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11 February 2019
Interlocutory injunction granted
Tetra Tech refutes Georgetown's claims
I-MED Pharma invokes Gillette defence
MIPS claims Bauer infringed patent
Patent found valid
Safe Gaming System claims defendant infringed patent
Court of Appeal remits validity of patent
Several claims in Frac Shack patent found valid
Human Care claims Evolution infringed patent claims
This article examines a number of patent decisions taken by the Canadian courts in 2018. The first decision concerns a relatively rare interlocutory injunction, while the others are decisions on the merits.(1)
In Thermolec Itee v Stelpro Design Inc (2018 QCCS 901), an interlocutory injunction was granted restraining Stelpro from selling products that allegedly infringed Thermolec's Patent 2,242,829 relating to an electric air heating system. Justice Déziel held that there was a serious issue at hand – namely, infringement – and that, if the injunction was not granted, Thermolec would suffer irreparable harm in the form of loss of goodwill and distributors. The balance of convenience favoured Thermolec, since the patented products represented at least 30% of its business compared with less than 5% of Stelpro's.
In Georgetown Rail Equipment Company v Rail Radar Inc (2018 FC 70), Georgetown claimed that Tetra Tech had infringed its Patents 2,572,082 and 2,766,249 relating to an automated system and method for inspecting railroad track. Tetra refuted Georgetown's claim on the basis of obviousness. Justice Fothergill found that Georgetown's patents were valid and infringed. The decision is under appeal (A-69-18).
In Regents of the University of California v I-MED Pharma Inc (2018 FC 164), TearLab, a sublicensee of Patent 2,494,540 owned by the University of California, claimed that I-MED Pharma had infringed the patent, which relates to measuring the osmolarity of a sample of a bodily fluid, including tear film, whereby the sample fluid is deposited on a chip. I-MED Pharma invoked the Gillette defence (ie, the defendant is practising the prior art) in asserting non-infringement and invalidity. Justice Manson held that the asserted claims were infringed but were invalid for being anticipated and obvious. The decision is under appeal (A-86-18).
In MIPS AB v Bauer Hockey Ltd (2018 FC 485), MIPS claimed that Bauer had infringed its Patent 2,798,542 relating to rotational energy-absorbing sports helmets for minimising brain injury and sought to have Bauer's Patent 2,784,316 (the '316 Patent) and its divisional Patents 2,821,540, 2,838,103 and 2,847,669 declared invalid. Bauer denied infringement and attacked the validity of MIPS's patent on the basis of anticipation and obviousness. Justice Gagné held that Claim 1 of Bauer's '316 Patent was invalid for obviousness, but that the remainder of the claims were valid, as were the claims of the divisional patents. No appeal was filed.
In Weatherford Canada Ltd v Corlac Inc (2010 FC 602), the court found that Patent 2,095,937, which relates to seals in stuffing boxes on oil drilling equipment, was valid and had been infringed. In Grenke v DNOW Canada ULC (2010 FC 564), Justice Phelan awarded damages totalling C$7,915,000 based on lost profits and reasonable royalties, as well as compound interest, but refused to award punitive damages. The decision is under appeal (A-244-18).
In Safe Gaming System v Atlantic Lottery Corporation (2018 FC 542, supplementary reasons 2018 FC 871), Safe Gaming System, a non-practising entity and patent assertion entity, claimed that the defendants had infringed its Patent 2,331,238 (the '238 Patent) relating to a system for controlling online gambling. The defendants counterclaimed that the '238 Patent was invalid. Justice McVeigh found the '238 Patent invalid for lack of utility and for providing insufficient disclosure. Justice McVeigh also found that even if the patent was valid, it had not been infringed. Appellate proceedings (A-184-18; 2018 FCA 180 granting motion for security of costs) were discontinued in January 2019.
In Bombardier Recreational Products Inc v Arctic Cat, Inc (2018 FCA 172), Bombardier appealed Justice Roy's decision (2017 FC 207) which had dismissed its action for infringement against Arctic Cat and Arctic Cat Sales, Inc with respect to the following four patents, relating to snowmobiles:
The Federal Court of Appeal affirmed the Federal Court's holding that the '106, '813 and '964 Patents were invalid for insufficiency of disclosure but reversed on its holding that the '264 Patent had not been infringed, on the grounds that it had erred in using the description of the preferred embodiments to limit the claims. The Court of Appeal remitted validity of the '264 Patent and remedies to the Federal Court. Arctic Cat has filed an application for leave to appeal to the Supreme Court of Canada (38416).
In Frac Shack Inc v AFD Petroleum Ltd (2017 FC 104, 2017 FC 274), Justice Manson found that several claims in Frac Shack's 2,693,567 Patent, which related to refuelling equipment at well sites during hydraulic fracturing, were valid and had been infringed by AFD. On appeal, the Federal Court of Appeal held that Manson had made a palpable and overriding error in his determination of the person of ordinary skill in the art (POSITA) and remitted to Manson several issues relating to obviousness, infringement and remedies for redetermination. Manson found that the Court of Appeal's redefinition of the POSITA did not affect his conclusions on any issue. The most recent decision (2018 FC 1047, on remand from 2018 FCA 140) is under appeal (A-372-18).
In Human Care Canada Inc v Evolution Technologies Inc (2018 FC 1302, supplementary reasons 2018 FC 1304), Human Care claimed that Evolution had infringed claims 16 and 18 of Human Care's Patent 2,492,392 ('392 Patent) relating to rollators (ie, walkers with wheels). Evolution counterclaimed that the '392 Patent was invalid. Justice Elliot concluded that the patent was valid and had been infringed and ordered:
The decision is under appeal (A-425-18).
For further information on this topic please contact David Schwartz at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486) or email (firstname.lastname@example.org). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.
(1) A review of the life sciences and regulatory cases heard by the Canadian courts in 2018 and decisions on the merits is available here.
Walter Chan, student at law, assisted in the preparation of this article.
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