percent
of CBH I type components based on the weight of protein in the cellulase
composition.
[14]
The
Genencor Patent, comprising twenty-one (21) claims, has detergent composition
claims (claims 1 to 7), method for enhancing the softness of a
cotton-containing fabric claims (claims 8 to 14) and method for retaining/restoring
the colour of a cotton-containing fabric claims (claims 15 to 21). There is
one independent claim for each of these three (3) different sets of claims.
3) Novozymes’
request for re-examination
[15]
As
previously indicated in these reasons, a firm of patent and trade-mark agents
filed on behalf of Novozymes a request for re-examination of the Genencor Patent,
dated the 15th of April, 2004. In the request, Novozymes relied on
eight (8) items of prior art of which the first was Canadian Patent Application
Number 2,082,279 to Rasmussen et al., filed the 8th of May, 1991
(the “Rasmussen application”). In summary, and in light of the prior part
submitted, Novozymes submitted that:
1. The subject matter
of claims 1-21 of the [Genencor] patent was disclosed by Rasmussen in the
Rasmussen application which was filed in Canada before the Genencor patent’s
claim date contrary to paragraph 28.2(1)(c) of the Patent Act.
2. Claims 1 to 21 of
the Genencor patent are obvious in view of Rasmussen.
3. Claims 1 to 21 of
the Genencor patent are anticipated in view of another reference.
4. Claims 1 to 21 of
the Genencor patent are obvious in view of a combination of two other
references.
5. Claims 1 to 21 of
the Genencor patent are obvious in view of a combination of four other
references.
6. Claims 1 to 21 of
the Genencor patent are obvious in view of a combination of five references
including the Rasmussen application.
7. Claims 3 to 7, 10 to
14 and 17 to 21 of the Genencor patent are anticipated and/or obvious in view
of one other reference.
[16]
The
Novozymes’ submission concludes:
In view of the above
submissions, a substantial new question of patentability affecting each of
claims 1 to 21 in the [Genencor patent] has been raised, and it is submitted
that all of the claims are unpatentable and should be cancelled.
4) The parties
[17]
Genencor
International Inc. is the patentee of the patent at issue and the Appellant to
this Court. The Commissioner of Patents is, through the re-examination board
(the “Board”), the source of the decision under appeal.
[18]
Notably,
Novozymes, the initiator of the request for re-examination, is not a party.
That issue, that is to say, the appropriateness of Novozymes being a party to
this appeal, was settled by the Federal Court of Appeal in Genencor
International, Inc. v. Canada (Commissioner of
Patents). In that decision, the
Court quoted Rule 338(1) of the Federal Courts Rules which
reads as follows:
338. (1) Unless the Court
orders otherwise, an appellant shall include as a respondent in an appeal
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338. (1) Sauf ordonnance contraire de la Cour, l’appelant
désigne les personnes suivantes à titre d’intimés dans l’appel :
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(a) every party in the first instance
who is adverse in interest to the appellant in the appeal;
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a) toute personne qui était une partie dans la première instance et qui a
dans l’appel des intérêts opposés aux siens;
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(b) any other person required to be
named as a party by an Act of Parliament pursuant to which the appeal is
brought; and
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b) toute autre personne qui doit être désignée à titre de partie aux
termes de la loi fédérale qui autorise l’appel;
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(c) where there are no persons that are
included under paragraph (a) or (b), the Attorney General of
Canada.
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c) si les
alinéas a) et b) ne s’appliquent pas, le procureur général du
Canada.
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The Court concluded that Novozymes was
not a “party in the first instance” within the meaning of Rule 338(1)(a). It
wrote at paragraphs 7 to 9 of its reasons:
Re-examination pursuant
to sections 48.1 to 48.5 of the Act is a two-step process. Both stages do not
involve the same parties. The first stage involves the filing of a request by
a requestor…, the establishment of a re-examination board by the Commissioner
in response to this request… and the preliminary decision by the re-examination
board as to whether the request raises a substantial new question of
patentability… .
The second stage follows
the re-examination board’s determination that a substantial new question of
patentability is raised… . The requestor is not a party to this second phase
of the process. Only the re-examination board and the patentee are parties to
that phase. Only the patentee is given notice of such determination… and is
entitled to make submissions…, to propose amendments to the patent… and to receive
a copy of the certificate… . Only the patentee is given a right of appeal… .
Although Novozymes, as
the requestor, triggered the re-examination process, it did not and could not
participate in the second stage of the re-examination process.
[references
to provisions of sections 48.1 to 48.5 of the Act omitted]
In light of the above, and particularly
given the determination by the Commissioner of Patents not to take an active
part in the appeal, pursuant to Rule 338(1)(c), the Attorney General of
Canada was added as a Respondent. While the Attorney General, as Respondent,
chose not to intervene on the “merits” of the decision under appeal, he did
“defend the position that both the process provided by statute and the
principles of natural justice were respected in the present instance”. The
failure of the Court to have before it a respondent speaking to the merits of
the decision under appeal resulted in serious difficulties for the Court. In
reality, the Court heard only “one side” of the issues on the merits. More
will be said about that later in these reasons.
[19]
Novozymes
sought leave to be added as an intervener in the appeal. That motion was
rejected by Prothonotary Tabib. Prothonotary Tabib’s Order was appealed. The
appeal was rejected by Justice Hansen.
5) The
re-examination process
[20]
As
earlier noted, by correspondence dated the 15th of April, 2004 and
filed the 22nd of April, Novozymes requested re-examination of the
Genencor Patent in accordance with subsection 48.1(1) of the Act. As
required by subsection 48.2(1) of the Act, the Commissioner of Patents
established a three-member re-examination board (the “Board”) and referred
Novozymes’ requests to it for determination. Notice of the request for re-examination
of the Genencor Patent was given by the Commissioner to Genencor by letter
dated the 10th of June, 2004 enclosing a copy of the request for
re-examination and a copy of the prior art submitted in support of the request. The
Commissioner noted that the request fulfilled the requirements of subsections
48.1(1) and (2) of the Act. He further advised that a re-examination board
had been established and advised of the names of the members of that Board.
Finally, he advised:
Within three months of
the date hereof, the Re-examination Board will give notice of its determination
as to whether a substantial new question of patentability is raised by the
request.
[21]
By
letter dated the 3rd of September, 2004, the
members of the Board advised Genencor in part:
In summary, the Board is
of the opinion that the prior art submitted by the requestor raises a
substantial new question of obviousness with respect to claims 1 to 21.
Under subsection 48.2(5)
the patentee may, within three months of the date of the notice, respond with a
submission to the Board on these questions of patentability raised by the
Board.
It is noteworthy that only the issue of
obviousness survived the preliminary review.
[22]
Genencor
responded with extensive submissions under date of the 3rd of
December, 2004.
It concluded:
The prior art referred
to by the Board neither discloses nor suggests (alone or in combination) the
novel detergent compositions claimed in the Genencor patent or methods for
enhancing softness of cotton-containing fabric or retaining/restoring the colour
of cotton-containing fabrics using same. The applied references merely teach
what was already known in the art, endoglucanases or components having endoglucanase
activity and their use in detergent compositions. However, there is no
teaching or suggestion in such references of limiting the amount of CBH I type
components to less than 5 weight percent, which improvement results in
decreased strength loss of the fabric upon washing.
Accordingly, it is
respectfully requested that the rejection of claims 1 to 21 on the grounds of
anticipation and obviousness be withdrawn.
[23]
Under
date of the 9th of May, 2005, the Board again communicated with
Genencor.
It concluded:
…The Board maintains
that Rasmussen raises a substantial new question of patentability of the
claimed invention with respect to claims 1 to 21.
It is noteworthy that the Board once again
narrowed its concern, in this case to the Rasmussen application reference, but
no longer restricted its reliance on that reference to obviousness.
[24]
Genencor
once again availed itself of the opportunity to respond. By communication
dated the 9th of August, 2005, it concluded:
It is respectfully
submitted that claims of the Genencor Patent, when properly construed, do not
lack novelty in view of Rasmussen as Rasmussen does not disclose a detergent
composition comprising a surfactant or a mixture of surfactants and a fungal
cellulase composition comprising one or more EG type components and less
than about 5 weight per cent of CBH I type components, as defined in the
Genencor Patent. Accordingly, it is respectfully requested that the rejection
of claims 1 to 21 on the ground of anticipation by Rasmussen be withdrawn.
[emphasis
added]
[25]
In
the affidavit of Murray Wilson before the Court, Mr. Wilson who was at all relevant
times chairman of the re-examination board the decision of which is here at
issue, attested:
During the
re-examination process, any correspondence that was sent to the patentee was
also sent as a copy to the requestor [Novozymes] as a courtesy. The requestor
is routinely copied on correspondence from the re-examination board to the
patentee to indicate that the re-examination process is ongoing. At no time
after the re-examination process was initiated was correspondence directly
addressed to the requestor nor was the requestor invited to respond to any
courtesy correspondence that it received from the re-examination board.
During various stages
during the re-examination process, the requestor did submit additional material
at their own discretion. Receipt of this material was never confirmed in
writing to the requestor by the re-examination board and generally, as any
submissions relating to any patent file, these were placed in the patent file.
The re-examination board
did not consider the additional material in the subsequent submissions by the
requestor.
The Office has no control over the submissions of any person and routinely
receives material, which is placed in the patent file without further
consideration. Under section 10 of the Patent Act, there is a
requirement for documents filed in connection with a patent to be open to
public inspection in the Office, irrespective of any further consideration.
[emphasis
added]
[26]
In
the course of cross-examination on his affidavit, Mr. Wilson provided
assurances that none of the submissions of Novozymes provided after the initial
request for re-examination were taken into account or, indeed, even read, by
any member of the Re-examination Board.
6) The
make-up of the Board and related general practices
[27]
As
earlier indicated in these reasons, Murray Wilson, the affiant on behalf of the
Respondent Commissioner of Patents, chaired the Board. In his affidavit sworn
the 24th of November, 2006, he attested that he was “…currently
employed as the interim Chairperson of the Patent Appeal Board with the Patent
Office…”, a part of the Canadian Intellectual Property Office, that he had been
employed as a member of the Patent Appeal Board since 1992, and that he began
his employment as a Patent Examiner with the Patent Office in 1971. During his
cross-examination on his affidavit, Mr. Wilson attested that, since 1971, he
had always been employed within the Intellectual Property Office and that:
The Patent Appeal Board
has responsibility for administering the re-examination process and the
tradition, I guess, has been, in members of the Patent Appeal Board, [sic] is
the chairman of the Re-examination Board and two (2) examiners from the
examination branch are the other two (2) members, people generally with more
expertise in that particular field.
He attested that, over the four (4) or five
(5) years preceding his cross-examination he had been involved in every
re-examination that had taken place and that, since the enactment of the
re-examination procedure, there had been forty-seven (47) re-examinations. He
continued by indicating that, to the date of his examination, all members of
re-examination boards had been appointed from within the Intellectual Property
Office and that no such Board had included an examiner who had examined the
patent application leading to the patent that was under re-examination.
Finally, at page 465, he attested that in each case with which he was familiar,
the report of a re-examination board was written by a member of the Board,
other than the Chairman of the Board.
7) The
decision under appeal and the reasons in support of that decision
[28]
The
decision under appeal and the reasons in support of the decision are attached
as an Annex to these reasons.
THE ISSUES
[29]
In
the Memorandum of Fact and Law filed on behalf of Genencor, the following
issues on this appeal are identified:
1. Did
the Board err in improperly construing the claims of the Genencor Patent?
2. Did
the Board err in applying the improper test for anticipation or alternatively
in misapplying such test?
3. Did
the Board err in concluding that the Rasmussen application anticipated the
claims of the Genencor Patent?
4. Did
the Board err in accepting and considering the new material and evidence
submitted by requester Novozymes on March 14, 2005 and September 29, 2005 after
the initial request for re-examination under section 48.1 of the Act was
made?
5. Did
the Board breach the principles of natural justice and procedural fairness by
failing to inform Genencor of the new material and evidence submitted by
requester Novozymes on March 14, 2005 and September 29, 2005?
6. Did
the Board breach the principles of natural justice and procedural fairness by
failing to provide Genencor with the opportunity to respond to the adverse
submissions made against it on March 14, 2005 and September 29, 2005?
[30]
In
the Memorandum of Fact and Law filed on behalf of the Attorney General, counsel
described the issues the Attorney General would address in the following terms:
1. Did the Board fail
to respect the procedure set out in the Patent Act and/or breach the
principles of natural justice and procedural fairness in rendering its decision
dated November 16, 2005?
2. Notably, did the
Board have a duty to disclose any unsolicited submissions made by Novozymes
notwithstanding that these submissions were not read or considered in the
decision-making process?
[31]
In
essence, the Attorney General ignored the first three (3) issues identified on
behalf of Genencor. That position is entirely consistent with the earlier
indication in the Attorney General’s memorandum that he “…does not intend to
intervene on the merits of this decision”. I am satisfied that Genencor’s
first three (3) issues relate to the “merits” of the decision while Genencor’s
last three (3) issues address matters of natural justice and procedural
fairness.
[32]
As
earlier indicated in these reasons, at the close of hearing, I invited counsel
to address the issue of standard of review in supplementary submissions. Both
counsel responded to my request by filing, on the 6th of March,
2008, supplementary written submissions with those on behalf of the Attorney
General obviously having been prepared first with the result that Genencor’s
supplementary submissions are in the nature of responding submissions. It is
slightly ironic that both sets of submissions were filed the day before the
decision of the Supreme Court of Canada in Dunsmuir v. New
Brunswick was issued.
That decision dealt extensively with the issue of standard of review, albeit in
the judicial review context, not the statutory appeal context. Despite the
differing contexts, the Dunsmuir decision is to some degree instructive
in this context.
[33]
In
what follows, I will deal first with the issue of standard of review, secondly,
with the issues of procedural fairness and natural justice and finally, with
the issues going to the merits of the decision under appeal.
ANALYSIS
1) Standard
of review
[34]
Section
18.5 of the Federal Courts Act
reads as follows:
18.5 Despite
sections 18 and 18.1, if an Act of Parliament expressly provides for an
appeal to the Federal Court, the Federal Court of Appeal, the Supreme Court
of Canada, the Court Martial Appeal Court, the Tax Court of Canada, the
Governor in Council or the Treasury Board from a decision or an order of a
federal board, commission or other tribunal made by or in the course of
proceedings before that board, commission or tribunal, that decision or order
is not, to the extent that it may be so appealed, subject to review or to be
restrained, prohibited, removed, set aside or otherwise dealt with, except in
accordance with that Act.
|
18.5 Par dérogation aux articles 18 et
18.1, lorsqu'une loi fédérale prévoit expressément qu'il peut être interjeté
appel, devant la Cour fédérale, la Cour d'appel fédérale, la Cour suprême du
Canada, la Cour d'appel de la cour martiale, la Cour canadienne de l'impôt,
le gouverneur en conseil ou le Conseil du Trésor, d'une décision ou d'une
ordonnance d'un office fédéral, rendue à tout stade des procédures, cette décision
ou cette ordonnance ne peut, dans la mesure où elle est susceptible d'un tel
appel, faire l'objet de contrôle, de restriction, de prohibition,
d'évocation, d'annulation ni d'aucune autre intervention, sauf en conformité
avec cette loi.
|
The appeal here before the Court falls
squarely within the parameters of the foregoing section. The Act
expressly provides in section 48.5 for an appeal to this Court from decisions
of Re-examination Boards such as the decision here under appeal.
[35]
I
am satisfied that it is beyond doubt that the Board the decision of which is
here before the Court is a decision of a federal board, commission or other
tribunal made by or in the course of proceedings before that board, commission
or tribunal. In the result, the decision here before the Court is not subject
to review or to be restrained, prohibited, removed, set aside or otherwise
dealt with, except in accordance with the Patent Act. Unfortunately,
the Patent Act provides no guidance as to the circumstances under which such
a decision may be restrained, prohibited, removed, set aside or otherwise dealt
with by this Court. In these circumstances, I turn briefly to the guidance in
place with regard to judicial review.
[36]
In
Mattel, Inc. v. 3894207 Canada Inc., Justice Binnie, for the Court, wrote at
paragraph 33:
In choosing the proper
standard of review from the available options (correctness, reasonableness, or
patent unreasonableness) the Court has regard to the elements of the test set
out most recently in Dr. Q v. College of Physicians and Surgeons
of British
Columbia…
. These elements have not greatly altered since U.E.S., Local 298 v. Bibeault,
… where Beetz J., speaking for the Court, said at p. 1088:
…the Court examines not
only the wording of the enactment conferring jurisdiction on the administrative
tribunal, but the purpose of the statute creating the tribunal, the reason for
its existence, the area of expertise of its members and the nature of the
problem before the tribunal.
[citations
and one reference, with related citation, omitted]
Dunsmuir did not
notably modify the nature of the inquiry but did re-identify it by substituting
for the concept “pragmatic and functional analysis” the concept “standard of
review analysis”.
a) Presence
or absence of a privative clause or statutory right of appeal
[37]
As
earlier noted, the Act here provides a statutory right of appeal.
Counsel for Genencor and the Attorney General are in agreement that, given the
statutory right of appeal and the lack of guidance to the Court as to the
outcomes open to it on the appeal, a more “searching” standard of review is
supported by this factor. For this position, counsel cite Harvard College v. Canada
(Commissioner of Patents). In
that decision, dealing with the standard of review applicable to an appeal of a
decision of the Commissioner of Patents to refuse a patent under section 41 of
the Act, Justice Bastarache, for the majority wrote at paragraph 149:
Though it will not be
determinative, the fact that the Patent Act contains no privative clause
and gives applicants a broad right of appeal from the decision of the
Commissioner is relevant and suggests a more searching standard of review… .
[citation
omitted]
Justice Bastarache continued at paragraph
151:
The above in no way
implies that decisions of the Commissioner will always be reviewed according to
a correctness standard. If, for example, the question to be decided was
whether or not a particular life form such as a fungus should be classified as
a higher life form or as a lower life form, the Commissioner’s decision would
likely be accorded deference. As noted, s. 40 of the Act states that it
is the Commissioner who must be “satisfied” that a patent should not be
issued. In such an instance, the Commissioner’s scientific expertise suggests
that the courts defer to his decision in respect to whether he is satisfied
that the life form falls within a category of patentable subject matter.
Counsel urge that the language of
subsection 48.5(1) of the Act does not confer as broad a discretion on
this Court as is conferred by the language of section 41 of the same Act
where the Court is instructed to “hear and determine” an appeal. With great
respect, I do not read as much into the difference between the language of the
two (2) sections of the same Act as do counsel. I will shortly turn to
the subject of “deference”. For the moment, I determine this factor to be
neutral.
b) The
Board’s expertise
[38]
It
was not in dispute before me, and given what has been said earlier in these
reasons regarding the makeup of re-examination boards, I do not regard it as
disputable, that re-examination boards in general and the particular Board the
decision of which is here under appeal reflect considerable expertise in
relation to their mandates. This factor justifies a high degree of deference
to the Board’s decision.
c) The
purpose of the Act and of the re-examination scheme
[39]
The
written submissions on behalf of the Attorney General on this factor are, I am
satisfied, compelling. Counsel for Genencor takes no issue with those
submissions. In the circumstances, I will simply repeat them here:
21. The purpose of the Patent
Act is to “encourage invention and to regulate the issuance of patents in Canada.”
Pope Appliance Corp. v.
Spanish River Pulp and Paper Mills Ltd, [1929] A.C. 269
(Canada P.C.) cited in CertainTeed Corporation v. Canada (Attorney
General),
2006, FC 436 at para. 25.
22. The re-examination
procedure was introduced into the Patent Act through Bill C-22, “An
Act to Amend the Patent Act” enacted in 1987.
23. Bill C-22 brought a
number of fundamental changes to the Patent Act. These included the
substantial limitation of compulsory licences as of right, the change from
“first to invent” to “first to file”, deferred examination, compulsory laying
open of patent applications for public inspection, term of protection and
re-examination. Of all these changes the only issue that appears to have
received particular attention from Parliament was the restriction of the
compulsory licensing regime for patented drugs.
24. There does not
appear to be any available extrinsic evidence of Parliamentary intent that
could assist this Court in characterizing the re-examination scheme. Except
for some minor amendments, there is no reference to the re-examination scheme
in either the Parliamentary Debates or Committee Deliberations.
25. Viewed in its
statutory context, in particular in light of the fact that interested
parties retain the right to launch impeachment proceedings directly before the
Federal Court under s. 60 of the Patent Act, the re-examination
procedure appears designed to offer an inexpensive and simplified means for
third parties as well as patentees to put prior art that had not previously
been considered before the Board.
26. For all practical
purposes, the role of third parties in the re-examination process is analogous
to their role in the original process. In particular the rights of the
requestor under subsection 48.1(1) are analogous to a third party’s rights
under s. 34.1 Patent Act to file prior art with respect to a pending
application:
34.1(1) Any person may
file with the Commissioner prior art, consisting of patents, applications for
patents open to public inspection and printed publications, that the person
believes has a bearing on the patentability of any claim in an application for
a patent.
(2) A person who files
prior art with the Commissioner under subsection (1) shall explain the
pertinency of the prior art.
27. In this respect,
one would expect the standard of review applicable to an appeal of a
re-examination decision under s. 48.5 to be the same as the standard applicable
to the appeal of an ordinary refusal under s. 41 of the Patent Act.
28. Although it might
be argued that the summary process and limited participation of the requestor
suggest a less rigorous review, from the perspective of the patentee, the
decision is functionally equivalent to a decision of the Commissioner under s.
40 of the Act. The cancellation of a patent under re-examination has exactly
the same effect as a refusal to grant after the initial examination process.
29. The limited rights
on appeal of the requestor can be explained by the fact that the requestor
retains the right to launch a full impeachment proceeding under s. 60 of the
Act.
30. Although it seems
clear that Parliament intended the re-examination procedures to be simplified
and inexpensive, because of the consequences, there is no basis to infer that
Parliament intended the appeal to be any less substantive than where the matter
otherwise comes before the Court.
[emphasis
added]
[40]
It
is only with the last quoted paragraph that I differ. As counsel notes, it can
only be inferred from the enactment of the re-examination process that
Parliament intended it to be a simplified and relatively inexpensive
alternative to impeachment proceedings under section 60 of the Act. It
recognizes the expertise of those who have to date been chosen to make up
re-examination boards. Resort to the re-examination process does not foreclose
impeachment proceedings in circumstances where it is invoked. It is only in
circumstances where re-examination, as here, results in a patent being deemed
never to have been issued or to be narrowed, apparently a relatively rare
circumstance inferring from experience to date, where an appeal such this is
pursued. It does not lie easily in the mouth of patentees to accept without
danger of appeal the results in re-examination proceedings and to urge a broad
right of appeal in the historically narrow range of cases where the procedure
works against them.
[41]
I
am satisfied that this factor weighs in favour of a more deferential standard
of review.
d) The
nature of the questions in dispute
[42]
Earlier
in these reasons, I divided the issues raised on this appeal by the parties
into three (3) categories, namely: standard of review, issues of procedural
fairness and natural justice, and issues going to the merits of the decision
under appeal. Counsel for the Attorney General urges that each issue should be
dealt with against its own appropriate standard.
[43]
The
issue of standard of review clearly stands apart and is to be dealt with by a
“standard of review analysis” as here.
[44]
Issues
of natural justice and procedural fairness must, of course, be dealt with on a
“correctness” standard.
[45]
Counsel
for Genencor urges that the substantive issues before the Court are issues of
“claim construction” and “anticipation” and should be dealt with as the Court
would deal with those issues in an impeachment proceeding, which is to say,
without deference to the expertise of the members of the re-examination board
in the course of examination of patent applications, a process which is not
unlike the re-examination process.
[46]
I
differ from the position urged by counsel for Genencor for the reasons that
will follow in a review of provisions of Dunsmuir that
follows.
e) Dunsmuir
and deference
[47]
In
Dunsmuir,
Justice Deschamps, in concurring reasons concurred in by Justice Charron and
Justice Rothstein, wrote:
[161] Questions before the courts have
consistently been identified as either questions of fact, questions of law or
questions of mixed fact and law. Whether undergoing appellate review or
administrative law review, decisions on questions of fact always attract
deference. The use of different terminology — “palpable and overriding
error” versus “unreasonable decision” — does not change the substance of the
review. Indeed, in the context of appellate review of court decisions, this
Court has recognized that these expressions as well as others all encapsulate
the same principle of deference with respect to a trial judge’s findings of
fact: H.L. v. Canada (Attorney General), [2005] 1 S.C.R. 401, 2005 SCC 25,
at paras. 55-56. Therefore, when the issue is limited to questions of fact, there
is no need to enquire into any other factor in order to determine that
deference is owed to an administrative decision maker.
[162] Questions of law, by contrast,
require more thorough scrutiny when deference is evaluated, and the particular
context of administrative decision making can make judicial review different
than appellate review. Although superior courts have a core expertise to
interpret questions of law, Parliament or a legislature may have provided that
the decision of an administrative body is protected from judicial review by a
privative clause. When an administrative body is created to interpret and
apply certain legal rules, it develops specific expertise in exercising its
jurisdiction and has a more comprehensive view of those rules. Where there
is a privative clause, Parliament or a legislature’s intent to leave the final
decision to that body cannot be doubted and deference is usually owed to the
body.
[163] However, privative clauses cannot
totally shield an administrative body from review. Parliament, or a
legislature, cannot have intended that the body would be protected were it to
overstep its delegated powers. Moreover, if such a body is asked to interpret
laws in respect of which it does not have expertise, the constitutional
responsibility of the superior courts as guardians of the rule of law compels
them to insure that laws falling outside an administrative body’s core
expertise are interpreted correctly. This reduced deference insures that laws
of general application, such as the Constitution, the common law and the Civil
Code, are interpreted correctly and consistently. Consistency of the law is
of prime societal importance. Finally, deference is not owed on questions
of law where Parliament or a legislature has provided for a statutory right of
review on such questions.
[164] The category of questions of mixed
fact and law should be limited to cases in which the determination of a legal
issue is inextricably intertwined with the determination of facts. Often,
an administrative body will first identify the rule and then apply it. Identifying
the contours and the content of a legal rule are questions of law. Applying
the rule, however, is a question of mixed fact and law. When considering a
question of mixed fact and law, a reviewing court should show an adjudicator
the same deference as an appeal court would show a lower court.
[165] In addition, Parliament or a
legislature may confer a discretionary power on an administrative body. Since
the case at bar does not concern a discretionary power, it will suffice for
the purposes of these reasons to note that, in any analysis, deference is owed
to an exercise of discretion unless the body has exceeded its mandate.
[166] In summary, in the adjudicative
context, the same deference is owed in respect of questions of fact and
questions of mixed fact and law on administrative review as on an appeal from a
court decision. A decision on a question of law will also attract deference,
provided it concerns the interpretation of the enabling statute and provided
there is no right of review.
[emphasis added]
[48]
On
the facts of this matter, and subject to what was said earlier with regard to
review of issues of natural justice and procedural fairness, the Board made its
decision based on its explicit legislative authority and mandate. I am
satisfied that the substantive questions that were before it were questions of
mixed fact and law and were questions within the extensive expertise of its
members in the context of a legislative scheme intended to introduce a
significant degree of simplicity, brevity and cost saving into a complex legal
regime where determinations or impeachment proceedings have evolved into
processes that are long, complex and expensive. In the circumstances, in
recognition of the high degree of deference that I am satisfied is owed to the
Board in this matter and in matters equivalent to it, I am satisfied that the
appropriate standard of review on the substantive issues arising herein is
“reasonableness” or, put in language often adopted on appeals, the decision
under review for substantive error should not be interfered with in the absence
of “palpable and overriding error”.
[49]
In
Smart & Biggar v. Canada (Attorney General), an appeal
under subsection 56(5) of the Trade-marks Act, a
decision of a Senior Hearing Officer, acting on behalf of the Registrar of
Trade-Marks, was before my colleague, Deputy Justice Strayer. With respect to
standard of review, my colleague wrote:
I accept the analysis of
a majority of the Federal Court of Appeal in Molson Breweries, a Partnership
v. John Labatt Ltd. … where it was held that in Appeals under section 56 of
the Act where no evidence is produced the Registrar’s decision should be
reviewed on the standard of reasonableness simpliciter. Such is the case
here. While this is an appeal without any privative clause, deference must be
shown to the Registrar who by the scheme of the Act must be deemed to have a
certain expertise in such matters.
[citation
omitted]
On appeal from Justice Strayer’s decision,
Justice Pelletier, for the Court, wrote at paragraph [11] of his reasons:
The matter was appealed
to the Federal Court where it was heard by Strayer D.J. After reviewing the
facts, the learned judge began by acknowledging that the standard of review of
the Senior Hearing Officer’s decision was reasonableness, a conclusion which is
not open to serious question following the recent decision of the Supreme Court
of Canada in Dunsmuir v. New Brunswick… . While there
is a right of appeal of the Hearing Officer’s decision, the subject matter is
one in which the Registrar and his delegated hearing officers have special
expertise, and the legal questions involved are squarely within that area of
expertise:…
[two citations
of Dunsmuir omitted]
[50]
The
above authority was not cited before me and indeed, in particular, the Court of
Appeal’s reasons could not have been as they were published after the hearing
of this matter was closed. I do not rely on them. That being said, I find
they lend support to my foregoing conclusion on standard of review and in
particular on the issue of deference.
2) Natural
justice and procedural fairness
a) General
principles
[51]
Counsel
for Genencor and counsel for the Attorney General both cite the following brief
passage from Cardinal v. Director of Kent Institution:
…there is, as a general
common law principle, a duty of procedural fairness lying on every public
authority making an administrative decision which is not of a legislative
nature and which affects the rights, privileges or interests of an individual:…
[citations
omitted]
It was not in dispute before me that the
Board is a “…public authority making an administrative
decision…” and that the decision under
review is not “…of a legislative nature…”. Further, the fact that the
administrative decision here under appeal primarily affects Genencor, a
corporation, not an individual, is not relied upon to impact on the application
of the foregoing principle.
[52]
The
foregoing being said, both counsel acknowledge that the content of the duty of
fairness is variable, depending on the circumstances of the case, the statutory
provisions at issue and the nature of the matter to be decided. An
example of the variable standard that is apt in the circumstances of this
matter was noted by this Court in CIBA-Geigy Canada Ltd. v. Canada (Patented
Medicine Prices Review Board) where the Court wrote at page 442:
Tribunals charged with
regulating economic activity have not had placed on them the same high standards
as tribunals dealing with personal individual rights.
b) Application
of the General Principles to the facts on this matter
[53]
On
the facts of this matter, it was not in dispute that Novozymes submitted to the
Intellectual Property Office on the 14th of March, 2005 and the 29th
of September, 2005 submissions directed to the matter that was then before the
Board and that were supplementary to the original request for re-examination
and related submissions. It was also not in dispute that Novozymes’
supplementary
submissions were not shared with Genencor
and further, and consequentially, Genencor was provided no opportunity to
respond to those supplementary submissions.
[54]
Counsel
for Genencor urges that the failure to provide Genencor with the supplementary
submissions of Novozymes and to provide it an opportunity to respond to those
submissions constituted a breach of natural justice or procedural fairness.
For this proposition, counsel cites Gittel v. Air Atlantic (1995) Ltd. where
this Court wrote at paragraph 27:
Where submissions of
one party do more than provide an interpretation of facts before the
Commission, if they affect the content of the evidence before that body, the
submissions should be disclosed. In my view, procedural fairness requires
disclosure where those submissions limit the evidence that is considered,
particularly evidence that the other party has every reason to believe
will be considered. …
[emphasis
added]
[55]
Notably,
at the dates the supplementary submissions were provided by Novozymes,
Novozymes was not a “party” to the re-examination process, nor, under the
re-examination scheme of the Act, could it have been once the
re-examination process was instituted. More importantly, Mr. Wilson, the
chairman of the Board, has attested in an affidavit before the Court 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 that therefore its supplementary submissions were
irrelevant to the re-examination process. Mr. Wilson was not shaken in this
attestation on cross-examination on his affidavit.
[56]
Further,
during the cross-examination of Mr. Wilson on his affidavit, the following
exchange took place between counsel for Genencor and Mr. Wilson:
Q - And would it also
have made it to the files of your two (2) other board members?
A - I have asked them
specifically about that and they said no, it didn’t make it to the file, and
they did not read that document.
[57]
The
reference to “that document” in the foregoing quotation was clearly, from the
context in the cross-examination, a reference to Novozymes’ the 14th
March, 2005 supplementary submission. While it did not extend to the further
supplementary submission by Novozymes on the 29th of September,
2005, no equivalent question was asked with respect to that submission and I am
prepared to assume on the evidence before the Court that the answer would have
been the same with respect to that second supplementary submission. While Mr.
Wilson’s evidence regarding consideration of Novozymes’ supplementary
submissions by his colleagues on the Board was clearly not firsthand evidence,
it was the best evidence before the Court and no objection to its being taken into
consideration was made on behalf of Genencor, although counsel urged that it
should be given little weight.
[58]
In
Hutchinson v. Canada (Minister of the
Environment), Justice
Pelletier, for the Court, wrote at paragraph 49 of his reasons:
It is clear from Madsen
and Mercier, that the obligation to disclose submissions arose in the context
where those submissions were to be placed before the Commission. The
underlying principle was established ten years earlier in Radulesco. There is
nothing in any of these cases which would support the proposition that every
exchange between an investigator and an interested party must be disclosed to
the other party. The right to know the case to be met and to respond to it
arises in connection with material which will be put before the decision maker,
not with respect to material which passes through an investigator’s hands in
the course of the investigation.
[59]
I
am satisfied that precisely the same might be said here in respect of material
that comes
into the hands of the Intellectual Property
Office during the course of a re-examination process but that does not
constitute material which will be put before the Board.
[60]
Based
on the evidence before the Court, and whether or not Mr. Wilson’s affidavit and
his responses on cross-examination on that affidavit are given great or little
weight, Genencor’s case simply cannot succeed on the basis of a breach of
natural justice or procedural fairness. The best and only evidence before the
Court regarding that issue satisfies the Court that there was no such breach.
3) Substantive issues
a) Claim
construction
[61]
Counsel
for Genencor, by reference to Whirlpool Corp. v. Camco Inc. urges
that claims must be construed with reference to the entire patent specification
and that the simple dictionary approach should be rejected. In Whirlpool,
Justice Binnie, for the Court, wrote at paragraph 52 of his reasons:
I have already given my
reasons for concluding that to the extent the appellants are arguing for a
simple “dictionary” approach to construction of the ‘803 claims, it must be
rejected. In Western Electric Co. v. Baldwin International Radio of Canada,…the
Court cited earlier authority dealing with the word “conduit” as used in a
patent claim. Duff C.J. …accepted the proposition that “[y]ou are not to look
into the dictionary to see what ‘conduit’ means, but you are to look at the
specification in order to see the sense in which the patentees have used it”.
In Consolboard, …as mentioned, Dickson J. considered that the whole of
the specification (including the disclosure and the claims) should be looked at
“to ascertain the nature of the invention”… . To the same effect is the
statement of Taschereau J. in Metalliflex Ltd. v. Rodi & Wienenberger
Aktiengesellschaft,…:
The claims, of course,
must be construed with reference to the entire specifications, and the latter
may therefore be considered in order to assist in apprehending and construing a
claim, but the patentee may not be allowed to expand his monopoly specifically
expressed in the claims “by borrowing this or that gloss from other parts of
the specifications”.
More recently,
Hayhurst,…cautioned that “[t]erms must be read in context, and it is therefore
unsafe in many instances to conclude that a term is plain and unambiguous
without a careful review of the specification”. In my view, it was perfectly
permissible for the trial judge to look at the rest of the specification,
including the drawing, to understand what was meant by the word “vane” in the
claims, but not to enlarge or contract the scope of the claim as written and
thus understood.
[citations
omitted]
[62]
Whirlpool was, of
course, an impeachment proceeding. It was not a re-examination proceeding and
I am satisfied that the foregoing, in all its implications, was directed to
trial judges and to judges of courts of appeal and not to patent examiners in
the course of examinations to determine whether applications for patents should
be granted or in the course of re-examinations as here.
[63]
Counsel
for Genencor urged that the Board, on the facts of this matter and the record
before the Court, erred in failing to properly construe the Genencor Patent and
more particularly, by failing to first construe the terms used in the claims in
the Genencor Patent and even more particularly, the terms EG type components
and CBH I type components. She urged that the Board repeatedly asserted in its
reasons for decision here before the Court that the Rasmussen application
preparations comprise less than 5 weight percent of CBH components “because the
endoglucanase enzyme is the sole cellulase component, being isolated and
purified before its use”. Counsel further noted that the Board states: “it is
‘clear that Rasmussen teaches a molecularly pure endoglucanase composition that
is necessarily devoid of CBH components’”.
[64]
At
page 4 of its reasons for decision, the Board notes six (6) different
definitions included in the Genencor Patent claims and concludes that: 1) the claims
of the Genencor Patent are not limited to an endoglucanase derived solely from Trichoderma
reesei; 2) they do not necessarily encompass an endoglucanase that
imparts less strength loss; 3) they may not be limited to enzymes that are
traditionally classified as endoglucanase; and 4) they encompass endoglucanases
that have properties in detergent compositions similar to those
possessed by endoglucanases derived from Trichoderma reesei.
[65]
The
Board concluded that the EG definition in the Genencor Patent defined EG more
by desired functional attributes than by anything else and did not offer a
clear indication of the technical features and physical properties. Further,
the Board stated that there was no clear indication that an endoglucanase
derived from Humicola insolens as disclosed by the Rasmussen application
does not fit this definition. Moreover, the Board noted that this type of
enzyme was described in the Rasmussen application “…as having fabric softening
and colour retention properties similar to those possessed by endoglucanases
derived from Trichoderma reesei.” The Board therefore concluded that a
reader, skilled in the art, would be able to conclude that the claims of the
Genencor Patent encompassed the enzyme disclosed in the Rasmussen application.
[66]
Counsel
for Genencor further urged that, if the Genencor Patent were properly
construed, the Rasmussen application could not anticipate the claims of the
Genencor Patent as the Rasmussen application contains no teachings as to the
presence or absence of CBH I type components in its detergent composition and
no teachings of the beneficial properties associated with the CBH I type
components.
[67]
Counsel
concluded her submissions in this regard by submitting that the Board failed to
properly construe CBH I type components in equating this expression with the
lack of cellobiohydrolase activity, which is to say activity towards cellobiose
p-nitrophenyl and therefore erred in dismissing Genencor’s argument as to
Example 6 of the Rasmussen application and distinguishing that example, in the
absence of any basis for doing so.
[68]
With
regard to CBH components and in particular example 6 of the Rasmussen
application, the Board found that it was in no way determinative on the
question of CBH content in the Rasmussen preparations. Rather, the Board
concluded that this example set out nothing more than an evaluation of
molecularly pure endoglucanase versus impure mixtures for the purpose of
“stonewash” evaluations. This test was not undertaken as a strength loss test,
even if the tear strength was mentioned in the example “in passing”.
[69]
Finally,
example 16 of the Genencor Patent which evaluates strength loss was undertaken
using an entirely different protocol than that used in the Rasmussen application.
The conclusion is that example 6 of the Rasmussen application would not lead a
person skilled in the art to believe that the endoglucanase preparations in
Rasmussen are contaminated with more than 5 weight percent CBH I because the
remainder of the specification teaches the complete absence of such
contaminants. The Board concluded that the claims in the Genencor Patent are
essentially silent on imparting less strength loss and as a consequence cannot
be used to clearly distinguish the Genencor Patent from the Rasmussen
application.
[70]
With
great respect, I am satisfied that counsel for Genencor is urging that a re-examination
board, based on a generally one-sided presentation before it, and further, in
the absence of experts appearing before it and being cross-examined before it,
should take on the full role of a court in impeachment proceedings. 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.
b) Anticipation
[71]
Counsel
for Genencor quite correctly urged that the test for anticipation is a strict
one. In Beloit Canada Ltd.
v. Valmet Oy, Justice
Hugessen, for the Court, wrote at page 297:
It will be recalled that
anticipation, or lack of novelty, asserts that the invention has been made
known to the public prior to the relevant time. The inquiry is directed to the
very invention in suit and not, as in the case of obviousness, to the state of
the art and to common general knowledge. Also, it appears from the passage of
the statute quoted above [paragraph 28(1)(b) of the Patent Act as it read at
the relevant time], anticipation must be found in a specific patent or other
published document; it is not enough to pick bits and pieces from a variety of
prior publications and to meld them together so as to come up with the claimed
invention. One must, in effect, be able to look at a prior, single publication
and find in it all the information which, for practical purposes, is needed to
produce the claimed invention without the exercise of any inventive skill. The
prior publication must contain so clear a direction that a skilled person
reading and following it would in every case and without possibility of error
be led to the claimed invention. …
[emphasis
added]
I am satisfied that at least two of the
members of the Board the decision of which is here at issue, qualified as
“skilled persons” within the meaning of the foregoing quotation.
[72]
In
Cochlear Corporation v. Consem Neurostim Lté., the Court
wrote:
In order for there to be
a finding of anticipation, the prior art must: (1) give an exact prior
description; (2) give directions which will inevitably result in something
within the claims; (3) give clear and unmistakeable directions; (4) give information
which for the purpose of practical utility is equal to that given by the
subject patent; (5) convey information so that a person grappling with the same
problem must be able to say ‘that gives me what I wish’; (6) given information
to a person of ordinary knowledge so that he must at once perceive the
invention; (7) in the absence of explicit directions, teach an ‘inevitable
result’ which ‘can only be proved by experiment’; and (8) satisfy all tests in
a single document without making a mosaic.
Once again, I am satisfied that at least
two (2) members of the Board the decision of which is here at issue are persons
of, at least, “ordinary knowledge” as that expression is used in the quotation
from Cochlear, at paragraph [72] of these reasons.
[73]
Against
the foregoing, counsel for Genencor urged that the Board applied an improper
test for anticipation or alternatively misapplied the proper test. Against
what I regard to be the appropriate standard of review, whether it be described
as “overriding and palpable error” or “reasonableness”, I disagree.
[74]
In
its reasons, the Board concluded that the Rasmussen application disclosed the
extensive preparation and purification of endoglucanases as well as molecular
cloning methods which teach a detergent composition devoid of CBH I since the
fungal cellulase component consists solely of biochemically pure
endoglucanase. The Board noted that:
…a person skilled in the
art would logically understand that there is a complete absence of CBH I type
components since such enzymes would necessarily be removed during the extensive
purification and preparation procedures clearly taught in the Rasmussen
application.
[75]
Counsel
for Genencor urged that the Rasmussen application which has “essentially no
cellobiohydrolase activity” could have some CBH I type components
present…”. The conditional tense in the foregoing statement supports an
assumption that Genencor based its submissions on assumptions and that Genencor
had not been able to demonstrate that the Rasmussen application relates to a
preparation containing more than 5 weight percent CBH I which would distinguish
its claim from what is disclosed by the Rasmussen application.
[76]
Further,
although the Board does not enumerate in its reasons the “essential elements”
of the patent in a specific list, I am satisfied that it is possible to deduce
from the reasons that each of the issues discussed and analyzed in the decision
were “essential” to the Genencor Patent and were all of the issues essential to
that patent. The Board, in its analysis of the Genencor Patent highlighted a
number of defects and concerns before concluding that the invention disclosed
therein was anticipated by the Rasmussen application.
[77]
The
Board concluded that claims 8 and 15 in the Rasmussen application employed a
detergent composition as defined by claim 1 and were directed to enhancing the
softness of cotton-containing fabric as well as to a method for restoring the
colour of the cotton containing fabric. Based on the foregoing, I am satisfied
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.
[78]
For
the foregoing reasons, as earlier indicated, I am satisfied that the Board did
not apply an improper test for anticipation and did not, in the alternative,
misapply the proper test. In the result, against the appropriate standard of
review earlier referred to in this portion of these reasons, Genencor, the
Appellant, cannot succeed on this ground.
CONCLUSION
[79]
Based
on the foregoing analysis, I am satisfied that the Board did not breach natural
justice or procedural fairness. Further, based on the foregoing analysis and
reading the Board’s reasons as a whole, not parsing them microscopically, and
acknowledging the expertise of the members of the Board in respect of the
subject matter of the Genencor Patent and on the substantive issues before
them, I am satisfied that the Board made no palpable and overriding error in
deciding as it did and that, put another way, its decision was reasonably open
to it. In light of the foregoing, this appeal will be dismissed.
COSTS
[80]
The
Respondent, the Attorney General of Canada, will be entitled to his costs of
this appeal, determined on the ordinary scale. There will be no order as to
costs for or against the Respondent, the Commissioner of Patents.
POSTSCRIPT
[81]
As
earlier noted, the Respondent, the Commissioner of Patents, filed no
submissions on this appeal and took no part in the hearing of the appeal.
Further, the Respondent, the Attorney General of Canada, filed no submissions
and made no submissions at hearing on the substantive issues on this appeal.
In the result, in the portion of the foregoing reasons relating to substantive
issues, this Court was substantially disadvantaged. Particularly if the
Court’s determinations on the issue of standard of review are found to be
incorrect and the appropriate standard is determined to be that applicable on
an impeachment action, the position of this Court would have been, and will in
the future be, essentially untenable on substantive issues. A solution to this
difficulty is, in the opinion of this Judge, a matter of policy for
determination by Government or Parliament. It is not a matter within the
purview of this Court.
“Frederick
E. Gibson”
Ottawa,
Ontario
May 15,
2008