• Re-Examination Process Stayed Pending Resolution of Patent Infringement Action
  • July 21, 2017 | Authors: Beverley Moore; Jillian Brenner
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • Camso Inc. v. Soucy International Inc., 2016 FC 1116

    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), [1994] 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.