Wenzel Downhole Tools Ltd v National-Oilwell Canada Ltd 2012 FCA 333 Gauthier JA: Nadon JA; Mainville JA concurring aff’g 2011 FC 1323 Snider J (blogged here)
The decision of the FCA in Wenzel Downhole Tools illustrates the difficulty of determining when a prior use of an invention make that invention “available" to the public so as to be anticipatory prior art.
The ‘630 patent was for a bearing assembly for use in downhole drilling motors in oil and gas wells. The prior art was the so-called 3103 bearing assembly. It was found as a fact at trial, and accepted on appeal, that the 3103 bearing embodied all the essential elements of the ‘630 patent, so that it would have infringed if it had been used after the ‘630 patent had issued [FC 102]. Prior to the filing date of the ‘630 patent, three 3103 bearings had been rented by their developer to a drilling company and used on a drilling job in Texas. The bearing assembly was enclosed in a metal casing giving no hint of what was inside. Had the user opened the casing and inspected the assembly, it would have been able to discern the essential elements of the invention . However, it would not have been usual or easy for the user to open the casing and on the facts the user made no effort to do so . The question was whether this was enabling disclosure, or, as the Act puts it, whether this made the invention “available to the public,” so as to anticipate the ‘630 patent. It was undisputed that the user “was free at law and in equity to use whatever information was available from the product it rented” , so that the user qualified as “the public.” The question therefore was whether the invention had been “made available.” Snider J at trial thought it had, and Gauthier JA, for herself and Nadon JA agreed. Mainville JA, however, penned a strong dissent on this point. (Mainville JA concurred in the result on the ground that the invention was obvious; the Court unanimously agreed with Snider J that issue.)
The Court was unanimous that the test for anticipation is objective; so long as the invention was “made available” to the public, it does not matter whether anyone actually accessed the information , , ; following Baker Petrolite 2002 FCA 158 [42.6]. The question was whether the degree of difficulty of accessing the information is relevant at all, and if so, what degree of difficulty is required to make the information unavailable. Gauthier JA held that the use was anticipatory:
 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 [of a car], 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.
In her view the test is “whether, in this case, there was an opportunity to access the relevant information during the rental” [74, original emphasis], .
Mainville JA disagreed . He accepted that the book in a library would anticipate, even if it was in a dark and dusty corner, but not if it was kept in a locked filing cabinet . With respect to the “lifting up the hood” analogy, he noted that it took special tools to take apart the assembly at the drill site, and the evidence was that this was never done in practice . Qualitatively, then, inspecting the bearing assembly is not equivalent to lifting the hood of a car. Thus, as a practical matter, the invention was not available to the public.
It is not entirely clear to me whether the difference between Gauthier JA and Mainville JA turned on whether difficulty of access is in principle irrelevant, or whether it is simply a matter of whether, on these facts, access was difficult enough that the threshold for “availability” was surmounted.
The tenor of Gauthier JA’s opinion suggests that she viewed the point as one of principle. For example, she stated that “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” . This indicates that difficulty of access is irrelevant in principle. The same is true of her example, quoted above, of the Japanese book in the remote library, where no translator is available. I find such an extreme position difficult to accept. In Bauer 2010 FC 361 aff’d 2011 FCA 83, Gauthier J herself held that hockey skates were not made available to the public when they were used in an arena that was 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” . What if one of the spectators had asked one of the players (who were all bound to confidence) to see the skate, and the player had handed it over for 30 seconds and then taken it back? Suppose it was not possible for the spectator to discern the invention without taking the skate apart, with tools that she did not have in her possession. Would we say the invention was available to the public? I think not. I might say the skate was available to the public, but the skate was not available for inspection, and without the possibility of inspection, the invention itself was not available to the public.
Similarly, suppose the 3103 bearing assembly was not designed to be repaired, and it was enclosed in a seamless casing that could not be opened without destroying the bearing assembly inside. In that case, I think Gauthier JA would accept that the invention had not been made available. Suppose then that the casing was locked with a high-security lock that could only opened with specialized safe-cracking tools, and that the user was not given a key. Does this make the invention “available” to the public, simply because it is now possible, at least in principle, for the user to crack the safe, and it is not legally prohibited from trying? My intuition is that the invention is not “available” if it is protected by a high-security lock. Again, I might say that the bearing assembly was available to the public, but it was not available for inspection, and consequently the invention was not available to the public. If we accept that, a series of intermediate cases can be constructed. What if the casing could only be opened with specialized tools, uniquely designed for that casing by the developer, and possessed only by the developer? This seems parallel to the case of the high-security lock. What if the casing was locked with a low security lock, that could be defeated by a competent locksmith, but not by the user? What if the case could only be opened with specialized tools that were publically held by any repair shop, but not by the user? The last example, is, in effect, the facts of this case.
If I am right that Gauthier JA would accept that a bearing in a high-security casing would not be “available” to the public, then the difference between her and Mainville JA is not as to whether difficulty of access can ever be relevant, but whether on the facts of this case access was sufficiently difficult to cross the threshold of availability. This view is certainly consistent with Mainville JA’s opinion, and while it does not accord with Gauthier JA’s statements of principle, it does appear to be consistent with her handling of the facts. In particular, as quoted above, she characterized inspection of the bearings as being “a bit more tedious than lifting a hood,” whereas Mainville JA considered it to be very far removed from lifting a hood . On this view, the difference between them simply illustrates, once again, that the law has to draw lines, and there will inevitably be disputes as to where exactly the line should be drawn. As Dr Fox has said, it is “obvious that exact, universally-applicable rules” for determination of when a prior use has had been made available to the public, “cannot be supplied.” (4th p 111).
This conclusion is familiar in law, but it is not satisfactory if a clearer rule can be found. I suggest that a purposive interpretation of the Act may provide some guidance. It is well-accepted that the purpose of the patent system is to spur innovation for the social good, and while patents provide an important incentive for innovation, the patent monopoly raises costs and restricts dissemination as compared to a competitive market. If the invention would not have been developed but for the lure of the patent, we need not worry about this trade-off – a competitive price is no bargain for a product that doesn’t exist. The trick is to avoid granting patents for inventions which would have been developed in any event. The most direct doctrinal mechanism for ensuring this is the non-obviousness requirement, which, in principle, can be used to “weed out those inventions which would not be disclosed or devised but for the inducement of a patent” Graham v John Deere Co383 US 1 at 11 (1966). The problem is that non-obviousness is notoriously difficult to apply. No one supposes that it is always applied successfully to invalidate all patents for inventions that would have been developed in any event. The novelty requirement can serve as a useful backup. While novelty alone is insufficient – an invention might be a new but simple extension of technology whose time had come – it can provide a clear minimum standard. From this perspective, the rationale for the novelty requirement is that the best possible evidence that an invention did not require the lure of a patent, is that it was in fact made available to the public without the lure of a patent.
This explains why a book on a shelf in a public library anticipates, no matter how obscure the shelf. The point is not that the obscure book actually put the invention within the practical grasp of the public, but rather that the author of the book was happy to place it on the public shelf without asking for a patent in return. This shows that the lure of a patent was not necessary to call forth the invention. (The problem with this from an innovation policy perspective is that a patent might be required to commercialize the invention, even if it was not necessary to devise the invention in the first place, but for better or for worse, patent law has traditionally focused on promoting inventions, rather than promoting innovation.)
This purposive analysis implies that the intent of the prior inventor might be relevant. So, if a book was placed on a public shelf, but it was intentionally misfiled in order that no one could find it, this might show that the prior inventor was not willing to allow access without the reward of a patent. Of course, introducing an explicit intent requirement into any area of commercial law is undesirable because it generates uncertainty, but an objective test that is a proxy for intent might be used. So, we might have a rule that an invention is not considered available if, in the ordinary course of its use, it would require undue effort for a member of the public to inspect the invention. (There are some parallels here with the concept of a “technological protection measure” found in the Copyright Modernization Act s 41.)
I think this is consistent with Rothstein J’s statement in Baker Petrolite, which turned on reverse engineering of a product that had been on public sale, that “[t]he amount of time and work involved in conducting the analysis is not determinative of whether a skilled person could discover the invention. The relevant consideration, in this respect, is only whether inventive skill was required” [42.7]. This makes it clear that the mere possibility of reverse engineering is not enough to make the invention available; the degree of difficulty of that reverse engineering is also relevant. His statement that “the amount of time and work” is not determinative must be read in context; it is not determinative if it falls below the threshold of invention, but once it exceeds that threshold, it is determinative. The concept of “undue effort” with respect to physical access, corresponds to inventive skill with respect to the ‘intellectual’ access in reverse engineering. Of course, “undue effort” is not a bright line, but inventive skill is a bright line only in principle, not in practice.
In this case, the direct evidence that the prior inventor was not concerned about keeping his invention secret  supports the majority position. But suppose the facts were exactly the same, except that the prior inventor testified that he was thinking of seeking a patent, and he only rented out the bearing assembly because he knew that as a practical matter there was no realistic possibility that the user would open it for inspection. That would suggest, from a purposive perspective, that the prior use should not have been anticipatory. If we do not want to consider evidence of intent, in order to keep the test objective, then these two scenarios are indistinguishable, and this case is very close to the line.
In summary, while Gauthier JA stated that the test is simply whether there was an opportunity to access the relevant information, I am not sure that such a bright line will hold in a case in which the practical access is substantially more difficult. I would suggest that a test of whether access for inspection requires undue effort might be more appropriate. Such a test would be consistent with the prior case law, in particular Baker Petrolite, and it would also be consistent with the majority decision in this case, at least on the particular facts.