ViiV Healthcare Company v. Gilead Sciences Canada, Inc.

ViiV Healthcare Company v. Gilead Sciences Canada, Inc.

The Court upheld the prothonotary: claim element essentiality under the variant/Improver analysis must be assessed from the perspective of the skilled addressee at the patent publication date, so post-publication testing and data do not inform claim construction; post-publication extrinsic documents are therefore not admissible to determine essentiality and relevance to claim construction was correctly denied; appeal dismissed.

Citation
2019 FC 1579
Parties
Plaintiff/defendant by Counterclaim: ViiV Healthcare Company; Plaintiff/defendant by Counterclaim: Shionogi & Co., Ltd.; Plaintiff/defendant by Counterclaim: ViiV Healthcare ULC; Defendant/plaintiff by Counterclaim: Gilead Sciences Canada, Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
17 December 2019
Procedural Posture
Patent Infringement Appeal (claim Construction and Production Motion) / Appeal From Prothonotary Decision on Motion to Compel Production of Underlying Study Data
Outcome
Appeal dismissed
Legal Topics
Claim Construction, Essentiality of Claim Elements, Document Production, Relevance, Extrinsic Evidence, Summary Trial
Source Language
English
Patent Law Intellectual Property Civil Procedure Evidence Claim Construction Essentiality of Claim Elements Document Production Relevance +2 more

Case Brief

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Parties

ViiV Healthcare Company

Plaintiff/defendant by Counterclaim

Shionogi & Co., Ltd.

Plaintiff/defendant by Counterclaim

ViiV Healthcare ULC

Plaintiff/defendant by Counterclaim

Gilead Sciences Canada, Inc.

Defendant/plaintiff by Counterclaim

Procedural Posture

Patent Infringement Appeal (claim Construction and Production Motion) / Appeal From Prothonotary Decision on Motion to Compel Production of Underlying Study Data

Legal Issues

  1. 1 Whether post-publication documents are relevant for claim construction
  2. 2 Whether post-publication documents constitute inadmissible extrinsic evidence for claim construction
  3. 3 Whether the prothonotary erred in refusing production of non-bictegravir underlying SAR Study data

Ratio Decidendi

The Court upheld the prothonotary: claim element essentiality under the variant/Improver analysis must be assessed from the perspective of the skilled addressee at the patent publication date, so post-publication testing and data do not inform claim construction; post-publication extrinsic documents are therefore not admissible to determine essentiality and relevance to claim construction was correctly denied; appeal dismissed.

Court Disposition

Appeal dismissed

Orders

  • Appeal dismissed.
  • Costs to Gilead assessed at the middle of Column III of Tariff B.