Bayer Healthcare AG v. Sandoz Canada Incorporated

Bayer Healthcare AG v. Sandoz Canada Incorporated

The appeal is dismissed because Canadian law bars reliance on prosecution file history to construe the scope of a patent monopoly; the paragraphs of the defence relying solely on an inventor's US prosecution statements therefore disclose no reasonable defence and were properly struck as plain and obvious under Rule 221(1)(a). The prothonotary's order is upheld on de novo review.

Citation
2007 FC 964
Parties
Plaintiff/defendant by Counterclaim: Bayer Healthcare AG; Plaintiff/defendant by Counterclaim: Bayer Inc.; Defendant/plaintiff by Counterclaim: Sandoz Canada Incorporated
Court
Federal Court
Jurisdiction
Canada
Judgment Date
26 September 2007
Procedural Posture
Patent Dispute — Motion to Strike Pleadings and Appeal From Prothonotary Order / Appeal From Prothonotary's Striking Order; Interlocutory/pre Trial
Outcome
Appeal dismissed; order of Prothonotary Lafrenière striking paragraphs 24-27 upheld.
Legal Topics
File Wrapper Estoppel, Claim Construction, Striking Pleadings, Prosecution History, Standard of Review for Prothonotary Orders
Source Language
English
Patent Law Civil Procedure Intellectual Property File Wrapper Estoppel Claim Construction Striking Pleadings Prosecution History Standard of Review for Prothonotary Orders

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Parties

Bayer Healthcare AG

Plaintiff/defendant by Counterclaim

Bayer Inc.

Plaintiff/defendant by Counterclaim

Sandoz Canada Incorporated

Defendant/plaintiff by Counterclaim

Procedural Posture

Patent Dispute — Motion to Strike Pleadings and Appeal From Prothonotary Order / Appeal From Prothonotary's Striking Order; Interlocutory/pre Trial

Legal Issues

  1. 1 Whether extrinsic statements made by an inventor during foreign patent prosecution (US file history) are admissible to construe Canadian patent claims or to show claims are broader than the disclosed invention
  2. 2 Whether paragraphs 24-27 of the defendant's statement of defence disclose a reasonable defence or should be struck under Rule 221(1)(a)
  3. 3 Standard of review on appeal from a prothonotary and whether the judge should exercise discretion de novo

Ratio Decidendi

The appeal is dismissed because Canadian law bars reliance on prosecution file history to construe the scope of a patent monopoly; the paragraphs of the defence relying solely on an inventor's US prosecution statements therefore disclose no reasonable defence and were properly struck as plain and obvious under Rule 221(1)(a). The prothonotary's order is upheld on de novo review.

Court Disposition

Appeal dismissed; order of Prothonotary Lafrenière striking paragraphs 24-27 upheld.

Orders

  • Paragraphs 24, 25, 26 and 27 of the Statement of Defence and Counterclaim are struck (leave to amend provided the amendment does not contravene the reasons for this Order).
  • The parties shall have ten days from the date of this decision to make written submissions on costs and a further ten days for any reply.