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25 January 2021
In a recent decision, Flatwork Technologies LLC v Brierley (2020 FC 997), the Federal Court granted summary judgment in favour of the plaintiff, Flatwork Technologies, LLC, in respect of its patent impeachment action.
A motion for summary judgment is a streamlined and expeditious procedure whereby a party seeks to have the court adjudicate some or all of the issues in an action based entirely on a paper record. Unlike a full trial which requires the parties to put forward live witnesses, in a motion for summary judgment, all of the evidence is submitted by way of affidavits followed by cross-examinations on those affidavits. A motion for summary judgment may be brought at any time after the defendant has filed a defence but before the time and place for trial have been fixed.
This decision further demonstrates the Federal Court's recent willingness to grant summary judgment in patent cases in appropriate circumstances. Accordingly, it appears that in certain cases, summary judgment may be a viable option to resolve patent disputes more expeditiously while avoiding the costs of a full patent trial.
In 2018 the patent owner, Ms Brierley, initiated a provincial court action in Alberta against Flatwork alleging infringement of Canadian Patent 2,383,341 (the '341 Patent). Flatwork responded by bringing an impeachment action in the Federal Court seeking to invalidate the '341 Patent pursuant to Section 60(1) of the Patent Act.
The '341 Patent was entitled "Method and Apparatus for Maintaining Articulating Hydraulic Booms Operating in Freezing Temperatures". The patent generally related to an electric heating wrap for an articulated hydraulic boom.
Flatwork brought a motion for summary judgment seeking to invalidate the '341 Patent without the need for a full trial. The motion sought to invalidate the patent for anticipation, obviousness and lack of utility.
Within the summary judgment motion, the parties each submitted expert affidavits on the construction and validity of the '341 Patent. Both experts were cross-examined.
The court granted summary judgment in favour of Flatwork, finding that the subject matter claimed in the '341 Patent was obvious. The court found that the differences between the '341 Patent and the prior art were limited to applying a standard prior art heating wrap to an articulated hydraulic boom. The court noted that the defendant had not identified any particular challenges or obstacles in applying a standard heating wrap to an articulated hydraulic boom. The parties' experts agreed that there were no notable obstacles to doing so. Accordingly, the court found that the subject matter of the '341 Patent was not inventive.
In determining that summary judgment was appropriate, the court found that there was no need to assess the credibility of the parties' expert witnesses. Notably, based on the testimony provided by the defendant's expert on cross-examination, the court found that overall there was no disagreement between the experts on the underlying facts giving rise to the conclusion that the '341 Patent was obvious.
The court further noted that the subject matter of the '341 Patent and the relevant prior art was not complex. Therefore, the court could construe the '341 Patent with minimal input from the experts.
The court held that since there was no genuine issue for trial, it would not have been in the best interests of either party to expend the resources that would be required to proceed to trial.
This decision reaffirms the Federal Court's recent willingness to grant summary judgment in appropriate circumstances.
Historically, the Federal Court had seldom granted summary judgment in patent cases.
However, in Hryniak v Mauldin (2014 SCC 7), the Supreme Court of Canada invited a culture shift in the Canadian courts, opening the door to a more liberal approach to summary judgment and similar procedures in order to achieve greater proportionality and more affordable, timely and just adjudication of disputes.
This culture shift is reflected in recent Federal Court decisions. In recent years, the Federal Court has granted summary judgment in several patent cases, particularly in cases where there were no issues of credibility to be resolved or where credibility issues could be resolved by way of cross-examination during a summary trial (eg, Canmar Foods Ltd v TA Foods Ltd (2019 FC 1233),(1) Gemak v Jempak Corporation (2020 FC 644)(2) and Viiv Healthcare Company v Gilead Sciences Canada Inc (2020 FC 486).(3)
Accordingly, it appears that in the appropriate circumstances, summary judgment or summary trial is now a viable option to resolve patent disputes more expeditiously while avoiding the cost of a full patent trial.
For further information on this topic please contact Daniel Davies or Matthew Norton at Smart & Biggar by telephone (+1 613 232 2486) or email (firstname.lastname@example.org or email@example.com). The Smart & Biggar website can be accessed at www.smartbiggar.ca.
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