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Patents - Inutility. Proslide Technology Inc. v. Whitewater West Industries, Ltd.
In Proslide Technology Inc. v. Whitewater West Industries, Ltd. (Fed CA, 2026) the Federal Court of Appeal considered issues of patent 'utility', here where the cross-appellant was unsuccessful:C. Utility (Sound Prediction)
[19] The Federal Court outlined the legal principles applicable to utility, and the doctrine of sound prediction specifically, at paragraphs 146 and following of the FC Decision. The Federal Court noted that the definition of "“invention”" in section 2 of the Patent Act requires that it be useful. No particular degree or quantum of utility is required; a mere scintilla of utility will do: AstraZeneca Canada Inc. v. Apotex Inc., 2017 SCC 36, [2017] 1 S.C.R. 943 at para. 55. As noted at the beginning of these reasons, utility may be established by either demonstration or sound prediction as of the filing date of the patent application: Apotex Inc. v. Wellcome Foundation Ltd., 2002 SCC 77, [2002] 4 S.C.R. 153 at para. 56 (Wellcome).
[20] The requirements for a sound prediction of utility are set out at paragraph 70 of Wellcome:The doctrine of sound prediction has three components. Firstly, as here, there must be a factual basis for the prediction… Secondly, the inventor must have at the date of the patent application an articulable and “sound” line of reasoning from which the desired result can be inferred from the factual basis… Thirdly, there must be proper disclosure. [21] The issue in the cross-appeal concerns the requirement of "“proper disclosure”".
[22] The Federal Court noted that the skilled person is presumed to have the benefit of their common general knowledge when reading a patent. Therefore, where the factual basis is founded on the common general knowledge and the line of reasoning would be apparent to the skilled person, the disclosure requirement may be met by describing the invention in sufficient detail such that it can be practised: Bell Helicopter Textron Canada Limitée v. Eurocopter, société par actions simplifiée, 2013 FCA 219, [2013] F.C.J. No. 1043 at para. 155.
[23] This much of the Federal Court’s discussion of the legal principles applicable to the doctrine of sound prediction appears to be uncontroversial. However, the following additional statement at paragraph 149 of the FC Decision gives rise to controversy as to whether a heightened disclosure requirement applies to sound prediction:At other times, the factual basis and line of reasoning are not immediately clear without explicit disclosure. In such cases, failure to explicitly disclose the factual basis and the line of reasoning is cause for invalidity due to lack of utility. [24] The Federal Court also noted a dispute concerning the distinction between demonstration of utility and predicted utility. That dispute is no longer in issue, and there is no longer any argument that ProSlide demonstrated utility prior to the filing date of the 552 Patent Family.
[25] The Federal Court noted that WhiteWater bore the onus to show that the asserted claims of the 552 Patent Family lacked utility. In the absence of demonstrated utility prior to the filing date, WhiteWater had to show a failure to meet the requirements for sound prediction of utility. The Federal Court concluded that the asserted claims had the required scintilla of utility in that a rider could enter, traverse and exit the claimed slide feature. It was not seriously disputed that there was a factual basis and a sound line of reasoning to support utility. Therefore, WhiteWater had to show that there was no proper disclosure in the 552 Patent Family.
[26] The Federal Court concluded at paragraph 259 of the FC Decision that the 552 Patent Family’s specifications disclose both the factual basis upon which utility was predicted as well as the line of reasoning, and hence the requirements for sound prediction were met. The Federal Court dismissed WhiteWater’s allegations of invalidity for lack of utility.
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C. Utility (Sound Prediction)
[54] Despite my view that the Federal Court’s conclusion of non-infringement was valid, the issue of utility remains relevant because, as a result of my conclusion on the issue of overbreadth, the validity of the asserted claims now turns on utility.
[55] As indicated above, the Federal Court found that the requirements for a sound prediction of utility were met, and hence the asserted claims were not invalid for lack of utility. By way of cross-appeal, WhiteWater argues that the Federal Court erred on this issue in two respects. Firstly, it argues that the Federal Court misunderstood and misapplied the disclosure requirement for sound prediction. Secondly, it argues that the Federal Court made erroneous findings of fact.
[56] WhiteWater’s first argument concerns the level of disclosure that is required to meet the test. WhiteWater argues that the Federal Court failed to recognize the requirement that the 552 Patent Family specifications disclose the testing that was necessary to predict that the claimed slide features would have utility.
[57] WhiteWater’s second argument is that, quite aside from the first argument, the Federal Court erred in fact in its conclusions that the factual basis for the prediction of utility (computer-aided designs to simulate ride paths and the skilled person’s appreciation that testing using such computer-aided designs was performed) was adequately disclosed. WhiteWater argues that there was no evidence to support such a conclusion.
[58] Much of the parties’ submissions on the first argument (concerning the required level of disclosure) relate to whether a heightened disclosure requirement applies when sound prediction of utility is in issue and, if so, whether such heightened disclosure requirement applies generally or only to inventions related to new uses of known compounds or articles. It is not necessary to answer these questions in this case because (i) the Federal Court applied a heightened disclosure requirement and still found that the disclosure requirement had been met in the 552 Patent Family (see paragraphs 149 and 259 to 261 of the FC Decision), and (ii) as explained in the paragraphs below, I find that the Federal Court did not err in its conclusion that the asserted claims do not lack utility.
[59] Once the legal question of heightened disclosure requirement is removed from the debate, WhiteWater’s first and second arguments on utility overlap considerably. They both concern whether the Federal Court erred in finding that the disclosure of the 552 Patent Family was sufficient to inform a skilled reader of the factual basis for a prediction of utility and the sound line of reasoning from which the desired result can be inferred from that factual basis. Both arguments are based on the evidence and are factually-suffused such that WhiteWater must satisfy this Court that the Federal Court made a palpable and overriding error.
[60] WhiteWater notes that much of ProSlide’s testing to confirm the utility of the inventions of the 552 Patent Family was not included in the specifications. WhiteWater takes issue with the statement at paragraph 259 of the FC Decision that computer-aided designs used to simulate ride paths to test the invention were disclosed in the figures of the 552 Patent Family. It also takes issue with the statement at paragraph 261 of the FC Decision that the skilled reader of the 552 Patent Family "“would appreciate that testing was performed, that it involved computer-aided designs, and that the embodiments disclosed are the result of those tests and designs.”" WhiteWater argues that there was no evidence to support these statements.
[61] I am not convinced that the Federal Court erred in making either of the foregoing statements. With regard to the latter statement, it is important to note the Federal Court’s observation that "“[t]he features claimed are shown not to be fanciful, inoperable, or speculative.”" This is a proper recognition that the threshold for soundness of the prediction is not high, as noted in paragraph 19 above. Moreover, the Federal Court correctly noted that the utility that must be soundly predicted is limited to a rider entering, traversing and then exiting the slide feature.
[62] With regard to the disclosure of testing, the Federal Court correctly indicated that to predict utility it was not necessary to disclose all testing methods that ProSlide had used. It was, for example, not necessary to disclose testing related to safety or enjoyment. As ProSlide argues, the claimed inventions concern slide features, not testing methodologies. . Sandoz Canada Inc. v. Janssen Inc.
In Sandoz Canada Inc. v. Janssen Inc. (Fed CA, 2023) the Federal Court of Appeal considered (and dismissed) an appeal from a dismissed action for 'patent invalidity', here on the ground of lack of utility:[7] On lack of utility, the Federal Court acknowledged the requirement that, at the time of filing the application for a patent, utility must have been demonstrated or the requirements for a sound prediction of utility must be met. It found that, though utility had not been demonstrated, the requirements for soundly predicting utility were met, and hence the lack of utility argument failed. The relevant requirements for sound prediction were identified in Apotex Inc. v. Wellcome Foundation Limited, 2002 SCC 77, [2002] 4 S.C.R. 153 at para. 70 (Wellcome), and correctly cited as follows by the Federal Court, which stated that there must be:A. A factual basis for the prediction;
B. An articulable and sound line of reasoning from which the desired result can be inferred from the factual basis; and
C. Proper disclosure. [8] Of particular importance to Sandoz’ appeal, the Federal Court did not mention the decision of this Court in Eli Lilly Canada Inc. v. Novopharm Limited, 2010 FCA 197, 405 N.R. 1 (Eli Lilly), and the following passage therein:[84] [Wellcome] does not define the threshold required for sound prediction. However, Binnie J. states that more than mere speculation is required (para. 69). He also provides the following indicia:. the requirement is that the claims be fairly based on the patent disclosure (para. 59);
. it must be prima facie reasonable that the patentee should have a claim (para. 60);
. it cannot mean a certainty (para. 62);
. the desired result must be able to be inferred from the factual basis (para. 70). [85] In my view, these indicia signify that a sound prediction requires a prima facie reasonable inference of utility… ....
[14] At this point, it is advisable to look again at the statement in Eli Lilly (on which Sandoz relies), and at Wellcome, which inspired the statement. Clearly, Eli Lilly was not purporting to change the legal test set out in Wellcome. Rather, it was attempting to glean, from the reasons in Wellcome, the appropriate threshold for finding that a prediction is sound. This Court in Eli Lilly expressed the “prima facie reasonable inference of utility” requirement based on cited passages from paragraphs 59, 60, 62, 69 and 70 of Wellcome.
[15] Sandoz also cites several additional passages from Wellcome that indicate what is not sufficient for a prediction to be sound:1. No more than a mere belief that something might be useful (para. 25);
2. Little more than an announcement of a research project (para. 64); and
3. Only a promise that a hypothesis might later prove useful (para. 84). [16] In my view, there is nothing in Eli Lilly that represents any kind of departure from what one would glean from a complete reading of Wellcome. While it is not necessary that the prediction be certain (see Wellcome at paragraph 62), or to a regulatory standard (see Wellcome at paragraph 63), the public is entitled to a teaching that is solid (see Wellcome at paragraph 69) and accurate and meaningful (see Wellcome at paragraph 83), and based not on speculation but exact science (see Wellcome at paragraph 84). . Western Oilfield Equipment Rentals Ltd. v. M-I LLC
In Western Oilfield Equipment Rentals Ltd. v. M-I LLC (Fed CA, 2021) the Federal Court of Appeal considered the patent issue of inutility in challenging a grant:[124] ... The threshold for utility in a patent context is not commercial usefulness. A scintilla of utility will do: AstraZeneca Canada Inc. v. Apotex Inc., 2017 SCC 36, [2017] 1 SCR 943 at para. 55. ...
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