FCA Upholds the “Reasonably Diligent Search” Standard, For Now

The Federal Court of Appeal in E. Mishan & Sons, Inc. v. Supertek Canada Inc., 2015 FCA 163, dismissed an appeal from the decision of Justice Hughes (2014 FC 326) that found that Canadian Patent No. 2, 779, 882, was invalid for obviousness. The 882 Patent related to an expandable and contractible water hose

One of the Appellants’ allegations on appeal was that the trial judged had erred by including a piece of prior art, the McDonald Patent, which ought not to have been considered as prior art forming the state of the art. In the trial decision, Justice Hughes noted that:

[91] In brief, McDonald was not only findable, but found by those interested in expandable hoses. There is no evidence to the contrary.

The Appellants contended that the test for determining what documents are to included as part of the relevant prior art is not based on whether a document was “findable”, and in particular, the fact that it was found by the Respondent’s lawyer should not lead to a conclusion that it would have been found by the skilled person.

The FCA held that the issue was reviewable as a finding of mixed fact and law, and would not be overturned absent a palpable and overriding error.

The Court affirmed that the test for determining what documents would be included as relevant prior art, as part of the obviousness analysis, was outlined in Apotex Inc. v. Sanofi Aventis, 2011 FC 1486, where Justice Boivin ruled that:

603 […] the prior art must have been publicly available as of the [relevant] date […] – and it must further be locatable through a reasonably diligent search. The burden is on the party relying upon the prior art to establish that it could be found in a reasonably diligent search (Janssen-Ortho Inc. v Novopharm Ltd., 2006 FC 1234, 57 CPR (4th) 6), in this case, Apotex. (emphasis added)

The FCA noted that neither of the parties made any submissions in relation to whether the codification of the test for obviousness under section 28.3 of the Patent Act changed the test for determining what documents would be included as part of the relevant prior art. Therefore, the Court found that it was bound to continue to apply the “reasonably diligent search” standard from Sanofi. However, the Court suggested that:

[21] …Presumably any submissions based on this section would be that the scope of documents that would be included is broader and would include any information that became available to the public and not just restricted to documents that could be found by conducting a reasonably diligent search.

Thus leaving the door open for changing the standard, if it were argued as such.

In coming to its decision, the Court refused to reweigh the evidence. Consequently, the FCA found that it would not interfere with Justice Hughes’s finding that the McDonald Patent would have been found by conducting a “reasonably diligent search”, and therefore formed part of the relevant prior art.

A copy of the reasons may be found here.