1. PATC Module 2 – Infringement/Validity
Utility

2. Utility
Invention must be both “new” and “useful” (Patent Act, section 2)
Patent system does not reward lucky
guesses
[Apotex Inc. v Wellcome Foundation Ltd.,
[2002] 4 S.C.R. 153]

3. Evidence that invention lacks utility will invalidate patent
[Consolboard Inc. v MacMillan Bloedel (Sask.) Ltd.,
56 C.P.R. (2d) 146]

4. Utility
Utility of invention must have either
(1) been demonstrated; or
(2) be a sound prediction
as of filing date of application
Otherwise, the patentee offers nothing
in exchange for monopoly.

5. Utility Utility need not be explicitly defined in
specification, but must be known to
inventors
[Procter & Gamble Co. v. Bristol-Myers
Canada Ltd., 42 C.P.R. (2d) 33; Pfizer
Canada Inc. v Novopharm Ltd.,2010 FCA 242]
Utility can be demonstrated after the fact,
outside the content of the specification
[Eli Lilly Canada Inc. v. Apotex Inc.,
2015 FC para ]

6. Utility [If utility is challenged], is there sufficient evidence
to demonstrate that, at the filing date,
the claimed subject matter would:
(1) do what the patent promised OR
(2) that its utility can be soundly predicted
[Eli Lilly & Company v Teva Canada
Limited, 2011FCA 220]

7. Utility Utility is not dependent on commercial
utility or marketability, unless this is
explicitly promised
[Astrazeneca Canada Inc et al v
Canada & Pharmascience, 2012 FC 1189]

8. Claim is invalid where it fails to recite
Lack of Utility
Claim is invalid where it fails to recite
an element that the disclosure has taught
is essential to proper operation
of the invention
[Amfac Foods Inc. v Irving Pulp & Paper Ltd.,
12 C.P.R. (3d) 193]

9. Lack of Utility Claim is invalid where its scope is broad
enough to include things that do not work
and there is no evidence that the
skilled person would understand
to avoid using them
[Minerals Separation North American Corp. v.
Noranda Mines Ltd., 15 C.P.R. 133]

10. Lack of Utility
There is lack of utility where claimed subject matter does not work or does not fulfill the promise of the specification
The fact that some trial/error/adjustments may be required by skilled person in order to work the invention does not equate to inutility.
(e.g. process that works at a claimed temperature range where other relevant factors are understood to be variable/customizable)
(Delp v Fresh Headies Internet Sales, 2011 FC 1228)

11. Utility: Promise of the Patent
“Promise” – yardstick for utility
Patent is not required to make a promise
Is there a promise? Ask at the outset
[e.g. Eli Lilly Canada Inc. v. Apotex Inc., 2015 FC paras ]

12. Utility: Promise of the Patent
Promise may be explicitly stated or
arise from construction of claims in
light of specification
“Where the specification does not promise a specific result, no particular level of utility is required; a "mere scintilla" of utility will suffice.”
[Eli Lilly Canada Inc. v. Novopharm Ltd., FCA 197 ]

13. Utility: Promise of the Patent
If the specification does make a specific “promise”, utility is measured against that promise. Challenger has the burden of proof
[e.g. Eli Lilly Canada Inc. v. Novopharm Ltd., FCA 197; Pfizer Canada Inc. v. Canada ( Minister of Health), 2008 FCA 108]

14. Utility: Promise of the Patent
Just because some patents have promises,
does not mean that every patent
has a promise
Do not “read in” a promise unless
it is explicitly made in the specification
[Sanofi Aventis v Apotex Inc FCA 186

15. Utility: Promise of the Patent
Not every statement
in a patent is a “promise”
(i.e. stated goal, stated advantages)
Distinguishing between “promise”
of the patent and the “advantages”
of the invention
[Bauer Hockey Corp v Easton Sports
Canada Inc., 2010 FC 361]

16. Utility: Promise of the Patent
Ascertaining the “promise” of the patent is a
question of law (like claim construction)
Promise (if there) may apply to all claims; or
some of them (subset)
A “promise” may not apply to all claims –
(issue of construction)
[Astrazeneca Inc. v Apotex Inc, 2015 FCA 158;
Eli Lilly Canada Inc. v. Apotex Inc., 2015 FC 1016]

17. Utility: Promise of the Patent
Ask: what is the standard/benchmark
to assess validity?
What does the skilled person understand?
[Eli Lilly & Company v Teva Canada Limited,
2011FCA 220]

18. Utility: Promise of the Patent
Contextual analysis to determine whether
threshold for utility is met – question of fact
[Eli Lilly and Company v. Teva Canada Limited,
2011FCA 220]
Will tend to arise in pharma cases

19. Utility: Promise of the Patent
Where promised utility relates to
therapeutic use, standard for regulatory
approval need not be met
[Novopharm Ltd v Pfizer Canada Inc.,
2010 FCA 242]

20. Utility: Promise of the Patent
But if the specification promises clinical
efficacy, a study that falls short of proving
it will not support a finding of utility
[Eli Lilly and Company v. Teva Canada Limited,
2011 FCA 220]

21. Utility
Examples

22. Example 1-pool cover
“The patent in issue relates to an apparatus for rolling a swimming pool cover onto a roller mounted between a pair of pedestals. The roller described in the patent is a telescoping roller having at least two tubes which telescope together, both tubes constructed so as to lock together upon rotation of one tube with respect to the other. …it is common ground that when two tubes are connected to form a telescoping tube and lifted into a horizontal position by its end, the telescoping tube sags in the middle. The simple solution offered by the patent is to provide ribs along the inner wall of the outer tube and the outer wall of the inner tube. The two sections of tubing are then slipped one into the other with the ribs out of line with each other so that they fit beside each other. Once the appropriate length is obtained, the inner tube is turned within the outer tube so that the ribs mesh or lock up, thus providing a satisfactory alignment of the axes with the telescoping tube in a locked position.”

23. Example 1-pool cover V

24. Example 1
An apparatus adapted to be rested on a surface adjacent to a pool
for use in removing and storing a swimming pool cover and the like,
comprising: a telescoping roller member having first and second ends which are
telescopically separable to vary the distance between said roller
member ends, said roller member having a first tubular section and at
least one second tubular section, each section having an inside
cylindrical surface and an outside cylindrical surface, said second
tubular section adapted to be telescopically disposed from an end
of said first tubular section, said tubular sections when so telescoped
providing said first and second roller member ends, said first
tubular section further defining a plurality of uniformly spaced ribs
disposed from its inside cylindrical surface and extending

25. Example 1
longitudinally of the section from end to end thereof, said second tubular section further defining a plurality of similarly spaced ribs disposed from its outside cylindrical surface, and extending longitudinally of each section from end to end thereof, the said ribs of said first tubular section engaging upon the said ribs of said second member when the said ribs of each section are aligned radially, thereby securing said tubular sections relative to each other; support means positioned externally of the first and of the second ends of the roller member for mounting said roller member above the surface on which the apparatus is to be rested such that the pool cover can be wound onto the roller, and adapted to permit rotation of the roller;

26. Example 1
means for securing an edge portion of the pool cover to the roller; and, means positioned externally of said roller member to
rotate said roller member for winding and unwinding said pool cover.

27. Example 1- decision
“In the case at bar, claim 1 promises that once the ribs of a tubular section are engaged upon the ribs of the other tubular section and the ribs are aligned radially, both telescoped sections will be secured. I accept that to mean that both sections will thus be locked and the roller will become useful in pulling the cover. However, the evidence in court has satisfied me that it cannot do so without the screws or the bolts. In particular, Mr. Peachey's oral testimony as well as his manual demonstration with plaintiff's product showed quite clearly that the two tubular sections in a "locked" position "unlock" easily with a light reverse manual twist. And the patent states that pool covers "tend to be large, heavy and awkward to remove". Without the screws or bolts, the roller is useless. But claim 1 is silent about screws and bolts and, thus, the patent is void.”

28. Example 1 - decision
Feherguard Products Ltd. v. Rocky's of B.C. Leisure Ltd., 53 C.P.R. (3d) 417; affd 60 C.P.R. (3d) 512

29. Example 2 – ECG cream Evidence: Is the claim invalid?
17. An electrocardiograph cream for use with skin contact
electrodes comprising a stable aqueous emulsion that is
anionic, cationic or non-ionic, containing sufficient
highly ionizable salt to provide good electrical conductivity
and compatible with normal skin.
Evidence:
There are hundreds of known emulsifiable solutions, and
highly ionizable salts and buffer solutions that were known as
filing date.
2. Some ionizable salts are known to be toxic to the skin
Is the claim invalid?

30. Example 2 - decision Is the claim invalid? SCC says “no”
“The objections raised against the claims really are that,
except those pertaining to some specific embodiments of
the invention, the others are so framed as to cover every
practical emdodiment, leaving to the man skilled in the art,
the task of avoiding unsuitable materials in the making of the
mixture, a task which any man skilled in the art ought to be
able to perform without having to be told because any
unsuitability depends on well known properties.
No unexpected or generally unknown unsuitability was
proved or even suggested, which makes this case quite unlike
Minerals Separation or Rhône-Poulenc.”

31. Example 2 - decision
Burton Parsons Chemicals, Inc. v. Hewlett-Packard (Canada) Ltd., [1976] 1 S.C.R. 555