Indexed As: Dow Chemical Co. et al. v. Nova Chemicals Corp. Federal Court O'Keefe, J. September 5, 2014.

Transcription

1 The Dow Chemical Company, Dow Global Technologies Inc. and Dow Chemical Canada ULC (plaintiffs) v. Nova Chemicals Corporation (defendant) (T ; 2014 FC 844) Indexed As: Dow Chemical Co. et al. v. Nova Chemicals Corp. Federal Court O'Keefe, J. September 5, Summary: The plaintiff, The Dow Chemical Company, owned the patent for polyethylene compositions and the films made from such compositions (Canadian Patent No. 2,160,705 (the '705 Patent)). The plaintiff, Dow Chemical Canada ULC manufactured polyethylene copolymers in Canada under license of the '705 Patent and sold polyethylene film-grade copolymers under the name ELITE in Canada. The defendant, NOVA Chemicals Corp. (NOVA) manufactured and sold polyethylene film-grade copolymers under the name SURPASS in Canada. The plaintiffs sued NOVA (defendant) for patent infringement, seeking to stop the defendant from engaging in the unauthorized and infringing manufacture, distribution, offering for sale, sale and use in Canada of polyethylene compositions, which encompassed the patented technology. NOVA challenged the validity of a number of claims in the '705 patent. The Federal Court held that the impugned claims in the '705 patent were valid and that NOVA had infringed the patent by manufacturing in Canada and distributing, offering for sale, selling or otherwise making available film-grade polymers under the name SURPASS. The plaintiffs were entitled to, inter alia, elect between an accounting or profits or damages to be assessed. In a schedule attached to the court's reasons, the court dealt with evidentiary issues that arose in this case. Evidence - Topic 510 Presentation of evidence - Rebuttal evidence - General principles - The Federal Court referred to the general rule that a plaintiff was not allowed to split his case - That is, the plaintiff must produce and enter in its own case all the clearly relevant evidence it has, or that it intends to rely upon, to establish its case with respect to all the issues raised in the pleadings - The court noted that the rule had exceptions and the primary one among them was where the defence raised some new matter or defence which the Crown had no opportunity to deal with and which the Crown or the plaintiff could not reasonably have anticipated - "That applies with equal force to expert reports. Although they are tendered before trial and surprise is arguably less of a concern, an expert opinion is only admissible pursuant to rule 279(b) if it is the subject of a report. Therefore, a defendant may still be unfairly prejudiced by improper reply since it may lose any opportunity to respond" - See Schedule A, paragraphs 5 to 8. Evidence - Topic 510 Presentation of evidence - Rebuttal evidence - General principles - The Federal Court summarized the principles governing the admission of reply evidence: "1. If the reply

2 evidence only repeats or confirms evidence already tendered, then it is not allowed. 2. Even if a matter is raised for the first time in cross-examination, reply evidence on that issue should not be allowed if it ought to have been part of the plaintiff's evidence in chief. 3. Reply evidence may be allowed where it addresses a new issue raised by the defence that was reasonably unanticipated by the plaintiff. 4. The court retains a residual discretion to allow in evidence regardless" - See Schedule A, paragraph 9. Evidence - Topic 7080 Opinion evidence - Reports by experts - Rebuttal evidence - The plaintiffs sued the defendant for patent infringement - The defendant challenged the validity of the patent - The defendant objected to a second report filed by one of the plaintiffs' experts, claiming that the plaintiffs were improperly splitting their case - The Federal Court dismissed the defendant's objection - The second round of reports was defence evidence not subject to the limitations on reply evidence - Since both parties in this case were defendants on issues to which claims construction was relevant, both had equal rights to present their defences fully knowing their opponents' case - The court stated that the rule against case splitting should not be applied to detract from the very right that it was designed to enhance - See Schedule A, paragraphs 10 to 24. Evidence - Topic 7080 Opinion evidence - Reports by experts - Rebuttal evidence - The plaintiffs sued the defendant for patent infringement - The defendant challenged the validity of the patent - The defendant objected to a reply report filed by one of the plaintiffs' experts (i.e., the third report), claiming that the plaintiffs were improperly splitting their case - The defendant objected to most of the third report arguing that in addition to restating his case, the expert also introduced a new theory - The Federal Court held that the bulk of the defendant's submission with respect to the third report was unfounded - However, the court determined that two paragraphs of the report were improper reply because the plaintiffs should have anticipated the concerns and raised them in their own case and four paragraphs were improper reply for being unresponsive - Those six paragraphs were, therefore, inadmissible - See Schedule A, paragraphs 32 to 45. Evidence - Topic 7080 Opinion evidence - Reports by experts - Rebuttal evidence - [See first Evidence - Topic 510]. Patents of Invention - Topic 1026 The specification and claims - Construction of a patent - General - The Federal Court reviewed the principles of patent construction, noting that a purposive construction was to be used - See paragraphs 15 to 17. Patents of Invention - Topic 1026 The specification and claims - Construction of a patent - General - The Federal Court stated that the jurisprudence dealing with the construction of terms in the claims of a patent had consistently held that the meaning of a term in the claims of a patent had to be given the

3 same meaning in all of the claims of the patent and the same meaning within any claim of the patent - The court, therefore, rejected an argument that the word "comprising" in a patent should be given a different meaning in one of the claims than in the other claims in the patent - See paragraphs 43 to 46. Patents of Invention - Topic 1032 The specification and claims - Construction of a patent - Particular patents - The Federal Court interpreted the claims in Canadian Patent No. 2,160,705 respecting polyethylene compositions, and in particular, the words: "ethylene polymer composition", "comprising", "homogeneously branched", "heterogeneously branched", "linear", "substantially linear", "long-chain branching", "slope of strain hardening coefficient" and "linear polymer fraction" - See paragraphs 37 to 111. Patents of Invention - Topic 1034 The specification and claims - Construction of a patent - Evidence (incl. reply evidence) - [See first and second Evidence - Topic 7080]. Patents of Invention - Topic The specification and claims - The description - Sufficiency of description of invention - The plaintiff, The Dow Chemical Company, owned the patent for polyethylene compositions and the films made from such compositions (Canadian Patent No. 2,160,705 (the '705 Patent)) - The plaintiff, Dow Chemical Canada ULC manufactured polyethylene copolymers in Canada under license of the '705 Patent and sold polyethylene film-grade copolymers under the name Dow plaintiffs sued NOVA, alleging patent infringement - NOVA challenged the validity of the patent, claiming insufficiency in the specification in a number of areas - The Federal Court held that the patent was not invalid on this ground - See paragraphs 271 to 282. Patents of Invention - Topic The specification and claims - The description - Sufficiency of description of invention - Dow Chemical Company owned the patent for polyethylene compositions and the films made from such compositions (Canadian Patent No. 2,160,705 (the '705 Patent)) - An alleged patent infringer challenged the sufficiency of the patent because if failed to disclose the best mode - The Federal Court held that this argument failed because there was no requirement to disclose a best mode for the subject matter of the '705 Patent - The best mode requirement only applied to inventions relating to machines - See paragraphs 279 and 280. Patents of Invention - Topic 1130 The specification and claims - The description - Claims for more than what was invented - The Federal Court reviewed the law on when the validity of a patent claim could be challenged for overbreadth - See paragraphs 198 to 200. Patents of Invention - Topic 1130 The specification and claims - The description - Claims for more than what was invented -

4 The plaintiff, The Dow Chemical Company, owned the patent for polyethylene compositions and the films made from such compositions (Canadian Patent No. 2,160,705 (the '705 Patent)) - The plaintiff, Dow Chemical Canada ULC manufactured polyethylene copolymers in Canada under license of the '705 Patent and sold polyethylene film-grade copolymers under the name ELITE in Canada - The defendant, NOVA Chemicals Corporation (NOVA) manufactured and sold polyethylene film-grade copolymers under the name SURPASS in Canada - The Dow plaintiffs sued NOVA, alleging patent infringement - NOVA challenged the patent's validity on the ground that the claims were broader than any invention made as disclosed - The Federal Court held that the patent was not invalid for overbreadth - See paragraphs 201 to 210. Patents of Invention - Topic 1503 Grounds of invalidity - General - Presumption of validity - Section 43(2) of the Patent Act created a presumption of validity for a patent: "After the patent is issued, it shall, in the absence of any evidence to the contrary, be valid and avail the patentee and the legal representatives of the patentee for the term mentioned in section 44 or 45, whichever is applicable" - The Federal Court stated that the effect of that presumption was that the burden was on the alleged infringer to prove on a balance of probabilities, that the patent was invalid - See paragraphs 173 to 174. Patents of Invention - Topic 1582 Grounds of invalidity - Lack of "inventive ingenuity" (obviousness) - Test for obviousness - The Federal Court discussed the test of obviousness - See paragraphs 234 to 237. Patents of Invention - Topic 1589 Grounds of invalidity - Lack of "inventive ingenuity" (obviousness) - Particular patents - The plaintiff, The Dow Chemical Company, owned the patent for polyethylene compositions and the films made from such compositions (Canadian Patent No. 2,160,705 (the '705 Patent)) - The plaintiff, Dow Chemical Canada ULC manufactured polyethylene copolymers in Canada under license of the '705 Patent and sold polyethylene film-grade copolymers under the name Dow plaintiffs sued NOVA, alleging patent infringement - NOVA challenged the validity of the patent on the ground of obviousness - The Federal Court held that the '705 patent was not invalid on this ground - See paragraphs 238 to 264. Patents of Invention - Topic 1601 Grounds of invalidity - Anticipation - General - The Federal Court referred to a summary of the legal principles applicable to anticipation - See paragraph 212. Patents of Invention - Topic 1603 Grounds of invalidity - Anticipation - By previously published article or patent - The plaintiff, The Dow Chemical Company, owned the patent for polyethylene compositions and the films made from such compositions (Canadian Patent No. 2,160,705 (the '705 Patent)) - The plaintiff, Dow Chemical Canada ULC manufactured polyethylene copolymers in Canada

5 under license of the '705 Patent and sold polyethylene film-grade copolymers under the name Dow plaintiffs sued NOVA, alleging patent infringement - NOVA challenged the validity of the patent, claiming that the '705 patent was anticipated by two other Canadian patents - The Federal Court held that the '705 patent was not invalid for anticipation - See paragraphs 211 to 230. Patents of Invention - Topic 1674 Grounds of invalidity - Lack of novelty - Prior invention (incl. double patenting) - The Federal Court referred to a summary of the law relating to double patenting - See paragraph 265. Patents of Invention - Topic 1674 Grounds of invalidity - Lack of novelty - Prior invention (incl. double patenting) - The plaintiff, The Dow Chemical Company, owned the patent for polyethylene compositions and the films made from such compositions (Canadian Patent No. 2,160,705 (the '705 Patent)) - The plaintiff, Dow Chemical Canada ULC manufactured polyethylene copolymers in Canada under license of the '705 Patent and sold polyethylene film-grade copolymers under the name Dow plaintiffs sued NOVA, alleging patent infringement - NOVA challenged the validity of the patent, claiming that this was a case of double patenting - The Federal Court held that the '705 patent was no invalid for double patenting - See paragraphs 265 to 270. Patents of Invention - Topic 1721 Grounds of invalidity - Lack of utility and operability - General (incl. promise of the patent) - The Federal Court stated that "... if the inventor does not make a promise of a specific result, the test for utility is a 'mere scintilla' of utility. When the inventor makes an explicit promise of a specific result, then utility will be measured against that promise" - See paragraph 178. Patents of Invention - Topic 1725 Grounds of invalidity - Lack of utility and operability - Particular patents - The plaintiff, The Dow Chemical Company, owned the patent for polyethylene compositions and the films made from such compositions (Canadian Patent No. 2,160,705 (the '705 Patent)) - The plaintiff, Dow Chemical Canada ULC manufactured polyethylene copolymers in Canada under license of the '705 Patent and sold polyethylene film-grade copolymers under the name Dow plaintiffs sued NOVA, alleging patent infringement - NOVA challenged the validity of the patent on the ground of lack of utility - The Federal Court held that the patent was not invalid for want of utility - See paragraphs 176 to 197. Patents of Invention - Topic 2801

6 Infringement of patent - General principles - General - The Federal Court reviewed the law on patent infringement - See paragraphs 112 to 118. Patents of Invention - Topic 2888 Infringement of patent - Acts constituting an infringement - Of particular patents - The plaintiff, The Dow Chemical Company, owned the patent for polyethylene compositions and the films made from such compositions (Canadian Patent No. 2,160,705 (the '705 Patent)) - The plaintiff, Dow Chemical Canada ULC manufactured polyethylene copolymers in Canada under license of the '705 Patent and sold polyethylene film-grade copolymers under the name Dow plaintiffs sued NOVA, alleging patent infringement - The Federal Court determined that the impugned claims in the patent were valid and that NOVA had infringed the patent - See paragraphs 119 to 172. Patents of Invention - Topic 3787 Infringement actions - Evidence - Reply evidence - [See first and second Evidence - Topic 7080]. Comprising - The Federal Court discussed this word as it appeared in the claims of Canadian Patent No. 2,160,705 respecting polyethylene compositions - See paragraphs 43 to 54. Ethelyne polymer composition - The Federal Court discussed this phrase as it appeared in the claims of Canadian Patent No. 2,160,705 respecting polyethylene compositions - See paragraphs 37 to 42. Homogeneously branched - The Federal Court discussed this phrase as it appeared in the claims of Canadian Patent No. 2,160,705 respecting polyethylene compositions - See paragraphs 55 to 65. Heterogeneously branched - The Federal Court discussed this phrase as it appeared in the claims of Canadian Patent No. 2,160,705 respecting polyethylene compositions - See paragraphs 55 to 65. Linear - The Federal Court discussed this word as it appeared in the claims of Canadian Patent No. 2,160,705 respecting polyethylene compositions - See paragraphs 66 to 74. Long-chain branching - The Federal Court discussed this phrase as it appeared in the

7 claims of Canadian Patent No. 2,160,705 respecting polyethylene compositions - See paragraphs 66 to 74. Linear polymer fraction - The Federal Court discussed this phrase as it appeared in the claims of Canadian Patent No. 2,160,705 respecting polyethylene compositions - See paragraphs 104 to 111. Slope of strain hardening coefficient - The Federal Court discussed this phrase as it appeared in the claims of Canadian Patent No. 2,160,705 respecting polyethylene compositions - See paragraphs 75 to 103. Substantially linear - The Federal Court discussed this phrase as it appeared in the claims of Canadian Patent No. 2,160,705 respecting polyethylene compositions - See paragraphs 66 to 74. Cases Noticed: Uview Ultraviolet Systems Inc. v. Brasscorp Ltd. (2009), 343 F.T.R. 88; 2009 FC 58, refd to. [para. 15]. Whirlpool et al. v. Camco Inc. et al., [2000] 2 S.C.R. 1067; 263 N.R. 88; 2000 SCC 67, refd to. [para. 16]. Westaim Corp. v. Royal Canadian Mint (2002), 224 F.T.R. 184; 23 C.P.R.(4th) 129; 2002 FCT 1217, refd to. [para. 36]. Johnson & Johnson Inc. et al. v. Boston Scientific Ltd. (2008), 327 F.T.R. 49; 2008 FC 552, refd to. [para. 45]. Burton Parsons Chemicals Inc. et al. v. Hewlett-Packard (Canada) Ltd. et al., [1976] 1 S.C.R. 555; 3 N.R. 553; 17 C.P.R.(2d) 97, refd to. [para. 49]. Eli Lilly & Co. et al. v. Apotex Inc. (2009), 351 F.T.R. 1; 2009 FC 991, refd to. [para. 115]. Lubrizol Corp. et al. v. Imperial Oil Ltd. et al. (1990), 39 F.T.R. 161; 33 C.P.R.(3d) 1 (T.D.), varied (1992), 150 N.R. 207; 45 C.P.R.(3d) 449 (F.C.A.), refd to. [para. 117]. Apotex Inc. v. Sanofi-Aventis (2013), 447 N.R. 313; 2013 FCA 186, refd to. [para. 177]. Fournier Pharma Inc. et al. v. Canada (Minister of Health) et al. (2012), 413 F.T.R. 277; 2012 FC 741, refd to. [para. 181]. Bauer Hockey Corp. et al. v. Easton Sports Canada Inc. (2010), 366 F.T.R. 242; 2010 FC 361, affd. (2011), 414 N.R. 69; 2011 FCA 83, refd to. [para. 182]. Pfizer Canada Inc. et al. v. Canada (Minister of Health) et al. (2008), 322 F.T.R. 86; 2008 FC 11, refd to. [para. 189]. Calgon Carbon Corp. v. North Bay (City) et al. (2006), 304 F.T.R. 1; 2006 FC 1373, refd to. [para. 218]. Sanofi-Synthelabo Canada Inc. et al. v. Apotex Inc. et al., [2008] 3 S.C.R. 265; 381 N.R. 125; 2008 SCC 61, refd to. [para. 234]. Beloit Canada Ltd. v. Valmet Oy (1986), 64 N.R. 287; 8 C.P.R.(3d) 289 (F.C.A.), refd to. [para. 235].

8 Eli Lilly & Co. et al. v. Apotex Inc. (2009), 351 F.T.R. 1; 2009 FC 991, affd. (2010), 409 N.R. 173; 2010 FCA 240, refd to. [para. 236]. General Tire & Rubber Co. v. Firestone Tyre & Rubber Co., [1972] R.P.C. 457 (C.A.), refd to. [para. 236]. Sanofi-Aventis Canada Inc. et al. v. Apotex Inc. (2009), 350 F.T.R. 165; 77 C.P.R.(4th) 99; 2009 FC 676, affd. (2011), 426 N.R. 196; 97 C.P.R(4th) 415; 2011 FCA 300, refd to. [para. 279]. Pfizer Canada Inc. et al. v. Novopharm Ltd. et al. (2012), 436 N.R. 299; 2012 SCC 60, refd to. [para. 280]. Halford et al. v. Seed Hawk Inc. et al., [2003] F.T.R. Uned. 95; 24 C.P.R.(4th) 220 (T.D.), refd to. [Schedule A, para. 6]. R. v. Krause, [1986] 2 S.C.R. 466; 71 N.R. 61, refd to. [Schedule A, para. 6]. Allcock, Laight & Westwood Ltd. v. Patten et al., [1967] 1 O.R. 18 (C.A.), refd to. [Schedule A, para. 19]. Merck-Frosst-Schering Pharma GP et al. v. Canada (Minister of Health) et al., [2009] F.T.R. Uned. 551; 2009 FC 914, refd to. [Schedule A, para. 39]. Statutes Noticed: Patent Act, R.S.C. 1985, c. P-4, sect. 2 [para. 176]; sect [para. 232]; sect. 28.1(1) [para. 233]; sect. 43(2) [para. 174]. Authors and Works Noticed: Fox, Harold G., The Canadian Law and Practice Relating to Letters Patent for Inventions (4th Ed. 1969), pp. 152, 154 [para. 182]. Counsel: Ronald E. Dimock, Michael D. Crinson, Angela M. Furlanetto and Ryan T. Evans, for the plaintiffs; Steven Garland, Jeremy Want and Colin Ingram, for the plaintiffs; Robert H. C. MacFarlane, Michael E. Charles, Joshua W. Spicer, Andrew McIntosh, Jeffrey Gordon and Amrita V. Singh, for the defendant. Solicitors of Record: Dimock Stratton LLP, Toronto, Ontario, for the plaintiffs; Smart & Biggar/Fetherstonhaugh, Ottawa, Ontario, for the plaintiffs; Bereskin & Parr LLP, Toronto, Ontario, for the defendant. This matter was heard on September 9-13, 16-19, and 30, October 1, 7-10, 15-17, 21-24, 28-30, and November 5-7, 2013, before O'Keffe, J., of the Federal Court, who delivered the following decision on September 5, Editor: Elizabeth M.A. Turgeon Order accordingly.

9 Evidence - Topic 7080 Opinion evidence - Reports by experts - Rebuttal evidence - The Federal Court referred to the general rule that a plaintiff was not allowed to split his case - That is, the plaintiff must produce and enter in its own case all the clearly relevant evidence it has, or that it intends to rely upon, to establish its case with respect to all the issues raised in the pleadings - The court noted that the rule had exceptions and the primary one among them was where the defence raised some new matter or defence which the Crown had no opportunity to deal with and which the Crown or the plaintiff could not reasonably have anticipated - "That applies with equal force to expert reports. Although they are tendered before trial and surprise is arguably less of a concern, an expert opinion is only admissible pursuant to rule 279(b) if it is the subject of a report. Therefore, a defendant may still be unfairly prejudiced by improper reply since it may lose any opportunity to respond" - See Schedule A, paragraphs 5 to 8. Patents of Invention - Topic 1034 The specification and claims - Construction of a patent - Evidence (incl. reply evidence) - The plaintiffs sued the defendant for patent infringement - The defendant challenged the validity of the patent - The defendant objected to a second report filed by one of the plaintiffs' experts, claiming that the plaintiffs were improperly splitting their case - The Federal Court dismissed the defendant's objection - The second round of reports was defence evidence not subject to the limitations on reply evidence - Since both parties in this case were defendants on issues to which claims construction was relevant, both had equal rights to present their defences fully knowing their opponents' case - The court stated that the rule against case splitting should not be applied to detract from the very right that it was designed to enhance - See Schedule A, paragraphs 10 to 24. Patents of Invention - Topic 1034 The specification and claims - Construction of a patent - Evidence (incl. reply evidence) - The plaintiffs sued the defendant for patent infringement - The defendant challenged the validity of the patent - The defendant objected to a reply report filed by one of the plaintiffs' experts (i.e., the third report), claiming that the plaintiffs were improperly splitting their case - The defendant objected to most of the third report arguing that in addition to restating his case, the expert also introduced a new theory - The Federal Court held that the bulk of the defendant's submission with respect to the third report was unfounded - However, the court determined that two paragraphs of the report were improper reply because the plaintiffs should have anticipated the concerns and raised them in their own case and four paragraphs were improper reply for being unresponsive - Those six paragraphs were, therefore, inadmissible - See Schedule A, paragraphs 32 to 45. Patents of Invention - Topic 3787 Infringement actions - Evidence - Reply evidence - The plaintiffs sued the defendant for patent infringement - The defendant challenged the validity of the patent - The defendant objected to a second report filed by one of the plaintiffs' experts, claiming that the plaintiffs were improperly splitting their case - The Federal Court dismissed the defendant's objection - The second round of reports was defence evidence not subject to the limitations on reply

10 evidence - Since both parties in this case were defendants on issues to which claims construction was relevant, both had equal rights to present their defences fully knowing their opponents' case - The court stated that the rule against case splitting should not be applied to detract from the very right that it was designed to enhance - See Schedule A, paragraphs 10 to 24. Patents of Invention - Topic 3787 Infringement actions - Evidence - Reply evidence - The plaintiffs sued the defendant for patent infringement - The defendant challenged the validity of the patent - The defendant objected to a reply report filed by one of the plaintiffs' experts (i.e., the third report), claiming that the plaintiffs were improperly splitting their case - The defendant objected to most of the third report arguing that in addition to restating his case, the expert also introduced a new theory - The Federal Court held that the bulk of the defendant's submission with respect to the third report was unfounded - However, the court determined that two paragraphs of the report were improper reply because the plaintiffs should have anticipated the concerns and raised them in their own case and four paragraphs were improper reply for being unresponsive - Those six paragraphs were, therefore, inadmissible - See Schedule A, paragraphs 32 to 45.