Digests

Kirin-Amgen Inc. v. Hoffmann-La Roche Ltd.

A-155-99

Stone J.A.

20/12/00

21 pp.

Appeal from trial judgment ((1999), 87 C.P.R. (3d) 1) holding respondent's patent valid, infringed--Patent for biologically manufactured recombinant erythropoietin (EPO), similar in structure and function to glycoprotein produced by kidneys that stimulates bone marrow to produce red blood cells--Patent Act, s. 27(3) requiring patent to describe invention, outline how invention to be put into operation--Failure to meet first requirement rendering patent invalid for ambiguity; failure to meet second rendering it invalid for insufficiency--Appeal dismissed--(1) In construing patent as of date issued, rather than date applied for, Trial Judge relied on AlliedSignal Inc. v. Du Pont Canada Inc. (1995), 61 C.P.R. (3d) 417 (F.C.A.)--That case relied on Burton Parsons Chemicals, Inc. v. Hewlett-Packard (Canada) Ltd., [1976] 1 S.C.R. 555--Lamer J. subsequently stating in Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents), [1989] 1 S.C.R. 1623 that description must be such as to enable person skilled in art or field of invention to produce it using only instructions contained in disclosure and once monopoly period over, to use invention as successfully as inventor could at time of application--Even standing alone, not clear authority for assertion patent to be construed at time of filing, but only that inventor would be able to do so at time of filing--Lamer J. referring to Burton Parsons, but not indicating any disagreement with Pigeon J.'s statement--Relied on Minerals Separation North American Corporation v. Noranda Mines Ltd., [1947] Ex. C.R. 306, wherein stated necessary to consider what phrase would have meant at date of patent to person skilled in art--Improbable S.C.C. in Pioneer Hi-Bred intended to depart from Burton Parsons without signalling clear intention of doing so--(2) Appellant maintaining Trial Judge erred in determining "human urinary EPO" sufficiently described, rejecting argument could not be sufficiently described because each person's EPO different, and because different EPOs have different molecular weights--Trial Judge finding human EPO to be used for comparative analysis with recombinant EPO to be drawn from pooled-source of human urinary EPO rather than from particular individual--Open to Trial Judge to find Claim 1 referring to pooled-source human urinary EPO--Construction of patent turning heavily on evidence accepted at trial of person skilled in art; patent should be construed with "mind willing to understand" as well as with judicial anxiety to support really useful invention--Appellant also arguing Claim 1 invalid because human urinary EPO, recombinant EPO showing same range of molecular weights--That EPO having range of molecular weights not fatal to respondents' case--By requiring two substances be compared side-by-side, SDS-PAGE test (process used to determine apparent molecular weights of proteins) intended to determine which of two possesses higher molecular weight--Irrelevant that different human urinary EPO's exhibit different molecular weights--(3) Trial Judge finding human EPO available to someone needing it for purposes of comparing it to recombinant EPO both at date of issue and date of application--Evidence not indicating erred--(4) Trial Judge relying upon results of experiment conducted by respondents in New Jersey in 1998 to conclude appellant's product possessing higher molecular weight than that described in patent, and that therefore infringed patent--Appellant not identifying any palpable, overriding error justifying F.C.A.'s intervention with such finding--Complaint basically that Trial Judge preferred evidence of respondents' experts over that of own experts--Absent some clearly ignored or misapprehended evidence, not sound basis for appellate review--(5) Appellant seeking declaration recombinant EPO, possessing same or lower molecular weight than that described in Claim 1, not infringing patent--Court not in position to declare any product appellant may now or hereafter possess, other than one in issue, would not infringe Claim 1 merely on basis of broad assertion product having same or lower molecular weight than human urinary EPO cannot infringe claim--(6) Trial Judge concerned one of appellant's expert witnesses "less than ethical" when took photos of another doctor's slides at annual meeting of haematologists, and published article referring to slides without attribution to owner--Criticism stronger than evidence required--Unchallenged evidence that in taking photos at open meeting acting in accordance with accepted practice, and failure to credit owner of slides done at insistence of journal editor who thought it unnecessary because owner's views presented in public forum--Patent Act, R.S.C., 1985, c. P-4, s. 27(3) (as am. by S.C. 1993, c. 15, s. 31).