Expert Evidence - Cutting to the Chase: - University of Toronto

Expert Evidence - Cutting to the Chase: - University of Toronto

Expert Evidence Cutting to the Chase: The Experts Role in Claims Construction Adam Bobker Slides by Michael Burgess 7th Annual Patent Colloquium at the University of Toronto, Faculty of Law November 9, 2018 Whirlpool Corp v Camco Inc Dual Action Washing Machines Canadian Patent No. 1,095,734 2

Whirlpool Corp v Camco Inc Did the earlier 803 Patent claim flexible vanes? What was the experts role in construction? 3 Whirlpool Corp v Camco Inc At trial parties agreed flex vanes were included TJ disagreed: 803 Patent claimed only rigid vanes Upheld by the SCC:

The key to purposive construction is therefore the identification by the court, with the assistance of the skilled reader, of the particular words or phrases of the claims that describe what the inventor considered to be the essential elements of his invention. Whirlpool Corp v Camco Inc, 2000 SCC 67 at 45 [emphasis added] 4 Whirlpool Corp v Camco Inc [T]he patent specification is not addressed to

grammarians, etymologists or to the public generally, but to skilled individuals sufficiently versed in the art to which the patent relates to enable them on a technical level to appreciate the nature and description of the invention. Whirlpool Corp v Camco Inc, 2000 SCC 67 at 53 5 Etymology definition courtesy of www.google.ca The General Rule: Whirlpool v Camco The Court construes claims

Experts can help inform Court about how skilled persons understand terms and concepts: The role of the expert was not to interpret the patent claims but to put the trial judge in the position of being able to do so in a knowledgeable way. Whirlpool Corp v Camco Inc, 2000 SCC 67 at 57 6 The Skilled Person Experts help the Court put itself in the position of the skilled person

Court will be particularly influenced by technical facts on which the experts agree But, it is common for experts to disagree 7 Assessing Expert Evidence Often the Court will prefer one expert over another That said, I understand the plaintiffs to agree with the MIB that my analysis of the expert evidence does not require an all or nothing approach, and that it is indeed open to me to accept the

evidence or arguments of one side on some issues, and the evidence or arguments of the other side on other issues. I agree that this is open to me in considering the task at hand. Hodgson v Musqueam Indian Band, 2017 FC 509 at 50 8 Assessing Expert Evidence The point is to preserve trial by judge and jury, not devolve to trial by expert. There is a risk that the jury will be unable to make an effective and critical assessment of the

evidence. The trier of fact must be able to use its informed judgment, not simply decide on the basis of an act of faith in the experts opinion. White Burgess Langille Inman v Abbott and Haliburton Co, 2015 SCC 23 at 18 [citations omitted] 9 Assessing Expert Evidence Many factors for Court to consider in assessment: Experts assignment/instructions Relative expert qualifications Level of analytical care

Independence Methodology 10 Standard of Review on Appeal Construction is a matter of law Reviewed on appeal using the correctness standard but 11

Standard of Review on Appeal Overall, a court nearly always reads a patent through goggles supplied by the experts whom the judge considers to be credible and accurate. Because of that, in practice, the standard of review of palpable and overriding error will often apply. This Court has acknowledged this practical reality for a while now Often the experts testimony stretches beyond opinion evidence and goes into factual matters within their knowledge that are relevant to the construction exercise Cobalt Pharmaceuticals Co v Bayer Inc, 2015 FCA 116 at 17-18 (Stratas)

12 Standard of Review on Appeal [I]t will often be difficult, if not unrealistic and artificial, to distinguish between those aspects of claim construction that flow from the trial judges assessment of expert evidence from the words of the claim themselves. After all, the construction of a patent is heavily dependent on the evidence given by persons skilled in the art, and that evidence will bear heavily on the judges findings. [T]he construction of a patent is a question of law to be reviewed on a standard of correctness, but trial judges are nevertheless entitled to some leeway as they are often in a much better

position than appellate judges to understand the intricacies of the art underlying the invention disclosed in a patent. NOVA Chemicals Corp v Dow Chemical Co, 2016 FCA 216 at 15 (De Montigny) [emphasis added] 13 Standard of Review on Appeal Since the construction of a patent, including its specification, is a question of law, correctness is the applicable standard of review. However, any assessment of the evidence (concerning the state of scientific knowledge at the relevant time, or how a reasonable

POSITA would understand the patent, for example) made by the Judge in the course of reaching his conclusion on the construction of the patent is reviewable for palpable and overriding error. Mylan Pharmaceuticals ULC v AstraZeneca Canada, Inc, 2012 FCA 109 at 20 (Evans) [citations omitted, emphasis added] 14 Appellate Review of Construction Based on Knowledge of POSITA My careful review of the claims, read in the context of the disclosure, informed by the evidence as to the common

general knowledge of the POSITA leads me to conclude that the Federal Court erred in construing the expression engine cradle restrictively. In doing so, the Court rewrote the claims as if they read a walled engine cradle forward of the tunnel. Thus, on a correct interpretation of the claims at issue, the engine cradle is not limited to a variety that included walls. Bombardier Recreational Products Inc v Arctic Cat, Inc, 2018 FCA 172 at 57 (Evans) [emphasis added] 15 Appellate Order for Reconsideration of

Knowledge of POSITA In conducting its obviousness inquiry, the Federal Court did not consider the impact of any knowledge possessed by the POSITA in respect of fuel equipment design on obviousness and instead focussed its discussion on the fact that the claimed invention represented an improvement in the way in which hot refueling was undertaken. This may well be true, but that does not necessarily mean that the invention claimed in the 567 Patent was not obvious if it would have been obvious or obvious to try for someone with the knowledge of the POSITA in respect of fuel equipment design.

AFD Petroleum Ltd v Frac Shack Inc, 2018 FCA 140 at 45 (Gleason) [emphasis added] 16 Thank you Adam Bobker, Partner [email protected] November 9, 2018

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