Friday, January 25, 2013

“Obvious to Try” Not Appropriate on the Facts in Wenzel

Wenzel Downhole Tools Ltd v National-Oilwell Canada Ltd 2012 FCA 333 Gauthier JA: Nadon JA; Mainville JA concurring in a separate opinion aff’g 2011 FC 1323 Snider J

As described in my post on the anticipation aspect of the FCA decision, this litigation involved a bearing assembly for use in downhole drilling motors in oil and gas wells. Snider J held that the invention was obvious, invoking an “obvious to try” analysis. I suggested in my post on that aspect of her decision that it was not clear why Snider J felt an obvious to try analysis was warranted, and despite her reference to that doctrine, it did not seem to make any difference to her reasoning. The FCA has taken the same view of this aspect of her decision. While noting that the “obvious to try” approach might in principle be applicable in a mechanical field, depending on the facts of the case [95], the Court, unanimously on this point [108], held that “it was not appropriate to refer to the obvious to try approach in this case” [100]. The FCA noted that the mere fact that the bearing assemblies were tested before use did not mean the field was one in which advances are won by experimentation [99]. Nonetheless, “despite her reference to the ‘obvious to try’ approach, the Judge undertook a careful and objective analysis of the relevant factors referred to in Sanofi,” [106] in coming to her conclusion, which was supported by the evidence [103]. Consequently the FCA affirmed Snider J’s holding that the invention was obvious.

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