Patent Infringement

1. Patent Infringement Donald M. Cameron 2014 Donald M. Cameron

2. What is infringement? “any act that interferes with the full enjoyment of the monopoly granted to the patentee” s. 42: “… the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used …”

3. Have the essential elements of the claim been taken/used? • What do the words and phrases in the claim mean? • Are the essential ones there? • Purposive construction: • Sometimes read down the claim • Whirlpool: “vanes” mean “rigid vanes” and did not include “flexible vanes”

4. What’s an essential element? • It’s essential if changing it changes the way the invention works. • It’s essential if the inventor meant it to be essential.

5. Recap – claim constructionthe set up • Who: • Person (or team) of ordinary skill in the art to whom the patent is directed • What • The claim terms “where the shoe pinches” • When • At the date of publication (for patent applications filed after October 1989)

6. Recap • Read the patent as a whole, and construe the claims in the context of the patent. • If the disclosure expressly defines certain terms to have certain meanings, use those definitions when interpreting the claims. • The relevant date for construing the patent claims is either: • The date of issuance of the patent, for patents applied for before October 1, 1989; or • the date of publication of the patent application, for patents applied for on or after October 1, 1989 • Read the patent as if you were the person to whom it was addressed. Except for terms expressly defined in the patent, give the terms in the claim the ordinary meaning they would have had to such person as of the relevant date

7. Apply the “principles” from Free World “Adhere to the language”(Invention limited to what has been claimed) (a) The Patent Act promotes adherence to the language of the claims. (b) Adherence to the language of the claims in turn promotes both fairness and predictability. (d) The language of the claims thus construed defines the monopoly. There is no recourse to such vague notions as the “spirit of the invention” to expand it further. Essential & Non-Essential • 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;

8. To apply Free World • Think “Cameron”: • To determine whether a claim element is essential or not, ask: • Was it 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? If modifying or omitting the element changes the way the invention works, and that was obvious at the relevant date, then the element is essential; or • According to the intent of the inventor, expressed or inferred from the claims, was a particular element essential irrespective of its practical effect? If the element appears to have been intended to be essential, then the element is essential. • If the claim element was not found to be essential under either Q1 or Q2, then the element is non-essential.

9. But use Improver • Does the variant have a material effect upon the way the invention works? If yes, then the variant is outside the claim. If no? • 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 of the patent skilled in the art? If no, the variant is outside the claim. If yes? • 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, then the variant is outside the claim. (In other words, is the patentee using the term in a special way, different from the “normal” meaning?)

10. Windsurfing v. Trilantic

11. Windsurfing v. Trilantic 1. Wind-propelled apparatus comprising body means adapted to support a user and wind-propulsion means pivotally associated with said body means and adapted to receive wind for motive power for said apparatus, said propulsion means comprising a mast, a joint for mounting said mast on said body means, a sail and means for extending said sail laterally from said mast, the position of said propulsion means being controllable by said user, said propulsion means being substantially free from pivotal restraint in the absence of said user, said joint having a plurality of axes of rotation whereby said sail free falls along any of a plurality of vertical planes upon release by said user. 4. The apparatus of Claim 1 wherein said sail extending means comprises a boom laterally disposed of said mast to hold said sail taut and adapted to provide a hand-hold for said user. 10. The apparatus of Claim 4, wherein said boom comprises a pair of boom members arcuately connected athwart said mast and securing said sail therebetween.

12. O’Hara plenum (vacuum) was “flexibly biased against the drum”

13. O’Hara “… would the specification make it obvious to a reader skilled in the art that the description of the patented machine as comprising "an exhaust inlet flexibly biased against the exterior" of the drum could not have been intended to exclude machines in which exhaust was not "flexibly biased against" the drum but was mounted in a fixed position as close as possible to the drum?” In other words, did the inventor really mean it to require "an exhaust inlet flexibly biased against the exterior" of the drum?

14. O’Hara cont’d [Yes] “It should be realized that the answer to that question depends on the interpretation that is put on the claims. That answer, therefore, must be consistent with the text of the claims. A court must interpret the claims; it cannot redraft them. When an inventor has clearly stated in the claims that he considered a requirement as essential to his invention, a court cannot decide otherwise for the sole reason that he was mistaken. I also wish to add that, as 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..”

15. Dableh v. Ontario Hydro

16. Dableh v. Ontario Hydro

17. Dableh v. Ontario Hydro 1. In a fluid-cooled nuclear reactor having a calandria comprising an array of longitudinally extending calandria tubes each housing a coolant tube extending coaxially therethrough, each coolant tube being spaced from its associated calandria tube by annular spacers seated therebetween, a method of repositioning a selected one of said spacers in situ by displacing it longitudinally from an initial position to a required position, which method comprises advancing an electromagnetic coil interiorly along the coolant tube to a position adjacent the spacer and passing a varying electric current through the coil, the position of the coil relative to the spacer and the magnitude and rate of change of current being such as to exert an electromagnetic repulsive force on the spacer in the direction of the required displacement and sufficient to overcome static friction at the seating of the spacer between the tubes.

18. Dableh v. Ontario Hydro (FCA) The proper construction of claim 1 hinges on the meaning of two terms: "varying electric current" and "electromagnetic coil". The Trial Judge held that the former term is not broad enough to embrace an AC current and, therefore, must be limited to a DC current. With respect to the latter term, the Trial Judge found it to be limited to a sturdy, heavy coil akin to a Bitter coil of the kind that Dr. Dableh had used. (See Reasons at 308.) In reaching both conclusions, the Trial Judge made recourse to the Patent's disclosure and in particular the preferred embodiment described and depicted by diagram therein; that is to say the device that Dr. Dableh had actually built. At this point claim 1 bears repeating: … It is a matter of settled law that recourse to the disclosure portion of the specification is: (1) permissible to assist in understanding the terms used in the claims; (2) unnecessary where the words are plain and unambiguous; and (3) improper to vary the scope or ambit of the claims. (See Beecham Canada Ltd. v. Procter & Gamble Co. (1982), 61 C.P.R. (2d) 1 at 11 (F.C.A.), per Urie J.A., leave to appeal to the Supreme Court of Canada refused, 63 C.P.R. (2d) 260 n; and more recently see Unilever PLC v. Procter & Gamble Inc. (1995), 61 C.P.R. (3d) 499 (F.C.A.), per Stone J.A.; as to cases in which a term in a claim was found to be ambiguous and resort to the disclosure was necessary, see TRW Inc. v. Walbar of Canada Inc. (1991), 39 C.P.R. (3d) 176 (F.C.A.) and Nekoosa Packaging Corp. v. AMCA International Ltd. (1994), 56 C.P.R. (3d) 470 (F.C.A.).) It is equally clear that where the words used in the claims are clear and unambiguous, they must not be narrowed or limited to a patent's preferred embodiment. (See Electric & Musical Industries, Ltd. v. Lissen, Ltd. (1939), 56 R.P.C. 23 (H.L.) at 41-2, per Lord Russell; Lovell Manufacturing Co. v. Beatty Bros. Ltd. (1962), 23 Fox Pat. C. 112 at 134, 41 C.P.R. 18 (Ex. Ct.); and Molins and Molins Machine Co. Ltd. v. Industrial Machinery Co. Ltd. (1938), 55 R.P.C. 31 at 39 (C.A.), per Greene, M.R.) Against this legal framework, the issue is whether the terms "varying electric current" and "electromagnetic coil" were found to be ambiguous and, therefore, the Trial Judge was justified in resorting to the disclosure to resolve any ambiguity. In our view, the evidence clearly establishes that no ambiguity existed and that claim 1 is worded broadly enough to cover an AC source of electricity and coils other than Bitter or near Bitter coils.

19. Two examples – one old, one new • Baxter blood Bag • Palmaz Stent

20. Baxter blood bag 1. In parenteral fluid administration equipment a donor tube having needle means at one end and communicating with a flexible, collapsible, hemo-repellant blood container at the other end, a length of resilient tubing connecting said container to a second flexible, collapsible container to form a unitary system, a removable, transverse membrane positively closing said connecting tubing to the flow of fluid between said containers and a free moving membrane-removing, hollow cannula located wholly within said tubing, the cannula being completely unattached to said tubing and any part of said system, said cannula being proportioned to readily fit in and move within said tubing so that the cannula can be externally manipulated to remove said membrane without opening said tubing, said cannula being further manipulatable substantially out of said tubing into one of said containers.

21. The Cutter Spike – kinda like this

22. US ApproachDoctrine of Equivalents • Same: • Function • Way • Result

23. Cutter v. Baxter (FCA) It seems to me to be plain that the Cutter spike is, as found by the learned trial judge, the functional equivalent of the cannula referred to in claims 1, 2 and 4. Both are operated by the technician in the same way. Both rupture the membrane and establish a channel or channels through which blood or its components or anticoagulants can flow. Both do it in the same way. The evidence shows that the cannula ruptures the membrane by causing a transverse slit which permits the blood to flow around the outside wall of the cannula as well as through its lumen. Moreover, both devices are in the tube and are unattached. Further, in my view, the precise structure or configuration of the device to be used to rupture the membrane and establish a flow channel is not an essential element of the invention. As I see it, it would not matter whether a cannula or a vaned spike or a device of some other sort, such as, for example, a device of the like proportions with a semicircular cross section, were used or whether it would cut out in whole or in part or merely rupture the membrane. The substance of the invention, its "pith and marrow", would be taken so long as the rupturing device had the essential elements of being in the tube and being unattached. I think therefore that the substance of the invention has been taken and that all the claims of the patent were infringed by the Cutter device.

24. Palmaz Stent patent • 1. An expandable intraluminal vascular graft, comprising: • a thin walled tubular member having first and second ends and a wall surface disposed between the first and second ends, the wall surface having a substantially uniform thickness and a plurality of slots formed therein, the slots being disposed substantially parallel to the longitudinal axis of the tubular member; • the tubular member having a first diameter which permits intraluminal delivery of the tubular member into a body passageway having a lumen; and • the tubular member having a second, expanded and deformed diameter, upon the application from the interior of the tubular member of a radially, outwardly extending force, which second diameter is variable and dependent upon the amount of force applied to the tubular member, whereby the tubular member may be expanded and deformed to expand the lumen of the body passageway.

25. Palmaz patent

26. J&J v. Boston Scientific Palmaz Boston Scientific

27. J&J v. Boston Scientific [215] There is no debate that both terms, “slots” and “half-slots”, appear in the disclosure portion of the patent. The claims, however, refer only to“slots”. The meaning to be accorded the term “slots” is crucial. It is my view that the word “slots” in claim 1 means a complete slot. It does not include a half-slot. I arrive at this conclusion for a variety of reasons. [431] The regions of the NIR stent that Johnson & Johnson attempts to label “slots”are open-ended. They cannot be “slots” (as I have construed this term). Although these regions in the NIR stent are longer than they are wide and are disposed generally along the longitudinal axis, they are not fully bounded on all sides. Therefore, they are not “slots”. I note (peripherally) that these regions are not staggered circumferentially, although this feature is not essential to the claims of the '505 Patent. [433] The crux of my determination is that there are no complete slots along the longitudinal axis of the NIR stent. Dr. Buller acknowledged that this is so. The absence of “slots”, as the term is used in the '505 Patent (where it means complete slots), is inconsistent with the teaching of the '505 Patent. No embodiment of the '505 Patent would be made this way. Consequently, the NIR stent is missing an essential element from claim 1 of the '505 Patent. [434] Also, first and second ends constitute an essential element of the '505 Patent. These ends are defined in great detail in the patent’s disclosure such that they contain openings that are approximately half the size of complete slots. These half-slots alternate with the complete slots around the circumference of each “end” of the tubular member. This is evident from both the description of the first and second ends found on page 14 of the '505 Patent and from Figure 1A of the patent. In other words, the Palmaz Patent specifies that there will be “half slots” alternating with “slots” at each end of the tubular member. The NIR stent does not contain any “slots”. Therefore, the first and second ends of the NIR stent are not the same as those of the '505 Patent. [435] With respect to Johnson & Johnson’s first “infringement analysis” (that the entire NIR stent is a tubular member), Boston Scientific does not disagree. However, the fact that the NIR stent is a tubular member does not eradicate the absence of “slots” in its wall surface. The absence of “slots” necessitates a conclusion of non-infringement.

28. Territorial limits to patents • Infringement in Canada: • Made used or sold… in Canada Domco • Infringement in USA • Method claims must be practised in USA • System infringes if control and benefit is in USA • NTP v. RIM

30. Joint Infringement - USA • 2010: Akamai • Patented method • No joint infringement of a patented method where customer and provider each performed some but not all steps • 2011 McKesson • No joint infringement where some steps by patient, some steps by doctor • 2012 – Akamai & McKesson • Analyze under inducing infringement • Inducing happens as long as all steps occur (needn’t be by same person – needn’t have direct infringement!)

31. Who sues who? • Plaintiff(s) • Patentee (must be a party) and legal representative • And all persons claiming under the patentee • Includes licensees • May include customers • Defendants • Makers, users, sellers • Directors or officers

32. Making and constructing Making just parts is OK Making part when you’re licensed to make all isn’t OK Making something for patented use outside Canada isn’t OK Repairing is OK; rebuilding is not

33. Presumptions S. 55.1: New process to make a new product, presumption is that the product was made by the patented process

34. Using “utilize with a view to production or advantage” (commercial benefit belongs to the patentee) Possession creates presumption of intended use Schmeiser used the gene or cell; he could have sprayed (“stand-by” use, like a fire extinguisher) Use of a product of a patented process (whether or not product is patented)

35. Selling Must be in Canada Anywhere along the chain is infringing

36. Importation • For what purpose? • Resale – actionable • Research – not actionable • Transhipment – who knows? • Importation of a product made offshore by a patented process is infringement • Onus of proof on defendant to show foreign supplier does not use the patented process • Maybe applies to product made abroad by infringing product.

37. Importation cont’d • Saccharin doctrine • Where the patented product is an intermediate used to make the imported product, and it’s of some importance and not merely incidental, importation is an infringement

38. Inducing and Procuring Infringement “She made me do it” Stop the instigator – too hard to go after all the infringers Vendor of kits Person who knowingly, for his own ends and benefits, induces or procures infringement

39. “Indirect infringement” – what’s needed “direct” infringement (threatened or happened) Defendant caused the direct infringer to do “it” Defendant knew such influence would result in the infringing actions

40. Defences/Exceptions to Infringement • Gillette defence: Hobson’s choice • If claims broad – include prior art & invalid • If claims narrow – no infringement • Experimental use • To improve • To test • s. 55.2: for regulatory approval • Prior acquired goods (s. 56) • Prior to the claim date