Digests

Patents

Infringement

Claims construction—Application pursuant to Patented Medicines (Notice of Compliance) Regulations, SOR/93-133, s. 6 for order prohibiting Minister of Health from issuing notice of compliance to respondent until after expiration of Canadian Patent No. 2264852 ('852 patent)—Case turning on proper interpretation of phrase ‘’in a sustained-ascending dose’’ found in claims 1, 41, 78 of '852 patent—Sole issue whether respondent’s product infringing those claims—Parties relying on two apparently opposing legal maxims both of which cited by S.C.C.—Applicant relying on first rule to argue respondent’s experts not approaching claim construction with mind willing to understand—Respondent relying on second rule to argue applicant improperly using disclosure of '852 patent to twist claims in such a manner so as to bring respondent’s product within scope of patent—Patent construction should precede infringement, validity analysis—Role of experts not to interpret claims but to put Court in position of being able to do so in knowledgeable way—Still possible for experts not exposed to principles of patent construction to approach patents with mind willing to understand—Not always necessary to examine disclosure  prior to construing claims—However, no firm conclusion should be reached regarding words in claims being construed without having tested interpretation with words of disclosure—That being said, resort to disclosure subject to proviso invention protected that which is expressed in claims, cannot be added to by anything mentioned in disclosure—One must not borrow terms from disclosure by placing them in patent claims—If words unambiguous, recourse to disclosure unnecessary—Following interpretation of claims at issue, no infringement of '852 patent found—Application dismissed.     

Janssen-Ortho Inc. v. Canada (Health) (T-780-08, 2010 FC 42, Zinn J., judgment dated January 29, 2010, 63 pp.)