Modern Patent Interpretation Reviewed

In Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2020 FC 1, Mr. Justice Sébastien Grammond presided over a patent infringement action in the Federal Court of Canada. The review is a helpful reminder of the modern approach to interpret patent claims.

Seedlings Life Science Ventures, LLC (Seedlings) is an early-stage health-care research and product development company. It alleges that Pfizer Canada ULC (Pfizer), infringes Seedings patent by selling in Canada an auto-injector commonly known as the EpiPen. While, at first sight, the EpiPen and Seedlings’s invention do not look alike, Seedlings argues that the EpiPen infringes certain claims of its patent and seeks compensation and an accounting of profits. Pfizer denies that the EpiPen infringes Seedlings’s patent and it seeks a declaration that the claims of Seedlings’s patent asserted in this action are invalid.

As a result, the interpretation of the claims of the patent is essential for the Court to assess the position of the parties. Mr. Justice Sébastien Grammond sets out a careful set of the principles for modern interpretation of patent claims.

The starting point is necessary to identify the “skilled person” to whom the patent is addressed, the definition of the “common general knowledge” possessed by that skilled person, and the proper construction (or interpretation) of certain terms found in the claims of the patent of interest and the identification of the essential elements of those claims.^[1]

Identifying the skilled person and common general knowledge at an early stage of the analysis also provides a basis for determining what will be considered as inventive in the relevant field of activity. Addressing issues of claim construction before analyzing validity or infringement prevents claims construction from becoming a “results-oriented” exercise.^[2]

Defining the Person Skilled in the Art

Patents are not meant to be read by ordinary persons, but rather are meant to be read by a “person skilled in the art or science to which it pertains”^[3] or, in short, the skilled person.^[4]

Defining Common General Knowledge

The next preliminary issue is the definition of common general knowledge, which is defined as “knowledge generally known by persons skilled in the relevant art at the relevant time”.^[5] It is what the skilled person would know without doing research. It must be distinguished from publicly accessible knowledge: not all public knowledge is commonly known. The relevant time is the date that the patent was laid open for public inspection.^[6]

Prior Art

The Court then identifies prior art against which the claimed invention will be tested.

Claims Construction

Patent claims should be interpreted according to the modern method of legal interpretation. One should give meaning to legal language based on all relevant clues or guides.^[7] In the patent context the Supreme Court identified this as the “purposive method”.^[8] A patent claim may be interpreted based on certain other information found in the patent, such as the disclosure or in other claims.^[9] Expert evidence may assist the interpretive exercise, although the court is never bound by the experts’ opinions.^[10]

In conducting the interpretation of the patent claims, the court should seek to understand and give effect to the inventor’s intention, rather than subvert it through an overly technical analysis of language.^[11]

Patents have special characteristics that need to be taken into account in their interpretation. A patent defines a monopoly granted to an inventor in consideration of the disclosure of the invention to the public. It is often described as a bargain, or quid pro quo, between the inventor and the public.^[12]

The language of the claims perform a notice function: they warn potential infringers of what they must not do. For that reason, courts have typically been loath to resort to extrinsic evidence in the interpretation of patent claims. A third party could not be presumed to know of such evidence and should be entitled to rely on the language of the claims.^[13]

Patents must be interpreted in a balanced manner, that gives equal consideration to the interests of the inventors and those of the public. Another way to describe this is that the interpretation of the patent is “fair to both patentee and public”.^[14]

The Patent Act sets out a structure that also affects how a patent claim is interpreted.^[15]

A patent application is required to contain a specification, which includes a full description of the invention, its method of constructing and, in the case of a machine, its principle and its “best mode” in which the principle is applied.^[16] The specification of the patent must end with “a claim or claims defining distinctly and in explicit terms the subject-matter of the invention for which an exclusive privilege or property is claimed.”^[17]

The Patent Act requires the inventor to provide drawings, whenever the invention can be represented in this way.^[18]

As a result, while the invention is described in the specification and drawings, the scope of the monopoly is defined by the claims.^[19] An interpretation of the patent claims that would exclude the embodiment shown in the drawings or described in the specification is suspect, as it is unlikely to reflect the inventor’s intention.^[20]

When the modern method of interpretation leaves the court undecided as between two potential interpretations, presumptions of interpretation are often used to settle the issue. One such presumption that some patentees argue for is that patents should be interpreted in a way that ensures their validity.^[21] However, the courts reject such a presumption as it goes against the principle that patents should not be construed “with an eye on the allegedly infringing device in respect of infringement or with an eye to the prior art in respect of validity to avoid its effect”.^[22]

The next step in the analysis is to distinguish essential and non-essential elements.^[23]

With this approach the Court is able to take a balanced approach to the interpretation of the patent claims.

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^[1] Dealing with those issues at the outset, as is customary in patent infringement cases, affords certain benefits. It ensures consistency in the analysis. For example, one should not construe a claim in one way for the purposes of validity, and in a different way for the purposes of infringement: Whirlpool Corp v Camco Inc, 2000 SCC 67 at paragraph 49(b), [2000] 2 SCR 106; Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2020 FC 1, at para. 41-42.

^[2] See Whirlpool, Supra, at paragraph 49(a); Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2020 FC 1, at para. 42.

^[3] See Sections 27(3)(b) and 28.3 of the Patent Act, RSC 1985, c P-4

^[4] Burton Parsons Chemicals, Inc v Hewlett-Packard (Canada) Ltd, [1976] 1 SCR 555 at 563

^[5] Apotex Inc v Sanofi-Synthelabo Canada Inc, 2008 SCC 61 at paragraph 37, [2008] 3 SCR 265; see also Bell Helicopter Textron Canada Limitée v Eurocopter, société par actions simplifiée, 2013 FCA 219 at paragraph 65; Mylan Pharmaceuticals ULC v Eli Lilly Canada Inc, 2016 FCA 119 at paragraph 25, [2017] 2 FCR 280.

^[6]Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2020 FC 1, at para. 48.

^[7] These are also known as the “factual matrix” in which words are used. See Investors Compensation Scheme v West Bromwich Building Society, [1997] UKHL 28, [1998] 1 All ER 98; see also Sattva Capital Corp v Creston Moly Corp, 2014 SCC 53 at paragraphs 46–48, [2014] 2 SCR 633

^[8] Whirlpool Corp v Camco Inc, 2000 SCC 67; Free World Trust v Électro Santé Inc, 2000 SCC 66, [2000] 2 SCR 1024

^[9] Consolboard Inc v MacMillan Bloedel (Sask) Ltd, [1981] 1 SCR 504 at 520

^[10] See Whirlpool, supra, at paragraphs 61–62; Eurocopter, supra, at paragraph 74

^[11] See Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2020 FC 1, at para. 48.

^[12] See Free World Trust, supra, at paragraph 13; Apotex Inc v Wellcome Foundation Ltd, 2002 SCC 77 at paragraph 37, [2002] 4 SCR 153; AstraZeneca Canada Inc v Apotex Inc, 2017 SCC 36 at paragraph 39, [2017] 1 SCR 943

^[13] See Free World Trust, supra, at paragraphs 33–43; applied in Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2020 FC 1, at para. 56.

^[14] See Consolboard, supra, at 520; applied in Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2020 FC 1, at para. 56.

^[15] See Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2020 FC 1, at para. 56.

^[16] See Section 27, Patent Act; Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2020 FC 1, at para. 57.

^[17] See Section 37, Patent Act; Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2020 FC 1, at para. 57.

^[18] See Section 37, Patent Act; Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2020 FC 1, at para. 57.

^[19] The claims are not limited to the “best mode,” often called the “preferred embodiment,” described in the specification or illustrated in the drawings: Bombardier Recreational Products Inc v Arctic Cat, Inc, 2018 FCA 172 at paragraph 54.

^[20] See Bristol-Myers Squibb Canada Co v Teva Canada Limited, 2016 FC 580 at paragraph 335.

^[21] That presumption was colourfully described as a ““judicial anxiety to support a really useful invention”” in a 19^th-century English case quoted in Consolboard, Supra, at 520; In Seedlings, Supra, the court notes that “the reference to ““judicial anxiety”” appears to relate to the idea that a patent should not be invalidated on a technicality (see, in this regard, Burton Parsons, at 563), not a more general presumption of interpretation in favour of the inventor”. See Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2020 FC 1, at para. 59.

^[22] See Whirlpool, Supra, at paragraph 49(a). The Federal Court of Appeal has also rejected such a presumption in ABB Technology AG v Hyundai Heavy Industries Co, Ltd, 2015 FCA 181 at paragraph 45; See also Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2020 FC 1, at para. 59

^[23] See Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2020 FC 1, at para. 59