Date:
20070411
Docket:
T-262-06
Citation:
2007FC376
Ottawa, Ontario, Wednesday, this 11th day of
April 2007
PRESENT: MADAM PROTHONOTARY MIREILLE TABIB
BETWEEN:
GENENCOR INTERNATIONAL, INC.
Appellant
-
and -
Proposed Intervenor
REASONS FOR ORDER AND ORDER
[1]
Novozymes A/S (“Novozymes”) was denied status as
a Respondent in the present proceeding, an appeal brought by Genencor
International Inc. (“Genencor”) against a decision of the Commission of Patents
to revoke a patent previously issued to Genencor. Novozymes now seeks intervenor
status, pursuant to Rule 109 of the Federal Courts Rules and the Order
of Justice Pinard dated August 24, 2006 (reported as Genencor International,
Inc. v. Commissioner of Patents et al., 2006 FC 1021).
Facts
[2]
The relevant facts and procedural history of
this matter are as follows:
- Canadian Patent 2,093,422 (the ‘422 Patent)
was issued to Genencor on April 3, 2001.
- On April 15, 2004, Novozymes requested a
re-examination of all claims of the ‘422 Patent, pursuant to section 48.1 of
the Patent Act, R.C.S., c. P-4, on the basis that the claims were either
anticipated or obvious in view of several prior art references.
- On September 3, 2004 a re-examination board
convened by the Commissioner of Patents (the “Board”) determined that
substantial new questions had been raised with respect to the patentability of
the subject matter claimed by the ‘422 Patent, citing 5 of the prior art references
cited by Novozymes.
- Both Genencor and Novozymes filed
submissions with the Board in respect of these questions. One of the issues in
Genencor’s appeal concerns whether the Board in fact considered the
representations it received from Novozymes, and if so, whether that was
appropriate.
- On May 9, 2005, the Board made another
determination, to the effect that a substantial new question of patentability
subsisted with respect to a single prior art reference, namely, Canadian Patent
Application 2,082,279 filed by Rasmussen et al. (“Rasmussen”). It requested
further submissions from Genencor on that question.
- Again, both Genencor and Novozymes filed
submissions, and again, there is an issue as to whether Novozymes’ submissions
were and could properly have been considered by the Board.
- On November 16, 2005, the Board determined
that all claims of the ‘422 Patent were anticipated by Rasmussen and
unpatentable; all claims were therefore cancelled.
- On February 14, 2006, Genecor commenced the
within appeal against the Board’s decision, naming as sole respondent the
Commissioner of Patents.
- While the Commissioner filed a notice of
appearance, he indicated, by letter of his counsel dated March 6, 2006, his
current intention not to make representations as to the substantive merits of
the appeal.
- On May 31, 2006, Novozymes filed a motion
for an order that it be added as a party respondent to the appeal, or
subsidiarily, that it be granted leave to intervene therein.
- It is to be noted that Genecor only
discovered, from the materials filed in support of Novozymes’ motion, that
Novozymes had been provided with copies of Genecor’s representations to the
Board and had made representations of its own to the Board. Thus, Genencor’s amendment
to the notice of appeal to add, as grounds of appeal, the impropriety of the
Board receiving and considering submissions from Novozymes on the
re-examination process only came after Novozymes’ motion was made. On that
specific issue, the Commissioner has now taken an adverse position and will be
making submissions on the appeal.
- On July 13, 2006 Prothonotary Morneau
granted Novozymes’ motion to be added as a Respondent, on the basis that
Novozymes had been a party or at least a quasi-party to the re-examination process,
which he construed as a continuous process. He did not need to rule upon the
subsidiary relief sought, that Novozymes be granted leave to intervene, and did
not do so. Genencor appealed.
- On August 24, 2006, Justice Yvon Pinard
reversed the Prothonotary’s decision, finding that Novozymes had been neither a
party nor a quasi-party to the process leading to the decision under appeal.
He gave Novozymes 10 days within which to file a new motion for leave to intervene
if it intended to do so.
- Justice Pinard’s decision has since been
upheld by the Federal Court of Appeal (Novozymes A/S v. Genencor
International Inc. et al., 2007 FCA 129).
Novozymes’ Arguments:
[3]
A common thread runs through, colours and
apparently gives strength to all aspects of Novozymes’ arguments: It is the
contention that the statutory scheme set out in sections 48.1 to 48.5 of the Patent
Act was intended by Parliament to provide a summary procedure for third
parties to seek revocation of some or all claims of an issued patent, similar
or analogous to the summary expungement procedure of section 45 of the Trade
Marks Act (R.S.C. 1985, c. T-13) (for ease of reference, sections 48.1 and
48.5 of the Patent Act are reproduced in appendix to these reasons).
Viewed that way, it would be Parliament’s intention to give to the instigators
of a re-examination, such as Novozymes, an adversarial role in the process and
to recognize their status as persons directly affected by the outcome, not only
of the administrative process, but of any eventual appeal.
[4]
If that view of the purpose and intent of the
procedure outlined in sections 48.1 to 48.5 of the Patent Act were
adopted, it would go a long way in assisting Novozymes to meet most of the
jurisprudential criteria developed to determine whether intervenor status is to
be granted, as they are set out, for example, in Pfizer Canada Inc. v.
Canada, (2001), 15 C.P.R. (4th) 490 (F.C.J.):
- Novozymes could be said to be directly
affected by the outcome, since the process was intended to include it and
protect its interest.
- There would exist a justiciable issue or a
veritable public interest, since the process intended to include third parties
such as Novozymes as participants.
- There would be an apparent lack of any other
reasonable or efficient means to submit the questions to the Court, since the
process intended to remedy the costs, delays and complexities involved in
challenging the validity of a patent in an impeachment action under section 60
of the Patent Act by providing this alternative summary process to third
parties.
- The interest of justice would be better
served by allowing the intervention, as it would give effect to the intention
of Parliament, to afford third parties a summary process for challenging the
validity of patents in a manner similar to section 45 of the Trade Marks Act.
[5]
Novozymes’ interpretation of the purpose and
intent of sections 48.1 and 48.5 of the Patent Act is, however, at odds
with the findings of both Justice Pinard and the Federal Court of Appeal. In
particular, the Court of Appeal confirmed that part of Justice Pinard’s
decision which concluded that the relevant provisions contemplate a two stage
process, of which only the first stage is intended to include participation of
third parties such as Novozymes:
“[7] Re-examination pursuant to sections 48.1 to 48.5
of the Act is a two-step process. Both stages do not involve the same
parties. The first stage involves the filing of a request by a requester
(section 48.1), the establishment of a re-examination board by the Commissioner
in response to this request (section 48.2(1)) and the preliminary decision by
the re-examination board as to whether the request raises a substantial new
question of patentability (sections 48.2(2) to (4)).
[8] The second stage follows the re-examination
board’s determination that a substantial new question of patentability is
raised (section 48.2(4)). The requester is not a party to this second phase of
the process. Only the re-examination board and the patentee are parties to
that phase. Only the patentee is given notice of such determination (section
48.2(4)) and is entitled to make submissions (section 48.2(5)), to propose
amendments to the patent (section 48.3(2)) and to receive a copy of the
certificate (section 48.4(2)). Only the patentee is given a right of appeal
(section 48.5).
[9] Although Novozymes, as the requester, triggered
the re-examination process, it did not and could not participate in the second
stage of the re-examination process.”
[6]
According to this reasoning, Parliament did not
intend third parties instigating a re-examination process to participate in the
re-examination past the point where the Board determines whether substantial
new questions of patentability are raised, and did not intend to give such third
parties a role in a subsequent appeal of the Board’s decision on
re-examination.
[7]
Clearly, Parliament did not intend, as Novozymes
would have it, to provide third parties with a summary process to directly
challenge a patent. Far from being comparable to the summary process
contemplated in s. 45 of the Trade Marks Act, it seems to me that the
re-examination process has far more in common with the examination process
leading to the decision of whether a patent should be granted; both processes
contemplate and allow some input by third parties as to relevant prior art and
publications, but neither contemplate nor permit these third parties to have
the right to appeal the decision resulting from the examination or
re-examination, or to have standing as respondents to an appeal launched by the
applicant or patentee. Counsel for Novozymes could not refer the Court to any
reported case where a third party has sought intervenor status in an appeal
taken by an applicant of the Commissioner of Patent’s decision to refuse a
patent, nor did she suggest that the legislative scheme of the examination
process should militate in favour of facilitating or fostering such
interventions.
[8]
It therefore seems to me that Novozymes’ bid to
intervene in this matter must be assessed on the basis of the particular facts
and circumstances of this appeal, and of the specific contribution Novozymes
proposes to make to the proceeding, unaided by any wider notion of how Parliament
would have intended a role for Novozymes or a means of protecting its interest.
If legislative intent has any bearing on whether leave to intervene should be
granted, then it would seem that the intent was rather to exclude third parties
such as Novozymes than to include them. Such an intention should not be ignored,
or worse, thwarted by the application of the Court’s rules of practice.
Criteria for leave to intervene
[9]
The parties are ad idem that the
following considerations apply to a determination of whether to grant intervenor
status:
“1) Is the proposed intervenor directly affected by the
outcome?
2) Does there exist a justiciable issue and a veritable
public interest?
3) Is there an apparent lack of any other reasonable or
efficient means to submit the question of the Court?
4) Is the position of the proposed intervenor adequately
defended by one of the parties to the case?
5) Are the interests of justice better served by the
intervention of the proposed third party?
6) Can the Court hear and decide the cause on its merits
without the proposed intervenor?”
(See: Pfizer Canada Inc. v. Canada, supra; C.U.P.E. v. Canadian Airlines International Ltd.,
[2000] F.C.J. No. 220 (F.C.A.)).
[10]
Is Novozymes directly affected by the
outcome?
[11]
For the reasons set out above, I discount
Novozymes’ argument to the effect that its involvement in the re-examination
process gives it status as a person “directly affected” by the outcome of this
appeal by analogy to the summary process of s. 45 of the Trade Marks Act.
The Court of Appeal’s decision stands as a conclusive determination that
Parliament’s intention to afford or recognize Novozymes’ interest and
involvement in the process ended when the Board determined that substantial
questions of patentability were raised.
[12]
While there is a dispute engaged between
Genencor and the Commissioner of Patents in this application as to the extent
to which Novozymes’ representations in the second stage of the process were
considered and if so, the effect thereof on the lawfulness of the Board’s
decision, Novozymes has no interest in the determination of that question, in
view of the aforementioned determination that Parliament had not intended its
participation.
[13]
Novozymes’ interest in the outcome is therefore
confined to the interest it may have as the alleged owner of the Rasmussen
application, on the basis of which the Board determined that the patent’s
claims were anticipated. Novozymes submits that such an interest would be
sufficient to give it standing to commence an impeachment action pursuant to s.
60(1) of the Patent Act. That may be the case, even though Genencor
contests this. However, and whatever the merits of Novozymes’ contention that
its interest as owner of the Rasmussen application would be sufficient in an
impeachment action, it remains that Novozymes’ interest is a purely economic
one. Such an interest may be recognized as sufficient for the purpose of s. 60
of the Patent Act, but for the purpose of obtaining intervenor status, a
would-be intervenor must show a direct legal interest, distinct from an
economic interest: Apotex Inc. v. Attorney General of Canada, [1986] 2
F.C. 233.
[14]
Here, the determination as to the patentability
of Genencor’s claims, in the context of this administrative appeal, can have no
determinative effect on any of Novozymes’ legal rights or remedies arising out
of the Rasmussen application. Conversely, allowing that Novozymes has a legal
interest in the administrative determination of the patentability of Genencor’s
claim justifying its intervention on this appeal could lead to troubling issues
and consequences in the event Genencor’s appeal were successful: The appeal
herein is engaged on the limited grounds and evidence included in the
re-examination record; even if Novozymes succeeded in opening this appeal up to
include prior art submitted to the Commissioner of Patent in the initial stages
of the review, it remains a limited enquiry as to anticipation and
obviousness. If it is accepted that the Court’s determination on this appeal
affects or determines Novozymes’ rights, would Novozymes not then be bound, in future
proceedings, by any determination to the effect that the Genencor patent is not
anticipated or rendered obvious by the Rasmussen application or other cited
prior art? Novozymes of course took the position that even if granted leave to
intervene in these proceedings, any adverse decision would not limit its rights
in a subsequent impeachment action. This confirms to me that Novozymes’ legal
interests are not affected by this appeal.
[15]
Does there exist a justiciable issue and a
veritable public interest?
[16]
Genencor appears to concede the existence of a
justiciable issue, but contests the existence of a veritable public interest.
I agree. Novozymes relies on the general statement that there is a public
interest in ensuring that untenable or invalid intellectual property
registrations are not maintained. That may be so and may justify interventions
by some third parties in some circumstances, where the issues to be determined
go to the interpretation of legislation or issues of principle, but Novozymes
has not suggested that any such issues arise in this appeal with respect to the
correctness of the Board’s determination of anticipation. As far as the record
before me suggests, the issues involved in this appeal are fairly common questions
involving the application of known legal principles to the facts of the case.
There is no public interest involved in the subject matter of Novozymes’
proposed intervention.
[17]
Is there an apparent lack of any other
reasonable or efficient means to submit the question to the Court?
[18]
So far as the issue of interest to Novozymes is
concerned, being the patentability of the claims, an impeachment action under
s. 60 of the Patent Act imposes itself as the appropriate vehicle to
submit the question to the Court. Novozymes’ contention that such a process is
too expensive and cumbersome and that intervention is the only means to achieve
a summary process akin to s. 45 of the Trade Marks Act as intended by
Parliament is, for the reasons set out above, rejected.
[19]
Is the position of the proposed intervenor
adequately defended by one of the parties in the case?
[20]
The record shows that the only other party to
this appeal, the Commissioner of Patents, does not intend to defend the
substantive issue of whether the patent claims are anticipated by the Rasmussen
application.
[21]
The Commissioner of Patents has stated that his
decision is based on the principle that it is inappropriate for the
Commissioner to defend his own decision on the merits, as stated in the Federal
Court of Appeal’s decision in Genex Communications Inc. v. Canada (Attorney
General), [2005] F.C.J. No. 1440 (F.C.A.). I am not convinced that the
principle cited applies so absolutely or sweepingly in an appeal such as the
present, nor do I need to make a determination in that respect. Whatever the
reason for the Commissioner’s decision not to defend that question, I am not
convinced that the absence of a defence as to the correctness of the Board’s
decision is a sufficient consideration in this instance to allow Novozymes’
intervention.
[22]
As mentioned above, the re-examination process
set out in sections 48.1 to 48.5 of the Patent Act has much in common
with the patent application examination process under the Patent Act. In
both processes, Parliament appears to have, quite deliberately, contemplated an
appeal process whereby a right of appeal is conferred solely on the
unsuccessful applicant or patentee, without an identifiable respondent other
than the Commissioner of Patents. Accordingly, it is to be presumed that the
Commissioner’s role as a Respondent, as limited or restricted as it may be by
the principles in Genex, is nonetheless sufficient, combined with the
applicable standards of appellate review and the reasons articulated in the
decision under appeal, to stand as adequate defence to the substantive merits
of the decision.
[23]
I also note that in appeals of the refusal of a
patent, the Commissioner of Patents has, in the past, taken vigorous defensive
positions where he judged that the appeal raised matters of public importance:
See for example: Monsanto Co. v. Commissioner of Patents, (1979), 42
C.P.R. (2d) 161, Ciba-Geigy AG v. Commissioner of Patents, (1989), 25
C.P.R. (3d) 257 and Commissioner of Patents v. President and Fellows of
Harvard College, [2002] 4 S.C.R. 45. Accordingly, I find that the fact
that there will be no party on the appeal to actively defend the merits of the
Board’s decision does not constitute a factor justifying granting leave to
Novozymes to intervene in this case.
[24]
Novozymes further argues that, were it granted
leave to intervene, it would not merely support the correctness of the Board’s
underlying decision, but would also add to the record before the Court
additional portions of the record of the re-examination (which it claims
Genencor intentionally omitted) concerning other prior art submitted by
Novozymes. Novozymes submits that this other evidence is relevant and
necessary to the appeal, in that it would allow the Court to fulfil its role on
appeal, not merely to review the correctness of the reasons given by the Board,
but also to assess whether the ultimate conclusion reached by the Board would
in any event have been justified and correct based on the other prior art and
evidence before it.
[25]
There are several flaws in Novozymes’ argument.
First, it incorrectly assumes that this additional evidence was considered but
not ruled upon by the Board in reaching its decision, and that it can be used
to support or justify the Board’s decision on other grounds. The record before
me shows clearly – whether the Board was procedurally permitted to do so or not
– that the Board effectively rendered its decision in two stages, and that it
in fact concluded that the other prior art did not render the claims
unpatentable.
[26]
The Board’s initial decision on the first stage
of the re-examination process, dated September 3, 2004, clearly lists two
applications (including Rasmussen) and three publications as prior art,
explains why that prior art raises a substantial new question of obviousness
and seeks Genencor’s comments. Genencor replied, addressing all prior art. On
May 9, 2005, referring to Genecor’s comments, the Board advises that it “has
determined that the request still raises a substantial new question
of patentability”. It then set out only the Rasmussen application as prior
art, discusses why that prior art raises substantial questions, and seeks
Genencor’s comments. Clearly, the Board’s letter constitutes a determination
that it has been satisfied by Genencor’s earlier representations respecting the
other prior art, and that the only prior art which still raises a substantial
questions is Rasmussen. On November 5, 2005, the Board issued the decision
under appeal, again clearly listing and discussing only, as prior art brought
to the Board’s attention and raising a substantial question, the Rasmussen
application.
[27]
It seems to me that the decision under appeal is
fully contained in the November 16, 2005 decision, considering only
unpatentability on the basis of anticipation by Rasmussen. A decision had
already been made, in May 2005, that the patent would not be cancelled on the
basis of the other prior art cited by Novozymes, as that prior art did not
anticipate or render obvious the claims of the patent. Thus, that other prior
art does not, in my view, form part of the record of the decision, and even as
an intervenor, Novozymes could not introduce it in the record of this appeal.
[28]
Furthermore, to allow Novozymes to intervene so
as to introduce that previously discounted prior art as alternative grounds to
support the Board’s ultimate conclusion would be tantamount to allowing
Novozymes to institute a cross-appeal from the Board’s determination that
certain prior art submitted does not warrant the cancellation of the patent.
It would give Novozymes, by way of leave to intervene, the very rights that the
legislative scheme expressly denies it.
[29]
Finally, even if it were arguable that the other
prior art references formed part of the record and could be considered by this
Court on appeal, the Commissioner of Patents, as respondent, would be the most
appropriate person to raise and defend this argument, even under the strictures
of the Genex principles. The Commissioner surely has a clear public
interest duty in ensuring that the record placed before the Court on appeal is
complete and accurate and the Commissioner is the person best placed to do so.
The record before me shows that the Commissioner of Patents reviewed and
approved the content of the appeal book prepared by Genencor, clearly
indicating that it considers the record to be complete.
[30]
Are the interests of justice better served by
the intervention of the proposed third party?
[31]
The only argument submitted by Novozymes on this
criteria is based on comments made by the Court in Canadian Schenley
Distilleries Ltd. v. Canada’s Manitoba Distillery Ltd., (1975), 25 C.P.R.
(2d) 1, and Bally Schuhfabriken AG/Bally’s Shoe Factories Ltd. v. Big Blue
Jeans Ltd./Ltée, (1992), 41 C.P.R. (3d) 205, about the difficulties faced
by a Judge on appeal of a decision where no party appears to defend its
merits. While the Court’s work may be made easier by the intervention of an
active respondent, Novozymes’ counsel has not drawn my attention to any case
where the desirability of having an actively involved respondent was considered
as justifying granting intervenor status.
[32]
Furthermore, and as discussed above, it appears
that Parliament judged the Commissioner of Patents to be a sufficient
opposition to an appeal of a re-examination decision. As was noted in Apotex
Inc. v. Canada (A.G.), supra, the Rules of practice of the Court should not
be applied so as to create a precedent whereby intervention by third parties
will almost automatically be required in a process where Parliament has not
contemplated their intervention:
“[11]
(…)Applying this to the circumstances of the present case, giving Pfizer the
status to intervene as a defendant might well require a general conclusion that
the Minister of National Health and Welfare cannot adequately represent the
owner of any proprietary interest in pharmaceutical products when an
application is before the Minister for the licensing of a similar generic
product, and that in all such cases the pharmaceutical firm having proprietary
interests in the original product should be made a party-defendant in any
application by another party for the licensing of a similar or competing
product. As already stated, the statute does not so require, and the Court
should not create new law by application of a rule of practice to require that
such a party be added as a defendant. While Pfizer of course argues that it is
only seeking to intervene on the facts of this particular case, in which it
contends that the Minister has not properly applied the Regulations in
considering Apotex's application, a finding favourable to Pfizer on the present
motion would create a precedent which would likely lead to a multitude of
similar applications in almost every case where a competitor seeks a notice of
compliance to market as a generic drug a product similar to that of the
originator of it.”
[33]
I therefore find that the interest of justice
will not be served by granting Novozymes leave to intervene.
[34]
Can the Court hear and decide the cause on
its merits without the proposed intervenor?
[35]
I have no hesitation in answering this last
question in the affirmative. As mentioned above, while the Court’s work would
be made easier by the active involvement of a respondent, such an involvement
is not necessary for the Court to fulfil its role in this matter.
Conclusion
[36]
I therefore am not satisfied that Novozymes has
established sufficient grounds to be granted intervenor status in this matter.
ORDER
IT
IS ORDERED THAT:
1) Novozymes’ motion is
dismissed, with costs to Genencor.
“Mireille Tabib”
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