The new rules of Canadian patent litigation: Federal Court of Appeal affirms the viability of summary judgments in patent actions, upholds interpretation of file wrapper estoppel

20 January 2021

On January 20, 2021, the Federal Court of Appeal dismissed the appeal in CanMar Foods Ltd. v. TA Foods Ltd 2021 FCA 7. This precedent setting appeal stems from the underlying decision of Justice Manson which itself was recognized as the Canadian Patent Impact Case of the Year by Managing Intellectual Property (MIP) Americas Awards 2020.  Gowling WLG successfully represented TA Foods both at trial and on appeal. Our earlier articles and discussion on the trial decision are available here and here.

This appellate decision reiterates that summary judgment is a viable, efficient and relatively inexpensive procedural route to exit patent actions even before discovery where it is clear that there is no infringement.   Prior to Justice Manson's decision, the Federal Court had not granted summary judgment on substantive grounds in a patent matter for well over a decade.  However, between the trial decision and the appeal, the Federal Court dismissed three other patent actions on summary judgment specifically citing TA Foods as precedent.

Additionally, Justice Manson's decision was the first to interpret Canada's recently enacted file wrapper estoppel provision, Section 53.1 which was added to Canada's Patent Act in December 2018.  Gowling WLG's lead counsel on this case, Patrick Smith, previously testified before a Senate Committee on the impact of this provision while he was serving as President of the Intellectual Property Institute of Canada. 

Writing for the Court, Justice De Montigny held that "Section 53.1 of the Patent Act has brought about a significant shift in the Canadian approach to file wrapper estoppel".  Prosecution files are admissible to rebut representations made by a patentee on the construction of a claim in a patent. A purpose of file wrapper estoppel is to prevent patentees from improperly recovering subject matter in subsequent litigation that was expressly conceded during prosecution. The Court indicated that Justice Manson should not have relied upon Canmar's United States file history based upon the facts of this case writing "courts should be wary to extend the detailed language of section 53.1, which is specific about the communications being limited to those with the Canadian Patent Office".  However, Justice De Montigny clarified that he was not deciding the "broader issue of whether the prosecution history of a foreign application can ever be considered pursuant to section 53.1 of the Patent Act".  Undoubtedly, the bounds of s. 53.1 will be delineated in future cases, but this decision will remain important in discussing the purpose of s. 53.1 and how it compares to the application of file wrapper estoppel in the UK and the United States.

In the result, the Federal Court of Appeal upheld the underlying decision agreeing that TA Food's only process for roasting oil seeds does not infringe the '376 Patent in issue and that CanMar's patent infringement action should be dismissed in its entirety.

Gowling WLG successfully represented TA Foods in this action with a team that included Patrick Smith, Jeffrey Coles and Sarah Li.

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