“Flexible set of options” in prior art not so flexible after all

In Steelhead v. Arc Resources, the Federal Court considered the validity of Canadian Patent No. 3,027,085, which related generally to a water-based apparatus capable of liquefication of natural gas. This post focuses on the Court’s discussion on anticipation

Steelhead’s main argument was that a set of options identified in an individual prior publication would not disclose those various configurations for the purposes of anticipation. Steelhead also relied on the principle that there was “no room for experimentation or trial and error at the disclosure stage”, citing Sanofi.

The Court rejected this argument, distinguishing Sanofi from the case at hand as Sanofi was concerned with experimentation that resulted in the discovery of a new use or benefit. The Court found that Steelhead’s expert failed to make the distinction. In assuming that the disclosure of options could not disclose specific configurations, Steelhead’s expert applied the wrong legal standard for anticipation:

[98] In fact, as Arc points out, Canadian case law is now clear that a piece of prior art need not disclose the “exact invention” that is claimed. Disclosure merely requires that the skilled person is able to discern the elements of the claimed invention from the piece of prior art. Selecting one combination from a variety of known options is not novel unless that combination offers a unique benefit that was previously unknown.”

Steelhead’s expert notably acknowledged during cross-examination that a piece of prior art had disclosed a “flexible set of options precisely because of the diversity of uses and benefits they offer. In other words, the configurations disclosed allow a skilled person to accommodate a given project’s specifications.” Steelhead’s expert also admitted that if the law was in fact that the disclosure of options disclosed their various configurations, there would be prior art that disclosed the elements of the 085 Patents’ independent claims.

Separately, Steelhead’s expert also assumed that a piece of prior art could not be anticipatory in the absence of a proof of concept (i.e. a project in an advance stage of design or construction). Applying this assumption, a document that failed to provide a detailed design of the claimed invention would not have enabled the skilled person to perform the invention.

The Court rejected this interpretation, stating:

[104] …[T]his interpretation disregards that the purported invention in this case is itself nothing more than a concept for an FLNG facility – that is the claimed invention. All that is necessary is for the disclosure to allow the skilled person to arrive at that claimed invention without undue hardship. It is not a pre-requisite for that piece of prior art to enable full commercial implementation.

For the reasons outlined above, the Court held the 085 Patent to be invalid on the basis of anticipation. The Court also concluded that the 085 patent was obvious.

A copy of the decision can be found here.