Invalidity Arguments May Be Raised on Appeal as a Defence to Patent Infringement Without a Cross-Appeal
Johnson & Johnson Inc.  v. Boston Scientific Ltd. 2009 FCA 155 (Sharlow, J.A.)

May 14, 2009

Ronald G. Slaght, Q.C. and Marguerite Ethier for the Appellant, Johnson & Johnson Inc. (“J&J”)
David M. Reive for the Respondent, Boston Scientific Inc. (“Boston Scientific”)

This was a motion brought by J&J seeking an order to strike certain paragraphs of Boston Scientific’s responding memorandum of fact and law in the appeal, or alternatively an order granting J&J leave to file a reply memorandum.

In the appeal, J&J had appealed the dismissal of its infringement claim in relation to the Canadian Patent No. 1,281,505 (“‘505 Patent”). Boston Scientific had not cross-appealed the dismissal of its claim for a declaration that the ‘505 Patent was invalid.

Boston Scientific’s memorandum of fact and law included assertions that the infringement claim in relation to the ‘505 Patent was correctly dismissed because the ‘505 patent was invalid for anticipation and obviousness. J&J argued that in these paragraphs, Boston Scientific attempted to raise issues that cannot be raised in the appeal.

The Federal Court of Appeal considered whether it was open to Boston Scientific to argue for a determination that the ‘505 Patent was invalid without seeking a declaration to that effect. The Federal Court of Appeal held it could as it could have raised an invalidity argument at trial simply as a defence to a claim for infringement without seeking a declaration of invalidity.

J&J also submitted alternative arguments in support of precluding Boston Scientific from arguing anticipation and obviousness on appeal. With respect to anticipation, J&J submitted that Boston Scientific’s anticipation argument should be precluded for being clearly without merit. The Federal Court of Appeal refused to evaluate the merits of Boston Scientific’s anticipation argument on the motion and therefore dismissed this submission.

With respect to obviousness, the Federal Court of Appeal declined precluding Boston Scientific from making obviousness arguments based on the 1980 Monograph. Although Boston Scientific did not base its obviousness argument on the 1980 Monograph at trial, it was only during closing arguments that J&J took the position for the first time that the date of invention could be later that the earliest possible date of 1978. The trial judge found that the date of invention was 1983, which would have permitted Boston Scientific to rely on the 1980 Monograph in support of its obviousness argument. As a result, the Federal Court of Appeal questioned J&J’s assertion that it decided not to put expert evidence forward to contradict the theory that the ‘505 Patent was obvious based on the 1980 Monograph solely because of how Boston Scientific argued its case. The Federal Court of Appeal decided that in view of the limited record before it the propriety of Boston Scientific’s obviousness argument based on the 1980 Monograph should be deferred to the panel hearing the appeal.

In view of the above, the Federal Court of Appeal dismissed the motion to strike portions of Boston Scientific’s memorandum of fact and law, but granted J&J leave to file a memorandum of fact and law in reply.

By: Christopher Heer, Bennett Jones LLP