FCA Affirms Eurocopter: Overview and Claim Construction

Eurocopter v. Bell Helicopter Textron Canada Limitée 2013 FCA 219 Mainville JA: Noël, Trudel JJA aff’g 2012 FC 113 Martineau J
            2,207,787 - new Act

The FCA decision in Eurocopter is most important for its discussion of punitive damages, and it is also significant for its discussion of two doctrines more closely associated with pharmaceutical patents, namely the promise of the patent doctrine and the requirement that the factual basis for sound prediction be disclosed in the patent. I will discuss both of these issues in subsequent posts. For now I will just say that any hopes raised by the FCA’s recent Clopidogrel decision that we might see some retrenchment in respect of the pharmaceutical doctrines (see here and here), must be significantly tempered by the FCA’s Eurocopter analysis. 

This post provides background and discusses the claim construction issues. Anticipation and obviousness were also raised on appeal, but they were dismissed essentially on the basis that the points raised turned on matters of fact on which the trial judge had made no overriding error.

What Is an “Oversight” in a Order?

Sanofi-Aventis v Apotex Inc 2013 FCA 209 amending Sanofi-Aventis v Apotex Inc / clopidogrel 2013 FCA 186 Pelletier JA: Noël, Gauthier JJA rev’g 2011 FC 1486 Boivin J
            1,336,777 – PLAVIX

This decision of the FCA amends its clopidogrel decision with respect to the parties affected by the judgment. The full style of cause in the case included Apotex Inc, Apotex Pharmachem Inc and Signa SA de CV as defendants / respondents. (Apotex contracted for Pharmachem to develop the Apotex product and process of manufacture, and Pharmachem transferred the technology to Signa, which manufactured the product according to Pharmachemm’s specification, and sold it in bulk to Apotex [2013 FCA 186 [86]].) The action against Signa was discontinued (FC [10] fn 3), but the style of cause was not changed [7]. Boivin J at trial held that the patent was invalid. This holding was reversed on appeal, which required the FCA to deal with infringement. As originally written, the FCA reasons stated that “As the Trial Judge made no findings of infringement against Apotex Pharmachem Inc. and Signa SA de CV, I would dismiss Sanofi's claims against them” [2013 FCA 186, [121]]. The original FCA judgment declared that Apotex Inc infringed the patent, and that the claim against Apotex Pharmachem and Signa was dismissed [1]. Sanofi brought this motion under Rule 397 asking the FCA to amend the judgment by (1) removing the reference to Signa, which stated that the claim against it was dismissed; and (2) adding a reference stating that Apotex Pharmachem was also liable for infringement.

Ambiguity(?) in Scope of Settlement

Procter & Gamble Co v Brushpoint Innovations Inc 2013 ONSC 5747 Charbonneau J

The parties entered into a settlement agreement in which Brushpoint undertook to “not make, construct, use, or sell, or induce others to make, construct, use or sell the Products, in Canada, while any of the Patents are in force.” P&G submitted that Brushpoint or its agents, by acts in Canada, had induced parties in the US to make and sell the product in the US [13]. If, properly interpreted, the covenant restricted Brushpoint from carrying out acts in Canada which induced others to make or sell the Products anywhere, then there was a breach; on the other hand, if it only restricted Brushpoint from inducing (by acts anywhere?) others to make or sell the products in Canada, there was no breach.

Charbonneau J held that on the proper interpretation, there was no breach; the covenant restricted Brushpoint only from inducing others from infringing in Canada. He arrived at this conclusion primarily on the text of the covenant itself, which he found to be “clear and unambiguous” [11]. If he had found the clause ambiguous, he would have arrived at the same conclusion based on the context, as the settlement was presumably intended to prevent Brushpoint from infringing the Canadian patents [12].

John Golden has a very interesting article on the related issue of the scope of injunctions: Injunctions as More (or Less) than “Off Switches”: Patent Infringement Injunctions’ Scope , 90 Tex L Rev 1399 (SSRN here). Here is the abstract:

Injunctions have often been viewed as mere "off switches" that prevent future violations of rights protected by so-called property rules. But injunctions in fact come in a variety of forms having different objects, scopes, and degrees of effectiveness. In practical situations, an injunction might amount to little more than a threat of higher-than-normal monetary sanctions delivered at substantially higher-than-normal speed.

This article builds on these insights by investigating the potential and actual scopes of injunctions against patent infringement. An economic model for infringer incentives shows how concerns of injunction scope are substantially analogous to widely examined concerns of patent scope. A new taxonomy provides named classifications for different forms of injunctions. A systematic study of patent-infringement injunctions issued by U.S. district courts in 2010 indicates how often these different forms appear in practice. Startlingly, this study suggests that the majority of such patent-infringement injunctions take an "obey the law" form that violates the Federal Rules of Civil Procedure, at least as the U.S. Court of Appeals for the Federal Circuit has traditionally understood those rules. In another indication of patent law's technology specificity, only 12% of the injunctions directed to biomedical-substance technology feature such apparent error. Meanwhile, courts frequently issue specially tailored injunctions that protect patent rights more or less than a conventional "do-not-infringe" order would. Prophylactic injunctions and other specially tailored injunctions should be recognized as legitimate forms of relief that can enable better balancing of concerns of notice, rights protection, rights limitation, and administrability.

ONCA Affirms that Disgorgement of Profits in NOC S 8 Claim Not Available in Ontario

Apotex Inc v Abbott Laboratories Ltd 2013 ONCA 555 Goudge JA: Watt, Pepall JJA aff’g 2013 ONSC 356, 107 CPR(4th) 332 Quigley J

The FCA has held definitively that disgorgement of the patentee’s profits is not available as a remedy in a claim under s 8 of the NOC Regulations: 2011 FCA 358 blogged here. Hoping to circumvent this holding, Apotex turned to the Ontario courts, seeking a disgorgement of the profits made by Abbott while Apotex had been kept out of the market by operation of the NOC Regulations. In brief reasons, the ONCA has now affirmed Quigley J’s lengthy summary judgment decision (blogged here) that this claim must fail, primarily on the basis that the operation of the NOC Regulations constitutes a valid juristic reason for Abbott’s profits [6].

Purposive Construction When the Inventor Is Mistaken as to the Inventive Contribution

ABB Technology AG v Hyundai Heavy Industries Co Ltd 2013 FC 947 Barnes J
            2,570,772 – 2,567,781

ABB Technology, in which both patents at issue were held to be invalid and not infringed, is a fairly straightforward case which turned largely on its facts. It does, however, illustrate an interesting point regarding purposive interpretation of the claims.

The Supreme Court has said that “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” Western Electric Co [1934] SCR 570 at 574, quoted by the SCC inter alia in quoted by the SCC in Consolboard, supra note 58 at 521, in Whirlpool 2000 SCC 67 [49(g)[, and Free World, 2000 SCC 66 at [43]; and see Schmeiser, 2004 SCC 34, at [35] referring to this as “the guiding principle” of claim construction. In my article on “The Essential Elements Doctrine” (2011) 22 IPJ 223 (draft available here), I explained this as following from purposive construction. The disclosure is the quit pro quo for which the patent is granted, and the inventor will normally want to claim the full scope of the invention disclosed, in order to maximize the value of the patent, but not more, in order to avoid invalidity. So, as I argued in my article, a purposive analysis of the Patent Act implies that the presumed intention of the patentee should be to claim the full patentable extent of the invention disclosed. In my article I discussed problems which arise when the textual and purposive analyses conflict. ABB Technologies raises a common problem which I did not address: what happens when the inventor has misunderstood the nature of their contribution?

No New Cases for the Week of 1 September

No new patent / NOC / data protection cases were posted on the Federal Courts' websites for the week of 1 September 2013. 

One costs decision was released: Fournier Pharma Inc. v. Canada (Health) 2013 FC 862