Litigants seeking to invalidate claims of a patent invariably allege that the invention claimed by the asserted patent would have been obvious to a person of ordinary skill in the art. An allegation of obviousness typically relies on a mosaic of prior art combined with the skilled person’s common general knowledge to show that the inventive concept would have been obvious. A recent decision of Justice Heneghan of the Federal Court has clarified the extent to which a party alleging obviousness has to particularize the specific combinations asserted to render the inventive concept obvious.

In Crude Solutions Limited et al v. MEG Energy Corp., the Defendant had alleged that the inventive concept of the Plaintiffs’ patent was obvious in light of prior art listed in a schedule to its pleading. The Defendant had particularized which portions of prior art were being relied upon, but had not provided the specific combinations of prior art being relied upon for its allegation of obviousness. The Plaintiffs filed a motion for further and better particulars to require the identification of specific combinations or, in the alternative, to strike the Defendant’s obviousness claim.

Justice Heneghan agreed with the Defendant that the combinations of prior art sought were in the nature of expert evidence and therefore need not be provided:

I agree with the submissions advanced by the Defendant upon this Motion, that the information now sought by the Plaintiffs is a request for evidence, not facts. The “facts” are represented by the existence of the prior art. The manner in which various combinations can operate to show that the claims of the 746 Patent are obvious is a matter of evidence, most probably opinion evidence, in other words, expert evidence.

There is no obligation upon a party to present expert evidence in any proceeding, although that is the norm in proceedings involving intellectual property. Justice Heneghan’s decision clarifies the degree to which a litigant must disclose the details of its obviousness claim at the pleadings stage.

Justice Heneghan’s Public Order and Reasons can be found here.