Canadian Patent Law: 2021 Year In Review

• Published date: 03 March 2022
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Trials & Appeals & Compensation
• Law Firm: Gowling WLG
• Author: Mr Michael Crichton, Alex Gloor and Charlotte Dong

Last year was a busy one for the Federal Courts and included a number of developments in Canadian patent law. This article summarizes notable court decisions on patent law and practice in Canada from 2021.

1. Summary dispositions of patent infringement cases

Historically, patent litigants did not seek summary disposition of patent infringement cases, as it was typically seen as being too challenging to satisfy the Court that no "genuine issue for trial" was present when there were competing expert witnesses and questions such as witness credibility that were best left for a trial judge to assess in a live courtroom.

More recently, the Federal Courts Rules were amended to permit summary trials on a subset of the issues in a case (as opposed to the historically more challenging summary judgment process). An example of a patent infringement summary trial is ViiV Healthcare Company v Gilead Sciences Canada, Inc, 2021 FCA 122. At the lower Court level, the motion for summary trial was found to be appropriate, as it entailed only the construction (and resulting analysis confirming non-infringement) of a single claim element. In effect, Viiv was akin to a Canadian Markman hearing.

On appeal, the Court of Appeal dismissed both of the appellant's main arguments, namely, that a summary trial proceeding was not appropriate in the particular case, and that the lower Court erred in its construction and non-infringement findings. Regarding the appropriateness of the summary trial, the Court of Appeal concluded that a judge may consider a number of factors before deciding whether or not a case is appropriate for summary disposition. Ultimately, the Court must be satisfied that the prerequisites in the Federal Courts Rules for summary judgment or summary trial are met and that it is able to grant summary judgment, fairly and justly, on the evidence adduced and the law. Regarding the non-infringement judgment, the Court of Appeal considered but rejected all of the appellant's various alleged errors of claim construction.

In addition, and as previously reported in this article about the new rules of Canadian patent litigation, in CanMar Foods Ltd v TA Foods Ltd, 2021 FCA 7, the Federal Court of Appeal upheld an underlying decision on a summary judgment motion dismissing CanMar's patent infringement action in its entirety. CanMar was the first decision in many years where the Federal Court had granted summary judgment in a patent case. At the Court of Appeal, the appellant's argument that it was premature to grant summary judgment before discovery had taken place was rejected. In addition, the Court of Appeal upheld the lower Court's conclusions on claim construction, and correspondingly non-infringement, notwithstanding an absence of expert evidence on the summary judgment motion. In this regard, the Court of Appeal concluded that construction of a patent is always a matter of law for the Court, and there is no authority to support the view that expert evidence is mandatorily required in every circumstance.

2. Federal Court of Appeal weighs in on "file wrapper estoppel"

As noted above, the Court of Appeal in CanMar Foods Ltd v TA Foods Ltd, 2021 FCA 7 upheld the underlying decision on a summary judgment motion in a patent action.

The underlying decision was also the first time that the Federal Court interpreted and applied section 53.1 of the Patent Act (previously discussed in this article: Patentees beware: Federal court rules foreign patent file histories could come back to haunt you), which relates to admission of statements from prosecution into evidence in a patent trial - sometimes referred to as "file wrapper estoppel". In this appeal, Justice de Montigny writing for the Court of Appeal acknowledged that...