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.

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

Federal Court Adopts a More Restrained Approach to Construing Promise of the Celebrex Patent

Pfizer Canada Inc. v. Mylan Pharmaceuticals ULC – 2014 FC 38 In this case Pfizer brought a prohibition application under the PM(NOC) Regulations to prevent the […]
November 26, 2013

FCA Declines to Reconsider Recent Bell Helicopter Decision

Bell Helicopter Textron Canada Limitee v Eurocopter, 2013 FCA 261  Background The Federal Court of Appeal declined a motion under Rule 397 of the Federal Court […]
October 18, 2013

FC Judge Utilizes File Wrapper to Construe Claims

Distrimedic Inc v Dispill Inc. 2013 FC 1043  Background  The patent at issue is Canadian Patent No. 2,207,045. The product is a kit for the manufacture […]