Date: 20090514
Docket: A-264-08
Citation: 2009 FCA 155
Present: SHARLOW
J.A.
BETWEEN:
JOHNSON & JOHNSON INC.,
EXPANDABLE GRAFTS PARTNERSHIP
and CORDIS CORPORATION
Appellants
and
BOSTON SCIENTIFIC LTD./BOSTON
SCIENTIFIQUE LTÉE
Respondent
REASONS FOR ORDER
SHARLOW J.A.
[1]
The
appellants (collectively “J&J”) seek an order striking certain paragraphs
of the memorandum of fact and law of the respondent (“Boston Scientific”), or
alternatively an order granting J&J leave to file a reply memorandum. They
argue that in the impugned paragraphs, Boston Scientific is attempting to raise
issues that cannot be raised on the appeal.
[2]
A
preliminary point to be determined on this motion is whether consideration
should be given to an affidavit included with the written representations filed
by J&J pursuant to Rule 369(3) (Federal Courts Rules, SOR 98/106) in
reply to the motion record filed by Boston Scientific in response to J&J’s
motion. I am satisfied that in the unusual circumstances of this case, the
affidavit should be accepted for filing because it provides useful information
about the manner in which the trial was conducted. I have given no weight to the
portions of the affidavit that describe the affiant’s reactions to statements
made in Boston Scientific memorandum of fact and law.
[3]
This case
involves an action by J&J against Boston Scientific for damages for the
infringement of two patents, Canadian Patents No. 1,281, 505 and 1,330,186.
Boston Scientific filed a defence and also counterclaimed for a declaration
that both patents are invalid. In a judgment dated April 30, 2008, Justice
Layden-Stevenson dismissed the action of J&J for infringement, dismissed
the counterclaim with respect to the 505 patent, allowed the counterclaim with
respect to the 186 patent, and made a declaration that the 186 patent is
invalid for lack of inventiveness.
[4]
There is
no appeal with respect to the 186 patent. J&J has appealed the dismissal of
its infringement action in relation to the 505 patent. Boston Scientific has
not cross-appealed the dismissal of its claim for a declaration that the 505
patent is invalid. The 505 patent expired before the trial judgment was issued.
[5]
The
foundation of the arguments made in J&J’s memorandum of fact and law on
appeal is that the judgment is based on an incorrect construction of the 505
patent. Boston Scientific’s memorandum of fact and law answers that issue, and
also asserts that the infringement claim in relation to the 505 patent was
correctly dismissed because the 505 patent is invalid for anticipation and
obviousness. The arguments of Boston Scientific dealing with anticipation and
obviousness are found in paragraphs 8, 30-32 and79-93. Those are the paragraphs
that J&J wishes to be struck. In these reasons I will refer to those
paragraphs as the “invalidity argument”.
[6]
J&J submits
that the invalidity argument should be struck because Boston Scientific
unsuccessfully sought a declaration of invalidity at trial, and cannot now seek
such a declaration without having cross-appealed the judgment dismissing its claim
for a declaration of invalidity. I agree that if Boston Scientific were still
seeking a declaration that the 505 patent is invalid, it could do so only by
cross-appealing the dismissal of its counter-claim. However, Boston Scientific
is no longer seeking such a declaration, for the practical reason that the 505
patent has expired.
[7]
The
question is whether it is open to Boston Scientific to argue for a determination
that the 505 patent is invalid, without seeking a declaration to that
effect? In my view, the answer is yes. It is clear that Boston Scientific could
have raised an invalidity argument at trial simply as a defence to a claim of
infringement without seeking a declaration of invalidity. In my view, the fact
that Boston Scientific sought but failed to obtain such a declaration at trial
does not preclude it from raising the invalidity argument as one answer to
J&J’s arguments on appeal that its infringement claim should have succeeded.
[8]
J&J
makes two alternative arguments in support of its proposition that Boston
Scientific should be precluded from arguing anticipation and obviousness on
appeal. With respect to anticipation, J&J says that Boston Scientific’s
argument is so clearly without merit that J&J should not be permitted to
make it. I cannot accept this argument. I am not prepared at this point to
determine the merits of Boston Scientific’s anticipation argument.
[9]
With
respect to obviousness, Boston Scientific is arguing on appeal that the 505
patent is obvious in light of a certain publication referred to as the “1980
Monograph”. Boston Scientific concedes that it did not rely on that publication
at trial in support of its obviousness argument. That is because at trial,
Boston Scientific based its obviousness argument on the premise that the date
of invention was 1978, which limited Boston Scientific’s obviousness argument
to a 1972 patent (the “Ersek patent”). The discovery question cited by Boston
Scientific on this point asked J&J’s representative for the earliest
invention date, and the response was a date in 1978. I was not referred to any
evidence in which any witness for J&J was asked whether any later invention
date would or could be asserted. In any event, for the first time in closing
argument, J&J took the position that the date of invention could be as late
as 1985. Justice Layden-Stevenson found that the date of invention was 1983. If
that conclusion stands, then it would have been open to Boston Scientific to
rely on the 1980 Monograph in support of its obviousness argument.
[10]
J&J argues
that it had expert evidence to contradict the theory that the 505 patent was
obvious based on the 1980 Monograph, but it did not put that evidence on the
record because Boston Scientific did not base its obviousness argument on the
1980 Monograph. J&J argues that, for this reason, it would be prejudiced
if Boston Scientific makes this particular obviousness argument for the first
time on appeal. I note, however, that it was only at the close of trial that
J&J argued for the first time that the date of invention could be later
than the earliest possible date of 1978. It seems to me unlikely that J&J
did not and could not have appreciated that the 1980 Monograph would be
relevant to the issue of obviousness if its publication date was two years or
more prior to the date of invention as finally determined at trial. For that
reason, I question the assertion of J&J that its decision not to put all of
its obviousness evidence on the record was solely the result of the manner in
which Boston Scientific argued its case.
[11]
In my
view, the limited record before me does not justify an order precluding Boston
Scientific from making its obviousness argument based on the 1980 Monograph.
For that reason, I accept the suggestion of Boston Scientific that the
propriety of this argument should be deferred to the panel hearing the appeal.
[12]
For these
reasons, the motion to strike portions of Boston Scientific’s memorandum of
fact and law will be dismissed. To ensure that the panel hearing the appeal has
a complete picture of the legal arguments, I will grant J&J leave to file a
memorandum of fact and law in reply.
“K.
Sharlow”
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