Patent Decisions

Motion on additional read-ins allowed in part; hearsay excluded Excalibre Oil Tools Ltd. v. Advantage Products Inc., 2016 FC 1130

In this patent infringement action, the plaintiffs disputed some of the defendant's proposed read-ins. The Court confirmed that the rules permit a party to rely on answers given during discovery of an adverse party as evidence for trial. Furthermore, additional portions of the discovery can be included if they properly qualify the answers given.

The Court considered the jurisprudence, and held that it is appropriate to put into evidence any other parts reasonably connected to portions of the examination already put into evidence. In considering whether parts are reasonably connected, the Court may consider the continuity of thought or subject matter, the purpose of introducing the evidence in the first instance, and fairness to ensure that the evidence, as much as possible, represents the complete answer on the subject matter of the inquiry. Another way of phrasing these additions, is to refer to "contextualisation". Anything that puts what a party proposes to introduce into context, whether by way of explanation, amplification, contradiction, or qualification, is all contextualisation.

Certain additional read-ins were allowed and others were excluded on this basis. Both initial proposed read-ins and additional read-ins were excluded on the basis of hearsay.

Motion for a confidentiality order adjourned Innovator Company v. Canada (Attorney General), 2017 FC 548

The Court adjourned the Applicant's motion for a confidentiality order. The underlying proceeding is an application seeking judicial review of the Minister's decision requiring that the Applicant address patents listed against the Other Innovator's product. The Court found that the Other Innovator is a person directly affected by the order sought in the underlying application, and that it ought to have been named as a respondent. The motion was adjourned until after such time that the Other Innovator is served with the Notice of Application, among other things. An appeal was filed and has been heard, but no decision has yet been rendered.

Copyright Decision

Action for copyright infringement dismissed in a summary trial Premium Sports Broadcasting Inc. v. 9005-5906 Québec Inc. (Resto-bar Mirabel), 2017 FC 590

In this summary trial, the Court dismissed the Plaintiff's action for copyright infringement. The Plaintiff holds the broadcast rights in Canada to a number of sporting events, including those to the pay-per-view fight from March 16, 2013 ("the Fight"). The Plaintiff alleged that the Defendants broadcasted the Fight without authorization.

After deciding that the issue raised in this case was suitable for summary trial, the Court considered whether the Plaintiff proved, on a balance of probabilities, that the Defendants broadcasted the Fight. The Court found that the Plaintiff's arguments were designed to minimize the weakness of its own evidence and divert the Court's attention to certain weaknesses in the Defendants' position. However, the Court noted that the onus is on the Plaintiff, and therefore, the gaps raised in the Defendants' evidence did not allow the Plaintiff to meet or reverse its own burden of proof. The Court concluded that the Plaintiff had not shown that the Defendants broadcasted the Fight. The Court also refused to draw adverse inferences from the fact that the Defendants did not cross-examine one of the Plaintiff's witnesses.

Trademarks Decision

Appeal from final decision under section 45 granted Torres v. Barrette Legal Inc., 2017 FC 552

The Federal Court granted an appeal of the Registrar's decision ordering that the trademark TORRES 5 be expunged from the Register pursuant to section 45 of the Trademarks Act.

The Applicant's representative for service had received 11 section 45 notices trademarks, but did not receive a notice with respect to the TORRES 5 trademark. The Registrar then sent a notice advising that, by reason of the failure to file evidence, TORRES 5 was to be expunged from the Register unless an appeal was filed. The Applicant's request for a retroactive extension of time to submit evidence was denied since the Registrar was functus officio and had no authority to grant such a request after issuance of the final decision under section 45 of the Act.

On appeal, the Court found that the Applicant filed sufficient evidence demonstrating use, as defined by sections 2 and 4 of the Act, within the relevant period, to maintain the registration for the TORRES 5 trademark.

Industry Update

CIPO has announced that New Zealand and Colombia have joined the Global Patent Prosecution Highway.