Markwell Clarizio LLP

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

Co-written with Dino Clarizio

This is the second of a series of three posts discussing some of the issues addressed by the trial judge (McVeigh J.) in NCS v Kobold, 2023 FC 1486. The three issues we discuss are those that arise less frequently in patent cases. They are:

Topic 1: Priority Dates (Post #1)
Topic 2: Double Patenting
Topic 3: Overbreadth

 Topic 2: Double Patenting

Each of NCS and Kobold alleged that each other’s patents were invalid for double patenting. The decision raises an issue of importance not only to patent litigators but also to those how prosecute patent applications in Canada: when is a divisional application a “forced” divisional as opposed to a “voluntary” divisional application so as to be a complete defence to a double patenting allegation?

 Kobold’s Double Patenting Attack – “Forced Divisionals”

One of the issues raised in regard to Kobold’s double patenting allegation is the issue of a “forced divisional” application. Section 36 of the Patent Act governs divisional applications, and makes a distinction between a divisional application filed voluntarily by the applicant, and a divisional application filed at the “direction of the Commissioner” (i.e., a “forced” divisional application). The distinction has importance when assessing whether claims of the divisional application are invalid for double patenting in views of the claims of the parent application.

Specifically, Kobold alleged that the claims of one NCS’s divisional patents were invalid for double patenting in view of the claims of the parent application. Justice McVeigh noted that, during prosecution of NCS’s parent application, the Examiner issued requisitions (i.e., office actions) objecting to the claims on file because they were directed to separate inventions. In response to these requisitions, NCS elected to prosecute one group of claims in the parent application and subsequently filed a divisional application containing the other group of claims. Both patents eventually issued.

Kobold argued at trial that the claims of the divisional patent were invalid for double patenting over the claims of the parent patent. NCS responded with two arguments: first that Kobold had not specifically pleaded this double patenting allegation, and second that, in any event, the divisional patent could not be found invalid for double patenting because it was a “forced divisional” that was filed in in direct response to the Examiner’s plurality of invention objection.

Justice McVeigh agreed with NCS’s first response and held that it did not need to decide this issue because the allegation was not pleaded by Kobold. Although that holding disposed of the allegation, Justice McVeigh nevertheless went on to note in obiter that there was no double patenting in any event because the claims of the second patent were not conterminous (i.e., the same as), or obvious in view of the claims of the parent patent. In the course of this discussion, Justice McVeigh dealt with the question of how “forced divisional status” is determined, and whether NCS’s patent was, in fact, a “forced divisional”.

Justice McVeigh began her analysis by reviewing the case law on forced divisionals. She noted that in Abbott FC (2009 FC 648), which followed the Supreme Court’s decision in Consolboard ([1984] 1 SCR 504), the Court held that a divisional patent will be considered forced if the applicant demonstrates that a unity of invention objection was made by the Examiner and the divisional patent was connected to that specific objection. She also referred to the recent decision in Biogen FC (2020 FC 621) in which the Court held that “something more” than a mere unity of invention objection had to be shown to conclude that there was a forced division. (In Biogen FC, the Court held that the filing of a divisional application was “voluntary” rather than “forced” because the unity objection was not a rejection by way of a final action))

Justice McVeigh decided (in obiter) that the preferred approach for determining forced divisional status was an “informed middle ground” between the Abbott FC and Biogen FC approaches. She stated that, to benefit from forced divisional status, an inventor must trace the origin of the divisional patent back to a direction of the Commissioner to divide out claims. The Court found, in the case at bar, that the mere existence of requisitions in the patent file history was insufficient to demonstrate a forced division, but did not say what an applicant must do in order for the divisional to be “forced”.

The consequence of having a divisional patent declared voluntary as opposed to forced is that the claims of the divisional patent are not automatically shielded or immune from double patent attacks. Rather, the claims in the divisional patent must be directed to a different and non-obvious invention compared to the claims in the parent patent.

NCS’s Double Patenting Attack – Construing the Claims

NCS also raised a double patenting attack against Kobold’s patent, arguing that Kobold’s divisional patent was invalid for obviousness-type double patenting over Kobold’s parent patent. The divisional patent was a voluntary divisional of the parent (no argument was raised that it was forced). Thus, the Court had to determine if the claims of the divisional patent were patentably distinct (not obvious) in view of the claims of the parent patent.

The analysis boiled down to claim construction and whether there was an inventive difference between Claim 16 of the divisional patent and Claim 17 of the parent patent. Claim 16 of the divisional patent was construed as covering two “separate and distinct” downhole apparatuses: one with an unsealed annular gap (dependent on Claim 12) and one with an annular barrier seal (dependent on Claim 13). By contrast, claim 17 of the parent patent covered a sliding sleeve subassembly containing a seal arrangement in its annular space.

Justice McVeigh concluded that Claim 16 (as it depended on Claim 12) of the divisional patent was not invalid for obviousness-type double patenting over the claims of the parent patent. The asserted claims of the divisional patent were held to provide a potentially simpler solution and different inventive concept than that claimed in the parent patent.