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Patents - Infringement

. Apotex Inc. v. Janssen Inc.

In Apotex Inc. v. Janssen Inc. (Fed CA, 2023) the Federal Court of Appeal considered issues of patent infringement and inducing infringement:
[13] Apotex focuses its argument on the high threshold for influence required by the second prong of the test for inducement: that the infringing act would not have occurred without the influence. This Court has equated this threshold to a sine qua non (without which not) test: MacLennan v. Produits Gilbert Inc., 2008 FCA 35, [2008] F.C.J. No. 128 at para. 38 (MacLennan). Apotex urges this Court to treat the threshold as a “but for” test, and it cites jurisprudence that calls this a causation test. I have no objection to Apotex’s characterization of the test, but I do not find it to be more helpful that the “would not have occurred without” and “sine qua non” characterizations provided in the jurisprudence of this Court. In my view, these are merely different ways of describing the same threshold.

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[23] I turn now to Apotex’s more substantive argument that the Federal Court erred in concluding that the high threshold for the second prong of the test for inducing infringement was met in this case. The main weakness of this argument is that it depends on there being a requirement that prescribing practices of physicians be altered because of Apotex’s activities. In fact, this is not necessary. What is required is that the ultimate act of direct infringement occur because of Apotex’s activities.

[24] It is important to bear in mind that the ultimate act of direct infringement in the present case could be either by a prescriber (e.g. a physician or a nurse practitioner) or by a patient: Hospira Healthcare Corporation v. Kennedy Trust for Rheumatology Research, 2020 FCA 30, [2020] F.C.J. No. 179 at para. 40, citing AB Hassle v. Genpharm Inc., 2003 FC 1443, 243 F.T.R 6 at para. 127, aff’d 2004 FCA 413, [2004] F.C.J. No. 2079. The Federal Court recognized this at paragraphs 74 and 104 of its reasons. It is also important to understand that inducing patent infringement can occur even where there is no direct contact between the inducer and the direct infringer: MacLennan at para. 43, citing Procter & Gamble Co. v. Bristol-Myers Canada Ltd., [1978] F.C.J. No. 812, 39 C.P.R. (2d) 145 at 167. Accordingly, Apotex could be found to induce infringement by a patient even if they have no direct communication.
. Apotex Inc. v. Shire LLC

In Apotex Inc. v. Shire LLC (Fed CA, 2021) the Federal Court of Appeal considered principles governing claims of patent infringement:
[25] I begin with a review of a few basic principles governing patent infringement.

[26] In a patent dispute, the emphasis is on the claims as worded. While the assessment of a patent’s subject matter or utility may require a more holistic appreciation of the patent and its claims, the tests for obviousness and anticipation require a claim-by-claim analysis (AstraZeneca Canada Inc. at para. 54; Hospira at para. 71).

[27] Only if every claim in a patent is invalid will the entire patent be invalid. If an independent claim is declared invalid, section 58 of the Patent Act allows for the examination of dependent claims in order to determine if their additional elements rectify the deficiencies in the independent claim. If so, the dependent claim remains valid despite the independent claim’s invalidity (AstraZeneca Canada Inc. at para. 46; Zero Spill Systems (Int’l) Inc. v. Heide, 2015 FCA 115 at para. 94 (Zero Spill Systems); Safe Gaming System v. Atlantic Lottery Corporation, 2018 FC 542 at para. 159; Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2020 FC 1 at para. 71).
. Apotex Inc. v. Janssen Inc.

In Apotex Inc. v. Janssen Inc. (Fed CA, 2021) the Federal Court of Appeal cites the legal test for inducing infringment of a patent:
[53] As indicated above, the parties agree that the applicable legal test for inducing infringement is found in Corlac Inc. v. Weatherford Canada Inc., 2011 FCA 228, 204 A.C.W.S. (3d) 888 at para. 162:
[…] A determination of inducement requires the application of a three-prong test. First, the act of infringement must have been completed by the direct infringer. Second, the completion of the acts of infringement must be influenced by the acts of the alleged inducer to the point that, without the influence, direct infringement would not take place. Third, the influence must knowingly be exercised by the inducer, that is, the inducer knows that this influence will result in the completion of the act of infringement …
. McCain Foods Limited v. J.R. Simplot Company

In McCain Foods Limited v. J.R. Simplot Company (Fed CA, 2021) the Federal Court of Appeal considers the elements and nature of a patent infringement claim:
[68] The three requirements for inducing patent infringement are well known. Per Hospira 2020 at para. 38, quoting from Corlac Inc. v. Weatherford Canada Inc., 2011 FCA 228, 95 C.P.R. (4th) 101 at para. 162:
First, the act of infringement must have been completed by the direct infringer. Second, the completion of the acts of infringement must be influenced by the acts of the alleged inducer to the point that, without the influence, direct infringement would not take place. Third, the influence must knowingly be exercised by the inducer, that is, the inducer knows that this influence will result in the completion of the act of infringement […].
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[76] It is true that the Patent Act does not define infringement, but it does define the exclusive rights that a patent provides (see section 42), and jurisprudence has developed a definition of infringement based on interference with those exclusive rights (Monsanto Canada Inc. v. Schmeiser, 2004 SCC 34, [2004] 1 S.C.R. 902 at para. 34). More importantly, the Patent Act defines in section 55 those to whom an infringer may be liable. In my view, no other provision of the Patent Act can support a claim of standing to sue for patent infringement (Signalisation de Montréal Inc. v. Services de Béton Universels Ltée, 1992 CanLII 2427 (FCA), [1993] 1 F.C. 341, 46 C.P.R. (3d) 199 (F.C.A.) at para. 3 (Signalisation)), or inducing patent infringement.



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Last modified: 25-01-24
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