Gillette Defence (Not Really) Applied

TearLab Corp v I-Med Pharma Inc 2018 FC 164 Manson J
            2,494,540/ TearLab System / i-Pen System

It was lucky for TearLab that its application for an interlocutory injunction was denied by Manson J 2016 FC 606 aff'd 2017 FCA 8 (see here), as TearLab has now lost the infringement action, on the basis that the asserted claims were infringed but invalid as being anticipated and obvious. (Had TearLab been granted the interloctory injunction, it would now be liable to I-Med on the undertaking in damages.) The result turned on a self-created squeeze between infringement and validity:

[183] That result flows directly from the dilemma created by the Plaintiff's urged broad construction for the asserted claims to include both in vivo and ex vivo applications of the invention, which, while I have agreed to that construction, leads to invalidity due to anticipation.

The Gillette defence was invoked, though not really applied. As Manson J explained, the Gillette defence is based on the House of Lords decision in Gillette Safety Razor Co v Anglo-American Trading Co Ltd (1913) 30 RPC 465 (HL), holding that “a defendant may plead that their alleged infringing actions are part of the prior art, and therefore the patent is either invalid for claiming subject matter included in the prior art or, if the patent is valid, the defendant cannot infringe” [179]. The key feature of the Gillette defence is that it obviates the need for the defendant to establish whether the patent is invalid or infringed; once it is established that the defendant’s device was part of the prior art, one or the other must be true, and it is not necessary for the defendant to establish which. Indeed, in principle, it is not even necessary to construe the claims. As Lord Moulton explained at 480-81:

I am, therefore, of opinion that in this case the Defendants' right to succeed can be established without an examination of the terms of the Specification of the Plaintiffs' Letters Patent. I am aware that such a mode of deciding a Patent case is unusual, but from the point of view of the public it is important that this method of viewing their rights should not be overlooked. In practical life it is often the only safeguard to the manufacturer. It is impossible for an ordinary member of the public to keep watch on all the numerous Patents which are taken out and to ascertain the validity and scope of their claims. But he is entitled to feel secure if he knows that that which he is doing differs from that which has been done of old only in non-patentable variations, such as the substitution of mechanical equivalents or changes of material shape or size. The defence that “the alleged infringement was not novel at the date of the plaintiff's Letters Patent” is a good defence in law, and it would sometimes obviate the great length and expense of Patent cases if the defendant could and would put forth his case in this form, and thus spare himself the trouble of demonstrating on which horn of the well-known dilemma the plaintiff had impaled himself, invalidity or non-infringement.

In TearLab, while the Gillette defence was raised, it was not really applied, because Manson J did construe the claims, and held them to be infringed but anticipated (and also obvious). The advantages of the Gillette defence are likely more theoretical than practical, as it would be a bold defendant that would put all its eggs in one basket of proving that its product was the same as the prior art, without bothering to construe the claims, or address validity and infringement directly. It is perhaps worth noting that the Gillette defence was not put forward by the defendant in Gillette itself, but rather was developed by Lord Moulton on his own initiative: 477.