What To Expect In 2021: Pending Patent Decisions From The Federal Courts

• Published date: 18 March 2021
• Subject Matter: Intellectual Property, Patent
• Law Firm: Gowling WLG
• Author: Mr Will Boyer and Almut MacDonald

The end of 2020 and start of 2021 have been busy with Federal Court judges writing, and the patent bar reading, several interesting patent decisions. That trend may continue in 2021. There are several pending decisions from patent trials and patent appeals heard in 2020, or early 2021. This article provides a snapshot of those trials and appeals, and what issues we can expect to be addressed by the decisions.

Pending decisions from patent trials

Merck Sharp & Dohme Corp v Wyeth LLC (T-1184-17):

This impeachment action relates to Wyeth's PREVNAR' 13 vaccine for the prevention of pneumococcal disease in children. Wyeth has four patents listed on the Patent Register and it appears that Merck has challenged three of them - one composition patent and two formulation patents.

Merck's invalidity arguments in relation to the composition patent include anticipation, obviousness and overbreadth/lack of utility. In a pre-trial motion dealing with reply evidence, Justice Gagné (the trial Judge) characterized the last issue as "overbreadth/lack of utility". It will be interesting to see from the decision if Merck's argument is another attempt to raise the now abolished promise doctrine in the context of overbreadth.

For the formulation patents, Merck alleges anticipation, obviousness and double patenting.

The new file wrapper estoppel provision in the Patent Act (section 53.1) also appears to be at play, with Merck relying on the prosecution history to rebut construction arguments presented by Wyeth.

The 13 day trial before Justice Gagné was completed on December 22.

Guest Tek Interactive Entertainment LTD v Nomadix Inc (T-448-17):

This patent infringement case is between what Prothonotary Tabib described in an interlocutory motion as "fierce competitors in Canada and the United States." The technology relates to systems and methods for venues to offer, regulate and manage internet access for guests. Guest Tek has asserted two Canadian patents against Nomadix.

Guest Tek argues that Nomadix has both directly infringed and induced certain Canadian hotels to infringe its patents. Nomadix has raised a number of defences, including alleged obviousness and anticipation in respect of both patents. Nomadix also denies infringement, both directly and by inducement, in respect of both patents. Issues of the quantum of damages were bifurcated to a reference if infringement is established.

The 15 day trial before Justice McHaffie as to liability was completed on October 28. It proceeded entirely by videoconference, including all testimony from expert and fact witnesses, and opening and closing arguments. However, the parties were recently granted permission to make additional submissions to the court with respect to the recent Western Oilfield decision from the Federal Court of Appeal, 2021 FCA 24.

Our colleagues Doak Horne, Patrick Smith and Kevin Unrau...