Patent Cases

Patent claiming the “rigidification” of oil sands tailings found to be an obvious modification of prior art
SNF Inc. v. Ciba Specialty Chemicals Water Treatments Limited , 2015 FC 997

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.

Trademark Cases

Vancouver Community College unsuccessful in passing off action against Vancouver Career College
Vancouver Community College v. Vancouver Career College (Burnaby) Inc., 2015 BCSC 1470

Vancouver Community College sued Vancouver Career College for passing off its trademarks, including the mark VCC. Vancouver Career College would advertise using VCC in conjunction with its full name, and this included buying the VCC Google AdWords.

Although much evidence was provided to the Court, including evidence that the TMOB refused to allow the defendant to register as a trade mark citing confusion with the plaintiff, passing off was ultimately not made out in this case.

In terms of internet searching, it was found that a web searcher is not taken automatically to a website, rather the searcher can review the search results, click through to a website, then choose to move forward or perhaps try another website.

It was held that the “first impression” does not arise on a Google AdWords search at an earlier time than when the searcher reaches a website, and it was found that the searcher would not be confused by the defendant's website.

The Court also noted that a prospective student must attempt to enroll at the defendant's college in person, attend an interview, take a tour of the campus, and complete a number of forms, all of which have the defendant's name printed on them. Therefore, no basis for confusion was found.

Other Industry News

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Adrian J. Howard


Intellectual Property