Skip to content.

Federal Court of Appeal: No Single or Mandatory Approach to Obviousness; Prior Art Disclosing Multiple Options can Anticipate

When does prior art disclose too many options? A recent decision of the Federal Court of Appeal (“FCA”) has left this ambiguity a live issue, maintaining that if a piece of prior art disclosed a “limited number” of options, each of those is disclosed for the purpose of novelty.

Steelhead LNG (ASLNG) Ltd and Steelhead LNG Limited Partnership (collectively, “Steelhead”) challenged the Federal Court’s decision that invalidated 79 out of 84 claims of their patent. The patent was deemed obvious and anticipated by prior art.[1] The FCA dismissed the appeal.[2]

Steelhead contended that the Federal Court had committed errors of law. The FCA disagreed. The contested errors were not legal errors, but requests for the court to reweigh the evidence and substitute its own judgment.[3] The FCA agreed that the Federal Court could have made a different factual finding at one point of its analysis, but this did not meet the standard of palpable and overriding error.[4]

The court dismissed Steelhead’s argument that the Federal Court erred in law by breaking the claims of the patent into their essential elements and finding those elements in a “list of options” in the earlier works.[5] The Federal Court found that the claimed combination was known because it was one of a “limited number” of combinations disclosed in the prior art.[6] The FCA clarified that “[i]f a piece of prior art discloses a limited number of options for a thing, each of those options is disclosed for the purpose of novelty.” [7] However, the FCA did not specify what constitutes a "limited number", leaving this issue open for future litigation.

Steelhead also argued that the Federal Court's obviousness analysis was flawed, as it failed to consider motivation, the climate of the relevant field, and the time and effort involved in the invention. The FCA disagreed. There is no single or mandatory approach to the obviousness inquiry, and while the considerations raised by Steelhead LNG can be relevant, they are not necessary.[8]

Ultimately, Steelhead failed to establish that the Federal Court had erred in its decision and the appeal was dismissed.[9]

___

[1] Steelhead LNG (ASLNG) Ltd. v. ARC Resources Ltd., 2024 FCA 212 at para. 1 [Steelhead].

[2] Steelhead at para. 11.

[3] Steelhead at para. 3.

[4] Steelhead at para. 9.

[5] Steelhead at para. 5.

[6] Steelhead at para. 6.

[7] Steelhead at para. 5.

[8] Steelhead at para. 8.

[9] Steelhead at para. 10-11.

Authors

Subscribe

Stay Connected

Get the latest posts from this blog

Please enter a valid email address