Case information

Intellectual property — Patents — Validity — Infringement — Applicants’ patent claiming new method for use of known apparatus used in oil and gas industry, declared invalid for obviousness — Should Sanofi test for obviousness be clarified to avoid hindsight and protect a novel conception even though a skilled person could implement it without difficulty? — Should an invention become “available to public” under s. 28.2(1) of the Patent Act, R.S.C. 1985, c. P 4 if an inventor discloses the invention in confidence, but without written contract? — Should law of common design or acting in concert apply to patent infringement in Canada and, if so, under what circumstances? — Can parties acting in concert escape liability by hiring someone to participate who is not party to whole scheme?

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The applicant, Packers Plus Energy Services Inc. (“Packers Plus”) is a Canadian company that designs, manufactures, sells and uses solid body packers in the oil and gas industry. It owns the 072 patent entitled “Method and Apparatus for Wellbore Fluid Treatment”. The respondents are oilfield service companies that sell and use equipment to complete oil wells, using a method that is alleged to have infringed the 072 patent. The 072 patent discloses a method and apparatus, used in hydraulic fracturing, for selectively sending fluids to specific parts of a wellbore by means of a tubing string, at a pressure high enough to break the adjacent rock formation, enabling hydrocarbons to be released from the fractured formation. According to the 072 patent, the claimed method and apparatus can be used in different types of wellbores. The apparatus used was previously known and had only been used in cased holes. It had not been used in an open hole before it was successfully tried by the inventors of the 072 patent. Packers Plus brought several actions against the respondents for patent infringement — either direct or in concert with others. The trial proceeded against two of the respondents. The respondents counterclaimed that the 072 patent was invalid for previous disclosure or anticipation, obviousness, lack of utility and deficient patent specification. The trial judge dismissed the infringement actions and held that the patent was invalid for obviousness and anticipation. His decision was upheld on appeal.