The Federal Court’s decision in Adeia Guides v Videotron, 2025 FC 1725 represents the first time a party has been found liable for patent infringement based on common design. The court held that Videotron and its Helix TV service infringed the 187 and 674 Patents[1] based on common design with Comcast, despite Comcast not being a party to the action.

Although the decision and the patents at issue relate to television and video services, the consideration of infringement by common design is an issue across subject matters. As the court commented: “Put simply, one cannot escape liability for patent infringement by virtue of subcontracting out a portion of the infringing act, or by being but one party to an overall harm towards another.”[2]

Background

In this case, Adeia alleged that Videotron infringed four of Adeia’s patents related to video recording and video playback functions offered to users of Videotron’s legacy cable TV services (“illico TV”), IP based TV services (“Helix TV”), and “over-the-top” internet-based video and TV services (“Club illico” or “illico+” and “VRAI”). Videotron alleged the patents were invalid.

Two of those patents, the 922 and 571 Patents, were found to be invalid.[3] However, the 187 and 674 Patents were found valid and infringed, in part based on common design:

  • The 187 Patent relates to systems and methods for episode tracking. Adeia alleged infringement on numerous fronts, including features in Videotron’s Helix TV IP TV service, illico TV service, Club illico, illico+ and VRAI internet based video and TV services.
  • The 674 Patent relates to systems and methods for preventing users from fast-forwarding through commercials found within recorded content. Adeia alleged infringement by features in Videotron’s Helix TV service.

Infringement by common design

In assessing whether Videotron’s service features infringed the 187 or 674 Patents, the court conducted its analyses without referencing common design or what elements of the features being assessed were performed by Videotron versus its subcontractors. The infringement analysis turned largely on claim construction and the court’s assessment of expert evidence. Only after having conducted its analyses of infringement and validity on all patents at issue did the court turn to the question of common design.

The court noted that liability by common design is recognized under Canadian law and, although no patent case has turned on this issue, it has been acknowledged as a viable theory to support a finding of patent infringement.[4]

Infringement by common design requires the parties to agree to a common action, which, in carrying out said action together, infringes rights of the patent owner.[5] This analysis is highly fact specific. The facts in the present case are important to define the scope of potential liability for patent infringement by common design. As discussed below, while it is reasonably inferred from the decision that Videotron had some type of business relationship with both Comcast and Brightcove, the court examined the nature of those relationships, and the evidence brought forward to establish the relationships, in finding that Videotron was liable for infringement by common design with Comcast with respect to its Helix TV services, but not with Brightcove with respect to its VRAI services.

Application to Comcast: liability by common design

Videotron’s Helix TV relies at least in part on services provided by Comcast in the United States. Videotron announced a partnership with Comcast in August 2017 in which the parties agreed to deliver IPTV using Comcast’s XFINITY X1 platform.[6] Both Videotron and Comcast were actively engaged in providing the Helix TV service to Videotron’s customers The court’s public decision is redacted and it is not clear what services offered, or acts performed, individually by Videotron and Comcast, respectively, led the Court to find that Videotron’s Helix TV infringed the 187 and 674 Patents.

Nonetheless, the court found infringement of the 187 and 674 Patents by common design based on the nature of the relationship that was established between Videotron and Comcast:

[481] Not only were Comcast services designed to answer Videotron’s specific needs/requirements, but the evidence also shows that for its Helix TV system, Videotron and Comcast were actively engaged in providing the Helix TV system to Videotron’s customers. Throughout the Videotron/Comcast relationship, [REDACTED] Videotron was not a docile party – it was engaged in the acts of infringement. Comcast not being included in this litigation does not bar the finding of common design, as both parties do not need to be named defendants to find infringement by common design (Sea Shepherd, para 55).[7]

It is further notable that not only was Comcast not a party to the action, and there is no reference in the decision to Comcast having provided any evidence at trial.

Application to Brightcove: no liability by common design

In contrast, the court found Videotron not liable for infringement with respect to its VRAI service, despite its earlier finding that the VRAI service contains the essential elements of the asserted claims of the 187 Patent.

For Videotron’s VRAI service, Brightcove is involved in its delivery. Again, it is not clear from the decision what Videotron and Brightcove’s respective roles were with respect to the VRAI service, except that Brightcove played a role with respect to the “Resume Viewing” feature.

The court found there was insufficient evidence of the contractual relationship between Videotron and Brightcove for Adeia to meet its burden to prove that Videotron participated in the design of the “Resume Viewing” feature of the VRAI service.[8]

Adeia had also raised the Saccharine Doctrine. However, the court found that Adeia led little evidence, if any, with respect to the factors the court must consider when determining whether there has been infringement by virtue of the Saccharine doctrine.[9]

As such, although Adeia established infringement of the 187 Patent based on Videotron’s Helix TV, illico TV, and Club illico OTT services, it failed to establish infringement of the 187 Patent based on the VRAI service either by Videotron itself or by common design.[10]

Although not explicitly stated as a formal requirement, whether there was sufficient evidence of a contractual relationship between the alleged tortfeasors appeared to have been a factor in finding infringement by common design in this case. 

 


[1] Canadian Patent No. 2,967,187 (the “187 Patent”) and Canadian Patent No. 2,775,674 (the “674 Patent”)

[2] At para 476.

[3] Canadian Patent No. 2,553,922 and Canadian Patent No. 2,653,571

[4] See paras 470-475.

[5] See para 470.

[6] At para 479.

[7] At para 481.

[8] At para 483.

[9] At para 487-488.

[10] At para 489.