Consolboard Inc v MacMillan Bloedel (Sask) Ltd, [1981] 1 SCR 504 [Consolboard] Consolboard involved a claim that referred to other claims in the alternative. One of the alternatives referred to a valid claim and was given effect separate from the alternatives that referred to invalid claims. Note that the version of the Patent Act that was applied in Consolboard (the Patent Act, R.S.C. 1970, c. P-4) includes what is now section 58 and that, since Consolboard, the Patent Act has been amended to introduce subsection 27(5), which expressly provides, for greater certainty, that each alternative is a separate claim for particular prescribed purposes.
The claim that referred to other claims read as follows:
10. A consolidated structure as claimed in claims 7, 8 or 9, in which the tapered ends of the wafers are ragged.
[Emphasis added. p. 525]
Claim 7 was valid, but claims 8 and 9 were invalid. Claim 10 was given effect in so far as it included claim 7.
I would declare that claim 2 of Canadian Letters Patent 569,813 and claim 7 and claim 10 (in so far as claim 10 includes claim 7) of Canadian Letters Patent 565,618 are valid. [p. 538.]
GD Searle & Co v Novopharm Ltd, 2007 FC 81, rev’d 2007 FCA 173 [GD Searle] GD Searle also dealt with a claim that was in the alternative and the alternatives referred to other claims. The claim read as follows:
8. A pharmaceutical composition for treating inflammation or an inflammation — associated disorder comprising a therapeutically-effective amount of a compound and a pharmaceutically-acceptable carrier or diluent, said compound selected from compounds according to any of Claims 1-7.
[Emphasis added.]
The patentee sought to assert the claim only to the extent that it relied on claim 4. Justice Hughes noted that the claim wording was comparable to that found in Consolboard. He construed the claim to refer to the alternatives separately and concluded that the claim could be construed to refer to claim 4 only.
[29] An issue arises as to the meaning of the words any of claims 1-7
. Does this phrase include all compounds in those claims or is it simply a shorthand way of referring to each claim separately instead of having many claims, one referring to claim 1, the next to claim 2 and so forth? Subsection 27(5) of the Patent Act post-October 1, 1996 (this patent was granted in 1999) provides:
(5) For greater certainty, where a claim defines the subject matter of an invention in the alternative, each alternative is a separate claim for the purposes of sections 2, 28.1 to 28.3 and 78.3.
[French version omitted.]
[30] A claim very similar in wording to claim 8 at issue here was considered by this Court, and ultimately the Supreme Court of Canada, in Consolboard Inc. v. MacMillan Bloedel (Sask.), [1981] 1 S.C.R. 504. In Consolboard claim 16 of the patent 565, 618 read a consolidated structure as claimed in claims 7, 8 or 9 in which the tapered ends of the wafers are ragged
. [Note: claim 16
clearly is a typo for claim 10
.] Claims 8 and 9 were held to be invalid, only claim 7 was valid. The Federal Court and ultimately the Supreme Court held claim 10 to be valid as far as it includes claim 7.
[31] By way of contrast, this Court in Abbott Laboratories v. Canada, (2005), 45 C.P.R. (4th) 81, held to be invalid a claim where ingredients of a composition were selected from a group consisting of (a number of individually named compounds)
. It was found on the evidence that some of those compounds did not have the requisite utility. I find the Abbott claims to be different from claim 8 at issue here. In Abbott the claim stated, in effect, that all members of the group were useful whereas at least some were found on the evidence not to be.
[32] Here, I construe claim 8, for purposes of these proceedings, to refer to claims 1 to 7 separately, thus can be construed to refer to claim 4 only. Claim 8 therefore is directed to the use of a drug containing an appropriate quantity of celecoxib for treatment of inflammation or an inflammation related disorder.
Abbott Laboratories v Canada (Health), 2005 FC 1332, aff’d 2007 FCA 153 This case involved a claim that used Markush language.
[47] Claim 1 and Claim 15 are structured similarly opening with … a solvent selected from the group consisting of …
and with and
as the penultimate word of the claim.
[48] … I am not satisfied that there are alternative claims.
However, Justice Phelan considered the effect that subsection 27(5) of the Patent Act would have if the claims used alternative claim language. He found it significant that subsection 27(5) did not include a reference to section 58 of the Patent Act that allows a court to sever an invalid claim. He reasoned that each alternative must meet the test for patentability. If one alternative is not patentable, the whole claim fails.
[49] Even if Dr. Cima’s answer is to the effect urged by Abbott that there are alternate claims in Claim 1 and 15, s. 27(5) cannot be interpreted in the manner argued by Abbott.
[50] The specific wording of s. 27(5) limits its application to three sections of the Patent Act, evidencing a legislative intention to circumscribe the operation of the section. S. 27(5) did not say something to the effect of For all purposes …
.
[51] The sections of the Patent Act to which s. 27(5) refers are (a) section 2 — the definition provision; (b) section 28.1 — the claim date provision; (c) section 28.2 — the non-prior disclosure provision; (d) section 28.3 — the non-obvious provision; and (e) section 78.3 — transitional provision related to s. 43. Therefore, the application of s. 27(5) is very limited within the operation of the Patent Act itself.
[52] S. 27(5) is part of the provisions under the heading Application for Patents
. The section requires that if there are alternative claims, each alternative meet the test for patentability — novelty, utility and inventiveness. Failure to establish that each alternative meets the test for patentability would result in the alternative being invalid as well as the whole of the claim.
[53] S. 27(5) does not direct that alternatives in a claim constitute a separate claim for purposes of either s. 27 and 58. It is particularly significant that s. 58 is not included by reference in s. 27(5) because s. 58 allows a court to sever an invalid claim from a patent and allow the remainder of the patent to survive.
[54] The conflicting interpretations result in Abbott arguing that so long as one alternative in a claim is valid, the whole claim is saved and Apotex saying that if one alternative is proven not to be patentable, the whole claim fails.
[55] Abbott makes this argument on the effect of s. 27(5) without reliance on any direct authority in support. One would have thought that if s. 27(5) had the scope argued by Abbott, it would have been the subject of at least some learned writing if not actual decisions of this Court.
[56] Given that alternative claims can result in a vast number of claims and the general adverse consequences of overclaiming, I interpret the application of s. 27(5) more narrowly than Apotex. It 2005 FC 1332 applies only to the named provisions and is principally an administrative provision for purposes of a patent application.
[57] Therefore, even if the claim (1 or 15) is in the alternative, if Apotex establishes that an alternative is not patentable, the whole claim fails — at least for purposes of an NOC.
Schering-Plough Canada Inc v Pharmascience Inc, 2009 FC 1128 [Schering-Plough] In Schering-Plough, the Court considered the validity of the following claim, which was in the alternative:
9. The pharmaceutical composition of claim 1 wherein the composition is present in one of tablet or capsule form.
[Emphasis added.]
The argument was made that subsection 27(5) of the Patent Act is a saving provision — if one of the alternatives (i.e. tablet or capsule form) is invalid, the valid alternative remains. Justice Snider rejected this argument and instead accepted the submission that if one alternative in a claim is invalid, the entire claim fails.
[89] Schering argues that Claim 9 defines the subject matter of the invention in the alternative; the claim describes the composition as being in one of tablet or capsule form
. Thus, Schering submits, even if the capsule referred to in Claim 9 is anticipated by Example 8 of the Aberg Patent, s. 27(5) applies to treat the tablet form of Claim 9 as a separate claim. In other words, Schering urges the Court to consider tablets and capsules in Claim 9 separately as regards to their novelty, non obviousness and utility. In Schering’s view, s. 27 (5) is a remedial provision where, if the claim is truly a definition of the invention as an alternative, the invalidity of one should not cause the invalidity of the others. Pharmascience submits that s. 27(5) has no application in this case; if one alternative in a claim is invalid, the entire claim fails.
[90] I acknowledge that, on its face, s. 27(5) applies to s. 28.2, which provision, as stated above, is the source of the requirement that claims not be anticipated by prior art. Nevertheless, I prefer Pharmascience’s position. Section 27(5) does not save claim 9, if one of the alternatives in the claim is otherwise invalid for anticipation.