Gemak Trust v Jempak Corporation 2022 FCA 141 Mactavish JA: Gleason, Roussel JJA revg Gemak v Jempak 2020 FC 644 Lafrenière J
In the decision under appeal Lafrenière J granted summary judgment dismissing Gemak’s action for patent infringement against Jempak. My last post dealt with the FCA’s holding that Lafrenière J erred in deciding the matter on a motion for summary judgment. While that was sufficient to dispose of the appeal, the FCA went on to hold that Lafrenière J also made two further errors, namely an error of law in assessing the common general knowledge, which Mactavish JA chose to address in order to provide guidance in future cases [92], as well as error in assessing testing evidence.
Common General Knowledge
On the first point, in a passage quoted by Mactavish JA [94], with emphasis added, Lafrenière J stated that in assessing the common general knowledge:
[FC 97] The Court must assess what knowledge the skilled person would have obtained through a diligent search conducted using the means available at the relevant time.”
Focusing on the emphasized phrase, Mactavish JA pointed out that there is a well-established distinction between the prior art—any matter available to the public, no matter how obscure [97]—and the common general knowledge, which is more limited than the entire prior art, and indeed does not even encompass all information available to the skilled person.*
Mactavish JA then held that it was an error to apply the concept of a reasonably diligent search to the common general knowledge:
[99] The requirement of the reasonably diligent search has been applied - not with respect to the identification of the common general knowledge of the POSITA - but rather with respect to the discoverability of prior art relevant for the purpose of the obviousness or anticipation analyses: see, for example, E. Mishan & Sons, Inc. v. Supertek Canada Inc., 2015 FCA 163 at para. 22.
As a preliminary point, Mishan v Supertek was an obviousness case, and, so far as I know, the the requirement of the reasonably diligent search has never been applied in the context of anticipation; it has long been accepted that all prior art is relevant to novelty (subject to historical restrictions restricting foreign prior art to printed matter, presumably for evidentiary reasons, which were removed by the new Act in 1993). The concept of a reasonably diligent search had been applied in the context of obviousness, though, as Mactavish JA went on to note, that was changed by Hospira 2020 FCA 30, so that all prior art is now potentially potentially relevant for the purpose of the obviousness analysis [99]–[100]. (To be clear, that is not to say that all prior art is part of the CGK even in the obviousness context.)
Mactavish JA continued:
[100] That said, knowledge that is only discoverable through a reasonably diligent search is not, and has never been, considered to be part of the common general knowledge. The Federal Court thus erred in finding otherwise.
This is a negative definition—it says that information that is only discoverable through a reasonably diligent search is not considered to be “generally known” and so cannot form part of the CGK. This raises the question of whether the CGK excludes information requiring any kind of search. Lafrenière J [FC 97] had begun that paragraph by defining the common general knowledge as being “the knowledge generally known by the skilled person at the relevant time, and includes what the skilled person may reasonably be expected to know and be able to find out.” Mactavish JA [93] quoted this passage as being a correct statement of the law, “at least to the extent that the common general knowledge includes what the skilled person may reasonably be expected to know,” thus casting doubt on the phrase “and be able to find out.” However, in Novopharm v Janssen-Ortho / levofloxacin 2007 FCA 217 [25.3] the FCA defined the CGK as including “what the person may reasonably be expected to know and to be able to find out” (my emphasis). That was recently endorsed by the FCA in Tetra Tech v Georgetown Rail Eqpt 2019 FCA 203 [28]. Mactavish JA cannot have intended to cast doubt on these cases, which were not mentioned.
Further, allowance for at least some degree of search seems necessary. As Laddie J noted in Raychem Corp’s Patents [1998] RPC 31 (Pat) 40:
for something to qualify as common general knowledge it is not necessary to show that all or a majority of the workers in the field knew it, in the sense of having memorised it. For example in the days before the ready availability of pocket calculators, most technicians needed to use log tables for mathematical calculations. Few if any of them could memorise any of the log conversions in such a table yet those conversions would be common general knowledge in the patent sense.
Thus the view that information that can only be found through some sort of search, albeit perhaps very limited, is thus well supported by authority and logic.
This does not imply that the CGK extends to knowledge discoverable only through a reasonably diligent search. Looking up logarithms is routine. Perhaps the CGK includes information that the skilled person would reasonably “be able to find out,” but does not include information that is only discoverable through “a reasonably diligent search.” This distinction would reconcile Mactavish JA’s holding that knowledge that is only discoverable through a reasonably diligent search is not part of the CGK with the FCA decisions in Levofloxacin and Tetra Tech. I have not seen this distinction explicitly made before in Canadian law, but it does have antecedents in UK law.
In Raychem, Laddie J noted that in General Tire [1972] RPC 457 (CA), which remains the leading case on CGK, in Canada as much as in the UK, the Court at 482 described the CGK as being derived from “a common-sense approach to the practical question of what would in fact be known to an appropriately skilled addressee.” Laddie J continued (my emphasis):
The court is trying to determine in a common sense way how the average skilled but non-inventive technician would have reacted to the pleaded prior art if it had been put before him in his work place or laboratory. The common general knowledge is the technical background of the notional man in the art against which the prior art must be considered. This is not limited to material he has memorised and has at the front of his mind. In includes all that material in the field he is working in which he knows exists, which he would refer to as a matter of course if he cannot remember it and which he understands is generally regarded as sufficiently reliable to use as a foundation for further work or to help understand the pleaded prior art.
The notion that the technical background of the skilled person is not restricted to what they would have memorized has been extended to what is sometimes called the secondary common general knowledge. (That phrase seems to have been coined by Arnold J, as counsel in Actavis v Novartis [2009] EWHC 41 (Ch) [128]; while it does not seem to have caught on, even in the UK, it is a convenient term.) As Pumfrey J explained in Novartis v Ivax [2006] EWHC 2506 (Pat) [25]:
It is well settled that the common general knowledge is knowledge that must be attributed to the skilled person, without which the latter may be taken not to be skilled. To it must be added any knowledge that every skilled person should be taken to acquire before he embarks on the problem to which the patent provides the solution, as, for example, the relevant properties of cyclosporin if the problem is to formulate cyclosporin.
As this passage indicates, knowledge that a skilled person would acquire only when faced with a particular problem is not strictly part of the CGK. In KCI Licensing [2010] EWHC 1487 (Pat) [108], Arnold J has described it as “information that, while it was not part of the skilled addressee's common general knowledge, would have been acquired by him as a matter of routine before embarking on the problem to which the patented invention provides the solution.”
So, some information which the skilled person would not have memorized, but would always have readily to hand, is part of the CGK (logarithms), while other such information which the skilled person would acquire as a matter of routine, but only when faced with a specific problem (the properties of cyclosporin), is not part of the CGK. (Always with the proviso that the information must be regarded as a good basis for further action.) Jacob LJ made this distinction in Generics v Daiichi [2009] EWCA Civ 646 [25]:
Of course material readily and widely to hand can be and may be part of the common general knowledge of the skilled person – stuff he is taken to know in his head and which he will bring to bear on reading or learning of a particular piece of prior art. But there will be other material readily to hand which he will not carry in his head but which he will know he can find if he needs to do so (my emphasis).
This distinction may be important in some cases, as Jacob LJ went on to explain at [25]–[28]: in addressing the problem solved by the invention, the skilled person may acquire certain information through routine inquiry, and that information can then be brought to bear on that particular problem. But, unlike the common general knowledge, the skilled person would not have that information at hand in addressing an entirely different problem. If A would be discovered by routine inquiry in addressing problem X, and B would be discovered by routine inquiry in addressing problem Y, this does not mean that it would be obvious to combine A and B to solve problem Z, even though it might be obvious to combine A and B to solve problem Z if both A and B were part of the CGK, strictly defined.
In effect, UK law draws a distinction between two types of information that the skilled person would not have memorized, but which they would find as a matter of routine: there is information which they know is of general usefulness, and which they would apply to any problem, and information which they would only seek out in when faced with a specific problem. The former is part of the CGK, and the latter is not. To draw an analogy, a mechanic might have a toolbox he carries with him to work sites, corresponding to information the skilled person has memorized; then there are tools, such as a hex wrench in a non-standard size, that he does not have in his toolbox, but that he keeps back at the shop, and he knows it is available if necessary, corresponding to logarithm tables. These are both part of the CGK. Then there are special tools to remove a custom fastener on a particular brand of machine. When the mechanic comes across such a fastener, he will know he can readily get it from the manufacturer, and he will know how to use it to fix the machine, without the exercise of any ingenuity on either front; this corresponds to the secondary CGK. But he will not think to combine the special tool for one machine with the special fastener from another machine, to solve a problem he faces on a third kind of machine.
So, at least in English law, there is a distinction between information which the skilled person knows is available as a matter of routine, and information which the skilled person can find without undue burden when faced with a specific problem. The former is part of the CGK and the latter is not.
This may be the kind of distinction Mactavish JA had in mind, though I’m not entirely sure. After all, she seemed to cast doubt on the idea that the CGK includes information that the skilled person would be able to find out, but it is clear that information may be part of the CGK even if the skilled person would not have it memorized. And it is by no means clear that the distinction necessary to reconcile Mactavish JA’s decision in this case with Levofloxacin and Tetra Tech—which is to say the distinction between information the skilled person would be able to find out and the information discoverable in a reasonably diligent search—corresponds to the distinction drawn in UK law. On the other hand, if we consider that the information discoverable in a reasonably diligent search corresponds to the secondary common general knowledge, as that term is used in English law, then it is indeed true that such information is not and never has been part of the CGK.
I must say that it strikes me as somewhat harsh for Mactavish JA to have criticized Lafrenière J on this point. The distinction is “subtle,” at least in the opinion of Kitchin J (now of the UKSC), at first instance in Generics v Daiichi [2008] EWHC 2413 (Pat) [40]. Moreover, the error, such as it was, made no difference in this case. There was no dispute as to the common general knowledge [FC 4], [FC 101], so there is no particular piece of information that was include by Lafrenière J that would be excluded by Mactavish JA’s approach.
Further, it is worth pointing out even if information that is only discoverable in reasonably diligent search is not part of the CGK, that does not imply that it cannot be applied outside the context of obviousness. For example, it is very well established that patent is enabling even if the skilled person cannot practice the invention without carrying out some experiments, so long as those do not require undue effort: see BRP v Arctic Cat 2018 FCA 172 [78]. Presumably the skilled person can also be expected to carry out a routine literature search. When the patent claims a compound that can be made using conventional methods, it is common for the specification to say as much, typically referring to a leading handbook or a journal article for the details of the method. Such a specification is undoubtedly sufficient, even if the ordinary skilled person might have to actually consult the work referred to in order to carry out the synthesis. Suppose the specification stated that the compound could be prepared by conventional methods, but failed to actually cite the leading textbook. The specification would no doubt still be sufficient if the details of the method could be found in the standard textbook that the skilled person would consult as a matter of routine. The parallel with secondary CGK in the obviousness context is exact, as the skilled person attempting to practice the invention in light of the specification is faced with a specific problem, and so can be expected to carry out routine research to address that problem.
So far as I can tell, the distinction between information that a skilled person knows of and would be able to find out as a matter of routine, and information that the skilled person would find out after a search in light of a particular problem, only matters in the context of obviousness, and the problem of combining obscure prior art. The point made by Jacob LJ, that secondary CGK is not CGK strictly speaking, means that two pieces of prior art that are both only secondary CGK cannot be combined to make the invention obvious. This point would be better addressed explicitly, as part of that ongoing discussion, rather than with an abstract definition of the CGK.
*As an aside, Mactavish JA stated that a piece of knowledge only becomes general knowledge “when it is generally known” and “accepted without question” by those skilled in the art [96], quoting from Cefaclor liability 2009 FC 991 [97], which quoted from General Tire [1972] RPC 457 (CA) 482–83, which in turn quoted from British Acoustic Films Ltd v Nettlefold Productions (1936) 53 RPC 221 (Ch) 250. However, as the English Court of Appeal noted in General Tire, 483, in a passage also quoted in Cefaclor liability 2009 FC 991 [97], “accepted without question” may be “putting the position rather high”; the Court of Appeal indicated that “generally regarded as a good basis for further action” is preferable. The “good basis for further action” formulation is now generally accepted: see also Mylan v Eli Lilly / tadalafil 2016 FCA 119 [24]. Nothing turned on the point and I am sure that Mactavish JA did not intend to hold that “accepted without question” is the correct standard, as her focus was on the distinction between the prior art and the common general knowledge; that is, the decision focuses on what it means for information to be eligible to be part of the CGK because it is “generally known”, while recognizing that not all information that is generally known is part of the CGK.
Testing Evidence
Turning to the testing evidence, a key issue was whether Jempak’s detergent pods had detectable levels of carboxymethyl cellulose [CMC] in the coating, which was an essential element of the claims. Jempak’s expert gave evidence that there was no detectable CMC, and this evidence was criticized by Gemak’s expert on the basis that the testing method used by Jempak’s expert was not sufficiently sensitive. Lafrenière J rejected this, partly on the basis that Gemak’s expert did not have experience with the kind of detergent formulations at issue, and consequently he “did not provide an opinion from the perspective of the skilled person of the Patents” [FC 129], [107]. But Mactavish JA pointed out that Gemak’s expert was not construing the claims, but rather was providing expert evidence with respect to the question of infringement. Infringement is a question of fact. In this case, the question was whether or not the coating in fact contained CMC, not whether a person skilled in the art would have been able to detect the CMC as of the date of publication. Consequently, there is no requirement that the testing method used by the expert witness is one that would have been used by the skilled person:“Reviewing courts have . . . endorsed the use of analytical chemistry techniques that would not have been available to a POSITA at the relevant time or that would have been beyond the abilities of a POSITA” [108].
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