In February 2018, the Plaintiffs, ViiV Healthcare Company, Shionogi & Co Ltd, and ViiV Healthcare ULC filed a lawsuit against the Defendant, Gilead Sciences Canada, Inc for infringement of Canadian Patent No. 2,606,282 by making, using, selling, or offering to sell bictegravir as a component in its BIKTARVY product. Gilead denied all allegations of infringement, and counterclaimed alleging that the 282 Patent was invalid.
In August 2019, Gilead filed a Notice of Motion for summary trial. Gilead was seeking a declaration of non-infringement on the basis that because bictegravir includes a bridged ring at the Ring A position, and claims 1, 11, and 16 of the 282 Patent only encompass fused or spiro rings, bictegravir does not fall within the scope of these claims.
In adjudicating the motion, Justice Manson addressed three specific issues:
- Whether summary trial is appropriate;
- The proper construction of Ring A as defined in claims 1, 11, and 16 of the 282 Patent; and
- Whether, based on that construction, bictegravir falls within the scope of claims 1, 11, and 16 of the 282 Patent.
On the first issue, Justice Manson held that given the narrow and well-defined issues before the Court, Gilead’s motion for summary trial was appropriate. In doing so, he restated the following important principles concerning motions for summary trial,
- Summary trial is not reserved for cases where the procedure will result in the determination of every issue. The Court may look at one or more issues and determine whether it is appropriate to deal with those issues by summary trial.
- In determining whether a motion for summary trial is appropriate, judges should consider the factors enumerated by Justice Snider in Wenzel Downhole Tools Ltd v National-Oilwell Canada Ltd, 2010 FC 966, including the complexity and urgency of the matter, the cost of taking the case to trial, the course of the proceedings, whether summary trial will waste time and effort or produce unnecessary complexity, whether the credibility of the deponents is at issue, and whether the motion will result in litigation in slices
- If the Court is satisfied that there is sufficient evidence for adjudication, regardless of the amounts involved, the complexities of the issues and the existence of conflicting evidence, the Court may grant judgment, either generally or on an issue, unless it would be unjust to do so.
On the second issue, Justice Manson held:
While the POSITA [person of ordinary skill in the art] would be aware of bridged bicyclic structures as part of their CGK [common general knowledge], nothing in the patent or the CGK suggests to the POSITA to use bridged bicyclic Ring A structures in the specific application of HIV integrase inhibitors.
In doing so, he restated the following important principles concerning claim construction:
- Patents are to be construed purposively rather than literally.
- In construing the claims, the Court is to look at the entire disclosure and claims to determine the nature of the invention and the methods of its performance, seeking a construction that is reasonable and fair to the patentee and the public.
- The Court is to construe the claims through the eyes of the person of ordinary skill in the art in light of their common general knowledge at the relevant date
- To inform its analysis of the claims, the Court should only consider the patent specification and how the person of ordinary skill in the art would understand the claims in light of their relevant common general knowledge in the context of the specification as a whole.
- Using the disclosure portion of the specification to construe the claims is permissible to assist in understanding the terms used in the claims; unnecessary where the words are plain and unambiguous; and improper to vary the scope or ambit of the claims.
On the final issue, Justice Manson held that because bictegravir includes a bridged ring at the Ring A position, and claims 1, 11, and 16 of the 282 Patent only encompass fused or spiro rings, bictegravir does not fall within the scope of these claims, and the 282 Patent is therefore not infringed. Justice Manson dismissed ViiV’s action for patent infringement.
A copy of the judgement and reasons may be found here.