Canadian Patent Law: 2019 Year In Review

There were various developments in Canadian patent law in 2019. Numerous decisions of the Federal Court of Appeal and Federal Court will have a notable impact on patent law in Canada going forward. In addition, the Patent Rules were the subject of significant amendments that will impact both prosecution and enforcement of patent rights in Canada for years to come.

Summary judgment granted in a patent infringement action

The most significant decision of 2019 was Canmar Foods Ltd v TA Foods Ltd, 2019 FC 1233 ("Canmar"), a decision in which Justice Manson granted summary judgment of non-infringement in a patent infringement action. We have previously reported on this decision and discussed it in further detail.

Historically, it was basically unheard of for a patent action to be disposed of by way of summary judgment. Among other things, Courts preferred to see disputes over expert evidence concerning claim construction resolved at trial where a trial judge has the benefit of seeing live testimony and assessing witness credibility in person.

In Canmar, there was no expert witness evidence and the Court determined that it was able to construe the claims at issue without the need for an expert. Because claim construction is ultimately a question of law, the Court was able to decide the infringement issues in dispute to the point where it was satisfied there was no genuine issue to be tried.

Canmar is also notable because the Court interpreted and applied the new file wrapper estoppel provision of the Canadian Patent Act (section 53.1). In particular, the Court considered the scope of section 53.1 and whether it covered communications between patentees and foreign patent offices.

It was found that section 53.1 generally should be limited to communications between the patentee and the Canadian Patent Office. However, consideration of foreign prosecution histories was found to be permissible in extraordinary circumstances. Canmar was found to be such a case, as the patentee acknowledged that the claims of its Canadian patent were amended to be substantially the same as claims submitted in another jurisdiction, and these amendments were admitted to have limited the scope of the claims in order to make the claims novel and non-obvious.

Federal Court of Appeal decisions on obviousness

Obviousness remains a high bar to meet

In the companion cases Teva Canada Ltd v Pfizer Canada Inc, 2019 FCA 15 and Apotex Inc v Pfizer Canada Inc, 2019 FCA 16, the FCA dismissed the obviousness challenge to the polymorph patent covering PRISTIQ® for the treatment of depression.

The focus of the appeal was on the proper approach to obviousness. The FCA held that the obviousness analysis is not to be performed in a rigid way; on the contrary, it must proceed as part of a flexible, contextual, expansive and fact driven inquiry.

The Court also affirmed the primacy of the leading Sanofi v Apotex (2008 SCC 61) decision. The FCA took into account the inventors' course of conduct, accepting the application judge's findings that the number of experiments required was "extremely large" and in the nature of a research program. Teva and Apotex had both argued that the nature of the invention only required routine experimentation.

Palpable and overriding error is also a difficult standard to meet

The FCA dismissed an appeal on the issue of obviousness in Millennium Pharmaceuticals Inc v Teva Canada Ltd, 2019 FCA 273. The primary argument that the FCA rejected was that the trial judge erred in applying the test for obviousness from Sanofi v Apotex.

Justice Stratas referred to the standard for palpable and overriding error as one where the...