On February 12 2018 Justice Manson of the Federal Court found certain claims of Canadian Patent 2,494,540 invalid on the basis of obviousness and anticipation.(1) The patent related to a chip for measuring the osmolarity of a sample of bodily fluid, including tear film. The plaintiff (Tearlab Corporation) and the defendant (I-Med Pharma) marketed competing medical devices for measuring tear film osmolarity. The court agreed with the claim construction urged by the plaintiffs, finding that the claims encompassed both in vivo and ex vivo applications of the invention. As a result, I-Med Pharma's medical device – which measured osmolarity in vivo – fell within the scope of the claims. However, as a result of this construction, the court also found that the claims were anticipated by prior art that disclosed in vivo devices for measuring osmolarity, including of tear film. Further, the court found that it was obvious to combine prior art to "create a device that can be used both in vivo and ex vivo, and includes a separate or onboard processing unit, to measure osmolarity of tear fluid". The court dismissed the attacks of inutility and insufficiency. The plaintiffs have appealed.
For further information on this topic please contact Brandon Heard at Smart & Biggar/Fetherstonhaugh by telephone (+1 416 593 5514) or email ([email protected]). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.
Endnotes
(1) Regents of the University of California v I-MED Pharma Inc, 2018 FC 164.
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