Claim Construction

A construction analysis is simply an exercise in interpreting the language of the patent in order to give it sense or meaning. More typically, it is an exercise in interpreting the language of the claims of the patent.

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June 13, 2017

FC Denies Prohibition Order Request; Finds Expert Blinding Persuasive But Not Primary Interest

2016 FC 382 - The FC concluded that Apotex’s allegations of non-infringement in respect of Shire's Canadian Patent were justified and accordingly denied Shire’s requested prohibition order.

May 2, 2017

FCA Finds Provincial Limitation Periods May Apply to Patents Subject to the Old Patent Act

2017 FCA 9 - The FCA affirmed the FC decision that AstraZeneca’s patent was valid and infringed, accepted Apotex’s appeal with respects to limitation periods, and rejected AstraZeneca’s cross-appeal regarding punitive damages.

August 8, 2016

FC Calls on Opening Canadian Patent Prosecution File Histories for Claim Construction

2016 FC 883 - The Federal Court followed the longstanding rule against the use of patent prosecution file history in interpreting the claims of a patent, but made a strong case for why the patent prosecution file history is worth considering, as is common practice in the U.S.

March 30, 2016

FCA Nods To SCOTUS, Recommends The Use Of The Clear Error Standard Of Review In Claim Construction Where Expert Evidence Plays A Significant Role

2015 FCA 116 - The FCA advised that where expert evidence plays a significant role, claim construction might involve subsidiary factual disputes reviewed on a palpable and overriding error standard, which is equivalent to the United States clear error standard.

February 10, 2016

FCA Upholds Claim-by-Claim Construction and Test for Functionality in Industrial Designs

2015 FCA 115 - The FCA restated the law on functionality of industrial designs and the requirement that patent claims be construed on a claim-by-claim basis.

October 6, 2015

FCA Nudges SCC to Consider that Claim Construction should be Reviewed on Reasonableness Standard

Abb Technology AG, ABB Inc v Hyundai Heavy Industries Co, Ltd, 2015 FCA 181 - The FCA suggested that although claim construction is reviewed on a correctness standard, claim construction is so heavily reliant on expert witnesses that perhaps it should be reviewed on a palpable and overriding error standard.

September 30, 2015

ONSC Takes On US Patent Claim Construction

OrthoArm Incorporated v GAC International, LLC, 2015 ONSC 5097 - The ONSC was to undertake the analysis that would normally be done at a Markman hearing: to perform claim construction on the US patent and apply that construction to determine whether there is infringement.

September 18, 2015

The ITC Asserts Jurisdiction over Digital Patent Infringement

ClearCorrect Operating LLC, et al v International Trade Commission (No 2014-1527) - An appeal to the Federal Circuit will determine whether the ITC has jurisdiction over digital patent infringement: the ability to block the importation of patent-infringing “articles” if those articles take the form of digital information.

September 15, 2015

FCA Rejects “Exact Matching” Requirement in PM(NOC) Regulations

Eli Lilly Canada Inc v Canada (Attorney General), 2015 FCA 166 - The FCA rejected the notion adopted by the Federal Court that a higher level of specificity is required to adhere to the Regulations than is required for an element to be claimed as a matter of claim construction, bringing the law in line with Industry Canada proposed amendments.

September 9, 2015

The Word “will” can Indicate a Patent Promise, not an Expectation

AstraZeneca Canada Inc v Apotex Inc, 2015 FCA 158 - The FCA acknowledged that the word “will” often refers to an expectation or goal rather than a promise, but still held that the FC did not err in finding that a promise was made when reading the patent as a whole from the eyes of a skilled reader.

September 2, 2015

In Situ Reaction Cannot Avoid AstraZeneca’s Product Claim

AstraZeneca Canada Inc v Apotex Inc, 2015 FC 322 - Claim 1 was worded general enough to capture Apotex’s subcoating layer even though Apotex’s subcoating layer was generated by an in situ chemical reaction, a process that the patentee had not contemplated.

August 20, 2015

USPTO Proposes AIA Rule Changes

USPTO Proposes AIA Rule Changes - Proposes to affirm the "broadest reasonable interpretation standard" in IPR proceedings and other changes.

August 17, 2015

IPR Proceedings in the US retain the Broadest Reasonable Interpretation Standard for Claim Construction & Strict Claim Amendment Requirements

Microsoft Corporation v Proxyconn, Inc, - The “broadest reasonable interpretation standard” (“BRI”) standard is the standard for claim construction in Inter Partes Review IPR proceedings and newly substituted claims must be demonstrated to be patentable over the prior art of record.

March 24, 2015

Mylan-Tadalafil does not Infringe Eli Lilly’s Formulation Patent in NOC Proceeding

Eli Lilly Inc v Mylan Pharmaceuticals ULC, 2015 FC 178 - Mylan did not infringe the ‘948 Patent because the Mylan’s tadalafil compound did not have the claimed particle size distribution and the formulation did not contain the claimed concentration of hydrophilic binder. The Court rejected two purposive arguments by Eli Lilly in favour of a more literal reading of the patent.

February 25, 2015

Federal Court Upholds Gap between Claim Construction and PM(NOC) Product Specificity Requirement for Combination Drugs

Eli Lilly Canada v Canada (Attorney General), 2014 FC 152 - This decision clearly states that a higher level of specificity is required to adhere to the Regulations than is required for an element to be claimed as a matter of claim construction.

February 23, 2015

United States Supreme Court Clarifies that Claim Construction can Involve Subsidiary Factual Disputes that are Reviewed on a Clear Error Standard

Teva Pharmaceuticals USA, Inc, et al v Sandoz, Inc, et al, 574 US __ (2015) - United States Supreme Court clarified that claim construction can involve subsidiary factual disputes that are reviewed on a clear error standard, while the ultimate question of claim construction is reviewed de novo.

July 31, 2014

Federal Court Prohibited Issuance of a NOC for Generic Version of Lumigan

Allergan Inc v Apotex Inc, 2014 FC 567 - In terms of claim construction, this case shows the tension between construing claims based solely on the wording of the claims versus peering beyond the wording of the claims to distill an underlying invention.

February 11, 2014