On September 6, 2016, the Court of Appeal dismissed Nova
Chemicals Corporations appeal from a judgment finding its SURPASS product infringes
Canadian Patent No. 2,160,705 directed generally to polyethylene
film products, such as plastic garbage bags and food wrapping. The
705 Patent was previously held valid and infringed Justice
O'Keefe (see here). On appeal, Nova contested all of
Justice O'Keefe's findings regarding claims construction,
validity and infringement.
With respect to claims construction
the Court of Appeal, following Whirlpool, held that claims
construction is a question of law and therefore reviewable on the
correctness standard. The Court of Appeal did, however, continue
its recent trend (see our previous post here) of noting the challenges associated with
applying the correctness standard to an exercise that relies
heavily on the trial judge's evaluation of expert evidence.
While recognizing that the correctness standard applies the Court
of Appeal stated that trial judges are nevertheless entitled to
On the other hand, the construction
of the patent is to be reviewed on the basis of correctness. As the
Supreme Court has stated in Whirlpool Corp. v. Camco Inc.,
2000 SCC 67 at para. 61,  2 S.C.R. 1067, "claims
construction is a matter of law". That being said, I share the
concerns of my colleague Justice Stratas that it will often be
difficult, if not unrealistic and artificial, to distinguish
between those aspects of claim construction that flow from the
trial judge's assessment of expert evidence from the words of
the claim themselves (see Cobalt Pharmaceuticals Company v.
Bayer Inc., 2015 FCA 116 at paras. 16-24,  F.C.J. No.
555). After all, the construction of a patent is heavily dependent
on the evidence given by persons skilled in the art, and that
evidence will bear heavily on the judge's findings. For that
reason, I accept (as I must) that the construction of a patent is a
question of law to be reviewed on a standard of correctness, but
trial judges are nevertheless entitled to some leeway as they are
often in a much better position than appellate judges to understand
the intricacies of the art underlying the invention disclosed in a
In applying this standard,
the Court of Appeal affirmed Justice O'Keefe's
construction of various terms including that the word
"comprising" means "including, but not limited
When addressing Nova's argument
regarding the alleged promise of the patent, the Court of Appeal
noted that Nova's position on the promise was somewhat
ambiguous and that "such variations in the formulation of the
impugned promise detract from the requirement that the promise be
specific and clear".
Regardless of what formulation of
the promise Nova relied upon, each one depended on a promise of
synergistically enhanced properties. The Court of Appeal pointed
out that these words are used on only two occasions at page 1 of
the patent, are nowhere defined in the patent and are absent from
However one looks at the '705
Patent, two crucial facts stand out: there is not a single
statement of utility in Dow's claims, as acknowledged by Nova,
and there is only one reference elsewhere in the specification to
support an argument of enhanced utility. I agree with Dow that the
Court should be wary of using a stray phrase on page 1 of the
patent to define the promise of the patent.
The Court of Appeal held that
Justice O'Keefe could find that an explicit promise was not
made and that the patent satisfied the test of a "mere
scintilla" of utility. With respect to the remainder of
Nova's arguments, the Court of Appeal noted that Nova failed to
demonstrate any error of law and their arguments amounted to
nothing more than disagreements with Justice O'Keefe's
All of the arguments raised by the
appellant amount to no more than mere disagreements with the
Judge's factual findings and assessment of the expert evidence.
The Judge did not err in law, and was entitled to prefer the
evidence of some experts over that of others; indeed, this is
precisely the task he was called upon to fulfill, and the appellant
has not established that he made any palpable and overriding error
in doing so.
Nova's appeal was dismissed in
its entirety. A copy of the Court of Appeal's Reasons for
Judgment may be found here.
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On November 9, 2016, final amendments to the Regulation respecting the language of commerce and business and the Regulation defining the scope of the expression "markedly predominant" for the purposes of Charter of the French Language were published.
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