In three recent decisions, released in July and August, the Federal Court addressed questions concerning inventors and the “invention story” during Canadian patent litigation. The Court found that: (i) a patentee has no duty to facilitate inventor discovery; (ii) patentee’s counsel can object to questions during an inventor examination; and (iii) a patent challenger must serve its evidence on invalidity first, before the patentee serves its evidence of the “invention story”.
All three decisions arose during proceedings commenced pursuant to subsection 6(1) of the Patented Medicines (Notice of Compliance) Regulations (the Regulations). The Plaintiffs (Boehringer companies) allege that the Defendants (generic pharmaceutical companies) would infringe six Canadian patents if allowed to market generic empagliflozin products. In defence, the Defendants allege that the patents are invalid.
Pursuant to Rule 237(4) of the Federal Courts Rules (the Rules), where a party to an action is an assignee, the assignor may also be examined for discovery. On this basis, the Federal Court has long held that a party challenging a patent’s validity is entitled to examine for discovery those inventors who have assigned their patent rights to the patentee. Typically, inventors assign their rights while employed by the patentee; they may or may not still be employees when the patent is challenged years later.
Patentee has no duty to facilitate inventor discovery
On July 4, 2023, in 2023 FC 943, the Court found that:
- A patentee does not have a duty to facilitate an inventor discovery examination, even if the inventor is currently employed by the patentee;
- Unless an inventor agrees to an examination for discovery, a patent challenger will need to compel them to attend one using the means provided by the Rules; and
- If the inventor does not reside in Canada, the patent challenger will typically seek an Order for a letter of request to local authorities to compel the inventor to attend an examination.
The Court made these findings while dismissing the Defendant’s motion for an Order compelling the Plaintiffs to make available for discovery a number of inventor employees. The Court concluded that there was no basis for such an Order in the Rules, the Regulations, or the jurisprudence.
Patentee’s counsel can object during an inventor discovery examination
On August 30, 2023, in 2023 FC 1175, the Court found that patentee’s counsel can attend the discovery examination of an inventor and object to questions, even if they had not been retained by the inventor.
The Court made this finding while dismissing a motion for an Order compelling the Plaintiffs to answer questions refused by its counsel during inventor examinations. The Court held that a party (e.g., the Plaintiffs) is a “person” under Rule 242 and so can object to improper questions at a discovery examination. However, as some of the refused questions at issue had been proper, the Court ordered the Plaintiffs to make “best efforts” to try to obtain answers to those questions from the inventors.
Patent challenger serves its evidence first
On August 25, 2023, in 2023 FC 1149, the Court refused to order the Plaintiffs to serve fact evidence pertaining to the “invention story” of their patents, including any inventor evidence, before the Defendants served their expert evidence on invalidity.
In the ordinary course, a patent challenger adduces its invalidity evidence first and then the patentee responds, including with inventor evidence. The Court dismissed the Defendants’ motions as, in the circumstances, neither fairness nor efficiency favoured varying the ordinary course of exchanging evidence. The Court reasoned that the role of the discovery process was to allow the Defendants to understand the Plaintiffs’ documents, facts and positions, and could include examining the inventors. The Court also found that until the Defendants served their expert reports, the Plaintiffs would not know the substance of the invalidity case and therefore what evidence about the “invention story” to lead.
Full citations with links:
Boehringer Ingelheim Canada Ltd. v. Jamp Pharma Corporation, 2023 FC 943
Boehringer Ingelheim (Canada) Ltd. v. Sandoz Canada Inc., 2023 FC 1149
Boehringer Ingelheim (Canada) Ltd. v. Sandoz Canada Inc., 2023 FC 1175