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Patents - Overbreadth. 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 'overbreadth':A. Overbreadth
[10] At paragraph 145 of the FC Decision, the Federal Court described the legal principle applicable to overbreadth as follows: "“If a claim is broader than (a) what was disclosed or (b) what was actually invented, then that claim is invalid for overbreadth”". As support for this principle, the Federal Court cited two decisions of this Court: Western Oilfield Equipment Rentals Ltd. v. M-I L.L.C., 2021 FCA 24, [2021] 2 F.C.R. 582 at para. 128 (Western Oilfield), and Leithiser v. Pengo Hydra-Pull of Canada, Ltd., 1974 CanLII 2481 (FCA), [1974] 2 F.C. 954 at 965.
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A. Overbreadth
[28] As indicated above, ProSlide argues that claiming more broadly in a patent than the invention made (as distinguished from claiming more broadly than the invention disclosed) is not a proper ground of invalidity. At the hearing of the appeal, ProSlide’s counsel took the Court through the history of the oft-stated principle reproduced at paragraph 10 above that a claim is invalid for overbreadth if it claims more than was disclosed or more than was invented. This principle appears to have its Canadian origin in the Exchequer Court decision in Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning v. The Commissioner of Patents, 1965 CanLII 1102 (CA EXC), [1966] Ex. C.R. 91 at 106.
[29] ProSlide argues that to invalidate a patent claim because it is broader than the invention made contradicts fundamental principles of patent law.
[30] In my view, it is not necessary to enter into a detailed discussion of the fundamental basis for the general understanding of the doctrine of overbreadth. For the purposes of this appeal, it is sufficient to note that this Court has twice recently confirmed the doctrine, both times by my hand: Western Oilfield at para. 128 (cited in the FC Decision), and Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2021 FCA 154, [2022] 1 F.C.R. 40 at para. 50 (Seedlings). In Seedlings, the validity of the doctrine of overbreadth was in dispute.
[31] ProSlide has not acknowledged the requirement that, in order for a Court to override a prior decision, it must find that the previous decision was manifestly wrong, in the sense that the Court overlooked a relevant statutory provision, or a case that ought to have been followed: Miller v. Canada (Attorney General), 2002 FCA 370, [2002] F.C.J. No. 1375 at para. 10. The Supreme Court of Canada has more recently listed circumstances in which a court may refuse to follow its own precedent: (i) the rationale of an earlier decision has been undermined by subsequent appellate decisions; (ii) the earlier decision was reached per incuriam "(“through carelessness”" or "“by inadvertence”"); or (iii) the earlier decision was not fully considered, e.g. taken in exigent circumstances: R. v. Sullivan, 2022 SCC 19, [2022] 1 S.C.R. 460 at para. 75 (Sullivan). I am not convinced that the statements in Western Oilfield and Seedlings noted in the previous paragraph are wrong (manifestly or not) or that any of the circumstances identified in Sullivan apply here. Neither am I convinced that the decisions in Western Oilfield and Seedlings can be distinguished on the facts.
[32] Moreover, I remain convinced that the statement of the doctrine of overbreadth at paragraph 10 above does not conflict with other principles of patent law. As I stated in Western Oilfield at paragraph 129, and quoted in Seedlings at paragraph 50:The concept of claim invalidity for overbreadth (or overclaiming) arises from the combination of the requirements that a patent specification (i) correctly and fully describe the invention (see subsection 27(3) of the Patent Act), and (ii) include “claims defining distinctly and in explicit terms the subject-matter of the invention for which an exclusive privilege or property is claimed” (see subsection 27(4)). One may also consider overclaiming as a natural consequence of the bargain theory of patent law as described in Free World Trust, [v. Électro Santé Inc., 2000 SCC 66, [2000] 2 S.C.R. 1024] at paragraph 13: “[i]n return for disclosure of the invention to the public, the inventor acquires for a limited time the exclusive right to exploit it.” If a patent claims more than it describes, or more than the inventor has made, it gives the patentee more than the bargain entitles them to. Such a claim violates the bargain and is therefore invalid.
[emphasis added] [33] As indicated by the emphasized clause, the foregoing statement clearly applies to the arm of overclaiming that relates to the invention made.
[34] I noted in Western Oilfield that overbreadth often overlaps with other grounds of invalidity, but this fact does not impair overbreadth as a distinct ground of patent invalidity. In a similar vein, I acknowledge that it is not entirely clear how a claimed invention could be broader than the invention made without also being broader than the invention disclosed, but this is not a basis to override consistent jurisprudence.
[35] This observation brings me to another issue with the Federal Court’s analysis of overbreadth. While I recognize that the Federal Court committed no error in recognizing the existence of claiming more broadly than the invention made as being a ground of invalidity, I find that the Federal Court did err in finding in this case that the asserted claims were invalid for being broader than the invention made. Specifically, my concern is that the Federal Court seems to have arrived at a conclusion as to what the inventor contemplated based on (i) testimony of the inventor as to what he contemplated during the development of the patented product (prior to filing the patent application), and (ii) expert testimony as to the perspective of a skilled person concerning this development work, but without regard to the invention as described in the 552 Patent Family.
[36] Despite my acknowledgement that claiming more broadly than the invention made is a distinct ground of invalidity from claiming more broadly than the invention disclosed, it does not follow that the invention made (or contemplated) should be determined without reference to the patent specification. On the contrary, in most cases, it is difficult to imagine a more reliable (and more timely) indication of what the inventor contemplated than the patent specification. The relevant date for assessing the issue of overclaiming is the filing date of the patent application, and that patent application is an explicit and carefully written statement on that date of what the inventor had in mind. The Federal Court did not state that it was ignoring the content of the specification when determining the invention made, but it also did not attempt to explain the apparent conflict between its conclusions as to the features that it saw as key aspects of the invention and the statements in that specification.
[37] As noted at paragraphs 12 and 13 above, the Federal Court found that the four key aspects of the invention made were omitted from the asserted claims. However, each of these aspects is explicitly indicated in the patent specification of the 552 Patent Family as not being essential. Taking each of these aspects in turn:With regard to the feature being part of a water slide, the specification indicates that slides other than water slides are contemplated as follows at page 7: "“[i]n other embodiments, the slide feature 102 may be lubricated with other substances and/or may be formed with a material that does not require lubrication, for example a low friction material”";
With regard to the combination of a non-zero roll angle with a pitch angle of zero, the specification indicates that other combinations are contemplated as follows at page 13: "“[e]ach of the roll angle 196 and the pitch angle 194 may be adjusted to provide a more or less thrilling ride experience”";
With regard to the compounding outer wall, the specification indicates that this feature is not essential as follows at pages 11-12: "“[o]ther embodiments may provide for the sliding surface 120 to have a constant or expanding radius from the inrun 110 to the outrun 112”";
With regard to the substantially planar surface as part of the sliding surface, the specification indicates that this feature is likewise not essential as follows at pages 9-10: "“[t]he sliding surface 120 may have an uneven or textured surface. In some embodiments, sliding surface 120 may be convex or concave, in whole or in part”". [38] WhiteWater does not dispute that these passages disclose possible variations on aspects of the invention that the Federal Court saw as key. Rather, WhiteWater argues that the Federal Court did not err in focusing on the work of the inventor. Fair enough, however, neither the Federal Court nor WhiteWater has explained why the above-cited statements in the patent specification as to variations that were contemplated should be ignored in favour of evidence as to what the inventor had in mind during a time prior to the filing of the patent application.
[39] In my view, the Federal Court erred in finding that the features discussed above were key aspects of the invention whose omission from the asserted claims could lead to a conclusion of overclaiming. I would reverse the Federal Court’s finding that the asserted claims are invalid for overclaiming. . 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 overbreath in challenging a grant:[128] There are two ways that a patent claim can fail for overbreadth (or overclaiming): it can be broader than the invention disclosed in the specification, or it can be broader than the invention made by the inventor: Pfizer Canada Inc. v. Canada (Health), 2007 FCA 209, 60 C.P.R. (4th) 81 at para. 115.
[129] The concept of claim invalidity for overbreadth (or overclaiming) arises from the combination of the requirements that a patent specification (i) correctly and fully describe the invention (see subsection 27(3) of the Patent Act), and (ii) include "“claims defining distinctly and in explicit terms the subject-matter of the invention for which an exclusive privilege or property is claimed”" (see subsection 27(4)). One may also consider overclaiming as a natural consequence of the bargain theory of patent law as described in Free World Trust at para. 13: "“[i]n return for disclosure of the invention to the public, the inventor acquires for a limited time the exclusive right to exploit it.”" If a patent claims more than it describes, or more than the inventor has made, it gives the patentee more than the bargain entitles them to. Such a claim violates the bargain and is therefore invalid.
[130] Overbreadth often overlaps with other grounds of invalidity. For example, a claim that is invalid for anticipation because it encompasses embodiments that are described in the prior art may also be considered overbroad for claiming more than the inventor has truly invented. In addition, overbreadth might be considered the other side of the coin of insufficiency. Where a claim is broader than the description, it may fail for overbreadth, but it may also fail because the description does not adequately describe how to put it into practice. Despite this possibility of overlap, overbreadth is a distinct ground of invalidity that must be considered separately.
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