Summary Judgment Denied

Meridian Manufacturing Inc v Concept Industries Ltd 2023 FC 20 Zinn J

3,036,430 / Hopper Bottom for Storage Bin

In this brief decision Zinn J dismissed a motion for summary judgment, essentially on the basis that there were disputed factual issues related to both infringement and validity which would likely turn on the credibility of various witnesses [49], [54].

We have seen something of a resurgence in the use of summary disposition in patent cases, starting with Manson J’s decision in Canmar 2019 FC 1233 (here) affd 2021 FCA 7 (here), but we have also seen some pushback, notably in Gemak 2022 FCA 141 (see here): [122]–[124]. The trial judge has quite a lot of de facto discretion in deciding whether to grant summary disposition, and of course, even in a more favourable regime some summary disposition motions will be denied, and vice versa. So each case is an exercise in reading the tea leaves to try and tell whether it signals a trend.

It’s hard to get a read on those tea leaves in this case. Zinn J pointed to specific defects in the evidence, eg it was not clear whether a device that was allegedly anticipatory was part of the prior art [54]. That’s a good reason to deny summary disposition even with a more permissive regime, but on the other hand, if he had been so inclined, he might have proceeded nonetheless, relying on the principle that the parties must put their best foot forward.

Also, I must say I found some aspects of the decision a bit hard to understand. One of the issues where Zinn J found a fundamental disagreement was regarding the essential elements of the claims: “Specifically, [the parties] disagree on whether claims 3 and 7 are essential” [46]. What’s strange here is that essentiality has to be decided on a claim by claim basis, and it is claim elements that are essential or otherwise, not the claim itself: Shire 2021 FCA 52 [55]. Further, there was a dispute as to “[w]hether the ‘solid inner wall’ is an essential component,” and this was crucial to the infringement issue [47]. But so far as I can tell, the term “solid inner wall”—which Zinn J placed in quotes—does not appear in the claims, or anywhere at all in the patent. Presumably the phrase was being used as a shorthand for a claim element and the parties would know which element was at issue. But it does make the decision hard to interpret.

So, at the end of the day, we have another decision refusing to grant summary judgment, and I’m not sure how much more we can extract from those tea leaves.

Case Management May be Preferrable to Summary Disposition

Noco Company, Inc v Guangzhou Unique Electronics Co, Ltd 2023 FC 208 Pallotta J2,916,782 / Portable Vehicle Battery Jump Start Apparatus

Pallotta J’s decision refusing a motion for summary disposition is an interesting contribution to the developing jurisprudence on this issue. There is no new law as such and the decision ultimately turned on the facts, but Pallotta J’s analysis is noteworthy for emphasizing that in some circumstances case management may serve the goal of just and efficient dispute resolution more effectively than summary adjudication.

As an initial point, there was a dispute as to whether the motion was actually a motion for summary judgment under Rule 215, or instead a motion for summary trial under Rule 216 ”[13]. The mere fact of the confusion illustrates that the distinction is fuzzy. While Pallotta J concluded that it was indeed a Rule 216 motion, she pointed out that there is overlap in the factors to be considered [91] and she noted that “judges faced with a motion for summary disposition based on a paper record may be guided by similar factors to decide whether the matter is suitable for summary adjudication, regardless of whether the motion is made under Rule 215 or Rule 216" [93]. On the facts, her decision to dismiss the motion did not turn on the “true nature” of the motion [95]. Her comparison of the requirements under the two Rules is very helpful in clarifying the similarities and differences in requirements for each [91]–[97].

One of the main reasons Pallotta J dismissed the motion is the standard ground that “the Moving Defendants have not presented a sufficiently narrow and well-defined non-infringement issue that is suitable for summary adjudication” [97]. She noted that:

[99] The Moving Defendants’ . . . have not limited their arguments to the claim terms that must be construed in order to make a finding of non-infringement based on a single essential element of claim 1. Instead, they have advanced what appear to be all possible non-infringement arguments for claim 1.

[105] The Moving Defendants presented multiple non-infringement arguments, and a range of possible non-infringement declarations that this Court could make, with the expectation that the Court could decide the motion on a narrower basis or re-define the relief. The issues raised and the expert and fact evidence that was adduced required NOCO to respond to a full-scope non infringement action extending beyond the allegedly infringing products in NOCO’s pleading, before any oral or documentary discovery had taken place. In my view, such an approach is inconsistent with the values underlying summary adjudication as a means for proportionate, cost effective, and timely dispute resolution that fairly balances expediency with a just resolution of the issues in dispute.

It seems that the strategy of “throw mud at the wall and see what sticks” backfired, by broadening the issues beyond what was suitable for summary disposition.

Pollatta J also referred to the importance of trial in cases where there are serious issues with respect to the credibility of the witnesses, which is another well-established factor, recently re-emphasized by the FCA in Gemak 2022 FCA 141 (see here): [122]–[124].

While these are well-established concerns, Pallotta J also noted that summary disposition is not necessarily more efficient. She emphasized that case management can also promote efficient dispute resolution, and may do so more effectively than summary disposition:

[109] Motions for summary judgment or summary trial are time-intensive, and do not necessarily provide an “express route” to resolving a dispute: ViiV at para 41. Proportionality is inevitably comparative; even slow and expensive procedures can be proportionate when they are the fastest and most efficient alternative: Hryniak at para 33.

[110] Procedural steps leading to trial, including documentary and oral discoveries, may also serve to streamline a case, narrow the issues for trial, and promote settlement. The evidence on this motion demonstrates that there are serious issues with respect to the underlying factual basis for deciding infringement, including whether the [exemplary product] is representative of [the Defendants] Products. In my view, allowing the discovery process to unfold is a more proportionate and efficient way to address these issues, particularly under case management.

[111] Restricting judgment to the [exemplary product] alone, without deciding whether it is representative of other products, is not an efficient way to proceed and amounts to litigating in slices. This approach would not narrow the issues for discovery with respect to other products at issue, including the products of defendants who are not parties to this motion. Furthermore, deciding the issues the Moving Defendants have raised without understanding how the findings would affect other products at issue may result in repetition or even complicate the issues to be determined at trial on a more complete factual record.

In concluding, she again emphasized the problem of “litigating in slices” and held that “Allowing the discovery process to unfold provides a more just and proportionate way to streamline the case and narrow the issues for trial” [131].

The entire decision is well worth reading for anyone dealing with a summary disposition motion.

Putting the Brakes on Summary Disposition?

Gemak Trust v Jempak Corporation 2022 FCA 141 Mactavish JA: Gleason, Roussel JJA revg Gemak v Jempak 2020 FC 644 Lafrenière J

            2,276,428 / 2,337,069

The past couple of years have seen a significant shift in practice related to summary judgment and summary trial. The old practice, as I understand it, is that summary judgment was almost never granted, on the view that patent trials normally turn on the expert evidence and the credibility of expert witnesses can only properly be assessed in a viva voce trial. As Manson J put it in Canmar v TA Foods 2019 FC 1233 [45]–[46], for a decade after the FCA restricted the availability of summary judgment in MacNeil Estate 2004 FCA 50, “summary judgment as a just, efficient and expeditious means to resolve disputes on a proportionate basis was lost” [45], until Hryniak v Mauldin 2014 SCC 7 resulted in “a culture shift” that “opened the door for a more reasoned approach to the use of summary judgment motions” [46]. I believe Canmar, affd 2021 FCA 7, was the first in the new wave, but since then we have seen an upsurge in decisions granting summary disposition. The FCA decision in Gemak v Jempak suggests that the brakes might need to be applied.

In the decision under appeal Lafrenière J granted summary judgment dismissing Gemak’s action for patent infringement against Jempak. Lafrenière J acknowledged that the court has been reluctant to grant summary judgment in patent cases, because they often turn on the credibility of expert witnesses [77], [FC 4], but he nonetheless held that summary judgment was appropriate in this case because “there is no substantial conflict of opinion evidence. Jempak’s expert is the only witness who provides an informed and purposive claim construction of the terms at issue from the perspective of a skilled person” [FC 4], [78]. Lafrenière J entirely dismissed the evidence of Gemak’s expert, Dr Frankenbach [FC 110], [81]–[82], on the basis that she gave “evasive and defiant responses”, “conducted herself like an advocate instead of a neutral objective expert” and generally “failed to provide fair, objective and non-partisan opinions” [FC 104], [FC 110], [80]–[81]. However, Mactavish JA pointed out that much of the difficulty in Dr Frankenbach’s testimony was due to the combative stance taken by counsel for Gemak, and the conduct of counsel should not reflect negatively on the credibility of the witness [84]–[85].

Further, Lafrenière J remarked on “evasive and defiant responses from Dr. Frankenbach” and found the evidence of Dr. Frankenbach to be “wanting and problematic in many respects.” But Mactavish JA stated that

[86] a review of the transcript of her cross-examination suggests other possible interpretations of her evidence. Rather than being ‘evasive and defiant’, the transcript could be read to suggest that Dr. Frankenbach was a careful witness, one who wanted to be sure that she understood questions before answering them, and one who would not allow herself to be pushed around by counsel.

Importantly, she went on to state that “it is very difficult to infer a hostile attitude on the part of a witness from a bare review of a transcript, in the absence of an ability to evaluate his or her viva voce testimony” [87].

The FCA consequently held that it was “a palpable and overriding error on the part of the Federal Court to make the negative credibility findings that it did with respect to the evidence of Dr. Frankenbach based on a transcript of her testimony, and to decide the case in reliance on those findings” [90]. The FCA directed that the matter proceed to trial [112].

The interesting question arising from this decision is whether it is a signal from the FCA that the recent enthusiasm for summary disposition needs to be tempered, or whether the decision simply turned on the facts of the particular case.

In support of the view that it turned on the facts of the case, the key point in the FCA holding was that Lafrenière J’s decision explicitly turned on a negative credibility findings, and it was an error to make such a finding based on a transcript. On the other hand, the FCA took the opportunity to review the principles governing summary judgment at some length [61]–[74], even though there was no dispute between the parties as to those principles [61]. Many of Mactavish JA’s statements were phrased in general terms, and she emphasized the importance of viva voce evidence: “The jurisprudence is clear that issues of credibility ought not to be decided on motions for summary judgment” [68]; “the difficulty in assessing the credibility of expert witnesses in complex patent cases on the basis of voluminous paper records was long recognized” as a defect in the old PM(NOC) procedure [69]; and “ the lack of viva voce testimony provided for in the NOC Regulations was one of the inadequacies in the old regime” that led to it being modified to provide for a full trial [70]. These are exactly the reasons why summary judgment was traditionally avoided. Further, Mactavish JA summarized by saying that “[c]ases should therefore go to trial where there are serious issues with respect to the credibility of witnesses” [71]. This was phrased as a general propostion. Moreover, in support she cited, inter alia, MacNeil Estate 2004 FCA 50—the decision which, in Manson J’s account, put the brakes on summary trial in the first place. She also relied on Suntec v Trojan Tech 2004 FCA 140, which also predates Hryniak. Mactavish JA made the general observation that “while patent infringement issues are not by definition excluded from the ambit of the summary judgment process, they tend to raise complex issues of fact and law that are usually better left for trial” [91]. While she did go on to say that “this is not a hard and fast rule” and “there will be cases where use of the summary judgment process is appropriate,” this is a clear statement of a general principle, not a point that was confined to the facts of this case.

While the FCA discussion focused entirely on summary judgment, it seems to me that many of the observations, such as those related to the need for viva voce evidence, apply with equal force to summary trial; the FCA’s central holding was that it was “a palpable and overriding error on the part of the Federal Court to make the negative credibility findings that it did with respect to the evidence of Dr. Frankenbach based on a transcript of her testimony, and to decide the case in reliance on those findings” [90].

Time will tell, but for now my sense is that the FCA is sending a message that the Federal Court should be more cautious in granting summary disposition, at least when the credibility of witnesses is involved—but that will often be the case.

The problem is a difficult one. On the one hand, it would be desirable to reduce the cost of patent litigation, particularly in contexts where the expense of patent litigation is exploited to extract unjustifiable settlements. On the other hand, assessing patent validity and infringement on a reduced record may be unfair. Encouraging access to justice is certainly desirable, but the ‘justice’ aspect is as important as the ‘access’ part. Flipping a coin would be much cheaper than trial as a means of settling patent disputes, but no one thinks it is better for that reason. How to strike the balance is a very difficult question, as the cost and complexity of patent litigation cuts both ways.

With all that said, I will end with a very tentative proposal. Before American Cyanamid [1975] UKHL 1, a motion for an interlocutory injunction required a showing of a prima facie case on the merits. My understanding is that parties would use this to get what amounted to a non-binding opinion on the merits, on an abbreviated record, from the judge who would ultimately be hearing the case. The parties would often then settle in light of that opinion, but a party who thought they could do better on a full record was fully entitled to go to trial. (Over time the abbreviated record got longer and longer—the hearing in Cyanamid was three days at first instance and eight days in the Court of Appeal. One solution to that problem is better case management, rather than doing away with consideration of the merits, and it seems that most jurisdictions are now going that way.)

I wonder if it might be possible to adapt the motion for summary disposition to a similar effect. (I expect this would require an amendment to the Federal Courts Rules.) In particular, if the judge hearing the motion for summary disposition is of the view that one side had a prima facie weak case, but the matter was not suitable for summary disposition because, eg it was necessary to assess credibility viva voce, the judge might dismiss the motion, but at the same time issue what would amount to a non-binding direction on costs, to the effect that if the case turned out to be as weak as it appeared to be, costs would be assessed against the party with the weak case at a substantially elevated scale — say 75% rather than 25%. It would be non-binding, in the sense that the elevated costs award would not be automatic if the party against whom it was issued lost at trial. Rather, the trial judge would take it into account and award elevated costs if the party against whom it was issued had not improved their case at trial. If the party lost, but the judge was of the view that the full trial really had improved the court’s ability to assess the evidence, it would be open to the judge to ignore their prior directive and award costs on the normal scale. The party with the weak case would thereby be put on notice that there would be significant costs consequences if it proceeded to trial, unless it was confident that a trial really was necessary to present it’s position fairly. As with the old interlocutory injunction practice, this would provide an incentive to settle, based on a non-binding opinion on the merits from the judge who would ultimately hear the case. The difference is that in the interlocutory injunction case, the question was whether the plaintiff had a strong case, and in this suggestion, the question is whether one of the parties has a weak cases; but the basic concept of a preliminary assessment of the merits on reduced record is the same. Of course, a judge hearing a summary disposition motion would not be required to issue any such directive in dismissing the motion; it would remain open to the court to simply hold that the matter was not suitable for summary disposition.

I’m not a litigator, so I don’t have a good sense of whether this would work in practice. Indeed, I hesitated to post the suggestion at all. But I decided I might has well make the suggestion for consideration.

Burden on the Merits in Summary Trial

Mud Engineering Inc v Secure Energy (Drilling Services) Inc 2022 FC 943 St-Louis J

            2,635,300 / 2,725,190 / Drilling fluid

The most significant aspect of this decision, dismissing Mud Engineering’s action on a summary trial, is the discussion of the the burden of proof in a summary trial. The result on the facts turned on lack of evidence, with the strange result that the action was dismissed because the listed inventor was not proven to be the inventor, but at the same time no one else was held to be the inventor, and there was no order to vary the record, so the result is that the 300 patent is an invention without an inventor.

Mud Engineering is the listed owner of both disputed patents and Mr Wu, the founder of Mud, is the sole listed inventor on the 300 patent and the co-inventor on the 190 patent [57]. Before founding Mud, Wu had worked for Secure’s predecessor and had invented or co-invented some related technology that is the subject of its own patents or applications owned by Secure (see eg 2,451,585). When Mud brought this infringement action against Secure, Secure argued that Secure, not Mud, is the rightful owner of the patents, [9] on the basis that Mr Wu had actually invented or co-invented the inventions when he worked at Secure’s predecessor. There was very little evidence on either side as to how the disputed patents had been developed, so the burden of proof was a major issue.

Everyone agreed [18], and it is now established, that the party seeking summary trial bears the burden of demonstrating that summary trial is appropriate: see also ViiV FC 2020 FC 486 [19]. The main question in this case was as to the burden on the merits of a summary trial issue, once it has been determined that summary trial is appropriate.

The question of burden of proof in a summary trial was addressed, albeit briefly, by Manson J in ViiV FC 2020 FC 486, where he said:

[20] On the merits of the summary trial issue, the usual burden in a civil trial applies, that is, the “party making an assertion must prove it by relevant evidence and the application of appropriate law” (Teva Canada [2011 FC 1169] at para 36). In this case, [the defendant] asserts that [its product] does not fall within the scope of claims 1, 11, and 16 of the 282 Patent, and thus bears the burden of proving non-infringement.

Consequently, while the usual burden lies on the patentee to prove infringement, that burden was reversed in ViiV because of the way the issue had been raised in a summary trial.

Subsequently, in Janssen v Pharmascience 2022 FC 62, after much fuller consideration of the issue and the relevant caselaw, Manson J held expressly that his holding on this point in ViiV was wrong ([55]), and the burden in a summary trial is the same as in underlying action:

[57] [W]hile on a motion for summary trial, the burden is on the moving party to demonstrate that a summary trial is appropriate, once the onus of the merits of the matter, in terms of either infringement or validity, are before the Court for determination, the burden and onus of proof of the underlying action applies.

Nonetheless, in this decision, St-Louis J held that she should follow Manson J’s decision in ViiV, not Janssen, on the basis that Manson J’s holding on the issue had been affirmed by the FCA in ViiV FCA 2021 FCA 122 [44], and she was bound by the FCA decision: [26], [28].

This would all make sense if ViiV FCA was released after Janssen. But ViiV FCA was released seven months before Manson J decided Janssen. So why didn’t Manson J also follow his own prior decision in ViiV, on the basis that he was bound by the FCA decision? One possibility, that is implicit in St-Louis J’s decision, is that this specific point simply wasn’t argued in Janssen. It is a bit odd that neither counsel nor Manson J himself recognized that the point had been decided, especially ViiV FCA was considered on the summary judgment standard generally, with Manson J even quoting a nearby passage from ViiV FCA: see Janssen [33], quoting ViiV FCA [42].

The other possibility is that Manson J and the parties in Janssen did not conisder ViiV FCA to have settled the point. The passage that St-Louis J considered to have affirmed Manson J’s ViiV decision is this:

[44] ViiV contends that the Federal Court ignored the issue of onus of proof. I disagree: see 2020 FC 486 at paras. 19-22.

The cited paragraphs included ViiV FC [20], where Manson J articulated the burden that he subsequently repudiated in Janssen. However, it also includes ViiV FC [19], where Manson J held that the party seeking summary trial bears the burden of demonstrating that summary trial is appropriate. In ViiV FCA at [43], the FCA outlined ViiV’s argument that Manson J had erred in finding that a summary trial was appropriate. Arguably “the issue of the onus of proof” adverted to in the next paragraph is the issue of the onus of establishing that a summary trial is appropriate, not the separate issue of who bears the onus on the merits in a summary trial. That would explain why neither Manson J nor counsel in Janssen considered ViiV FCA to have settled the latter point.

With that said, the FCA in ViiV did refer to the entire passage, which includes the crucial [20]. On the other hand, the FCA did not specifically approve everything in that passage as being correct in law, but rather referred to it to say that Manson J had not ignored the onus of proof.

I’ll also point out that the issue of onus often doesn’t matter; in fact, it ultimately did not matter in either ViiV, or in Janssen, or, as I understand it, in this case. In ViiV, while Manson J did hold that the burden lay on the defendant to prove non-infringement, reversing the usual burden, infringement turned entirely on claim construction [21], which is a question of law for the court. Manson J decided that without any presumption except that the plaintiff / patentee bears the burden of proving non-essentiality of any element [22] — which is the same presumption as in the underlying action: Free World 2000 SCC 66 [57]. In Janssen the onus didn’t make any difference on the facts [62].

Further, the burden will not matter in a case in which there is an applicable presumption. The ViiV position is that the “party making an assertion must prove it by relevant evidence and the application of appropriate law”; the Janssen position is that “the burden and onus of proof of the underlying action applies.” The “appropriate law” under the ViiV position includes any presumption, such as the presumption of validity in s 43(2).

There is a parallel with the burden issue under the old NOC regs, where the point was well developed. The patentee responding to an NOA was the applicant, and as such bore the burden of establishing that none of the allegations, including any allegation of invalidity, are justified: Pfizer v Apotex 2007 FCA 209 [107]; in effect, the applicant must prove validity. The applicant / patentee could rely on the statutory presumption of validity to meet this burden: Pfizer v Apotex 2007 FCA 209 [109]. The burden would then shift to the generic to adduce evidence of invalidity, or validity would be established on the basis of the presumption alone. To discharge its burden, the generic must adduce sufficient evidence “on a balance of probabilities” and once it has done so, the first person must disprove the allegation, also on the balance of probabilities: Pfizer v Apotex 2007 FCA 209 [110]. That is, once the second person has adduced evidence sufficient to displace the presumption, the presumption “is no longer relevant” and the matter is decided in light of the evidence adduced by the parties: Pfizer v Apotex 2007 FCA 209 [110]; see also Pfizer Canada Inc v Novopharm Ltd 2008 FC 11 [32] “If both parties lead evidence, the Court will weigh all the evidence and determine the matter on the usual civil balance.” In this sense the presumption of validity is weak; it suffices to establish validity only in the absence of relevant evidence adduced by the generic.

Similarly, under the ViiV approach to a summary trial, if the moving party is a patentee making an assertion of validity, the patentee must prove it, but can take advantage of the presumption of validity. This is no different than under the Janssen approach, since a patentee in an action can of course also rely on the presumption of validity. This means that a party attacking the validity of a patent bears the burden of proving invalidity under either ViiV or Janssen.

It seems to me that for the same reason, the burden didn’t matter in this case either. The question was ownership. Pursuant to the ViiV rule, applied by St-Louis J, the burden lay with the party making an allegation to prove it on the balance of probabilities. Since Mud alleged ownership, it bore the burden of proving ownership [90]. But the parties agreed, and St-Louis J held, that there is a weak presumption pursuant to s 43(2) that the registered owner is the owner [64], [81], [89]. Mud was able to rely on this presumption, though St-Louis J held on the facts that it had been rebutted [89]. With the presumption rebutted, it seems to me that we would be in the same situation as in an NOC case where the generic has adduced sufficient evidence to rebut the presumption of validity, which is to say that the matter is to be decided on the balance of probabilities in light of the evidence adduced by both parties.

St-Louis J nonetheless indicated that the burden did matter, and indeed that it was “dispositive” [35]. After having held that Secure had presented “some evidence” which was sufficient to displace the presumption that the named inventor is the true inventor [89], she continued:

[90] Since the presumption is rebutted, the party making an allegation holds the burden to prove it on balance of probabilities. As Mud made an allegation of ownership of the Disputed Patents on this Motion for summary trial, seeking a declaration from the Court in that regard, they must prove their allegations. The parties agreed that, to establish that Mud is the proper owner of the Disputed Patents, they had to establish that Mr. Wu, name as the inventor, invented what he claims.

St-Louis J then reviewed the evidence adduced by Mud, and decided it was not sufficient to establish that Wu had invented the patented technology, and hence Mud had not carried its burden [93].

St-Louis J seems to have treated the evidence adduced by Secure as going only to rebutting the presumption of ownership, and not to the merits of whether Wu was the inventor. That is why, in her view, the burden mattered.

But the view that the evidence adduced to rebut the presumption does not go to the merits is contrary to  the approach taken in the NOC cases, in which it is very clear that the evidence that displaces the burden is also considered in the subsequent analysis on the merits.

Further, an important point is that, as I understand it, evidence sufficient to displace the presumption of validity is also sufficient to establish invalidity on the balance of probabilities, in the absence of any evidence adduced by the applicant. As the FCA explained in Pfizer v Apotex 2007 FCA 209 [105] quoting Bayer Inc.v Apotex Inc (2000) 6 CPR(4th) 285 (FCA) [9]:

[9] The operation of the statutory presumption in the face of evidence of invalidity depends upon the strength of the evidence. If the evidence proves on a balance of probabilities that the patent is invalid, the presumption is rebutted and is no longer relevant: Diversified Products Corp. v. Tye-Sil Corp. (1991), 35 C.P.R. (3d) 350 (F.C.A.) at 359. (Bayer at paras. 6, 9)

The FCA in Pfizer v Apotex repeated this passage for emphasis at [110]. It made the same point at [107] quoting Aventis Pharma v Apotex 2006 FCA 64 [78]–[79]:

[78] Relying upon the presumption of validity, [the patentee] can thus meet its initial burden merely by proving the existence of the patent.

[79] Once this is done, the burden shifts to [the generic] to establish that the patent is invalid. The standard of proof that [the generic] is required to satisfy is that of a balance of probabilities [citing Bayer [9]]

In this case, evidence was adduced by Secure and accepted by St-Louis J, to the effect that “Mr. Wu did not invent the broad scope of subject matter claimed in the Disputed Patents” [83]. Under the approach taken in the NOC cases, this evidence, being sufficient to rebut the presumption, would also be sufficient to establish that Wu was not the inventor on the balance of probabilities, in the absence of evidence to the contrary. It is clear that St-Louis J considered the evidence of inventorship adduced by Mud to be weak. Under the NOC approach, the presumption, having been rebutted, was no longer relevant, and the evidence adduced by Secure, and not countered by Mud, was sufficient to establish that Wu was not the owner on the balance of probabilities. Thus, it seems to me that the question of the burden of proof in a summary trial ultimately did not matter, assuming that the approach to burden shifting in the NOC proceedings also applies in a summary trial.

The point of all this is that the question of burden did not matter in ViiV, in Janssen, or in this case. (This is not to suggest it never matters; for example, it would matter in a case in which infringement turned on the facts, rather than on claim construction.)

In the end, this is a tricky question of binding precedent. I can understand why St-Louis J felt she was bound by ViiV FCA on this point, but I don’t think that this passing and somewhat ambiguous reference, that was clearly not fully considered at either level in ViiV, can be considered to have settled a point of principle, particularly as the point was not determinative. As I see it, this point remains open.

To return briefly to the facts, the invention was drilling fluid. There was very little evidence of Wu’s involvement in the development of the technology [98]. The evidence of Secure’s expert that led St-Louis J to conclude that Wu had not invented the claimed subject-matter was that the claimed drilling fluid, was strikingly similar to the drilling fluid subject matter of the 585 patent (not in dispute), developed by Wu and a co-inventor while he was at Secure’s predecessor [100]. St-Louis J held that in order to establish that Wu was the inventor, Mud would have to establish that the drilling fluids of the disputed patents were “completely different” from those Wu worked on while at Secure’s predcessor [101], and Mud had failed to carry that burden [105]. (I must say that I am inclined to agree with Mud [133] that this is a validity argument in the guise of an ownership argument.) At the same time, Secure failed to establish that its employees, other than Wu, were the true inventors of the disputed patents [138]–[139]. The result of St-Louis J’s decision is that the 300 patent is an invention without an inventor, at least for the purposes of this proceeding. At the same time, there does not appear to have been any order to vary the records under s 52, so presumably Wu will remain as the listed inventor. There are going to be some interesting estoppel / abuse of process arguments if Mud ever tries to assert these patents against another party.

Burden in Summary Trial Clarified

Janssen Inc v Pharmascience Inc 2022 FC 62 Manson J

Janssen Inc v Apotex Inc 2022 FC 107 Manson J

             2,655,335 / paliperidone palmitate / INVEGA SUSTENNA / NOC

These are effectively companion cases, in which the underlying actions were brought by Janssen under the new NOC regulations against Pharmascience and Apotex, respectively, on the basis that their proposed paliperidone palmitate products would infringe Janssen’s 335 patent. In response, both Pharmascience and Apotex brought motions for summary trial, seeking a declaration that their products would not infringe. The key issues were the same in both cases: was the matter appropriate for summary trial; and was the second prong of the Corlac test for inducement satisfied. The outcome was also the same in both cases: summary trial was appropriate, and infringement was established. The summary judgment point is better developed in the Pharmascience case, but some of the substantive arguments are easier to understand in the Apotex case. Unless otherwise indicated, paragraph numbers refer to the Pharmascience decision, just because I happened to read it first. Heavy redactions in both cases make it difficult to fully understand a number of substantive issues.

On the procedural issue, the main point of note is that Manson J clarified the burden on a summary trial:

[57] [W]hile on a motion for summary trial, the burden is on the moving party to demonstrate that a summary trial is appropriate, once the onus of the merits of the matter, in terms of either infringement or validity, are before the Court for determination, the burden and onus of proof of the underlying action applies.

This seems right to me on the authorities reviewed by Manson J, and as a matter of policy. A summary trial is a procedural means for expeditious resolution of a matter, and if the burden were different from the underlying action, it might instead be used strategically to affect the substantive outcome.

On the substantive point, the 335 Patent relates to a dosing regimen for long-acting injectable paliperidone palmitate formulations for the treatment of schizophrenia and related disorders. It claims a dosage regimen comprising a first loading dose of 150 mg-eq of paliperidone palmitate administered into the deltoid muscle on day 1; a second loading dose of 100 mg-eq on day 8; and subsequent maintenance doses of 75 mg-eq monthly thereafter [19]. There are various types of claims, including product claims to prefilled syringes adapted for administration accordingly, use of the dosage form, Swiss-form claims, and claims to the dosage form adapted for administration accordingly [10].

Janssen conceded that the defendants would not directly infringe, because their product does not contain one of the essential elements of the claimed invention—though we don’t know which element, because of the redactions.

Janssen therefore relied entirely on inducement [89]–[90]. The standard Corlac 2011 FCA 228 test for inducement has three parts: (1) direct infringement by a third party; (2) the inducer influenced the third party to the point that the infringing act would not have occurred without the influence; and (3) the defendant knew that its influence would bring about the infringing act: [93].

On the first part, Janssen argued that the direct infringement will occur by prescribing physicians. The main issue on this point relates to the absence of the essential element from the generic product. I gather that the generic products would be packaged without one of the essential elements, but the missing element would be supplied at the point of administration: [JvA 119]. (This is one of the points that is difficult to understand because of redactions.) The generics apparently argued that the first prong of the Corlac test was not established in such circumstances. Manson J disagreed:

[JvA 116] The first prong of the inducement test requires that the “act of infringement must have been completed by the direct infringer” [Corlac at paragraph 162].

No direct contact is required between the inducer and the direct infringer [citing Hospira 2020 FCA 30 [26].

There is also no requirement that the alleged inducer supply all components or elements of the claimed invention [citing Copeland-Chatterson (1906), 10 Ex CR 224; MacLennan 2008 FCA 35, MacLennan v. Produits Gilbert Inc., 2008 FCA 35 [MacLennan]; Hospira FC 2018 FC 259; Janssen v Apotex / ZYTIGA 2019 FC 1355

This is straightforward—if the defendant supplied the whole invention, it would typically be a direct infringer. The doctrine of inducement was developed precisely to address the situation when the defendant does not supply all the components of the invention; the factual basis of an action for inducement is typically supply of an unpatented product by the indirect party, which is then used by the direct party to infringe the patent at issue. So, in MacLennan the patent claimed “a saw tooth and tooth holder combination” and the defendant supplied only the tooth, and, as Manson J put it, “the Court found liability for inducement despite the inducer supplying only one-half of the claimed invention” [102].

The key issue was the second prong of the Corlac test. In my view there is some uncertainty as to the whether strict “but for” causation is required on the second step. Manson J discussed this issue in Janssen v Teva 2020 FC 593, which dealt with the same patent, concluding that strict “but for” causation is indeed required: see here. Unsurprisingly, in this decision, Manson J reaffirmed that strict “but for” causation is required for inducement [123]–[124]. An appeal of Janssen v Teva is pending [19], so we may learn more in due course.

The only act of inducement alleged was the product monograph, as is typical in these pharma inducement cases. An initial question is whether the defendants’ PM instructed an infringing use of the defendants’ product. Manson J answered in the affirmative on the facts, though the reasoning is impossible to follow due to the redactions.

A second point arose because the experts all agreed that the ultimate dosing decision is based on physician skill and judgment, not the language in the product monograph [JvA 132], and the question was whether this precluded a finding of inducement. A third point is whether the physicians actually pay any attention to the PM—this is a factual point that has been contentious in a number of recent inducement cases. Again, the details of Manson J’s reasoning on these points is difficult to follow due to the redactions, but he did ultimately find on the facts that“[n]otwithstanding the exercise of skill and judgment by prescribing physicians in selecting the dosing regimen for patients, the evidence before the Court in this case establishes that acts of infringement will be influenced by the acts of the alleged inducer, Apotex, to the point that, without the influence, direct infringement will not take place” [JvA 147] and he was satisfied that Janssen had proven that “at least some prescribers” will be sufficiently influenced by PM to establish inducement [JvA 148].

There are a couple of noteworthy developments on the third prong, the knowledge requirement. Manson J noted that knowledge is not restricted to actual knowledge “but also what Apotex [the alleged inducer] ought to know” [JvA 159]. This is consistent with Hospira 2018 FC 259 [334]–[335], but I am not aware of any other caselaw on this point.

Manson J went on to say that in any event “Apotex can now ‘reasonably be expected’ to have the required knowledge given that Janssen’s experts have stated that some physicians will be influenced by the Apotex product monograph to infringe the claims of the 335 Patent” [JvA 159]. This implies that in any case in which the first two prongs are established, including actual influence, and the allegation of inducement fails only on the knowledge prong, the plaintiff will not be entitled to damages for past infringement, but it will nonetheless normally be entitled to injunctive relief to prevent any future infringement.

Thus Manson J has lowered the bar on the knowledge requirement in these respects, or more precisely, has clarified that the bar is low. A low bar on the third prong is broadly consistent with the existing jurisprudence: I am not aware of any case of inducement which has failed solely on the knowledge prong, if the first and second prongs were satisfied.

Gillette Defence and Prior User Rights

Kobold Corporation v NCS Multistage Inc 2021 FC 742 Zinn J

            2,919,561

At one level this is a mundane procedural decision denying a motion to file expert reply evidence on the basis that the issue ought to have been anticipated [10]. But the effect is to hold that a Gillette defence cannot be based on prior use rights found in s 56 of the Act, with the consequence that the underlying motion for summary judgment was also derailed [19]. This is problematic in light of the “culture shift” in favour of simplified procedures endorsed by the SCC in Hryniak v Mauldin 2014 SCC 7 [2] that has been embraced by the Federal Courts in several recent decisions, most recently Canmar Foods 2021 FCA 7 affg 2019 FC 1233 (here). I suggest that a purposive analysis of the provision in question indicates that there may be a way to permit a motion for summary judgment to proceed in similar future cases.

After being sued for infringement of the 561 patent by Kobold, NCS brought a motion for summary judgment on the basis that the allegedly infringing procedure it currently uses is the same procedure that it had used prior to the claim date [5], [6]. NCS’s argument is similar to the so-called “Gillette defence,” established in Gillette Safety Razor (1913) 30 RPC 465 (HL), which permits the defendant to prove that the alleged infringement was practised in the prior art, so that either the alleged infringement does not fall within the claims of the plaintiff’s patent, or if it does, the patent is invalid for anticipation. (The Gillette defence may also turn on obviousness.) As Locke JA explained in Western Oilfield 2021 FCA 24 [77] the Gillette defence is not actually a distinct defence under the Act, but is rather “a shortcut around the often difficult and time-consuming process of construing the claims of a patent, and then determining whether those claims are valid and whether they have been infringed.” So, if the defendant can prove that it was only doing what it had always done publicly, which is purely a matter of fact, the claims asserted against it must either be invalid or not infringed. Crucially, this makes it unnecessary to construe the claims and assess anticipation; the whole point of the Gillette defence is that it avoids the cost of construing the claims and assessing validity in favour of a purely factual inquiry. The Gillette defence is often less helpful in practice because it is rare that a defendant will be willing to put all its eggs in that basket—but this suggests that the Gillette defence is a prime candidate for a summary trial, where determination of a single factual issue can determine the case.

That was NCS’s position in this case. NCS argued that the procedure it uses today is the same procedure it used prior to the claim date. But NCS did not rely on the Gillette defence as such. The allegedly infringing device was a bottom hole assembly used in oil and gas drilling and I suspect that NCS was concerned that it might not be able to establish that its prior use had made its device available to the public so as to be prior art for the purposes of anticipation under s 28.2. NCS instead sought to rely on the prior user rights granted by s 56, the effect of which is to allow a person to continue to do any act that it had done prior the claim date, even if its prior use had not been public.

More particularly, s 56(1) provides that “if—before the claim date of a claim in a patent—a person. . . committed an act that would otherwise constitute an infringement of the patent in respect of that claim. . . it is not an infringement of the patent. . . if the person commits the same act on or after that claim date.” The difficulty for NCS lay in the phrase “that would otherwise constitute an infringement of the patent.” In support of its motion for summary judgment based on s 56, NCS filed a fact affidavit of one its employees, evidently to the effect that NCS’s allegedly infringing bottom hole assembly was the same as NCS had used prior to the claim date [3]. In response, Kobold filed an expert affidavit going to infringement and (apparently) to claim construction [4]. NCS then brought a motion seeking to file expert reply evidence.

The Rules do not expressly allow for evidence in reply and such evidence is permitted only in special circumstances: Amgen v Apotex 2016 FCA 121. NCS argued the reply evidence should be permitted because it could not have anticipated that Kobold would file evidence on claim construction, because claim construction was irrelevant to the question of whether the bottom hole assembly it currently uses is the same as the assembly it used before the claim date [6]. Zinn J rejected this argument, saying that issues related to claims construction and whether NCS’s device was infringing ought to have been anticipated by NCS:

[10] These are two of the very issues at the heart of this litigation. Moreover, they are the very issues to be addressed when relying on section 56 of the Patent Act, unless a party admits that its tools and procedures do breach the relevant patent, but argues that they have been in use prior to the patent claim date.

The key point is that s 56 is available only in respect of “an act that would otherwise constitute an infringement.” As Zinn J put it, NCS’s position

ignores the express wording of section 56, which. . . speaks to a defendant committing an act before the claim date “that would otherwise constitute an infringement of the patent in respect of that claim.” This language brings directly into issue both claims construction and infringement. [11]

The effect of this holding is that a Gillette defence is available based on a prior public use, but not based on a prior secret use; while a defendant can avoid addressing claim construction and infringement when its prior use was public, it cannot avoid addressing those issues when its prior use was secret.

This also effectively means that a summary judgment is not available based on prior user rights. If the NCS’s device would not constitute an infringement, s 56 is not available, and unless NCS admits infringement, validity and infringement are therefore in issue. To get a summary trial focusing on the purely factual issue of prior use, NCS must admit infringement. It is of course a very risky proposition to put all its eggs in that basket.

This is somewhat counter-intuitive. In either case, the argument is that the defendant should be permitted to keep doing what it had always been doing, on the basis that the act must either be non-infringing, or permitted, either because the patent is invalid by anticipation, in the former case, or by prior user rights under s 56, in the latter case. Why should there be a functional difference between the two scenarios?

To answer that question we should look to the purpose of the key phrase. Why does s 56 apply only to an act “that would otherwise constitute an infringement of the patent”?

The long-standing provisions of the Act relating to prior user rights were replaced by entirely new provisions in 2018. It appears that the new provisions were modeled on the corresponding provisions of the UK Patents Act 1977, namely s 64. While there are some significant differences in the overall provision, this particular passage is very similar. It appears that the intent of this phrase in the UK Act is to ensure that prior uses which are non-infringing by virtue of statutory exceptions under s 60(5) of the UK Act, eg an experimental use, are not protected by the prior use provisions: see Terrell on Patents §14-203. It seems reasonable to suppose that the purpose of the parallel phrase in the Canadian Act is the same. (The main exceptions under the Canadian Act appear to be use authorized to respond to a public health emergency under s 19.4(7); regulatory use under s 55.2; and experimental use under s 55.3. There are also third party rights under s 55.11 which give rise to an exception under certain circumstances, but these have their own prior use provisions.)

That is, it appears that the intent of the key phrase is to ensure that the statutory exceptions to infringement do not give rise to prior user rights. An experimental use, for example, is a limited exception to infringement, which does not confer unlimited rights to make, sell and use the invention; consequently, an experimental use prior to the claim date should not give rise to a general right to make, sell and use the invention after the claim date. The defendant who was engaged in experimental use prior to the claim date is nonetheless entitled to continue engaging in the same limited experimental acts after the claim date, not by virtue of the prior user rights provisions, which are inapplicable, but by virtue of the experimental use exception itself. Extending the prior user rights acts to prior experimental use is therefore both unnecessary and undesirable.

If that is indeed the purpose of the key phrase, I suggest that the defendant need not admit infringement in order to take advantage of s 56; it should be enough for the defendant to admit that its acts do not fall within any statutory exception to infringement. On a motion for summary judgment, if NCS could then establish the factual point that the prior use was the same as the current use, while admitting that it was not subject to any exception—including eg that the use was not experimental—this would establish that NCS was entitled to the prior use defence without requiring it to admit infringement.

Landmark FCA Decision on Summary Judgment

Canmar Foods Ltd v TA Foods Ltd 2021 FCA 7 de Montigny JA: Pelletier JA, Rivoalen JJA affg 2019 FC 1233 Manson J

            2,582,376 / method for roasting oil seed

This landmark decision from the FCA, affirming Manson J’s use of summary judgment, is a very welcome development that will improve the operation of the patent system by permitting expeditious disposition of patent cases in appropriate circumstances. The decision is also notable for its considered discussion of the interpretation of s 53.1, which permits the use of summary judgment in certain circumstances. I’ll discuss that issue in my next post.

At trial, Manson J granted summary judgment on the basis of non-infringement in a decision which turned on claim construction, and particularly whether two claim elements were essential. This was the first decision in many years to grant summary judgment on substantive grounds in a patent matter. As discussed here, Manson J was critical of the FCA decision in MacNeil Estate 2004 FCA 50, which, in his view, resulted in an approach in which “summary judgment as a just, efficient and expeditious means to resolve disputes on a proportionate basis was lost” [45]. He described the SCC decision in Hryniak v Mauldin 2014 SCC 7 as resulting in “a culture shift” that “opened the door for a more reasoned approach to the use of summary judgment motions” [46]. After Manson J’s decision, three more FC decisions granted summary judgement: see here, here and here.

In his decision for the FCA, affirming Manson J, de Montigny JA did not comment on whether there has been a “culture shift”—indeed, he did not mention MacNeil Estate at all, which may be significant in itself. Nonetheless, the fact that the FCA approved the use of summary judgment on the facts of this case sends an important message to the FC judges, who will evidently be receptive to it judging from the spate of recent decisions.

On the facts, two issues were raised in respect of summary judgment. The first is whether Manson J erred in granting summary judgment on the basis of non-infringement before any discovery had taken place [19]. Justice de Montigny noted that this was clearly permitted by Rule 213: “Whether or not discovery had taken place at this stage is not a factor contemplated by Rule 213, and ought not to be regarded as such” [26, my emphasis]. Moreover, notwithstanding the absence of discovery, the patentee in this case had sufficient information as to the defendant’s method to allow it to marshal the relevant evidence [28].

The second question was whether Manson J erred in making a determination that the two contentious elements were not essential in the absence of any expert evidence on the issue. In effect, the patentee argued that expert evidence is required for claim construction, and that it is necessarily an error of law for the Court to construe a patent in its absence [31], [33]. Justice de Montigny rejected this proposition, both because of a lack of authority to that effect [34], and as a matter of principle: “If the construction of a claim is a matter of law and the judge is entitled to adopt a construction different from that put forward by the parties and their experts, surely the judge can also construe a claim without relying on such evidence in appropriate circumstances” [36].

While de Montigny JA also held that this was an appropriate case to do so, there was an important caveat:

[37] Claims must always be construed in an informed and purposive way, and it is only in the clearest of cases that judges should feel confident enough to construe the claims of a patent as they would be understood by a skilled person, without the help of any expert evidence.

In this case, the invention is a simple mechanical system and the key terms—”stream of air” and “insulated”—and the claim construction exercise was quite straightforward [38]–[47]. This might be taken to suggest that claim construction in the absence of expert evidence is only appropriate in cases in which the claim terms are themselves easy to interpret.

But that suggestion was certainly not explicit and I don’t think it is what was intended. Justice de Montigny continued by saying, in the same paragraph:

[37] In the case at bar, the appellant had the obligation to put its best foot forward. However, it made the strategic decision not to present expert evidence on the summary judgment motion, thereby foregoing the possibility to impress upon the Judge the need to rely on such expertise to construe the patent. Be that as it may, what matters at the end of the day is not so much how and on what basis the judge came to his or her interpretation of a claim, but whether such interpretation is correct or flawed.

This indicates that it is the nature of the evidence, not the nature of the invention, that is important in determining whether a judge should feel confident enough to construe the claims. That seems right to me; even ordinary English words can take on a technical meaning when used in a patent, so it must be the evidence that is key.

I’m sure Canmar will not be the last word on summary judgment, focusing as it did on the facts of the case, but it is the first words in a promising new chapter.

Summary Judgment Granted

 Flatwork Technologies, LLC (Powerblanket) v Brierley 2020 FC 997 McVeigh J

            2,383,341 / hydraulic boom heating wrap

The 341 patent relates to a heating wrap for articulated hydraulic booms, to keep them operational in very cold temperatures such as in the oilfields of northern Alberta where the invention was developed. In this decision McVeigh J granted a motion for summary judgment, holding the 341 patent invalid for obviousness, essentially on the basis that equipment heating wraps eg for a blowout preventer, were a standard part of the prior art and it was not inventive to apply such a wrap to an articulated hydraulic boom [94].

"Foreign Prosecution History Is Inadmissible"

Gemak v Jempak 2020 FC 644 Lafrenière J

            2,276,428 / 2,337,069

After a decade in which it was almost unheard of for the Federal Court to grant a contested motion for summary trial or summary judgment in a patent case, it seems they are now raining down upon us, with Lafrenière J’s summary judgment decision in Gemak v Jempak following Manson J’s decisions in Viiv v Gilead 2020 FC 486 (here) and Canmar 2019 FC 1233 (here). Lafrenière J’s decision in this case is a good example of summary judgment being used to dispose expeditiously of a far-fetched claim construction argument. It is also notable for holding expressly that foreign prosecution history is not admissible under s 53.1. This is in tension with Manson J’s holding in Canmar that foreign prosecution history should be admissible, albeit only in “extraordinary circumstances” [73], [74], [77].

Gemak’s 428 patent at issue was to a dishwasher detergent pod. These pods commonly use percarbonate as a bleaching agent which is activated on exposure to water. Percarbonate is susceptible to degradation by contact with other detergent ingredients or by moisture. For that reason, the percarbonate must be coated to protect it prior to actual use of the pod. Claim 1 is representative [13]:

A detergent composition comprising a granulated percarbonate and a blend which encapsulates the percarbonate, the blend comprising . . . carboxymethyl cellulose [CMC]

Jempak’s detergent pods included percarbonate encapsulated in a protective coating. It was not really disputed that the use of CMC was an essential element of the claim [119]. It was also established that the protective coating used by Jempak did not comprise CMC. Gemak’s main argument was that CMC was present in the other detergent ingredients in Jempak’s pods, and that once the pod was assembled, the CMC in the other ingredients could adhere to the percarbonate coating, and that the resulting coating with CMC adhering to it would constitute “a blend” comprising CMC which encapsulates the percarbonate [121]. Lafrenière J rejected this on the view that “encapsulation refers to a protective coating (a blend) that is applied to the percarbonate during its manufacture to maintain the stability of the percarbonate and to prevent it from decomposing prematurely before use” [123]. Gemak’s position was not helped by its “evasive and defiant” expert witness [104].

It strikes me that this is an excellent example of the kind of argument that should not be allowed to proceed to a full trial. The patent system is rife with the potential for abuse, in large part due to the cost and complexity of patent litigation. The cost-effective disposition of weak claims is essential to ensuring that the patent system encourages innovation, rather than impeding it.

The other notable point is that Jampak sought to adduce evidence of the US prosecution history. Lafrenière J refused to allow this evidence, in part because it was introduced too late [77] and in part because it would not assist the court [78]. But he also held expressly that “foreign prosecution history is inadmissible” under the new s 53.1 of the Act: [86], and generally [82]-[86]. This holding was primarily based on a straightforward textual argument:

[83] Subsection 53.1(1) provides that the prosecution history may be admitted into evidence in an action to rebut any representation made by the patentee regarding claim construction, but only when specific conditions are met. In particular, subparagraph 53.1(1)(b)(ii) provides that the communication must be between the applicant and “the Commissioner, an officer or employee of the Patent Office or a member of a re-examination board.”

[84] The definition of “Commissioner” is set out in section 2 of the Patent Act as meaning the Commissioner of Patents, who is appointed by the Governor in Council and exercises the powers and performs the duties conferred and imposed on that officer by or pursuant to the Patent Act. The Patent Office described in section 3 as an office attached to the Department of Industry, or to such other department of the Government of Canada as may be determined by the Governor in Council.

Further,

[86] There is a further presumption against the legislature impliedly changing established law, particularly the common law. If Parliament had intended that communications prepared in respect of the prosecution of the application for a foreign patent could be admitted, clearer language would be required to effect that result. In the circumstances, I conclude that section 53.1 did not change the existing rule, as enunciated in Free World Trust, that foreign prosecution history is inadmissible.

I made some similar points in my blog post on Manson J’s decision in Canmar 2019 FC 1233 [77], which held that in “extraordinary” circumstances foreign prosecution history should be admissible to aid in construction of the Canadian claims.

On the other hand, “[t]he language of section 53.1 is limited to communications between the patentee and the Canadian Patent Office” [70]. In particular, per s 53.1(b)(ii), the communication must be between the applicant and “the Commissioner, an officer or employee of the Patent Office or a member of a re-examination board.”

Further, prior to the enactment of s 53.1, it was clear law that “statements made during prosecution of Canadian patent applications or corresponding foreign patent applications were neither relevant nor admissible with respect to construing terms used in issued Canadian patents” [58]; and Free World 2000 SCC 66 [66]. As a matter of statutory interpretation, “[i]t is presumed that the legislature does not intend to make any change in the existing law beyond that which is expressly stated in, or follows by necessary implication from, the language of the statute in question”: R v T (V) [1992] 1 SCR 749, quoting with approval Maxwell on the Interpretation of Statutes; and see also Parry Sound v OPSEU [2003] 2 SCR 157 [39]. This implies that s 53.1, in providing for admissibility of communications to the Canadian examiner, did not change the existing rule that foreign prosecution history is inadmissible.

I’d say that someone owes me a beer.

In any event, there is evidently some tension with Manson J’s holding in Canmar that foreign prosecution history should be admissible, albeit only in “extraordinary circumstances” [73], [74], [77]. Lafrenière J did not directly discuss Manson J’s holding on this point.

Markman Hearings Come to Canada?

Viiv Healthcare Company v Gilead Sciences Canada, Inc 2020 FC 486 Manson J
            2,606,282 / bictegravir / BIKTARVY

The most significant aspect of this decision is the simple fact that Manson J granted a contested motion for a summary trial on a claim construction issue – essentially a Canadian version of a Markman hearing. ViiV had brought an action alleging that its 282 patent was infringed by Gilead’s bictegravir product, sold as BIKTARVY. Gilead responded with a motion for a summary trial, which Manson J granted despite ViiV’s objections and attempts to “derail” it [18]. This follows on last fall’s decision in Canmar Foods v TA Foods 2019 FC 1233 (see here and here), in which Manson J explained that for a decade after the FCA restricted the availability of summary trial in MacNeil Estate 2004 FCA 50, “summary judgment as a just, efficient and expeditious means to resolve disputes on a proportionate basis was lost” [45], until Hryniak v Mauldin, 2014 SCC 7 resulted in “a culture shift” that “opened the door for a more reasoned approach to the use of summary judgment motions” [46]. (The only other recent summary trial that I’m aware of is Cascade v Kinshofer 2016 FC 1117, but it was on consent.) It will be interesting to see whether other FC judges agree with Manson J’s view of the effect of Hryniak, and, when an appeal inevitably comes, whether the FCA agrees as well. (I must say it seems like a good idea to me, but procedure is not my area of expertise.) Manson J’s specific reasons for granting the motion on the facts of this case ([11]-[18]), will be of interest in future motions of this type, but since the discussion is brief and I don’t have anything to add, I won’t go through it.

Recourse to the disclosure in claim construction
The key substantive issue was the construction of a single claim term. The most interesting substantive point is that Manson J, after an extensive review of the case law, had recourse to the disclosure to construe the contested claim term, even though it appeared on its face “to be a clear and unambiguous term” [128]

All the claims at issue (Claim 1 is exemplary) [88], are claims to a class of compounds comprising Ring A.

Ring A is defined in the claim as an “optionally substituted heterocycle” [102]. The key issue — where the shoe pinches — is whether Ring A includes only fused and spiro rings, or also a bridged bicyclic ring, as is found in bictegravir.
Much of Manson J’s discussion concerned the proper approach to claim construction. As Manson J noted, the “[t]he law is clear that recourse to the disclosure is improper to vary the scope or ambit of the claims” [126], [136]. However, it is said that while recourse to the disclosure is “permissible to assist in understanding the terms used in the claims,” it is “unnecessary where the words of the claim are plain and unambiguous,” Dableh (1996) 68 CPR (3d) 129 (FCA) at 144 [126].

The tricky question is whether it is permissible to consult the specification as a whole only when the claims are ambiguous. What if the words of the claim appear to be clear when read in isolation, but when read in the context of the disclosure as a whole, it is apparent that they mean something different from what they “clearly” mean when read in isolation? Is it necessary to make a determination that the claims are ambiguous before recourse to the disclosure is permissible? A series of decisions have wrestled with this question.

I won’t go through Manson J’s review of the case law in detail, but I would highlight his conclusion:

[66] The common thread in all of these cases is that the court is to construe the claims through the eyes of the POSITA in light of their CGK at the relevant date. Apart from the patent specification, the only evidence the Court should consider to inform its analysis of the claims is evidence of how the POSITA would understand the claims in light of his or her relevant CGK in the context of the specification as a whole (Bombardier FCA [2018 FCA 172] at para 24).

In other words, the claims must be read in the context of the specification because the claims are part of the specification. This strikes me as clearly correct; I won’t say more as I’ve discussed the principles at length in other posts.

Manson J’s application of these principles to the facts is clear:

[128] While “optionally substituted heterocycle” as used in claim 1 appears on its face to be a clear and unambiguous term, I accept that recourse to the disclosure is necessary to understand the meaning given to these words by the inventors, and the intended scope of this claim language.

This is a clear holding, applied on the facts, that it is permissible to have recourse to the disclosure to understand the claims, even if the claims appear to be clear when read in isolation.

Essentiality
I’ll conclude with a brief comment on the essentiality analysis. ViiV argued that if Manson J construed Ring A as being limited to spiro and fused structures only, it was necessary for the Court to go on to consider whether the bridged ring was an obvious variant. Manson J rejected this, saying

[167] In light of ViiV’s admission that Ring A, as an “optionally substituted heterocycle,” is an essential feature of the invention, the Court does not accept that it should now look at a variant of this essential feature. The Free World Trust [2000 SCC 66]variant analysis focuses on a claimed element of an invention, not some sub-element or feature of the claimed element.

I’m not sure I agree with this. It is true that Free World Trust focused on what it described as “elements” but it’s not clear to me that the analysis turns on what particular aspect of the claim is identified as an “element.” The term “element” never even appears in earlier cases, such as JK Smit [1940] SCR 279 or Birmingham Sound [1956] RPC 232 (CA), that the SCC inWhirlpool 2000 SCC 67 [45], [47] identified as exemplifying the analysis. In any event, the point was not determinative, as Manson J went on to hold that in any event, ViiV had not met its burden of establishing that it would have been obvious to the POSITA at the publication date that bridged bicyclic Ring A structures would have no material effect on how the invention works” [168].