In the recent decision of E. Mishan & Sons, Inc. et al. v. Supertek Canada Inc. et al. 2015 FCA 163, the Federal Court of Appeal confirmed that claim 15 of Canadian Patent No. 2,779,882, which relates to an expandable and contractible water hose, is invalid as being obvious.

At trial (2014 FC 326), Justice Hughes dismissed the plaintiffs’ patent infringement claim. He held that the asserted claims 1, 15, 28 and 42 of the 882 Patent were invalid as being obvious in view of the common general knowledge and US Patent No. 6.523,539 (“McDonald”), which relates to an expandable and contractible hose used in an airplane. The plaintiffs appealed the finding of obviousness, only as it related to claim 15, which related to the use of the water hose in a garden.

The Court of Appeal dismissed the appeal. In doing so, it rejected the appellants’ argument that McDonald was not relevant prior art, and would not have been found by the skilled person. The trial judge had evidence to support the finding that the skilled person would find McDonald in a reasonably diligent search, and did not make any palpable and overriding error in finding that the hose of the McDonald reference would be considered and readily adapted by a skilled person to make an expandable and contractible garden hose. The Court found that it was unnecessary to address the question of whether the introduction of s. 28.3 of the Patent Act broadened the scope of what documents are included as part of the prior art, and in particular, whether a prior art must be findable by the skilled person in a reasonably diligent search.

The Court also rejected the appellants’ argument that the trial judge did not identify the inventive concept of claim 15 and that he did not correctly apply the test for obviousness as set out by the Supreme Court of Canada in Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61. While the trial judge did not explicitly recite the inventive concept of claim 15 (the use of the water hose in a garden) as outlined in part (2) of the Sanofi test, his reasons indicated that he had the inventive concept in mind when he was considering obviousness. Also, to the extent that the trial judge may not have expressly identified all the differences between the prior art and claim 15 as outlined in part (3) of the Sanofi test, whether these differences were significant is a question of mixed fact and law, and by not mentioning them the trial judge was taken to not have considered such differences to be significant.

The Court dismissed the appellants’ attack on the trial judge’s reliance on the evidence of the respondents’ expert, based on certain admissions about his own mental abilities and his opinions on whether the necessary adaptations of McDonald would render the 882 Patent obvious. The trial judge provided reasons why he preferred the respondent’s expert and did not accept the evidence of the appellant’s expert on the issue of obviousness. The evidence supported the trial judge’s findings.

The appellants had also argued that the Canadian court should take cognizance of both U.K. and Australian decisions finding the counterpart patents to the 882 Patent to be valid and infringed. The Court of Appeal disagreed, finding those decisions to be of little assistance. The trial judge properly based his decision on the evidence before him, and the law of Canada, which he expressly stated.