Seedlings Clarifies Key Patent Litigation Issues

On January 2, 2020, the Federal Court delivered its judgement in Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2020 FC 1. The Federal Court dismissed Seedlings' claim for patent infringement covering an auto-injector medical device, and allowed Pfizer's counterclaim, declaring the patent's claims invalid on various grounds, including overbreadth, anticipation, and obviousness.

The plaintiff, Seedlings Life Science Ventures, LLC ("Seedlings"), developed an auto-injector device—a syringe dubbed LifeCard—which: (1) minimized the risks from the exposed needle; and (2) was easily portable. The LifeCard featured a "flat housing" shape like a credit card, and a physical shield that moved forward and locked in the position following injection to protect against further contact with the needle, called "needlestick".

Pfizer sells its own auto-injector, commonly known as EpiPen. While Pfizer's EpiPen also protected against the needlestick, the Court considered the LifeCard and the EpiPen to be different inventions.1

Below, we summarize some of the key issues considered by the Court.

1. Blinded Experts Not Always Helpful

   As has become commonplace in Canadian patent litigation, Seedlings asked the Court to prefer its experts' opinions because they were "blinded", a practice of shielding the experts from various information about the parties and their positions. The Court rejected Seedlings' argument, holding that preliminary issues, such as the identity of the skilled person and her or his common general knowledge, need not be determined in total isolation from the actual issues in dispute. The Court held that "[i]t would be impossible to identify the skilled person without knowing the subject matter of the relevant patent [and that i]t would be highly impractical to construe the claims without knowing what specific terms or phrases give rise to interpretive difficulties".2 In fact, the Court held that Seedlings' decision to shield its experts from these important issues meant that Pfizer's experts were to be preferred.

   The Court echoed the skepticism expressed by other judges of the Court with respect to blinding, holding that "[w]hatever the merits of blinding in other respects, I must say that it is not particularly helpful with respect to the skilled person, common general knowledge and claims construction".3

2. The "Judicial Anxiety To Support A Really Useful Invention" Discounted

   In several foundational cases, Canadian Courts have held...