1. PATC Module 2 – Infringement/Validity
Sufficiency of Disclosure
Claims within scope of Invention 1

2. Validity--Other Requirements
The patent must comply with other requirements (quite apart from novelty and inventiveness)
Including (among others):
Sufficient, enabling Disclosure
Claims within scope of Invention made/disclosed

3. 5. Sufficient Disclosure
Section 27 represents the quid pro quo that lies at the heart of
the patent system
Reveal
New Technology
Grant a
‘Monopoly’

4. s. 27 Patent Act 27 (3) The specification of an invention must
(a) correctly and fully describe the invention and its operation or use as contemplated by the inventor;
(b) set out clearly the various steps in a process, or the method of constructing, making, compounding or using a machine, manufacture or composition of matter, in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which it pertains, or with which it is most closely connected, to make, construct, compound or use it;
(c) in the case of a machine, explain the principle of the machine and the best mode in which the inventor has contemplated the application of that principle; and
(d) in the case of a process, explain the necessary sequence, if any, of the various steps, so as to distinguish the invention from other inventions.

5. s. 27 Patent Act
27 (4) The specification must end with a claim or claims defining distinctly and in explicit terms the subject-matter of the invention for which an exclusive privilege or property is claimed.

6. Ambiguity / Sufficiency
Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents),
(1989) 25 C.P.R. (3d) 257 (S.C.C. per Dickson C.J.) at pages
267-8:
The applicant must disclose everything that is essential for the invention to function properly. To be complete, it must meet two conditions: it must describe the invention and define the way it is produced or built … The applicant must define the nature of the invention and describe how it is put into operation. A failure to meet the first condition would invalidate the application for ambiguity, while a failure to meet the second invalidates for insufficiency.

7. Sufficiency: Skilled Addressee
Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents),
(1989) 25 C.P.R. (3d) 257 (S.C.C. per Dickson C.J.) at pages
267-8 (continued):
The description must be such as to enable a person skilled in the art or field of the invention to produce it using only the instructions contained in the disclosure … and once the monopoly period is over, to use the invention as successfully as the inventor could at the time of his application.”

8. Sufficiency: Relevant Date
The proper date for construction of the specification in connection with testing alleged insufficiency is the date of publication of the application [Whirlpool (2002 SCC); Pfizer (2007 FCTD)]
Previous case law had used the filing date, the priority date, or the issue date

9. Ambiguity: Rare
Lubrizol Corp. v. Imperial Oil Ltd. (1990), 33 C.P.R. (3d) 1 at
page 26:
When a defendant pleads non-compliance with this section, the court should not be quick to find ambiguity that will invalidate a patent, and should refuse to do so where a claim can, with some effort, be construed in a meaningful way …

10. Insufficiency: Rare
Lubrizol Corp. v. Imperial Oil Ltd. (1990), 33 C.P.R. (3d) 1 at
page 26:
Dickson J. (as he was then) set out the test for the sufficiency requirements … as “whether the specification adequately describes the invention for the person skilled in the art”. The Supreme Court also noted in Consolboard that in applying s. 36 the court should not use an overly technical approach.

11. Insufficiency: Rare
Pfizer Canada Inc. v. Canada (Minister of Health) (2007), 56 C.P.R. (4th) 96 at para. 122:
..the decided cases “undoubtedly set the bar for section 27(3) [compliance] very low”;
this view was sustained on appeal

12. 6. Claims Overbroad  Claim 9 Overbroad?
Two limitations to an inventor’s claimed exclusive right (from, eg. Minerals Separation, Burton Parsons): it must not be broader than:
1. the invention made;
2. the invention as described in the specification.
 Claim 9 Overbroad?

13. Claims Overbroad
Pfizer Canada Inc. v. Novopharm Ltd., (2005) 42 C.P.R. (4th) 502 at
para. 83 quoting Minerals Separation North American Corp. v. Noranda Mines Ltd., [1947] Ex. C.R. 306 at 352:
By his claims the inventor puts fences around the fields of his monopoly and warns the public against trespassing on his property. His fences must be clearly placed in order to give the necessary warning and must not fence in any property that is not his own.
[...] The inventor may make his claims as narrow as he pleases within the limits of his invention but he must not make them too broad. He must not claim what he has not invented for thereby he would be fencing off property which does not belong to him.

14. Claims Overbroad
Pfizer Canada Inc. v. Novopharm Ltd., (2005) 42 C.P.R.
(4th) 502 at para. 84:
Although each claim must be considered against the background of the specification as a whole, the question to determine when dealing with the argument that a claim is covetous is whether the claim at issue exceeds the scope of the disclosure on which this claim is based …

15. Claims Overbroad: Example
Claim 23 of Pfizer’s patent:
Use of a therapeutically effective amount of azithromycin for the preparation of a pharmaceutical dosage form which does not exhibit an adverse food effect for administration, in the treatment of antimicrobial infection, to a patient that has eaten.

16. Claims Overbroad: Example
Pfizer Canada Inc. v. Novopharm Ltd., (2005) 42 C.P.R. (4th)
502 at paras. 93:
In summary, I find that claim 23 of the '071 Patent claims a desirable result. I also find that claim 23 overreaches the scope of the patent in that it claims too broadly, covering any "preparation" that would achieve the result of producing an oral pharmaceutical dosage form containing a therapeutically effective amount of azithromycin which does not exhibit an adverse food effect. In my view, claim 23 is an attempt by the inventor to claim a monopoly on any "preparation" that achieves the desirable result. This is covetous and overreaching and, in consequence, the allegation that claim 23 is invalid, is justified.

17. Claims Overbroad Free World (2000 SCC): Hoechst v. Gilbert (1965 SCC):
The claims cannot be stretched to allow the patentee to monopolize anything that achieves the desirable result. It is not legitimate, for example, to obtain a patent for a particular method that grows hair on bald men and thereafter claim that anything that grows hair on bald men infringes
Hoechst v. Gilbert (1965 SCC):
The claims may encompass reasonably predictable extensions or extrapolations of the specific embodiments disclosed in the specification

18. Claims Overbroad Eurocopter v. Bell (2012 FC):
1. Helicopter landing gear, comprising…an integrated front cross piece, offset
in relation to the front delimitation of the plane of contact of the longitudinal support surfaces of the skids on the ground.
16. Landing gear according to any of claims 1 to 14, characterized in that said integrated front cross piece is offset backwards in relation to the front delimitation of the plane of contact of the longitudinal support surfaces of the skids on the ground.

19. Claims Overbroad Eurocopter v. Bell (2012 FC):
[371] To the extent that claims 1 and 16 cover any embodiment whereby the front cross piece is offset backwards, all dependent claims, except claim 15, must be held invalid. Thus, the Court finds that claims 1 to 14 and claim 16 of the ‘787 Patent are invalid and void on the basis of lack of demonstrated utility (or sound prediction) and/or overbreadth.

20. Claims Overbroad Abvie v. Janssen (2014 FC):
[148] There is nothing that is indeterminate in the claims at issue; there is nothing that, in the evidence, lacks utility, or cannot be soundly predicted. The issue, therefore, is one of overbreadth, or covetousness. Having claimed the invention without reference to the specific antibody described in the patent, or even the specific method by which it was described to be made in the patent, can the claim be so broad as to cover whatever antibody falls within the constraints as I have set them out above and still be valid?
[167] Based on the principles established in Monsanto as well as Cabot, the claims at issue, 143 and 222, are not overly broad or covetous. Those claims are readily understandable by a person skilled in the art; they know what the parameters are; there is no evidence to indicate that antibodies falling within these parameters will not work to bind to IL-12 so as to treat psoriasis.

21. Claims Overbroad Abvie v. Janssen (2014 FC):
[168] Janssen argues, as a policy issue, whether “functional claiming” should be allowable. It argues that, having discovered one antibody that binds to IL-12 so as to treat psoriasis, can AbbVie claim any antibody that binds to IL-12 and treats psoriasis? This argument does not come to grips with the fact that AbbVie was the one who confirmed that if an antibody did bind to IL-12, then psoriasis could be treated. Before AbbVie’s confirmation there was only hope or speculation, numerous other cytokines or a combination of one or more of them might have been the proper target. AbbVie confirmed that it was IL-12. Further, the argument does not come to grips with the fact that the claims at issue also define a minimum level of stickiness and potency required to do the treatment. AbbVie was the first to confirm that, if you want to treat psoriasis, you must get an antibody that binds to IL-12 and it must have at least a certain level of stickiness and potency. That is very different from saying - we have a particular antibody (J695), and we put it into people, and it treats their psoriasis; therefore, we want a patent claiming any antibody that does that. There may be many ways to treat psoriasis, but AbbVie’s way is to have an antibody that does so by binding to IL-12 with at least a certain level of stickiness and potency. That is the difference.

22. Claims Overbroad Amfac v. Irving (1987) 12 C.P.R. (3d) 193 (F.C.A.):
[p.197] I turn next to the other three disputed areas. As in any patent action, the specification must be construed as a whole. The disclosure portion describes the invention for which the monopoly is claimed. The claims define the scope thereof. Since the invalidity of claim 16 found by the trial judge was based on his finding that the claim is broader than the invention disclosed, the nature of that invention should first be ascertained from the disclosure in the specification. The opening paragraph of the specification reads as follows:
This invention is directed to an improved method and means for the slicing of vegetables, and is particularly concerned with the slicing of potatoes for the production of so called French fried or string potatoes. The invention enables attainment of a maximum yield of long, uniform cross-sectional area cuts. In other words, slicing is performed longitudinally or lengthwise of the potato in a uniform and accurate manner so that the resultant cuts represent the maximum lengths obtainable, limited only by the length size of the type of potato being processed. At the same time, the less desirable outside cuts or portions of the potato, herein referred to as the "slab" portions, are sliced from the sides and removed from the subject center cuts. The latter simultaneouly diverted to other uses, such as that aspect of plant processing involving dehydration of these less desirable portions for preparation as dehydrated mashed potatoes. The invention permits of mass production involving relatively huge amounts of potatoes processed, since the operation is performed hydraulically at extreme speed, with the more desirable center cuts being efficiently sliced in uniform fashion and with minimum or complete lack of damage to the cellular structure of the potato.

23. Claims Overbroad Amfac v. Irving (1987) 12 C.P.R. (3d) 193 (F.C.A.):
The importance of slabbing and separate removal of the undesirable outside cuts to achieve desired result of long, uniform center cuts of potatoes for french fries, is made plain throughout the disclosure, as Strayer J. found. The following excerpts provide examples thereof:
The instant invention overcomes these and many other difficulties. The invention, as stated, enables not only extremely rapid and efficient cutting into strips or slices of predetermined size, but eliminates from the final product those portions of the potato which from(sic) a purity and taste standpoint should in any event be eliminated; the skin, some of which remains after even the most efficient of previous methods are used for mass peeling of potatoes; the eyes, and as well, other ordinary imperfections common to the tuber.
It is accordingly a primary objective of this invention to provide a means, and a method of operation of same, which achieves a uniform and even slicing of vegetable products, particularly the potato, thus obtaining as one example, frenched potatoes from the center of the tuber which represent the true over-all length thereof, and which are of standard dimension and uniform in cross-sectional size
Another object of the invention is the provision of a device which will permit removal of the four exterior sizable slabs from the potato, leaving only long rectangular interior sections which are simultaneously cut from the center and primarily used for frenched potatoes.

24. Claims Overbroad Amfac v. Irving (1987) 12 C.P.R. (3d) 193 (F.C.A.):
Without discussing the applicability of s-s. 38(1), as earlier stated, it is my view that a fair reading of the specification does not support the appellants' view of the nature of the invention. The excerpts from the specification to which I have earlier referred support Strayer J.'s finding as to the nature of the invention. In fact, in my opinion, a fair analysis of the disclosure and of the claims permit no other view. There is one invention only, not two. The cutting and separation of the outside slabs are essential to the invention, not a preferred embodiment thereof."