|
Patents - Dependent versus Independent Claims. NCS Multistage Inc. v. Kobold Corporation
In NCS Multistage Inc. v. Kobold Corporation (Fed CA, 2025) the Federal Court of Appeal allowed a patent appeal, here brought against a successful patent infringement counterclaim.
Here the court considers the difference between 'dependent' and 'independent' patent claims:[33] An independent claim in a patent is broader and includes the subject matter of the claims that depend on it: Halford v. Seed Hawk Inc., 2004 FC 88 at para. 90, aff’d 2006 FCA 275; see also Patent Rules, SOR/2019-251, s. 63. Accordingly, the independent claim encompasses embodiments with and without any limitations introduced by a dependent claim.
[34] Subsection 63(4) of the Patent Rules provides that "“[a] dependent claim is considered to include all the limitations contained in the claim to which it refers…”". ...
....
[36] The principle of claim differentiation creates a rebuttable presumption that limitations of a dependent claim should not be read into the independent claim and functions as a guard against redundancy in the claims of a patent. In Camso FC (at para. 103), Justice Locke stated:It follows from this that a dependent claim, which incorporates all of the elements of the independent claim on which it depends, will generally be construed more narrowly than the independent claim: Halford v Seed Hawk Inc, 2004 FC 88 at para 90 [Halford], aff’d 2006 FCA 275. The limitations of the dependent claim are generally not read into the independent claim: Halford at para 93. Moreover, the independent claim should not be construed in a manner that is inconsistent with the dependent claim: Halford at paras 91, 95. [37] The Federal Court summarized the principle, stating, "“it is impermissible to import limitations from dependent claims into the prior claims on which they depend”", citing CanMar Foods Ltd. v. TA Foods Ltd., 2021 FCA 7 at paras. 44-45. I agree. However, Justice Locke’s guidance in Camso against reading limitations of a dependent claim into the independent claim means that the limitations of the dependent claim are not read as limitations of the independent claim: there is "“a rebuttable presumption that the limitation added in [the dependent] claim is not an implicit element”" of the independent claim: Camso FC at para. 181. The Federal Court misinterpreted the guidance to find that the limitation of claim 13 (the seal embodiment) must be excluded from claim 12. In so doing, the Federal Court erred in law.
|
