SNF commenced an action to impeach Ciba's process patent that claims rigidifying a material whilst retaining the fluidity of the material during transfer, a process used on the tailings in the oil fields around Fort McMurray. A counterclaim for infringement was settled during the course of the trial.
Although the prior art was not found to anticipate the invention, the Court held the patent to be invalid for obviousness. This invention was found to be a variation of what was known. It was also found that it would have been obvious to try to determine the effective amount of polymer to achieve the necessary outcome and to discontinue polymer application once overdosing occurred.
Although “rigidification” is a key word in the claims, the Court noted that there was no definition for it in the patent, nor was it a term of art. Ultimately the Court came up with its own definition which was based upon the expert evidence.
Using the Court's definition of “rigidification”, the patent's disclosure was found to be sufficient. However, if the patentee's definition, “rigidification occurs when one obtains the result one desires” were used, the Court would have held the patent to be insufficient.
The patent was not found to be overbroad, contrary to the argument that the inventor had never been to the oil sands so the invention's purported applicability for use in the oil sands must have been broader than what was invented. In holding the patent to not be overbroad, the Court described that the invention has broad application and it was intended for use in several different industries.
The Court found that some of the statements in the patent disclosure were misleading in that they were made to make the invention look like something new and different when it was known that it was not. However, the patent was not found to be invalid pursuant to section 53 of the Patent Act because the statements were not considered to be material.
A decision upholding the validity of a similar patent by the Australian Federal Court was commented on, but not followed. The Australian patent was an innovation patent, a type not existing in Canada, and the applicable laws and evidence were different in Canada.