The Federal Court has now released the first decision in which the scope of Section 53.1 of the Canadian Patent Act—the so-called “file wrapper estoppel” provision—has been considered. We recently published an IP Update describing new Section 53.1 and the state of the law regarding file wrapper estoppel in Canada.
In Canmar Foods Ltd v TA Foods Ltd, 2019 FC 1233 [Canmar Foods],the Court held that representations made by a patentee during prosecution of a foreign patent application constituted admissible evidence under Section 53.1. The Court recognized that Section 53.1 only specifies using Canadian prosecution file histories to rebut positions taken on claim construction, and makes no reference to prosecution histories from other jurisdictions. Notwithstanding, the Court found that it could consider the U.S. Application prosecution history as part of a purposive construction of the claims in issue, based on the “extraordinary circumstances” identified by the Court in the case.
Claim Construction Issues
In Canmar Foods, the Defendant TA Foods Ltd. brought a motion for summary judgment based on non-infringement of the asserted claims of Canadian Patent No. 2,582,376 (the “’376 Patent”) entitled “Methods for Roasting Oil Seed, and Roasted Oil Seed Products.”
Specifically, the Defendant argued that its allegedly infringing oil seed roasting or cooking process falls outside the claims of the ‘376 Patent because it does not heat oil seed in a “stream of air” and does not maintain the oil seed in an “insulated roasting chamber or tower”, as required by independent Claim 1.
In support of the motion, the Defendant relied on the Canadian prosecution history, and the prosecution history of the corresponding U.S. Application 11/576,405 filed before the USPTO. The Defendant argued that the “stream of air” and “insulated roasting chamber or tower” limitations were added to overcome prior art cited by the USPTO, and in the ‘376 Patent Canadian prosecution history the applicant adopted those same limitations in order to overcome novelty and obviousness objections raised by the Canadian examiner.
The Scope of Section 53.1
In rendering its judgment, the Court had to assess whether the scope of new section 53.1 of the Patent Act permits the admissibility into evidence of foreign prosecution histories.
The Court noted that Section 53.1 makes no reference to the prosecution histories from other jurisdictions. Accordingly, absent extraordinary circumstances, representations made by the patentee during prosecution of a foreign patent application should remain inadmissible for the purposes of construing Canadian patent claims. However, the Court held that such “extraordinary circumstances” existed in the present case:
Extraordinary circumstances arise where, as in this case, the patentee acknowledges that the claims have been amended to be substantially the same as claims submitted in another jurisdiction, and the patentee admits that the amendments have limited the scope of the claims in order to make the claims novel and non-obvious. In these circumstances, the Court should be able to refer to the foreign prosecution history for the limited purpose of purposively construing the Canadian Claims.
The Court suggested that ignoring the reference to the U.S. prosecution history and the restrictions made to claims to overcome novelty and obviousness objections that were then incorporated into the Canadian claims during prosecution would emasculate the intent and effect of Section 53.1.
Impact on Summary Judgment
Ultimately, the Court granted summary judgment to the Defendant based on the Court’s construction of the asserted claims and its finding that the Defendant’s flax roasting process did not include heating oil seed “in a stream of air” and an “insulated roasting chamber or tower”. The Court determined that these elements were essential, based at least in part on the foreign prosecution history evidence submitted by the Defendant. However, the Court also held that the Defendant’s process could not constitute heating the oil seed “in a stream of air”, regardless of the foreign prosecution history. In this respect, the Court’s finding on admissibility of the foreign prosecution history might be argued to be obiter.
Canmar Foods is also noteworthy as a rare example of a Court granting summary judgment in a patent infringement action in Canada. In previous cases, the Courts have been hesitant to grant summary judgment since most claim construction and infringement/validity analyses require expert evidence and resolution of credibility issues. In the present case, the Court found that no expert evidence was required to purposively construe the claims.
The first judicial interpretation of Section 53.1 in Canmar Foods suggests that, notwithstanding the clear language of the provision, in certain “extraordinary” circumstances foreign prosecution histories may be admissible for the purposes of claim construction. The Court in Canmar Foods found that the patentee in that case had specifically referred to the claims submitted to the USPTO, and admitted that the amendments to claims in the Canadian patent limited the scope of the claims in order to make the claims novel and non-obvious.
The Plaintiff may appeal this decision, as of right.