2011 FC 174
In this case, the Court considered the validity and infringement of three patents having to do with processes for the synthesis of lithium mixed metal cathode materials for use in lithium ion batteries. One patent was held valid and infringed. Infringement was not considered with respect to the other two patents. The Court held the second patent, a divisional of the first valid and the third patent invalid.
There were no validity challenges to the first patent. Regarding the second patent, the Court considered insufficiency allegations and held that the inventor must define the nature of the invention and describe how to put it into operation. The Court held that it was not satisfied that the Defendant met its burden of establishing that the patent should be void for insufficiency.
The Court then considered the allegations of misappropriation of the invention pursuant to section 53 of the Patent Act. The Court refused to infer any intention to mislead, holding that the evidence did not establish to the Court’s satisfaction that the named inventors did not invent what was claimed in one of the patents. Furthermore, the Court did not accept the leap proposed by the Defendant that the Plaintiff filed for a divisional to avoid having to deal with the patent examiner to bypass some of the objections raised. The Court held there are other explanations for requesting a divisional. Thus, the Court dismissed the attack on the basis of section 53.
Regarding the third patent in suit, the Court considered allegations of anticipation. The Court followed established case law and held that the cited piece of prior art constituted an enabling disclosure.
Finally, the Court considered remedies and held that the Plaintiff was entitled to reasonable compensation, in the nature of reasonable royalty, for infringement of the first patent prior to issuance. The Court also granted a permanent injunction and held that the Plaintiff could elect between damages and accounting of profits.