Patent Potpourri

On October 17, 2019, I had the opportunity to speak to the Toronto Intellectual Property Group (TIPG). I highlighted several of my recent or in-progress articles on the topics of: (i) overbreadth; (ii) indirect infringement; (iii) liability for induced infringement; (iv) availability to the public in the context of anticipation; and (v) claims construction in light of the UK Supreme Court Actavis v Lilly [2017] UKSC 48 decision. I briefly summarize the research presented below.

Overbreadth. Overbreadth as an independent ground of invalidity raises a puzzle: if the claimed invention is new, useful and non-obvious across its scope, and the specification sufficiently discloses how to make and use it, how can it be said that the patentee claimed more than was disclosed? In almost all cases in which overbreadth is raised, it is redundant, in that the very same factual findings leading to a holding of overbreadth are also the basis for a holding of invalidity on some other statutory basis. The exception is the decision of the Federal Court of Appeal in Amfac (1986). The analysis in Amfac was based on an arbitrary and subjective interpretation of the specification, in a manner similar to the promise doctrine, with the result that the decision unjustifiably struck down a patent for a new, useful and non-obvious invention that was fully disclosed. The Amfac analysis has recently been applied in a trial level decision, and this could indicate an unwelcome resurgence of an unsound doctrine. For more, see Overbreadth in Canadian Patent Law (draft available here on SSRN).

Indirect infringement. Canadian courts have consistently held that there is no liability for contributory infringement. The history of this proposition resulted from a misreading of an early leading case, which actually rejected the rule against contributory infringement set out in early UK law. The rule has only been applied in one case, Slater Steel (1968), which has subsequently been twice confined to its facts by the Federal Court of Appeal. For more, see Contributory Infringement in Canadian Law (forthcoming, CIPR).

Liability for inducing infringement. The second part of the inducement test requires that the inducement be the “but for” cause of the direct infringement. This standard for causation leads to counter-intuitive results when there is evidence that most end-users (i.e., the infringers) do not heed the directions of the inducer. The law could be rationalized by using a causation standard of “material contribution”, while recognizing that “but for” causation remains necessary to establish any monetary remedy. For more, see Is 'But For' Causation Necessary to Establish Inducement? (draft available here on SSRN).

“Available to the public” (anticipation). An invention would not be made available to the public if it were left in a car parked in a public place, even if the car were unlocked, as it would be a trespass to chattels to enter the car and examine the invention. A more fulsome development of a trespass to chattels argument might be helpful in cases such as Wenzel Downhole Tools 2012 FCA 333, in which the disagreement between the majority and the dissent turned in large part on a disagreement as to what constitutes a trespass to chattels in the context of a bailment.