Date: 20080303
Docket: A-574-06
Citation: 2008 FCA 81
CORAM: LINDEN J.A.
SEXTON J.A.
RYER
J.A.
BETWEEN:
CALGON CARBON CORPORATION
Appellant
and
THE CORPORATION OF THE CITY OF NORTH BAY
and TROJAN TECHNOLOGIES INC.
Respondents
REASONS FOR JUDGMENT OF THE
COURT
(Delivered from the Bench at Toronto, Ontario, on March 3, 2008)
RYER J.A.
[1]
This is an
appeal from a decision of Justice Mosley of the Federal Court (2006 FC 1373) in
which he allowed the counterclaim of Trojan Technologies Inc. and the
Corporation of The City of North Bay (the “respondents”) for a declaration of
invalidity of Canadian Patent No. 2,331,525 (the “‘525 Patent”) on the basis of
anticipation, that is to say, on the basis that the subject matter of the
invention claimed in the ‘525 Patent had been disclosed in such a manner that
it became available to the public in Canada or elsewhere, within the meaning of
paragraphs 28.2(1) (a) and (b) of the Patent Act R.S.C.,
1985, c. P-4. As a result of that finding, the Federal Court dismissed the
claim of Calgon Carbon Corporation (“Calgon” or the “appellant”) that the
respondents had infringed the ‘525 Patent. The only relief sought by Calgon in
the appeal is declaratory relief as to the validity and infringement of the
‘525 Patent. The respondents chose not to participate in this appeal on the
basis of an accommodation that was reached between them and the appellant.
[2]
This
appeal raises two issues in respect of the ‘525 Patent, which describes a
method for preventing the replication of Cryptosporidium parvum (“Crypto”)
in water using low levels of ultraviolet light. The first issue is whether, in
reaching its conclusion that the ‘525 Patent was anticipated, the Federal Court
erred in its application of the doctrine of issue estoppel to the decision of
this Court in Calgon Carbon Corp. v. North Bay (City), 2005 FCA 410, 262
D.L.R. (4th) 476, (“Calgon 2005”). The second issue relates to the
appropriate formulation and application of the test for anticipation.
Issue Estoppel
[3]
In Calgon
2005, this Court found that the ‘525 Patent deals with patentable subject
matter, stating that using low doses of UV light to irradiate water for Crypto
was a new use for an existing method. The Court specifically declined to deal
with the issue of whether the ‘525 Patent was invalid on the basis of
anticipation. In the present case, the Federal Court decided that it would not
reconsider the issue of whether the ‘525 Patent deals with patentable subject
matter, stating that the ratio of Calgon 2005 was binding on it. The
Federal Court concluded that the issue before it was simply one of
anticipation.
[4]
Prior to
considering the issue of anticipation, the Federal Court undertook a
construction of the ‘525 Patent, as it was required to do. In doing so, the
Federal Court did not, in our view, contradict any claims construction findings
that were made by this Court in Calgon 2005. Accordingly, we are not
persuaded that the appellant’s argument of issue estoppel has been made out.
Anticipation
[5]
In respect
of the conclusion of the Federal Court that the ‘525 Patent is invalid on the
basis of anticipation, Calgon takes the position that the Federal Court applied
the incorrect test for anticipation and misapprehended the evidence.
Standard of Review
[6]
While
factual findings by the Trial Judge are reviewable on a standard of palpable
and overriding error and legal interpretations are reviewable on a standard of
correctness, anticipation is a question of mixed fact and law. As such, it is
to be reviewed on a standard of palpable and overriding error, unless it is
clear that there has been an extricable error of law, in which event a standard
of correctness will apply (Housen v. Nikolaisen, [2002] 2 S.C.R. 235).
Test for Anticipation by Prior
Publication
[7]
The
Federal Court determined that the test for anticipation by prior publication
was laid out in Beloit Canada Ltd. v. Valmet OY (1986), 8 C.P.R. (3d)
289 (F.C.A.), at page 297, as follows:
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.
In our view, this determination by the Federal Court was
correct.
Test for Anticipation by Prior Use
[8]
The
Federal Court determined that the test for anticipation by prior use is whether
the disclosure is enabling, that is to say a disclosure that would enable the
public to make or obtain the invention. The Federal Court held that this test
was laid down in Baker Petrolite Corp. v. Canwell Enviro-Industries Ltd.
2002 FCA 158, 17 C.P.R. (4th) 478, and that this test had not been altered by
the decision in Abbott Laboratories v. Canada (Minister of Health), 2006
FCA 187 (see paragraphs 117, 125 and 133 of the reasons of the Federal Court).
[9]
The
appellant argues that the Federal Court erred in law by adopting this test.
According to the appellant, the Federal Court should have reformulated the test
in Baker Petrolite on a basis consistent with an obiter dictum of
Lord Hoffman in Merrell Dow Pharmaceuticals v. H.N. Norton
& Co., [1996 ] R.P.C. 76 (H.L.) which reads as follows:
Whether or
not a person is working a product invention is an objective fact independent of
what he knows or thinks about what he is doing. (The position may be
different when the invention is a use for a product; in such a case, a person
may only be working the invention when he is using it for the patented
purpose…) [Emphasis added.]
[10]
The
appellant’s argument is that the Federal Court should have adopted the portion
of this quote that is in parentheses as the test for anticipation where the
subject matter is a method or use claim. Thus, the appellant urges that anticipation
by prior use of a method or use claim requires that the person who is using the
method must be aware that such method is being used for the patented purpose.
[11]
The Federal
Court applied an interpretation of enabling disclosure that is consistent with
the appellant’s view of the appropriate test. This is apparent from the
conclusions of the Federal Court with respect to the prior use of the invention
at Fort Benton Montana and Weerseloseweg, Netherlands. At paragraph 150 of the decision, the
Federal Court concluded that the use at Fort Benton of a continuous broadband of UV
light from medium pressure lamps with wavelengths of 200 to 300 nm in doses
that can vary from about 10 mJ/cm2 to about 175 mJ/cm2 was
for the purpose of disenabling Crypto. In other words, the Federal Court found
that the Fort Benton authority was knowingly using the
patented method for the purpose specified in the patent. The same
conclusion is apparent from a review of paragraph 171 of the reasons in
relation to the use of the method in the Netherlands. The Federal Court found that the
facility in question knowingly used low dosage UV light for the purpose of
preventing Crypto infection.
[12]
These
examples establish that the Federal Court interpreted the test of enabling
disclosure from Baker Petrolite in a manner that was consistent with the
test that the appellant advocates. Accordingly, the contention of the appellant
that the Federal Court formulated the wrong test for enabling disclosure must
be rejected.
Application of Test for Anticipation
[13]
The
Federal Court applied the tests for anticipation of the invention by prior
publication and by prior use in relation to a number of situations:
(a)
prior use
at the Fort
Benton, Montana
water treatment facility in the 1990’s;
(b)
prior
publication at a meeting of the National Sanitation Foundation, Environmental
Technology Steering Committee in 1998;
(c)
prior use
at the Weerseloseweg, Netherlands water treatment facility in
the 1990’s and prior publication of a report on the use of the invention at the
facility in 1996;
(d)
prior
publication in a journal in 1993 of an article by M. E. Ransome and others;
(e)
prior use
at Trout Lake.
[14]
The
Federal Court considered lengthy and detailed evidence in relation to each of
the foregoing instances of anticipation by prior publication and by prior use.
The Federal Court concluded with respect to all of them, except the Trout Lake instance, that the allegation
of anticipation had been made out. The Federal Court made these findings by the
application of the law (which we have held was properly by understood by the
Federal Court) to the factual findings that it made based upon the evidence
before it.
[15]
Despite
the determined efforts of counsel for the appellant, we are not persuaded that
we should interfere with the conclusion of the Federal Court that the ‘525
Patent is invalid on the basis of anticipation, that is to say, that the
subject matter of the ‘525 Patent has been disclosed in such a manner that it
became available to the public in Canada or elsewhere, within the meaning of
subsection 28.2 (1) of the Patent Act, prior to the dates that are relevant for
the purposes of that provision.
[16]
Accordingly,
for the foregoing reasons we would dismiss the appeal.
“C.
Michael Ryer”
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