May 11, 2020
In ViiV Healthcare Company v. Gilead Sciences Canada, Inc., 2020 FC 486, the Federal Court heard a motion for summary trial brought by Gilead Sciences Canada, Inc. (“Gilead”), in the context of a broader action commenced by Viiv Healthcare Company (and affiliated parties) (“Viiv”), in which Viiv alleged that Gilead had infringed Viiv’s patent for compounds possessing inhibitory activity against HIV (the “282 Patent”).
The summary trial focused on whether bictegravir sodium, one of the medicinal components in Gilead’s BIKTARVY product, infringed the 282 Patent.
The Court made findings about claim construction that led it to conclude that the 282 Patent was not infringed. As a result, Viiv’s action was dismissed.
Discretion to Hear a Summary Trial
According to Rule 216(6) of the Federal Court Rules, if 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. Furthermore, under Rule 213(1), summary trials need not be reserved for cases that will result in the determination of every issue. The Court has discretion to look at one or more issues and determine whether it is appropriate to deal with them by way of summary trial.
In seeking to dismiss Gilead’s motion, Viiv submitted that:
Gilead provided insufficient expert opinion evidence; and
Summary trial is inappropriate because it will result in “litigating in slices”.
The Court rejected Viiv’s arguments. Since each party had five expert witnesses, there was no lack of expert evidence.
Further, the Court held that, regardless of the outcome, conducting a summary trial was the most efficient way to proceed. If the Court were to find that bictegravir does not infringe the 282 Patent, Viiv’s action would be dismissed in its entirety. Conversely, if the Court were to find that bictegravir does infringe the 282 Patent, disposition of the claim construction issue would provide greater certainty and clarity for a trial of the remaining issues.
The Court reaffirmed that claim construction is a case-specific exercise. The Court also emphasized that “[a]part from the patent specification, the only evidence the Court should consider to inform its analysis of the claims is evidence of how the POSITA [person having ordinary skill in the art] would understand the claims in light of his or her relevant CGK [common general knowledge] in the context of the specification as a whole”.
The sole issue was whether the POSITA would have understood Ring A, as an “optionally substituted heterocycle,” to include bridged bicyclic rings. Recourse to the disclosure was necessary to “understand the meaning given to these words by the inventors”. Viiv tried to argue that the Court should look to the abstract to aid claim construction; however, the Court rejected that approach.
The Court ultimately found that:
Bridged ring structures are never mentioned in the patent. While the POSITA would be aware of bridged bicyclic structures as part of their CGK, 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.
The term “optionally substituted heterocycle”, as used in the claims, was found to be specific to particular chemical structures which excluded the structure found in Gilead’s bictegravir sodium, which meant that Gilead did not infringe the 282 Patent.
Authors: Larissa Fulop and Sasha Engel Hercz