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In the three-week period between June 15 and July 6 of this year, Mr. Justice Hugessen of the Federal Court of Canada issued three decisions on motions for summary judgment brought by defendants in patent infringement actions. In chronological order, the decisions are: Calgon Carbon Corp. v. North Bay (City),[1] M.K. Plastics Corp. v. Plasticair Inc.[2] and Garford PTY Ltd. v. Ground Control (Sudbury) Ltd.[3] In two of these decisions, summary judgment was granted.

Summary judgment can be an excellent way for a party involved in a court action to have the case decided without the time and expense of a trial. Under Rule 216 of the Federal Courts Rules, a court may grant summary judgment where "there is no genuine issue for trial," or where the only genuine issue is a question of law, or where "the Court is able on the whole of the evidence to find the facts necessary to decide the questions of fact and law."

A common problem for a party seeking summary judgment in a patent case is that much of the evidence usually comes in the form of expert opinion on issues such as patent interpretation and what was known or obvious to a person skilled in the relevant art at the time the patent application was filed. Each side generally puts forward an expert whose opinion is favourable to that party. Not surprisingly, the opinions of these experts typically conflict and the court is unable to decide the matter without deciding which opinion to favour. It is one thing for a trial judge to do that after having had the opportunity to observe the testimony of each of the witnesses. But on a motion for summary judgment, the evidence before the court is limited to affidavits and cross-examination transcripts. It is difficult for a motions judge to conclude that there is no genuine issue for trial where there is conflicting expert evidence and the judge would be obliged to favour the evidence of one expert over another.

Together, the three decisions listed above provide a helpful guide to the circumstances in which summary judgment may be granted in patent infringement cases, and those in which summary judgment is not feasible.

CALGON CARBON CORP. v. NORTH BAY

In Calgon Carbon, the patent in suit concerned a method for preventing cryptosporidium oocysts ("crypto") using ultraviolet light to irradiate water. The patent was based on the discovery that in order to control replication of crypto in water, it was not necessary to employ such a high dose of radiation as to kill the crypto. Rather, it was found to be sufficient to use a lower dose (similar to that already used to kill bacteria and viruses) which would simply disable the crypto.

In their motion for summary judgment, the defendants argued that the patent lacked novelty since irradiation of water using the claimed method had been done prior to the patent, albeit without intending to prevent crypto, or even knowing that it would have that effect.

Hugessen J. cited the recent Federal Court of Appeal decisions in MacNeil v. Canada (Indian and Northern Affairs Department)[4] and Suntec Environmental Inc. v. Trojan Technologies, Inc.[5] in support of the principle that "if there is a genuine issue to be tried, then summary judgment is not available."[6] It is significant that these two decisions are also cited by Hugessen J. in each of the other two decisions discussed in this Bulletin.

Hugessen J. noted that the plaintiff's expert had admitted during cross-examination that, prior to the filing date of the patent, the claimed method had been employed in various water applications, though not for the purpose of preventing crypto. The main claim in suit read: "A method for the prevention of cryptosporidium oocysts comprising irradiating water with a continuous broad band of ultraviolet light in doses of from about 10 mJ/cm2 to about 175 mJ/cm2." (emphasis added) The plaintiff's expert had also admitted that the claimed method would be well known if the words "for the prevention of cryptosporidium oocysts" were not present.

With these admissions in hand, the defendants abandoned the evidence of their own expert and relied exclusively on the evidence of the plaintiff's expert. In so doing, the defendants effectively eliminated any argument that summary judgment could not be granted because of the need for the Court to favour the evidence of one expert over another.

Since there was no disagreement between the parties concerning the evidence, the dispute was essentially a disagreement over the application of that evidence to the law. Hugessen J. concluded that summary judgment was available in that case.

On the merits of the motion, the judge concluded that the plaintiff had done nothing which had not been done before. While acknowledging the principle in Shell Oil v. Canada (Commissioner of Patents)[7] that a patent may be based on the recognition of hitherto unrecognized properties of compounds, the judge noted that there must be some new method. In the Calgon Carbon case, the only difference in the claimed method was the recognition of its effects.

The plaintiff argued that prior use of a method without recognition of the claimed effect cannot be the basis of an anticipation of the claim and that new knowledge can be the basis for a valid patent. The plaintiff cited the Federal Court of Appeal decision in Baker Petrolite Corp. v. Canwell Enviro-Industries Ltd.[8] which cited the U.K. House of Lords decision in Merrell Dow Pharmaceuticals Inc. v. H.N. Norton & Co.[9] The House of Lords stated:

Likewise, a gap has opened between the test for infringement and anticipation. Acts done secretly or without knowledge of the relevant facts, which would amount to infringements after the grant of the patent, will not count as anticipations before.

However, the judge decided to follow the more explicit reasoning of the Federal Court, Trial Division in Riello Canada Inc. v. Lambert,[10] which discussed the difference between a patentable invention and a mere discovery which cannot be patented. The Court in Riello stated:

The identification of an additional advantage to a mechanical device - an advantage which has always existed but which was theretofore unperceived - does not, in my view, constitute any new "art," nor "process," nor "machine," nor "manufacture or composition of matter," nor any "new and useful improvement" in any of the foregoing. It seems to me that, at best, it is a "discovery."[11]

Hugessen J. thus concluded that the patent in suit in Calgon Carbon was anticipated by earlier known methods and thus invalid. Summary judgment dismissing the action was granted.

The Calgon Carbon decision has been appealed and the hearing has been set for November 2, 2005.

M.K. PLASTICS CORP. v. PLASTICAIR INC.

In the M.K. Plastics decision, a motion for summary judgment brought by the defendant in a patent infringement action was denied. The parties on both sides relied on evidence of their respective experts. As is typical, the plaintiff's evidence was in conflict with that of the defendant on the interpretation of the essential elements of the patent in suit. In view of this conflicting evidence, Hugessen J. concluded that there was a genuine issue for trial. Citing the Federal Court of Appeal decisions in MacNeil and Suntec, he noted that conflicts in the evidence should not be resolved on the basis of affidavits only.

This decision was not appealed.

GARFORD PTY LTD. v. GROUND CONTROL (SUDBURY) LTD.

A motion for summary judgment brought by a co-defendant in a patent infringement action was better received in the Garford case. Ogilvy Renault acted for the successful defendant in this case. Two companies having common ownership and control were sued for patent infringement. One of the companies, Sling Choker Manufacturing Limited ("Sling Choker"), moved to have the action against it dismissed, arguing, based on an affidavit of its president and principal shareholder, Mr. Villgren, that it had transferred its business in the products in issue to the other defendant in 1989 and had not sold such products since that time.

The plaintiff's argument in response to the motion was based on statements made during the examination for discovery of Mr. Villgren. The plaintiff referred not to positive assertions or admissions of facts supporting its case, but rather to uncertainties and failures to deny certain assertions. Such uncertainties and failures, it was argued, raised sufficient doubts as to the credibility of the defendant's evidence to indicate that there were serious issues for trial in the case against Sling Choker. The plaintiff argued that the motion for summary judgment should be dismissed because of these serious issues.

Hugessen J. noted the principle that issues of credibility should not be resolved in a summary judgment motion. However, the judge then discussed what constitutes an issue of credibility justifying refusal of summary judgment. There must be a conflict in the evidence produced on the motion. The judge ruled that there was no such conflict in Garford because the plaintiff had failed to produce any positive evidence to support its claim against Sling Choker. The plaintiff had relied entirely on uncertainties and failures to deny in the defendant's evidence. The Court said "[t]he moving defendant having denied under oath the specific allegations against it, it is for plaintiff to produce some evidence in support of its claim. It has not done so notwithstanding full and lengthy discovery."

This decision was not appealed.

CONCLUSION

Court rules which provide for summary judgment are often of limited practical use in actions in which the validity or infringement of a patent is in issue. Faced with conflicting expert evidence concerning these issues, the court often allows the action to proceed to trial.

However, the decisions in Calgon Carbon and Garford highlight circumstances in which summary judgment is available in patent actions. The Calgon Carbon decision determined that summary judgment is available to a party if it limits its evidence to admissions made by the opposite party's expert during cross-examination and other evidence which is not in dispute. In Garford, mere allegations by one party on an issue on which it bore the burden of proof were insufficient to raise a genuine issue for trial where the other party denied those allegations. To avoid a dismissal of its case on summary judgment, the party must have positive evidence supporting its allegations.

If you are defending a patent infringement action, take a close look at the allegations and evidence. If you can convince a judge that the plaintiff does not have a genuine issue for trial, you may want to move for summary judgment. Conversely, if you are a plaintiff, be watchful for allegations which are unsupported, or even contradicted, by the evidence. You could be vulnerable to summary judgment.

The purpose of this document is to provide information as to developments in the law. It does not contain a full analysis of the law nor does it constitute an opinion of Ogilvy Renault LLP or any member of the firm on the points of law discussed.

[1].    (2005), 41 C.P.R. (4th) 78, 2005 FC 838.

[2].    (2005), 41 C.P.R. (4th) 88, 2005 FC 881.

[3].    (2005), 41 C.P.R. (4th) 92, 2005 FC 946.

[4].    2004 FCA 50.

[5].    (2004), 31 C.P.R. (4th) 241, 2004 FCA 140.

[6].    Calgon Carbon at par. 8.

[7].    (1982), 67 C.P.R. (2d) 1 (S.C.C.), [1982] 2 S.C.R. 536.

[8].    (2002), 17 C.P.R. (4th) 478 (F.C.A.), 2002 FCA 158.

[9].    [1996] R.P.C. 76 (H.L.).

[10].   (1986), 9 C.P.R. (3d) 324 (F.C.T.D.).

[11].   Ibid. at 335.

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