patent construction and infringement lecture
Claim Interpretation and Patent Infringement
What’s the big deal?
It’s only words, and as lawyers we are used to reading words.
Words inherently imprecise.
If it’s a contract we try to look at surrounding circumstances to see what the parties intended?
Can we do that in a patent specification?
Does it matter what the inventor intended? If not way not?
A patent claim has a public function. It is not a matter of interpreting the party’s intention.
Free World (para 41) A patent is, after all, a public instrument issued under statutory authority which may result in severe financial consequences for its infringement.
A patent claim is a unilateral statement addressed to the POSITA. Not a question of what the inventor intended but what a judge would conclude a POSITA would understand that the claim meant.
Or more precisely what a judge would conclude a POSITA would understand was the intention of the inventor
The inventor might not even be a person skilled in the art (ie. a POSITA)
Claim interpretation is quite different
In that sense interpreting a claim is quite different from interpreting a contract. No help to understand what the inventor intended except in so far as it helps a judge understand what a person skilled in the art would understand the term to mean.
Hayhurst p 195 The focus in a patent action is on what the specification discloses and claims, construed through the eyes of a skilled addressee, and not upon what the inventor thought, or what others who merely observed what is in actual use may have thought.
Freeworld Trust v. ElectroSanté
The words chosen by the inventor will be read [by the POSITA] in the sense the inventor is presumed to have intended, and in a way that is sympathetic to accomplishment of the inventor's purpose expressed or implicit in the text of the claims.
However, if the inventor has misspoken or otherwise created an unnecessary or troublesome limitation in the claims, it is a self-inflicted wound. The public is entitled to rely on the words used provided the words used are interpreted fairly and knowledgeably.
Free World para 66.
In my view, those references to the inventor's intention refer to an objective manifestation of that intent in the patent claims, as interpreted by the person skilled in the art, and do not contemplate extrinsic evidence such as statements or admissions made in the course of patent prosecution.
To allow such extrinsic evidence for the purpose of defining the monopoly would undermine the public notice function of the claims, and increase uncertainty as well as fuelling the already overheated engines of patent litigation.
Patent Act Sections 27(4), 42, 43(2)
S. 27(4) Claims The specification 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.
S.42 The exclusive right privilege and liberty of making, constructing and using the invention and selling it to others to be used
Patents filed before October 1, 1989 term 17 years from grant
New Act Patents 20 years from filing
Specific damage and Exemption from Infringement Provisions discussed later
S.43(2) Patent assumed valid
Free World Trust v. Electro-Sante
Any infringement analysis must start with this case and for Patent Agents exams on infringement it is crucial.
Tension between literal infringement and substantive infringement.
Grip Printing and Publishing Co. of Toronto v. Butterfield (1885), 11 S.C.R. 291, that a patent owner has a remedy against an alleged infringer who does not take the letter of the invention but nevertheless appropriates its substance (or “pith and marrow”).
Clearly not the law anymore
The Free World Principles
(a) The Patent Act promotes adherence to the language of the claims.
(b) Adherence to the language of the claims in turn promotes both fairness and predictability.
(c) The claim language must, however, be read in an informed and purposive way.
(d) The language of the claims thus construed defines the monopoly. There is no recourse to such vague notions as the “spirit of the invention” to expand it further.
The Free World Principles
(e) The claims language will, on a purposive construction, show that some elements of the claimed invention are essential while others are non-essential. The identification of elements as essential or non-essential is made:
(i) on the basis of the common knowledge of the worker skilled in the art to which the patent relates;
(ii) as of the date the patent is published;
(iii) having regard to whether or not it was obvious to the skilled reader at the time the patent was published that a variant of a particular element would not make a difference to the way in which the invention works; or
(iv) according to the intent of the inventor, expressed or inferred from the claims, that a particular element is essential irrespective of its practical effect;
(v) without, however, resort to extrinsic evidence of the inventor's intention.
(f) There is no infringement if an essential element is different or omitted. There may still be infringement, however, if non-essential elements are substituted or omitted.
(a) The Patent Act Promotes Adherence to the Language of the Claims
The Canadian approach is called the “peripheral claiming principle” which emphasizes the language of the claims as defining not the underlying technical idea but the legal boundary of the state-conferred monopoly.
In Electric & Musical Industries Ld. v. Lissen Ld. (1939), 56 R.P.C. 23 (H.L.), Lord Russell stated at p. 39: A patentee who describes an invention in the body of a specification obtains no monopoly unless it is claimed in the claims. . . . [T]here is no such thing as infringement of the equity of a patent. . . .
The judgment of Lord Diplock [in Catnic v. Hill] was considered and applied by our Federal Court of Appeal in Eli Lilly & Co. v. O'Hara Manufacturing Ltd. (1989), 26 C.P.R. (3d) 1, and its progeny. The primacy of the claims language was already rooted deeply in our jurisprudence and should, I think, be affirmed again on this appeal
(b) Adherence to the Language of the Claims in Turn Promotes both Fairness and Predictability
A patent is, after all, a public instrument issued under statutory authority which may result in severe financial consequences for its infringement.
The illusive quest for the “spirit of the invention” must be kept to a minimum.
(c) The Claims Must Be Construed in an Informed and Purposive Way
It is the “common knowledge” shared by competent “ordinary workers” that is brought to bear on the interpretation:
a hypothetical person possessing the ordinary skill and knowledge of the particular art to which the invention relates, and a mind willing to understand a specification that is addressed to him.
But POSITA can be a team of people
(d) The Language of the Claims Thus Construed Defines the Monopoly. There Is no Recourse to such Vague Notions as “Spirit of the Invention” to Expand it Further
Previous two step – Literal and then infringement “in substance”
On occasion, treatment of the second step in specific cases has attracted criticism as being subjective and unduly discretionary. Once the inquiry is no longer anchored in the language of the claims, the court may be heading into unknown waters without a chart. The one-step approach has to build flexibility and common sense into the initial claims construction because there is no second step.
No grounds for arguing a colourable evasion in a second step
Catnic v. Hill House of Lords
Catnic: My Lords, in their closely reasoned written cases in this House and in the oral argument, both parties to this appeal have tended to treat “textual infringement” and infringement of the “pith and marrow” of an invention as if they were separate causes of action, the existence of the former to be determined as a matter of construction only and of the latter upon some broader principle of colourable evasion.
The greater the level of discretion left to courts to peer below the language of the claims in a search for “the spirit of the invention”, the less the claims can perform their public notice function, and the greater the resulting level of unwelcome uncertainty and unpredictability.
“Purposive construction” does away with the first step of purely literal interpretation but disciplines the scope of “substantive” claims construction in the interest of fairness to both the patentee and the public.
In my view its endorsement by the Federal Court of Appeal in O'Hara was correct.
(e) The Claims Language Will, on a Purposive Construction, Show that Some Elements of the Claimed Invention Are Essential While Others Are Non-essential. This Allocation Will Be Made in the Following Manner:
(i) On the Basis of the Common Knowledge of the Worker Skilled in the Art to which the Patent Relates
The words chosen by the inventor will be read in the sense the inventor is presumed to have intended, and in a way that is sympathetic to accomplishment of the inventor's purpose expressed or implicit in the text of the claims. However, if the inventor has misspoken or otherwise created an unnecessary or troublesome limitation in the claims, it is a self-inflicted wound. The public is entitled to rely on the words used provided the words used are interpreted fairly and knowledgeably.
(ii) What Constitutes an “Essential” Element Is to Be Interpreted in Light of the Knowledge of the Art at the Date of the Publication of the Patent Specification
What a competent workman reading the specification at its date would have understood it to have disclosed and claimed” (emphasis added
Would this (i.e.: that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art? If no, the variant is outside the claim
(iii) Regard Is to Be Had to Whether It Was Obvious at the Time the Patent Was Published that Substitution of a Different Variant Would Make a Difference to the Way in Which the Invention Works
Thus the elements of the invention are identified as either essential elements (where substitution of another element or omission takes the device outside the monopoly), or non-essential elements (where substitution or omission is not necessarily fatal to an allegation of infringement). For an element to be considered non-essential and thus substitutable, it must be shown either (i) that on a purposive construction of the words of the claim it was clearly not intended to be essential, or (ii) that at the date of publication of the patent, the skilled addressees would have appreciated that a particular element could be substituted without affecting the working of the invention
work in the same way” should be taken for our purposes as meaning that the variant (or component) would perform substantially the same function in substantially the same way to obtain substantially the same result, function, way, result – Graver Tank Test
(i) Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no:–
(ii) Would this (i.e.: that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art? If no, the variant is outside the claim. If yes:–
(iii) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If yes, the variant is outside the claim.
In my view, Catnic, supra, and O'Hara, supra, were correct to put the onus on the patentee to establish known and obvious substitutability at the date of publication of the patent. If the patentee fails to discharge that onus, the descriptive word or expression in the claim is to be considered essential unless the context of the claims language otherwise dictates.
Corlac FCA: claim element assumed essential unless proven otherwise
(iv) According to the Intent of the Inventor Expressed or Inferred from the Claims of the Patent#
O’Hara case: A court must interpret the claims; it cannot redraft them. When an inventor has clearly stated in the claims that he considered a requirement as essential to his invention, a court cannot decide otherwise for the sole reason that he was mistaken.
Can you eliminate an element of a claim as non-essential ?
Samuel Hershkovitz, Systèmes de Sécurité Paradox Ltée – Paradox Security Systems Ltd. and Pinhas Shpater v. Tytco Safety Products Canada Ltd. 2010 FCA
(v) Based on the Patent Specification Itself Without Resort to Extrinsic Evidence
In my view, those references to the inventor's intention refer to an objective manifestation of that intent in the patent claims, as interpreted by the person skilled in the art, and do not contemplate extrinsic evidence such as statements or admissions made in the course of patent prosecution. To allow such extrinsic evidence for the purpose of defining the monopoly would undermine the public notice function of the claims, and increase uncertainty as well as fuelling the already overheated engines of patent litigation.
No opening the pandora's box of file wrapper estoppel.
Use of specification
Hayhurst, “The Art of Claiming and Reading a Claim” p. 190 “Terms must be read in context, and it is therefore unsafe in many instances to conclude that a term is plain and unambiguous without a careful review of the specification.”
After construction comes infringement
Construction proceeds considerations of infringement or validity.
As the Court of Appeal observed, the means of control of amplitude and frequency is precisely the difference that validated the patents over the prior art embodied in such predecessor magnetotherapy machines as the Magnétopace, Myodynamic and Elec devices.
Does prior art help determine whether something is essential or non-essential?
What about using infringed article as aid to construction?
where the shoe pinches
What about a situation where the presentation history shows that a claim element was inserted to distinguish a particular obscure piece of prior art that was not part of the c.g.k.
Esher MR Parkinson v. Simon (1984) 11 R.P.C. 493 at 502
If several claims, you must, if you can, so construe those claims as to give an effective meaning to each of them…
and see Minerals Separation v. Noranda (1949) 12 CPR 99 at 196, 203, 207,210 (SCC)
Whirlpool para 79 where claim differs from another by a single feature prima facie essential
Can a dependent claim ever be broader than an independent claim?
Wilson Sporting Goods v. David Geoffrey & Associates (1990) 904, F. 2d. 677 at 685-686.
It is clear that simply supplying a product used for infringement would not be considered inducing or procuring and would not be sufficient to be held to be a joint tortfeasor by engagement in a common design. Valmet v Beloit cases.
For inducement, the patent owner must prove:
1. That the acts of infringement was completed by a direct infringer, (either the owner or contractor of the well);
2. That the completed act of infringement was influenced by the acts of the inducer, without which said influence infringement would not otherwise take place; and
3. That the influence must knowingly be exercised by the supplier of the equipment who knows his influence will result in the completion of the act of infringement.
Corlac Inc. v. Weatherford Canada 2011 FCA
Slater v Payer / Beloit v Valmet no inducement
Windsurfing v Trilantic, inducement by supplying kit with instructions to assemble.
Procter & Gamble v. Bristol Myers inducement by package directions to a consumer.
MacLennan v. Gilbert Tech Inc. 2008 FCA supply teeth to be use in patentee’s tooth holders with instructions is inducement
Knowledge that there would be an infringement required for there to be an inducement? Reading & Bates/ contractor/ subcontractor/ but Bauer v. Easton 2010 FCA knowledge of patent not necessary.
Participants in the infringing method may be considered joint tortfeasors by acting in concert to further a common plan or common design.
No Canadian cases. Obiter comment of Gauthier
No cause of action in Canada for contributory infringement
Experimental Use / Regulatory Use
s. 55.2 for development and submission of information required to get regulatory approval
Common law right: an experimental user in the course of bona fide experiments and without the intention of selling or making use of the product commercially) not an infringement Smith Kline v. Micro Chemicals  SCR 506/ lisinopril case Merck v. Apotex (2006) FCA
Right to Repair
Implied license to repair but not make a new article/ Rucker v. Gavel’s Vulcanizing 1985 (F.C.T.D.) packing elements in a blow-out preventer. New article and not repair.
CHANGE DURING USE Omark v Gouger Saw Ex Ct (1964) saw tooth
Previously Acquired Products
S. 56 purchase, construct or acquire before the claim date, the specific article
PRESUMPTION OF INFRINGEMENT OF PATENTED PROCESS
S 55.1 where a new product and the two products are the same. Presumption that the defendant’s product made by the new product’s process.
What infringes if later anticipates if earlier.
Sale or use in Canada of a product made outside Canada by a process, machine or product that would infringe the patent if made in Canada is an infringement in Canada.
Sale or use in Canada of Canadian patent is infringed even if manufactured in non-patented country and imported into Canada
Possession as infringement?
USE Monsanto, whether the inventor has been deprived of the commercial benefit of the invention, stand-by use actionable use.
Possession may constitute infringement
Injunction and Destruction
s 57 authority to order an injunction
Destruction or delivery up
55.01 six years
Patents filed before October 1, 1989 term 17 years from grant
New Act Patents 20 years from filing
S. 55(1) damages to the patentee and all persons claiming under
All person claiming under includes exclusive and nonexclusive licensees
Broadly construed Nexium case AstraZeneca 2014 FC
S. 55(2) reasonable compensation for infringement from date patent is open to public inspection until date of grant for all actions that would have constituted infringement of the patent if the patent had been granted on the day the application became open to public inspection.
Reasonable compensation = reasonable royalty
S 55(3) Patentee must be a party
Can elect damages or accounting of profits
Put injured party in the same position it would have been in had the infringement not occurred, not punishment
Could be plf’s profit or lost royalties
Using differential cost accounting sales revenue minus variable costs due to increased production
Reduction in sale price also a head of damage / convoyed sales
Apportionment once lost sales are proven, then the burden on the defendant to prove that the sale was not made because of the patented part.
Question of fact. If the whole product would not have been sold without the patented part, can get damages on the whole product, no apportionment.
Accounting of Profits
Like injunction – equitable remedy
Punitive Damages – only where malicious high-handed conduct and compensation damages insufficient