Claim

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Claim Construction Claim Construction and the Role of Expert Witnesses in Canadaand the Role of Expert Witnesses in Canada

Presented at theFICPI ABC Meeting

Loch Lomond, May 2007

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The Exclusive RightThe Exclusive Right

Every patent granted under this Act shall … subject to this Act, grant to the patentee … for the term of the patent, from the granting of the patent, the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used, subject to adjudication in respect thereof before any court of competent jurisdiction Canadian Patent Act

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Approach Taken by Canadian CourtsApproach Taken by Canadian Courts

Consistent with approach taken by UK courts – until European influence

Different than approach taken by US Courts No review of prosecution history No file wrapper estoppel

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Lister v. Norton (UK 1886)Lister v. Norton (UK 1886)

A patent "must be read by a mind willing to understand, not by a mind desirous of misunderstanding“ per Chitty J. in Lister v. Norton Brothers and

Co. (1886), 3 R.P.C. 199 (Ch. D.), at p. 203.

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Williams v. Box (1910)Williams v. Box (1910)

If we would interpret correctly the meaning of any … writing we must understand what those framing it were about, and the purpose it was intended to execute. (1910), 44 S.C.R. 1, per Idington J., at p. 10

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French’s v. Electrolytic (1930)French’s v. Electrolytic (1930)

A patent should be approached "with a judicial anxiety to support a really useful invention if it can be supported on a reasonable construction of the patent" French's Complex Ore Reduction Co. V.

Electrolytic Zinc Process Co. [1930] S.C.R. 462.

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Western Electric v. Baldwin (1934)Western Electric v. Baldwin (1934)

Where the language of the specification, upon a reasonable view of it, can be so read as to afford the inventor protection for that which he has actually in good faith invented, the court, as a rule, will endeavourto give effect to that construction. Western Electric Company, Incorporated, and

Northern Electric Company v. Baldwin International Radio of Canada, [1934] S.C.R. 570, at p. 574, Duff C.J.C.

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J.K. J.K. SmitSmit v. McClintock, (1940) v. McClintock, (1940)

There can be no doubt, in my mind, that as the inventor puts it, that is an essential part of his process. …It is not the province of the court to guess what is and is not of the essence of the invention of the respondent. The patentee has clearly indicated that the use of air suction at that stage of the process is an essential, if not the essential, part of the invention described in the specification. J. K. Smit & Sons, Inc. v. McClintock, [1940] S.C.R. 279,

per Duff C.J.

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The Addressee of the PatentThe Addressee of the Patent

The patent specification is not addressed to grammarians, etymologists or to the public generally, but to skilled individuals sufficiently versed in the art to which the patent relates to enable them on a technical level to appreciate the nature and description of the invention H. G. Fox, The Canadian Law and Practice

Relating to Letters Patent for Inventions (4th ed. 1969), at p. 185.

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ConsolboardConsolboard v. Mv. M--BloedelBloedel (1981)(1981)

We must look to the whole of the disclosure and the claims to ascertain the nature of the invention and methods of its performance, being neither benevolent nor harsh, but rather seeking a construction which is reasonable and fair to both patentee and public. Consolboard Inc. v. MacMillan Bloedel (Sask.)

Ltd., [1981] 1 S.C.R. 504, at p. 517, per Dickson CJ

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CatnicCatnic Components (1982)Components (1982)

A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. Catnic Components Ltd. v. Hill & Smith Ltd.,

[1982] R.P.C. 183; per Diplock, L.J.

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P&G v. Beecham (1982)P&G v. Beecham (1982)

. . . in construing the claims in a patent recourse to the remainder of the specification is (a) permissible only to assist in understanding terms used in the claims; (b) unnecessary where the words of the claim are plain and unambiguous; and (c) improper to vary the scope or ambit of the claims. Beecham Canada Ltd. et al. v. Proctor & Gamble

Co., per Urie, J.

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Interpretation of the ClaimsInterpretation of the Claims

Lots of helpful phases in the caselaw Person skilled in the art Mind willing to understand “judicial anxiety to support a really useful

invention “recourse to the specification to understand the

claims Cannot import restrictions from spec into the

claims

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Interpretation (cont’d)Interpretation (cont’d)

Problem: What do these handy little phrases mean? How are they applied in the circumstances of

any case? Is a patent interpreted differently than any

other document?

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Purposive ConstructionPurposive Construction

Not really a different approach to claim interpretation

Patent is interpreted to understand the intention of the patentee as that intention is expressed in the patent

If the patentee has deliberately, but unnecessarily restricted the claims, the court will not correct that mistake

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Eli Lilly v O’HaraEli Lilly v O’Hara

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The Role of the CourtThe Role of the Court

A court must interpret the claims; it cannot redraft them. When an inventor has clearly stated in the claims that which he considers as essential to his invention, a court cannot decide otherwise for the sole reason that he was mistaken.

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“The court, in interpreting the claims, is merely trying to find out what was the intention of the inventor, it cannot conclude that strict compliance with a word or phrase used in a claim is not an essential requirement of the invention unless it be obvious that the inventor knew that a failure to comply with that requirement would have no material effect upon the way the invention worked.”

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Whirlpool v. Whirlpool v. CamcoCamco

Three patents issued to Whirlpool‘401 – upper and lower agitators powered by

drive shaft – not infringed‘803 – intermittent rotation of upper auger734 – use of flexible vanes to avoid tangling

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‘401 Patent ‘401 Patent (appln.1974)(appln.1974)

401 patent claimed upper and lower agitators powered by drive shaf tThe upper auger turned only in one direction. The dual agitators ensured that the clothing was more evenly washed.

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‘803 Patent‘803 Patent((ApplnAppln 1974)1974)

Permitted intermittent rotation of upper auger. Upper auger was driven by a clutch that engaged only when the lower agitator rotated f orward. Downside: the clothing would tie itself up into knots, though the “three dimensional tangling action” that the washer generated.

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‘734 Patent‘734 Patent((ApplnAppln 1977)1977)

Claimed the use of flexible vanes to avoid tangling.Also claimed mechanisms to permit the upper auger to rotate continuously, instead of intermittently.

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Claim 1 of the ‘ 734 PatentClaim 1 of the ‘ 734 Patent

…said first agitator element having formed thereon flexible vanes which are free to flex in response to oscillatory motions of the agitator element, thereby to yieldingly engage fabrics deflected downwardly and lessening high impact loading of the first agitator element

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The Issues in The Issues in CamcoCamco

1. What are the relevant principles of patent claims construction?

2. Do the claims of the '803 patent, properly construed, include flexible vanes?

3. If the '803 patent claims properly construed do not include flex vanes, is the '734 patent nevertheless invalid because of double patenting?

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The Approach of the SCCThe Approach of the SCC

The key to purposive construction is therefore the identification by the court, with the assistance of the skilled reader, of the particular words or phrases in the claims that describe what the inventor considered to be the "essential" elements of his invention.

This is no different, I think, than the approach adopted roughly 40 years earlier by Duff C.J. in J.K. Smit & Sons, Inc. v. McClintock.

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Whirlpool Adopts Whirlpool Adopts CatnicCatnic

The Catnic analysis therefore was not a departure from the earlier jurisprudence in the United Kingdom or in this country. It is no disrespect to Lord Diplock to suggest that at least to some extent he poured some fine old whiskies into a new bottle, skilfullyrefined the blend, brought a fresh clarity to the result, added a distinctive label, and voilà "purposive construction".

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Whirlpool’s View of Whirlpool’s View of CatnicCatnic

In Catnic, as in the earlier case law, the scope of the monopoly remains a function of the written claims but, as before, flexibility and fairness is achieved by differentiating the essential features … from the unessential, based on a knowledgeable reading of the whole specification through the eyes of the skilled addressee …

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Free World v. Free World v. ÉÉlectrolectro SantSantéé

The involvement in claims construction of the skilled addressee holds out to the patentee the comfort that the claims will be read in light of the knowledge provided to the court by expert evidence on the technical meaning of the terms and concepts used in the claims.

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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.

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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

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Refers to all of previous casesApproves CatnicApproves Eli Lilly v. O’HaraApproves ImproverConfuses issues and gives us a new test.

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Refers to all of previous casesApproves CatnicApproves Eli Lilly v. O’HaraApproves ImproverConfuses issues and gives us a new test.

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Intended Coverage of VariantsIntended Coverage of Variants (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. Improver, per Hoffman, L.J.

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Questions of Fact / LawQuestions of Fact / Law

(i) Does the variant have a material effect upon the way the invention works? A question of fact

(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? A question of fact

(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? A question of law. Hoffman L.J., Improver Corp v. Remington

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Why ask the third question?Why ask the third question?

Even a purposive construction … may lead to the conclusion that although the variant made no material difference, and this would have been obvious at the time, the patentee was for some reason confining his claim to the primary meaning and excluding the variant. If this were not the case, there would be no reason in asking the third question at all.

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Improver “Improved”Improver “Improved”

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. Binnie J. in FreeWorld Trust

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Improver ImprovedImprover Improved

Binnie J. has redrafted the Improver test to pose question 2 (a question of fact) and question 3 (a question of law) as alternatives

This seems to eliminate the need for any “purposive construction” and may result in an interpretation that ignores the intent of the inventor as expressed in the patent.

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Free World FollowedFree World Followed (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: ..

(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; SmithKlineBeecham v. Apotex, [2001] 4 F.C. 518, per Gibson J.

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The Court of Appeal Follows AlongThe Court of Appeal Follows Along

“An element may be found to be essential on the basis of the intent of the inventor as expressed or inferred from the claims, or on the basis of evidence as to whether it would have been obvious to a skilled worker at the time the patent was published that a variant of a particular element would make a difference to the way in which the invention works” Halford v Seed Hawk, 2005 FCA 12

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The Role of Expert WitnessesThe Role of Expert Witnesses

As, however, in ordinary cases, … the interpretation of terms of art [is] the proper subject-matter of evidence, so in specification of patents the state of knowledge in the craft, art or science to which the specification is directed and the explanation of technical terms, words and phrases are the proper subject-matter of testimony to aid interpretation, but, beyond this, evidence affecting construction should not be allowed to stray British Thomson-Houston Co., Ltd. v. Charlesworth, Peebles & Co. (1925),

42 R.P.C. 180, per Lord Buckmaster

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The area of the territory in which in cases of this kind an expert witness may legitimately move is not doubtful. He is entitled to give evidence as to the state of the art at any given time. He is entitled to explain the meaning of any technical terms used in the art. He is entitled to say whether in his opinion that which is described in the specification on a given hypothesis as to its meaning is capable of being carried into effect by a skilled worker. British Celanese, Ltd. v. Courtaulds, Ltd. (1935), 52 R.P.C. 171, per

Lord Tomlin

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The Role of the Expert WitnessThe Role of the Expert Witness

He is entitled to say what at a given time to him as skilled in the art a given piece of apparatus or a given sentence on any given hypothesis as to its meaning would have taught or suggested to him. He is entitled to say whether in his opinion a particular operation in connexion with the art could be carried out and generally to give any explanation required as to facts of a scientific kind. British Celanese, Ltd. v. Courtaulds, Ltd. (1935), 52 R.P.C. 171,

per Lord Tomlin

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He is not entitled to say nor is Counsel entitled to ask him what the Specification means, nor does the question become any more admissible if it takes the form of asking him what it means to him as an engineer or as a chemist. Nor is he entitled to say whether any given step or alteration is obvious, that being a question for the Court. British Celanese, Ltd. v. Courtaulds, Ltd. (1935), 52

R.P.C. 171, per Lord Tomlin

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Expert opinions on “ultimate issues”Expert opinions on “ultimate issues”

As, however, in ordinary cases, … the interpretation of terms of art [is] the proper subject-matter of evidence, so in specification of patents the state of knowledge in the craft, art or science to which the specification is directed and the explanation of technical terms, words and phrases are the proper subject-matter of testimony to aid interpretation, but, beyond this, evidence affecting construction should not be allowed to stray.

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Expert opinions on “ultimate issues”Expert opinions on “ultimate issues”

Xerox Canada v. IBM Canada(1977), 33 C.P.R. (2d) 24 (F.C.T.D.)

Collier J. performed an extremely detailed analysis of the law relating to role of an expert witness in an intellectual property trial

Collier J. reviewed criminal cases that allowed expert witnesses to give testimony on ultimate issues such as guilt or innocence and concluded that expert opinions on “ultimate issues” in patent litigation such as obviousness or anticipation should also be permitted

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Courts used to allow expert opinions on Courts used to allow expert opinions on “ultimate issues”“ultimate issues”

In my view there should be no difference between civil and criminal matters, as to the limits of expert opinion. If expert testimony on ultimate issues is admissible where guilt or innocence, imprisonment or liberty, are at stake, then opinions on ultimate issues in civil suits, including patent litigation, should equally be admissible. But the trier of fact alone (whether Judge or jury) must still determine all ultimate issues. Xerox Canada v. IBM Canada, (1977), 33 C.P.R. (2d) 24

(F.C.T.D.)Collier J.

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Concern raised about extensive reliance on expert opinions about “ultimate issues”

Trial judge found that the patent in suit was invalid due to obviousness

One of the reasons why the Federal Court of Appeal rejected this finding was that the trial judge relied heavily on expert opinion instead of conducting an objective analysis of the facts Beloit Canada Ltd. v. Valmet Oy, (1986), 8 C.P.R. (3d) 289

(F.C.A.)

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Concern raised about extensive reliance on expert opinions about “ultimate issues”

Hugessen J.A. noted the following: While the evidence of experts is, in my view, properly admissible

even on an "ultimate issue" question such as obviousness, it seems to me that it must be treated with extreme care.

The trial judge appears to have given no weight to the uncontested objective facts and preferred instead the subjective ex post facto opinion of a hired expert.

Beloit Canada Ltd. v. Valmet Oy, (1986), 8 C.P.R. (3d) 289 (F.C.A.)

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Federal Court of Appeal emphasizes the judge’s Federal Court of Appeal emphasizes the judge’s exclusive role in claims constructionexclusive role in claims construction

In holding that an inventor’s testimony was inadmissible for construing the claims of that inventor’s patent, Robertson J.A. stated the following: It is important to recognize that it is one matter for an expert to

provide assistance in interpreting technical terms and quite another for him or her to proffer an opinion on the very issue to be decided by the trial judge.

The general rule is that extrinsic evidence is inadmissible for the purpose of construing a patent specification and this must necessarily extend to the testimony of the inventor pertaining to the proper construction of the specification

Nekoosa Packaging Corp. v. United Dominion Industries, (1994), 56 C.P.R. (3d) 470 (F.C.A.)

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Purposive construction limits influence of Purposive construction limits influence of expert opinions expert opinions

Along with Free World Trust v. Electro-Santéestablishes purposive construction of patent claims

In Whirlpool Binnie J. explained the limited role experts play in claim construction and that judges have the ultimate responsibility in construing patent claims Whirlpool Corp. v. Camco Inc. [2000] 2 S.C.R. 1067

See also Free World Trust v. Electro-Santé, [2000] 2 S.C.R. 1024

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Purposive construction limits influence of Purposive construction limits influence of expert opinionsexpert opinions

The role of the expert is not to interpret the patent claims but to put the trial judge in the position of being able to do so in a knowledgeable way.

Claims construction is a matter of law for the judge, and he [is] quite entitled to adopt a construction of the claims that differ[s] from that put forward by the parties. Whirlpool Corp. v. Camco Inc. [2000] 2 S.C.R. 1067

Binnie J. at paras. 57, 61.

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“Ultimate issue” is different in patent cases than in other types of litigation

An application by the defendant in a patent infringement action to strike certain paragraphs from the affidavit of the plaintiff’s expert witness

Pelletier J. ruled that those portions of the affidavit from the plaintiff’s expert witness that contained conclusions about the infringement of the patent were inadmissible because they construed the claims of the patent Halford v. Seed Hawk, [2001] F.C.J. No. 1631 (F.C.T.D.)

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Pelletier J. found that precedents that dealt with the admissibility of expert opinion evidence on the “ultimate issue” in other types of litigation had little relevance in dealing with the admissibility of expert evidence in construing patent claims because claim construction is purely a question of law that is reserved solely for the judge Halford v. Seed Hawk, [2001] F.C.J. No. 1631 (F.C.T.D.)

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The "ultimate issue" in a particular case may be an issue of fact, an issue of law or an issue of mixed fact and law. In the case of a patent action, the ultimate issue is infringement or validity. An essential step in forming a conclusion as to invalidity or infringement is construing the patent. That task is reserved to the judge and is a pure question of law. The judge is entitled to the assistance of experts in understanding the terms used in the patent as well as the underlying science. But that is where it ends. The judge must construe the patent and until he does, there is no basis upon which an expert can offer an opinion as to infringement since the expert cannot substitute his view of the proper construction of the patent for the judge's. Halford v. Seed Hawk [2001] F.C.J. No. 1631 (F.C.T.D.)

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Limited role of expert opinion crystallized

Hughes J. succinctly captured the framework for purposive construction established in Whirlpool and Free World by listing seven questions that should be addressed when construing a claim Pfizer Canada Inc. v. Canada (Minister of Health)

[2005] F.C.J. No. 2155

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Limited role of expert opinion crystallized Those seven questions are:

1. Who construes the claims?2. When are the claims construed?3. As of what date is the claim to be construed?4. What are the criteria for construction?5. What resources may be used for purposes of construction?6. Through whose eyes is construction to be made?7. What is to be made of the resulting construction?

Hughes J. at para. 32.

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Hughes J. addresses the role of expert witnesses in claim construction in his answers to questions 1 and 51. Who construes the claim? The Court construes the claim (Whirlpool at paragraphs 43 and

45) It is not the function of an expert witness to construe the claim. As

the Supreme Court said at paragraph 57 of Whirlpool: • "The role of the expert was not to interpret the patent claims

but to put the trial judge in the position of being able to do so in a knowledgeable way."

Hughes J. at paras. 33, 34.

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Hughes J. addresses the role of expert witnesses in claim construction in his answers to questions 1 and 5

5. What resources may be used for construction? The Court may be assisted by expert witnesses in order

to understand the context of the invention described and the particular meaning of terms used in the patent. The expert, however, is not to displace the Court in the role of the person who is to interpret the claims.

Hughes J. at para. 41.

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RhoxalPharmaRhoxalPharma v. Novartisv. Novartis

“Assuming without deciding that Novartis' experts were correct in extending the scope of "pharmaceutical preparation" to forms resulting from non-professional actions such as those of consumers, it was not open to the motions Judge to adopt blindly their conclusions ... He could not abdicate his judicial function. It was for him to decide in the end the ultimate question, namely, the proper scope to be given to claim 2(a) of the 656 patent.” Rhoxalpharma Inc. v. Novartis Pharmaceuticals Canada Inc.,

2005 FCA 11

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The Role of the Trial JudgeThe Role of the Trial Judge

At that stage, he was left with unsubstantiated conclusions from the experts. It was his duty to refer back to the words of the claim itself. He could only then have concluded that those words made no reference to a pharmaceutical preparation occurring in situ and that "what is not claimed is considered disclaimed" Rhoxalpharma Inc. v. Novartis Pharmaceuticals

Canada Inc., 2005 FCA 11

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HarmonizationHarmonization

An objective of FICPI and other governmental and non-governmental organizations Formalities Examination Procedure Substantive Law

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Problems FacedProblems Faced

Drafting applications – how will they be interpreted in other countries

Interpreting patent claims – claims can be interpreted differently because of different national rules

Effect of Prior Art – what is “disclosed” in prior art may depend on the rules of interpretation used

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