Friday, February 16, 2018

FCA Affirms that Dead Application is Dead

University of Alberta v. Canada (Attorney General) 2018 FCA 36 Near JA: Webb, Laskin JJA aff’g 2017 FC 402 Russell J
            Application 2,804,560

S 37 of the Patent Rules provides that a patent application “must contain. . . a declaration that the applicant is the legal representative of the inventor.” The ‘560 application, filed by an agent on behalf of TEC Edmonton, had no such declaration. CIPO timely issued a requisition to TEC’s agent. TEC’s agent did not respond do that requisition or to a subsequent notice of abandonment, which stated that the application could be reinstated within a further 12 months pursuant to s 73(3). TEC then assigned the its right in the 560 Application to the University of Alberta, and a new agent was appointed, but the new agent did not respond to the original requisition or to the Notice of Abandonment. Two years after the requisition was issued, the 560 application was marked as dead, meaning that the time for reinstatement had passed. A year after that, the University of Alberta filed a petition effectively asking CIPO to reinstate the ‘560 Application. CIPO refused on the basis the 560 application was beyond the period of reinstatement. As discussed here, Russell J refused. The University appeal to the FCA, which, unsurprisingly, affirmed. The FCA did hold that Russell J had erred in holding that the appellants were seeking judicial review of the requisition, and consequently the FCA held that CIPO’s decision should be reviewed on the merits [15]. That did not help the applicant, because the FCA held, on a straightforward reading of the relevant provisions, that the application was deemed abandoned once the applicant failed to timely respond to the requisition [23], and CIPO has no discretion to reinstate a patent application once it is deemed abandoned and the period for reinstatement has passed [24].

Patentable Subject Matter when the Inventive Contribution is an Algorithm

Georgetown Rail Equipment Co v Rail Radar Inc 2018 FC 70 Fothergill J
             2,572,082 / 2,766,249

In Georgetown Rail v Rail Radar Forthergill J held that Georgetown’s 082 and 249 patents were valid and infringed by Tetra Tech EBA Inc. (Rail Radar Inc was the first named defendant, but it did not participate in the proceeding, its status is unknown, and Georgetown did not seek relief against it.) The decision, including the main validity attack, based on obviousness, turned entirely on the facts.

The patents related to an automated system and method for inspecting railroad track using a laser, camera, to collect information about the railroad track, plus a processor to analyze the information according to a specified algorithm [16], [31]. The individual components were known, and there was no suggestion of inventive ingenuity in adapting those components to implement the algorithm. Forthergill J accepted the patents were inventive “only in respect of their algorithms” [129]. This may be an interesting example when compared with CIPO’s approach to computer-implemented inventions.

Thursday, February 15, 2018

Standing of Plaintiffs Carrying on Activity Outside of Canada

Teva Canada Ltd v Janssen Inc 2018 FCA 33 Dawson JA: Webb, Gleason JJA aff’g 2016 FC 593 Hughes J and 2016 FC 727
            1,304,080 / levofloxacin / LEVAQUIN

As discussed in Tuesday’s post, the FCA dismissed Teva’s appeal on a number of factual points that do not raise issues of general importance. But Teva v Janssen is a significant decision on standing. It raised a novel question as to whether a foreign party which has a licence from the Canadian patent owner, but which does not need the licence because it does not carry out any infringing activity in Canada, has standing as a person claiming under the patentee pursuant to s 55(1). The FCA, affirming Hughes J, held that the claimant does indeed have standing in this situation:

[126] I reject Teva’s submission that Janssen US was required to demonstrate that it engaged in conduct in Canada that would otherwise amount to infringement.

[127] A party need only establish that they enjoy rights under a patent in order to be a person claiming under the patentee.

In so doing, the FCA also affirmed and distinguished Servier 2008 FC 825 (aff’d without discussion on this point, 2009 FCA 222), in which Snider J held that the foreign parties did not have standing in similar circumstances. Between the two cases, this should provide good guidance as to when a licensee which does not carry on activity in Canada does or does not have standing. However, I must say that I do not find the FCAs explanation of Servier entirely persuasive, and I am inclined to think it is better to regard Servier as having been effectively overruled.

Tuesday, February 13, 2018

Levofloxacin Liability Decision Affirmed on the Facts

Teva Canada Ltd v Janssen Inc 2018 FCA 33 Dawson JA: Webb, Gleason JJA aff’g 2016 FC 593 Hughes J and 2016 FC 727
            1,304,080 / levofloxacin / LEVAQUIN

In Janssen-Ortho v Novopharm 2006 FC 1234 aff’d 2007 FCA 217, Hughes held that Janssen’s 080 patent was valid and infringed by Teva’s sale of its levofloxacin product [3]. In the damages phase, 2016 FC 593,Hughes J ordered Teva to pay damages to Janssen Canada in the amount of $5.5m, and to pay damages to Janssen US of just over $13m [4]: see here.

Teva appealed and the FCA has now affirmed. Hughes J’s decision turned almost entirely on the facts, with the exception of his holding that Janssen US had standing under s 51 as a person claiming under the patentee, which I will discuss in tomorrow’s post. Apart from the issue of standing, Teva’s appeal focused primarily on factual errors. Unsurprisingly, the FCA rejected all of Teva’s attacks on Hughes J’s factual findings. 

One point of principle raised by Teva was the complaint that the Lord Shaw’s admonition in Watson, Laidlaw & Co (1914), 31 RPC 104, 118 that compensation is accomplished “by the exercise of a sound imagination and the practice of the broad axe,” quoted with approval by Hughes J [69], is inconsistent with the FCA’s statement in Lovastatin FCA 2015 FCA 171, [43] that damages assessment must aim at "perfect compensation." The FCA explained that there is no inconsistency. The point of the Court’s observation in Lovastatin FCA is that damages must aim in principle for perfect compensation, so that lawful competition and the effect of a non-infringing alternative must be taken into account. Lord Shaw’s remark recognizes that in practice the goal of perfection is seldom achieved [34]-[36]. In assessing damages, a court must account for eg competition from a non-infringing alternative in the "but for" world, but it is not required to arrive at a number which perfectly reflects that hypothetical world; it is only required arrive at the best estimate on the evidence.

The FCA also reaffirmed that damages may be awarded for price suppression [78], and for losses sustained after expiry of the patent, so long as they were caused by the infringement [83]. Neither of these points is novel.

Teva also appealed Hughes J’s costs award of a lump sum of $1m, 2016 FC 727, on the basis that the award is excessive when compared to the amount an assessment officer would have awarded had the Janssen plaintiffs elected to have their costs assessed [153]. The FCA rejected this, noting that there is no requirement that a lump sum award correspond to the amount an assessment officer would assess [156].

Friday, February 9, 2018

The Infringer Cannot Elect an Accounting

Apotex Inc v Bayer Inc 2018 FCA 32 Nadon JA: Stratas, Woods JJA aff’g 2016 FC 1192 Fothergill J
            2,382,426 / ethinylestradiol & drospirenone / YAZ YASMIN

In Bayer Inc v Apotex Inc 2016 FC 1013 Fothergill J held that Apotex had infringed Bayer’s ‘426 patent: see here and here. Subsequently, Apotex argued that it, not Bayer, should be entitled to make the election between damages and an accounting of profits, and that Bayer should be confined to the (presumably lesser) remedy of an accounting. In 2016 FC 1192 Fothergill J rejected this argument: see here. (On the facts, he also held that Bayer was entitled to elect between damages and an accounting after discovery and inquiry.)

Apotex appealed the decision on remedy, reiterating the argument that, subject to the court’s discretion, the defendant can elect the remedy to which the respondents are entitled. The FCA has dismissed the appeal, affirming that the entitlement to elect (subject to the court’s discretion), rests with the patentee, not the infringer. The result is not very surprising, but the decision is noteworthy for providing an authoritative summary of the law relating to the right to an election, including a compelling historical analysis.

Section 55(1) of the Act provides that an infringer is liable to the patentee “for all damage sustained . . . by reason of the infringement.” On its face, this implies that the patentee is entitled to a damages, and so, by implication, cannot be denied that remedy on election of an accounting by the infringer. To counter this, Apotex appealed to s 57(1)(b), which provides that the court “on the application of the plaintiff or defendant,” may make an order “for and respecting inspection or account” (my emphasis). Apotex argued that 57(1) entitles the defendant to request an account, and this is not overridden by s 55(1), as there is no hierarchy between the provisions of the Act.

Nadon JA had a powerful answer to this proposition: yes, s 57(1)(b) does indeed entitle the defendant to make an application for an account — an interlocutory account [40], [66]. Nadon JA quoted the editorial comment to Vidi v. Smith (1854), 118 E.R. 1404 (QB), which noted that there were two classes of account, namely the accounting of profits ordered after a final decision, and interlocutory accounts which “are ordered by the consent of the defendant, and indeed on his application, as a condition for dissolving an interim injunction” [47, FCA emphasis]. That is, the defendant might apply to have an account ordered against itself in order to avoid being subject to an interlocutory injunction. Nadon J’s historical analysis showed that what is now 57(1) derived from early UK legislation which reflected this practice, while at the same time enabling the common law courts to grant equitable remedies, including a final account. He observed further that Canadian cases have also allowed the defendant to provide an interlocutory account in place of an injunction [51].

With that puzzle resolved, and having reviewed Benoit v Valmet-Dominion [1997] 3 FC 497 (FCA), the Court affirmed a number of propositions:

• An accounting was an equitable remedy historically available to a successful patentee, and the intention of what is now 57(1), and the UK legislation on which it is based, “was limited to providing to the common law courts the power to make certain orders that had previously only been available in the courts of equity” [62-64].
• 57(1) enables a defendant to request an interlocutory account for the purpose of dispensing with an interlocutory injunction [66].
• The election of a final accounting of profits “necessarily belongs to a patentee, subject to the Court’s discretion” [67].
• If the Court refuses an accounting “the patentee shall be entitled to its damages” [67].
• The Court “cannot oblige the patentee to accept as a remedy an accounting of profits if it is not willing to do so” [67].

This means that a successful patentee always has a right to damages unless waived by election, and that right cannot be abrogated by the infringing party or the Court [69], [71].

Sunday, February 4, 2018

No new cases

No new substantive patent cases were released last week.

Note that I generally only blog on substantive patent / pharma cases. If you want to keep abreast of all new Canadian decisions, including procedural decisions and copyright and trade-mark cases, I recommend subscribing to the Daily Intellectual Property News service from Alan Macek's IPPractice.

Saturday, January 27, 2018

No new cases

No new substantive patent cases were released last week.

Note that I generally only blog on substantive patent / pharma cases. If you want to keep abreast of all new Canadian decisions, including procedural decisions and copyright and trade-mark cases, I recommend subscribing to the Daily Intellectual Property News service from Alan Macek's IPPractice.

Thursday, January 18, 2018

Promise Doctrine Zombie Watch: Update, LLC v Wulftec International Inc 2018 FC 41 Annis J

The promise doctrine was abolished by the SCC in AstraZeneca 2017 SCC 36 (see here). Early indications were that it will not rise from the dead. This decision of Annis J confirms that the promise doctrine is so thoroughly dead that it cannot even survive a motion to strike.

The defendant Wulftec sought to amend its statement of claim to add an allegation that the asserted patents are devoid of utility [2]. While it is a bit difficult to understand exactly what was being alleged by the proposed amendments [5], the plaintiff Lantech argued, inter alia, that the allegations were based on an alleged promise of utility in the patent description [6]. Annis J agreed with this submission [7], and concluded that the proposed utility amendments did not meet the requirement of disclosing a reasonable cause of action [8].

Monday, January 8, 2018

Diagnostic Methods at CIPO

Something strange is going on at CIPO in respect of diagnostic method patents. As discussed in Richard Owens’ op-ed in the National Post and Kathleen Marsman’s article of 2 November in the Lawyer’s Daily, CIPO is systematically refusing to grant patents for some diagnostic methods. The holiday break gave me a chance to look into the issue in a bit more detail (and to read the fascinating IP Fly on the Wall materials that shed light on how those policies were developed), and to write a longer post than usual on the issue.

What is CIPO doing with patent applications related to diagnostic methods?
CIPO is systematically denying certain patents related to diagnostic methods, including, for example, patents related to personalized medicine technologies which tailor medical treatment to an individual patient. So, different kinds of cancer that superficially seem the same, may actually be very different metabolically, and consequently respond differently to different treatments. Before personalized medicine, all a doctor could do would be to try one treatment after another on their patient, and hope that something worked before it was too late. Personalized medicine allows the doctor to tailor the treatment to the disease, and the particular patient. For example, certain breast cancers produce large quantities of a compound known as HER2/neu, and the drug trastuzumab is effective in treating those types of cancer, but not others. Personalized medicine might involve testing the blood of a breast cancer patient and prescribing trastuzumab, if, and only if, elevated levels of HER2/neu were detected. Diagnostic methods generally rely on establishing a relationship or correlation between what CIPO calls the “analyte” (eg HER2/neu), and the existence of a particular disorder, or response to a certain drug (eg trastuzumab).

That CIPO is systematically denying certain patents related to diagnostic methods may not be well known to the public, but the fact itself is not disputed or secret. On the contrary, it is set out explicitly in the Practice Notice Respecting Medical Diagnostic Methods - PN 2015-02, and in the November 2017 update to CIPO’s Manual of Patent Office Practice (MOPOP), Section 17.03.04 that subsumed and elaborated this examining practice.

Friday, December 22, 2017

How Enhanced are Enhanced Costs?

Mediatube Corp v Bell Canada 2017 FC 495 Locke J
            2,339,447 / Internet Protocol Television / Fibe TV, FibreOp

In his substantive decision in Mediatube v Bell 2017 FC 6, Locke J held that costs awarded to Bell should be elevated by 50% for the infringement case (all issues except punitive damages) and awarded on a solicitor-and-client basis for the punitive damages case, essentially on the basis that the plaintiffs could not have had a reasonable belief that they had a good arguable case [234]: see here. This decision clarified the application of this holding. While the decision turns largely on the facts, there are a couple of general points of interest.

First, Locke J held that in the Federal Court, the term “solicitor-and-client costs” generally means a full indemnify basis, not only a substantial indemnity basis: [33].

Second, he noted that in allocating costs between the infringement case and punitive damages case, there was a trade-off between precision and ease of calculation, and he chose to adopt a relatively simple but less precise approach: [13].

Third, a 50% elevation of costs on the infringement case plus solicitor and client costs on the punitive damages case, sounds like a serious costs sanction. If I have done the calculations correctly, Bell’s actual total costs, including legal fees and disbursements, were just over $7.9 million ($7,901,718 - it’s not clear to me whether this figure includes tax) [5]. The grand total actually awarded on the enhanced basis, including tax, was $2,114,582 [97], or $1,931,876 before tax. This means that the costs award, even on this significantly elevated basis, in respect of a case in which the plaintiffs could not have had a reasonable belief that they had a good arguable case, was only about 25% of Bell’s actual costs. Bell is out of pocket by $5 million for having defended a suit which never should have been brought.

It is more than two years ago that the Rules Committee released an ambitious discussion paper on costs. Perhaps I’ve missed it, but I can’t recall having seen any follow-up.

Thursday, December 21, 2017

Prior Use by Inventor Anticipates Patent

Packers Plus Energy Services Inc v Essential Energy 2017 FC 1111 O’Reilly J

The technology embodied in Packers Plus’ 072 patent relates to a method for fracking by selective transmission of fluids to different segments of a wellbore by way of a tubing string consisting of a series of packers and ports which can be operated independently [8]. Yesterday’s post discussed O’Reilly J’s holding that the patent was not infringed. Today’s post discusses his holdings that it was invalid as anticipated and for obviousness.


The anticipation holding presents a classic cautionary tale regarding public disclosure prior to filing. It turned on the fact that the patentee, Packers, had itself used the invention in the field in the fall of 2001, more than one year before the Canadian filing date [65ff]. That use was not really disputed [82]. Rather, Packers argued that the use was not anticipatory, under 28.2(1)(a), either because it was used in circumstances in which all the recipients of the information were required to keep it confidential, or because it came within the experimental use exception [64].

Though there were some indicia of confidentiality, ultimately the confidentiality argument failed on the facts. As I read it, what happened is that in the fall of 2001, Packers, which was already established in the oil-field service industry as a provider of down-hole tools, was asked by a client to do a job in a gas well. Mr Themig, one of the inventors and a principal in Packers, came up with what seemed to be a pretty good solution. The client agreed, and it was implemented. It was only after the fact that Mr Themig began to appreciate just how good a solution it really was, and Packers ultimately set the wheels in motion to apply for a patent. My sense is that in this industry, each hole and every job is a bit different, so it was not out of the ordinary for a high-end firm such as Packers to devise a solution that strictly novel, in the sense of being tailored to the particular job. That of course does not mean that every solution is patentable, and it is perhaps for that reason that Mr Themig did not take all the steps necessary to make it sufficiently clear that the use of the method was to be considered confidential. It seems to me that the one year grace period afforded under the Canadian Patent Act is intended to address this type of situation. In some industries inventions are products of a patent-oriented lab, but in others they emerge from practical innovators in the field, and in the latter case it is not always reasonable to ask a person to keep patent law requirements in mind while trying to solve a problem for a client. The grace period responds to that problem; but the grace period is necessarily limited and in this case the inventor did not proceed to filing quickly enough.

Experimental Use

The experimental use argument turns on the question of what it means for a use to be “experimental.” In some cases, such as clinical trials of a drug prior to commercialization, the answer is clear, but in the case, the use itself was commercial.

Wednesday, December 20, 2017

Slice and Dice to Avoid Infringement?

Packers Plus Energy Services Inc v Essential Energy 2017 FC 1111 O’Reilly J

The technology embodied in Packers Plus’ 072 patent relates to a method for fracking by selective transmission of fluids to different segments of a wellbore by way of a tubing string consisting of a series of packers and ports which can be operated independently [8]. My understanding from general news sources is that the patented technology is widely used in the fracking industry. O’Reilly J held the 072 patent to be invalid as anticipated and for obviousness. These issues are dealt with in subsequent posts.

O’Reilly J also held that even if the 072 were valid, it was not infringed, nor had the defendant, Essential, induced infringement [3]. He held that in light of the claim construction, “it is clear that Essential’s equipment. . . infringes the ‘072 patent when used in an open-hole fracturing operation” [38]. However, the claims in issue were method claims, and Essential only supplied and installed the equipment, but did not carry out the complete method [44], [52], [53]. Packers Plus therefore argued inducement and joint infringement.

On inducement, O-Reilly J noted that the first step of the three-part test for inducement set out in Corlac v Weatherford 2011 FCA 228, [162], requires an act of infringement by a direct infringer. inducer. He then held:

[51] Packers has not produced evidence of direct infringement by anyone. It merely implies that Essential’s main customers, the operating companies who own and operate the wells, are the infringers. However, the evidence shows that there are often numerous entities involved in a fracturing job, including the operating company and the various service entities it hires – drilling companies, pumping companies, cementing companies, tool companies, and fracturing companies. It is unclear who the direct infringer would be in that situation.

[55] Perhaps the collectivity of companies involved in a fracturing operation could be said to work the method claimed in the ‘072 patent. However, each of their respective contributions to the operation would amount to a partial or, at most, an indirect infringement, not a direct infringement of the patent. Therefore, Packers cannot meet the first branch of the test for inducement. It has not proved direct infringement by anyone.

This holding, that inducement requires direct infringement by a single party, appears to me to be novel. The holding in Corlac itself was this:

[162] It is settled law that one who induces or procures another to infringe a patent is guilty of infringement of the patent.

This does not hold that there must be a single direct infringer, but rather implicitly assumes that there is. The question of whether all the acts constituting the patented method must be carried out by a single actor was simply not at issue. The Corlac test assumes that there is direct infringer, and asks when it is permissible for the patentee to pursue the inducer instead. The first prong of the test is (my emphasis):

[162] First, the act of infringement must have been completed by the direct infringer.

Again, this does not hold that there must be a single direct infringer. Rather it assumes (“the”) that there is, and asks whether that direct infringer had completed the act of infringement. So, in Dableh v Ontario Hydro [1996] 3 FC 751 (FCA), cited in this paragraph of Corlac, the first prong was not satisfied because the use by the putative direct infringer had not proceeded beyond experimental use, and so there was no direct infringement at all (though a quia timet injunction was nonetheless granted). In AB Hassle v. Apotex, 2002 FCA 421, also cited in Corlac as authority for this test, the allegation was the drug would be prescribed off-label for an infringing use, and the first prong was not satisfied because the trial judge was not persuaded that this would actually happen [25]. Again, there was no direct infringement at all, regardless of the number of parties involved (In the third case cited in Corlac, MacLennan 2008 FCA 35, inducement was established.)

While I have not reviewed all the Canadian inducement cases, I am not aware of any which holds that the direct infringement must be carried out by a single party. As a general matter, this question is a controversial one. The evident concern with O’Reilly J’s holding is that in industries in which key operations are routinely carried out by a variety of different parties in conjunction, it might be impossible to effectively enforce patent rights. Perhaps of even greater concern, parties might be able to arrange their operations, for example by subcontracting certain tasks, so as to avoid infringement. The issue has been addressed most recently by the US Federal Circuit in Akamai v Limelight 797 F.3d 1020 (Fed Cir 2015), on remand from 134 S.Ct. 2111, holding that in order to find induced infringement, it is not necessary to prove that all the steps were committed by a single entity. I also note that under s 60(2) of the UK Patents Act a party is liable for infringement if "he supplies . . .any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows. . . that those means are suitable for putting, and are intended to put, the invention into effect."  It seems perfectly clear that Essential would be liable under this provision, as there is no requirement for direct infringement, but only that the invention be put into effect, and, as noted above, O'Reilly J clearly held at [38] that the invention would be put into effect by the use of Essential's equipment. That statutory provision is of course not directly applicable in Canada, but it highlights some of the policy considerations related to O'Reilly J's holding.

This is not to say that O’Reilly J was wrong to say that there must be a single direct infringer. Divided infringement raises difficult policy and doctrinal questions, which I won’t explore in this post, as O’Reilly J’s holding on infringement was not crucial in light of his holding that the patents were invalid. Moreover, on the facts of this case, it might well be that even if there was a party who should be held liable for infringement, that party is not Essential. My point here is simply that his holding is novel and controversial, and that it does not follow from Corlac and the cases cited therein.

UPDATE: For an even more recent decision of the US Fed Cir, see Travel Sentry v Tripp, released yesterday, and discussed on Patently-O. Note that, as discussed here, the EWCA in Warner-Lambert [2015] EWCA Civ 556, has a thorough discussion of the European position, which contrasts with the US approach.

See also my blog post here

Tuesday, December 19, 2017

Dependent Claims and Obviousness

Ciba Specialty Chemicals Water Treatments Ltd v SNF Inc 2017 FCA 225 Pelletier JA: Rennie JA, concurring reasons by Woods JA aff’g 2015 FC 997 Phelan J

A post on the McCarty Tetrault snIP/ITs blog has pointed out an issue that I had missed in Ciba Specialty Chemicals Water Treatments Ltd v SNF. The authors note that the FCA held (my emphasis):

[97] The result is that Claim 1 is obvious and, since all other claims are directly or indirectly dependent on Claim 1, the ‘581 Patent is invalid.

They remark that

This holding is difficult to reconcile with prior Federal Court of Appeal jurisprudence not cited by the court. In Zero Spill Systems (Int’l) Inc. v. Heide [2015 FCA 115], the Federal Court of Appeal reversed the Federal Court on this very holding:

The Federal Court was obliged to consider the validity of the ’064 Patent claim-by-claim. Not doing so was a legal error. Notwithstanding that Claim 13 is actually an independent claim, the nature of dependent cascading claims is to narrow the claims upon which they depend: Purdue Pharma v. Pharmascience Inc., 2009 FC 726, 77 C.P.R. (4th) 262 at paragraph 10. The practical effect of this on anticipation or obviousness is that eventually a claim may be sufficiently narrow to escape these prior art-based attacks, even though the broader claims may be invalid. [94]

I suggest that the reason for the apparent conflict may be that in Ciba v SNF, according to the Phelan J’s trial decision:

[26] As a result of the nature of the dependencies and the state of the art, if Claim 1 is invalid, then its dependent claims are likewise invalid. Dr Farrow, Ciba’s principal expert, was correct in his view that there was only one inventive concept that applied to all claims in the 581 Patent. This case rises or falls on Claim 1.

So, the FCA statement at [97] may only be saying that in this particular case none of the dependencies added anything potentially non-obvious. However, this is not entirely satisfactory. Phelan J analyzed obviousness in terms of the inventive concept, and since he concluded all the claims shared a single inventive concept, to hold that in this case all the claims rise or fell together (at least so far as obviousness is concerned), is not inconsistent with Zero Spill. But as discussed here, a key point of the FCA decision in Ciba v SNF was that it is preferable to “avoid[] the inventive concept altogether and pursu[e] the alternate course of construing the claim” [77], which is what the FCA did in undertaking its own obviousness analysis de novo. Since the FCA did not rely on the inventive concept at all in assessing obviousness, much less on there being a single inventive concept, it is not clear why the claims should stand or fall together.

I suspect that what happened is simply that on appeal the parties treated all the claims as standing or falling together, in light of Phelan J’s holding at trial, and consequently so did the FCA, even though the rationale had shifted. In any event, this particular point was tangential in Ciba v SNF, whereas in Zero Spill, as the snIP/ITs authors point out, it was the very issue on which the FCA reversed the court below. Moreover, the holding in Zero Spill is clearly correct as a matter of principle. All things considered, I think it may confidently be said that the FCA’s statement in [97] of Ciba v SNF, turned on the particular facts of the case, and the holding in Zero Spill remains the law.

Monday, December 18, 2017

What is the Jurisdiction of the Federal Court under s 20(2) of the Federal Courts Act?

Alpha Marathon Technologies Inc v Dual Spiral Systems Inc 2017 FC 1119 Kane J

In Alpha Marathon the plaintiff claimed to be the co-inventor of an invention patented by the defendant in the US [4]. The plaintiff sought, in substance, a declaration that it was the entitled to the US patent rights: [4], [20]. Kane J granted the defendant’s motion to strike the statement of claim on the basis that the Federal Court lacks jurisdiction over the dispute [108]. In so doing, Kane J provided an extensive and helpful review of the law related to the jurisdiction of the Federal Court under s 20(2) of the Federal Courts Act. I agree with Kane J's conclusion that the FC lacks jurisdiction in this case, but I must admit that I remain puzzled as to the exact limits of the Court’s jurisdiction in such matters.

As Kane J noted [37], [52], the basic test for the jurisdiction of the Federal Court is set out in ITO-Int'l Terminal Operators v. Miida Electronics [1986] 1 SCR 752, 766:

1. There must be a statutory grant of jurisdiction by the federal Parliament.

2. There must be an existing body of federal law which is essential to the disposition of the case and which nourishes the statutory grant of jurisdiction.

3. The law on which the case is based must be "a law of Canada" as the phrase is used in s. 101 of the Constitution Act, 1867 .

This has been re-affirmed in Windsor (City) v Canadian Transit Co, 2016 SCC 54, which, at [25ff], emphasized the importance of determining the “essential nature” of the claim.

The main question in Alpha Marathon turned on the first branch of the test. The plaintiff relied entirely on s 20(2) of the Federal Courts Act, as interpreted in Kellogg Company v Kellogg, [1941] SCR 242, as providing the necessary statutory grant of jurisdiction [46], [60].

Subsection s 20(2) gives the FC concurrent jurisdiction in all cases “in which a remedy is sought under the authority of an Act of Parliament or at law or in equity respecting any patent of invention.” The defendants argued that s 20(2) is not applicable “because the words ‘any patent of invention’ in that section mean a patent of invention obtained in Canada, not simply an invention or a patent of invention obtained in another country” [38, my emphasis]. This seems right to me. As a matter of statutory interpretation, it would appear that “patent of invention” in s 20(2) means the same thing as “letters patent for an invention” under the Patent Act, s 2, and the Patent Act clearly refers to Canadian patents. This is not express, but clear nonetheless from eg s 4(2) which provides that “The Commissioner shall . . . do all acts and things requisite for the granting and issuing of patents of invention.” That provision is evidently not empowering the Commissioner to grant US patents.

Kane J accepted this point:

[59] In order to fall within subsection 20(2), the Plaintiff must be seeking a remedy that arises from “federal law”. With respect to patents, the only relevant “federal law” is the Patent Act, which does not create remedies respecting the ownership of unpatented inventions or foreign patents.

See also [67], emphasizing the need for a Canadian patent.

The defendant argued that s 20(2) was satisfied because the dispute related to “an invention made in Canada and by Canadians.” But s 20(2) does not require merely that the invention is somehow Canadian; it requires that the remedy sought is in respect of a Canadian patent. In this case no remedy was sought relating to any Canadian patent, nor even to a potential Canadian patent application. I should note that the Plaintiff did not actually seek a declaration as to the ownership of the US patent, but rather a declaration that it was the owner of the invention claimed in the corresponding US patent application; an injunction requiring the defendants to convey their interest in the US patent application to the plaintiffs; and injunction prohibiting the defendants from infringing the US patent application [20]. The reference in the pleadings was to the US application, notwithstanding that the US patent had actually been granted: US Patent No. 6,902,385 [18]. Presumably this was because a request for a declaration as to ownership as to the US patent would be self-evidently absurd; but dressing it up as a request for relief related to the US application does not change the substance.

While that point was enough to dispose of the issue, Kane J undertook a more general review of s 20(2), with the key cases being Kellogg, Radio Corporation of America v Philco Corporation (Delaware), [1966] SCR 296, and Cellcor Corp v Canada v Kotacka [1977] 1 FC 227, 27 CPR(2d) 68 (FCA).

I discussed Kellogg in my post on SALT Canada Inc v Baker 2016 FC 830, in which Boswell J refused to make a declaration as to ownership of a granted patent pursuant to s 52 of the Patent Act, on the view that the FC lacks jurisdiction when the essential issue is the ownership based on the interpretation and application of contract law principles. My post suggested that the parties had overlooked Kellogg , which might be read as holding that the statutory grant could be found in s 22(c) of the Exchequer Court Act, which is substantively the same as the current s 20(2) of the Federal Courts Act.

Kane J held that the jurisprudence subsequent to Kellogg reflects a more constrained approach to the interpretation of the Federal Courts Act [69]. Her conclusion is perhaps best summarized by
Tremblay-Lamer J in Peak Innovations, 2009 FC 661, [9], quoted with approval at [77]:

Section 20(2) of the Federal Courts Act only establishes jurisdiction for remedies where jurisdiction for the underlying cause of action is established elsewhere in a statute.

And see [78] reiterating the point. As I understand it, the point is that s 20(2) is effectively solely to enable the Federal Court to grant the appropriate remedy, after substantive jurisdiction has been established under some other provision.

I’m not sure I’m entirely persuaded that is the correct interpretation of s 20(2). The text of s 20(2) states that “The Federal Court has concurrent jurisdiction in all cases. . . in which a remedy is sought. . . respecting any patent of invention .” It does not say, “The Federal Court has concurrent jurisdiction in all cases . . . to grant a remedy . . . respecting any patent of invention.” I would say that on its face s 20(2) gives jurisdiction to the Federal Court (subject to the other branches of the ITO test). That is the reasoning on which the SCC in Kellogg based its interpretation of the provision.

The primary authorities for a more restrictive interpretation of this proposition were Radio Corp and Cellcor. I acknowledge that in writing my post on SALT Canada v Baker 2016 FC 830 I had overlooked both of those cases. And it is also true, as pointed out by Kane J [73], that in Cellcor at [11] the FCA perceived a possible conflict between Radio Corp and Kellogg, and chose to follow Radio Corp. But I’m not convinced there really is a conflict between Radio Corp and Kellogg.

Kellogg was a conflict proceeding in which the main question was which of the parties, Kellogg Co or Kellogg, was the true inventor. The Commissioner had made a decision in favour of Kellogg, pursuant to the procedure set out in then s 44, and that decision had been duly appealed by Kellogg Co to the Exchequer Court pursuant to s 44(8) of the Patent Act. It was undisputed that the Exchequer Court had jurisdiction in that respect. Kellogg Co had also pleaded in the alternative that even if Kellogg were the true inventor, Kellogg was an employee of Kellogg Co. In that case, the remedy sought was that Kellogg Co should be adjudged to be “the owner of the invention made by [Kellogg], and that the respondent should be directed to execute an assignment to the appellant of the entire right, title and interest in and to the invention and the application relating to it” (246). The Exchequer Court had ordered the alternative pleading struck on the basis of lack of jurisdiction, and the SCC reversed, in part because s 20(2) (then s 22(c)) gave jurisdiction because “the remedy sought by the appellant. . . is evidently a remedy in Equity respecting a patent of invention” (250).

Radio Corp also involved a conflict proceeding, and one of the parties, dissatisfied with the Commissioner’s decision, had appealed pursuant to the same provision (by then 45(8)). But in addition to attacking the Commissioner’s decision on the claims which had been found to be in conflict, the appellant had also attacked a variety of other claims in relation to which no conflict had been found (301). The SCC reviewed the history of the relevant provisions, pointing out that under the Act of 1906, conflict proceedings were to be decided by a board of arbitration, while in Hutchins Car Roofing Co ( 1916), 16 Ex CR 391, Cassells J had held that what is now s 20(2) gave the Exchequer Court concurrent jurisdiction with that board (303). The result was that there were two distinct procedures for dealing with conflicting applications. This led to the enactment of the s 44(8) (originally 22(7)), providing for an appeal procedure from a decision of the Commissioner, and, by implication, depriving the Exchequer Court of original jurisdiction in such matters. As the SCC stated (my emphasis):

This subsection [44(8)] recognized the jurisdiction of the Exchequer Court with respect to conflicting applications for patents, but limited the period during which it might be exercised.

The important point is, however, that, since 1923, Parliament has made it clear in the provisions of the various Patent Acts that, notwithstanding the jurisdiction conferred by the Exchequer Court Act upon the Exchequer Court to deal with conflicting patent applications, the right to seek redress in that Court by an applicant is governed and limited by the provisions of the Patent Act respecting conflicting applications. The conclusion which I draw from the legislative history of the provisions of the Patent Act respecting conflicting applications is that, although jurisdiction is conferred upon the Exchequer Court by s. 21 [now 20(2)] of the Exchequer Court Act in cases of conflicting applications for a patent, the right of a party involved in such a conflict to attack the patent application of another party is governed by s. 45 and such party is restricted to such rights as are conferred by that section. As previously stated, it is the opinion of this Court that proceedings under subs. (8) of that section are limited to the subject matter of the claims found to be in conflict by the Commissioner.

I read this as saying that Cassells J’s interpretation of s 20(2) was not wrong, and indeed was confirmed by s 44(8), which did not grant the Exchequer Court jurisdiction respecting conflicts, but rather limited the jurisdiction that was already conferred by s 20(2). That is, if the Act did not provide any other method for resolving a conflict, the Federal Court would have jurisdiction under s 20(2), but given that an alternative procedure had been established, s 20(2) could not be used to circumvent that alternative procedure.

A purposive analysis arguably also provides some support for a broad reading of s 20(2). It rounds out the statutory scheme in the same way that s 7(b) of the Trade-marks Act rounds out that Act. S 7(b) allows a trade-mark owner to bring an action in Federal Court based on a registered mark, and plead 7(b) in the alternative, rather than being forced to resort to a new proceeding in provincial superior court if its registration should be held invalid. Similarly, as in Kellogg, s 20(2) allows a plaintiff to raise ownership as an alternative to its claim to inventorship, when the factual issues are closely enmeshed, rather than having to resort to a new proceeding in a different court.

It may also be possible to reconcile Cellcor with Kellogg, but not so readily. In Cellcor the plaintiff sought a declaration that it was the party entitled to apply for a Canadian patent on the basis that it was the inventor of the specified invention, which had been stolen by the defendant, who intended to file an application in Canada. However, it appears that the plaintiff had not actually applied for a Canadian patent. Counsel for the defendant did argue that “the Court cannot exercise its jurisdiction under section 20 unless a right to relief exists by virtue of some other statutory provision,” but it is not clear to me that the Court accepted this proposition. The Court held (my emphasis):

Under the Patent Act, the official who must first decide whether a patent may issue to an applicant is the Commissioner. The Act does not empower the Courts to give him directions on the decision he should reach; it is only if he is alleged to have made a wrong decision that, under the statute, the Courts may be seized of the matter. In my view, it would be contrary to the scheme of the Patent Act for the Courts to assume the power, in a case like the present one, to make the declaration sought.

This could be read as saying that the Act provided for a process by which a party may apply for a patent, and to decide who is entitled to the grant of a patent in the case of a dispute, and that specific procedure displaces any general jurisdiction granted by s 20(2). This suggests a distinction between Kellogg and Cellcor on the basis that there is a specific procedure for determining a conflict between inventors, but there is no specific procedure for determining ownership, for example as between an employer and employee. So, in Comstock Canada v Electec Ltd., (1991) 38 CPR(3d) 29, 49-50 (FCTD), the Federal Court held it had jurisdiction under s 20(2) to consider a dispute as to inventorship in respect of a granted patent. Section 52, which allows the FC to order an entry in the patent records to be varied, was invoked purely as remedial authority. (Though note that Muldoon J in Comstock relied on McCracken v Watson, [1932] Ex CR 83, 88, which actually adopts a restrictive view of s 20(2)). In any event, if Comstock was rightly decided, it seems to me that on the same basis, s 20(2) gives concurrent jurisdiction to the FC to determine who, as between the employer and employer is entitled to apply for the Canadian patent, subject to the requirement under the second branch of the ITO test that the question of inventorship is essential to the disposition of the issues.

But these distinctions may be too fine. In Kellogg the underlying issue was the employer / employee relationship, while in Cellcor it was misappropriation of confidential information, both leading to dispute over ownership of a potential Canadian patent application. It strikes me that there is a real distinction between disputed inventorship and ownership, because “inventor” is a concept found in the Patent Act, and inventorship must therefore be defined under that Act, whereas ownership disputes based on contracts, confidential information, or the employer / employee relationship, turn on the proper law related to the dispute. But by the same token, I don’t see any principled distinction between a dispute based on confidential information and one turning on the employer / employee relationship,. If the Federal Court has jurisdiction in the one type of case, I would think it should also have it in the other type, and vice versa.

If Kellogg and Cellcor cannot be reconciled, perhaps it was Cellcor which was wrongly decided. On the other hand, rather than straining to reconcile Kellogg with subsequent cases, maybe it is better to acknowledge, with Kane J [69], that the law has moved on. While Kellogg is SCC authority, it is long in the tooth. Old authority is not necessarily bad authority; indeed, the authority of a case may grow with time, as it is regularly cited. But that is not the case here; while Kellogg itself is regularly cited, as Kane J noted [61], it is cited for the proposition that the Federal Court may resolve “incidental” contractual issues, and not for its holding on s 20(2). Moreover, the holding on s 20(2) was in the alternative, though perhaps not strictly obiter.

In any event, regardless of the theoretically correct interpretation of s 20(2), Kane J’s review of the case law indicates that the Federal Court has generally been reluctant to accept concurrent jurisdiction. It not clear to me why this should be. No doubt there are some cases in which the Federal Court would have concurrent jurisdiction under the Kellogg reading of s 20(2), yet where another court would be more suitable, but in such cases the Federal Court could decline to exercise its jurisdiction on the basis of forum non conveniens.

Thursday, December 14, 2017

The Cambridge Handbook of Technical Standardization Law

The Cambridge Handbook of Technical Standardization Law: Competition, Antitrust and Patents, edited by Professor Jorge Contreras, a leading standards scholar, is now available. Here is a link to CUP's webpage for the volume, here is a link to the Amazon's page, and here is the book description:

Technical standards are ubiquitous in the modern networked economy. They allow products made and sold by different vendors to interoperate with little to no consumer effort and enable new market entrants to innovate on top of established technology platforms. This groundbreaking volume, edited by Jorge L. Contreras, assesses and analyzes the legal aspects of technical standards and standardization. Bringing together more than thirty leading international scholars, advocates, and policymakers, it focuses on two of the most contentious and critical areas pertaining to standards today in key jurisdictions around the world: antitrust/competition law and patent law. (A subsequent volume will focus on international trade, copyright, and administrative law.) This comprehensive, detailed examination sheds new light on the standards that shape the global technology marketplace and will serve as an indispensable tool for scholars, practitioners, judges, and policymakers everywhere.

Tom Cotter and I contributed a chapter titled Judicially Determined FRAND Royalties.

Friday, December 8, 2017

Uncontested Application to Vary Record of Assignment

Everlight Electronics Co, Ltd v Canada (Attorney General) 2017 FC 1108 Martineau J

Gentex Corp originally obtained the ‘747 patent, which was then assigned to Everlight in a worldwide transaction. Evidence of the transfer of ownership was subsequently filed with the Patent Office. In order to protect confidential information, they had intended to file only a limited appendix to the assignment agreement, but Everlight’s patent agent inadvertently filed the complete  agreement. 

This application was brought pursuant to s 52 of the Act, which confers a broad jurisdiction on to the Federal Court “to order that any entry in the records of the Patent Office relating to the title to a patent be varied or expunged,” to expunge the complete assignment agreement and replace it with a redacted version. Martineau J granted the application, noting that “[t]he proposed variation will cause no prejudice to third parties, as no outsider is claiming an interest in the Patent, there is no ongoing infringement case, and the rest of the Assignment is immaterial to the public” [5]. This is consistent with a series of cases indicating that the FC will be accommodating in varying records when the interests of third parties are not affected.

Friday, December 1, 2017

No new cases

No new substantive patent / NOC / data protection cases were released last week.

Note that I generally only blog on substantive patent / pharma cases. If you want to keep abreast of all new Canadian decisions, including procedural decisions and copyright and trade-mark cases, I recommend subscribing to the Daily Intellectual Property News service from Alan Macek's IPPractice.

Friday, November 24, 2017

Inventive Concept R.I.P.

Ciba Specialty Chemicals Water Treatments Ltd v SNF Inc 2017 FCA 225 Pelletier JA: Rennie, Woods JJA aff’g 2015 FC 997 Phelan J

As discussed in yesterday’s post, in Ciba v SNF Pelletier JA and Rennie JA held that all matter available to the public may be used in an obviousness attack, not just that which was generally known or reasonably discoverable, though Woods JA expressed no opinion on this point. This was not the only clarification made to the obviousness analysis. The FCA, unanimously on this point,* also stated that the focus of the obviousness inquiry should be on the claims, not the inventive concept:

[77] There may be cases in which the inventive concept can be grasped without difficulty but it appears to me that because “inventive concept” remains undefined, the search for it has brought considerable confusion into the law of obviousness. That uncertainty can be reduced by simply avoiding the inventive concept altogether and pursuing the alternate course of construing the claim. Until such time as the Supreme Court is able to develop a workable definition of the inventive concept, that appears to me to be a more useful use of the parties’ and the Federal Court’s time than arguing about a distraction or engaging in an unnecessary satellite debate.

In particular, the FCA noted that “[p]art of the difficulty in the search for the inventive concept is the use made, or to be made, of the disclosure portion of the specification of the patent,” and stated, quoting Conor v Angiotech [2008] UKHL 49, [19], “[t]he patentee is entitled to have the question of obviousness determined by reference to his claim and not to some vague paraphrase based upon the extent of his disclosure in the description” [74]. This is consistent with s 28.3 which refers to “the subject-matter defined by a claim” [75].

This is a more emphatic restatement of a similar point made in BMS v Teva / atazanavir 2017 FCA 76, in which, as discussed here, the FCA downplayed the importance of the inventive concept. (Pelletier JA also wrote the reasons in Atazanavir, with Rennie and Near JJA concurring.) I agree entirely with the Court on this point. The pursuit of the inventive concept had in many cases turned into a major satellite debate which brought confusion rather than clarity. Indeed, it may be that it is time to reconsider the entire Windsurfing/Pozzoli framework. While that approach was endorsed by the SCC in Sanofi / Plavix 2008 SCC 61, the FCA pointed out in Wenzel Downhole Tools 2012 FCA 333, [105], “the Supreme Court of Canada in Sanofi clearly indicated that there is no single or mandatory approach in the obviousness inquiry,” and as the FCA pointed out in Atazanavir “[i]t is true that the Windsurfing/Pozzoli framework does provide structure but it is not obvious that it has been useful.” [64]. In any event, that is a question for another day.

The FCA held that Phelan J had erred in his formulation of the Windsuring/Pozzoli framework [63], but I would suggest the errors are ultimately a reflection of problems with the Windsuring/Pozzoli framework itself. The second and third steps of that framework are [45]:

2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;

3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;

The FCA noted that in effect, Phelan J had “first defined the invention, then referred to the fact that the invention is an advance over the common general knowledge, and concluded that the difference between the two is the inventive concept” [65]

[66] This methodology appears to conflate steps 2 and 3 of the Windsurfing/Pozzoli framework as it was paraphrased by the Federal Court but instead of comparing the inventive step to the common general knowledge, it compares the invention to the common general knowledge to arrive at the inventive step.

While this observation is true enough, Phelan’s J’s approach has considerable appeal: after all, in the absence of any other guidance from the SCC, it seems quite reasonable to define the “inventive concept” as the difference between the state of the art and the invention. But, as the FCA pointed out, if that is the definition of the inventive concept, then the second and third steps of the Windsuring/Pozzoli framework are circular. On the other hand, if that is not the inventive concept, what is? No wonder the FCA held the whole inquiry is an unnecessary distraction.

Because the FCA held that Phelan J had applied the wrong legal test, the Court undertook the obviousness analysis de novo [69]. In so doing, Pelletier JA identified two distinct differences between the claim as construed and the prior art relied upon by SNF, namely the notions of an “effective rigidifying amount” and of “an aqueous solution of a water soluble polymer” [91]. Pelletier JA then considered separately whether either of these aspects of the claimed invention was inventive, at [94]-[95] and [93], respectively. Having concluded that both differences were obvious, it followed that the claimed invention was obvious [97].

This approach, of looking at different aspects of the invention separately to see whether any aspect might be inventive, calls to mind the approach used by the EPO, albeit in the context of the problem-solution approach to obviousness. For example, in T 0920/10, the BoA stated (citations omitted):

[14] Article 56 EPC stipulates that "an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to the skilled person". Therefore, in the board's understanding, the decision on whether or not the requirements of Article 56 EPC are fulfilled requires a mandatory examination as to whether or not the claimed subject-matter is obvious. Therefore, it has been established by case law that, if an initially formulated problem is found not to have been solved, the problem is reformulated to one which is considered as having been solved and the obviousness of the claimed subject-matter is then assessed on that new basis.

*Woods JA reserved opinion “on the issue discussed at paragraphs 51 to 63" [99]. The discussion of the role of the inventive concept is later in Pelletier JA’s reasons, at [74]ff.

Thursday, November 23, 2017

The State of the Art on State of the Art?

Ciba Specialty Chemicals Water Treatments Ltd v SNF Inc 2017 FCA 225 Pelletier JA: Rennie JA, concurring reasons by Woods JA aff’g 2015 FC 997 Phelan J

Under the “old” Patent Act the body of prior art that may be set up against the patent in an obviousness attack did not include all publicly available information that could be set up in a novelty attack, but only that which was generally known to a person skilled in the art or which would be discovered in a reasonably diligent search. As Hughes J noted in Merck v Pharmascience 2010 FC 510, [37], there is a “quaere” as to whether codification of the obviousness requirement in s 28.3 of the new Act, which requires a person skilled in the art to have regard to information “available to the public” as of the claim date, has changed the law in this respect, so that all publicly available prior art may be used in an obviousness attack, regardless of whether it would have been discovered by a reasonably diligent search. In my article, What is the State of the Art for the Purpose of an Obviousness Attack? (2012) 27 CIPR 385, I reviewed the debate. While the text of 28.3 does imply that all publicly available prior art may be set up against the patent in an obviousness attack under the new Act, I concluded, based on contextual and purposive considerations, that on balance the better view is that s. 28.3 was not intended to change the law.

In Ciba Specialty Chemicals Water Treatments Ltd v SNF Pelletier JA, with Rennie JA agreeing, held that all prior art that is available in a novelty attack is also part of the state of the art for the purposes of an obviousness attack [51]-[63]. This implies that the codification did indeed change the law, though Pelletier JA did not say so expressly. Woods JA concurred in the result, but declined to express an opinion on this point [99], saying “The issue is better addressed in an appeal where it is relevant to the outcome and in which the Court has the benefit of full submissions from counsel, which was not the case here” [100]. I must say that I agree entirely with Woods JA. While the position taken by Pelletier JA is a reasonable one which is supported by the text of s 28.3, some important interpretive arguments were not addressed, presumably because the Court did not have the benefit of full submissions on this point.

Pelletier JA relied primarily on the text of 28.3 [51], [57], which does indeed clearly support his position. The remainder of the points made by Pelletier JA are, in my view, more questionable.

Pelletier JA stated that “In Anglo-Canadian jurisprudence, the comparison at step 3 is to the prior art” [51]. Pelletier JA cited no cases on point, and it may be that Pelletier JA did not intend this as a description of what the courts had previously done, but rather a statement of his conclusion. To the extent that he intended it as describing the actual practice of the courts, I am not sure it is right. As discussed in my article, it was not true in English law prior to the Act of 1977 and it was not true in Canadian law prior to 1993. Since then, the question has remained unsettled in Canadian law. In 2006 FC 1234, [109] Hughes J expressed the view, albeit in passing, that codification was not intended to change the law. In Novartis v Teva / deferasirox 2015 FC 770 blogged here, O’Reilly J held that indeed the law had not changed, while in Pollard v BABN 2016 FC 883 [192-95], Locke J suggested the opposite. The question was noted, but not addressed, in 2015 FCA 163 [21]: see here for a discussion. None of these cases were discussed by Pelletier JA. And indeed, as Pelletier JA acknowledged [59], he himself had expressed the opposite view in BMS v Teva 2017 FCA 76, [48]. This is not to say that BMS v Teva settled the question, as it was not directly at issue, and also referred to “prior art” in other paragraph, as Pelletier JA pointed out. But it does indicate that the point was open.

Pelletier JA also relied on Windsurfing [1985] RPC 59 (CA) for the proposition that the state of the art encompasses all prior art. Windsurfing does indeed take that position, but, as discussed in my article, it was in obiter and in conflict with the well known decision in General Tire [1972] RPC 457, 497 (CA).

He also relied at [56] on the SCC’s use of the phrase “prior art” in Sanofi / Plavix 2008 SCC 61, [70]-[71]. However, the issue there was not the precise definition of the prior art, but rather the significance of the actual course of conduct of the inventor.

Finally, Pelletier JA relied on the parallel between s 28.3 and the legislation under the UK Patent Act, 1977 [58]. In my article, at 389, I argued that the better parallel is the UK Act of 1949, both because the structure of the 1977 Act is different, and because it was widely recognized as effecting a change in the law, whereas 28.3 was thought to be to be merely a codification.

None of this is to say that Pelletier JA's conclusion was wrong, but only that it is not clearly right. (Note that the above is not an exhaustive review of the relevant considerations which are discussed in my article, but only touches on those raised by Pelletier JA.)

Despite the clear holding by Pelletier JA, I am not sure where the law stands on this point. The authority of the holding is undermined by the fact that it was a decision of only two members of the panel, the point was not fully argued, it did not review the relevant Canadian cases, and it was strictly obiter. In Lilly v Apotex / cefaclor, 2009 FC 991 [349]-[370], Gauthier J declined, quite rightly in my view, to follow the SCC holding as to “standard of review” of a granted patent set out in Wellcome / AZT 2002 SCC 77 [44], in part because the issue was not argued before the SCC [356, fn126] and the point was obiter [357]. (With that said, the situations are not entirely parallel because the SCC in Wellcome / AZT was clearly wrong, for the reasons given by Gauthier J, while the position taken by Pelletier JA is entirely reasonable, even though the counter-arguments were not fully considered.) Apart from any question of the authority of this decision, it does seem to me undesirable for a court to make a holding in obiter on a point of law which has not been argued, because, as Wellcome / AZT illustrates, such holdings may not be as well considered as when the issue is fully argued.