The Federal Court of Appeal (per Locke J.A. with Leblanc J.A. and Pamel J.A. concurring) (“FCA”) held that the Federal Court (per St.-Louis J.) did not err in finding that several claims of Nordik Blades’ (“Nordik”) three patents on snowplow blades were invalid for obviousness.
Usinage Pro-24 Inc. v. Valley Blades Ltd., 2025 FCA 4
Background
The parties, Nordik and Valley Blades Ltd. (“Valley”), are competitors in the snowplow industry. Nordik owns three patents for a device that reduces wear-and-tear on snowplow blades when they encounter uneven surfaces. At trial, the Court dismissed all of Valley’s allegations of invalidity except those related to obviousness. The decision is discussed in more detail on our blog; “Snowplow Patents are Snowed Under due to Federal Court Findings of Obviousness”.
Issues
Nordik argued on appeal that the Federal Court erred in finding claims of two patents obvious.
Analysis
Nordik argued that the Federal Court erred in several aspects of its obviousness analysis.
- Did the Court fail to consider an essential feature of the invention?
Snowplow blades that are displaced from their starting position due to contact with an uneven surface or road must return to that position to function properly. The force that returns them to this position is called the “restorative force”. Nordik argued that the Federal Court failed to consider this important feature in defining the inventive concept and thus erred in law.
The FCA held that the nature of the restorative force was not a feature of such importance that it was an error for the Federal Court to fail to discuss it in its decision. Nordik did not adduce expert evidence on the importance of the restorative force, and the patents at issue did not suggest that the inventors considered this to be a central feature of the inventions.
- Did the Court apply the wrong legal test?
Nordik argued the Federal Court erred in law because in one paragraph of its decision it referred to what the skilled person could have done to arrive at the invention, rather than what the skilled person would have done. The FCA disagreed, finding that the Federal Court applied the correct legal test when it discussed what the skilled person would have done multiple times elsewhere in its Decision. The use of the word “could” was likely a “slip of the pen prompted by a witness’s use of that word.”
- Did the Court apply impermissible hindsight?
Nordik contended that the Federal Court impermissibly used hindsight as part of its obviousness analysis. The FCA held there was no evidence of this anywhere in the decision. The FCA further found that Nordik’s examples of hindsight only applied to secondary indicia of non-obviousness. These considerations could not transform an obvious device into an inventive one.
- Did the Court err in its analysis of the dependent claims?
Nordik argued the Federal Court erred in failing to conduct a distinct construction and obviousness analysis of two dependent claims. Nordik pointed out, correctly, that simply because an independent claim is found to be obvious, any dependent claims are not necessarily obvious as well. The subject matter added by a dependent claim could make the whole claimed subject matter inventive.
The FCA accepted that the discussion of the obviousness of the dependent claims was brief and without much substantiation. However, the Federal Court had discussed the features added by the dependent claims at other points in its decision, including in the context of claim construction. This analysis was adequate despite not being expansive.
- Did the Court misunderstand the nature of Combination Patents?
Nordik also argued the Federal Court erred in how it treated Nordik’s argument that the patents at issue were combination patents. Nordik relied on the FCA’s statement in Bridgeview (2010 FCA 188) that “[i]t is not fair to a person claiming to have invented a combination invention to break the combination down into its parts and find that, because each part is well known, the combination is necessarily obvious.”
The FCA agreed with Nordik that the Federal Court appeared to misunderstand the nature of combination patents when it said that “[c]ombination patents are those that combine elements from multiple patented items” [emphasis added]. The FCA held that any elements may be combined, whether they are patented or not, if they achieve a result that is more than a mere aggregation. The FCA also took issue with the Federal Court’s suggestion that combination patents are somehow unusual or rare, when in fact most patent inventions involve a combination of known elements to achieve the claimed result
Despite this confusion, the FCA held that the Federal Court recognized the key point from Bridgeview – that one cannot conclude that an invention is obvious simply from the fact that all of the components were known. The test is not whether each component of a claim is known, but whether it would have been obvious to bridge any gap between the prior art and the claimed invention.
- Did the Court fail to provide adequate reasons?
Finally, Nordik criticized the brevity and adequacy of the Federal Court’s reasons for concluding that it would have been obvious for the POSITA to arrive at the claimed invention. The FCA held that the Court’s analysis of this issue was short because it had addressed the relevant issues elsewhere in its decision. This was not a reviewable error.
The appeal was dismissed with costs. Nordik has 60 days to file an application for leave to appeal to the Supreme Court.