Markwell Clarizio LLP

Three Interesting Issues Raised in the NCS/Kobold Patent Action – Part I

Co-written with Dino Clarizio

In a complex patent infringement action involving five NCS patents and one Kobold patent relating to tools and sleeves used in oil well drilling, the Federal Court (per McVeigh J.) held that NCS’s patents were invalid and not infringed, and that Kobold’s patent was valid and infringed by NCS. As a preliminary observation, the Court noted that the parties raised “countless issues” (128 in all) and stated this was detrimental to the aims of the parties and contrary to the general principle of the Court to secure the just, most expeditious, and least expensive outcome of every proceeding.

NCS v Kobold, 2023 FC 1486

This is the first of a series of three posts discussing some of the issues addressed by the trial judge. The three issues we discuss are those that arise less frequently in patent cases. They are:

Topic 1: Priority Dates
Topic 2: Double Patenting
Topic 3: Overbreadth

Topic 1: The Court Decided Not to Re-Assess the Priority Dates Accepted by the Patent Office

When determining the relevant prior art for assessing the obviousness of NCS’s 907 Patent, the Court’s attention was brought to a particular piece of art – the Ravensbergen patent (“Ravensbergen”), that was so-called “intervening art” because it was published between the priority date and the filing date of the 907 Patent. The Court accepted that Ravensbergen disclosed an “almost identical” invention as the 907 Patent, but the issue was whether the claim date was the priority date, thus making Ravensbergen non-citable for obviousness.

The Court began its analysis by reviewing the file history of the 907 Patent and noted that third parties had filed a series of “protests” during prosecution in which Ravensbergen was raised as prior art. An early protest challenged the claim date attributed to the claims because the subject matter of the claims was not supported by the priority application. In response to this early protest, NCS amended the claims, which was then followed by further protests and amendments. But there was no further discussion in the file history about the priority date claimed by NCS.

After its review of the file history, the Court referred to the famous Free World Trust case where the Supreme Court opened the door to the use of patent file histories for issues other than claim construction. However, the Court in the present case said it was “not appropriate to submit a file history essentially to re-argue the same protest in relation to the Ravensbergen publication when the Patent Office issued the patent with [the current] priority dates.” In other words, the Court stated that it was not its role to re-assess the priority dates that were accepted by the Patent Office after due consideration. A claim-by-claim assessment of the priority date belonged to the patent office and could not be re-assessed in an action where the patent’s validity was attacked: “[t]his would amount to an ex post facto prosecution of the patent, and [would be] contrary to the role of this Court.” Furthermore, and in any event, the Court concluded this issue by noting that the parties did not adduce any evidence providing a claim-by-claim assessment, including any expert evidence to assist the Court in assessing the applicability of the priority date.

The Court’s reluctance to re-assess whether the priority date is in fact the “claim date” of the claims of the 904 Patent appears to be at odds with the Federal Court of Appeal’s decision in Hospira v Kennedy Trust, 2020 FCA 30 at paragraphs 58-65 where the Court of Appeal entertained the argument that the claim date could be something other than the priority date.