Friday, January 31, 2020

Claims Upheld on the Presumption of Validity

Georgetown Rail Equipment Co v Tetra Tech EBA Inc 2020 FC 64 Fothergill J on remand from 2019 FCA 203 DawsonJA: Pelletier, Webb JJA rev’g 2018 FC 70 Fothergill J
             2,572,082 / 2,766,249

This case is the exception that proves the rule that the presumption of validity rarely plays a significant role in validity determinations.

At trial in Georgetown Rail v Tetra Tech Fothergill J held that Georgetown’s 082 and 249 patents were valid and infringed by Tetra Tech (see here). The FCA reversed, on the basis that Fothergill J had “erred in law by failing to consider and analyze how the skilled worker would have applied the common general knowledge to the prior art” [FCA 13] (and see here). The FCA consequently held the 082 patent and several asserted claims of the 249 patent to be invalid for obviousness [FCA 134]. The issue of validity of the remaining claims of the 249 patent was remitted to Fothergill J.

On remand, Fothergill J found the two broadest claims (Claim 1 and 12), to be invalid for obviousness, but there was insufficient relevant evidence to allow him to conclude that the other remanded claims were obvious [11], [51]. This is apparently because the obviousness of these claims was not a major issue at trial, and “neither Tetra nor Georgetown devoted much time or effort at trial” to elucidating the inventive concept of those claims [47]. “Applying the presumption of validity and the burden of proof,” Fothergill J therefore held that Tetra had not established that the remanded claims were invalid [57].

A granted patent is presumed to be valid, but the presumption is very weak, and is therefore rarely determinative. The presumption of validity was determinative in this case only because of the unusual circumstances surrounding the issue of obviousness for these particular claims.

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