The Federal Court of Appeal released its decision last week in relation to the Wenzel Downhole Tools Ltd. and William Wenzel (“Wenzel”) appeal of Judge Snider’s decision to dismiss the patent infringement case against National-Oilwell Canada Ltd. et al (“National-Oilwell”) and to invalidate Canadian Patent No. 2,026,630. The Appeal was heard by Justices Gauthier, Nadon and Mainville with the Reasons for Judgement written by Justice Gauthier. The full decision can be found at the following link:
Canadian Patent No. 2,026,630 entitled a “Method of Increasing the Off Bottom Load Capacity of a Bearing Assembly” relates to an assembly for use in a downhole drilling motor used in the oil and gas industry, hereafter the “3103 assembly”.
The Federal Court Decision:
Judge Snider found the ‘630 Patent to be invalid on the basis of anticipation and obviousness. I found the case as it relates to anticipation and what constitutes a public disclosure to be particularly interesting and accordingly have limited my discussion to this point.
Judge Snider found that as a result of the rental and use of a drilling tool incorporating the so called “3103 assembly” the invention claimed in the ‘630 Patent was available to the public before the claim date of the patent and therefore the patent was invalid for anticipation.
It is worth noting that the “3103 assembly”, as acknowledged by Judge Snider in her FC decision, is “encased in a steel tube, and thus a visual inspection of the three units rented to Ensco would not have disclosed their inner workings (particularly of the 3103 assembly).” [See paragraph 26 of FCA decision]. It could however be visualized if the drilling tool was dismantled.
Judge Snider held that as the drilling tool could be dismantled they “were available for more than a visual inspection”. The fact that the rented drilling tools were returned after the rental period intact was not relevant. In her decision, Judge Snider equated rental of a drilling tool containing the steel encased “3103 assembly” to an anticipating description in a library book and that there was no need to show that the “3103 assembly” was examined – the hypothetical disclosure was sufficient.
Judge Snider also “made an alternative finding that the drawing of the “3103 assembly” [available at the start of the rental for a limited period] could be considered as anticipation by publication.”
Federal Court of Appeal Decision:
On appeal, Wenzel argued “that the Judge erred in her application of the law to the facts of the case more particularly by: (i) equating the 3103 assembly with a book on the shelf in the public library ... because the Judge’s conclusion did not take into consideration the accepted evidence that the claimed invention was encased in metal and could not have been and was not observed at the Dilley job; and (ii) failing to consider that there was no evidence that [person of ordinary skill in the art] POSITA was at the site or that such person would have the skills to open the drilling tool to examine the 3103 assembly and discern the invention.” [See paragraph 55 of FCA decision]
Justice Gauthier, in his Reasons for Judgement for the FCA upholding the finding of invalidity, did not agree with Wenzel’s arguments noting, at paragraph 68, that
becoming available means that, the public, as defined earlier, had an opportunity to access the information that is the invention. As previously mentioned, it does not require that one actually took advantage of this opportunity. Once the opportunity is established as a fact ..., the Court applies the legal test for anticipation developed in Sanofi (full disclosure of all the essential elements of the invention and enablement) to the information that the fictional POSITA would derive from the fictional examination.
For a public disclosure to be anticipatory it must give an accurate and complete description of the invention claimed [See paragraph 72].
Justice Gauthier noted that “being available does not require that access to the information be easy, simply that it be possible using known methods and instruments.” [paragraph 69]. The question appears to boil down to is there “an opportunity to access the relevant information”. If there is no opportunity, then there is no public disclosure.
This opportunity presumably would not have been available if contractual obligation between lessor and the lessee (Enzo) prevented examination of the assembly or limited examination of the assembly to those covered by a non-disclosure agreement or if the opening of the joints resulted in the destruction of the assembly. [See paragraphs 77 and 78].
Justice Gauthier found “no need to deal with [Judge Snider’s] alternative finding in respect of the drawing itself”, noting that “[n]othing herein should be construed as an endorsement of her conclusion in that respect. I believe it is unfortunate that Justice Gauthier did not comment on Judge Snider’s findings that the drawings constituted a prior publication as I believe it is unclear if these drawings, on further consideration, would have in fact constituted a publication.
Justice Mainville in his Concurring Reasons disagreed with Justice Gauthier concerning the issue of anticipation although did agree with the obviousness findings and ultimate invalidation of the ‘630 patent. Justice Mainville provides a detailed analysis of the law surrounding anticipation by prior publication, prior oral communication and prior use.
Justice Mainville noted that:
 Anticipation by prior publication requires that the invention be in fact disclosed in written documentation made available to the public, such as patent specifications, journal articles, and trade literature, including instruction and repair manuals and brochures ...
 Since disclosure must be assessed objectively, it suffices that the publication be available for consultation by the public (such as in a public library or over the internet), whether or not the publication has in fact been read: Lux Traffic Controls Limited v. Pike Signals Limited,  R.P.C. 107 (“Lux”) at p. 133. However, private manuscripts which are not publicly available or papers which are kept in filing cabinets or archives not normally accessible to the public do not meet the threshold since such documents are not objectively “available to the public”.
Justice Mainville further noted that:
the elements considered as “publications” by the Judge were the drawing of the 3103 Assembly held by Ken Wenzel at the job site, and the availability of Ken Wenzel for consultation: see paras. 120 to 122 of the Reasons. However, in her assessment of the evidence, the Judge made no factual determination as to whether the drawing amounted to a publication available to the public, or whether any information concerning the 3103 Assembly was actually communicated by Ken Wenzel. She simply equated the possibility of consulting Ken Wenzel – who held the drawing - as amounting to anticipation by prior publication, without first determining whether or not any information was in fact published or disclosed.
Based on testimony, there was no evidence that these drawings were actually disclosed or that Ken Wenzel consulted.
Justice Mainville concluded that:
that an undisclosed drawing does not amount to a publication which is available to the public. There is no analogy here with a published book sitting on a shelf in a public library. In the case of the book, the disclosure can be objectively ascertained by the fact that it is publicly available from a third party, i.e. the public library. In the case of a drawing held by an inventor, public disclosure cannot be objectively ascertained without evidence of it being made available to the public through a deposit in a public library, placing it on the internet, publishing it in a trade journal, etc., or through actual disclosure to a member of the public not otherwise held to an obligation of confidence.”
 A drawing held by an individual, and information held in the mind of an individual, are not in the public domain until such time as they are effectively conveyed to the public...
This case provides further clarity with respect to prior use and what constitutes becoming available to the public. Unfortunately, it did not clarify what constitutes a publication. It will be interesting to see how future cases handle this question.