On August 19, 2024, the Federal Court of Appeal (per Locke JA; Woods and Laskin JJ.A., concurring) held that a patent claiming a specific herbicide (flucarbazone sodium) for the selective control of wild oats was not anticipated by two prior patents disclosing genera of herbicides for a variety of uses.
Agracity Crop v. Upl Na Inc – Federal Court of Appeal (fca-caf.gc.ca)
Background
The asserted claims of the patent in suit (742 Patent) were directed to a selective herbicidal composition of flucarbazone sodium (claim 1) for the selective control of weeds in wheat crops (claims 2-3), and a method of using the claimed composition for the selective control of weeds in wheat crops (claims 5-10).
At trial, two prior art patents were alleged to be anticipatory: the 486 Patent and the 636 Patent. Each of these patents was filed by the same company as the patent in suit and named many of the same inventors. The 486 Patent described a genus of Formula I compounds for use as herbicides in a variety of crops. Flucarbazone sodium was claimed (claim 10) and a process for making it was exemplified (examples 79 and 321), but there was no disclosure of its compatibility for specific plants and crops. The 636 Patent also described a genus of compounds and their use as herbicides, including flucarbazone (claim 12), flucarbazone salts (claim 35), and a process for making those compounds (example 79), but did not say that those compounds could be used as selective herbicides in specific crops.
Trial Decision
The trial judge (per Aylen J.) held that the subject-matter of the asserted claims of the 742 Patent was not anticipated (Act, s. 28.2(1)(a)). The prior publications did not disclose that flucarbazone sodium was a specific herbicide or provide “clear and unmistakable direction” to the skilled person to select flucarbazone sodium as a selective herbicide for the control of wild oats and other weeds in crops of wheat from among the genera of potential options. The prior publications also did not enable the subject-matter of the asserted claims because prolonged and arduous experimentation and undue burden would have been required arrive at the invention.
Appeal Decision
On appeal, the FCA affirmed the trial decision and held that the prior publications did not anticipate the asserted claims of the 742 Patent. Even though flucarbazone sodium was among the many herbicides contemplated in the 486 and 636 Patents, and even though those patents state that some of the said herbicides are selective against certain weeds in certain cultures depending essentially on the amount used, the FCA held that this was not sufficient to meet the high bar of the disclosure requirement for anticipation for the following reasons:
- The prior patents did not say that flucarbazone sodium is among the herbicides with selective properties.
- The prior patents attributed the selectivity of the herbicides to the amount used rather than their chemical structure (per 742 Patent).
- The prior patents did not disclose the use of herbicides in the specific crops claimed in the 742 Patent.
A skilled person reading and following the prior patents would not, in every case and without the possibility of error, have been led to the invention claimed in the 742 Patent. The prior patents did not disclose subject matter which, if performed, would necessarily have resulted in infringement of the 742 Patent.
The FCA also affirmed the trial judge on the issue of obviousness. Each asserted claim of the 742 Patent was inventive over the prior art.
Disposition
The appeal was dismissed with costs. Agracity Crop has 60 days to file an application for leave to appeal to the Supreme Court of Canada.