Case information

Intellectual property – Patents – Validity – Market competitor challenging validity of applicant’s 581 patent – Does test for assessing non-obviousness in Apotex v. Sanofi-Synthelabo, 2008 SCC 61 under s. 28.3 of current Patent Act, R.S.C. 1985, c. P-4 still apply? – Should lower courts first attempt to identify a patent’s “inventive concept” when assessing obviousness and, if so, how is this to be performed? – Does body of prior art that may be set up against a patent in obviousness attack, include all information that could be available to public, or alternatively only that prior art that formed part of skilled person’s common general knowledge?

Case summaries are prepared by the Office of the Registrar of the Supreme Court of Canada (Law Branch). Please note that summaries are not provided to the Judges of the Court. They are placed on the Court file and website for information purposes only.

Ciba Specialty Chemicals Water Treatments Limited (“Ciba”) is the owner of the 581 Canadian Patent for a process used in dealing with waste products created by the operations of the mining industry. The waste product is a water-borne stream of particulate matter, referred to as “slurry”. Mine operators have economic and environmental incentives to recycle this water and to minimize the land area required to dispose of the particulate matter. SNF Inc. (“SNF”) is an American company that manufactures and distributes water soluble polymers and polymer feed equipment used in the processing of slurry. Water can be separated from the particulate matter in a slurry using a paste thickener, a vessel into which slurry is pumped and allowed to stand. The particulate matter settles out leaving a liquid which can be removed and reused. This process can be improved by the use of flocculants. The flocculants used in this case were water-soluble polymers that can accelerate the separation of water from the particulate matter and improve the quality of the recovered water. The 581 patent describes a process that was said to be an improvement on the prior art. It recites that it has been unexpectedly found that the addition of an aqueous solution of polymer to the slurry mixture allows the treated slurry to retain its fluidity while being transferred but to rigidify effectively when it reaches the deposition area. SNF brought an action to challenge the validity of the 581 patent on several grounds, and the patent was declared invalid for obviousness.