After a long wait, a couple of cases have used summary determination to decide issues of claim construction in patent infringement proceedings. In both cases, the claim construction resolution was determinative of non-infringement and the plaintiff’s case was dismissed. The decisions are subject to appeal.
In patent cases, determining the meaning of the words used in the claims of the patent is a key prerequisite for determining patent validity and infringement. Typically, expert evidence is introduced on the qualities of the skilled person appropriate for the patent at issue, the common general knowledge of this skilled person, and how the claim terms would be understood by this skilled person.
In 2004, the Federal Court of Appeal rejected a motion for an early determination of claim construction under Rule 107 of the Federal Courts Rules relating to ‘trial of an issue’ (see Realsearch Inc. v. Valon Kone Brunette Ltd., 2004 FCA 5). The court in Realsearch discussed the parallels with Markman hearings in the United States, where claim construction is commonly determined prior to trial but the Court expressed concern about severance of claim construction from other issues in a patent case and held that severance of claim construction in this case was not appropriate.
The appellants may lose the advantage of having the whole of the action tried at the same time by the same judge. Issues of claim construction and infringement are closely interwoven even though, as has been held, it is wrong to construe a patent “with an eye on the allegedly infringing device in respect of infringement”: Whirlpool Corp., supra, at paragraph 49. Nevertheless, the claim language must be read in an informed and purposive way: Free World Trust, supra, at paragraph 31(e).
A lot has changed since 2004, including introduction of summary judgment and summary trial provisions to the Federal Courts Rules (see my earlier column, Summary Resolution of Intellectual Property Cases from February 2016) and the Supreme Court of Canada’s directive to change the approach to summary determinations in Hryniak.
In Canmar Foods Ltd. v. TA Foods Ltd., 2019 FC 1233 (appeal pending A-408-19), the defendant in a patent infringement proceeding successfully brought a motion for summary judgement based on non-infringement of all asserted claims. The Court agreed that it did not need expert evidence to construe the claim and that it was clear that the term was essential. The Court considered fact evidence which showed that the defendant used a process that was different from the claims. The Court also found the file history and statements made to the patent office by the patentee to be helpful in understanding the claim language. The Court therefore concluded that the defendant did not infringe the asserted claims of the patent at issue.
In ViiV Healthcare Company v. Gilead Sciences Canada, Inc., 2020 FC 486, another decision decided by Justice Manson, the defendant sought summary trial on the meaning of a key term of the asserted patent claims and non-infringement. The Court found that it was appropriate to determine this issue on a summary trial.
Summary trial need not be reserved for cases where the summary trial will result in determination of every issue. The Court has discretion to look at one or more issues and determine whether it is appropriate to deal with those issues by way of summary trial
In this case, the parties put forward five expert witnesses, who were all cross-examined on their reports during the summary trial. The Court has all of the necessary expert evidence in addition to the 282 Patent specification to construe Ring A of claims 1, 11 and 16 and determine whether Gilead has made out its case of non-infringement.
Despite ViiV’s continued attempts to derail the summary trial, I find that Gilead’s motion is both appropriate and timely.
Based on the expert evidence, the Court construed the meaning of the claim term and found that “Ring A” was an essential part of the claim. Since the defendant’s product only had a bridged bicyclic compounds, these were not within the scope of the claims and therefore the Court concluded there was no infringement.
Summary determinations also have the potential to lead to partial determinations. For example, claim construction could be found against the moving party so the proceeding may continue to a trial on other issues, including claim construction on other terms, validity and infringement of the patent and liability. In both the cases cited above, this was not the case because the summary determination lead to a dismissal of the plaintiff’s case.
A factor discussed in the Federal Court of appeal in Realsearch (see para 7) was how early determination of key claim terms could result in settlement. A summary hearing that leads to a finding for or against the moving party on a key claim term may undermine a key argument of non-infringement or invalidity intended to be made by the defendant at the trial – increasing the incentive to settle.
For parties considering bringing a motion for summary trial or judgment, involving the case management judge early is likely a good idea. In Wenzel Downhole Tools Ltd. v. National-Oilwell Canada Ltd., 2010 FC 966, the Court was critical of a party which brought a motion for summary judgment after the pre-trial conference because the motion had not been raised with the Court earlier.
In addition, a defending party should not rely on an opportunity to introduce evidence after the Court has determined that a summary procedure is appropriate. Although not a patent case, in 0871768 B.C. Ltd. v. Aestival (Vessel), 2014 FC 1047, the Court found that a responding party must puts its best foot forward and an adverse inference may be drawn if a party fails to file responding or rebuttal evidence – both fact and expert evidence.
Summary determinations can be a useful and powerful tool, short of a full trial, where the issues and facts are such that determination of a small number of key issues, such as claim construction of one or two key terms, may be determinative of the merits of the entirety or key issues in a patent dispute.
It will be interestingly to see how the Federal Court of Appeal considers the scope of summary determinations for claim construction and what findings a trial or motions judge can make with regards to claim construction without a full trial record on validity and infringement.