Connection Between Patent Remedies and Competition Act Claims

Dywidag Systems International, Canada, Ltd. v. Garford Pty Ltd. 2011 FCA 264 Mainville J

I don’t normally comment on procedural matters, but there haven’t been many substantive decisions lately, so I thought I would summarize this motion.

Garford sued Dywidag on the basis of patent infringement and under the Competition Act. Dywidag obtained an order for bifurcation of liability and monetary remedy, which order was set aside by Zinn J 2010 FC 581, essentially solely on the basis that the financial information necessary at the remedy phase overlapped with the financial information necessary to prove liability under the Competition Act claim. Dywidag appealed (the Bifurcation Appeal). Subsequently, Russell J 2010 FC 996 granted a motion for summary judgment on Competition Act claim on the basis that the limitations period had run. That decision has also been appealed (the Competition Act Appeal).

In the present motion Dywidag sought to amend its Notice of Appeal in the Bifurcation Appeal, presumably to account for the implications of Russell J's Competition Act decision, and to ensure that the Bifurcation Appeal would be heard immediately after the Competition Act Appeal, even though the proceedings in the Bifurcation Appeal were much further advanced, and, but for the order sought, would be heard first. In light of the close connection between Zinn J's refusal of the bifurcation order and the Competition Act claim, Mainville J granted the orders sought by Dywidag.

Week of 18 September - No Decisions

No patent decisions were released on the Federal Courts' websites for the week of 18 September.

The Argument in Favour of the False Promise Doctrine

I have been critical of the false promise doctrine in past posts, but few arguments are entirely one-sided. The argument in favour of the false promise doctrine is obscured because the traditional justification is based on the theory that the Crown has been deceived in the grant. This theory is unpersuasive in the modern patent system in which a patent is obtained as of right for an invention that is substantively patentable. So, Blanco White §4-403 cites Hatmaker v Nathan (1919) 36 RPC 231 (HL) for the proposition that “where a patentee promises (expressly or impliedly) the attainment of a certain result, and this is not obtained, . . .the patent will be invalid: for ‘protection is secured by the promise of results; it does not, and ought not to, survive the proved failure of the promise to produce the results,’” and then in the footnote he remarks acerbically that “It is not, of course, in actual fact; but the House of Lords has repeated this dictum until it is of unimpeachable authority.”

The better defence of the doctrine is based on the modern understanding of the purpose of the utility doctrine, which is to govern how far upstream in the R&D process an invention may be patented.

Week of 11 September - No Decisions

No patent decisions were released on the Federal Courts' websites for the week of 11 September.

A Limit on the Windsurfing / Pozzoli Obviousness Framework in Pharmaceutical Cases

Astrazeneca Canada Inc. v. Mylan Pharmaceuticals ULC / anastrozole (NOC) 2011 FC 1023 Rennie J

The four-step Windsurfing/ Pozzoli approach to the obviousness determination, endorsed by the Supreme Court in Sanofi 2008 SCC 61 at [67], is now routinely used, but it is no more than a framework that need not, and should not, be used when it is not helpful: Sanofi [61], [63]; Weatherford 2011 FCA 228 [67]. Astrazeneca / anastrozole (NOC) illustrates one context in which the limits of the Pozzoli framework are reached. As is common, the claimed compound, anastrozole, was developed by modifying a lead compound in an attempt to improve its properties. Rennie J held that there was no obvious lead compound, and that was sufficient reason to find that the invention was not obvious, whether or not the subsequent modifications were obvious [214]. If indeed the selection of the lead compound is not obvious, the non-obviousness of the claimed invention follows, whether or not the lead compound is part of the prior art. (Note that the non-obviousness conclusion was supported by compelling secondary evidence [221]-[227]).

An Emerging Framework for Construction of the Promise of the Patent

Astrazeneca Canada Inc. v. Mylan Pharmaceuticals ULC / anastrozole (NOC) 2011 FC 1023 Rennie J

Construction of the promise of the patent is currently a hotly contested area of Canadian patent law, as a valuable and otherwise valid patent may be held invalid for promising too much. Despite this, there is little jurisprudence on how to construe that promise, as Hughes J noted in GlaxoSmithKline / rosiglitazone, 2011 FC 239 at [83]. Rennie J’s debut decision in substantive patent law marks a significant advance in developing a coherent jurisprudence on this point, that is consistent with general principles of claim construction and statutory interpretation. I would say that Rennie J’s decision is a large step in the right direction, except that my own view, expressed in a number of previous posts, is that the entire false promise doctrine is misguided. But Canadian law, and FC judges, are stuck with this doctrine until a higher court rules otherwise, and Rennie J’s opinion is certainly a most welcome contrast to the very disappointing analysis of the FCA in Pfizer v Apotex / latanoprost (NOC) 2011 FCA 236, that I blogged about two weeks ago.

The Rule Against Abstract Claims in the Federal Circuit post-Bilski

Classen Immunotherapies, Inc. v. Biogen Idec (Fed. Cir. 31 Aug 2011)

As the Federal Courts have been quiet recently, I thought I’d take the opportunity to comment on the decision of the US Federal Circuit in Classen Immunotherapies, remanded to the CAFC by the USSC for reconsideration in light of Bilski. Classen is very interesting for two reasons: it is a rare instance of the correct application of the rule against abstract claims to hold a claim invalid; and it provides contrasting interpretations of Bilski in the majority dissenting opinions.

The three patents at issue where based on the purported discovery that early immunization reduces the risk of immune-mediated diseases, including eg diabetes. The district court had granted summary judgment that all of the claims in the patents were invalid as being directed to an abstract idea. Two of the patents claimed a method of comparing two immunization schedules, choosing the one with lower risk, and immunizing according to the lower risk schedule: see claim 1 of the ‘739 patent. The third ‘283 patent claimed a method of determining whether an immunization schedule affects the risk of immune-mediated disease by comparing the incidence of such diseases in two groups of mammals treated with different immunization schedules. Thus both types of claim were based on the discovery that the immunization schedule affects the risk of immune-mediated disease, but the first type of claim included the step of actually immunizing a patient according to the preferred schedule.