Obviousness Attack Succeeds: Overbreadth and Wilful Misleading Fail

Valley Blades Ltd v Usinage Pro-24 Inc (Nordik Blades) 2023 FC 1749 St-Louis J

2,856,940 2,965,426 2,992,233 / Segmented Snow Plow Blades

Valley Blades and Nordik Blades are direct competitors in the market for snowplow blades [206]. Valley Blades brought a declaratory action seeking to have Nordik’s 940 patent declared invalid, and Nordik responded with an action claiming that Valley Blades infringed Nordik’s 426 and 233 patents. The patents are all related — the 426 is a divisional of the 940 and the 233 is a divisional of the 426 [46] — and the actions were consolidated Patent [46]. The action was bifurcated and infringement was conceded [7].

St-Louis J found that all the asserted claims were obvious in a very straightforward decision which turned entirely on the facts [88]–[174]. Indeed, that part of the decision was so straightforward that I won’t bother to summarize it. This post will deal with the two other validity attacks, while a subsequent post will address the defendant’s claim under the Trademarks Act s 7(a) for damages for business lost as a result of demand letters sent by Nordik to Valley Blades’ clients.

Overbreath

The first of the other validity attacks was based on overbreadth. In a two part article I have argued that the overbreadth requirement is almost always redundant: Overbreadth in Canadian Patent Law, 33 IPJ 21 and 33 IPJ 147. But the FCA in Seedlings 2021 FCA 154 [50], held that overbreadth is indeed an independent ground of invalidity, and since then parties attacking the patent have been trying to find a way to use overbreadth to launch novel attacks on the patent, so far without success.

In this case, St-Louis J summarized the law of overbreadth as follows:

[175] The law of overbreadth is rooted in the patent bargain; an inventor shall not reap the benefits of an expanded monopoly without a corresponding sufficient disclosure to the public (Seedlings Life Science Ventures, LLC v Pfizer Canada ULC, 2020 FC 1 at para 167).

[178] To identify whether an element goes to the “core of the invention,” the Court ought to consider whether implementing the invention without those elements would require inventive ingenuity (Seedlings FCA at para 63).

This is a fair summary of those decisions, but it is also a fair summary of the sufficiency requirement.

On the facts, Valley Blades argued that the claims at issue were “broader than the invention actually made by [the inventor]. It argues this is because the tapered shape of the Nordik Blades’ blades is not claimed in any of the Disputed Claims” [180]. Valley Blades relied on the inventor’s evidence: “during his examination for discovery in July 2020, [the inventor] was clear that he considered the shape of the Nordik Blades’ blades to be a part of his purported invention” [181]. This passage suggests that Valley Blades was arguing that “the invention” is what the inventor subjectively believed the invention to be. This is an outlandish argument. In the first place, the inventor very often does not know their true invention, because the inventor is not always aware of the complete prior art and so is not necessarily aware of their true contribution. Second, even if the inventor did have a more advanced invention in their head, how can that invalidate the patent they actually were granted? If Sargon invented the wheel, but the idea of a spoked wheel passed through his mind, a patent on the wheel would still be valid. That would be true whether he thought of the spoked wheel either before or after he filed his application for the wheel. It would also be true if he had said to a friend, “My invention is the spoked wheel” after filing his patent; and the same would be true if he had said that before filing the patent.

In response Nordik argued that “nothing demonstrates that the tapered shape is an essential element for the invention to work as claimed in the Nordik Patents” [186]. This seems to be saying that the patent was not overbroad because the claimed invention had utility even without the tapered shape. On this view, overbreadth seems to be a lack of utility argument in a different guise, which, as I explain in my article, is often the case. St-Louis J accepted Nordik’s position, saying “when I factor in all the evidence, I am not convinced on balance that the blades’ tapered shape was an omitted essential element of the invention and that the claims are invalid for claiming more than the invention that was made” [188].

Section 53 Wilful misleading

Valley Blades argued that the patents were invalid for wilful misleading under s 53(1) because some statements in the specifications exaggerated the benefits of the invention [192]. St-Louis J had no difficulty dismissing this attack. She noted that the threshold for establishing wilful misleading is high, and “even assuming that Nordik Blades somehow exaggerated the blade movement, the system’s efficiency, and the blade’s wear-and-tear, I find nothing amounts to the required threshold for statements violating section 53" [197].

In making this argument, Valley Blades relied on Ratiopharm v Pfizer 2009 FC 711, which St-Louis J distinguished on the basis that “the misstatements referred to in Ratiopharm appear considerably more serious—particularly as they relate to pharmaceutical products—than what has been raised against Nordik Blades” [197]. I’d also point out that the FC decision in Ratiopharm is not good authority in any event. While the decision was affirmed on appeal, the s 53 analysis was not. In Ratiopharm 2010 FCA 204 noted that:

[34] Pfizer expressed concern that the trial judge’s determination pursuant to subsection 53(1) of the Act was based on an overly broad interpretation of that subsection. I am of the view that the determination is confined to the unique and particular circumstances of this matter. It has limited, if any, value as a precedent.