Montreal advised I-MED Pharma in defence of diagnostic device patent action

Our Montreal office acted for I-MED Pharma Inc. in defence to TearLab Corporation's action for infringement of its patent for a tear osmolarity measuring system. I-MED Pharma successfully asserted that TearLab Corporation’s claim that its patent were allegedly infringed were invalid for obviousness and lack of novelty.   

On June 13, 2019, the Federal Court of Appeal (FCA) upheld the dismissal of TearLab Corporation’s patent infringement action against I-MED. The FCA judge found that the Federal Court judge did not err in concluding that the claims at issue were obvious.

The FCA confirmed the trial judge’s conclusion that by construing the claims of the patent broadly so as to capture the i-Pen® Osmolarity System for the purpose of infringement, TearLab could not simultaneously restrict them in order to save them from invalidity due to obviousness and anticipation. The FCA approved the methodology employed by I-MED’s expert to locate prior art used in the obviousness analysis. The FCA also confirmed that secondary indicia of non-obviousness, such as commercial success, will not save an obvious claim, particularly where the evidence does not establish a nexus between the commercial product and the patent claims.

This important victory reinforces Norton Rose Fulbright’s reputation as the leading Canadian firm for medical device patent litigation.

The team included Brian Daley, Vanessa Rochester, Nikita Stepin, Jonathan Chong, Alexandra Daoud and Mathieu Leduc.