For what is believed to be the very first time, Canada's Federal Court has decided a patent infringement/invalidity action by way of summary trial. The Court made findings about claim construction that led to the conclusion that the patent at issue was not infringed. As a result, the action was dismissed. This brings Canada one step closer to the U.S.-style "Markman" hearings which determine patent construction issues prior to the hearing of the main action.

On April 6, 2020, the Federal Court released its decision in Viiv Healthcare Company v Gilead Sciences Canada Inc. 2020 FC 486. This summary trial concerned the anti-viral bictegravir and hinged on the construction of the term "Ring A", an element of the claims that the plaintiffs alleged were infringed by Gilead. The Court noted that if it was satisfied that "there is sufficient evidence for adjudication, regardless of the amounts involved, the complexities of the issues and the existence of conflicting evidence, the Court may grant judgment, either generally or on an issue, unless it would be unjust to do so".1

The Court emphasized that it had discretion to hear a summary trial on any issue, and that summary trials are not limited to instances where every issue in a case will be determined. The plaintiffs argued that a summary trial should not be held because there was a lack of expert evidence and it would result in litigating the action in slices. The Court disagreed and found that since each party had 5 expert witnesses, the alleged lack of expert evidence did not militate against a summary trial. Further, the Court was persuaded that regardless of the outcome, conducting a summary trial was the most efficient way to proceed. The Court stated that a finding on infringement may be dispositive of the action. However, even if the summary trial was not dispositive, any findings on the issues of claims construction and infringement would be carried forward to the future trial.

At the claim construction stage, the Court reviewed the law and emphasized that construction is a case-specific exercise and "in some circumstances the proper construction will limit a claim term to specific embodiments disclosed in the patent specification. In other cases, the basic principle that the description of the preferred embodiments is not meant to include all the possible embodiments of the invention claimed will govern."2 The plaintiffs further argued that interpretation of the claims should be informed by the abstract, but the Court held "[t]he Court should not use the abstract to aid claim construction"3 because the abstract is not part of the disclosure.

The Court agreed that although "on its face" the language of the claims was clear and unambiguous, recourse to the disclosure was necessary to "understand the meaning given to these words by the inventors".4 The Court held that the term as used in the claims was specific to particular chemical structures which excluded the structure used in the defendants' compound. Therefore, Gilead's product did not infringe the patent and the action was dismissed.

Footnotes

1 At para 12.

2 At para 65.

3 At para 92.

4 At para 128.

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