Thursday, May 23, 2019

Teaching Away Irrelevant to Anticipation

Aux Sable Liquid Products LP v JL Energy Transportation Inc 2019 FC 581 Southcott J

Recall that the invention at issue relates to a method of adjusting the composition of natural gas for more efficient transportation by pipeline. Claims 1-8 related to the method, while Claims 9-10 claim “a gas mixture, for use in a pipeline,” with specified ranges of the proportion of various gases, as well as specified temperature and pressure ranges. Prior posts have dealt with the state of the art and utility. Aux Sable also raises a couple of points of minor interest regarding novelty in respect of Claims 9 and 10.

In attacking the patent for lack of novelty, Aux Sable relied on prior art disclosing a gas mixture falling within the claimed range. Southcott J noted that the prior disclosure of a point within the prescribed range is anticipatory [90]. Moreover, he held that so long as the prior art provided an enabling disclosure of a point falling within the prescribed range, it was irrelevant that the prior art taught away from the prescribed range [98], [108]. This follows from the basic rule that enabling disclosure establishes anticipation [108], and once that test is satisfied, additional information that might be found in the prior art is irrelevant. As support, Southcott J at [98], [108] cited Snider J’s decision in Schering-Plough 2009 FC 1128 [87] which held that it was irrelevant that the prior art might teach non-infringing formulations.

I’d add only a couple of points. First, I happened to come across this pithy statement to the same effect, by Stafford Cripps KC in argument at trial in Sharp & Dohme Inc v Boots Pure Drug Co Ltd (1927) 44 RPC 367 (Ch) at 378:

“When one is dealing with anticipation, a, single document that tells one what is in the patent specification is sufficient to defeat the patent, even if the other documents say that it is nonsense.

The point was accepted by Astbury J at 395, though not in quite those terms.

The second point is that Southcott J also relied on Merck & Co v Pharmascience Inc, 2010 FC 510, [166]-[168] in which Hughes J held that a claim to the use of finasteride for the treatment of baldness in a dosage of about 1.0 mg, was anticipated by a prior patent disclosing the use of finasteride in a range of dosages, with doses from 5 mg/day to 2000 mg/day disclosed as examples. I must say that in my view Hughes J was very clearly wrong in so holding, in light of the well-established rule of the highest authority that “A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee”: General Tire [1972] RPC 457 (CA) at 486; Free World 2000 SCC 66, [26]; Sanofi 2008 SCC 61, [21]. While I agree that the law as stated by Southcott J was correct, his point was not aided by citing this particular decision.

Turning to a different legal issue, another piece of prior art was a Handbook entitled “Properties of Natural Gases and Volatile Hydrocarbon Liquids.” It was undisputed that this was widely used by those working in the field of transporting natural gas by pipeline [105]. The Handbook disclosed a gas falling within the specified range, but did not expressly state that the gas was for use in a pipeline, which was an explicit element of the claim. JL Energy submitted “that one cannot employ an inference in performing an anticipation analysis” [114]. This submission was no doubt based on the rule that trial and error is permitted at the enablement stage but not at the disclosure stage. Southcott J rejected this submission, noting “the inference represents simply the process by which the Skilled Person’s [sic] employs the CGK to interpret the prior art. Anticipation is assessed based on the prior art as the Skilled Person would understand it, and the Skilled Person can use his or her CGK as part of the analysis” [114]. That must be right – the Handbook, after all, was all about gases for use in a pipeline, and it is a good illustration of the point made by Lord Hoffmann in Synthon [2005] UKHL 59 [32] that at the disclosure stage “the skilled person is taken to be trying to understand what the author of the description meant. His common general knowledge forms the background to [that] exercise.”

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