Case Comment
© 2005 Donald M. Cameron,
Ogilvy Renaultcitation(s): (2003) 27 C.P.R. (4th) 385 (F.C.A. Stone J.A., Noël and Sexton JJ.A.concurring) June 2, 2003; online
Case Comment
© 2005 Donald M. Cameron,
Ogilvy Renault
[46] Various pieces of prior art were taken up with the expert witnesses at trial. The respondent's expert, Dr. Thomas Mondshine, was of the view that a person skilled in the art seeking to replace calcium chloride in a drilling mud with another salt would follow a "routine procedure" by first identifying a salt with proper activity capability and then testing "for the activity range that you think is desirable" (trial transcript, Vol. 5, pages 717, l. 17 - 718, ll. 1-3). Dr. Martin L. Chenevert, one of the appellants' expert witnesses, was of a different view. At paragraph 63 of his affidavit sworn September 29, 2000, this witness expressed the opinion that none of the prior publications "show that the invention was made known prior to August 4, 1993" and, in paragraph 64, that no combination of one or more of the patents and publications relied on by the respondent with the common general knowledge of the art prior to August 4, 1993 "would lead a skilled but unimaginative person in the art directly and without difficulty to the solution taught" by the patent. He noted, in particular, that none of the prior art "address[es] the chemically complex subject of introducing a hydrated nitrogen containing complex salt such as ACND into the internal phase of an oil-based mud so that both shale stability and environmentally acceptable mud would be achieved". Another expert witness called by the appellants, Robert L. Garrett, expressed views similar to those of Dr. Chenevert in his affidavit of May 6, 2000. As he pointed out at paragraph 30, damage to the environment from disposal of oil cuttings came to the forefront of public concern during the 1980s. He added in paragraph 31 that, "The inventors discovered a substitute for NaCl or CaCl2 and also one that contained ammonia and nitrate components", and that a "nitrogenous double salt . . .was selected for practical use in an enhanced environmentally improved invert oil mud". He concluded that, "Obtaining patent protection for this type of salt seems proper, because it was new technology that no one had used previously nor had it been suggested in the literature".
[47]The respondent contends that the invention was obvious because Mr. Smith brought it about by the mere application of mechanical skill in the testing he conducted in January 1989 and subsequent literature review. It has been held that where all that is required of an inventor is the application of mechanical skill, inventive ingenuity is lacking: Lightning Fastener Co. Ltd. et al. v. Colonial Fastener Co. Ltd. et al, [1933] S.C.R. 371, at pages 376-377. This Court was basically of the same view in Apotex Inc. v. Wellcome Foundation Ltd., supra, at paragraph 33. The Trial Judge was guided by the decision of the General Division of the Ontario Court of Justice in Bayer Aktiengesellschaft v. Apotex Inc. (1995), 60 C.P.R. (3d) 58 that, unlike as in England, a notional skilled technician in Canada is not required to make enquiries or testing. That decision was upheld by the Ontario Court of Appeal (1998), 82 C.P.R. (3d) 526. As has been pointed out above, there was expert evidence before the Trial Judge to the general effect that the invention was not obvious. This would not have been the case if the invention had been brought about by the mere application of mechanical skill.
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