Calgon
Carbon Corporation v. The
Corporation of the City of Northbay
Federal Court of Appeal: per Rothstein J.A. (Linden and
Pelletier JJ.A., concurring)
December 6, 2005
Facts
[1]
This is an appeal from a judgment of the Federal Court granting the
respondent's (North Bay) motion for summary judgment and dismissing the
appellant's (Calgon) action against North Bay for
patent infringement. The motions judge found that Calgon's patent was invalid because it related only to the unpatentable discovery of a previously unknown advantage of
an existing invention. Because
there can be no infringement of an invalid patent, he granted summary judgment
and dismissed the action.
…
[3] The
patent in suit is Canadian Patent 2331525 (the '525 Patent) which describes a
method for preventing replication of cryptosporidium oocysts
using low levels of ultraviolet light (UV) to irradiate water. Cryptosporidium (crypto) is a protozoa that can cause infection from drinking water. Oocysts are
immature ova (eggs).
[4] Calgon acknowledges that low level UV light to irradiate water has been used
before in water treatment for the killing of bacteria and viruses, but not for
the purpose of preventing replication of the protozoa, crypto. Prior to the '525 Patent,
it was thought necessary to kill or inactivate crypto oocysts
to prevent crypto infection. To do so, high doses of UV light of at least 3,000 mJ/cm2 were required.
[5] The
'525 Patent says that it
has been discovered that it is not necessary to kill or inactivate crypto oocysts to prevent infection. It is only necessary to apply
enough UV light to prevent crypto oocysts from
replicating. The UV light doses required to prevent replication are
orders of magnitude lower than required to kill or inactivate the oocysts. The patent disclosure says that the method
described in the '525 Patent provides a substantial increase in the cost
effectiveness of using UV light in reducing crypto infection from drinking
water.
…
DECISION OF
THE MOTIONS JUDGE
[7] The
motions judge found that the key element of the '525 Patent is "the use of
the system (low doses of ultra violet light) to prevent cryptosporidium oocyst replication".
However, he also
found that the use of this water treatment method was the same as the method
that had already existed and was in use.
The method had been known to eliminate bacteria and viruses. All that had changed is that the same old
method is now known to be effective in the elimination of the danger of disease
due to crypto. Therefore, he found that
the use of the old method to prevent crypto oocysts
replication is a mere discovery and not a patentable invention.
[8]
Applying the decision of the Federal Court Trial Division (as it then
was) in Riello Canada, Inc. v. Lambert (1986), 9 C.P.R. (3d) 324 (F.C.T.D.), the judge stated that the test
for patentability in these circumstances is that there must be a new process,
new result, new product or a new combination for producing an old product or an
old result. He found that the process and product are the same; the result is the same even
though it was previously undiscovered; and because the use of the method
in the '525 Patent for the prevention of crypto oocysts
replication is a mere discovery, it is not a new invention. Therefore, in his
view, the '525 Patent was invalid.
ANALYSIS
Application of
Shell Oil
[9] The starting point is the definition of
"invention" in section 2 of the Patent Act, R.S.C. 1985, c. P-4:
"invention" means any new and useful art, process,
machine, manufacture or composition of matter, or any new and useful
improvement in any art, process, machine, manufacture or composition of matter;
« invention » Toute réalisation, tout procédé, toute machine,
fabrication ou composition de matières, ainsi que tout perfectionnement de l'un
d'eux, présentant le caractère de la nouveauté et de l'utilité.
[10] The
definition of "invention" requires that the art or process be new and
useful. Useful points to practicality as
opposed to theory. New means that there
is a contribution to knowledge, something that was not known before.
[11] In Shell Oil v. Commissioner of Patents, [1982] 2 S.C.R. 536, it was discovered
that known compounds could be put to a new use as plant growth regulators.
Wilson J. explained that the new use for an old compound was an invention
within the meaning of section 2 of the Patent Act. At page 549 she stated:
What then is
the "invention" under s. 2? I
believe it is the application of this new knowledge to effect
the desired result which has an undisputed commercial value and that it falls
within the words "any new and useful art". I think the word "art" in the
context of the definition must be given its general connotation of
"learning" or "knowledge" as commonly used in expressions
such as "the state of the art" or "the prior art". The appellant's discovery in this case is added to the cumulative
wisdom on the subject of these compounds by a recognition
of their hitherto unrecognized properties and it has established the method
whereby these properties may be realized through practical application. In my view, this constitutes a "new and
useful art" and the compositions are the practical embodiment of the new
knowledge.
[12] It
appears that the motions judge distinguished Shell on the grounds that in Shell
the unrecognized properties were new properties, whereas in this case, the
method was old. He stated at paragraph 16:
In Shell Oil, the Supreme Court of Canada
recognized that a patent must establish a, "method whereby these [new]
properties may be realized through practical application". In the instant matter, there is no new
method. The water treatment system still
uses the same "old" method as the existing systems in, amongst other
places, Fort Benton and Trout Lake. The
old method is the same as the new method, as affirmed by Dr. Huffman. Likewise, the results obtained have not
changed: under both the old and the new methods the replication of crypto is
effectively prevented. All that has
changed is that the system of water purification previously used to eliminate
bacteria and viruses has now been shown to be effective as well in the
elimination of the danger of disease due to crypto.
The motions judge was
of the view that the use of an old invention to prevent crypto oocyst replication is a mere discovery, not a new
invention, even if the advantage in respect of crypto was previously unknown.
[13] I have
carefully considered the reasoning of the learned judge but I am unable to
agree with his conclusion. Shell teaches that the discovery of a
new use for an old invention which is capable of practical application is an
invention. At page 549, Wilson J.
stated:
If I am right
that the discovery of a new use for these compounds which is capable of
practical application is an "invention", I can find nothing in the
statute which would preclude a claim for these compositions.
. . .
This is a case
where the inventive ingenuity is in the discovery of the new use and no further
inventive step is required in the application of the compounds to that use,
i.e. in the preparation of the appropriate compositions.
[14] In Shell, Wilson J. relied on the decision
of the English Court of Appeal in Hickton's Patent Syndicate v. Patents and Machined Improvements Co. (1909),
26 R.P.C. 339. The
situation in Hickton's appears very similar to the
circumstances in this appeal.
[15] I
closely paraphrase Wilson J.'s explanation of Hickton's at page 550 of Shell. An applicant had an
idea for equalizing the consumption of thread on lace-making machines by the
process known as "shogging". There was nothing new about "shogging". It
was a technique customarily employed in creating a pattern in the piece of lace
being made. But it had not hitherto been
thought of as a means of equalizing thread consumption. This was done by hand by interchanging the
bobbins. It was clear on the evidence
that once the idea was formed, no further inventive ingenuity was required in
order to put it into effect. The
plaintiff, who had obtained a patent on the idea and on its method of carrying
it out, brought an action for infringement.
At trial, the action for infringement was dismissed on the grounds of
patent invalidity. The Court of Appeal
reversed. Cozens-Hardy M.R. stated at page 347:
When once the idea of applying some well-known thing
for a special and new purpose is stated, it may be very obvious how to give
effect to that idea, and yet none the less is that a good subject-matter for a
Patent.
Wilson J. observed that in Hickton's,
"the English Court of Appeal had found that an idea was patentable not withstanding the lack of any
novelty in its implementation. No further invention was required in putting it
into practice."
[16] A mere discovery, such as a
scientific observation, is not an invention.
If, as an observation, it is discovered that UV light prevents crypto oocysts from replicating, that is a scientific observation
for which no patent may be obtained.
[17]
However, as Hickton's demonstrates, the discovery of a new, useful
application for an existing method is more than a scientific observation. In this case, the patent claims are for a
practical solution to a practical problem.
That is more than a mere discovery.
A scientific observation, on its own, has no practical application. Here, what is useful is the method of using
UV light at particular levels for preventing crypto oocyst
replication. What is new and was not previously known is that
using UV light at particular levels adequately treats water to prevent crypto
infection. Because of this, a
more costly means of producing that desired result can be avoided. That meets the definition of "invention".
[18] To
paraphrase the words of Wilson J. in Shell,
it is the application of
the new knowledge that irradiating water with low doses of UV light prevents
crypto oocyst replication that has commercial value. This new application of an existing process
therefore falls within the words "new and useful art" in the
definition of "invention" in section 2 of the Act. Calgon's discovery has added to the cumulative wisdom in
the use of low doses of UV light in the water treatment process.
[19] There
may be cases in which the use of high doses of UV light, with their added
energy costs, may be avoided or cases in which other methods of treating water
for crypto may be abandoned altogether. As such, irradiating water for crypto
using low doses of UV light, while not a new method itself,
constitutes a newly discovered use for that method and therefore is a new and
useful art.
Anticipation
[20]
Although anticipation was referred to by the motions judge, his decision
to grant summary judgment and dismiss Calgon's action rested entirely on a
discovery not being patentable. He did not decide the summary judgment motion
on the basis that the '525 Patent was invalid by reason of anticipation. The issue of anticipation in this Court was
argued cursorily in the parties' factums and in their oral arguments. Because the motions judge did not decide the question of anticipation
and the arguments in this Court were cursory, I do not consider it appropriate
for this Court to decide that issue in this appeal.
CONCLUSION
[21]
Because I am of the view that the learned motions judge erred in
granting the motion for summary judgment on the grounds that the '525 Patent
was invalid by reason of it being only a discovery, the appeal should be
allowed, the decision of the motions judge should be set aside and the motion
for summary judgment should be dismissed with costs here and in the Federal
Court.