Federal Court of Appeal cultivates high bar to disclosure in anticipation

Agracity appealed from two decisions in which the Federal Court held, inter alia, that various claims of the 021 Patent were not invalid for obviousness, anticipation, insufficiency, or overbreadth and were infringed by Agracity (see underlying liability decision here and costs decision here). The only issues on appeal were whether the claims of the 021 Patent were invalid for anticipation or obviousness.

The 021 Patent addressed flucarbazone sodium, a herbicide that selectively targets specific weeds while leaving surrounding crops undamaged. The disclosure of the 021 Patent acknowledged that flucarbazone sodium was previously disclosed as a herbicide in the pre-existing United States 486 Patent (and corresponding Canadian 636 Patent), but indicated that its properties as a selective herbicide were not known.

Anticipation

Agracity argued that the Federal Court failed to follow the legal test for anticipation that it correctly outlined, and that the properties of flucarbazone sodium as a selective herbicide were already known based on the disclosure of the 486 and 636 Patents.

The 486 Patent disclosed 327 formulation examples of herbicidal sulphonylaminocarbonyl-triazolinone compounds having substituents bonded via oxygen. Claim 10 of the 486 Patent specifically identified flucarbazone sodium. The disclosure of the 486 Patent stated that the claimed substances “act as total or selective herbicides depend[ing] essentially on the amount used”, and that some of the compounds of formula (I) (which encompassed flucarbazone sodium) are suitable for selective control of certain weeds, including monocotyledon weeds of the genus Avena, in certain crops. Avena was identified as a target weed in claims 5 and 7 of the 021 Patent. The 486 and 636 Patents did not disclose the use of herbicides in cereals or wheat.

The Federal Court of Appeal found no reviewable error in the Federal Court’s conclusion that the claims of the 021 Patent were not anticipated. The 486 and 636 Patents did not specifically identify flucarbazone sodium as being among the herbicides with selective properties, only that some of the 327 compounds could be used as selective herbicides depending essentially on the amount used. The Federal Court previously found as a fact that the selective properties of the herbicides of the 021 Patent were due to their chemical structure rather than the amount of herbicide used. Moreover, claims 2-6 of the 021 Patent were specific as to the crop to be treated with the claimed herbicide (cereals or wheat). The 486 and 636 Patents did not disclose the use of herbicides in cereals or wheat. The 486 and 636 Patents did not provide clear directions to the skilled person to choose flucarbazone sodium as a selective herbicide from among the 327 compounds, for which crop, and for which weed genera.

The 486 and 636 Patents merely included or encompassed the claimed invention of the 021 Patent, but did not disclose subject matter which, if performed, would necessarily result in infringement of the 021 Patent.

The Federal Court of Appeal dismissed Agracity’s appeal. A copy of the decision is available here.