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Newsflash | January 27, 2010
Increase in Summary Judgment and Trial Procedures
Expected
New life has been
breathed into summary judgment and trial procedures by the
Federal Court of Appeal in the recent decision of Sterling
Lumber Company v. Harrison (2010 FCA 21) released on
January 10, 2010.
Previously, the Federal Court had a restrictive approach to
summary motions, particularly in patent litigation. The Court
would decline summary procedures where there was a conflict in
evidence, and most IP litigation involves conflicting expert
testimony (such as claim construction), resulting in limited
use of summary procedures.
In
Sterling
the Defendant to a patent lawsuit brought a summary judgment
motion for anticipation. This was based on examination for
discovery testimony of the inventor admitting the prior sale
of a device which (in the inventor’s opinion) was the same as
the asserted patent claim, more than 1 year prior to the
patent’s earliest claim date.
The motion Judge
refused to grant summary judgment, holding that there was
insufficient evidence as to the proper construction of the
patent claim.
However, on
appeal by the Defendant, the Federal Court of Appeal held that
the admission by the inventor was sufficient to anticipate the
claim. The onus was on the Plaintiff to rebut this evidence,
by proving that the inventor’s claim construction was
erroneous or that he had misspoken/misunderstood when
answering the question.
The Federal Court
of Appeal emphasized that the obligation is on the party
opposing summary judgment (here the Patentees) to ‘put their
best foot forward’. That is, to provide evidence on the
merits, whether arguing the case is inappropriate for summary
judgment or otherwise. By not providing proof that the
previously sold product differed from the claim language, the
matter was subject to a summary judgment finding the claim
anticipated.
Recently, new
rules amending the Federal Courts Rules (Summary
Judgment and Summary Trial) were passed which will impact IP
litigation in Canada. The main change under the new Rules is
that conflicting evidence can now be resolved on a summary
judgment or trial motion by the Court, so long as it is not
unjust to do so. The rule is modeled after Rule 18(A) of the
British Columbia
Supreme Court Rules,
which has allowed many complex commercial cases to be resolved
summarily through affidavit evidence, rather than live witness
testimony.
While the motion
in appeal in Sterling arose under the old summary judgment
rules, the reasoning will continue to apply under the new
rules, lending them even greater momentum.
Consequently it
is expected that there will be an increasing number of IP
cases seeking summary judgment or summary trial in Canada. We
may also see fresh attempts to bring a ‘Markman hearing’
approach to claim construction.
In light of these
changes parties should ensure that documents and experts are
identified early in any patent case, as there may be as
little as 10 days to prepare a defence to a summary judgment
or trial motion.
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