In the recent decision of E. Mishan & Sons, Inc. et al. v.
Supertek Canada Inc. et al.2015 FCA 163, the Federal Court of Appeal
confirmed that claim 15 of Canadian Patent No. 2,779,882, which
relates to an expandable and contractible water hose, is invalid as
At trial (2014 FC 326), Justice Hughes dismissed the
plaintiffs' patent infringement claim. He held that the
asserted claims 1, 15, 28 and 42 of the 882 Patent were invalid as
being obvious in view of the common general knowledge and US Patent
No. 6.523,539 ("McDonald"), which relates to an
expandable and contractible hose used in an airplane. The
plaintiffs appealed the finding of obviousness, only as it related
to claim 15, which related to the use of the water hose in a
The Court of Appeal dismissed the appeal. In doing so, it
rejected the appellants' argument that McDonald was not
relevant prior art, and would not have been found by the skilled
person.The trial judge had evidence to support the finding that the
skilled person would find McDonald in a reasonably diligent search,
and did not make any palpable and overriding error in finding that
the hose of the McDonald reference would be considered and readily
adapted by a skilled person to make an expandable and contractible
garden hose.The Court found that it was unnecessary to address the
question of whether the introduction of s. 28.3 of the Patent Act
broadened the scope of what documents are included as part of the
prior art, and in particular, whether a prior art must be findable
by the skilled person in a reasonably diligent search.
The Court also rejected the appellants' argument that the
trial judge did not identify the inventive concept of claim 15 and
that he did not correctly apply the test for obviousness as set out
by the Supreme Court of Canada in Apotex Inc. v. Sanofi-Synthelabo
Canada Inc. 2008 SCC 61. While the trial judge did not explicitly
recite the inventive concept of claim 15 (the use of the water hose
in a garden) as outlined in part (2) of the Sanofi test, his
reasons indicated that he had the inventive concept in mind when he
was considering obviousness. Also, to the extent that the trial
judge may not have expressly identified all the differences between
the prior art and claim 15 as outlined in part (3) of the Sanofi
test, whether these differences were significant is a question of
mixed fact and law, and by not mentioning them the trial judge was
taken to not have considered such differences to be
The Court dismissed the appellants' attack on the trial
judge's reliance on the evidence of the respondents'
expert, based on certain admissions about his own mental abilities
and his opinions on whether the necessary adaptations of McDonald
would render the 882 Patent obvious. The trial judge provided
reasons why he preferred the respondent's expert and did not
accept the evidence of the appellant's expert on the issue of
obviousness.The evidence supported the trial judge's
The appellants had also argued that the Canadian court should
take cognizance of both U.K. and Australian decisions finding the
counterpart patents to the 882 Patent to be valid and infringed.
The Court of Appeal disagreed, finding those decisions to be of
little assistance. The trial judge properly based his decision on
the evidence before him, and the law of Canada, which he expressly
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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