FCA DECISIONS – CONSTRUCTION AND THE SKILLED PERSON

1. FCA DECISIONS – CONSTRUCTION AND THE SKILLED PERSON Ben Hackett

2. Bombardier Recreational Products Inc. v. Arctic Cat, Inc., 2018 FCA 172 • Facts • Trial Decision: • Rider Forward Positions Patents found to be infringed but invalid for a failure to meet subsection 27(3) of the Patent Act • 264 Patent found to be not infringed by Arctic Cat because the impugned snow mobiles did not include an “engine cradle” within the meaning of the claims • Bombardier challenged both of these findings on appeal

3. Bombardier Recreational Products Inc. v. Arctic Cat, Inc., 2018 FCA 172 • Issues addressed by the FCA • Was there a reviewable error in the Trial Judge’s finding that the disclosure of the Rider Forward Positions Patents was insufficient • Did the Trial Judge err in “limiting the ordinary meaning of the term of the art ‘engine cradle’ to the type of engine cradle described in the preferred embodiments section of the 264 Patent”

4. Bombardier Recreational Products Inc. v. Arctic Cat, Inc., 2018 FCA 172 • Construction of “engine cradle” • The general principles of claim construction are well established – Whirlpool, Free World Trust, SCC • “This appeal does not raise any new questions of law in this respect” • The application of such principles “is not necessarily easy” • Subjective intention is not to be considered • Extrinsic evidence of inventor intentions  what the inventor considers to be important • Referring to other patent applications to establish intention • Comparing wording used across different patents

5. Bombardier Recreational Products Inc. v. Arctic Cat, Inc., 2018 FCA 172 • Construction of “engine cradle” • Apart from the specification itself, the only evidence that should be considered is “how the POSITA would understand it in light of his or her relevant common knowledge in the context of the specification of a whole” • The definition of the POSITA was “crucial” • It impacts: • who can opine on how the POSITA would understand the claims • What relevant common general knowledge would be available to the POSITA • What weight can be given to an expert’s opinion

6. Bombardier Recreational Products Inc. v. Arctic Cat, Inc., 2018 FCA 172 • The POSITA included someone who had experience in the field of snowmobile design • Arctic Cat expert Cowley – accepted as an expert in mechanical engineering and vehicle design, including the design of vehicle frames • “Unfortunately, considering the POSITA as defined by the Federal Court, Mr. Cowley’s evidence could not be given any weight” – he could not describe the common general knowledge of the POSITA • No evidence as to haw he would have acquired knowledge to opine on how this POSITA would understand the claims; • He did not meet the characteristics of the POSITA • He did not work on a team that would meet those characteristics • Cowley’s understanding of “engine cradle” was acquired from 33 years working on tractors and large agricultural equipment, not snowmobiles • It was not enough for the expert to have been given the relevant art from the field

7. Bombardier Recreational Products Inc. v. Arctic Cat, Inc., 2018 FCA 172 • The Trial Judge said “very little about the common general knowledge of the POSITA with respect to the engine cradle” • The Trial Judge did not accept an expansive view of “engine cradle” because there were no examples of an “open structure” in the 264 Patent • The FCA • It is not unusual for a disclosure to no include a full review of the prior art and common general knowledge • The configuration in the patent was not the only configuration used in the prior art • The Trial Judge put undue weight on the figures in the patent and the comments relating thereto • Nothing in the patent could justify departing from the understanding of the POSITA with respect to the language of the claim

8. AFD Petroleum Ltd. v. Frac Shack Inc, 2018 FCA 140 • Facts • Certain claims of the 567 patent found to be valid and infringed by AFD • Injunction, accounting of profits and compensation for use prior to issuance awarded • 567 patent related to a fuel delivery system and method for delivering fuel to equipment used in hydraulic fracking • AFD raised “numerous grounds” on appeal, one of which was found to have merit by the FCA

9. AFD Petroleum Ltd. v. Frac Shack Inc, 2018 FCA 140 • Issues addressed by the FCA • The POSITA to whom the 567 patent is directed • The rejection of the assertion of overbreadth • Construction of the terms “automatically operable valves”, “automatic fuel delivery” and “fuel cap” • Rejection of manual hot refueling as a non-infringing alternative

10. AFD Petroleum Ltd. v. Frac Shack Inc, 2018 FCA 140 • The POSITA • Reviewable on a standard of palpable and overriding error • Paragraph 142 – the Trial Judge held that the POSITA “would have some experience designing fueling equipment for … refueling equipment used in fracturing operations at a well site” • This holding was “entirely omitted” from the Trial Judge’s conclusions on the attributes of the POSITA and the summary of the POSITA’s common general knowledge at paragraphs 144 and 154 of the reasons • This plapable error was found to be overriding • The POSITA’s common general knowledge is a “key component” of the obviousness analysis mandated by the SCC • Such knowledge (the knowledge described in paragraph 142) might well have rendered the claimed invention obvious but was not considered by the Trial Judge

11. AFD Petroleum Ltd. v. Frac Shack Inc, 2018 FCA 140 • The FCA remitted the question of obviousness for re-determination in light of the attributes of the POSITA • Construction of the terms “automatically operable valves”, “automatic fuel delivery” and “fuel cap” • Because the Court erred in its consideration of the POSITA, these matters should also be remitted for re-determination

12. AFD Petroleum Ltd. v. Frac Shack Inc, 2018 FC 1047 • The FC has released its decision following the re-determination • To conflate who is the POSITA with what the notional person would know as common general knowledge is mistaken – while interrelated, they involve different criteria • The Court was aware of the requisite criteria of the POSITA in considering the common general knowledge • Clear explicit finding as to the POSITA and the common general knowledge of the POSITA • The amended definition of the POSITA and common general knowledge does not alter the construction of “automatically operable valves”, “automatic fuel delivery” and “fuel cap” • The amended definition of the POSITA and common general knowledge does not materially alter the decision that claims 11-13 are not obvious • The FC decision further considered the impact on obviousness of Ciba FCA and AstraZeneca SCC