Litigants seeking to invalidate claims of a patent invariably
allege that the invention claimed by the asserted patent would have
been obvious to a person of ordinary skill in the art. An
allegation of obviousness typically relies on a mosaic of prior art
combined with the skilled person's common general knowledge to
show that the inventive concept would have been obvious. A recent
decision of Justice Heneghan of the Federal Court has clarified the
extent to which a party alleging obviousness has to particularize
the specific combinations asserted to render the inventive concept
In Crude Solutions Limited et al v. MEG Energy Corp.,
the Defendant had alleged that the inventive concept of the
Plaintiffs' patent was obvious in light of prior art listed in
a schedule to its pleading. The Defendant had particularized which
portions of prior art were being relied upon, but had not provided
the specific combinations of prior art being relied upon for its
allegation of obviousness. The Plaintiffs filed a motion for
further and better particulars to require the identification of
specific combinations or, in the alternative, to strike the
Defendant's obviousness claim.
Justice Heneghan agreed with the Defendant that the combinations
of prior art sought were in the nature of expert evidence and
therefore need not be provided:
I agree with the submissions advanced by the Defendant upon this
Motion, that the information now sought by the Plaintiffs is a
request for evidence, not facts. The "facts" are
represented by the existence of the prior art. The manner in which
various combinations can operate to show that the claims of the 746
Patent are obvious is a matter of evidence, most probably opinion
evidence, in other words, expert evidence.
There is no obligation upon a party to present expert evidence
in any proceeding, although that is the norm in proceedings
involving intellectual property. Justice Heneghan's decision
clarifies the degree to which a litigant must disclose the details
of its obviousness claim at the pleadings stage.
Justice Heneghan's Public Order and Reasons can be found here.
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.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).