2020 Brings Growing Trend of Patent Cases Decided by way of Summary Trial

For the third time this year, Canada’s Federal Court has decided a patent infringement/invalidity action by way of summary trial. On October 22, 2020 the Federal Court released its decision in Flatwork Technologies, LLC (Powerblanket) v Brierly 2020 FC 997. The action was brought to invalidate a patent claiming an electric heating wrap for hydraulic booms. The Plaintiff alleged that the patent was invalid for obviousness and that this issue could be decided by way of summary trial.

The Federal Court agreed that the case was appropriate for summary trial, following Viiv Healthcare Company v Gilead Science Inc. 2020 FC 486, the first Federal Court decision on patent infringement by summary trial (our blog here), and Gemak Trust v Jempak Corporation, 2020 FC 644, where the Court also dismissed the patent infringement action by way of summary judgement.

The issue was whether there was a genuine issue for a full trial. The Court found that there was not. The Federal Court agreed that Viiv and Gemak both held that matters of patent construction, invalidity and infringement may be appropriate for summary trial, and agreed that granting summary judgement promoted the “expeditious, proportionate, less expensive, timely justice in this matter”. This decision is a continuation of a line of cases streamlining complex patent proceedings and allowing summary judgements in patent matters.

Prior to validity, the Court first considered patent construction. The Court held that the claims of the patent were straightforward and the Court could construe them without the assistance of an expert. The key validity question was whether the patent was obvious. Central to this question was whether the inventive concept of the patent allowed the claimed device to operate – specifically in cold temperatures. If so, cold temperatures were not taught in the prior art. If not, the patent read on the prior art and was obvious. The Court found that, although operation in cold temperatures were part of the invention, the invention was not restricted to operation in cold temperatures, and included operation during warmer temperatures. Given this finding, the Court held that there was no inventive gap between the prior art and the inventive concept of the patent at issue, and the invention was obvious

The Court held that the finding of obviousness meant there was no genuine issue for trial.

For more information, please contact the McCarthy Tétrault Intellectual Property Litigation group in Toronto.



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