The Federal Court of Appeal Upholds Federal Court’s Deferential Review of Re-Examination Board’s Decision

In Newco Tank Corp v Canada (AG), 2015 FCA 47, the Federal Court of Appeal (FCA) affirmed a decision by the Federal Court (FC) upholding a decision by the Re-Examination Board to reject claims in a re-examination of a Canadian Patent, CA 2,421,384 (the Patent).

Under section 48.1 of the Patent Act, any person can request the re-examination of one or more claims of an issued patent by filing prior art with the Commissioner and paying the required fees. The Commissioner is then required to establish a Re-Examination Board to review the request.

In this case, the Board reviewed the request for Re-Examination of the Patent, which claims the use of waste heat from oilfield pumping equipment to warm stored crude oil, in light of the prior art submitted and concluded that the claims were invalid as being obvious. Newco appealed the Board’s decision to the FC, which upheld the Board’s decision and provided great deference to the Board’s reasoning due to its experience in the field of patents. Particularly, the Board concluded that the reference to inefficient heating under the heading “Summary of the Invention” in the Patent specification was part of the background information, rather than part of the invention claimed and the FC found the Board’s conclusion to be reasonable.

Newco further appealed the FC’s decision to the FCA, submitting that the Board committed an error of law by construing the specification of the Patent as an admission by the appellant that the skilled person would know what “the problem” was, ie the inefficiency with respect to the method apparatus that was used for heating liquid storage tanks at well sites, prior to the issuance of the Patent.

The FCA, however, rejected this argument and concluded that the FC correctly applied the reasonableness standard in reviewing the Board’s decision since the Board’s finding that the common general knowledge of the skilled person included the information presented as background knowledge in the Patent itself was simply a factual finding. The FC correctly held that this factual finding was within the area of expertise of the Board and was therefore deserving of a high degree of deference. It was open to the Board to conclude that the skilled person’s common general knowledge was reasonably described by reference to the language presented as background information in the Patent.