Thursday, September 28, 2023

Another Failed Attempt to Give Independent Meaning to Overbreadth

GreenBlue Urban North America Inc v DeepRoot Green Infrastructure, LLC 2023 FCA 184 Gleason JA: Woods, Mactavish JJA varg 2021 FC 501 McDonald J

2,552,348 / 2,829,599 / Integrated Tree Root and Storm Water System

DeepRoot’s 348 and 599 patents relate to a landscaping system to promote healthy urban trees using a subsurface structural cell system that supports the hardscape (eg sidewalk and paving). At trial, McDonald J held DeepRoot’s patents to be valid and infringed, in a straightforward decision which turned on the facts: see here.

At trial, GreenBlue argued that the patents were overbroad. This argument was dismissed by McDonald J on the facts after a brief discussion [FC 255]–[261]. The FCA decision further illuminates the nature of the argument (my emphasis):

[65] Finally, with respect to overbreadth, GreenBlue asks us to reach a different conclusion from the Federal Court and to find that metal rods, which were not claimed in the two Patents, are essential for the invention to work.

[66] This submission is premised on the assertion that the evidence established that without the metal rods, the invention would not function. In support of this contention, GreenBlue relies on the fact that the load testing report related to DeepRoot’s final commercial product showed that the product failed without the inclusion of the metal rods attached to the lid.

The FCA dismissed the appeal on this point on the straightforward basis that there was evidence to support McDonald J’s finding on the facts [69].

Of more general interest, this is another failed attempt to give some independent content to the concept of overbreadth. In Seedlings 2021 FCA 154, the FCA affirmed that “overbreadth is a distinct ground of invalidity that must be considered separately” [50]: see here. Ever since then, parties attacking a patent have been trying to give some content to overbreadth as a distinct ground of invalidity, largely without success. (The closest thing to success was in Rovi Guides v BCE Inc 2022 FC 1388: see here.) In this case, we see another failed attempt. This kind of argument would traditionally have been framed as inoperability, which is to say lack of utility. No doubt it would have failed if framed that way as well.

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