SNF Inc. v. Ciba Specialty Water Treatment Limited, 2015 FC 997

Justice Phelan - 2015-08-24

Read full decision. Summary prepared by Alan Macek:

In this impeachment action, the patent, directed to a process of 'rigidifying' waste mineral slurries using polymers, was found invalid. The counterclaim for infringement was settled during the course of trial. Allegations of invalidity were made on the basis of anticipation (prior uses and documents), obviousness, insufficiency of disclosure, claims broader and for containing a false and misleading statement. Based on the expert evidence and looking at the disclosure, the court construed the term 'rigidification' as used in the claims. On anticipation, the Court found no enablement in the patent prior art and insufficient disclosure or supporting evidence of the prior uses. The claims were found 'obvious to try' in view of the patentee's own prior patent. On sufficiency, the Court concluded, "While Scammell did not necessarily focus (or even consider) the tar sands – which arguably means the claims could be broader than the invention made – there is no requirement to claim a particular or all benefits of the invention." Regarding statements made in the patent, the Court found they were not 'material' in the legal sense even though the Court concluded Ciba "deliberately made these statements which it knew (or ought to have known) would mislead." The Court declared the claims invalid and awarded costs in favour of the plaintiff. Dimock Stratton acted for the successful plaintiff.

Decision relates to:


Canadian Intellectual Property