Summary – On April 7, 2014, the Federal Court delivered its decision in Mishan, in which claims 1, 15, 28 and 42 of Canadian Patent No. 2,779,882 (the ‘882 patent) to the Plaintiff were invalidated for being obvious in view of the state of the art. The Plaintiff’s infringement action was dismissed and matters relating to its Canadian Registered Design No. 146,676 and issues under the Trade-mark and Competition Acts have been bifurcated and deferred to a later date.
Analysis – The ‘882 patent relates to an expandable hose which is compact when stored, but when water pressure is applied, expands to about two and half times its length and retracts to its original length when the water pressure is removed. Independent claim 1 recites, among other elements, an “expanded condition” of the hose, the hose contracting to a “substantially decreased or relaxed length”, and a water flow restrictor that creates an “increase in water pressure between said first coupled and said second coupler within said hose”. It is important to note that, independent claim 1 was amended during prosecution to recite “a water hose” while the specification described a hose that could be used for gases and other liquids.
The Court found that claims 1, 15, 28 and 42 were obvious in view of U.S. Patent No. 6,523,539 to McDonald. Despite McDonald being directed to a “Self-Elongating Oxygen Hose for Stowable Aviation Crew Oxygen Mask”, the Court concluded that a person skilled in the art would have discovered McDonald. The Court agreed with the expert for the Defendant determining that McDonald disclosed all elements of the claims, including the restrictor (the hose in McDonald has a regulator and gas mask attached to a free end) but with the exception of the hose being used to convey water (the hose in McDonald is for air or oxygen).
The Court found that the person skilled in the art (an engineer or technician with experience in the manufacture, supply and/or use of hoses for various types of fluids) would “readily find and adapt the McDonald patent hose for use as a water hose such as a garden hose” [para. 143]. Furthermore, the Court determined that the regulator and gas mask assembly in McDonald is a restrictor given that a restrictor was construed as “anything that restricts the flow of fluid within the hose” [para. 138] based on the specification of the ‘882 patent. Secondary factors supporting a finding of non-obviousness were raised including motivation to create a simple, inexpensive garden hose and commercial success; however, the Court determined that motivation and success alone do not “mean that there was, in the objective sense, an invention” [para. 144].
In contrast, in foreign litigation concluded in the United Kingdom ( EWDC 4098), it was determined that the person skilled in the art (a garden water hose designer) presented with McDonald would not be confident the idea presented by McDonald would be practical if applied to garden hoses and found the claims to be inventive over McDonald. The UK Court stated that “the teaching [in McDonald] is concerned with something used in an environment and context a very long way from garden water hoses and subject to considerations which the garden water hose designer would know they knew little about”.
Practice Point – This was a fairly straightforward patent case that turned on the specific facts thereof. However, there are a couple of points to note from the Court’s decision. Firstly, despite Applicants narrowing the claims to specifically claim a water hose, the Court found that adapting the air hose of McDonald would have been obvious to a person skilled in the art. While contrasting conclusions in Canada and the United Kingdom were due to the identification of different skills attributable to the person skilled in the art (i.e., an expert in hoses for various types of fluids versus a garden hose designer) Applicants are reminded that, depending on the person skilled in the art identified during the obviousness inquiry, narrow claiming (e.g., a water hose) may not necessarily remove relevant art (e.g., an air hose) from consideration by the Patent Office or the Court. Secondly, the Court noted that “The case was essentially one of obviousness having regard to McDonald, had the Defendants restricted their case essentially to that issue, the length of the trial and related matters such as discovery could have been much reduced” [para. 162]. Due to the number of unsuccessful issues raised, the costs awarded to the Defendants were reduced by fifty percent. This is a reminder to litigants that cases should be restricted to only the real issues.