Cochlear Corp. v. Cosem Neurostim Ltée
T-2728-93
Joyal J.
13/10/95
53 pp.
Action for declaration of validity, infringement of patent for cochlear implant-Plaintiff claiming exclusive right to make, use, sell cochlear implant by reason of assignment-Claiming similar cochlear implant developed by defendant breach of relevant claims-Reference to Hi-Qual Manufacturing Ltd. et al. v. Rea's Welding & Steel Supplies Ltd. (1994), 74 F.T.R. 99 (F.C.T.D.) for guidelines with respect to proper construction of patents-General principles as to validity of patent: (1) invention must not have been "anticipated" by another patent or publication that would deem it to lack novelty under statute-(2) Invention must be operative and have some commercial value-(3) Must fit in recognized category, for not all subject-matter patentable-(4) Must be inventive step (question of fact concerning advance in art, and degree entailing advance neither "obvious" nor merely "workshop improvement")-(5) Statutory presumption of validity as stipulated in Trade-marks Act, s. 45-(1) Defendant alleging invention not meeting requirement of novelty as being anticipated-Relying on U.S. patent-U.S. patent not comprising all of elements in suit-While relevant to limited extent to field of tissuestimulating prosthesis, reading of U.S. patent not enabling person skilled in art to produce claimed invention without exercise of any inventive skill-(2) In light of commercial success, little doubt as to cochlear implant's utility-(3) Cochlear prosthesis patentable subject-matter within Patent Act-(4) Generally validity of patent will be upheld if "mere scintilla of invention"-Date of invention key date-Unimaginative skilled technician constituting means whereby Court determining validity of patent with regards to obviousness-Objective test employed to determine whether could have been aware of prior art-Invention must be arrived at directly and without difficulty-Commercial success of invention, long-felt want, attempts by others to solve problem and contemporaneous development by others may also be considered-Simplification of apparatus or improved methods may also possess required inventive ingenuity-Although most elements claimed in patent known at time of invention, combination constituted novelty in sense of law-In light of presumption of validity, patent meeting criteria established by case law and defendant not proving, on balance of probabilities, invalidity-Patent not obvious to person skilled in art at time of making of invention-Infringement mixed question of fact, law-Factual issues relating to what done by alleged infringer, whereas determination of exact nature of patented invention and interpretation of claims question of law-Purposive approach to construing patents elaborated in Catnic Components Ltd. v. Hill and Smith Ltd., [1981] F.S.R. 60 (H.L.) adopted in Canada-Question whether person with practical knowledge, experience in kind of work in which invention intended to be used, would understand that strict compliance with particular descriptive word or phrase appearing in claim intended by patentee to be essential requirement of invention so that any variant would fall outside monopoly claimed, even though could have no material effect upon way invention worked-Court merely attempting to ascertain "intention" of inventor-When inventor claiming particular element of invention necessary, if element different in subsequent inventions, no infringement occurring, regardless of whether element truly necessary since inventor confined to patent claims-AT & T Technologies Inc. v. Mitel Corp. (1989), 28 F.T.R. 241 (F.C.T.D.) providing review of guiding principles-G.F. Takach, Patents: A Canadian Compendium of Law and Practice, Edmonton: Juriliber, 1993, reducing case law to three questions based on Catnic approach-Defendant's device infringing plaintiff's patent, as practical result of normal operation of defendant's device pith and marrow of invention described-Damages neither warranted not claimed as defendant's device still in experimental or research stage-Defendant's device which is at research and development stage protected from mandatory, unqualified injunctive order-What is warranted is relief by way of quia timet which would not inhibit continuing development, but which would avoid possibility of whole issue between parties having to be retried and reargued-Patent Act, R.S.C., 1985, c. P-4.