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Intellectual Property Trials
U of T Patent and Trade Secret Course
Allyson Whyte Nowak
March 18, 2014
Outline of Today’s Presentation
 Jurisdiction in IP matters
 Pleadings
 The conduct of an IP trial
 Specific trial-related issues
2
Jurisdiction: Federal Courts Act
3
Federal Courts Act
4
Jurisdiction: The Test
1. There must be a statutory grant of jurisdiction by the
federal Parliament;
2. There must be an existing body of federal law which
is essential to the disposition of the case and which
nourishes the statutory grant of jurisdiction; and
3. The law in which the case is based must be a “law of
Canada” as that phrase is used in the Constitution
Act, 1867
McNamara Construction (Western) Ltd. v. The Queen,
[1977] 2 S.C.R. 654
5
Section 20 of the Federal Courts Act
Exclusive jurisdiction to the Federal Court re:

statutory registration

grant of intellectual property rights
Concurrent jurisdiction with the Provincial Superior
Court re:

6
claims for infringement
Why is Jurisdiction important?
 As a statutory court, the Federal Court lacks
jurisdiction to deal with some IP-related causes of
action: (breach of confidential information; breach
of contract; and general tort claims)
 Whatever jurisdiction the Federal Court has under
subsection 20(2) of the Federal Courts Act to
provide equitable relief, it cannot be used to grant
a remedy which Parliament intended to be
excluded by statute
Apotex Inc. v. Nycomed Canada Inc. et al. 2011 FCA 358
at para. 23
7
Netbored Inc. v. Avery Holdings et
al. (2005) FC 1405, Hughes J. held:
“The Anton Piller Order is also directed to “Plaintiff’s confidential
information”...
…the Federal Court does not have jurisdiction to hear and
determine issues as to “confidential information” without the
existence of valid and subsisting federal law upon which to
anchor that jurisdiction (McNamara Construction (Western) Ltd.
V. Regina, [1977] 2 S.C.R. 654). None is pleaded, the Plaintiffs
have not argued that there is any such law and this Court is
unaware of any such law.
The Federal Court does not have jurisdiction to hear and grant
relief in respect of claims as to “confidential information”. The
portions of the Statement of Claim claiming such relief are struck
out. The Anton Piller Order to the extent that it purports to direct
itself to confidential information, is a nullity.”
8
Lack of Jurisdiction
need not be pleaded
“Merck launched several attacks on the validity of provisions
of section 8 of the PMNOC Regulations and the jurisdiction
of the Federal Court to enforce those provisions. Not all of
these attacks were pleaded however. The issue of
jurisdiction is not found in Merck’s pleadings. Merck argues
that a Court has inherent jurisdiction to entertain issues as to
its own jurisdiction.
While not pleaded, the issue as to jurisdiction was fully set
out in the argument of both parties; nobody has been caught
by surprise. I will deal with the issue.”
Apotex Inc. v. Merck & Co. 2008 FC 1185
9
Pleading/Proving an Infringement Case
Must plead/prove facts to show:
10
(i)
ownership of the patent
(ii)
a license
(iii)
facts establishing infringement
The Anatomy of a Statement of Claim
11
1.
Style of Cause
2.
Identify the parties to the action
3.
Identify the rights of the plaintiffs
4.
Identify the acts of the Defendants which
constitute an encroachment of those rights
5.
State the relief being sought
The Anatomy of a Defence
1. Style of Cause
2. Respond to Plaintiffs’ allegations
(a) admit
(b) deny
(c) have no knowledge of
3. Deny acts constitute infringement
4. Rely on exceptions to infringement (ss. 55.2
and 56 of the Patent Act)
5. Deny entitlement to relief sought
12
The Anatomy of a Defence
(cont’d)
6. Bring a Counterclaim seeking to impeach the patent,
including any of the validity “defences”, including:
i. Anticipation
ii. Obviousness
iii. Lack of utility
iv.
v.
vi.
vii.
Ambiguity
Claims broader than invention disclosed
Method of medical practice
Not patentable subject matter
7. State relief being sought by way of Counterclaim
13
Why are pleadings important?
Pleadings frame the case
 documentary production
 discovery
 pleadings ultimately constrain a Court’s ability to
deal with an issue
14
Pleadings (continued)
Consider any amendments you may need to make leading up to
trial:

Rule 75: the Court may, on motion, at any time, allow a
party to amend a document, on such terms as will protect
the rights of all parties.

The Court’s focus has tended to be on whether the
amendment would cause prejudice that cannot be
compensated for by way of costs (Merck & Co., Inc. v.
Apotex Inc. 2003 FCA 488)

Lately, however, the Court’s focus has been on whether
the amendment represents a “dramatic or radical change”
in the nature of the party’s case.
15
Valentino Gennarini SRL v. Andromeda
Navigation Inc., [2003] FCT 567
“From my reading of the Statement of Defence, it is clear that the
Defendant does not allege, nor even allude to the fact, that it was
acting as an agent for a third party, or that such agency
relationship was communicated to the Plaintiff during the course
of their dealings. For the Defendant now to attempt to introduce
evidence to the effect that it was acting as an agent for the third
party Amican and, more importantly, that such evidence was
communicated to the Plaintiff is tantamount to withdrawing an
admission on the record without seeking leave from the Court
and contradicts the Defendant's very pleadings themselves. It is
for the Defendant to tell the Plaintiff what it is coming to Court to
prove, not for the Plaintiff to be left guessing and to seek further
particulars regarding what defence, in addition to those expressly
pleaded, may be relied upon by the Defendant at trial.”
16
Intellectual Property Trials
 Parties may choose the location of the Trial
 Trials tend to be longer than in the United States and
Europe, lasting on average, between 2-6 weeks
 Parties will not know who the trial judge is until the day
of trial, unless the action is complex enough to warrant
Trial Management Conferences in advance of trial
 There is an informal group of judges with IP expertise
who tend to preside over patent actions
17
Proving Your Case at Trial
1)
2)
3)
Admissions

Pleadings

Discovery read-ins

Request to Admit (Rule 255)

Agreed Statement of Facts
Viva Voce Evidence

Witnesses (fact or expert)

Commission evidence Rule 271
Documentary Evidence

18
Documents (property authenticated and accepted as proof of
the truth of its contents)
Documentary Evidence
There are 2 issues to be addressed:
1)
Authenticity
 fairly routine
 tends to be by way of agreement of the parties
 alternatively, you need to call a witness to testify that he or
she prepared the document
 can be done through Requests to Admit
2)
Proof of the truth of their contents
 issue is tied to the rule against hearsay
 can be dealt with by agreement of the parties but still need a
witness or some other means to tender the document into
evidence
19
Trial Management: Rule 270
Two to three months before trial, counsel will meet with the trial
judge and set the schedule for the exchange of:
 Witness lists
 Will say statements
 Expert qualifications
As well as the delivery to the trial judge of:
 the trial record
 possibly expert reports
20
Witness Lists
How do you select your fact witnesses?
 They must have personal knowledge of an
unadmitted fact
or
 Be able to authenticate a document to be
tendered at trial
21
Will-say Statements
In a patent infringement action, the Plaintiff’s will-say
statements might read (in part) like this:
 [Fact witness] will give evidence relating to:






educational background
professional experience
business of the company
positions held in [relevant years]
responsibilities in the position of corporate secretary
the ownership of the relevant patent
 [Expert witness] will give evidence as per her expert
report dated February 10, 2013
22
Other pre-trial considerations
 Offer to Settle (Rule 420)
 Notices under the Evidence Act
 Certified copies of Government records (s. 24
Canada Evidence Act)
 Business Records
 Subpoenas (Rule 41)
23
The Conduct of a Patent Trial
The Plaintiff’s Case
 Opening by the Plaintiff
 Plaintiff leads evidence establishing
• Ownership of the patent
• Status of the licensee as a “person claiming under
the patent”
• Facts establishing infringement (can be by way of
admissions, witnesses, discovery read-ins)
• Opinion evidence on the construction of the patent
and infringement
24
A Patent Trial
(cont’d)
The Defence
 Defendant can choose to make an opening after the
Plaintiff or choose to wait until the close of the
Plaintiff’s case on infringement
 The Defendant responds to the evidence on
infringement (cross-examination of the Plaintiff’s
witnesses and calling of its own expert and/or fact
witnesses)
 The Defendant leads evidence on the issues of
invalidity (expert and/or fact witnesses and possibly
by way of admissions and discovery read-ins)
25
A Patent Trial
(cont’d)
The Plaintiff’s Case in Defence to Invalidity and Reply
 The Plaintiff responds to the evidence on
invalidity (cross-examination of the Defendant’s
witnesses and calling of its own expert and/or
fact witnesses)
 Reply evidence (Rule 278(2))
 Closing arguments by Plaintiff and Defendant
with right of reply
26
Specific trial issues: Expert Evidence
“New” Rules in effect as of August 2010:
 standardize the content of an expert statement or
affidavit (to be accompanied by a signed Code of
Conduct) Rule 52.2(1)
 provide for the ability for parties to jointly name an
expert Rule 52.1(2) or submit a joint statement Rule
52.6 (4)
 allow for expert conferences in advance of trial
Rule 52.6(1)
 permit concurrent examination of experts (“hot tubbing”)
Rule 282.1
 require leave to call more than 5 experts Rule 52.4(1)
27
Expert Evidence
(cont’d)
What is the Practical Effect of this?


28
Increased scrutiny of experts
i.
their expertise
ii.
what they can opine on
iii.
the manner in which they prepare their
report
iv.
the manner in which they give their
evidence
Increased scrutiny of a lawyer’s role in
developing expert evidence
Selection of an expert witness
 Expertise - “special knowledge”

verify qualifications

ensure their acceptance in the appropriate
scientific or professional community
 Ability to support his or her opinion
29

objective support (previous academic
publications)

ability to defend position (without advocacy)
“Hot Tubbing” in the Federal Court
In Apotex Inc. v. Astrazeneca Canada Inc. 2012 FC
559, Justice Hughes described the procedure as
follows:
“At the end of the testimony of Ms Wehner and Dr.
Garven I conducted a "hot tubbing" examination in
which each of them took the stand at the same time,
remaining under oath. They answered questions put to
them by me and responded to the answers given by
each other. At the end of this process, each Counsel
was invited to put follow-up questions to these
witnesses.”
30
Specific trial issues:
Foreign Decisions
 Persuasive value but not binding on a Canadian court
 Madam Justice Reed in Kirin-Amgen Inc. v. Hoffman-La
Roche Ltd. (1999), 87 C.P.R. (3d) 1 at 21-22 (F.C.T.D):
“Counsel placed decisions in two other
proceedings before me. One of the Federal
Court of Australia…the other by the technical
Board of Appeal of the European Patent
Office…it is trite law that neither has any
binding or precedential value in this Court”.
31
Differences in the Canadian and US
patent laws tend to further diminish
the value of a U.S. decision
32
United States
Canada
Jury trials
No Jury trials
Patent construction takes place
in a Markman hearing in
advance of the trial
No Markman
hearings
File wrapper is given significant
emphasis
No file wrapper
estoppel
Issue Estoppel
The question whether a party can be estopped
from making allegations in Canada by virtue of:
 admissions made by the parties or their privies
and/or
 findings of fact in foreign litigation
while available in principle in Canada, has yet to
be applied.
33
Issue Estoppel
In Johnson & Johnson Inc. v. Boston Scientific Ltd. 2008 FC 552,
Madam Justice Layden Stevenson J. (as she then was) exercised
her discretion not to apply the doctrine saying,
“In the end, whether to apply issue estoppel, even in
circumstances where all the conditions are met, is a
matter of discretion…
The trial of this matter spanned six weeks. Many
witnesses testified, most of them experts. Given the
duration of the trial, the length of time that it has been
pending, the preparation entailed, and the fact that it
was a battle ‘hard fought’, it seems appropriate, to me,
that my determinations be made on the merits.”
34