Federal Court of Appeal Upholds Decision Finding Fracturing Patent Invalid

On April 24, 2019, in Packers Plus Energy Services Inc v Essential Energy Services Ltd, 2019 FCA 96, the Federal Court of Appeal (FCA) dismissed the appeal of Packers Plus Energy Services Inc (Packers) from a Federal Court (FC) decision (2017 FC 111) finding Packers’ Canadian Patent No 2,412,072 (the 072 Patent) invalid for anticipation and obviousness and dismissing Packers’ claim for patent infringement. 

The 072 Patent relates to a method for the extraction of hydrocarbons by a process called fracturing. The FC found the 072 Patent invalid due to prior disclosure and obviousness, as previously reported by the E-TIPS® Newsletter here. The FC held that the inventive concept of the 072 Patent did not represent an advance over the state of the art at the relevant time. With respect to infringement, the FC determined that the relevant claims related to a method of fracturing, not the equipment used, therefore selling components of the system did not amount to infringement.

On appeal, the FCA only addressed the issue of obviousness, noting that its reasons should not be viewed as an endorsement of the FC’s findings in respect of anticipation or infringement.  In addressing the issue of obviousness, the FCA first noted that obviousness findings are findings of mixed fact and law, and thus reviewable only if they disclose a palpable and overriding error. The FCA went on to address Packers’ seven arguments relating to the FC’s obviousness findings.  The FCA determined that the FC correctly applied the test for obviousness by asking whether the difference between the state of the art and the inventive concept of the claims could be bridged by the skilled person using only the common general knowledge available to such a person. Therefore the FCA determined that there was no palpable and overriding error and dismissed the appeal.

Summary By: Michelle Noonan