Supreme Court of Canada Grants Leave to appeal in ProSlide v. WhiteWater
The Supreme Court of Canada has granted leave to appeal and leave to cross-appeal in ProSlide Technology Inc. v. WhiteWater West Industries, Ltd., wherein the Court could address fundamental questions relating to infringement, utility, and overbreadth in Canadian patent law.
The dispute centres on a series of patents relating to waterslide ride technology owned by ProSlide Technology Inc., a Canadian waterslide manufacturer, which alleged infringement by its competitor, WhiteWater West Industries, Ltd. WhiteWater denied infringement and counterclaimed, asserting that the patents were invalid.
Lower decisions
At trial, the Federal Court concluded that certain asserted claims were invalid for overbreadth because they claimed more than the inventors had actually made or contemplated. The Court also found that WhiteWater had not infringed the patents because the accused waterslide products were manufactured outside Canada. However, the Court rejected WhiteWater’s utility challenge and held that the patents satisfied the utility requirement. The Court’s decision is reported at 2024 FC 1439.
On appeal, the Federal Court of Appeal restored the validity of the patents by overturning the overbreadth findings. The Court affirmed that overbreadth remains a distinct ground of invalidity but held that the trial judge erred in applying that doctrine to the patents at issue. At the same time, it upheld the finding of non-infringement and agreed that the patents were not invalid for lack of utility. The Court’s decision is reported at 2026 FCA 59.
The matter is now headed to the Supreme Court.
ProSlide’s Appeal: Infringement
ProSlide, seeks clarification of the definition of what it means to “make” an invention under section 42 of the Patent Act, in circumstances where some of the activities relating to the “making” occur within Canada and some occur outside Canada, and where, through the means of modern technology, the apparatus claimed by the patent is not physically present in Canada at any point.
WhiteWater’s Cross-Appeal: Validity
The issues identified by WhiteWater are related to utility and overbreadth. The Court will be asked to consider:
- what constitutes proper disclosure in the test for sound prediction of utility of a patent; and
- the principle that an inventor is not entitled to a monopoly on more than what they made or contemplated, its existence as a distinct branch of claim overbreadth, and its relationship with the patent bargain underpinning Canadian patent law.
Whatever the outcome, the decision is likely to become a leading authority on several core principles of Canadian patent law.
