In this motion, Camso requested a stay of a request made by a law firm, Brouillette + Partners, to the Commissioner of Patents to re-examine one of Camso’s patents, Canadian Patent 2,822,562 (the ‘562 Patent). The request claimed lack of novelty and obviousness of the ‘562 Patent.
Another patent, Canadian Patent 2,388,294 (the ‘294 Patent), owned by Camso and relating to the same technology, namely, tracks used on all-terrain vehicles, had been the subject of a request for re-examination previously. The Court noted that Camso did not respond to this request and a number of claims were cancelled following the re-examination of the ‘294 Patent. The day after the decision of the re-examination board in November 2014, Camso commenced a patent infringement action against the defendants, Soucy. During the course of the action, the Statement of Claim was amended to allege infringement of the ‘562 Patent.
After the claim was amended, Brouillette + Partners filed a request for re-examination of the ‘562 Patent. Camso responded to this re-examination. Thus, as noted by the Court, the infringement action and the re-examination process were ongoing at the same time. Further, counsel for Soucy, the defendant in the action, appeared on the motion to stay the request for re-examination.
The parties debated whether the applicable test for determining the motion was that as set out in RJR-Macdonald Inc v Canada (AG),  1 SCR 311 or that set out in White v EBF Manufacturing Ltd., 2001 FCT 713. After reviewing the case law, the Court held “there could be no controversy with regard to the test to be applied in our case: those cited converge.”
In conducting its analysis on the merits, the Court noted the similarities between the allegations raised in the re-examination process and the infringement action, namely, lack of novelty and obviousness. The Court held that it was in the interest of justice to allow the proceeding in the Federal Court to proceed on the basis that it would allow more substantial evidence to be considered as compared to the re-examination process. The Court also considered arguments relating to the harm to Brouillette + Partners if the re-examination was stayed, and to Camso if it were not stayed. The Court concluded that the interest of justice favours ordering the stay of the re-examination process.
Costs in the amount of $3000 were to be paid immediately to Camso.
Court grants new counsels’ eyes only order where previous order interfered significantly with the solicitor-client relationship Bard Peripheral Vascular Inc. v. W.L. Gore & Associates, Inc., 2017 FC 585
The Court granted an appeal of the Prothonotary’s Order, allowing Bard’s motion to amend provisions in an existing protective order to the designation of “Counsels’ Eyes Only” (“Amended CEO Order”).
In the underlying proceeding, Bard alleged that Gore has infringed the ‘519 Patent, entitled Prosthetic Vascular Graft; Gore counterclaimed that the ‘519 Patent is invalid. The inventor of the ‘519 Patent, Dr. Goldfarb, has previously testified before the Federal Court in a related Canadian litigation matter pertaining to the ‘519 Patent, and before courts in the United States in related litigation matters.
Gore brought a motion before the District Court to examine Dr. Goldfarb on the basis of Letters Rogatory issued from this Court in this action. The District Court issued a subpoena, which was successfully quashed on appeal on the basis that Dr. Goldfarb was medically unfit to be examined. The Medical Records and the Subpoena Order were designated as CEO by the District Court.
The Amended CEO Order at issue prevented Gore’s trial counsel from showing the U.S. order quashing a subpoena, and Dr. David Goldfarb’s medical information, to Gore’s in-house counsel and outside experts. The Court agreed that the Prothonotary erred in fact and law in holding that the Amended CEO Order would not prejudice Gore. Gore stated that it plans to use the Medical Records to challenge the admissibility of the hearsay evidence of Dr. Goldfarb, after outside counsel is able to receive necessary and proper instructions from their in-house counsel. This is precluded by the amended Order. The Court concluded that the Amended CEO Order was inappropriate because of its significant interference with the solicitor-client relationship and granted a new CEO Order, which allows Gore’s in-house counsel access to the Subpoena Order and the Medical Records.