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Third resolution of patent suit via summary trial in 2020 a growing trend: McCarthy Tétrault lawyers

Plaintiff seeks summary judgment, alleges that patent is obvious and lacks novelty or utility

Third resolution of patent suit via summary trial in 2020 a growing trend: McCarthy Tétrault lawyers

This year has seen a trend of patent cases being resolved through summary trials, wrote IP litigators at McCarthy Tétrault LLP in a blog post that examined a case wherein the Federal Court declared the patent invalid due to obviousness.

“For the third time this year, Canada’s Federal Court has decided a patent infringement/invalidity action by way of summary trial,” wrote Tracey Doyle, James S.S. Holtom and Fiona Legere, in a post analyzing the Flatwork Technologies, LLC (Powerblanket) v. Brierley, 2020 FC 997 case.

In that case, the defendant Susan Brierley, an Alberta-based businessperson, obtained a patent in 2007 for an electric heating wrap apparatus that sought to maintain the continued operation of articulated hydraulic booms despite freezing temperatures. She named this product “Inferno Tarps.”

In March 2018, Brierley initiated an action before the Court of Queen’s Bench of Alberta, alleging that plaintiff Flatwork Technologies, a Nevada-registered corporation, had infringed on her patent by selling products under the trade names “Powerblanket” and “Warmguard.” The proceeding in Alberta was later stayed after Flatwork brought the case to the Federal Court of Canada.

Last January, Flatwork filed a notice of motion for summary judgment, pursuant to s. 60(1) of the Patent Act, RSC 1985, c P-4, with the Federal Court. Flatwork sought a declaration that the patent was invalid under s. 62 of the Act based on obviousness or lack of novelty and/or utility. Flatwork asked, in the alternative, for an order that the patent’s validity would be decided by summary trial.

The Federal Court noted that, in determining whether to proceed by summary judgment under Rule 215 of the Federal Courts Rules, SOR/98-106, it was not necessary to rule upon the credibility of the parties and of their expert witnesses or to hold a trial to decide upon the patent’s validity. The court would therefore rule on the discrete issue of whether the patent was obvious or lacked novelty or utility.

“It would not be in the best interests of either party to expend the time and money required to bring this proceeding to trial given my finding below that there is no genuine issue,” wrote Justice Glennys McVeigh for the Federal Court. Considering this lack of a genuine issue for trial, granting summary judgment would promote justice that was more expeditious, proportionate, inexpensive and timely, McVeigh said.

The court granted the motion for summary judgment on the basis that the patent was obvious and that there was no genuine issue for trial. The court declared that the patent was invalid and void under s. 60(1) of the Act and directed the Commissioner of Patents to register a certificate of judgment voiding the patent under s. 62.

The court, after reviewing the patent and going over the four steps of the test in Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61 (CanLII), [2008] 3 SCR 265, declared the patent invalid on the basis of obviousness. As of the claim date, all the claims were obvious such that the differences constituted steps which would have been obvious to the individual skilled in the art and which would not have called for any degree of invention. The court thus found that there was no genuine issue for trial regarding a determination of the patent’s obviousness.

Given that the court only needed to find that one ground of invalidity was present for the impeachment proceeding to succeed, it did not need to consider the other grounds of invalidity alleged by the plaintiff, which were the lack of novelty or utility.

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