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Patents - Appeals. Rovi Guides, Inc. v. Telus Corporation
In Rovi Guides, Inc. v. Telus Corporation (Fed CA, 2024) the Federal Court of Appeal dismissed a patent infringement appeal, here where the trial court "dismissed Rovi’s actions against the respondents, Bell Canada (Bell) and Telus Corporation, Telus Communications Inc., and Telus Communications Company (collectively, Telus) for patent infringement and granted the respondents’ counterclaims for declarations of invalidity and non‑infringement".
Here the court considers the SOR for patent appeals:B. Standard of Review on Obviousness and Anticipation
[63] Before delving into Rovi’s arguments on anticipation and obviousness, it is useful to make a few comments on the standard of review.
[64] Absent an extricable legal error in the test to be applied, a trial court’s findings on anticipation and obviousness can only be overturned if the court made a palpable and overriding error since these findings are factually suffused in nature: Greenblue Urban North America Inc. v. Deeproot Green Infrastructure, LLC, 2023 FCA 184, 2023 A.C.W.S. 6498 at para. 60, citing Abbott Laboratories v. Canada (Minister of Health), 2009 FCA 94, 73 C.P.R. (4th) 444 at para. 24 (on anticipation); SmithKline Beecham Pharma Inc. v. Apotex Inc., 2002 FCA 216, 219 D.L.R. (4th) 124 at para. 15, leave to appeal to SCC refused, 29328 (20 March 2003) (on anticipation); Packers Plus Energy Services Inc. v. Essential Energy Services Ltd., 2019 FCA 96, 164 C.P.R. (4th) 191 at para. 29, leave to appeal to SCC refused, 38694 (19 December 2019) (on obviousness); Teva Canada Limited v. Pfizer Canada Inc., 2019 FCA 15, 163 C.P.R. (4th) 265 at para. 23 [Pfizer] (on obviousness).
[65] As set out in Videotron, this Court and the Supreme Court of Canada have underscored on multiple occasions that the palpable and overriding standard is a highly deferential one. "“Palpable”" means an error that is obvious and "“overriding”" means that the error affects the outcome. As the Supreme Court put it in Salomon v. Matte-Thompson, 2019 SCC 14, [2019] 1 S.C.R. 729 [Salomon], "“[w]here the deferential standard of palpable and overriding error applies, an appellate court can intervene only if there is an obvious error in the trial decision that is determinative of the outcome of the case”": at para. 33, citing Benhaim v. St-Germain, 2016 SCC 48, [2016] 2 S.C.R. 352 at para. 38, quoting Canada v. South Yukon Forest Corporation, 2012 FCA 165, [2012] F.C.J. No. 669 at para. 46, leave to appeal to SCC refused, 34946 (6 December 2012).
[66] Thus, in a case like the present, it is not the task of this Court in appellate review to sift through and reweigh the evidence the Federal Court used to ground its obviousness findings nor to re-decide which expert is to be preferred: see Pfizer at para. 31; Eli Lilly and Company v. Apotex Inc., 2010 FCA 240, [2010] F.C.J. No. 1199 at para. 8, leave to appeal to SCC refused, 33946 (5 May 2011); E. Mishan & Sons, Inc. v. Supertek Canada Inc., 2015 FCA 163, 134 C.P.R. (4th) 207 at para. 25. As the Supreme Court underscored in Salomon "“[t]he fact that an alternative factual finding could be reached based on a different ascription of weight [to the evidence] does not mean a palpable and overriding error has been made”": at para. 33, citing Nelson (City) v. Mowatt, 2017 SCC 8, [2017] 1 S.C.R. 138 at para. 38.
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[82] To evaluate these arguments, it is important to recall that, although the construction of claims and the construction of the inventive concept are questions of law, the "“standard of review is complicated by the fact that patent claims are interpreted from the point of view of a [person skilled in the art]… and expert evidence is often considered in determining how such a person would have understood certain terms in a claim at the relevant date”": Eli Lilly Canada Inc. v. Apotex Inc., 2024 FCA 72, 2024 CarswellNat 1176 at para. 29. Since the weighing of evidence is a question of mixed fact and law, this Court has cautioned that "“where the interpretation of a patent claim turns on the weight given to expert evidence, this Court will only intervene where there is a palpable and overriding error”": Google LLC v. Sonos Inc., 2024 FCA 44, [2024] F.C.J. No. 487 at para. 6; see also Tearlab Corporation v. I-MED Pharma Inc., 2019 FCA 179, 166 C.P.R. (4th) 367 at para. 29. . Agracity Crop v. Upl Na Inc
In Agracity Crop v. Upl Na Inc (Fed CA, 2024) the Federal Court of Appeal dismissed an appeal from an order requiring a defendant to disgorge profits from improper use of a patent.
Here the court considered the SOR in a patent context:[8] The parties do not disagree on the applicable standard of review. The Supreme Court of Canada’s decision in Housen v. Nikolaisen, 2002 SCC 33, [2002] 2 S.C.R. 235, directs that, on appeal, questions of law are reviewed on a standard of correctness, and questions of fact as well as of mixed fact and law, in which no question of law is extricable, are reviewed on a standard of palpable and overriding error. Accordingly, except on questions of law, this Court will not intervene in a decision of the Federal Court unless we find an error that is both palpable (obvious) and overriding (going to the very core of the outcome of the case). . Greenblue Urban North America Inc. v. Deeproot Green Infrastructure, LLC [patent validity]
In Greenblue Urban North America Inc. v. Deeproot Green Infrastructure, LLC (Fed CA, 2023) the Federal Court of Appeal considers the SOR for patent 'validity' issues:[60] Turning to the issues of anticipation, obviousness and overbreadth, as GreenBlue acknowledges, the Federal Court’s impugned findings can only be overturned if the Court made a palpable and overriding error since these findings are factual in nature: see e.g., Abbott Laboratories at para. 24 (on anticipation); SmithKline Beecham Pharma Inc. v. Apotex Inc., 2002 FCA 216, 219 D.L.R. (4th) 124 at para. 15 (on anticipation); Packers Plus Energy Services Inc. v. Essential Energy Services Ltd., 2019 FCA 96, 164 C.P.R. (4th) 191 at para. 29 [Packers] (on obviousness); Teva Canada Limited v. Pfizer Canada Inc., 2019 FCA 15, 163 CPR (4th) 265 at para. 23 (on obviousness); Seedlings Life Science Ventures, L.L.C. v. Pfizer Canada U.L.C., 2021 FCA 154, 339 A.C.W.S. (3d) 69 at para. 65 (on overbreadth). . Eli Lilly Canada Inc. v. Apotex Inc.
In Eli Lilly Canada Inc. v. Apotex Inc. (Fed CA, 2023) the Federal Court of Appeal canvasses some patent standards of review (SOR):[32] Questions regarding the construction of claims and the construction of the inventive concept are questions of law (Apotex Inc. v. Allergan Inc., 2012 FCA 308, 105 C.P.R. (4th) 371 at paras. 50, 53, leave to appeal to the SCC refused, 35184 (9 May 2013)); Bristol-Myers Squibb Canada Co. v. Teva Canada Limited, 2017 FCA 76, 76 C.P.R. (4th) 216 at para. 74).
[33] Questions regarding whether the asserted claims are obvious raise findings of mixed fact and law, which, absent an extricable question of law, must be assessed using the standard of review of palpable and overriding error (Teva Canada Limited v. Pfizer Canada Inc., 2019 FCA 15, 163 C.P.R. (4th) 265 at para. 23 [Teva], Packers Plus Energy Services Inc. v. Essential Energy Services Inc., 2019 FCA 96, 164 C.P.R. (4th) 191 at paras. 29, 33, leave to appeal to SCC refused, 38694 (19 December 2019) [Packers Plus]).
[34] The failure to characterize a patent as a selection patent is not in itself an error of law but “may reflect a lack of understanding of the patent and its factual context” (Shire at para. 32).
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