Canada: Patent Held Invalid For Ambiguity And Obviousness (Intellectual Property Weekly Abstracts Bulletin — Week of August 8)

Last Updated: August 11 2016
Article by Beverley Moore, Chantal Saunders and Adrian J. Howard

Most Read Contributor in Canada, September 2016

Patent Cases

Pollard Banknote Limited v. BABN Technologies Corp., 2016 FC 883

Pollard challenged the validity of Scientific Games' (the successor to BABN) patent. Scientific Games counterclaimed with allegations of infringement. The Court held that the patent was invalid, and in any event, not infringed.

The Court considered construction and held that there is arguably an inconsistency between the principle that claim construction should be done before consideration of validity, and the principle that if more than one construction can reasonably be reached, the Court must favour the one that upholds validity. However, the Court held that this can be reconciled by the guidance that the Court is not to construe a claim without knowing where "the shoe pinches". Thus, the principles must work hand in hand. In obiter, the Court commented on the file history and the problems associated with not permitting the use of extrinsic evidence in claims construction.

Scientific Games argued that due to Pollard's involvement in filing numerous protests, the patent was delayed in issuance, and deference should be given to the Patent Examiner. The Court disagreed, holding that a more direct reason for the delay was that the arguments from the protests were accepted by the examiner, and communicated to Scientific Games in Office Actions. Furthermore, Scientific Games waited until the end of the 6-month period to respond to each of those office actions, so it was not concerned with delay. In addition, this is not a judicial review proceeding, so there is no standard of review to be applied to the Examiner's decision. Validity is to be assessed on a balance of probabilities.

The Court found one of the dependant claims invalid for ambiguity, holding that the bar code cannot be located in two mutually exclusive areas on the same ticket, thus, no reasonable interpretation can be given to the language of the claims. The Court held that the patent was not invalid for overbreadth, inutilty or anticipation. However, the patent was held invalid for obviousness. The patent was also held to not be infringed.

Bifurcation of Infringement and Validity Issues in Section 8 Action
Apotex Inc. v. Alcon Canada Inc., 2016 FC 720
Drug: Apo-Travoprost Z topical ophthalmic solution

This is a motion for bifurcation in an action brought pursuant to section 8 of the Patented Medicines (Notice of Compliance) Regulations ("Regulations"). Alcon was unsuccessful in proceedings brought pursuant to the Regulations relating to the '287 Patent and the '370 Patent. After Apotex came to market with its product, Alcon commenced an action alleging infringement of the '370 Patent and Apotex counterclaimed, alleging invalidity. Apotex commenced the within section 8 action. Alcon defended this section 8 action on the basis of, inter alia, infringement of the '370 Patent, the '287 Patent and the '172 Patent, which was not the subject of a proceeding pursuant the Regulations. The infringement action has proceeded quickly and trial dates for fall 2017 have been requested. The section 8 action has not proceeded quickly.

Apotex brought this motion in the section 8 action, seeking to have Alcon's allegations of infringement, and its allegations of invalidity, of the '287 Patent and the '172 Patent determined before any of the other issues. The parties agreed that the findings in Alcon's infringement action relating to the '370 will be binding in the section 8 action. Alcon opposed bifurcation on the basis that Apotex was attempting to consolidate the infringement of the '287 Patent and the '172 Patent with the '370 Patent. Apotex responded that it was not seeking to consolidate. To address Alcon's other concern, Apotex offered to stipulate that its product would have been the same in the hypothetical world as in the real world.

The Prothonotary considered the factors governing bifurcation and granted Apotex's motion. The Prothonotary noted that Alcon took the position that infringement would be a full defence to the section 8 claim or reduce Apotex's damages to zero, and thus found that there is a high likelihood that a finding of infringement would determine the second phase of the action or lead to settlement. The Prothonotary also noted that Alcon's infringement action is bifurcated. Costs were awarded in the cause and fixed in the amount of $3,750.

Copyright Cases

Application Challenging Service Ex Juris Dismissed
Geophysical Service Incorporated v. Jebco Seismic UK Limited, 2016 ABQB 402

The issue before the Court of Queen's Bench of Alberta is a challenge to a service ex juris order that was granted ex parte. The foreign Defendants sought to set aside service of the Statement of Claim. The action relates to alleged copyright infringement. The Court determined that the threshold for an arguable case had been met, and found that the Alberta Court has jurisdiction. In particular, the Court found that the foreign parties are necessary and proper parties to the action. The Court held that there was jurisdiction simpliciter on the basis of the Court's statutory jurisdiction in copyright matters, Once there is jurisdiction simpliciter, the court relied on case law that states that the Court can then assume jurisdiction over all aspects. The Court concluded that service ex juris was appropriate.

Other Industry News

CPIO has announced that the Process for Issuance of Patents will be reduced from 10 weeks to 8 weeks.

Health Canada has announced a Consultation: Release of Draft (Step 2) ICH S9 Q&As: Questions and Answers: Nonclinical Evaluation for Anticancer Pharmaceuticals.

Health Canada has announced a Consultation: Release of Draft (Step 2) International Council for Harmonisation of Technical Requirements for the Registration of Pharmaceuticals for Human Use (ICH) Guidance: E17: General principles on planning/designing Multi-Regional Clinical Trials.

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