Despite the Supreme Court’s call in Hryniak v. Mauldin, 2014 SCC 23 for a culture shift towards the timely and efficacious resolution of litigation through the use of summary procedures where appropriate, the Canadian Federal Court (the Court) has historically been reluctant to resolve patent infringement actions via summary procedures.   That view could be changing with what may be the first patent infringement case decided by summary trial in Viiv Healthcare Company v Gilead Sciences Canada Inc, 2020 FC 486

This action concerned the plaintiffs’ allegations that bictegravir, a component of Gilead’s anti-HIV product BIKTARVY, infringed Canadian Patent No. 2,606,282.  Gilead’s summary trial hinged on the construction of a single term, “Ring A”, and, once construed, to determine whether bictegravir falls within the scope of the asserted claims containing that element.  While the proceeding was at an early stage in that documentary discovery had not yet been completed and examinations for discovery had not been held, the Court was provided with extensive expert evidence on the construction of “Ring A”. 

In dismissing the plaintiffs’ strenuous objections to the propriety of the summary trial procedure, the Court noted that:

  • the proceeding was at an early stage and it was not a case where the parties’ efforts would be better spent preparing for an imminent trial;
  • the Court was provided with extensive expert evidence and record on the claim construction issue; and
  • regardless of the outcome, the summary trial was an efficient procedure – if Gilead was successful, the action would be dismissed.  If Gilead was unsuccessful, the Court’s determination on the construction of the patent would be used at the trial of all issues.

Gilead was ultimately successful in having the plaintiffs’ action dismissed on the basis that bictegravir did not fall within the scope of the asserted claims based on the construction of “Ring A”.   More generally, the Court provided a blueprint and highlighted factors for parties considering summary trials in patent infringement actions.

Summary By: Matthew Frontini


20 04 22

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