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PATENTS - Defences to infringement - Invalidity of patent - Insufficiency of claims

Tuesday, August 31, 2021 @ 5:37 AM  

Lexis Advance® Quicklaw®
Appeal by Seedlings Life Science Ventures from the dismissal of its patent infringement action and the allowance of the respondent’s counterclaim that the patent claims in issue were invalid. The appellant’s patent was for an apparatus and method for rapid auto-injection of medication. The patent was to address two shortcomings of the prior art, bulkiness and needle exposure after deployment. The respondent’s allegedly infringing product was its auto-injector called EpiPen. The Federal Court found all the claims were invalid for overbreadth and some of the claims were also invalid for anticipation and obviousness based on a U.S. patent and the common general knowledge.

HELD: Appeal dismissed. The Federal Court did not err in its claim construction. Its reference to the prior art when determining what the inventor intended was permissible. The doctrine of approbation and reprobation had no application. The respondent did not take a position at trial inconsistent with a position it took earlier. The Federal Court did not engage in a tortured reading of the U.S. patent. It did not err in its findings of anticipation or obviousness. Overbreadth was a proper ground of invalidity. The Federal Court did not make any palpable and overriding error in its conclusion the claims were invalid for overbreadth. The claims were broader than the embodiments described in the disclosure. The Federal Court should have concluded the claims were also invalid for insufficiency as a skilled person would not know how to make a device without the elements in the disclosure omitted from the claims.

Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, [2021] F.C.J. No. 800, Federal Court of Appeal, M.J.L. Gleason, J.B. Laskin and G.R. Locke JJ.A., July 28, 2021. Digest No. TLD-August302021004