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PATENTS - Infringement - Anticipation (lack of novelty) - Obviousness

Thursday, July 11, 2019 @ 8:41 AM  


Lexis Advance® Quicklaw®
Appeal by the plaintiff, Tearlab Corporation, from dismissal of its patent infringement action against the defendant, I-MED Pharma. The plaintiff held the exclusive Canadian licence in respect of the 540 Patent. The plaintiff marketed and sold diagnostic products for eye-care professionals. The 540 Patent purported to protect a receiving chip used to measure the osmolarity of bodily fluids, such as tear film, to aid in the diagnosis and treatment of Dry Eye Disease. The plaintiff's receiving chip was housed in a handheld pen used to extract tear fluid from the eye. The defendant marketed medical devices, including an osmolarity pen designed to measure the conductivity of eyelid moisture through a single use sensor. The plaintiff alleged that the defendant's device infringed the 540 Patent. The trial judge concluded that the plaintiff established infringement of certain claims of the 540 Patent, but that those claims were invalid on the basis of anticipation and obviousness. The plaintiff appealed.

HELD: Appeal dismissed. The trial judge did not err in construing the claims of the 540 Patent or construe them in a manner inconsistent with the principles of purposive claim construction. A person skilled in the art would not have understood the inventive concept to require a microchip requiring certain specific properties. The judge could not be faulted for adhering to the wording of the claims and refusing to add limitations that were not expressly included. In ruling on the issue of invalidity, the trial judge did not err in finding that the claims were obvious and anticipated. The expert evidence supported the finding that it was obvious to a person skilled in the art to combine prior art references to create a device that could measure osmolarity both in vivo and ex vivo without the exercise of inventiveness. The judge appropriately did not restrict the inventive concept of the claims to the content of one specific embodiment. The judge's anticipatory and obviousness analysis did not involve contradictory findings.

Tearlab Corp. v. I-MED Pharma Inc., [2019] F.C.J. No. 693, Federal Court of Appeal, M. Nadon, Y. de Montigny and M.J.L. Gleason JJ.A., June 13, 2019. Digest No. TLD-July82019011