Update from the FCA on Standard of Review for Claims Construction

  • May 02, 2024
  • Kaitlin Soye

The Federal Court of Appeal in Google LLC v. Sonos Inc., 2024 FCA 44 dismissed Google’s appeal challenging the decision of the Federal Court that Sonos did not infringe Google’s patent (Canadian Patent No. 2,545,150), upholding the Federal Court’s decision (2022 FC 1116). The Google patent relates to a system for adaptive echo and noise control in electronic equipment – for example, smart speakers.

On the appeal, Google argued that the Federal Court did not properly construe the claim at issue when it relied on expert evidence to find that in the context of the Google patent, echo cancellation and noise suppression constitute distinct processes, as the term echo is distinct from, and not simply a type of, noise

For review of issues of claims construction, the Federal Court of Appeal advised that expert evidence is often considered by the Court when assessing how the skilled person would have understood the terms of the claim at the relevant date. Accordingly, weighing this evidence is a question of mixed fact and law. In the case when the construction of a claim turns on the weight given to the expert evidence, the appellate review is subject to the standard of palpable and overriding error. After establishing the standard of review, the Federal Court of Appeal rejected Google’s argument and found that the Federal Court did not improperly limit the scope of the claim at issue in the Google patent. Based on this finding, the Federal Court of Appeal determined that it was not necessary to address the other arguments of the parties and dismissed Google’s appeal with costs.

Prior to this decision, in many cases the standard of review application to the Federal Court’s claims construction is one of correctness. The Federal Court of Appeal confirmed that this is not always the case. As is consistent with previous decisions from the Federal Court of Appeal (see Biogen Canada Inc. v. Pharmascience Inc.2022 FCA 143 and BB Technology AG v. Hyundai Heavy Industries Co., Ltd.2015 FCA 181), “where the interpretation of a patent claim turns on the weight given to expert evidence, this Court will intervene only where there is a palpable and overriding error” (2024 FCA 44 at para 6).

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