|
Patents - Construction of Claims. Eli Lilly Canada Inc. v. Apotex Inc.
In Eli Lilly Canada Inc. v. Apotex Inc. (Fed CA, 2024) the Federal Court of Appeal considered the appellate SOR for issues of patent 'claim construction':V. Standard of Review
[27] The appellants rely heavily on an argument that the applicable standard of review on the claim construction issue in this appeal is correctness because it is a question of law.
[28] The appellants recognize that the standard of review on an appeal is as indicated in Housen v. Nikolaisen, 2002 SCC 33, [2002] 2 S.C.R. 235: questions of law are reviewed on a standard of correctness, and questions of fact or of mixed fact and law from which no question of law is extricable are reviewed on a standard of palpable and overriding error.
[29] The appellants also recognize that, though claim construction is a question of law (Whirlpool at paras. 61, 76), the applicable standard of review is complicated by the fact that patent claims are interpreted from the point of view of a POSITA (Whirlpool at para. 48), and expert evidence is often considered in determining how such a person would have understood certain terms in a claim at the relevant date. The weighing of expert evidence is a question of mixed fact and law. I recently discussed this point in Google LLC v. Sonos Inc., 2024 FCA 44 at para. 6.
[30] The appellants argue that the complication due to the presence of expert evidence does not arise in this appeal because the Federal Court’s conclusions regarding claim construction "“were entirely the Trial Judge’s own and not based on any of the expert evidence.”" The appellants argue that this Court therefore owes no deference to the Federal Court on its conclusions regarding claim construction.
[31] I am unable to agree with the appellants’ premise that the Federal Court’s conclusions regarding claim construction were not based on expert evidence. As I explain below, I find that the Federal Court based its claim construction on expert evidence, and its conclusions in that regard are entitled to deference. . Eli Lilly Canada Inc. v. Apotex Inc.
In Eli Lilly Canada Inc. v. Apotex Inc. (Fed CA, 2024) the Federal Court of Appeal considered principles of patent 'claim construction':[16] .... It cited this Court’s decision in Tearlab Corporation v. I-MED Pharma Inc., 2019 FCA 179, 166 C.P.R. (4th) 367, paragraphs 30 to 34 of which provide a useful summary of principles of claim construction:[30] The general principles of claim construction are now well established and were set out by the Supreme Court in three cases (Whirlpool [Corp. v. Camco Inc., 2000 SCC 67, [2000] 2 S.C.R. 1067] at paras. 49-55; Free World Trust v. Électro Santé Inc., 2000 SCC 66, [2000] 2 S.C.R. 1024 at paras. 31-67 [Free World Trust]; Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd., 1981 CanLII 15 (SCC), [1981] 1 S.C.R. 504 at p. 520 [Consolboard]). These principles can be summarized as follows.
[31] The Patent Act promotes adherence to the language of the claims, which in turn promotes fairness and predictability (Free World Trust at paras. 31(a), (b) and 41). The words of the claims must, however, be read in an informed and purposive way (at para. 31(c)), with a mind willing to understand (at para. 44). On a purposive construction, it will be apparent that some elements of the claimed invention are essential while others are non-essential (at para. 31(e)). The interpretative task of the court, in claim construction, is to separate and distinguish between the essential and the non-essential elements, and to give the legal protection to which the holder of a valid patent is entitled only to the essential elements (at para. 15).
[32] To identify these elements, the claim language must be read through the eyes of a POSITA, in light of the latter’s common general knowledge (Free World Trust at paras. 44-45; see also [AFD Petroleum Ltd. v.] Frac Shack [Inc., 2018 FCA 140, 157 C.P.R. (4th) 195] at para. 60; Whirlpool at para. 53). As noted in Free World Trust:[51] ...The words chosen by the inventor will be read in the sense the inventor is presumed to have intended, and in a way that is sympathetic to accomplishment of the inventor’s purpose expressed or implicit in the text of the claims. However, if the inventor has misspoken or otherwise created an unnecessary or troublesome limitation in the claims, it is a self-inflicted wound. The public is entitled to rely on the words used provided the words used are interpreted fairly and knowledgeably. [Emphasis in the original.] [33] Claim construction requires that the disclosure and the claims be looked at as a whole “to ascertain the nature of the invention and methods of its performance, … being neither benevolent nor harsh, but rather seeking a construction which is reasonable and fair to both patentee and public” (Consolboard at p. 520; see also Teva Canada Ltd. v. Pfizer Canada Inc., 2012 SCC 60, [2012] 3 S.C.R. 625 at para. 50). Consideration can thus be given to the patent specifications to understand what was meant by the words in the claims. One must be wary, however, not to use these so as “to enlarge or contract the scope of the claim as written and … understood” (Whirlpool at para. 52; see also Free World Trust at para. 32). The Supreme Court recently emphasized that the focus of the validity analysis will be on the claims; specifications will be relevant where there is ambiguity in the claims (AstraZeneca Canada Inc. v. Apotex Inc., 2017 SCC 36, [2017] 1 S.C.R. 943 at para. 31; see also Ciba [Specialty Chemicals Water Treatments Limited’s v. SNF Inc., 2017 FCA 225, 152 C.P.R. (4th) 239] at paras. 74-75).
[34] Finally, it is important to stress that claim construction must be the same for the purpose of validity and for the purpose of infringement (Whirlpool at para. 49(b)). [17] The Federal Court also noted that (i) claim construction is a matter of law, (ii) the expert’s role is not to interpret the claims, but rather to put the judge in a position to do so, and (iii) claims are to be construed through the eyes of the POSITA [SS: 'person of skill in the art'] armed with the common general knowledge at the date of publication. . Greenblue Urban North America Inc. v. Deeproot Green Infrastructure, LLC
In Greenblue Urban North America Inc. v. Deeproot Green Infrastructure, LLC (Fed CA, 2023) the Federal Court of Appeal illustrates the patent concept of 'construction':A. Did the Federal Court Err in Construction of the Three Terms as GreenBlue Alleges?
[48] On the construction issues, I agree with GreenBlue that, generally speaking, issues of construction raise issues of law that are reviewable for correctness: Whirlpool Corp. v. Camco Inc., 2000 SCC 67, [2000] 2 S.C.R. 1067 at paras. 61, 76; Mylan Pharmaceuticals ULC v. AstraZeneca Canada Inc., 2012 FCA 109, 101 C.P.R. (4th) 275 at para. 20; Abbott Laboratories v. Canada (Health), 2009 FCA 94, 73 C.P.R. (4th) 444 at para. 20 [Abbott Laboratories].
[49] However, where construction is premised on the Federal Court’s appreciation of the expert evidence, and especially where that Court has preferred the testimony of one expert over another on an issue of construction, this Court has held that the Federal Court is entitled to deference in its appreciation of the evidence: see e.g., Biogen Canada Inc. v. Pharmascience Inc., 2022 FCA 143, 196 C.P.R. (4th) 120 at para. 38; Viiv Healthcare Company v. Gilead Sciences Canada, Inc., 2021 FCA 122, 460 D.L.R. (4th) 272 at para. 56; Evolution Technologies Inc. v. Human Care Canada Inc., 2019 FCA 209, 167 C.P.R. (4th) 285 at para. 17; ABB Technology AG v. Hyundai Heavy Industries Co., Ltd., 2015 FCA 181, 132 C.P.R. (4th) 405 at paras. 23-24.
[50] Here, regardless of what standard of review is applied, I see no error in the Federal Court’s construction of the terms “structural cells”, “a base”, or “a top”.
[51] There was ample evidence to support the Federal Court’s construction from DeepRoot’s expert, Dr. LeBrasseur, whose evidence the Federal Court preferred. There is accordingly no palpable and overriding error in the Federal Court’s construction of the three terms if the deferential standard is applicable.
[52] Conversely, even under a correctness standard, there is no basis for interfering with the Federal Court’s construction because it is supported by a purposive interpretation of the three terms and is thus correct.
[53] More specifically, as concerns the meaning of “structural cell(s)”, the specification in the Patents makes it clear that the invention is intended to provide void space within which tree roots can grow and thus requires that the cell be an open structure. Paragraph 36 of the specification in the 348 and 599 Patents provides:The system is designed such that the tree roots may grow within the system such that conflicts between the roots and the paving will be greatly reduced. ... [54] Paragraph 37 of the specification in the 348 and 599 Patents continues:The integrated tree root and storm water system contains multiple three-dimensional structural cells or frames that are joined together. The structural cells are strong enough to withstand design vehicle loading, maintain an open structure that can be filled with loam soil, and permit tree roots to grow within the cell in both horizontal and vertical axis. ... [55] When the Claims in suit are read in the context of the specification, it is clear that the “structural cells” claimed are meant to allow roots to grow within them and thus must be open structures as the Federal Court found.
[56] Turning to the meaning of “a base”, the construction advanced by GreenBlue that was rejected by the Federal Court improperly sought to limit the term to a single embodiment mentioned in the Patent. The specification, however, makes it clear in another embodiment that the “base” in that other embodiment is not a separate part and may be integrally formed with the supports. The final sentences in paragraph 61 of the two Patents provides:... In one embodiment, the base 711 and the supports 703 and 704 are integrally formed as a single structure. In another embodiment, the base 711 and the supports 703 and 704 are formed separately and then assembled together. This allows on site assembly. [57] The foregoing accords with the meaning given to “a base” by the Federal Court, which accordingly did not err in its construction.
[58] As concerns the meaning of “a top”, contrary to what GreenBlue asserts, the inventors did not intend that “a top” be understood to be the same thing as a lid or deck. The three terms are all used in the 348 and 599 Patents in such a fashion that it becomes clear that a lid or deck is not synonymous with “a top”. For example, paragraph 54 of the Patents mentions that, “[w]hen the top cell 226 is filled with soil as in the system 300, the material travels through an air space between the top of the soil and the underside of the lid structure.”
[59] I therefore see no error in the Federal Court’s construction of the impugned terms. . Western Oilfield Equipment Rentals Ltd. v. M-I LLC
In Western Oilfield Equipment Rentals Ltd. v. M-I LLC (Fed CA, 2021) the Federal Court of Appeal considered the law of patent claim construction (ie. drafting of claims):[15] A patent is not addressed to an ordinary member of the public, but to a worker skilled in the art to which it pertains. As stated in Catnic Components Ltd. v. Hill & Smith Ltd., [1982] R.P.C. 183 at 243, [1981] FSR 60 (U.K.H.L.) (Catnic), and quoted by the Supreme Court of Canada in Whirlpool Corp. v. Camco Inc., 2000 SCC 67, [2000] 2 S.C.R. 1067 (Whirlpool) at para. 44:[…] A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. […] [16] The Supreme Court in Whirlpool went on to state as follows at paragraph 49(g):While “purposive construction” is a label introduced into claims construction by Catnic, supra, the approach itself is quite consistent, in my view, with what was said by Dickson J. the previous year in Consolboard [Inc. v. MacMillan Bloedel (Sask.) Ltd., 1981 CanLII 15 (SCC), [1981] 1 SCR 504, 56 C.P.R. (2d) 145], on the topic of claims construction, at pp. 520-21:We must look to the whole of the disclosure and the claims to ascertain the nature of the invention and methods of its performance, (Noranda Mines Limited v. Minerals Separation North American Corporation, 1949 CanLII 55 (SCC), [1950] S.C.R. 36), being neither benevolent nor harsh, but rather seeking a construction which is reasonable and fair to both patentee and public. There is no occasion for being too astute or technical in the matter of objections to either title or specification for, as Duff C.J.C. said, giving the judgment of the Court in Western Electric Company, Incorporated, and Northern Electric Company v. Baldwin International Radio of Canada, 1934 CanLII 42 (SCC), [1934] S.C.R. 570, at p. 574, "where the language of the specification, upon a reasonable view of it, can be so read as to afford the inventor protection for that which he has actually in good faith invented, the court, as a rule, will endeavour to give effect to that construction". Not only is “purposive construction” consistent with these well-established principles, it advances Dickson J.'s objective of an interpretation of the patent claims that “is reasonable and fair to both patentee and public”. [17] On standard of review, the appellants argue that claim construction is a question of law to which the standard of correctness applies. For its part, the respondent notes correctly that claim construction is typically assisted by expert evidence, and the weighing of such evidence by the trial judge is reviewed on a standard of palpable and overriding error: see Tearlab Corporation v. I-MED Pharma Inc., 2019 FCA 179, 166 C.P.R. (4th) 367 at para. 29. Accordingly, even if I would not have reached the same conclusions on the expert evidence heard by the Federal Court, I must defer to its weighing of the evidence unless I find an error that meets this high standard.
|
